Junghi Woo is a former IPilogue Content Manager, an IP Innovation Clinic Fellow and a 3L JD Candidate at Osgoode Hall Law School. This article was written as a requirement for Prof. Pina D’Agostino’s Directed Reading: IP Innovation Program course.

In 2020, a South Korean television and radio network,�� that revealed one family’s journey in recreating their 7-year-old deceased daughter, Na-Yeon, through the technology of virtual reality (“VR”). VIVE Studios, a VR technology studio, used  to create this VR character.�� 

While this technology may not be as common in Canada, we should nonetheless consider the implications of introducing such innovations, especially when it involves minors. In fact, there exist several legal implications within Intellectual Property law (“IP”), such as the common law principle of personality rights.�� In the case of Na-Yeon, her personality rights were used to recreate her VR persona.��

In Ontario, there exists a lack of legislation regarding the protection of both non-celebrity minors’ and adults’ personality rights. This presents a concern with the growing posthumous market and the commercialization of personality rights and potentially, of individuals’ digital assets used to “revive” the dead.��

Such technology is not novel. For example,�� through his past text messages with his friends and family members. By using artificial neural networks,��. The result was fairly accurate and allegedly helped Mazureko’s loved ones’ grieving process. Companies such as  already have a patent that could create a digital clone that embodies people’s “mental attributes”.�� a New Zealand-based software company, markets “digital humans” for enhanced online customer service.��

With Kanye West’s gift to his ex-wife Kim Kardashian , and a ” industry derived from the pandemic, the posthumous artificial intelligence market is not too far from our futures. Firms such as  offer online chat bots based on one’s digital footprint to keep the bereaved to “stay in touch” with the deceased.��

Along with significant privacy concerns regarding the collection and use of individuals’ digital assets, the commercialization of such IP brings us additional questions regarding the safety of its target market. Mainly targeting grieving people, it is questionable as to whether companies will avoid exploiting the vulnerability of their emotional states and if they are able to deliver their services and products without risking their customers’ mental health. Those who grieve may seek to reconnect with the deceased and companies can monetize this vulnerability not only through their products, but their targeted advertisements. The possibility of the bereaved becoming attached to these recreations is another danger to consider. Without proactive legislation, we leave not only the deceased unprotected but the bereaved as well.�� 

The real question is, what would you risk to see your lost one once more? 

The post Commercializing the Personalities of the Dead: The Dangers of the Posthumous Market appeared first on IPOsgoode.

Air Jordan

December 8, 2016 began with newspaper headlines proclaiming: ; ; and .

Although the headlines exaggerate, the newspapers are correct about China’s top court’s decision that Michael Jordan can now claim the Chinese translation for JORDAN (written as 乔 丹 and pronounced as QIAO DAN) as his trademark and exclude others from such use. This decision is astounding for a number of reasons.

First, there is an internationally accepted standard Chinese translation for JORDAN as a country and as a name (written as 约 旦and pronounced as YUE DAN). So why would any court decide that Michael Jordan is identified specifically by the first translation? The decision is based on evidence that the Chinese media has referred specifically to Michael Jordan by the first translation since as early as the 1984 Olympics, . This evidence exposes a weakness in Michael Jordan’s case from a trademark perspective, and that is the fact that the Chinese translation was neither used by Michael Jordan nor used as a trademark. The evidence suggests that the Chinese translation was actually used by the public and used as information. Nevertheless, there is support for China’s top court’s decision that such use can enure to a specific owner in light of the American court decision of Coca-Cola v Busch.[1] The Coca-Cola Company advertised its products in association with the COCA-COLA trademark, which the public abbreviated as COKE. Since The Coca-Cola Company was not using the abbreviation, a competitor started using the abbreviation. The Coca-Cola Company stopped its competitor by persuading an American court that use of the COKE abbreviation by others should enure to it as the owner of the COCA-COLA trademark in order to avoid confusion.

Second, there is nothing distinctive about the name JORDAN. So why would any court decide that the first translation only identifies Michael Jordan and does not also identify anyone and everyone named Jordan? The decision is based on evidence that the Chinese company accused of taking the first translation from Michael Jordan : a NBA silhouette that was amended to reflect Michael Jordan’s physique, the number 23 that used to be on Michael Jordan’s basketball jersey, and the Chinese names of Michael Jordan’s children. This evidence could be dismissed on the basis that none of the registrations relate to trademarks or names actually belonging to Michael Jordan; the trademarks belong to the NBA and the names to his children. Nevertheless, there is support for China’s top court’s decision in light of academic criticism of passing off, the common law forefather of trademark infringement: “why should the court be astute to say that the defendant cannot succeed in doing that which he is straining every nerve to do?”

Third, there is at least a 10-year delay between the Chinese company registering the first Chinese translation in 2000 and Michael Jordan commencing lawsuits in 2012. So why would any court reward Michael Jordan for the inexcusable delay, especially when trademark registrations are supposed to be difficult to invalidate after passing the 5-year registration period? During that time, the Chinese company : registering almost 500 trademarks, investing over $10 million USD in annual advertising, establishing over 5,700 retail outlets, and attempting to become a publicly traded company. If it is wrong for one to benefit from Michael Jordan’s popularity, then is it not equally wrong for the other to benefit from the Chinese company’s decade of advertising? This evidence could be a reason behind China’s top court’s decision that Michael Jordan can only claim the Chinese translation for JORDAN with respect to the writing (乔 丹) but not with respect to the pronunciation (QIAO DAN). This means that although the Chinese company can no longer use the Chinese characters, it can continue to use the English Romanization by which it is also known. It can also use other Chinese characters with the same pronunciation, which will compete with and dilute the uniqueness of the Chinese translation that Michael Jordan just won.[3]

If Michael Jordan could have known that this would be the result, would he still commence the lawsuits in 2012 or would he choose to rebrand instead? His decision was probably pre-determined by the advice he sought. For example, an ad agency would know nothing of litigation but be quick to advise on rebranding. The marketing experts might realize that there is no mandatory Chinese translation for JORDAN. This means that Michael Jordan was free to ignore both the internationally accepted standard Chinese translation and the specific translation given to him by the Chinese media. He was free to create and register his own Chinese name, use it in all future communications, and publicize in future interviews that any other Chinese translations have nothing to do with him. Doing so could have neutralized the Chinese company and publicized its illegitimacy just as effectively, but without the years and fees spent on litigation. On the other hand, a law firm is not in the business of rebranding but would have ample advice on litigation. The legal experts might assume that Michael Jordan’s situation is the same as that of Jeremy Lin and Donald Trump.

