In addition to the more formal entertainments on offer in and around Times Square, New York, there are three scantily dressed buskers. One who calls himself the Naked Cowboy and a further two, each of which calls herself the Naked Cowgirl.
These entertainers wear cowboy hats and boots and sing to the accompaniment of their guitars.
The Naked Cowboy, Robert John Burck, was born on December 23, 1970 in Cincinnati, Ohio. He can be viewed on his website: www.nakedcowboy.com. In his performances, he wears a pair of y-fronts, and holds the guitar sufficiently low to conceal the garment, giving the impression that he is nude – hence the name.
Louisa Holmlund, wears a micro-skirt and a pair of little mirrors on her nipples. Both earn tips by crooning the crowds and by providing photo-shoots. Apparently, she pays royalties of $500 a month or $5000 a year to the Naked Cowboy. She can be seen on her website here: www.nakedcowgirlny.com
There is now a second Naked Cowgirl; Sandra Brodsky who calls herself Sandy Kane. She wears a starred and striped bikini and matching cowboy hat and refuses to pay a franchise fee. She is in her 50s.
It seems that the Naked Cowboy is the original act, that inspired or was plagiarized by the Naked Cowgirls. Both have been somewhat lapse with their trademarking, with the Naked Cowboy’s mark lapsing and being refiled, and the Naked Cowgirl’s mark also lapsing.
As the Naked Cowgirl Kane has refused to take out a ‘francise’ from the Naked Cowboy – what I suppose would be called ‘protection money’, the Naked Cowboy has sued for infringement of his IP rights.
According to Burck, Kane is ripping off his intellectual property, he also claims her act is “un-American” and makes a “mockery of the system and the trademark infringement laws.”
Having entered the silly season (onat hamalafafonim - the “cucumber season” in Hebrew), this epic battle of the sexes has been picked up by the various newspapers as well as the IP Blogs – including our friends, the IPKAT. With a dirth of real IP stories to discuss, and with the Israel Courts in recess, I have decided to analyze this case. Noone seems to have actually commented on the legal issues. So here goes.
I don’t think that being un American is a crime, even in Time Square. The issue of trademark infringement is something that can sensibly be discussed however. I thing that both trademark registrations are limited to the combination of Naked Cow+boy and Naked Cow+girl. Both marks are somewhat descriptive, perhaps the naked cowgirl with udders on show, is even more so.
I don’t think either mark should be interpreted to give wider protection than exact copying. In other words, the fact that both use he words Naked and Cow does not imply copyright infringement or passing off. the words Boy and Girl are opposites.
For the same reason that North Face is not infringed by South Butt, I don’t believe that the word mark Naked Cowboy is infringed by Naked Cowgirl. I don’t think that there is a likelihood of confusion either. Male body builders look different than female strippers. It’s probably something biological.
That said, and although perhaps aiming largely at a different segment of the crowd, with the Naked Cowboy getting tips from women tourists and homosexual men, and the Naked Cowgirl attracting heterosexual men, one could argue that there is a problem in setting up a competing business on someone else’s patch. This raises various issues. For example, does a busker, who does not invest capital in premises but who clearly invests time and energy in becoming a tourist attraction in his own right, create rights?
Ms Kane seems a little past her prime. It could be that she does have a negative impact on the trade. Is this a crime?
In Jewish Law, one cannot simply open a business opposite a competitor. the issue seems to be more one of drawing away trade than passing off. However, this halachah is not the law in New York. It seems that the State does allow one to open up souvenir shops, coffee shops, restaurants and hotels opposite similar establishments, and I am skeptical that merely because Times Square is the Naked Cowboy’s patch, that other buskers can’t perform there.
Arguably, all the cowpeople are part of the scene that keeps tourists visiting Time Square. I don’t believe that the newspaper and postcard vendors that benefit from the buskers attracting the crowds should pay them, nor do I think that the buskers should pay the theatres for bringing the crowds.
The franchise issue is an interesting one, but I would argue that noone would assume that there is a franchise for buskers and one does not order their services, but simply tips the individual if entertained. The tip is generated by the behavior of the individual at the time that the tip is made. It is not something related to the chain.
A waitress working in a chain of restaurants would not be expected to share her tips, so why should a busker?
Singing songs created by Burck would be copyright infringement. The combination of a cowboy hat, boots and underwear is not. As is often the case, there is a confusion between an idea and the expression of the idea. Dance steps, routines, songs and the like can be protected with copyright. I don’t think the basic idea of the act can be.
Burke claims that Kane’s performances have caused “confusion” with the public and may put “a potentially permanent devaluation on a real American Brand and Icon.”
It is not the first time that Burke has gone to court to protect his trademark. In February 2008 he sued Mars Inc. in federal court in Manhattan, alleging that a blue M&M character, dressed in underpants and boots that appeared in the candy’s advertisements, violated his trademark. That suit was resolved in November that year. Neither party gave a reason for the dismissal with prejudice, which prevented Burck from re-filing his lawsuit.
The M&M advertisment was one of a series, which included an M&M dressed as the Statue of Liberty and an M&M as King Kong climbing the Empire State Building.
U.S. District Judge Denny Chin, who presided over the earlier lawsuit, ruled that Mars had to face Burck’s false- endorsement claim,wherein he claimed that there was a potential for consumers to believe Burck supported the ads. However, Burke’s right-of-publicity claim against M&M was refused.
Louise Holmlund had a stronger case of claiming trademark infringement as she’d held a mark for Naked Cowgirl. Unfortunately, however, it died in 2007.
Likelihood of confusion with Burke, not convincing. His second claim seems to be one of dilution. Here he may have a point. I think the case should be thrown out. Both sides will probably gain from the publicity in the meantime though.
Posted by Michael Factor 
