In Naked Cowboy v. CBS and Bell-Phillip Television, U.S. District Judge Barbara Jones in New York dismissed the complaint filed by the Naked Cowboy for Lanham Act violations including trademark infringement and unfair competition by CBS and Bell-Phillip Television. She ruled that any similarities between the Naked Cowboy and a character portrayed on a CBS-TV soap opera were “minimal at best.“
For those unfamiliar with the skin-clad cowboy in this case, the Naked Cowboy, aka Robert J. Burck II, is a Manhattan street performer, readily identifiable because he wears little more than a cowboy hat, acoustic guitar, underwear and boots while performing daily in Times Square for a decade now. He filed for trademark protection in October 2000 and re-registered in 2010. Shortly thereafter, the CBS soap “The Bold and the Beautiful” aired an episode in which a character, Oliver, sweetly sings to character Amber while only wearing briefs, cowboy boots, and a cowboy hat.
While Burck maintains the portrayal of a unclothed cowboy was substantially similar to that of his protected character, the district court found that the words “Naked Cowboy” were not present at any point during the episode and no such words were spoken by any characters. Jones ruled that “[t]he Naked Cowboy costume is indeed distinctive, but … similarities between Oliver’s costume and the Naked Cowboy costume are minimal at best.”
Further, Judge Jones narrowed any monopoly Burck may have felt entitled to, opining:
Plaintiff performs on the street, predominantly in Times Square, and although he has appeared throughout the country, his performances are heavily concentrated in the New York area. Plaintiff does not market or provide any services that are in competition with a daytime television series. In addition, while plaintiff has on numerous occasions appeared as himself on television, none of his television appearances suggest a desire to transition into creating and producing a daytime soap opera, so there is no likelihood that plaintiff will bridge the gap between the two markets.
While Burck has been on the losing side of a trademark infringement suit before, this holding brings to light the scope and strength of his trademark protection for the Naked Cowboy.