Times Square’s affable “Naked Cowboy” seems to take only one thing seriously– his image. When Mars Inc. created an blue M&M in his likeness and used it in a video billboard in 2008, Robert Burck, 39, struck back with a multi-million dollar lawsuit, which ended in an undisclosed settlement (reportedly $4 Million).
Now, Burck has his tighty-whiteys in a bunch over another possible trademark infringement by 37-year-old Sandy Kane, a New York comedy circuit regular who has been performing as the unofficial Naked Cowgirl in Times Square for the last two years. Burck has asked her to sign a franchise agreement six times, but Kane has always ignored his requests. Though the two naked cowpeople once talked about doing a duet together, their working relationship finally went south—to Nashville—where Kane recently recorded a song for EMI Music called “He Taught Me How to Love” (more examples of Kane’s musical talent here).
The fact that Kane is claiming Burck is involved with the song is the last straw, according to Burck’s manager, Todd Rubenstein. “She claimed it features The Naked Cowboy. This is completely bogus and an unauthorized use of the registered ‘Naked Cowboy’ trademark,” he said. While a homemade CD label contains the phrase “featuring the Naked Cowboy,” the Nashville studio where Kane recorded the song, Omni Sound Studios, confirmed that she recorded the song under her own name. “She just booked us. I mean, it’s Sandy Kane. That’s how she did everything—under her name,” said owner Steve Tveit. Though a representative from EMI confirmed that Kane has indeed recorded a song, it is unclear how she is associating the song with Burck.
USLAW.COM ANALYSIS: Burck is prudent to actively maintain the integrity of his trademark. Under US law, if a trademark is licensed without adequate quality control or supervision, that trademark can be cancelled if it’s deemed to no longer serve the purpose of identifying a distinct brand and/or otherwise becomes “generic”. In fact, Rubenstein also explained that there were three official Naked Cowboy franchises, but only one still exists—the younger, official Naked Cowgirl, Louisa Holmlund, who also performs in Times Square.
Burck sent Kane a cease-and-desist letter, insisting that she pay his franchising fee (usually $500 per month or $5000 per year), under threat of a $150,000 lawsuit. Scott Rothman of Halberstadt Curley, the attorney representing Burke in his 2008 case, says that he has not been retained for this potential particular case.
Kane, a former stripper, shows no signs of budging, as she told news sources: “You know how much money I make? Two dollars a picture. I’m not selling any products!”