Dual Protection for Personality Rights

Co-published editorial

Bereskin & Parr LLP Dual protection for personality rights

Full protection from invasion of privacy is available in Canada

In Canada, personality rights enjoy common In order for protection to arise under the image and name, and that the law entitles him law and statutory protection, stemming common law tort of misappropriation of to protect that right, if it is invaded”. from an individual’s publicity rights (which personality, the defendant must attempt to The court in Gould Estate v Stoddart are proprietary in nature) and the right to derive economic benefit through the Publishing Co ((1996), 74 CPR (3d) 206 (Ont privacy (a personal interest). In terms of unauthorised use of an aspect of the Ct Gen Div), aff’d (1998), 39 OR (3d) 545 (CA), common law protection, the tort of plaintiff’s personality in the form of his or leave to appeal to SCC refused (1999), 236 NR misappropriation of personality is available her name, reputation, likeness “or some 396 (note) (SCC)), addressing an action in to individuals (outside Quebec) who have other components of the plaintiff’s misappropriation of personality, engaged in suffered economic injury as a result of the individuality or personality which the a balancing of the public’s interest in violation of their publicity rights. The viewer associates or identifies with the learning about a famous individual (pianist common law tort of passing off may also be plaintiff” (Joseph v Daniels (Doing Business Glenn Gould) against that individual’s right used in some cases to prevent a person from as Brent Daniels Photography) (1986), 11 CPR to make economic use of his or her identity. misrepresenting his or her goods and (3d) 544 at 549 (BCSC)). This tort is primarily When setting this balance, consideration services as those of another, or suggesting of use to individuals with some degree of must be given as to whether the celebrity is that goods and services are sponsored by or fame whose careers rely on publicity. used solely for commercial exploitation or associated with that individual (Asbjorn The decision in Krouse v Chrysler Canada whether the “subject of the activity is the Horgard A/S v Gibbs/Nortac Industries Ltd Ltd ((1973), 13 CPR (2d) 28 at 44 (Ont CA)) celebrity and the work is an attempt to (1987), 14 CPR (3d) 314 at 327 (FCA)). marked the first delineation of this tort in provide [the public with] some insights Statutory protection for personality Canada. This case involved use of a about that celebrity” (Gould at 213). rights can be found in the Trademarks Act, professional football player’s photograph in Although it is essential to an action for through both the statutory embodiment of an advertisement for the defendant misappropriation of personality that the passing off in Section 7(b) and the automobile manufacturer. The defendant plaintiff’s image be used by the defendant for prohibitions under Sections 9(1)(k) and (l) was not found liable in this case, since it was his or her own commercial benefit, following against adopting as a trademark “any matter not reasonable for the football player to Gould commercial benefit is no longer that may falsely suggest a connection with have an expectation of privacy at a football sufficient to ground liability. Commercial any living individual” or “the portrait or game and the ad, which was meant to benefit stemming from the production and signature of any individual who is living or illustrate the climactic nature of the game distribution of a work which has a celebrity as has died within the preceding thirty years”. to promote the product, was such that no its subject matter, such as a biography, is At provincial level, a statutory tort of inference could be made that the plaintiff unlikely to lead to liability as misappropriation wrongful use of personality is created under was personally endorsing the product. of personality. Liability will stem only from the Privacy Acts of British Columbia, However, Justice Estey held that “there may unauthorised use of the celebrity’s personality Manitoba, Newfoundland and Saskatchewan, well be circumstances in which the Courts in endorsement-type activities. as well as the Quebec Civil Code. In addition, would be justified in holding a defendant Traditionally, for protection to arise, the the Quebec Charter of Human Rights and liable in damages for appropriation of a defendant had to appropriate a symbol of the Freedoms creates a statutory action based on plaintiff’s personality, amounting to an plaintiff’s identity that was readily the right to privacy. invasion of his right to exploit his recognisable to the general public. However, it Although many of the statutory actions personality by the use of his image, voice or is no longer necessary that there be public are extinguished on the death of the person otherwise with damage to the plaintiff” recognition of the celebrity for a finding of whose rights were affected, case law under the (Krouse at 44). liability to ensue. Where the defendant has common law action suggests that the person’s In Athans v Canadian Adventure Camps used the plaintiff’s image in a commercial publicity rights survive his or her death and Ltd ((1977), 34 CPR (2d) 126 at 136 (Ont HCJ)) manner without consent, this is “pro tanto an can be enforced for a reasonable period of Justice Henry set out a similar test, holding impairment of his exclusive right to market his time by his or her heirs, although at present that a plaintiff’s proprietary right exists “in the personality” (Athans at 139). Such recognition is the case law is not conclusive on this point. exclusive marketing for gain of his personality, important only to quantification of damages,

