This article first appeared in Entertainment Law Matters, a Frankfurt Kurnit legal blog.
Recently, a court in the Southern District of New York granted CBS and Bell–Phillip Television's motion to dismiss Lanham Act, Unfair Competition, and other claims asserted by the Naked Cowboy. The Naked Cowboy is a personality and New York City street performer who dresses in a specific and recognizable costume consisting of only briefs, cowboy boots, a cowboy hat, and a guitar. In addition to his distinctive duds, the Naked Cowboy has a federal trademark registration for the mark NAKED COWBOY. In his complaint, the Naked Cowboy asserted that CBS and Bell-Phillips appropriated his cowpoke persona when a character on the CBS daytime drama The Bold and the Beautiful appeared for several seconds in only his briefs, cowboy boots and cowboy hat while singing and playing the guitar. Subsequently, the Naked Cowboy claimed CBS and Bell-Phillips infringed his trademark rights when they posted the Bold and Beautiful clip to YouTube using the tags "naked" and "cowboy" to identify the video, along with the title "The Bold and the Beautiful – Naked Cowboy", and purchased the YouTube search term "naked cowboy." The District Court, however, determined that since the Bold and the Beautiful character's getup did not include several of the distinct characteristics of the Naked Cowboy's costume, such as the words "Naked Cowboy" "Tips" or a "$", the Defendants did not make use of the Naked Cowboys distinctive and recognizable costume. Further, the District Court held that using the separate YouTube tags "naked" and "cowboy" along with purchasing the search term "naked cowboy" did not constitute use in commerce of the registered mark NAKED COWBOY. For the Court, the only possible use in commerce of Plaintiff's NAKED COWBOY mark was Defendants' use of the mark as part of the title of their YouTube video – however, the Court also found this use to be a descriptive, non-trademark use.
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