Linsanity

Jeremy Lin now plays point guard for the Charlotte Hornets, the NBA team owned by Michael Jordan. When he filed applications in China for his trademarks, including JEREMY LIN and LINSANITY in English, he discovered that . His situation differs from that of Michael Jordan, however, because he does not have the option of rebranding. His Chinese name is independent, as it is neither a standard translation nor a media designation of his English name. His Chinese name is also much more personal, as it what his parents have called him since birth. Fortunately for Jeremy Lin, his boss already knows how to litigate and win a trademark case.

Trump Toilets

Donald Trump owns multiple trademark registrations in China for TRUMP, which he licensed on everything from steaks to universities. He failed to invalidate other trademark registrations in China such as and , and he was unsuccessful in invalidating a registration in 2006 for TRUMP construction services. That registration in 2006 blocked his repeated attempts for a decade to register TRUMP real estate services. His situation differs from that of Michael Jordan, however, . In light of the facts that China has a first-to-file trademark system, that the registration in 2006 is supposed to be difficult to invalidate after passing the 5-year registration period, and that TRUMP is a common word, it was nothing short of astounding . Although this happened shortly after the U.S. election, .

The two decisions illustrate that the Chinese courts struggle with foreign trademarks as much as Western courts. As countries continue to harmonize intellectual property laws and negotiate trade treaties, it is equally important for courts to make decisions that are in consistent with their own trademark practices and respectful each other’s trademark theory.

U. Shen Goh is a Ph.D. Candidate at Osgoode Hall Law School.

[1] Coca-Cola v Busch et al, 44 F Supp 405 (ED Pa 1942).

[2] NG-LOY Wee Loon, Law of Intellectual Property of Singapore (Singapore: Sweet & Maxwell Asia: 2008) at para [18.1.4].

[3] The problems and solutions associated with Chinese characters and their English Romanization are discussed in U. Shen Goh, “Branding Unfair Competition: What Foreign-Language Marks Mean for International Businesses” (2015) 15 Asper Rev Int’l Bus & Trade L.

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The internet is not a lawless wild west. Images on the internet are not automatically public property – copyright, personality rights and all other aspects of the law apply. This article will list out the most relevant areas of the law and then analyze the situations of international dating using Canadian headshots for dating or porn site advertisements according to the each legal point.

Relevant Canadian Law to Date – A Primer

Scraping in the Law

The issue of general material scraping arose in the 2011 Supreme Court of British Columbia case . The court struggled with defining scraping in order to apply the law to it.�� The judgment included the opinion of law Professor and copyright expert in explaining that scraping content was allowable if it was indexed and transformative. Indexing is a broad term for the interconnectedness of the internet through hyperlinks and meta data that web crawlers use for searching and organizing internet material. Because the judge found the scraping in the Century 21 case qualified as a form of indexing, the issue of whether scraping was transformative was not relevant to his decision. Professor Trosow’s comment directly quoted in paragraph 53 of the judgment remains helpful,

“The relevant question in my view is whether the materials are being utilized in a transformative manner in order to provide a usable and informative aid for the end-user searching for information about listings.”

The judgement includes a thorough legal summary of the concept of transformation – which I will summarize as any change that adds something new to the original expression, thus creating a new work. The concept is used primarily in American law, but was also referenced and described in the 2002 Supreme Court of Canadsa case, .

International Servers and the Law

The Supreme Court confirmed copyright liability for servers outside Canada. 2004’s stated, “A content provider is not immune from copyright liability by virtue only of the fact that it employs a host server outside the country.” This is a digital extension of of the ,

27. (2) It is an infringement of copyright for any person to […] (b) distribute to such an extent as to affect prejudicially the owner of the copyright. […] a copy of a work, sound recording or fixation of a performer’s performance or of a communication signal that the person knows or should have known infringes copyright or would infringe copyright if it had been made in Canada by the person who made it. [emphasis mine]

Responsibility Regardless of Intent

The Small Claims Court of Yukon disregarded the “accident” defence in a 2012 digital website photo theft case that closely mirrors the Rehtaeh Parsons one at hand. A tour operator photo ended up on the website of its direct competitor. As stated by the Court in paragraph 12 of ,

“At the end of the day, it remains unclear how the plaintiff’s aurora photo found its way onto the defendant’s computer and website.�� However, it is not a defence to the present action that the copyright infringement was inadvertent.�� The plaintiff is still entitled to damages equal to the loss he suffered from the infringement."

Personality Rights and a Person’s Image

Identity exploitation is also a tort that is potentially relevant to photos on the internet. As I’ve outlined in a prior about a recent digital extension of personality rights,

The Ontario Court of Appeal’s 1997 decision outlined that the two requirements to satisfy the tort are identity exploitation for commercial purposes, and exploitation that clearly captures the personality of the plaintiff. The test for commercial purpose was solidified in 1996 in , which outlined the need for the likeness to be predominantly connected with the sale of the consumer merchandise.

At the root of this issue is the principle from the 1977 Ontario Supreme Court Decision that stated

". . . 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."

Photo Privacy in Quebec

is not within the digital sphere, but it is applicable as with regards to personality rights issues. Here in 1998, the Supreme Court confirmed, using the Quebec Civil Code and the Quebec Charter, that there is privacy infringement whenever an image is published without consent if the person is recognizable. It is unclear if such a ruling would hold Canada-wide, but it is a possibility.