90 World Trademark Review October/November 2010 www.WorldTrademarkReview.com Country correspondent: Canada

as is clear from the decision in Athans, where follows: “It is a tort, actionable without proof misappropriation of personality was found of damage, for a person to use the name or even though a line drawing of a well-known portrait [defined to include likeness] of water-skier, produced from his ‘trademark’ another for the purpose of advertising or photograph and used to promote a water- promoting the sale of, or other trading in, skiing programme, may not have been property or services, unless that other, or a recognisable to the general public. person entitled to consent on his or her Further, although it is to be considered, behalf, consents to the use for that purpose.” the defendant’s intention or lack thereof to The relevant provisions in the Manitoba, appropriate the plaintiff’s image is not Saskatchewan and Newfoundland Privacy determinative. The court in Gould, although Acts are similar, with a slightly wider ambit not having to decide this issue, suggested of protection, which includes unauthorised that this tort action likely survived the use of a person’s name, likeness and voice. death of the celebrity and would be In British Columbia, Saskatchewan and enforceable by his or her heirs for a Newfoundland, the statutory causes of action reasonable period of time – perhaps in the are extinguished on the individual’s death. range of 50 years, like copyrights. This point Jill Jarvis-Tonus Section 36 of the Quebec Civil Code (SQ remains unsettled under Canadian law. Partner 1991, c 64) also recognises that use of a person’s The tort of passing off may also be used [email protected] “name, image, likeness or voice for a purpose by famous individuals to protect their other than the legitimate information of the personas, either under Section 7(b) of the Jill Jarvis-Tonus is a partner, barrister, public” is an invasion of privacy. Under the Trademarks Act (RSC 1985, c T-13) or, more solicitor and registered trademark agent Quebec Charter of Human Rights and likely, its common law counterpart. with Bereskin & Parr LLP. She specialises in Freedoms (RSQ c C-12), individuals can base a The common law tort of passing off copyright and trademark registration, statutory action on the right to privacy prevents a person from misrepresenting his or enforcement and opinion work, and found in Section 5 of the charter, which her goods and services as those of another, or licensing and transactional work related to reads: “Every person has a right to respect suggesting that those goods and services are IP assets, particularly in the entertainment for his private life.” This type of action was sponsored or associated with that individual. and new media industries. recognised by the Supreme Court of Canada The Supreme Court of Canada in Ciba-Geigy in Aubry v Éditions Vice-Versa Inc ((1998), 78 Canada Ltd v Apotex Inc ([1992] 3 SCR 120) set CPR (3d) 289 (SCC)), which involved the out the three necessary components for publication in an art magazine, without passing off where a registered or unregistered consent, of the non-celebrity plaintiff’s trademark is involved: photograph, taken in a public place by the • the existence of goodwill in the mark; defendant photographer. The court held that • deception of the public due to a “since the right to one’s image is included in misrepresentation; and the right to respect for one’s private life, it is • potential or actual damage to the plaintiff. axiomatic that every person possesses a protected right to his or her image. This Historically, it was difficult for famous right arises when the subject is recognizable. individuals to meet the stringent test for There is, thus, an infringement of the passing off, since both parties had to share a person’s right to his or her image, and common field of activity. However, this test therefore fault, as soon as the image is has been expanded so that a common field of published without consent and enables the activity is no longer necessary. It is simply person to be identified” (Aubry at 307). necessary for the defendant’s product or Protection is also afforded to famous business to be seen to be “approved, individuals and public figures under authorized or endorsed by the plaintiff” Meghan Dillon Sections 9(1)(k) and (l) of the Trademarks Act: (National Hockey League v Pepsi-Cola Canada Associate “9 (1) No person shall adopt in connection Ltd (1992), 42 CPR (3d) 390 at 401 (BCSC)). [email protected] with a business, as a trade-mark or Turning to statutory protection, the otherwise, any mark consisting of, or so provincial Privacy Acts in Manitoba, British Meghan Dillon is an associate, barrister, nearly resembling as to be likely to be Columbia, Saskatchewan and Newfoundland solicitor and registered trademark agent mistaken for... form the basis for a statutory tort of with Bereskin & Parr LLP. Her practice (k) any matter that may falsely suggest a wrongful use of personality. Each contains a focuses on trademark prosecution, connection with any living individual; provision regarding a tort, “actionable oppositions and related litigation. Ms (l) the portrait or signature of any individual without proof of damage”, based on the Dillon is also a member of the firm’s who is living or has died within the violation of a person’s privacy. These actions copyright/new media practice group. preceding thirty years.” are more accommodating to non-celebrities than the common law tort of Proof of injury/damage is not necessary, misappropriation of personality because it prove damages. For example, the relevant as Sections 9(1)(k) and (l) constitute absolute is difficult for those who do not normally provision in the British Columbia Privacy Act prohibitions against commercial profit from or market their personality to (RSBC 1996, c 373, Section 3(2)) reads as exploitation. WTR www.WorldTrademarkReview.com October/November 2010 World Trademark Review 91