The Naked Cowboy We’ve written a lot about the “fair use” concept in the copyright context but did you know that there is also a fair use concept in trademark law? Here’s a case that illustrates the point.

In 2012, the Naked Cowboy (yes, you read it correctly) of New York City fame, sued CBS for trademark infringement when, in 2010, the network broadcast an episode of “The Bold and Beautiful” in which a character briefly appears dressed only in briefs, cowboy boots and hat, singing and playing the guitar just like the real “Naked Cowboy.” We’re sure you know this already, the Naked Cowboy is a New York street musician who has built a “financial empire” by performing in Times Square wearing only “briefs, cowboy boots, a cowboy hat, and a guitar.”  He owns a registered trademark for the words the “NAKED COWBOY” and his outfit, which is not registered, is distinguished by the “words ‘Naked Cowboy’ .. displayed across the back of his briefs, on his hat, and on his guitar…The word “Tips” or the symbol ‘$’ is painted on his boots.”  None of these distinguishing marks appeared on the CBS character; nor was the term “Naked Cowboy” used by the network although the terms were used in tags and Google Adwords associated with CBS’s YouTube clips of the episode.

In his complaint, the Naked Cowboy alleged trademark infringement and various other federal and state law claims.  CBS moved to dismiss the law suit on various grounds, including the defense of “fair use.”  The federal district court of the Southern District of New York granted the motion.  The court made three important points.  First, the CBS character did not use and, therefore, did not infringe the NAKED COWBOY trademark; second, without any of the distinguishing elements of the costume, the likelihood of confusion between the Naked Cowboy and the CBS character was small; and thirdly, CBS’ reference to the Naked Cowboy on YouTube was “fair use.”

The court was referring to what is known as “descriptive fair use,” which is when an unauthorized user of a trademark uses it in a descriptive sense. CBS’s use of “Naked Cowboy” merely described the contents of its video clips and not as a trademark to identify the source of the video clips.  Such usage created no confusion. “The fact that the Episode’s source is CBS and not [the Naked Cowboy was] clearly evidenced by the prominent display of the series’ title” and the CBS logo on YouTube.

There is another kind of trademark fair use, which the Naked Cowboy court did not address and that is the so-called “nominative fair use” concept.  This is an unauthorized but non-confusing use of a trademark to identify the trademark owner’s goods or services .  For example, Ford motors can have a commercial in which it compares a Ford Taurus with a Toyota Camry.  Clearly, it is using Toyota’s “Camry” trademark but it is not creating confusion over who owns the mark.  Similarly, a retailer can use another company’s trademark on its web site without a license if it is selling branded items from the trademark owner.  Pundits have written that nominative fair use is not really a fair use concept but simply another way of approaching the concept of whether trademark usage creates confusion in the marketplace.  In either case, the concept of trademark fair use can keep you out of court and provide a viable defense should you find yourself in front of a judge.

–Adam G. Garson, Esq.