Naked Cowboy’s Trademark Suit Dismissed
Even people who have never been to New York City have probably seen pictures, video, or other media appearances of the legendary Naked Cowboy. On any given day, he can be seen in Times Square sporting a cowboy hat, cowboy boots, and briefs, while playing songs to tourists for tips. Notably, the words “Naked Cowboy” are written on his briefs, boots, and guitar. “Naked Cowboy” was registered as a word trademark in April 2002 and reregistered in May 2010, and the mark is used on various merchandise, such as t-shirts, key-chains, and shot glasses.
In February 2011, the Naked Cowboy filed claims of trademark infringement, unfair competition, and dilution against CBS after a character on the soap opera “The Bold and the Beautiful” wore a costume resembling the Naked Cowboy’s signature look. According to the court record, a character on the show named Oliver appeared wearing only a cowboy hat, cowboy boots, and briefs, while playing a song on his guitar. Unlike New York’s Naked Cowboy, the words “Naked Cowboy” did not appear anywhere on the character or in the show. During later promotions of the show, however, CBS sold advertising on a YouTube clip of the show titled “The Bold and the Beautiful – Naked Cowboy,” and used the words “naked” and “cowboy” in tags on the clip.
CBS moved to dismiss the suit under Federal Rule of Civil Procedure 12(b)(6) for failure to state a claim upon which relief can be granted. The court recognized that Naked Cowboy was afforded trademark rights in the phrase, but infringement would require CBS to actually make use of the mark in commerce. Since the mark never appeared in the television show, CBS did not use the mark in commerce in that context. CBS sold adwords on YouTube, but the court held that this did not constitute use in commerce because CBS did not place the words on any goods or use them in a way that would indicate source or sponsorship. Although the term “Naked Cowboy” appeared in the title of the video, the court held this was protected under fair use because CBS was using the term to describe the content of the video.
In regards to the unfair competition claim, the court recognized that the Naked Cowboy costume was highly distinctive and recognizable enough to be a protectable mark. Part of the Naked Cowboy’s distinctiveness was the result of the words “Naked Cowboy” appearing on his hat, boots, and guitar. The court held that the character appearing on the show was sufficiently different because the words “Naked Cowboy” did not appear anywhere on the character. For the sake of thoroughness, the court applied the Polaroid factors for likelihood of confusion and concluded there was no such likelihood of confusion.
The trademark dilution claims were dismissed for similar reasons. The court found that The Bold and the Beautiful character’s costume was not similar enough to the Naked Cowboy’s trademark garb to satisfy the elements of dilution. The court also relied on reasoning that CBS did not make use of the mark in commerce to justify dismissing the dilution claim.
The entire court document can be found here.