Bridgestone Strikes Back At Sony Actor Trademark Lawsuit

October 10, 2012, by Mandour & Associates, APC

Los Angeles – Bridgestone Americas Tire Operations LLC said Thursday that it was completely within its rights to use the actor who played the “Kevin Butler” character in Sony Computer Entertainment America LLC’s Playstation ads for years in one of its own commercials featuring him playing a Nintendo Wii, in response to Sony’s trademark infringement and other claims.

In September a Bridgestone commercial aired on national television in connection with a tire promotion under which a customer could receive a Wii video game system upon the purchase of select Bridgestone tires. The commercial featured actor Jerry Lambert as a Bridgestone engineer playing a Wii.

Lambert is principally known for the many Sony television commercials and ads in which he has played the character of Kevin Butler, a fictional Sony vice president whose stated mission is to bring “glory” back to video gaming.

Sony owns the distinctive Kevin Butler character, and has used him for years as a trademark in commercials advertising Playstation products, Sony says.

“Through widespread and continuous use and promotion, the ‘Kevin Butler’ character has obtained secondary meaning and achieved widespread recognition,” the complaint filed in September against Bridgestone and Lambert’s company says. “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, also played by the same actor, to advertise its products or services in the commercial.”

Bridgestone’s actions accordingly constitute a violation of Sony’s rights under the Lanham Act, Sony claims.

“Bridgestone denies that ‘Kevin Butler’ appears in any Bridgestone commercial, and thus denies that he does anything whatsoever in any such commercial,” Bridgestone’s answer to the complaint says.

Sony says the Bridgestone commercial features the character as a lead video game tester participating in a test of Nintendo’s Mario Kart game for the Wii, who “speaks excitedly about the Nintendo Wii and shouts gleefully when his colleague wins first place in the game.”

Consumers clearly recognize Lambert as Kevin Butler, and are confused as to why he is now appearing to endorse Nintendo products, Sony says. Their confusion is only increased by the fact that the character appears to be playing Mario Kart while Sony is actively promoting the launch of its own go-kart racing video game, Little Big Planet Karting, in conjunction with a cartoon version of the Kevin Butler character, the company says.

Sony is also asserting claims for unfair competition, misappropriation and breach of contract