Info/Law

What better way to dive back into regular blogging than to discuss the Info/Law implications of a naked blue anthropomorphized M&M in Times Square?

A recent decision by Judge Denny Chin in New York federal court involved two billboards in Times Square advertising M&M candies. The video animation in the billboards depicted M&Ms in various iconic scenes of New York City: an M&M hailing a cab, an M&M as the Statute of Liberty, an M&M as King Kong scaling the Empire State Building, and so on. Among these was a blue M&M dressed up like “The Naked Cowboy,” a long-time street performer who appears in Times Square in nothing but his boots, hat, undies, and strategically placed guitar. (Wikicommons image here.) The performer behind the character, Robert Burck, sued M&M maker Mars Inc. and its ad agency for two claims. First, he claimed infringement of his trademarks in the Naked Cowboy. He also claimed a violation of a New York privacy statute prohibiting use of a person’s “name, portrait, picture, or voice” in an advertisement without written consent. (This is one of the statutes I have previously suggested could be seen as prohibiting some of Facebook’s advertising programs.)

Importantly, the decision was just a ruling on initial motions to dismiss the case — essentially, arguments by the defendants that the claims are groundless so the judge should throw them out out before the litigation really gets started. Mars got a split decision. Which claim had no merit, according to the judge?

The privacy claim, of course. Judge Chin ruled, I think correctly based on existing precedent, that a humanoid candy adopting the unique characteristics of the Naked Cowboy does not appropriate Burck’s “name, portrait, picture, or voice.” Despite the fact that his identity is obviously intertwined with the trapping of this character, the man himself is not used in the ad. (In California such an imitation might be unlawful; courts there have held a robotic Vanna White and an imitation of Bette Midler’s singing style violated the equivalent statute there.)

The trademark claim, in contrast, involves the more amorphous determination of whether those who see the billboard are likely to be confused into thinking, mistakenly, that Burck had endorsed M&Ms. The defendants argued that, in the context of the comedic story being told, no consumer would confuse the image of the blue M&M for an endorsement, and in any event the First Amendment protects it as parody. Judge Chin found — again I think correctly based on existing precedent — that Burck’s claim and the free speech defenses were both plausible enough that he will allow both to proceed to the next phase of litigation, where they would still have to be proven.

Three observations:

1. This is yet another example of how hard it is to get a ruling to protect expressive uses of trademarks early in a case. Even in much clearer cases of free speech interests (like this one), because notions of confusion are so fact-driven, judges hate to dismiss trademark claims early. As a result, litigating these cases becomes expensive, creating a chilling effect. (I recently wrote an article discussing this problem and have another coming out soon.)

2. This is also another example of how privacy laws construe personal identity so much more narrowly than trademark laws interpret brand identity. Burck’s individual persona is strictly limited to the “name, portrait, picture, or voice,” even though there can be no doubt that the ad referred to him quite intentionally. But any similarity to a trademark is actionable if it might cause consumer confusion. In short, brand rights are stronger than individual rights in this context. (This is, broadly speaking, the topic of my next article…)

3. As a commenter aptly said on Marty Schwimmer’s Trademark Blog (to whom hat tips are due here): “We live in fascinating times when the underwear-clad street performer sues to enforce his IP rights and the big corporation defends based on First Amendment rights!”

Filed under: Court Decisions, Privacy, Trademarks