Canada: Examining different forms of protection for personality rights

Big names in Hollywood, sports, and music often enforce their personality rights: William Shatner called out a Toronto developer for using his likeness while selling luxury condos; Michael Jordan sued a Chicago grocer over an advert that displayed his name and number; and Rihanna litigated a UK retailer's sale of a t-shirt bearing her image. This area has become increasingly complex with the rise of social media celebrities and the borderless nature of modern advertising.

In the US, Canada, and the UK, recognisable individuals are entitled to control the commercial use of their name, image, likeness, voice and certain other aspects of their identity. These rights are known as personality rights and are generally enforceable through various statutory and common law remedies.

Mr Shatner turned to Twitter to achieve results. However, Canadian law provides multiple legal avenues to protect personality rights, many of which have parallels in the UK and US. Canadian trade mark law prohibits adopting a trade mark that may falsely suggest a connection with any living individual. Likewise, copyright law protects against the reproduction of certain works that capture the celebrity's image or likeness. Some provinces have also enacted a statutory tort of wrongful use of personality under their respective privacy statutes. Wronged plaintiffs can also rely on the common law tort of misappropriation of personality, provided they can demonstrate their likeness was used for a commercial purpose in a manner that suggests some form of endorsement.

In the US, Mr Jordan brought a statutory claim for commercial appropriation of his identity (citing a violation of the Illinois Right of Publicity Act, among other claims). The majority of US states recognise this form of action at the common law, and many states have legislated private rights of action. State-level nuances exist – for example, Indiana enacted protection of gestures at the behest of Groucho Marx's estate. A claim may also be brought under US federal law. Pursuant to the Lanham Act, a claim may be brought where there is the likelihood of confusion as to the nature of association between a person and a brand, e.g. an unauthorised endorsement.

The UK does not explicitly recognise a personality right. However, tangential legal rights can be relied on. Rihanna relied on the trade mark law tort of passing-off, which prevents a brand from falsely representing that a celebrity has endorsed a certain product or brand. Furthermore, the tort of misuse of private information protects unauthorised publishing of private information where the individual has a reasonable expectation of privacy.

The law surrounding personality rights is complex and the examples discussed in this article do not capture all available legal remedies. While personality rights have been a long-standing concern for the traditional celebrity, the rise of social media celebrities increases the risk that companies could face personality rights claims across multiple jurisdictions if legal clearance is not sought.

Elizabeth Williams

Norton Rose Fulbright Canada LLPSuite 3800, Royal Bank Plaza, South Tower, 200 Bay Street, PO Box 84Toronto  Ontario  M5J 2Z4CanadaTel: +1 416 216 4000

www.nortonrosefulbright.com

About the author: Elizabeth Williams specializes in the areas of global brand strategy, advertising and marketing law matters and commercial intellectual property. She advises clients on worldwide branding strategies and protection and enforcement of intellectual property rights and advises on advertising and marketing law matters including digital branding and social media matters. In addition, Elizabeth works on intellectual property-related aspects of corporate transactions and negotiates complex commercial IP agreements including licenses. Elizabeth has been a long-standing INTA Committee member and now sits on the Rights of Publicity Committee.