Fair Dealing

The Canadian law provides for copyright violation in cases of fair dealing in .��Research, private study, education, parody or satire, criticism or review, and news reporting are all justifications for works use that do not infringe copyright. Some recent court interpretations of fair dealing law were recently released by the Supreme Court in ,�� ���Ի���. Taken as a whole, they confirm a generous interpretation of fair dealing that asserts the user right as a defence. This is particularly true of the enumerated education principle, which has now been broadly expanded to more closely match the US’ fair use exemptions for academic institutions.

User Waivers from 3^rd Party Photo Hosting

Some social media sites from which the photos are scraped require users to give up their personality or photo rights. There has yet to be a common law case in Canada or the US on the issue of personal social media site waivers. There are two closely related cases, decided divergently.

The 2012 US case , determined that website waivers are most valid when they require an affirmative acknowledgment of the contract. Conversely, in the 2011 Canadian case the Supreme Court of British Columbia determined that where there was an industry standard as such, proceeding into a website without express agreement could constitute a contract.

Application to Cases Like Parsons’

In my opinion, I don’t think dating or porn sites that use images of Canadian women have a strong legal case to defend themselves from potential legal action. Using the prior list of relevant legal issues, I will make a cohesive argument in favour of the Canadians whose images are used in these advertisings.

Scraping and the Law

The photos may be scraped off a prior website, but they are likely not indexed or hyperlinked to that prior website. The creators of these advertisements likely want there to be little link between the original source photo and the eventual advertisement featuring the photo. Thus, by the definition presented in Century 21, the photo reuse is a new type of non-indexed scraping.

Without indexing, the only remaining argument is transformative. The advertisement creators could argue that by adding in additional text – in the example of the Parsons case “"meet Canadian girls and women for friendship, dating or relationships” – that the addition is significantly transformative. I would argue that because the advertisement doesn’t change the photo, but just adds or overlays texts, the advertisement is arguably drawing attention to the original work rather than creating a new work.

International Servers and the Law

The Supreme Court statement from  is helpful because it keeps open the possibility that Canadians whose photos are in circulation on any server around the world can potentially use the Canadian legal system to defend their rights. In the case of the Parsons dating site, which was based out of Vietnam, it means that Canadian courts could go after the Vietnamese infringers.

Responsibility Regardless of Intent

�ճ���� case is an indicator of the direction courts might take in response to plaintiffs claiming ignorance. This is immensely important in regards to technology-based conflict. It’s important for court judges to demand parties in a conflict demonstrate a reasonable amount of understanding of and responsibility for their actions. In the case of dating site administrators, it’s my strongly held opinion that “I didn’t know it wasn’t okay to take photos of young women off the internet and put them in my Facebook ads” will not protect these parties as it is consistent with the general legal axiom that ignorance of the law is an unacceptable defence.

Personality Rights

Identity exploitation also presents a strong tort for Canadian victims of image scraping. To have one’s photo used in an advertisement without consent meets the Krouse and Gould threshold because the dating or porn site garners a commercial purpose. The advertisement facilitates traffic for new member signups on the porn or dating site. In the advertisement at hand, Parsons likeness is clearly captured; it is unmistakably her face.

Photo Privacy

Similarly there is a strong case when the  precedent is considered. That said, there is a chance it might not hold for victims outside Quebec, as indicated by the use of Quebec-specific law in the judgment.

Fair dealing

It’s my opinion that image scrapers would be hard-pressed to find any fair dealing justification for their activities in either the Copyright Act or even Supreme Court decisions expanding user rights via fair dealing.

I don’t believe companies trolling the internet for photos – with software or by hand – have the protection of a fair dealing defence. Writ large, I feel the culmination of all recent, major copyright cases in Canada makes clear this principle of application; whether the fair air dealing exception is applied broadly or narrowly based on the public good or commercial profits accrued. The more public good provided, the more broad the fair dealing exception. The more commercial profits provided, the more narrow the fair dealing exception. By this broad, over-arching principle, the use of Canadians' images by dating and porn sites provide us little public good but do provide the site administrators profits. Instinctively, the companies using these images would face a more narrow application of the fair dealing exceptions.

But this conceptual analysis is insufficient to discard fair dealing altogether. To dig into the heart of this legal matter, the companies engaging in this behaviour would have to prove that their dealing falls within one of the enumerated principles of fair dealing, and then would have to prove, by a contextual analysis of the facts, that their dealing is fair in accordance with the six factors as elicited in :

• the purpose of the dealing;
• the character of the dealing;
• the amount of the dealing;
• the alternatives to the dealing;
• the nature of the work; and
• the effect of the dealing on the work
  
  

It is my opinion that it is unlikely for the analysis to surpass the first stage of the fair dealing test, as the dealing does not fit into any of the (research, private study, education, parody, satire, criticism or review, and news reporting). However, if it were to pass this stage of the fair dealing analysis, it is my opinion that a contextual analysis of the facts would result in a finding that no fair dealing exists in this case. I would arrive at this conclusion by arguing that there are legitimate alternatives to the dealing (models could be hired and photoshoots done by the advertisers), that the amount of the dealing is unfair (pictures are being substantially reproduced), that the character of the dealing does not support fair use (pictures are being used for commercial gain), and that the effect on the work is prejudicial (the images and the reputation of those pictured are potentially harmed).

User Waivers from 3^rd Party Photo Hosting

Dating and porn sites may have a strong argument if they only scrape Canadians’ images from third party websites or social media networks with sign-up contracts that ask users to waive rights to their likeness. This legal reality may be unpopular in the court of public opinion. concerns about the tension between consumer rights and lengthy digital contracts. A movement is burgeoning to demand more proactive and legible terms to be disclosed to consumers. Services to of these contracts and rumours of apps in development to provide layperson translations to contract legalese showcase the problems that these contracts pose.

