Sacha Baron Cohen is no stranger to litigation. The creator of the Borat, Ali G and other characters has been sued on several occasions. He has faced suits from unwitting participants in his films who claimed they were tricked into signing releases. He has been threatened with a lawsuit by the government of Kazakhstan arising out of the treatment of that country in the first Borat film. He even has been sued for defamation by former Alabama Senator Roy Moore.
But now Baron Cohen is the plaintiff in a claim against a Massachusetts based Cannabis dispensary which used his image as the Borat character on a billboard that appeared on a Massachusetts highway. The plaintiffs in the suit include both Baron Cohen personally and also a company called Please You Can Touch, LLC ("PYCT") which owns the copyrights in the Borat films. A copy of the Complaint can be found here. Baron Cohen claims that the use of his likeness as well as of the catchphrase "It's Nice" infringes his right of publicity under Massachusetts law and that the billboard falsely or misleadingly implies his endorsement of the Cannabis dispensary in violation of Section 43(a) of the Lanham Act. PYCT claims that the use infringes its federally registered copyrights in the Borat character.
This does seem like a strong claim, but here are a few very preliminary thoughts and comments.
- It is interesting that Baron Cohen decided to sue under the right of publicity law of Massachusetts rather than under California law where he claims to be a resident. This may be due to the fact that Massachusetts, unlike New York and many other states, does not automatically look to the law of the plaintiff's domicile as the source of any claim. But it still is a bit surprising that he did not make a more general right of publicity claim rather than pinning himself down. It may be that there were tactical reasons for this.
- Lanham Act claims for false endorsement are harder to prove than right of publicity claims where liability may exist irrespective of whether or not anyone is confused as to the plaintiff's association with the infringing use. It is not at all clear that a consumer perception survey would find that a sufficient number of people would believe that Baron Cohen is endorsing the defendants' dispensary.
- Finally, it is not easy to establish a copyright in a character separate and apart from the vehicle (i.e., book or movie) in which it appears. One would have surmised that the actual image of Borat (Baron Cohen) used on the billboard would be protected without having to make a claim based on the character. But again, there is much we don't know.
It also is interesting that the complaint includes a bit of moralizing that might come as a surprise to Borat fans. Baron Cohen notes that he has never used Cannabis, that Cannabis remains illegal on the federal level and that as an Observant Jew, he does not want to become involved in "the heated controversy among the Orthodox Jewish community about whether cannabis can be used under Jewish traditions, customs and rules...."
Baron Cohen claims more than $9 million in damages for these alleged infringements. No matter how this one turns out, it is very risky to make commercial use of a celebrity's image, even where the use might be considered to be in good fun.
"The unlawful actions by the Defendants amount to a willful and conscious disregard of the rights of Mr. Baron Cohen and PYCT, are knowingly false, and are intentionally designed to capitalize on the goodwill, recognition, and fame associated with Mr. Baron Cohen and his Borat character.
