Sony Sues Actor For Trademark Infringement For Looking Too Much Like Himself In Another Commercial

from the if-looks-could-sue dept

Just when you thought trademark law couldn't get any stranger, we have a new story that takes it to a whole new level. Most often, trademark law is applied to logos and names of goods and services, yet there is still some untested ground. This is where Sony comes in. Several years ago, in an effort to rebrand its floundering Playstation 3 brand, Sony created a fictional Vice President of the Playstation brand named Kevin Butler. This character and the ads he starred in became a gaming sensation and brought the Playstation 3 back into the limelight. Here is a sample of these advertisements.
Such success never lasts, and earlier this year, the contract Sony had with Kevin Butler actor, Jerry Lambert, expired and he has moved on to other contracts. One of these new advertisement contracts is with Bridgestone Tires. Unfortunately, Lambert has starred in one ad that now has Sony up in arms. This ad features Jerry Lambert starring as an unnamed Bridgestone engineer along side two other actors portrayed playing a Nintendo Wii. This ad has resulted in Sony going over the edge, so to speak. The entertainment and electronic giant is now suing Bridgestone and Wildcat Creek, the corporation set up to manage Lambert's advertising career, for a variety of reasons, one of which is trademark infringement. You can view the original Bridgestone commercial at GoNintendo.
Sony Computer Entertainment America filed a law suit against Bridgestone and Wildcat Creek, Inc. on September 11. The claims are based on violations of the Lanham Act, misappropriation, breach of contract and tortious interference with a contractual relationship. We invested significant resources in bringing the Kevin Butler character to life and he's become an iconic personality directly associated with PlayStation products over the years. Use of the Kevin Butler character to sell products other than those from PlayStation misappropriates Sony's intellectual property, creates confusion in the market and causes damage to Sony.
This statement is a tad confusing on first blush. It reads as if Sony is claiming trademark on the Kevin Butler likeness rather than the character itself. As such, it would seem that Sony is making the claim that Lambert starring in any commercial could cause likely confusion among consumers, resulting in them thinking that Kevin Butler is endorsing another product. This is rather absurd though. Primarily because the character Labert portrays has no name and actors portray many different characters throughout their careers.

Thankfully, the Hollywood Reporter has provided some further clarifications on the matter. Here we learn a bit more about the exclusivity clause in Lambert's contract.
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.
This part at least makes some sense. A lot of contracts will contain language that prevents an employee or other contracted company or individual from working for a direct competitor for a specified time. However, to claim that the commercial with Bridgestone, a tire company, meets this definition is a stretch, even if the commercial features a Nintendo Wii. Sony then claims that Lambert's work with Bridgestone is a breach of contract, unfair competition and tortuous interference. These are quite harsh accusations and Sony will have its work cut out for it.

Next is the claim of trademark infringement.
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."
Having seen both a Kevin Butler commercial and the Bridgestone ad featuring Lambert, I find it hard to see the similarities beyond the superficial. The Kevin Butler character plays as an overly-serious and often hyperbolic character to its comedic levels. The Bridgestone ad features an excitable and fast talking character. Aside from that, Kevin Butler was built to be a VP while the Bridgestone guy is merely an engineer in an R&D department.

These differences are not going unnoticed by Bridgestone either. It has made the claim that not only are the characters different, but Sony has no actual claim on the Kevin Butler character at all.
"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.
This is certainly not the first time something like this has happened. Many years ago, Wendy's had a very successful advertising campaign starring Clara Peller as a little old lady asking a generic fast food chain the famous question, "Where's the beef?" She lost her job with Wendy's after she starred in a Prego commercial uttering the phrase: "I found it. I really found it."

What these accounts show is that the ownership mentality of many corporations goes beyond logos and phrases, to specific actions, characters and the actors behind them. This is certainly a dangerous line of thought for anyone to take up. While Sony most likely has a vested interest in the Kevin Butler character, claiming that its interest in the character extends as far as the actor himself is certainly going to make Lambert's career more difficult potentially to the point of halting it. If he cannot star in any commercial for fear of looking and acting too much like himself, then what point is there in continuing in an acting career?


Reader Comments (rss)

(Flattened / Threaded)

  1.  
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    Ninja (profile), Oct 9th, 2012 @ 12:57pm

    If I were the actor I'd then ask for a lifetime monthly wage since they are earning so much with my image that I can't get any other jobs as an actor. Sounds fair.

     

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  2.  
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    GMacGuffin (profile), Oct 9th, 2012 @ 1:53pm

    That's just silly. But then, if Taster's Choice had tried to keep Anthony Steward Head from playing Giles on Buffy, I'd be super pissed. That would be like the suckiest alternate universe...