I would tend to agree. In my opinion, these contracts are unreasonable because they are extremely lengthy and overly legalistic. The majority of users are not able to understand these agreements, which is a big problem. It also points to potential invalidity due to the unconscionability doctrine.

To start, there are many seminal “ticket cases” in the UK that call into question contracts where one party does not adequately appreciate the terms of the contract such as the 1970 case . 


Similarly, Canadian contracts can be set aside for inadequacy of consideration or unequal bargaining power ( and ). contains a lengthy list of factors to consider in order to properly assess bargaining power: a plaintiff’s ignorance of business, illiteracy, ignorance of language of the bargain, blindness, deafness, illness, developmental disabilities, and other similar challenges. is another foundational case in Canadian unconscionability law. A more holistic approach to bargaining inequality, recently emerged in , where the Supreme Court said there is no definitive list of factors; courts should be alive to conditions of the parties circumstances, unique pressures and situational vulnerabilities. Meanwhile, focused on the “distress of the weaker”, and  used the word “disparity” in its analysis of unconscionability.

Whether the highest ranking or recent cases lay out a definition of unconscionability that would cover third party website waivers is uncertain. I do believe – for some more-vulnerable users – our growing reliance on the largest social media sites and their ubiquity in our day-to-day lives may meet the power imbalance threshold required for unconscionable bargaining. The more users depend on a service for the function of their day-to-day lives, the more the potential for imbalance and disparity in bargaining power. Dependancy creates bargaining weakness.

Two Systemic Criticisms: Statutory & Social Failure

In my opinion, lack of political action and social concern are failing young Canadians who don’t want to show up in an advertisement for an online dating or porn site.

I.��              The Statutory Problem: Not Going After the Scrapers

There exist easy alternatives to image scraping. There are to access free images. Governments should take steps to protect individuals – both by demanding websites only accept advertising from companies who agree to ethical photo sourcing standards and by establishing a regime to police and crack down on scrapers. Scrapers operate with software and servers from countries around the world, so it would likely be necessary to create a global framework of international agreements to combat this activity. It would be onerous, but I believe it’s worth the work involved.

II.��          The Social Problem: Blaming the Photo Posters

In observing the aftermath, the Rehtaeh Parson’s case has caused a rash of victim blaming mirrored by that seen in many cases of sexual violence. For instance, the of the Parsons image scandal ended with an inappropriate call-to-action for increased conservatism in photo posting. A media professor from Queen's University says the unfortunate use of Parsons' image in an ad could be a "teachable moment" for parents trying to instruct their children to be vigilant about uploading photos to the internet.

"We are in a new day where people think that if they find something on the web it's free to use, and that's not necessarily the case," she says. "In this case, we're seeing the hurt that that can cause."

In another instance, the included a similar warning from the Ontario Privacy Commissioner.

"Ann Cavoukian, Information & Privacy Commissioner of Ontario, described what happened with Parsons’s image as a 'strong reminder that we can rarely control the use of our pictures once we share them online.[']

'The unfortunate reality is that people give out far too much information about themselves, believing that their information is ‘private’ and they are safe behind their screen. You are not!' Cavoukian said in an email statement to the Star.

'We all need to take steps to protect ourselves online, especially on social networks,' she added. 'Young people must be especially careful to consider the potential risks, and make it a practice to only post photos that they want everyone to see, including strangers and prospective future employers.[']

'If not, don’t post it!'"

Given that Canada has not acted to regulate against scraping of its citizens’ photos, it’s disappointing to me that the go-to response to the Parsons photo misuse was to tell people to be more careful about what they post online rather than condemn and go after the wrong-doers. I believe it’s a particularly insensitive approach when you consider the root of the Parsons case. Rape culture tells young women to avoid walking alone, to watch what they wear, and to restrict their own liberties in order to avoid sexual violence. Rarely does it focus on .

Here, where we should have a vigorous call to go after those social media sites and scrapers who expropriate and commoditize photos of young women, we are instead turning to young women and telling them to restrict the images they put online.

I conclude this post with , Rehtaeh’s mother, written in response to uncovering the dating site photo. It makes the link between photos and human rights better than I can.

"It is disgusting that even in death, my daughter's image is still being exploited. When I see these violations, whether it be the singles ad stealing Rehtaeh's photos -- or the people who contact me and to say negative things such as she should not have been drinking, she was a troubled teen, she was in the wrong crowd -- I sit back and reflect on the reality of who Rehtaeh truly was. Then I think: So what if someone is a troubled teen or was drinking -- as if their behavior or emotional state somehow give permission for others to abuse them."

Denise Brunsdon is an IPilogue Editor, a Western University JD/MBA Candidate, and researcher for GRAND (Graphics, Research and New Media) Centre and Commercialization Engine. She is also the social media volunteer at Sexual Assault Centre London.

The post Dating Sites Scrape Internet for Women’s Photos, Including Those of Deceased appeared first on IPOsgoode.

The Guide’s primary author is Canadian . In the Guide’s acknowledgments, Pantalony recognized the instrumental help of fellow Canadian art IP expert . Art and law commenters the new guide, but that it fails to address what museums can do when faced with copyright law shortcomings born from the in counterfeit art facilitated by new technologies. The Guide openly states that it “does not argue for strong or weak IP protection” but rather focuses on how museums can manage IP while balancing their societal mandates to be centres of learning and intellectual curiosity.

Analysis: Guide Review

This 90-page document is a must read for anyone in the museum, art or cultural industries. It’s an accessible, straightforward read. Given the variability in copyright and intellectual property between countries, it acts to whet the appetite of anyone looking for a general guide to the issues of art and culture preservation within a legal context.

Moreover, the document flows brilliantly. The author takes the reader through introductory definition chapters; for example, how copyright and trade-marks are defined in a museum context. The author then goes into heavier issues such as best practices for a museum IP audit. It also covers digital rights management solutions and notes on social media and museums. It includes case studies of successful museum IP management models around the world. Finally, it lists out important commercial considerations such as distribution, licensing and co-branding with non-museum entities.

