Last year, we wrote about an interesting trademark infringement lawsuit filed by Sony Computer Entertainment America LLC (“Sony”) over the appearance of its former spokesperson, Jerry Lambert, in a commercial for Bridgestone Americas, Inc. (“Bridgestone”). The lawsuit drew attention to the increasing use of memorable recurring characters in marketing and advertising campaigns. Brand owners expend considerable resources developing recurring characters or spokespersons, often utilizing them as the focal point of extensive marketing and advertising campaigns across a variety of media. For example, the GEICO Gecko (memorably voiced by Jake Wood) is prominently featured in print, radio and television advertisements and is a central figure in GEICO’s advertising and marketing efforts. There is no question that the successful use of recurring characters and spokespersons like the GEICO Gecko creates a highly valuable association in a consumer’s mind between the brand and the recurring character or spokesperson. It is not difficult to imagine the potential harm if a recurring character or spokesperson suddenly appears in a competitor’s commercial.
In Sony’s case, Lambert had prominently portrayed the character “Kevin Butler” for several years as part of an extensive marketing and advertising campaign appearing in over thirty commercials and promotional pieces, among other things. Sony alleged that the character Kevin Butler “is a well-known and popular figure among video game consumers and has achieved widespread recognition as distinguishing [Sony’s] goods and services from others.” Significantly, Sony alleged that Lambert and his company, Wildcat Creek, Inc. (“Wildcat Creek”), “agreed not to promote any competing video game products.” Sony filed the lawsuit after Lambert appeared in a Bridgestone commercial advertising “Game On!”, a tire promotion featuring Sony’s rival Nintendo.
According to a stipulation filed on January 9, 2013, Sony and Wildcat Creek successfully reached a settlement of Sony’s claims, including the entry of a stipulated injunction. The stipulation contains a number of interesting facts agreed upon by Sony and Wildcat Creek. Among those facts, Sony and Wildcat stipulated that the Kevin Butler character had “achieved widespread fame and consumer recognition, especially among consumers of computer entertainment systems and video games” resulting in the character becoming “closely associated in consumers’ minds with [Sony] and its products.” Moreover, Wildcat Creek acknowledged that it had previously “agreed” that Sony “would forever own all rights in the ‘Kevin Butler’ character” and agreed that, after Bridgestone’s commercial aired, “many consumers had identified the character Lambert portrayed in the ‘Game On!’ commercial as ‘Kevin Butler’.”
Sony and Wildcat Creek agreed that, for a period of two years, Lambert cannot appear in any commercial, advertisement or promotion “that features, includes, or mentions any other video game or computer entertainment system or video game company.”
The outcome supports the view that recurring characters or spokespersons are valuable to brand owners and that brand owners will (and should) take all necessary action to protect their rights. This case should also make brand owners aware that it imperative to ensure that all of the brand owner’s rights are protected from the very beginning of an advertising or marketing campaign. Specifically, it is imperative that the brand owner contractually confirm that it will retain all rights in and to the recurring character.
Pursuant to the stipulation, Wildcat Creek has now been dismissed from the case. The case against Bridgestone continues and we will continue to monitor it.