     

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  3.  
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    That One Guy (profile), Oct 9th, 2012 @ 2:10pm

    Thank you Sony

    For so often pulling stunts so insane, so ridiculous, that it allows me to resist any temptation I might have otherwise had to buy any of your products, saving me probably hundreds of dollars.

    Truly, I, and my wallet, thank you.

     

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  4.  
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    Anonymous Coward, Oct 9th, 2012 @ 2:25pm

    This is filed in California so non-compete clauses are often void. The other thing is he never mentions anything about Kevin Butler. Sony is basically annoyed that Jerry Lambert is in a commercial that features a video game and its not a PlayStation product.

     

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  5.  
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    Tunnen (profile), Oct 9th, 2012 @ 2:41pm

    Re:

    According to the accountants that Sony has borrowed from the movie industry, they are not making a profit and in fact may never, therefor they is no money to share with the actor. Also, they'll be deducting the lawsuit costs from his salary. =P

     

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  6.  
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    Lord Binky, Oct 9th, 2012 @ 2:42pm

    That's how it works with music right?

     

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  7.  
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    Rain Day, Oct 9th, 2012 @ 3:39pm

    Bad behavior from Sony?

    My Goodness! We would certainly never expect bad behavior from Sony! Right?

    Oh wait...the truth is we'd never expect anything less than despicable behavior from Sony. Does anyone buy Sony products anymore?

    This is an old Onion YouTube about Sony, but it still makes me laugh: https://www.youtube.com/watch?v=90r1YCO2WB0

     

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  8.  
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    Jeffrey Nonken (profile), Oct 9th, 2012 @ 3:41pm

    If he owes them his likeness, then they owe him a living.

     

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  9.  
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    nospacesorspecialcharacters (profile), Oct 9th, 2012 @ 3:45pm

    Next up, Sony to sue Will Smith for his potrayal of 'Agent J' in Bad Boys 2, Wild Wild West, I Robot...

    And what about all those typecast actors out there who are about to find their careers take a giant nosedive? I'm looking at you John Mclane, Terminator, Rocky Balboa, Bruce Wayne, Richard Sharpe, Scott Pilgrim, Mace Windu, Ace Ventura, Rachel from Friends, Spock, Bridget Jones, Lara Croft, I could go on...

     

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  10.  
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    Titania Bonham-Smythe (profile), Oct 9th, 2012 @ 4:29pm

    It sounds suspiciously like someone at Sony said to Jerry Lambert "I'll make sure you never work in this town again".

     

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  11.  
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    Anonymous Coward, Oct 9th, 2012 @ 4:59pm

    Does Sony have plans to do more commercials with the actor? Of course not. Let the man be.

     

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  12.  
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    morisato (profile), Oct 9th, 2012 @ 5:00pm

    I don't really know what to think of this. Is Sony now saying that they can claim the copyright to any actor or actress that appears in any of their commercials?

    If any court in this country accepts this as a valid lawsuit, they would become the laughing stock of the entire country because nobody can claim a copyright on your physical appearance because it would effectively ban you from doing any work for any company, ever.

    The court system should throw this lawsuit out because it's simply ridiculous on its claims. The only way they can sue is if the "Butler" character is ever mentioned in the commercial.

     

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  13.  
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    MahaliaShere (profile), Oct 9th, 2012 @ 5:59pm

    Re: Thank you Sony

    I'm much the same way. It's just damned unfortunate that the only decent headphones I own happen to be branded Sony.

     

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  14.  
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    Anonymous Coward, Oct 9th, 2012 @ 6:44pm

    Re: Bad behavior from Sony?

    ROFL GG

     

    reply to this | link to this | view in thread ]

  15.  
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    Michael, Oct 9th, 2012 @ 7:47pm

    Shameless corporate power play

    His contract with Sony expired, so they have absolutely no say over what the man does from now on.

     

    reply to this | link to this | view in thread ]

  16.  
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    btrussell (profile), Oct 9th, 2012 @ 7:47pm

    Re: Re: Thank you Sony

    Koss

     

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  17.  
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    MahaliaShere (profile), Oct 9th, 2012 @ 9:22pm

    Re: Re: Re: Thank you Sony

    Thanks, I'll keep those in mind.

     

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  18.  
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    That One Guy (profile), Oct 9th, 2012 @ 9:32pm

    Re: Re: Thank you Sony

    (Apologies in advance for how shillish this is going to sound)

    I picked up a pair of $60 Turtle Beach headphones myself, and they seem to be pretty good for the price. They're marketed for gaming, but with the connections they've got they can be used for computer use as well without any problem, and would probably hook into just about anything you'd need them for.

     

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  19.  
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    G Thompson (profile), Oct 9th, 2012 @ 10:22pm

    Re:

    The court system should throw this lawsuit out because it's simply ridiculous on its claims. The only way they can sue is if the "Butler" character is ever mentioned in the commercial.

