DuetsBlog Collaborations in Creativity & the Law

Do Not Wear a White Cowboy Hat, Boots & Underwear

Posted in Branding, Famous Marks, Law Suits

Many visitors traveling to Times Square since 2002 have caught a glimpse of the Naked Cowboy®, a/k/a Robert Burck. He sings and officiates weddings (charging $499 and up). He even ran for the Mayor of New York at one point (although he ended up withdrawing from the race). For those of you who have not travelled to the Big Apple, the Naked Cowboy also appears on television in venues ranging from Sunday football pregame shows to “The Apprentice.” Mr. Burck, a savvy businessman, secured a trademark for the Naked Cowboy. He dresses (or undresses) in a white hat, boots and underwear briefs. Mr. Burck also franchises this image and provides training for other would-be Naked Cowboys. With an income estimated at $5,000 an hour from tourist donations alone, and adding to that revenue from souvenirs, franchise fees and appearance fees, the Naked Cowboy brand is valuable. Mr. Burck vigilantly protects his trademark, likeness and brand. 

Naked Cowboy, doing business as Naked Cowboy Enterprises, previously sued the Naked Cowgirl. There were allegations that her vulgar hand gestures (i.e., giving the finger) harmed his valuable trademark and image. The parties are currently in settlement discussions.

Mr. Burck’s company also took on America’s favorite candy company. When Mars Company put up a billboard in the Naked Cowboy’s backyard (i.e., Times Square) featuring a cute M&M candy wearing the famous garb, the Naked Cowboy sued. Mars defended the lawsuit based on the First Amendment right to parody Burck’s character. Before there was a resolution on the merits, the candy company and the Naked Cowboy reached a settlement.

The latest target for Mr. Burck’s trademark enforcement is daytime television. It’s notJames Franco’s psychopathic artist character “Franco” on “General Hospital” (although wearing this garb may be an idea for the Oscar nominee/host to try). Instead, CBS and the producer of The Bold and the Beautifulare being sued over the character Oliver, who dresses as the Naked Cowboy on the show. To add insult to injury, the daytime “Naked Cowboy” was referred to as a “fool” on the show. Specifically, the Naked Cowboy has sued CBS and the producer of the show for trademark infringement, false designation of origin passing off and false advertising under the Lanham Act, dilution of the mark, and false description along with various state law claims. When they file their answers in the case, CBS and the producer of “The Bold and the Beautiful” may raise the First Amendment right to parody defense that was raised by the Mars Company. Only time will tell as to whether the Naked Cowboy can prevail in his suit against the daytime drama.

  • Carl

    I have actually seen him twice while on business in NYC and initial knee-jerk reaction was less than favorable. Being prudish? Do a search for this guy. Amazing! American ingenuity. Like him or hate him, he is definitely unique.