A Problem on the Rise with the Explosive Growth of Internet-Based Services, Misappropriation of Identity Or Personality Cases May Become Even More Common in Canada

Home , Personality rights, Privacy Act (Canada)

COUNTRY CORRESPONDENT CO-PUBLISHED EDITORIAL Canada Bereskin & Parr LLP

A problem on the rise With the explosive growth of internet-based services, misappropriation of identity or personality cases may become even more common in Canada

Personality rights in Canada stem from defendant’s summer camp promotional such as jazz pianist Glenn Gould. The court an individual’s publicity rights – which brochure could have impaired Athans’ in Horton similarly found that a painting are proprietary in nature – and from exclusive right to market his personality of the hockey player created for a charity the right to privacy, a personal interest. through endorsements. drive was in the public interest, with any They are protected by common law and Courts have suggested that personality commercial purpose being incidental. statute. Common law torts may be used rights survive death. Gould Estate v Stoddart Although most successful to protect personality (outside Quebec): Publishing Co ((1996), 74 CPR (3d) 206 (Ont misappropriation of personality cases misappropriation of personality and Ct (Gen Div)), aff’d (1998), 80 CPR (3d) 161 relate to famous individuals, fame is not a passing off. (Ont CA), leave to appeal to SCC refused prerequisite. A 2012 Alberta court held that The tort of misappropriation of (1999), 236 NR 396 (note) (SCC)) contained ordinary professionals can seek protection personality recognises an individual’s an aside that since publicity rights are akin under this tort: “A professional’s name and proprietary right to commercially exploit to intangible property, like copyright, they reputation is entitled to be protected from his or her own name, image, voice and should be a descendible asset. The Gould unauthorized commercial exploitation other components of personality that are court did not set a term of protection after every bit as much as a celebrity’s name associated with or identify him or her death, but suggested something similar and likeness” (Hay v Platimun Equities (Joseph v Daniels (1986), 11 CPR (3d) 544 to copyright (ie, life of the person, plus 50 Inc, (2012 ABQB 204 at para 73)). The case (BCSC) at 549; Krouse v Chrysler Canada years). A 2004 Nova Scotia court similarly involved a defendant company which Ltd (1973), 13 CPR (2d) 28 (Ont CA) at 44; held that “property rights may attach to forged a chartered accountant’s signature Athans v Canadian Adventure Camps the goodwill generated by a celebrity’s on loan documents to secure financing. Ltd (1977), 34 CPR (2d) 126 (Ont HCJ) at personality and that goodwill will survive There is no set formula for establishing 136). Central to this tort is whether some that person’s death” (Hapi Feet Promotions damages. Actual damages may be granted component(s) of the claimant’s personality Inc v Martin (2004 NSSC 254)). where the misappropriation relates to an have been used by the defendant and Permission to use one’s personality may endorsement and are calculated according whether this use took place without be explicit or implicit. The court in Horton to the amount that the plaintiff would permission and for the defendant’s v Tim Donut Ltd ((1997), 75 CPR (3d) 451 reasonably have received commercially commercial gain. The defendant’s intent is at 459–60 (Ont Ct (Gen Div))) held that a for permission (Athans at 140 (C$500); relevant, but not determinative. deceased famous hockey player implicitly Hays (C$18,000)), taking into account any This tort in Canada was first discussed assigned his publicity rights to Tim Donut corresponding benefit that he or she may in Krouse and endorsed five years later Ltd during his lifetime by allowing it to have obtained from the misappropriation in Athans. Both cases involved sports use his personality in the development of (Racine v CJRC Radio Capital Ltée (1977), 17 figures whose likenesses were used on a business, in which Horton was a partner. OR (2d) 370 (Ottawa Co Ct)). Plaintiffs may promotional materials distributed by the Further, the court found that Tim Donut be granted nominal damages where no defendants. In Krouse the court found could also own trademark registrations for actual losses were suffered, although one no misappropriation. The photograph in Horton’s name. Permission may also be court denied even nominal damages where question showed only Krouse’s back and implicitly revoked – for example, following other claims had already provided sufficient jersey number amid a crowd of players. termination of an employment contract. compensation (Trout Point Lodge Ltd v He himself was not identifiable and the The commercial nature of the Handshoe (2014 NSSC 62 at paras 29–32)). use could not be seen to endorse the unauthorised use is key. Courts distinguish Courts have also granted injunctions defendant’s automobiles. between ‘sales’ and ‘subject’ use of based on the “loss of control over whom or However, misappropriation was found personality in a new public interest work. what [the plaintiff’s] image is associated in Athans, since a line drawing used of This protects the balance between an with”, which can cause irreparable harm Athans, a professional water-skier, in his individual’s right to commercially exploit (Salé v Barr, 2003 ABQB 431 at para 14). signature pose identified him. The court his or her personality and the public’s right In Salé the court granted an interlocutory found that the use of the drawing in the to learn more about a famous individual, injunction to stop a photographer who

