Advertising Law Blog

Less than a mile from The Lustigman Firm's offices in midtown Manhattan, a man calling himself The Naked Cowboy struts around Times Square in his tighty whities, posing for pictures with tourists in exchange for a couple of bucks. The Naked Cowboy is so well known that the makers of M&Ms made a commercial featuring one of the famous melts-in-your-mouth-not-in-your-hands candies similarly decked out in underpants, cowboy hat and guitar. The M&M ads got Naked Cowboy's knickers in a knot, and he sued in federal court for violations of the Lanham Act and his rights of privacy and publicity. The candy makers filed a motion to dismiss, arguing that the M&M cowboy drawings were parodies of The Naked Cowboy, and therefore completely legal under the First Amendment's freedom of speech clause. This week, Judge Denny Chin of the Southern District of New York denied a motion to dismiss and ruled that the Lanham Act portion of the lawsuit could move forward. Judge Chin, well known to The Lustigman Firm from a 2006 case in which we successfully represented world boxing champion Ricky Hatton, ruled that, "the complaint plausibly argues that consumers would believe that the M&M cowboy characters were promoting a product rather than merely parodying The Naked Cowboy, and that viewers would believe that The Naked Cowboy had endorsed M&Ms. Hence, the complaint has alleged sufficient facts to support a false endorsement claim." The defendants did have some success on their motion, as Judge Chin dismissed the claim under New York's right of publicity/ right of rivacy claim. The reason for this dismissal was that the M&M cartoon did not, according to Judge Chin, qualify as the "portrait" or "picture" of The Naked Cowboy.