In regards to the Guide’s attempt to take a neutral position vis-à-vis the laws themselves, there is certainly no such thing as neutrality, especially when it comes to museum art and ownership. One need look no further than the or the to know that even where the law is clear, politics pervades. Additionally, WIPO in its entirety has for its western cultural and legal bias.

Another controversial issues is that assertive museum IP policies – aptly described in Canadian Heritage Information Network’s (CHIN’s) as the demise of the “” – can have a on museums as educative experiences for consumers.��Growing focus on IP laws by museums increases the tension between museums and the consumers of the content; copyright versus education is one of the most common debates in intellectual property law. One of the most obvious examples of this, one that touches all of us, is the way museums choose to restrict visitor photography. Some museums believe that photos violate intellectual property, while some and  are advocating for more open photo policies.

Even with these tectonic issues underlying museum IP and WIPO, the Guide does do a fairly good job of being fair. It attempts to stand back from the fray and be as politically agnostic in its recommendations as possible. And it succeeds.

On a final personal note, it’s nice to see the Canadian authors and those that influenced the document comfortably promote our domestic museum management practices on the world stage. CHIN's Community Memories initiative for smaller Canadian museums and community centre archives is profiled. The Guide also outlines CHIN’s North America-wide studies of museum IP and management practices. And finally, the Guide profiles the Department of Heritage’s launch of the , an online museum of internet-based exhibitions.

So even amidst mild criticisms of the Guide’s neutrality in regards to the current IP laws, it’s hard not to be proud of this document, its authors, and the progressive work that Canada has done to support museums and their IP management.

Denise Brunsdon is an IPilogue Editor, JD/MBA Candidate at Western University, and researcher for GRAND (Graphics, Research and New Media) Centre.

The post Canadians Make Their Mark on Global Guide for Museum IP appeared first on IPOsgoode.

EA’s primarily posited two arguments that the court ultimately found dissuasive. EA relied on the in terms of its basic right to create and distribute the video game. In response to Keller’s assertion of common law and civil code protection against the tort of appropriation of likeness – also known as the right of publicity – EA argued that the video game met the transformative use test, which allows the First Amendment to supersede publicity rights. Second, EA leaned on (“Strategic Lawsuits Against Public Participation”), claiming that Keller’s suit qualified as an attempt to punish EA for exercising its political rights. The court rejected these arguments.

Right-of-Publicity vs. First Amendment
California’s right-of-publicity is based in common law on , which supports a claim with these four conditions: use of the plaintiff’s identity, appropriation of that name or likeness to the defendant’s advantage, lack of consent and resulting injury. California validates this and adds that, in addition to  “all the elements of the common law cause of action,” there must also be a "knowing use by the defendant as well as a direct connection between the alleged use and the commercial purpose.”

EA argued the transformative allowance, which allows the First Amendment to trump publicity rights if sufficient transformation has occurred between the original inspiration and the new work. EA argued that it had added significant creative change so that the players’ likenesses within the game were transformed to surpass existing as a simple imitation. In arguing this, they relied not on the transformation of the likeness per se, but in the concept of the game as a whole as sufficiently transformative. One judge dissented from the majority, agreeing with the "game-as-a-whole" transformation argument. The remainder, however, didn’t agree.

The majority argued that there was simply too much direct copying of Keller’s likeness to meet the transformation threshold. Indeed, there were many direct comparisons.

“In the 2005 edition of the game, the virtual starting quarterback for Arizona State wears number 9, as did Keller, and has the same height, weight, skin tone, hair color, hair style, handedness, home state, play style (pocket passer), visor preference, facial features, and school year as Keller.” (p. 7-8)

As was emphasized by Judge Jay Bybee, upholding the lower court decision,

“Keller is represented as ‘what he was: the starting quarterback for Arizona State’ and Nebraska, and ‘the game’s setting is identical to where the public found [Keller] during his collegiate career: on the football field’.” (p. 16)

Outside of the transformation argument, EA also posed the related argument that because the game maker included numbers but not the last names on the in-game jerseys, the likeness threshold was not met. This argument received little traction. As the verdict found - and as one succinctly pointed out - EA “intentionally designs its sports games to allow gamers to circumvent this formality, providing a means to easily upload entire rosters of actual player names, after which player jerseys contain both the player’s number and name. Although EA could easily block this feature (as they do for profanity), they choose not to.”

The Anti-SLAPP Statute
California anti-SLAPP law is best summarized as an attempt to prevent suits that “masquerade as ordinary lawsuits but are brought to deter common citizens from exercising their political or legal rights or to punish them for doing so” ().

By siding with Keller’s publicity rights, the court inherently rejected the idea that Keller’s suit was a frivolous attempt to trample EA’s constitutional rights.

Canadian Application
Though there are many in Canadian appropriation of personality jurisprudence, our domestic requirements would have been met handily in Keller v EA.

The Ontario Court of Appeal’s 1997 decision Krouse v Chrysler Canada Ltd. outlined that the two requirements to satisfy the tort are identity exploitation for commercial purposes, and exploitation that clearly captures the personality of the plaintiff. The test for commercial purpose was solidified in 1996 in , which outlined the need for the likeness to be predominantly connected with the sale of the consumer merchandise. One example given in the verdict directly correlates to Keller v EA,

As a result, Elvis Presley posters, pewter replicas of a statue of Elvis Presley, a “Howard Hughes” game which included Hughes’ name and other biographical information, and a board game utilizing the names and biographies of famous golfers, have all been found to infringe the right of publicity: see Presley, supra, p. 1358. All were found to be commercial products which were not vehicles through which ideas and opinions are regularly disseminated. (para 21) (Emphasis author's own.)

Thus, there is not much doubt that in a Canadian context, the case would have been similarly decided.

Analysis and Opinion
There are two particularly unsettling components of this case: that it took the courts so long to come to this fair decision, and that even with it, there was still a dissenting judge who supported the transformation argument.

