Jill Tonus and Tamara Céline Winegust
Bereskin & Parr LLP
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 an individual’s publicity rights – which are proprietary in nature – and from the right to privacy, a personal interest. They are protected by common law and statute. Common law torts may be used to protect personality (outside Quebec): misappropriation of personality and passing off.
The tort of misappropriation of personality recognises an individual’s proprietary right to commercially exploit his or her own name, image, voice and other components of personality that are associated with or identify him or her (Joseph v Daniels (1986), 11 CPR (3d) 544 (BCSC) at 549; Krouse v Chrysler Canada Ltd (1973), 13 CPR (2d) 28 (Ont CA) at 44; Athans v Canadian Adventure Camps Ltd (1977), 34 CPR (2d) 126 (Ont HCJ) at 136). Central to this tort is whether some component(s) of the claimant’s personality have been used by the defendant and whether this use took place without permission and for the defendant’s commercial gain. The defendant’s intent is relevant, but not determinative.
This tort in Canada was first discussed in Krouse and endorsed five years later in Athans. Both cases involved sports figures whose likenesses were used on promotional materials distributed by the defendants. In Krouse the court found no misappropriation. The photograph in question showed only Krouse’s back and jersey number amid a crowd of players. He himself was not identifiable and the use could not be seen to endorse the defendant’s automobiles.
However, misappropriation was found in Athans, since a line drawing used of Athans, a professional water-skier, in his signature pose identified him. The court found that the use of the drawing in the defendant’s summer camp promotional brochure could have impaired Athans’ exclusive right to market his personality through endorsements.
Courts have suggested that personality rights survive death. Gould Estate v Stoddart Publishing Co ((1996), 74 CPR (3d) 206 (Ont Ct (Gen Div)), aff’d (1998), 80 CPR (3d) 161 (Ont CA), leave to appeal to SCC refused (1999), 236 NR 396 (note) (SCC)) contained an aside that since publicity rights are akin to intangible property, like copyright, they should be a descendible asset. The Gould court did not set a term of protection after death, but suggested something similar to copyright (ie, life of the person, plus 50 years). A 2004 Nova Scotia court similarly held that “property rights may attach to the goodwill generated by a celebrity’s personality and that goodwill will survive that person’s death” (Hapi Feet Promotions Inc v Martin (2004 NSSC 254)).
Permission to use one’s personality may be explicit or implicit. The court in Horton v Tim Donut Ltd ((1997), 75 CPR (3d) 451 at 459–60 (Ont Ct (Gen Div))) held that a deceased famous hockey player implicitly assigned his publicity rights to Tim Donut Ltd during his lifetime by allowing it to use his personality in the development of a business, in which Horton was a partner. Further, the court found that Tim Donut could also own trademark registrations for Horton’s name. Permission may also be implicitly revoked – for example, following termination of an employment contract.
The commercial nature of the unauthorised use is key. Courts distinguish between ‘sales’ and ‘subject’ use of personality in a new public interest work. This protects the balance between an individual’s right to commercially exploit his or her personality and the public’s right to learn more about a famous individual, such as jazz pianist Glenn Gould. The court in Horton similarly found that a painting of the hockey player created for a charity drive was in the public interest, with any commercial purpose being incidental.
Although most successful misappropriation of personality cases relate to famous individuals, fame is not a prerequisite. A 2012 Alberta court held that ordinary professionals can seek protection under this tort: “A professional’s name and reputation is entitled to be protected from unauthorized commercial exploitation every bit as much as a celebrity’s name and likeness” (Hay v Platimun Equities Inc, (2012 ABQB 204 at para 73)). The case involved a defendant company which forged a chartered accountant’s signature on loan documents to secure financing.
There is no set formula for establishing damages. Actual damages may be granted where the misappropriation relates to an endorsement and are calculated according to the amount that the plaintiff would reasonably have received commercially for permission (Athans at 140 (C$500); Hays (C$18,000)), taking into account any corresponding benefit that he or she may have obtained from the misappropriation (Racine v CJRC Radio Capital Ltée (1977), 17 OR (2d) 370 (Ottawa Co Ct)). Plaintiffs may be granted nominal damages where no actual losses were suffered, although one court denied even nominal damages where other claims had already provided sufficient compensation (Trout Point Lodge Ltd v Handshoe (2014 NSSC 62 at paras 29–32)).
