## Facts

- Robert John Burck performs in Times Square as the “Naked Cowboy,” wearing a cowboy hat, boots, white briefs, and a guitar, with “Naked Cowboy” and “Tips” displayed on his attire.
- Burck owned a registered trademark in the name “Naked Cowboy” for entertainment-related services.
- A CBS soap opera episode depicted a fictional character dressed similarly (hat, boots, briefs, guitar) performing outside a fictional studio.
- CBS posted a clip of the episode on YouTube and used “Naked Cowboy” in the clip title to describe the scene.
- CBS also purchased the search advertising keyword “naked cowboy,” so searches for that term could trigger a sponsored link to the clip.
- Burck sued, alleging federal trademark infringement and unfair competition, New York statutory consumer-protection and dilution violations, New York statutory privacy/publicity violations, and common-law fraud.

## Issues

1. Whether purchasing “naked cowboy” as a search advertising keyword and using “Naked Cowboy” in a YouTube clip title constituted actionable “use in commerce” and created a plausible likelihood of confusion under the Lanham Act.
2. Whether the clip title’s use of “Naked Cowboy” was protected as descriptive or fair use rather than source-identifying use.
3. Whether portraying a similarly dressed fictional character and using the phrase “Naked Cowboy” amounted to use of Burck’s “name, portrait, or picture” for advertising or trade under New York Civil Rights Law §§ 50–51.
4. Whether the alleged conduct plausibly supported claims under New York General Business Law §§ 349, 350, and 360-l, and common-law fraud.

## Decision

- The court granted defendants’ Rule 12(b)(6) motion and dismissed the complaint in its entirety.
- The Lanham Act claims were dismissed because the pleaded conduct did not amount to actionable trademark use and did not plausibly allege consumer confusion.
- The New York Civil Rights Law §§ 50–51 claim was dismissed because defendants did not use Burck’s name or image, and the fictional depiction was not treated as his statutory “portrait” or “picture.”
- The New York General Business Law §§ 349, 350, and 360-l claims were dismissed for failure to plead the required consumer-oriented deception or a plausible dilution theory on the alleged facts.
- The fraud claim was dismissed for failure to plead a specific material misrepresentation, reliance, and Rule 9(b) particularity.

## Legal Principles

- Lanham Act infringement requires a plausible allegation of trademark “use in commerce” and likelihood of confusion as to source, sponsorship, or affiliation.
- Use of a term as an internal search advertising keyword, without source-identifying display to consumers as alleged, may be treated as non-actionable trademark “use in commerce” at the pleading stage.
- Descriptive or fair use can defeat a trademark claim where the challenged term is used to describe content rather than to indicate sponsorship or origin.
- Similarity in costume or character concept, without additional indicators and in a clearly fictional setting, may be insufficient to plausibly plead consumer confusion.
- New York Civil Rights Law §§ 50–51 is construed narrowly and targets unauthorized use of a living person’s name, portrait, or picture for advertising or trade; a fictional portrayal that merely resembles a person’s persona may not satisfy the statutory terms.
- New York GBL §§ 349 and 350 require consumer-oriented conduct and materially misleading acts causing injury; expressive content and its descriptive titling, without plausible deception allegations, is insufficient.
- Common-law fraud requires a pleaded material misrepresentation, scienter, reasonable reliance, and damages with Rule 9(b) specificity.

## Conclusion

The court dismissed all claims, holding that the pleaded keyword advertising and descriptive clip title did not plausibly constitute actionable trademark use or confusion, that the fictional portrayal did not amount to statutory use of Burck’s name or image under New York privacy/publicity law, and that the remaining state consumer-protection, dilution, and fraud theories were inadequately pleaded.


Naked Cowboy v. CBS, 844 F. Supp. 2d 510 (S.D.N.Y. 2012)