Our posts here regularly cover Celebrity-backed cannabis company Who did the right thing (sometimes, did the wrong thing), but a recent copyright infringement case proved that not all celebrities are interested in participating in the industry-of course it should not be assumed that they can use their reputation to promote it.
Solar Therapeutics Inc., a marijuana dispensary in Massachusetts, erected a billboard on the side of the interstate to promote its cannabis products. The billboard has a portrait of Mr. Cohen as his “Borat” movie character, two thumbs up, and his signature “Very good!” The slogan is displayed at the top. It is said that the billboard has been erected for several weeks but has since been removed.
After issuing a suspension and termination letter on behalf of Mr. Cohen and his company Please You Can Touch (which owns all the infringed Borat copyrights), Mr. Cohen and his company personally sued Solar and its president/director, demanding that they deliberately copyright infringement, false advertising and Violation of Massachusetts regulations prohibiting the abuse of propaganda rights.
(By the way, personal liability is not what we often see, especially in California, but Massachusetts law stipulates that if a company official personally directs, controls, approves, or approves an illegal act, the company official shall respond to the company’s infringement. Take personal responsibility.)
The complaint explains in great detail why this misappropriation is so destructive-Mr. Cohen has been very critical about his public participation; he has never participated in advertising any commercial products or services; he has never used it in his life marijuana. Despite this, the complaint alleges that Solar deliberately misappropriated his image in order to increase its sales revenue (estimated to be approximately US$26 million per year), and “betting” that Mr. Cohen never knew about their infringing billboard.
The amount of the claim is staggering: at least $9 million. This includes market value compensation, statutory triple compensation, punitive damages and attorney fees. Unfortunately, for Solar, Mr. Cohen and his company are actually entitled to all of this. According to their copyright infringement claims (not less than 12 copyrights), Article 504(b) of the Copyright Law provides for actual damages, the transfer of profits from the defendant as a result of the infringement, their reasonable attorney’s fees, and packages.
The measure of damages for misappropriation is the “market price”-the amount that the defendant will have to pay for the same or similar celebrities (status and success) if the celebrity is willing to allow it. In addition, since Solar not only misappropriated Mr. Cohen’s image, but also misappropriated his image as a copyrighted character Borat, the calculation must also include damages to the copyright owner of the character. This number is usually the same (at least) the amount required to pay the celebrity. So here, Solar is studying the double damage of the same image. The complaint cited cases involving Kim Kardashian and Michael Jordan, as well as past advertising quotations provided to Mr. Cohen himself, claiming that this combined damages figure easily reached millions of dollars.
Since copyright infringement cases are often the case, this should be another lesson in the importance of reviewing and signing all these marketing efforts that seem to put many companies in trouble. We will continue to follow up and see what Solar says, but this seems to be a very clear example of what should not be done.