Jennifer McKenzie

Jennifer McKenzie

Jill Jarvis-Tonus

Jill Jarvis-Tonus

At a time when the cult of personality is becoming increasingly important, the fact that personality rights are recognised in Canada seems obvious. More than ever, personality – including, name, voice, likeness and signature – can have tremendous commercial value. Mainstream celebrities are not the only ones extending their names to lifestyle blogs and products, as social media has spawned a new category of influencers that earn income through followers of their pages and channels. The Forbes list of top influencers includes not just celebrities, but also unknowns with a voice, style or perspective that resonates. There is also a right to privacy (ie, the right not to be exploited). Although lagging somewhat, personality protection can be found in Canadian trademark law, in common law under the torts of misappropriation of personality and passing off, and under privacy statues.   

Protecting names
Names can be registered as trademarks in certain circumstances. Section 12(1)(a) of the Trademarks Act prohibits the registration of a trademark consisting of a word that is “primarily merely” the name or surname of an individual who is living or has died within the preceding 30 years. An objection will generally be raised if there are at least 25 entries of the name or surname located in Canadian telephone directories. If the mark consists of the name or surname of a famous individual, an objection may be raised with fewer than 25 entries.

The objection can be overcome by proving that:

  • the trademark has become distinctive of the applicant at the date of filing through use in Canada (Section 12(2)); or
  • if the applicant has registered the mark in his or her country of origin, the mark is “not without distinctive character” in Canada (Section 14).

The applicability of these sections and their fate after the Trademarks Act is amended (likely by 2019) is beyond the scope of this report. Generally, a registration for a name or surname can be obtained if it can be proved that the name has become distinctive of the applicant in association with the goods and services covered by the application through sales and advertising. The threshold is lower for goods and services for which the named individual has already become famous. For example, the Canadian Intellectual Property Office would accept that CELINE DION is distinctive of her sound recordings and live performances, but could require more evidence of distinctiveness to register her name for energy drinks.    

Registration benefits include perpetual protection provided that the mark is used and renewed every 15 years. While common law rights can also exist, registration confers additional protection, including the exclusive right to use the trademark within the territory and the right to sue for infringement (arguably easier and cheaper than passing off or misappropriation of personality) and depreciation of the goodwill in the trademark.

Apart from registration, Section 9(1)(l) of the Trademarks Act states that no person:

shall adopt in connection with a business, as a [trademark] or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for, the portrait or signature of any individual who is living or has died within the preceding thirty years”.

Section 9(1)(l) confers broad rights:

  • It prohibits the adoption of any mark as a trademark or other in connection with a business that could be mistaken for a portrait or signature. The catch-all phrase ‘or other’ protects portraits or signatures against non-trademark use, such as the mere display of a portrait or signature without use of them as marks to distinguish one’s goods or services.
  • The test under this section is one of visual similarity between the adopted mark and the portrait or signature without regard to the normal criteria for confusion, such as the difference between the goods, services or trade channels.
  • It clearly and unambiguously creates post-mortem rights in the portrait or signature (ie, 30 years after death), leaving aside whether the duration of protection is adequate.

Tort of misappropriation of personality
Although there is little Canadian case law, the tort of misappropriation of personality protects against the unauthorised use of elements of an individual’s personality for commercial gain.

It was first legally recognised in Krouse v Chrysler Canada Ltd (1973 13 CPR (2d) 28 (ON CA)), in which a professional football player sued the car manufacturer for unauthorised use of his image on score cards publicly distributed in an advertising campaign. The player’s face was not visible as he was shown from behind wearing his numbered football shirt.

Although the claim failed, the court held that:

“There may well be circumstances in which the Court would be justified in holding a defendant liable in damages for appropriation of a plaintiff’s personality, amounting to an invasion of his right to exploit his personality by the use of his image, voice or otherwise with damage to the plaintiff.”

In Athans v Canadian Adventure Camps Ltd (1977 (34 CPR (2d) 126 (ON SC)) a professional water skier succeeded in a claim arising from the use of his image in a promotional brochure. The court held that the proprietary right existed in the “exclusive marketing for gain of his personality, image and name”.   

In Joseph v Daniels (Doing Business as Brent Daniels Photography) (1986 11 CPR (3d) 544 (BC SC)) the court characterised the tort, not as protecting privacy, but as “proprietary in nature and the interest protected is that of the individual in the exclusive use of his own identity in so far as it is represented by his name, reputation, likeness or other value”.  