Courts have also granted injunctions based on the “loss of control over whom or what [the plaintiff’s] image is associated with”, which can cause irreparable harm (Salé v Barr, 2003 ABQB 431 at para 14). In Salé the court granted an interlocutory injunction to stop a photographer who took unauthorised photographs of a famous Canadian Olympic skating duo from selling posters with those images. The court indicated that injunctions may be more appropriate than damages in misappropriation cases, since “the Court cannot put a price on one’s reputation” (Salé at para 12).
The tort of passing off – and its statutory counterpart at Section 7(b) of the Trademarks Act (RSC 1985, c T-13) – protects against misrepresentations stemming from the unauthorised use of 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 another, or from suggesting that those goods and services are sponsored by or associated with that individual (Asbjorn Horgard A/S v Gibbs/Nortac Industries Ltd (1987), 14 CPR (3d) 314 at 327 (FCA)).
The Supreme Court of Canada in Ciba-Geigy Canada Ltd v Apotex Inc ( 3 SCR 120) set out the three passing-off components:
- the existence of goodwill in the mark;
- deception of the public due to a misrepresentation; and
- potential or actual damage to the plaintiff.
Historically, it was difficult for individuals to meet this test unless both parties shared a common field of activity. However, the tort has been expanded and the defendant’s product or business need only be seen as “approved, authorized or endorsed by the plaintiff” (National Hockey League v Pepsi-Cola Canada Ltd (1992), 42 CPR (3d) 390 at 401 (BCSC); Salé, supra). The public must still be able to distinguish the individual in the defendant’s materials. A deceptive misrepresentation can occur only if there is an association between the individual and the defendant’s unauthorised use.
The Privacy Acts for Manitoba, British Columbia, Saskatchewan and Newfoundland each create statutory actions similar to the misappropriation of personality tort, but which are both broader and narrower. For example, the statutes make access to relief easier by making misappropriations “actionable without proof of damage”. Under the British Columbia statute, a former Wal-Mart employee was granted C$15,000 in damages after Wal-Mart used his photograph in its advertising without permission. Further, British Columbia’s statute does not require that the individual be identifiable.
Other aspects of the statutes restrict the action. Intent is needed, which raises the required level of culpability. Protected aspects of personality are enumerated and restricted to “name or portrait” (British Columbia) and “name or likeness or voice” (other provinces). Death extinguishes the right, except in Manitoba.
In Quebec, personality rights are protected through privacy principles in the Civil Code of Quebec (SQ 1991, c 64). Section 36 relates to invasion of privacy caused by use of a person’s “name, image, likeness or voice for a purpose other than the legitimate information of the public”. A second, broader action based on Section 5 of the Quebec Charter of Human Rights and Freedoms (RSQ c C-12) provides that “every person has a right to respect for his private life”. The nexus between privacy and personality under Section 5 was described by the Supreme Court of Canada in Aubry v Éditions Vice-Versa Inc ((1998), 78 CPR (3d) 289 (SCC)): “Since the right to one’s image is 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). In Aubry a non-celebrity objected to the use of her photograph in a magazine that was taken without permission while she sat in a public place.
In addition to Section 7(b), Section 9 of the Trademarks Act contains prohibitions against:
- the adoption, in connection with a business, of any marks that falsely suggest a connection with any living individual (Section 9(1)(k)); or
- marks that are, or may be mistaken for, the portrait or signature of any individual who is living or has died within the preceding 30 years (Section 9(1)(l)), without his or her consent.
Even with consent, Section 12 prohibits trademark registrations comprising the “name or surname of an individual who is living or had died within the preceding thirty years”, unless that name has become distinctive of the applicant.
With the growth of internet-based services such as Twitter and Instagram, online advertising and cloud-based services storing personal information, misappropriation of identity or personality cases may become more common. The legal ramifications of these new services and practices are already being felt. In May, a British Columbia Court certified a class action lawsuit against Facebook under that province’s Privacy Act, seeking damages for the unauthorised use of Facebook users’ names and images as part of the site’s Sponsored Stories feature, which creates ads containing a Facebook user’s name and image, and targets that advertisement to other users (Douez v Facebook, Inc, 2014 BCSC 953). This is a case to watch, as it may be just the tip of the iceberg.
Jill Tonus is counsel at Bereskin & Parr LLP and head of the new media/copyright practice group. Her practice focuses on copyright and trademark matters, including trademark and copyright registration, trademark oppositions, assignments of rights, due diligence and licensing, particularly in the entertainment, publishing and software industries.
Tamara Céline Winegust is an associate at Bereskin & Parr LLP and a member of the trademark practice group. Her practice focuses on trademarks, new media/copyright, licensing, marketing and advertising law, in addition to litigation.