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We all know actors who portrayed a role so well that they practically become inseparable from their on-screen personas. Jason Alexander will always George Costanza. For many Americans, Hugh Laurie is Dr. Gregory House. And few people can watch Dennis Franz without also seeing the bare bottom of Detective Sipowicz from NYPD Blue. Yet what happens when, instead of merging with an iconic role, an actor becomes synonymous with a brand their promoting? In essence, what would happen if Mr. Clean was an actor-portrayed person?
Just such a situation has occurred with Jerry Lambert. Mr. Lambert, owner of Wildcat Creek, Inc., portrayed “Kevin Butler” in a series of advertisements for Sony’s Playstation 3. The character became such a success that Sony plans to include a version of Kevin Butler in the upcoming LittleBigPlanet Karting game.
However, like all good things, the relationship between Song and Wildcat Creek eventually came to an end. Sony retained the rights to the Kevin Butler character and the parties went their separate ways. Then, in August, Mr. Lambert appeared in a Bridgestone tire commercial playing a Nintendo Wii in order to advertise Bridgestone’s “GameOn” promotion.
Sony immediately cried foul, filing a trademark infringement case against Bridgestone and Wildcat Creek on September 11, 2012. Sony claims that the character of Kevin Butler has developed a secondary meaning and Bridgestone’s portrayal of the character playing a rival video game console creates a high likelihood of confusion. Bridgestone responded with the following arguments: a) the character of Kevin Butler does not appear in their advertisement (Mr. Lambert plays a “Bridgestone engineer”); b) Sony never registered the Kevin Butler trademark; and, c) there is no secondary meaning.
So where does Kevin Butler end and Mr. Lambert begin? Case law on the question is thin, but the US Court of Appeals for the Second Circuit in Pirone v. MacMillan, Inc. seems to suggest that Sony only has a trademark in the particular portrayal of Mr. Lambert that is associated with the Playstation 3. ”Unlike a stylized flying horse or similar picture marks,” the court wrote, “an individual’s likeness is not a consistently represented fixed image—different photographs of the same person may be markedly dissimilar.” The court went on, “[t]hus a photograph of a human being, unlike a portrait of a fanciful cartoon character, is not inherently ‘distinctive’ . . . . Under some circumstances, a photograph of a person may be a valid trademark—if, for example, a particular photograph was consistently used on specific goods.” For more, the opinion is available at 894 F.2d 579.
So what is that portrayal? Kevin Butler typically wears a tie, slacks and a blue dress shirt with the sleeves rolled up. He is almost always introduced as “Kevin Butler, Vice President of X,” both verbally and through an on-screen graphic. He is often depicted playing Playstation 3 games.
Similarly, in the Bridgestone commercial, Mr. Lambert wears slacks, a tie, and a dress shirt. Yet he also wears a lab coat and is never identified as “Kevin Butler.” He is shown briefly on-screen playing a Nintendo Wii in one commercial but wears a similar outfit in several other Bridgestone ads where is does not play video games.
The key for Sony will be focusing the court’s attention on why Mr. Lambert was chosen for the commercial featuring a Nintendo Wii. Yet in a world where the advertising industry is increasingly focused on going viral and creating a memorable face for a product, the case could have implications for any actor in a commercial or corporate promotion. Can actors essentially conflict themselves out of certain roles? The T-Mobile woman and Allstate’s Mayhem may want to take note.
– Jacob Marshall
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