M&M’s Used to be One of My Favorite Candies.

Those of you who have walked through Times Square in the last few years may have passed by Robert Burck, a.k.a. the “Naked Cowboy,” playing a white guitar while wearing nothing but a white cowboy hat, white boots, and tighty-whities with his show-name embroidered on his backside. My wife and I were in New York in M arch and stayed in a hotel two blocks off Times Square, and I remember then noting the presence of the “Naked Cowboy” while silently thinking “Yuck.”

Well, apparently the Naked Cowboy is well-known in those there parts because when Mars, Inc. displayed an animated cartoon on a video billboard in Times Square depicting a blue M&M dressed like the Naked Cowboy, the Naked Cowboy got mad and sued under the Lanham Act for trademark infringement. See Burck v. Mars, Inc., 2008 W L 2485524 (S.D.N.Y., June 23, 2008).

I personally find Naked Cowboy M&M’s quite unappetizing, and I would hope that a Naked Cowboy M&M ad in Times Square would lead to a precipitous drop in the sale of those candies, in New York City at least. What foul flavor is next, “Madonna M&M’s®: The only candy likely to transmit an STD”?

Nonetheless, instead of acknowledging its confectionary crudity and immediately discontinuing the campaign, Mars defended the Naked Cowboy’s infringement suit on the basis that it was a parody of a famous New York character, just like the King Kong M&M depicted in another ad.

The district court judge agreed with Mars that the ad did not invade the Naked Cowboy’s privacy under New York law because it did not include an actual photograph or other accurate depiction of the Naked Cowboy. But the judge held that the Naked Cowboy stated a claim for false endorsement under the Lanham Act because the ad could be construed to falsely imply that the Naked Cowboy endorsed M&M’s.

I like M&M’s but the implication of the Naked Cowboy’s endorsement of M&M’s may have cost me my sweet tooth.