    Even then they would be hard pushed since they are now claiming to own the "Kevin Butler" name in regards to SONY and it's Playstation products. So a competitor could make mention to Kevin Butler in any advertising, they could use anyone with the actual real name of Kevin Butler (I'm sure there would be more than 1 in the USA) they could even use the Mr Lambert in one of these ads as long as (for a time as specified in original Sony contract) he is NOT specifically Kevin Butler.

     

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  20.  
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    Teaman, Oct 9th, 2012 @ 10:53pm

    Re: Re: Re: Re: Thank you Sony

    I picked up a pair of Rocketfish headphones/headset that works on PS3/360/PC and sound pretty good, they were on sale at menards for $26.

    All I know, is that I never really liked Sony before, this commercial fiasco sure didn't help, and, even though I saw them, I didn't even remember the Sony commercials until I watched the one in the article. Sorry Sony, but your commercial wasn't memorable enough for me to even remember, much less think a fictional character that existed in them was suddenly selling me tires. Huh, that sounds like a dream I once had.

     

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  21.  
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    That Anonymous Coward (profile), Oct 9th, 2012 @ 11:12pm

    Intellectual Property Kills Intellect.

    Maybe if they spent the money they are obviously wasting on lawyers on making a better system or I dunno web security...

    2 consoles facing end of life and your wasting time and effort thrashing around trying to pretend you have the larger penis.

    Sony - Rootkits, Removing Features, Getting "Hacked"
    Don't you have way more important things to focus on rather than a idiotic lawsuit?

     

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  22.  
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    Anonymous Coward, Oct 10th, 2012 @ 2:09am

    Yet another example of how intellectual "property" is unintellectual

     

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  23.  
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    Mesonoxian Eve (profile), Oct 10th, 2012 @ 3:42am

    If I were the actor, I'd really take this threat seriously. Sony is world renowned for giving, then taking away.

    If he wants to remain a male, settle, or "Other OS" may be stripped as a result.

    Sarcasm aside, what the hell is wrong with this company?

    If Sony's trying to win me back as a customer, they're fucking up so badly, I'm cursing in my post!

     

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  24.  
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    Anonymous Coward, Oct 10th, 2012 @ 4:11am

    *facepenis*

    Somethimes the stupidity is too strong for a normal facepalm

     

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  25.  
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    Mike42 (profile), Oct 10th, 2012 @ 10:11am

    Sony has already shrunk to 1/5 of its former size. They marginalized themselves due to contempt for standards, customers, and the public at large. The new US head was promising change.

    Now we know what kind of change: even more of the same.

     

    reply to this | link to this | view in thread ]

  26.  
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    vastrightwing, Oct 10th, 2012 @ 10:28am

    Letter

    Dear Sony,
    You sure know how to keep me from buying your products, don't you? First you come out with an expensive Beta tape deck, and let VHS kill your format after I spend thousands of dollars on it. Then you get me to buy your cameras with your proprietary memory sticks and your mini-disk player. Then you add rootkits to your music CDs and open my computer up to hackers. Next you start suing consumers who want to modify their own PS2/3 and now you attack an actor based on his looks. So basically you think you control everyone in the world and you attempt to punish people you don't like. That must mean me too. I surely won't be buying any new Sony products in the future. I will continue my boycott.

     

    reply to this | link to this | view in thread ]

  27.  
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    Anonymous Coward, Oct 10th, 2012 @ 10:47am

    This news does not affect me. Sony is already so far up my black list that a few more meters won't change much.

     

    reply to this | link to this | view in thread ]

  28.  
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    fuchikoma, Oct 10th, 2012 @ 3:22pm

    Re:

    Not quite the same instance though. It'd be more like if Taster's Choice tried to keep Head from doing an ad for a restaurant or fast food place that endorses a Folgers promotion.

     

    reply to this | link to this | view in thread ]

  29.  
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    Anonymous Coward, Oct 14th, 2012 @ 6:31am

    The case WOULD have merit, if he were playing the same character *OR* a character similar enough that you wouldn't have to be mentally deficient to confuse the two. And then, the case would be a slam dunk if the above was true *AND* he was advertising for a direct competitor to the PS3.

    Like it or hate it, the clause in his contract keeping him from batting for the other teams, so to speak, makes a great deal of sense. That can cause confusion. Now, last I checked, Bridgestone isn't a competitor for the PS3.

     

    reply to this | link to this | view in thread ]

  30.  
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    Anonymous Coward, Oct 17th, 2012 @ 2:26pm

    Re:

    Sony sells electronic games. Bridgestone sells tires. Are they really so different?

     

    reply to this | link to this | view in thread ]


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