This article first appeared in Entertainment Law Matters, a Frankfurt Kurnit legal blog.
Last month, Sony Computer Entertainment America LLC ("Sony") filed a complaint in federal court in California against Wildcat Creek, Inc. ("Wildcat Creek") (a company of which Jerry Lambert is President), and the Bridgestone tire company, alleging Lanham Act violations, unfair competition, breach of contract, tortious interference and misappropriation for the use of Sony's "Kevin Butler" character in Bridgestone's "Game On!" co-promotion with Nintendo.
In the co-promotion, Bridgestone customers could receive either a $70 gift card or a Nintendo Wii (the "Wii") if they purchased four Bridgestone tires. The commercial depicted three Bridgestone employees playing Mario Kart on the Wii and then explaining the promotion. One of the employees, according to Sony, too closely resembles Sony's Kevin Butler character.
According to the Complaint, the Kevin Butler character is an invention of Sony and Wildcat that has featured prominently in Sony's advertising for the PlayStation 3 gaming console since late 2009. Sony claims that Kevin Butler has "achieved widespread recognition as distinguishing [Sony's] goods and service from others." Kevin Butler is so popular that he has his own Twitter account and Wikipedia page and is known as the "face of Sony PlayStation."
Thus when the actor who plays Kevin Butler, Jerry Lambert, appeared a commercial for Bridgestone playing Nintendo's Wii gaming console to promote Bridgestone's giveaway, gaming aficionados were confused as to why Kevin Butler was playing a Wii.
The crux of Sony's argument rests on two provisions in its agreement with Wildcat Creek regarding Mr. Lambert's services and the Kevin Butler character. The first is the exclusivity clause, which reads, in relevant part:
[Mr. Lambert] will not provide his services, and neither [Wildcat Creek] nor [Mr. Lambert] will authorize or permit the use or imitation of [Mr. Lambert's] name, photograph, likeness, endorsement, voice or biography, in any way, in connection with the advertising, promotion or sale of (i) an electronic game or gaming system; or (ii) any product related to electronic games or gaming systems manufactured or manufacturers listed in Exhibit A...
Nintendo was one of the manufacturers listed in Exhibit A. Although Bridgestone's Game On advertisement did not begin airing until three days after Sony and Wildcat Creek's contract expired, Sony notes that Mr. Lambert began working for Bridgestone in or around February 2012 when the contract, and the exclusivity provision, was still in effect. Bridgestone, Sony alleges, was aware of the contract and purposefully interfered with Sony's contractual relationship with Wildcat Creek. Similarly, Sony claims Wildcat Creek is in breach of the contract for allowing Mr. Lambert to appear in the Game On commercial which promotes the Nintendo Wii gaming console.
In the second provision of the contract, Wildcat Creek agreed that the "Kevin Butler" character "will be and remain the sole and absolute property of [Sony] forever" and that "neither [Wildcat Creek nor Mr. Lambert] now has nor in the future will assert any right, title or interest of any kind or nature whatsoever in the materials produced hereunder, or in or to any component part, or tape, dub, copy or element or character or characterization thereof." Thus irrespective of when Mr. Lambert began to work for Bridgestone or when the Game On commercial began to air, Sony claims Wildcat Creek was in breach of the agreement by allowing Bridgestone to borrow so heavily from the Kevin Butler character as to make the two indistinguishable. Further, notwithstanding the contractual provision, Sony claims that Bridgestone's actions amount to misappropriation, unfair competition both under California common law and Cal. Bus. & Prof. Code § 17200, and violates the Lanham Act 15 U.S.C. § 1125(a).
Sony seeks injunctive relief and actual damages and disgorgement of Bridgestone's profits.
Bridgestone has since removed Mr. Lambert from its Game On advertising materials. Source. Nevertheless you can view a promotional picture here.
In its amended Answer, Bridgestone raises several defenses. Bridgestone denies that "Kevin Butler" appears in the Game On commercial or is referenced in the commercial. Bridgestone also argues that Sony's unregistered "Kevin Butler" mark has not acquired any secondary meaning and there was not a likelihood of confusion. Bridgestone also argues that necessary parties have not been named in suit. Although Bridgestone does not specify who the necessary parties are, it is notable that neither Nintendo nor Mr. Lambert is a defendant.
As an aside, Mr. Lambert's appearance as a corporate stock character in other commercials may affect the analysis of whether his character in the Game On commercial is a copy of the Kevin Butler character. See e.g. Geico commercial and Holiday Inn commercial.
Wildcat Creek has yet to answer the complaint.
We will continue to monitor this case with interest.
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