“Zombie” Privacy & IP Rights: Protecting the Rights to an Individual’s Image after Death: Part 2 of 2

In Part One of our series on protecting individuals’ images after their death, we examined the privacy rights that govern the use of these ‘zombie’ celebrities, just in time for Halloween. We considered what privacy rights attach to dead celebrities, and whether these rights can be exercised by their estates/heirs. In this Part Two, we will consider what intellectual property rights could govern this so-called resurrection of dead celebrities!

As you will recall from Part One, it is not surprising that movies and concerts are reaching back to long dead stars to “perform” for audiences. What intellectual property rights govern the resurrection of a dead celebrity? If property rights are the best way for a deceased’s heirs to protect the image of the deceased, how can the “property” regime of intellectual property rights assist?

There are a number of statutory IP regimes as well as common law causes of action which can allow online influencers and the estates of deceased celebrities to control and monetize these valuable assets and continue to monetize as technology allows them to do so.

Trademark Rights

To the extent that a person’s name, image, likeliness or voice has become distinctive, there may be also trademark rights applicable in Canada.  There are effectively two trademark systems in Canada; registered trademarks and common law trademarks.

Registered trademarks are preferable for a number of reasons.  Of these, the key when considering post-mortem rights is the ability of the trademark, to be both perennial and transferable. Subject to the payment of renewal fees, a registered trademark can exist in Canada indefinitely.  As an intangible asset, the mark is also transferable.  Upon a celebrity’s death, therefore, his or her trademark(s) may be passed on to his or her successors, who will be able to pursue their commercial exploitation or assign such trademark(s).

A further benefit is that a registered trademark is typically enforceable nationally (e.g. provides protection across Canada regardless of whether use of the mark has been nationally) and legal proceedings can be taken in the Federal Court which, if successful, will be enforceable country-wide.

However, the registration process in Canada can be difficult. 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.  This prohibition does not cover the first name used alone, or a name or surname which is combined with other words that make it distinctive.  Any such objection may be overcome by arguing that the trademark is distinctive at the date of filing having regard to all the circumstances of the case, including the length of time during which it has been used (Section 12(3) of the Trademarks Act). 

Whether enforcement is based on a registered or common law trademark, the recourses available could be more commercially significant than in the case of remedies for privacy-related violations.  These can include:

• injunctive relief;
• damages;
• accounting of profits; and
• punitive damages;

There are also provisions of the Canadian Trademarks Act that may assist with preventing the misappropriation of celebrity images.  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. 

Canada also has a common law system of trademark rights. The system of common law trademark rights requires that the trademark owner “use” the mark in association with goods and/or services such that the owner of the mark has developed goodwill in association with the mark.  For marks that are not registered, there is a common law remedy of “passing off”.  The common law tort of passing off provides a remedy for misrepresentations made by one trader which damage the goodwill of another. Misrepresentation, damage and goodwill are the three essential elements of the tort.  The Supreme Court of Canada established this tripartite test for establishing passing-off, namely 1) the existence of goodwill; 2) the deception of the public due to a misrepresentation; and 3) actual or potential damage to the plaintiff (see, for example, Ciba-Geigy Canada Ltd. v. Apotex Inc.). 

Passing off would likely be difficult as a remedy for celebrity endorsement.  In the case of a celebrity endorsement, the tort of passing-off would appear to have no application in Canada unless the buying public would buy the products on the assumption that they had been designed or manufactured by the celebrity or where the product was “passed off” for a similar product (see Krouse cited in Part One).

Copyright

Clearly, copyright in the image of celebrities is one of the key IP rights involved.  There is one difficulty with regard to celebrity images and copyright.  Copyright is granted to the author of the work and not the subject of the work.  For example, the photographer is the author of the work and the therefore the owner of copyright unless the author is under a legal obligation to transfer title the work, such as when the author is an employee or has agreed to transfer the copyright by virtue of a legal agreement. 

Post-mortem, copyright, as an intangible asset, passes upon the death of the copyright owner to the estate of the copyright owner and is therefore be controlled by the owner’s estate.

The Canadian Copyright Act does address, however, the issue of copyright ownership in commissioned works.  The law relating to commissioning photographs is now well settled in Canada by s. 13(2) of the Copyright Act, which reads:

Where, in the case of an engraving, photograph or portrait, the plate or other original was ordered by some other person and was made for valuable consideration in pursuance of that order, in the absence of any agreement to the contrary, the person by whom the plate or other original was ordered shall be the first owner of the copyright.

For a celebrity to be held to be the owner of the copyright in any photograph thereof, the celebrity would have to said to have “commissioned” the photograph(s) of the celebrity (e.g. valuable consideration flowing from the celebrity to the photographer).