This decision is fair based on the reasons argued, but it is also intuitively fair in my opinion because of the lack of options afforded to the individual players. NCAA bylaws prevent college athletes from receiving compensation for their skill or status. This means they can’t sign endorsement deals or barter away their likenesses, even if they wanted to do so. Yet, at the same time, the NCAA is signing exclusive rights deals with video game makers like EA in order to create these profitable NCAA league video game franchises. The likeness appropriation is clear, as is the commercial motivation. Quite simply, the system was designed to exploit the players. Keller and the co-plaintiffs made the right decision in suing.

Finally, arguing that the game was sufficiently transformative in its whole so as to override the individual identity infringement is a difficult pill to swallow. Yes, it is a video game. Yes, there are ways to alter and change certain characteristics of the game. Yes, there are no last names on the jersey. Yes, there are many potential arguments that amplify the differences between IRL (in-real-life) Keller and video game Keller. But at the end of the day, they are all attempts to create legal loopholes to avoid the ultimate truth: a company does not have the right to profit from a person’s identity without permission. The transformation allowance is meant to be more substantive and rights-protective in its application. It is gratifying to see the court reject EA’s attempt to use the First Amendment’s transformation allowance to override personality rights, because to do so would have been an insult to both crucial legal concepts.


Denise Brunsdon is an IPilogue Editor and a JD/MBA Candidate at Western University.

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According to the facts of the case, General Motors (“GM”) used an image of Einstein in an advertisement in November 2009 in which Einstein’s face was digitally pasted onto a muscled physique with the catchphrase “Ideas are sexy too.” The Hebrew University of Jerusalem (“HUJ”) claimed ownership of Einstein’s publicity right under Einstein’s will. As a beneficiary, HUJ would have the exclusive control of the exploitation of Einstein’s name and likeness. HUJ brought an action for unauthorized use of Einstein’s image. It is important to note that the will is silent regarding the devise of any right of publicity, and Einstein did not claim or receive any monetary compensation for the use of his persona during his lifetime.

In March 2012, the Court allowed HUJ to proceed to trial in order to prove that GM had violated Einstein’s, and consequently HUJ’s right. HUJ sought a ruling as to what New Jersey’s highest court would likely determine to be the postmortem duration of that state’s common law right of publicity.

Einstein died while domiciled in New Jersey. Under , California's postmortem right of publicity statute is limited to California domiciliaries. Thus, the Court looked to New Jersey's right of publicity law. Under , the duration of California’s statutory postmortem publicity right is 70 years. In the state of New Jersey, the issue of duration was discussed only in the case . However, the court did not decide the issue. The court in Presley found that the state legislature was to determine the question of duration and that the federal could be of assistance.

In this case, Judge Matz concluded that “the New Jersey Supreme Court would likely find that the postmortem right of publicity endures no more than 50 years after death”. According to the Court’s reasoning, a maximum of 50 years postmortem duration was found to be “a reasonable middle ground” for a deceased celebrity’s heirs to make use of the right of publicity and benefit from it. Further, Judge Matz found that the Court’s ruling “aligns with the majority of current state statutes limiting the right’s postmortem duration”. Finally, the Court found that its decision properly balances the “meaningful enforcement” of a celebrity’s right of publicity and “the public’s interest in free expression”. Judge Matz denied HUJ’s motion and dismissed the complaint as untimely filed.

In Canada, the right of publicity can be found under the term “tort of appropriation of personality” defined in . Under Canadian law, celebrities receive a preferential treatment, as opposed to ordinary people, since their rights are considered to be property that can be licenced or transferred, and that is descendible to the estate after death. As Prof. Vaver puts it in the second edition of his Intellectual Property book: "[d]eath brings no respite: fame survives the grave”.�� Former IPilogue Editor Anna Shahid . Quoting the famous decision in , she concluded:

“[T]he personality rights of an individual survive the individual’s death and allows for his or her heirs to protect the unauthorized use of such rights. It is unclear whether the rights expire after some time has lapsed since the death of the individual. However, ‘it seems reasonable to conclude that whatever the durational limit, if any, it is unlikely to be less than 14 years’”.

Moreover, the Trade-marks Act stipulate that if the deceased’s “portrait or signature” is used for trade purposes without the estate’s permission, then legal action may be taken up to thirty years after death. Finally, under the Copyrights Act ss. &, an author’s works may be protected by its estate from being “used in association with a product, service, cause or institution” until the copyright expires.

The situation changes though when commercial appropriation of personality is considered under the various Privacy Acts in Canada. The statutory right is more limited for celebrities than its common law counterpart, and it dies with the person without being transferable. Like in the United States, personality rights in Canada are limited by public interest values such as freedom of expression. Therefore, the courts always need to strike a balance between those two fundamental rights in order to avoid strengthening one to the detriment of the other.

Albert Einstein, like , now belongs to the public. His persona as the symbol of genius may be freely appropriated and is bound to survive death for many years to come.

Georgios Andriotis is a second year law student at Université de Montréal.��

The post Long live Einstein...? appeared first on IPOsgoode.

Proactive Sports Management Ltd., the former agency of English soccer star Wayne Rooney, was recently a decision of the High Court regarding the payment of commissions from an image-rights agreement between Proactive and Mr. Rooney.

Although Mr. Rooney ended his relationship with the group, Proactive argued that they should still be entitled to their 20% commission from those endorsements and advertising deals negotiated when he was a client of their agency.  Based on Mr. Rooney’s age at the time of agreement, 17, lack of familiarity with the legal implications of the contract, as well as the relatively long term and high, unchanging, commission rate, Judge Hegarty QC that the image-rights agreement was unenforceable. Lord Justice Ward, for the Court of Appeal, granted leave to appeal Judge Hegarty's decision.

