Trademark Infringement | "Sony Sues its Former Spokesperson for Trademark Infringement"

By: Alison Keeley
Source: www.ipbrief.net
Category: Trademark Infringement

Trademark Infringement

Advertisements have always had characteristic spokespersons that are used in a series of ads.  Just think of the Old Spice Guy, Fabio for “I Can’t Believe It’s Not Butter,” and “Flo” the character in all those Progressive ads, to name a few.  It is clear that these characters and actors can be heavily associated with a particular product and a particular ad campaign.  They appear on billboards, on busses, and in a series of ads.  But what does that mean for the actor in the future?

This question is raised by Sony’s recent lawsuit against Bridgestone tires and the representation of actor Jerry Lambert.  The actor played a character called “Kevin Butler” in a series of ads for PlayStation 3.  In addition to appearing in a series of television commercials, the actor appeared live, in character, at the Electronic Entertainment Expo.  The character even has his own Twitter account.  Sony did clearly invest a lot in “Kevin Butler” and by extension, Jerry Lambert.  But, of course, ad campaigns end and actors may eventually move onto a new ad.  Jerry Lambert went on to be in a Bridgestone tire ad.  The problem?  The characters were playing on a Nintendo Wii in the ad.

Sony, the makers of PlayStation, sued both Bridgestone and Lambert for trademark infringement, breach of contract, and tortious interference with a contractual relationship.  Apparently, Sony claims that it had an exclusivity agreement with Lambert that prevented him from appearing in ads for Nintendo or similar competitors.  While the ad isn’t technically for Nintendo Wii, the actors are playing Mario Kart for pretty much the whole ad, and the promotion allows those who purchase Bridgestone tires to get a Wii console as part of a promotion.

Bridgestone denies that Lambert was playing the “Kevin Butler” character in its ad.  Apparently Lambert’s contract with PlayStation expired three days before the Bridgestone ad aired.  But if Bridgestone and Nintendo are using PlayStation’s character or this violates the exclusivity clause (which, given the unusual situation here, probably depends on the wording of the clause) then Sony has a point.  This also raises the question of how much control a company can have over an actor when it has invested time building an actor into a particular advertising character and associating that actor with its product.   But how much can a company owe an actor’s basic appearance?  In this case, at least, it is clear at least some consumers identify a connection between Lambert and PlayStation.  This article, posted before Sony filed a lawsuit, bears the title “Sony spokesperson Kevin Butler’s latest commercial has him…promoting the Wii?!”

Based on at least one reporter’s impression, Sony may be able to prove that consumers believed that the “Kevin Butler” was in the Bridgestone ads, playing on Lambert’s previous connection with PlayStation.  And while the ad wasn’t exactly for Nintendo products, the fact that the actors were playing on a Nintendo Wii for most of the ad may run afoul of the exclusivity agreement between Lambert and Sony.  But obviously, if the actress who played “Flo” appeared in an All State ad, or that of another similar competitor in the insurance industry, there would be an obvious problem.  The issue will likely ultimately come down to how much the court thinks a company should be able to restrict an actor in order to protect the company’s rights to a character it created.


Source: http://www.ipbrief.net/2012/10/11/sony-sues-its-former-spokesperson-for-trademark-infringement/