A ruling in a trademark infringement case filed by a New York street entertainer who performs as “The Naked Cowboy” is another indication that judges may be taking parodies too seriously when the parody conveys a commercial message.

Robert Burck alleged an animated cartoon advertisement that featured a blue M&M dressed “exactly like The Naked Cowboy” violated the Lanham Act, which prohibits a false endorsement of a product or service by a real person. The ad ran on oversized billboards in Times Square, where Burck plies his trade, dressed only in a white cowboy hat, cowboy boots and underpants.

M&M's manufacturer Mars, Inc. argued that no consumer would be likely to confuse its parody as an endorsement of its product by Burck. The cowboy M&M, it said, is “part of a series of parodies of the 'New York City experience,'” which also portrays an M&M as King Kong climbing the Empire State Building.

But U.S. District Judge Denny Chin denied Mars' motion to dismiss, finding factual issues as to whether the M&M Cowboy characters are a parody of Burck's creation.

“Some consumers, as defendants argue, may view the the M&M Cowboy characters as part of a larger work depicting New York scenes and parodying famous New York characters,” he said in a June 23 opinion. But, he continued,

other consumers may mistakenly believe that The Naked Cowboy himself endorsed the copying of his “trademarked likeness” because the M&M Cowboy characters appear in a commercial setting.

Chin's ruling is quite similar to that of a Los Angeles judge who ruled in December 2007 that Paris Hilton could sue Hallmark Cards over its humorous use of her likeness and “That's Hot” catchphrase on a greeting card.

“[T]he potential exists that the card is sufficiently evocative of an image Hilton has presented of herself that Hallmark is capitalizing on her notoriety,” U.S. District Judge Percy Anderson concluded.

The U.S. 9th Circuit Court of Appeals has noted that “the cry of 'parody!' does not magically fend off otherwise legitimate legitimate claims of trademark infringement or dilution. There are confusing parodies and non-confusing parodies.” Dr. Seuss Enterprises v. Penguin Books, 109 F.3d 1394 (1997).

But parodies which have a commercial purpose should be protected under the First Amendment if the use of a trademark “was not specifically misleading as to sponsorship or endorsement.” In neither the Burck nor Hilton parodies is there any specific statement that the “real person” endorsed a product and judges are giving too much latitude to plaintiffs by ignoring that requirement.

Chin did dismiss Burck's publicity rights claim, in part because New York's "privacy statutes were not intended to protect a trademarked, costumed character publicly performed by a person."