84 | FEBRUARY/MARCH 2015 www.WorldTrademarkReview.com took unauthorised photographs of a Jill Tonus Tamara Céline Winegust famous Canadian Olympic skating duo Counsel Associate from selling posters with those images. The court indicated that injunctions may [email protected] [email protected] be more appropriate than damages in Jill Tonus is counsel at Bereskin & Parr Tamara Céline Winegust is an associate misappropriation cases, since “the Court LLP and head of the new media/copyright at Bereskin & Parr LLP and a member cannot put a price on one’s reputation” practice group. Her practice focuses of the trademark practice group. Her (Salé at para 12). on copyright and trademark matters, practice focuses on trademarks, new The tort of passing off – and its including trademark and copyright media/copyright, licensing, marketing and statutory counterpart at Section 7(b) of registration, trademark oppositions, advertising law, in addition to litigation. the Trademarks Act (RSC 1985, c T-13) assignments of rights, due diligence and – protects against misrepresentations licensing, particularly in the entertainment, stemming from the unauthorised use of publishing and software industries. a person’s name or likeness, rather than with misappropriations. It may be used to prevent a person from misrepresenting his or her goods and services as those of proof of damage”. Under the British she sat in a public place. another, or from suggesting that those Columbia statute, a former Wal-Mart In addition to Section 7(b), Section 9 of goods and services are sponsored by or employee was granted C$15,000 in damages the Trademarks Act contains prohibitions associated with that individual (Asbjorn after Wal-Mart used his photograph in its against: Horgard A/S v Gibbs/Nortac Industries Ltd advertising without permission. Further, • the adoption, in connection with a (1987), 14 CPR (3d) 314 at 327 (FCA)). British Columbia’s statute does not require business, of any marks that falsely The Supreme Court of Canada in Ciba- that the individual be identifiable. suggest a connection with any living Geigy Canada Ltd v Apotex Inc ([1992] Other aspects of the statutes restrict individual (Section 9(1)(k)); or 3 SCR 120) set out the three passing-off the action. Intent is needed, which raises • marks that are, or may be mistaken components: the required level of culpability. Protected for, the portrait or signature of any • the existence of goodwill in the mark; aspects of personality are enumerated and individual who is living or has died • deception of the public due to a restricted to “name or portrait” (British within the preceding 30 years (Section misrepresentation; and Columbia) and “name or likeness or voice” 9(1)(l)), without his or her consent. • potential or actual damage to the (other provinces). Death extinguishes the plaintiff. right, except in Manitoba. Even with consent, Section 12 prohibits In Quebec, personality rights are trademark registrations comprising the Historically, it was difficult for protected through privacy principles in “name or surname of an individual who individuals to meet this test unless both the Civil Code of Quebec (SQ 1991, c 64). is living or had died within the preceding parties shared a common field of activity. Section 36 relates to invasion of privacy thirty years”, unless that name has become However, the tort has been expanded and caused by use of a person’s “name, image, distinctive of the applicant. the defendant’s product or business need likeness or voice for a purpose other than With the growth of internet-based only be seen as “approved, authorized or the legitimate information of the public”. services such as Twitter and Instagram, endorsed by the plaintiff” (National Hockey A second, broader action based on Section online advertising and cloud-based League v Pepsi-Cola Canada Ltd (1992), 42 5 of the Quebec Charter of Human Rights services storing personal information, CPR (3d) 390 at 401 (BCSC); Salé, supra). and Freedoms (RSQ c C-12) provides that misappropriation of identity or personality The public must still be able to distinguish “every person has a right to respect for his cases may become more common. The the individual in the defendant’s materials. private life”. The nexus between privacy legal ramifications of these new services A deceptive misrepresentation can occur and personality under Section 5 was and practices are already being felt. In May, only if there is an association between described by the Supreme Court of Canada a British Columbia Court certified a class the individual and the defendant’s in Aubry v Éditions Vice-Versa Inc ((1998), action lawsuit against Facebook under that unauthorised use. 78 CPR (3d) 289 (SCC)): “Since the right province’s Privacy Act, seeking damages The Privacy Acts for Manitoba, to one’s image is included in the right to for the unauthorised use of Facebook users’ British Columbia, Saskatchewan and respect for one’s private life, it is axiomatic names and images as part of the site’s Newfoundland each create statutory that every person possesses a protected Sponsored Stories feature, which creates actions similar to the misappropriation of right to his or her image. This right arises ads containing a Facebook user’s name personality tort, but which are both broader when the subject is recognizable” (Aubry and image, and targets that advertisement and narrower. For example, the statutes at 307). In Aubry a non-celebrity objected to other users (Douez v Facebook, Inc, 2014 make access to relief easier by making to the use of her photograph in a magazine BCSC 953). This is a case to watch, as it may misappropriations “actionable without that was taken without permission while be just the tip of the iceberg.