October 08, 2012 3:02pm PT by Eriq Gardner
Sony Sues Actor Who Abandoned PlayStation for Nintendo Wii
By definition, a Hollywood actor is a person who pretends to be someone else. Trademark law, on the other hand, is designed to prevent consumer confusion. These two concepts don't typically conflict, but a new lawsuit raises the issue of an actor who is so successful in developing a certain character that he can't help but confuse consumers when performing another role.
The actor's name is Jerry Lambert, who for several years in ads portrayed "Kevin Butler," a fictional vice president at Sony Computer Entertainment America. This character was created to represent the inventor of sandwiches, an occasional time traveler, but most of all, the leader of the charge to "bring back the glory of Play to gaming."
In other words, Lambert's character was an entertainment executive whose job it was to pitch Sony PlayStations.
But on September 3, just three days after the expiration of an agreement between Sony and Lambert's loan-out company Wildcat Creek, the actor appeared in ads for Bridgestone that promised consumers a Nintendo Wii upon the purchase of four tires.
Sony is now suing Bridgestone and Lambert's company over a commercial that aired on ESPN, Spike, FX, the Discovery Channel, etc., and allegedly "depicts a Bridgestone employee who consumers reasonably perceive to be 'Kevin Butler' promoting the Nintendo Wii, a product that competes directly with SCEA's PlayStation products."
According to a complaint filed in California federal court, the contract between Sony and Wild Creek was entered into on August 7, 2009 and contained an "exclusivity clause" that prevented Lambert from providing his services or his likeness to competing gaming system manufacturers like Nintendo.
Since that date, Sony says that "Kevin Butler" has become well-known among video game consumers in more than 30 commercials, on Twitter, on Facebook, and to excited audiences at industry confabs like E3. Sony even has a video game called LittleBigPlanet Kartling that will feature the character.
But now Lambert is appearing in Bridgestone commercials touting Nintendo, and Sony is crying foul.
"The actor started working for Bridgestone in or around February 2012 and provided services... while he still was under contract with SCEA," the lawsuit states.
As such, Sony is asserting such claims as unfair competition, breach of contract and tortious interference.
But Sony is also contending a trademark violation under the Lanham Act.
According to the lawsuit, "With the intent of unfairly capitalizing on the consumer goodwill generated by 'Kevin Butler,' Bridgestone has used and is using the same or confusingly similar character, played by the same actor, to advertise its products or services in the commercial."
On Thursday, Bridgestone answered the claims, denying that Sony has any protectable property interest whatsoever in any "Kevin Butler" character, but just as remarkably, denying the existence of "Kevin Butler" in its own commercial. After all, Bridgestone says, Lambert's role was hardly substantial.
"Mr. Lambert is one of the actors who appeared in the commercial as a Bridgestone engineer," say the defendant. "Bridgestone denies that 'Kevin Butler' appears in the Bridgestone commercial discussed herein and thus denies that he speaks or does anything whatsoever in the commercial."
Bridgestone indicates that it intends to fight the lawsuit by showing that Sony has failed to register any mark on "Kevin Butler," that the character has not acquired secondary meaning and that there is no likelihood of confusion among consumers.
In short, do people who watch commercials realize that actors are playing characters? The consumer surveys in this litigation could be fascinating.
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