Lord Justice Ward referred to the 1974 decision of Lord Reid in , in finding that the doctrine of restraint of trade should be more narrowly applied than in the High Court’s decision.�� As Lord Reid stated in , which set the precedent followed in Schroeder Music, “[i]n general, unless a contract is vitiated by duress, fraud or mistake its terms will be enforced though unreasonable or even harsh and unconscionable…”

What is particularly interesting in Lord Justice Ward’s decision on the application for leave are his remarks on commission owed to agents from those image agreements negotiated prior to an agency losing its client, stating “[i]t seems to me to be arguable that, although the applicant would have ceased to provide any services to the client after determination of the agreement, the commission is nonetheless payable for the service [the agency] did provide to secure the particular contract…”

While this case is primarily a contract dispute, this statement by Lord Justice Ward, if it is adopted by the court on appeal,��could have significant implications for who is entitled to profits made from a client’s image and marketability.

Contracts like the one between Proactive and Mr. Rooney could potentially pay an agent his or her commission indefinitely.�� Details of the contract in issue must be examined.�� In this case, if Proactive negotiated lucrative deals for Mr. Rooney that he would not want to end, the agency would effectively continue to make money as long as Mr. Rooney’s name, likeness, and overall good-will, of sorts, remain unchanged.

Closer to home, Dwayne “The Rock” Johnson has , Darren Statt.�� This comes shortly after the fifth instalment in the Fast and the Furious series of films, Fast Five, starring Johnson, and reignited his career as an action star.�� Fast Five marked Johnson’s first appearance in the film series.�� With news of at least one sequel, and the to reprise his role, how might a former agent such as Statt be affected by the proceedings between Proactive and Mr. Rooney? Undoubtedly, Statt had some hand in negotiating Johnson’s role in Fast Five, and the Fast and the Furious series, overall.�� Like Proactive, Statt could argue that despite no longer having Johnson as a client, he should still be entitled to Johnson’s future earnings from Fast Five and any additional instalments in the Fast and Furious series that Johnson appears in.�� This also says nothing about what Johnson’s appearance in a successful action film like Fast Five might do for roles offered to him in the future.�� Should Statt be entitled to some credit if Johnson, based on Fast Five, is offered other lucrative opportunities in the genre? How would such credit even be determined?  Parties like Johnson and Statt will be looking carefully at their contracts to answer these questions.

The developments between Proactive and Mr. Rooney could have an impact on the way commissions are paid to agents in the future.�� Since agents play a key role in helping to shape the perception and ultimate marketability of their client, when does their service truly end? If Proactive wins its appeal, an agent’s service could extend past the end of its working relationship with a client.

The post Soccer Star, Wayne Rooney, Fired His Agent, but Still has to Pay the Agency Continuing Commissions appeared first on IPOsgoode.

Nearly 50 years since the iconic platinum blond actress’ death, her name still epitomizes Hollywood glamour and beauty around the world. The timelessness of her name and image has led Jamie Salter, a Toronto-based businessman who runs Authentic Brands Group in New 91��ɫ City, to Marilyn Monroe’s name, image and likeness. This recent acquisition comes on the heels the Group’s successful acquisition of reggae singer name and image several years ago, and will allow the company to build a brand around the iconic 1950s actress by licensing her image to a variety of products. “introduce a line of branded lingerie, handbags, jewellery and fragrances, and possibly a reality-TV show".

The purchase of deceased celebrities’ likenesses is not a new phenomenon – stars like Johnny Cash, John Lennon and Andy Warhol are among the many whose estates have sold their rights to private equity firms. , for example, has licensed the use of his name for a “Sirius XM Radio, and worked with Cirque du Soleil”. It is clear that with a certain echelon of celebrity, their name and likeness is worth the same (if not more) dead or alive. that Monroe’s likeness generated somewhere between $4 million to $5 million last year alone (it was noted that Michael Jackson’s earnings where upwards of $275 million last year alone), and that the deal to acquire the rights to her likeness was worth in the $20 million to $30 million range. But this leaves us all to wonder – how far is too far and should these celebrities’ estates be entitled to profit beyond the grave?

As it stands, (which subsists in a work for the author’s life, plus another fifty years after their death) is the only form of intellectual property that explicitly allows an author’s estate to benefit from the income generated from the works of a deceased author . In fact, reversionary rights have gone so far as to ensure that the author’s estate and its beneficiaries are entitled to the full copyright in the author’s works 25 years after their death. This is to be contrasted with the rights conferred through patent law and industrial design (lasting for 20 and 10 years respectively) which do not revert back to the individual's estate after death. As a result, unless contractual rights come into play, the inventor or creator does not have a monopoly over their intellectual efforts that is triggered on death – in fact, chances are that most of these inventors and creators will lose the exclusive monopoly over their inventions even before they die! Furthermore, it has been held in Canada that personality rights (more commonly referred to as the tort for the ‘misappropriation of personality’) , but these rights may be extinguished after some time (click here for discussion on personality rights in Canada).

Given that publicity rights were borne out of a need for a right to privacy rather than a commercial right to endorse products for profit, with whether a celebrity’s right to benefit from their likeness ought to die with them. On the one hand, the right to profit from licensing their name or likeness to a product should not be able to happen from the grave – a dead celebrity should not be able to endorse products, nor are they in any need of privacy. But does this mean that their name and likeness ought to fall directly into the public domain, for use and abuse as the public sees fit? Surely a celebrity’s estate should be able to prevent the dilution of the celebrity’s image and the unwanted association with certain products that are endorsed without consent. As the discussion continues as to whether these personality rights should subsist beyond the grave, we can look forward to getting reacquainted with some of the celebrities from the past.

The post Some (Still) Like It Hot: Marilyn Monroe’s Publicity Rights Sold For Millions appeared first on IPOsgoode.

Harry Reid, the Senate Majority Leader from Nevada, is struggling in his bid for re-election against Sharron Angle, a Republican endorsed by the Tea Party Express. Alongside the usual political mudslinging, the two are also embroiled in an intellectual property battle.

