Sony Sues Actor Who Abandoned PlayStation for Nintendo Wii
by Eriq Gardner

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.