Sale versus subject – are personality rights absolute?
Courts have placed parameters on the tort, suggesting that it is akin to freedom of expression in the United States. In Gould Estate v Stoddart Publishing Co (1996 74 CPR (3d) 206 at 213 (ON SC)) the court held that:

While Canada does not have a constitutional provision akin to the First Amendment which is applicable to the private law, no principled argument has been advanced to suggest that freedom of expression considerations should not animate Canadian courts in identifying the public interest and placing limits on the tort of appropriation of personality. Indeed, freedom of expression would seem to be a compelling and reasonably coherent basis for defining the ‘obvious’ need for limits.

The courts have accepted a ‘sale versus subject’ approach. The tort can succeed where personality rights are used "predominately in connection with the sale of consumer merchandise or solely for purposes of trade – e.g. merely to attract attention" (Estate of Presley v Russen (513 F Supp 1339 at 1358 (US Dist Ct DNJ 1981)), but not when the personality is the subject of the work, such as a documentary or biography (Current Audio Inc v RCA Corp (337 NYS 2d 949 at 954-56 (Sup Ct 1972)).

Canadian courts agree with their US counterparts on this approach. In Gould Estate v Stoddart Publishing Co an Ontario court balanced an individual’s right to economic use of identity (sale) with public interest in the famous pianist Glenn Gould (subject). It considered whether the celebrity was used solely for commercial exploitation or whether the "subject of the activity is the celebrity and the work is an attempt to provide the public with some insights about that celebrity” (Gould at 213).

Do personality rights exist in perpetuity?
While it is relatively settled in Canada that personality rights survive death, it is unclear whether there are term limits similar to other IP rights.

Under the Trademarks Act, a registered name is protected in perpetuity, subject to use and renewal, while a portrait or signature is protected for 30 years after death. However, Canadian common law is less clear. Gould first established that the tort should survive the death of the celebrity and be enforceable by the heirs for a reasonable period:

"The right of publicity, being a form of intangible property under Ontario law akin to copyright, should descend to the celebrity’s heirs. Reputation and fame can be a capital asset that one nurtures and may choose to exploit and it may have a value much greater than any tangible property.” (Gould at 215.)

The court did not specify duration of rights, but suggested the copyright term of life plus 50 years.

Provincial privacy acts and the Civil Code of Quebec
The provincial privacy acts for Manitoba, British Columbia, Saskatchewan and Newfoundland each create statutory actions similar to the misappropriation of personality tort. Each of these is based on the violation of a person’s privacy.

For example, under the British Columbia Privacy Act (RSBC 1996 c 373), an employee was awarded C$15,000 after Wal-Mart used his photograph in its advertising without permission. A British Columbia court certified a class action against Facebook, seeking damages for the unauthorised use of Facebook users’ names and images on the site’s “Sponsored Stories” feature (Douez v Facebook, Inc (2014 BCSC 953)). The British Columbia Court of Appeal stayed the decision as the forum selection clause in Facebook’s terms of use was California and the provisions of the British Columbia statute did not apply extraterritorially (Douez v Facebook, Inc (2015 BCCA 279)).

The Manitoba, Saskatchewan and Newfoundland acts are slightly broader, including the unauthorised use of a person’s name, likeness and voice. In British Columbia, Saskatchewan and Newfoundland, statutory causes of action are extinguished following an individual’s death. The Manitoba statute is silent on this point.

Personality rights in Quebec are protected under the Quebec Civil Code (CQLR c CCQ-1991), making it an invasion of privacy to use a person’s “name, image, likeness or voice for a purpose other than the legitimate information of the public”. Section 5 of the Quebec Charter of Human Rights and Freedoms (CQLR c C-12) is broader: “[e]very person has a right to respect for his private life”. In Aubry v Éditions Vice-Versa Inc (1998 78 CPR (3d) 289 (SCC)) the Supreme Court of Canada held that, "included in the right to respect for one’s private life, it is axiomatic that every person possesses a protected right to his or her image. This right arises when the subject is recognizable” (Aubry at 307). Aubry, a non-celebrity, had objected to the unauthorised use of her photograph in a magazine, taken while she sat in a public place.

Comment
Even in the absence of a robust body of case law, personality protection has been available by combining these causes of action, crafted around the facts at hand. As online fame expands at a dizzying pace, for celebrities and online influencers alike, personality rights law may expand. Further jurisprudence should resolve any uncertainties raised. However, gaps in the law may remain, leaving online personalities inadequately protected. Specific legislation may be required which expressly addresses this phenomenon.

For further information please contact:

Jennifer McKenzie
Bereskin & Parr LLP
www.bereskinparr.com
Email: jmckenzie@bereskinparr.com
Tel: +1 416 364 7311