The sole right to publish, to produce or to reproduce a work is in the owner of the copyright, and he is the only person who can authorize others to do the things that the Act gives to him the sole right to do.  As for the subject matter of any photograph or image, he or she has no proprietary interest whatsoever unless he or she had obtained an interest by express contract or implied agreement with the copyright owner (e.g. the author). According to the Ontario Court of Appeal, in Gould (cited in Part One):

Once Gould consented, without restriction, to be the subject matter of a journalistic piece, he cannot assert any proprietary interest in the final product nor can he complain about any further reproduction of the photographs nor limit the author of the journalistic piece from writing further about him.

As must be evident from my approach to this case, I am not persuaded that I should analyze the facts of this case in the context of a claim for misappropriation of personality. … We are not concerned about Gould’s musical or artistic works but with Carroll’s literary and artistic work. The book of portraits is Carroll’s creation, not Gould’s. He was, and now his heirs are the owners of this literary and artistic creation and it is his estate that is entitled to protection from the appellants who contributed nothing to the book. Not only did the appellants not create the book, they were incapable of doing so. Carroll had the photographs, the tapes and his notes of his interviews with Gould. He was the only person who could have reached back in his memory and recreated the scenes where he first met Gould. The results are captivating. The book provides a compelling insight into the character of a musical genius. In protecting Carroll’s artistic creation, the law permits the public to benefit from an insight into Gould’s early years to which it would otherwise be denied.

Misappropriation of Personality

Unlike copyright and trademark rights which are largely statute based, there may be an additional common law remedy available, particularly where copyright does not provide a remedy as the celebrity may not be the owner of the copyrighted work (e.g. the image of the celebrity). 

In Canada, celebrities may have common law “personality rights” (e.g. rights to exclusive use of the celebrity’s name, likeness, voice, or other distinctive features).  To use one or more of these distinctive features may result in the common law tort of “misappropriation of personality” and can trigger damages awarded to the wronged individual.

Despite this, the law in Canada is relatively underdeveloped given the few cases in which it has been raised (see, for example, Wiseau Studio, LLC et al. v. Harper et al.). Although no firm definition has been adopted by the courts, the tort is established where one’s personality has been appropriated, “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:”

The tort of misappropriation of personality appears to have three elements in Canada: (1) the exploitation of the plaintiff’s personality is for a commercial purpose; (2) the plaintiff’s personality is clearly captured so that he or she is identifiable; and (3) an endorsement by the plaintiff is suggested.

In Ontario, the common law tort of misappropriation of personality was first articulated by the Court of Appeal in Krouse, where the Court stated that “… there may well be circumstances in which the Courts 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 (cited in Part One), while referencing Krouse,  the Court stated that “… it is clear that Mr. Athans has a proprietary right in the exclusive marketing for gain of his personality, image and name, and that the law entitles him to protect that right, if it is invaded.”

According to the lower court in Gould, Canadian courts may draw a ‘sales vs. subject’ distinction.

Sales constitute commercial exploitation and invoke the tort of appropriation of personality. The identity of the celebrity is merely being used in some fashion. The activity cannot be said to be about the celebrity. This is in contrast to situations in which the celebrity is the actual subject of the work or enterprise, with biographies perhaps being the clearest example. These activities would not be within the ambit of the tort. To take a more concrete example, in endorsement situations, posters and board games, the essence of the activity is not the celebrity. It is the use of some attributes of the celebrity for another purpose. Biographies, other books, plays, and satirical skits are by their nature different. The subject of the activity is the celebrity and the work is an attempt to provide some insights about that celebrity.

This is in contrast to situations in which the celebrity is the actual subject of the work or enterprise – namely, as the “subject” (e.g. biographies):  these are not within the ambit of the tort.  As the Court said,

Although it is primarily through Gould’s own images and words, this book provides insight to anyone interested in Gould, the man and his music. The author added his own creativity in recounting his time spent with Gould and in making decisions about which photographs and text to use and how they should be arranged to provide this glimpse into Gould’s solitary life. There is a public interest in knowing more about one of Canada’s musical geniuses. Because of this public interest, the book therefore falls into the protected category and there cannot be said to be any right of personality in Gould which has been unlawfully appropriated by the defendants.

A similar result was found in Wiseau Studio, where, like the biography of Gould, the use of “celebrity” Wiseau’s image in connection with a documentary on the movie The Room, was not considered exploiting any right of personality so as to be unlawfully appropriated.

Post mortem, and unlike the statutory causes of action based on privacy, the right of publicity, being a form of intangible property, should descend to the heirs of a dead celebrity. 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. As recognized by the lower court in Gould there is no reason why such an asset should not be devisable to heirs under Ontario succession law (see Part One). 

We will let the reader decide whether this use of technology is creepy or disturbing, but the application of these privacy and intellectual property principles may become more common as, in one example, social media technologies allow individuals to develop careers influencing the public in their online selections of product and/or services, the so-called “online influencer”.

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