Photo by Ryan Dickey

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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4 Responses to Hey… isn’t that the guy from?? When Actors Become Trademarks

  1. Kendall Short says:

    I think this is a really interesting issue. I wonder how the original companies, like Sony, would react if the actor were to change their appearance for subsequent work. Doing that for every new job is unreasonable, but if a specific look, like what you described with his clothing, is already established for the original company that made him famous, then perhaps he should create a different look to differentiate his new characters from the original. That could help to reduce any possible confusion. Also, while I know very little on the subject, I wonder how this might tie in with those actors’ rights of publicity should their image instead get used by some media outlet or other source without their consent, causing problems for both the actor and the original company that made them famous.

  2. Amanda Nguyen says:

    What an interesting issue!

    While I sympathize with the Second Circuit’s concern–and I think Elizabeth spotted the key issue–I am wondering what possible recourse companies could have if there is not any recognition for an actor with an established persona. I think it’d be difficult to prove a competitor’s subjective intent so I’m not sure what the correct standard would be. Obviously the company alleging the violation would have the burden of proof. But how would intent be proved? Surely no one would be foolish enough to say, “Oh yes, we stole your actor and his persona.” At the same time, what’s the alternative?

  3. Emily Green says:

    Wow, what a fascinating issue. Personally, I think the Second Circuit makes an excellent point. If individuals could become the trademark themselves, this would be incredibly limiting to actors and actresses–not only decreasing their possible pool of work, but also increasing their possible liability for accepting various acting opportunities. However, the complete freedom of individuals to go from working for Sony as a caricature or trademark for their product to working for Nintendo is a similar capacity could be quite damaging to companies like Sony.

    I think your distinction of why Lambert was chosen for Nintendo’s ad is key. If companies begin using specific actors, such as Lambert, with the intent to damage another companies’ trademark or goodwill, perhaps courts should enforce some measure of protection.

    • jschumer says:

      Definitely agree with this. This would be especially limiting for character actors, who are limited by their nature in the type of acting job they can get. If a “nerd” character actor gets cast for a recurring role in a series of commercials, and the company naturally owns any portrayal similar to that one, the actor will essentially be out of work. Even if they aren’t technically completely limited, companies would be scared of litigation regardless.

      Sony could have easily taken care of this problem by getting Lambert to sign a non-compete agreement. If Lambert’s going to lose a sphere of his possible jobs, he should at least get some kind of compensation for it.