Naked Cowboy = Buttwhack

“This,” as the judge’s order memorably put it, “is the case of the Naked Cowboy versus the Blue M&M.” Hard to beat that in the federal courts on a boring afternoon.

Earlier this year, Robert Burck, the tighty-whitied plaintiff in the case, sued Mars Incorporated, claiming that the candy maker had purloined his persona by outfitting a dark blue M&M with boots, hat, underpants and a six-string guitar in an animated cartoon it ran on two video billboards in Times Square. Mr. Burck (“doing business as the Naked Cowboy,” as his suit contends) not only argued that Mars had trampled on his trademark rights, but also falsely suggested that he actually endorsed the offending M&M.

On Monday afternoon, Judge Denny Chin of United States District Court in Manhattan ruled that Mr. Burke’s trademark rights had not in fact been stepped on [pdf] since the law protects the “name, portrait or picture of a living person” but not a character created by a person — no matter how famous (or naked) he might be.

But a partial victory goes to the cowboy: Judge Chin also ruled that the suit could proceed since Mr. Burck “plausibly alleges that consumers seeing the defendants’ advertisements would conclude — incorrectly — that he had endorsed M&M.”

Mr. Burck had left his “office” — on Seventh Avenue and 43rd Street — in mid-afternoon and was not available for comment. A message left on the media line at the Mars North America hub site, in northwestern New Jersey, was not immediately returned.

In making his decision, Judge Chin drew upon a surprisingly rich case law, which included such disputes as Allen v. National Video Inc. wherein Allen (as in Woody) unsuccessfully sued the company for using a look-alike in an ad. He also cited White v. Samsung Elecs. Am. Inc. where Vanna White (of “Wheel of Fortune” fame) tried to stop the TV maker from running ads of its own with a robot that resembled her, complete with wig and gown.

Look forward to highly complex arguments when both sides return to court for a pre-trial conference on July 11 at noon.