Naked buskers battle it out for exclusive rights in Times Square

The Naked Cowboy is back at it again, robustly defending his exclusive right to play the guitar in public wearing only a white cowboy hat, white cowboy boots and ….. white briefs.  Two years ago, the Naked Cowboy sued Mars in relation to a cartoon advertisement that had featured some of New York’s famous icons dressed as M&Ms, including a King Kong M&M climbing the Empire State Building and, of course, a Blue M&M dressed exactly like the Naked Cowboy.  This time, the Naked Cowboy, aka Robert Burck, has taken aim at the Naked Cowgirl, aka Sandra Brodsky.  Ms Brodsky, a self-described “career-stripper-comedian”, plays her guitar in exactly the same costume as the Naked Cowboy – hat, boots and briefs – albeit with added brazier.

The Naked Cowboy settled his clam against Mars out of Court, but this obviously didn’t stop the buffed up busker’s litigious aspirations.  The next year, the Naked Cowboy instituted proceedings for trade mark infringement against a Florida radio station, and then threatened to sue a European mobile phone game producer, again for trade mark infringement.  Neither of these matters proceeded to trial, but Mr Burck had discovered an innovative way to bolster his public profile.

Mr Burck, who must now be desperate to have the legitimacy of his brand upheld by some sort of formal adjudication, has filed his Complaint against the Naked Cowgirl alleging seven causes of action, including trade mark infringement, false advertising, passing off and trade mark dilution.  Ms Brodsky has denied all claims, and has also submitted a counterclaim for a declaration of invalidity in relation to the Naked Cowboy trade mark.  Ms Brodsky claims, amongst other things, that the Naked Cowboy is a descriptive term and that he has filed the mark in multiple classes that he has never intended to use.

So who is this Naked Cowboy, anyway, we hear you ask? Here is a little background into the life of everybody’s favourite half-naked cowboy busker, with italicised quotes coming direct to you from Mr Burck’s pleadings (from either Mars or the current action):

• Robert Burck began his street performance career in 1998 after a shoot at Playgirl, and first appeared on Venice Beach. After some disappointing starts, a friend had suggested to him that he dress only in his underwear.
• The suggestion proved to be a good one, as the Naked Cowboy’s unmistakable persona, underwear included, has been the sine qua non of a surging career as the most famous busker in the entertainment capital of the world.
• Since 1997 the Naked Cowboy has “captivated … native New Yorker’s and tourists from all around the world alike” and has fast become one of the “top tourist attractions for visitors to Times Square”.
•  He is considered (by his lawyers, at least) to be “a pioneer” who has “worked tirelessly and left no stone unturned in his efforts to popularize his brand”, and has now appeared on radio programs, television shows, video games, CDs, music videos and movies.
• The Naked Cowboy also, albeit briefly, entered the race to become Mayor of New York last year. 

All fun aside, the ‘Naked Cowboy’ has become a lucrative brand for Mr Burck.  He owns a registered word mark for the name ‘Naked Cowboy’ and also a standard character mark, in association with a vast range of goods and services.  In addition, he has developed a successful merchandise business and also franchises his character to budding Naked Cowboy imitators around America.

So when the Naked Cowboy discovered that the Naked Cowgirl was not only busking in Times Square (a cheeky parody that, at first, Burck was not threatened by) but had also been appearing on radio and television shows, performing in comedy night clubs and had now published a CD with EMI, Burck knew that the buck had to stop.  He offered her a franchising agreement, which she refused, so he initiated proceedings.

We here at IP Whiteboard find this case interesting not simply from a legal perspective, but through the way a relatively obscure busker has been able to propel his brand internationally through the rigorous protection of his IP rights. 

We had never heard of the Naked Cowboy before the Mars claim.  His new claim is a popular topic of social commentary throughout America, and now the feature of an IP blog in Australia.  The outcome of all this?  A litigiously-minded cowboy-busker (or is it busker-cowboy?) has been able to successfully popularise his brand by taking a strong stance on the protection of his intellectual property rights.  Something for the rest of us to keep in mind.