Angle once had a campaign website featuring hard-line stances on a variety of issues including healthcare reform, energy policy, taxation, national security, and same-sex marriage. She then sought to rebrand herself in order to broaden her appeal, by retooling her website and removing the more inflammatory materials in the process.

Reid countered by reposting her former campaign website under a new URL, , and Angle threatened to retaliate by suing him for copyright infringement. The site remains up, and Reid is claiming freedom of speech and a fair use defence based on political commentary and parody: “.”

, Angle was then hit with a by Righthaven LLC, a copyright enforcement company, for posting entire articles from the Las Vegas Review Journal allegedly without authorization. According to , the claimant is seeking both statutory damages and the forfeiture of her domain name: . It remains to be seen what defences Angle chooses to marshal, and what effect her actions against Reid will have on their viability. In a future post, I will present a follow-up, and discuss how these facts might hypothetically be analyzed from a Canadian legal perspective.

The post Senatorial Pursuit – Copyright Infringement Edition appeared first on IPOsgoode.

Most advertisements are disappointing. They suffer from gimmicky jingles, exaggerated punchlines, and fake endorsements. Yet every once-in-a-while there comes an ad that is witty, sophisticated, and original. Such an ad, more often than not, .�� But what happens when the ad runs headlong into the law of trademarks and personality rights?

Such may be the case with a recent ad from SWEEP and SARCAN.

is a non-profit corporation established by manufacturers, retailers, and other stakeholders for the purpose of coordinating the collection and recycling of obsolete electronic equipment. SWEEP was established for the purpose of complying with . The regulations require all first sellers of electronic equipment  (eg. manufacturer, distributor, owners, vendor, importer, etc.) to either operate or have someone else operate, a product management program. This program is to provide a recycling option to the population of Saskatchewan for their waste electronic equipment including desktop computers, laptops, displays, televisions, mp3 players, etc. SWEEP partnered with SARCAN, a private Saskatchewan waste disposal firm, to provide these disposal and recycling services.

The challenge with such a program is seldom the logistics or technical requirements for recycling electronic waste. Rather, the difficult task lies in garnering public support to fund the program, and generate awareness so that the services are used. SWEEP and SARCAN have been running a series of transit, radio and TV ads meant to inform the public of SARCAN’s electronic recycling depots, and to secure support for the Electronic Handling Fee consumers are charged on new electronic equipment.

One of their well-crafted bus ads parodies the 1940s movie classic Gone with the Wind. The ad depicts a picture of Clark Gable looking longingly at an old, yellowed computer monitor piled next to a stripped computer chassis. Across the top in bold, orange lettering the ad reads “GONE WITH THE WINDOWS 95". Along the bottom are the quoted words: “ ‘FRANKLY MY DEAR, YOU SHOULD SWEEP IT TO SARCAN’ ” The standard “SWEEP IT TO SARCAN” logo appears in the top left corner.

Why parody an old movie? Perhaps this ad targets the older generation who could be more likely to recognize and relate to the film and less likely to recycle electronic waste. Or perhaps re-using an old movie is a theme that resonates with SWEEP/SARCANs goals of re-cycling old electronic waste. Whatever their reasons, SWEEP/SARCAN may have come dangerously close to exposing themselves to liability.

Misappropriation of Personality Rights

The first issue is in regards to the personality rights of Clark Gable. The tort of misappropriation of personality allows an individual a proprietary right in the exclusive marketing, for gain, of his personality, image and name, and the law entitles that individual to protect that right if it is invaded (see Krouse v. Chrysler Canada).

The leading case in Canada on the elements of the tort is Athans v. Canadian Adventure Camps. The court held that for a plaintiff to succeed in the tort of misappropriation of personality, the plaintiff must prove that

1)    They have a reputation;

2)    There was a misappropriation of the plaintiff’s personality for the defendant’s gain;

3)    It caused damage to the plaintiff; and

4)    There is no public interest to precluding a finding.

The court also noted that there is no need to see if there is consumer confusion – what matters is the misappropriation.

In the present case it would appear that the elements of the tort are met. Despite insisting that with enough courage you can do without one, Clark Gable undoubtedly has a reputation. Clark Gable (or his estate) suffered damages (assuming he was not compensated) because of the use of his personality. There is no public interest to preclude a finding. And SWEEP/SARCAN used Clark Gable’s endorsement for their own gain. The endorsement was not simply limited to the use of Clark Gable’s picture, but also included a quote telling on-lookers to use the services of SWEEP and SARCAN: “FRANKLY MY DEAR, YOU SHOULD SWEEP IT TO SARCAN”.

It may be argued that Clark Gable has been dead for close to 50 years and that this right should terminate upon death. Yet In , the court commented that there is no reason why personality rights should not be divisible to heirs. The court was clear that personality rights should last at least 14 years and insinuated that 50 years after death is not an unreasonable length of time given that copyright protection has that length of term. The law is not certain on this point, however, and despite the court’s comments in Gould, it is not entirely clear that personality rights should extend past the life of the personality anyways.

There is a difference between copyright and personality rights. The value of personality rights lies not in the work but rather in the endorsement of a product or service by someone who the public recognizes and holds in high esteem. Advertisers believe that consumers would be more likely to purchase their products or services if there is a positive endorsement from a personality, or if the personality is somehow associated with their product or service. The consumer psychology goes something like this:

You, personality, use or are associated with this product/service and if I purchase it, I can be more like you / we will have something in common.

Alternatively the consumer may think:

You, personality, like this product/service and since I think highly of you for one reason or another, I will value your opinion in this regard and purchase this product/service.

Despite this author’s personal view that paid endorsements are unconvincing, the continued use in every industry suggests otherwise. Even so, after the death of the personality, the consumer psychology rational must surely breakdown.�� How can someone who is deceased truly provide an endorsement? If consumers weren’t incredulous of a personality’s remunerated endorsement while living, surely consumers would be unable to believe a personality’s postmortem endorsement from the grave. Such an endorsement should not be more likely to cause consumers to purchase a product, thus, the endorsement would not be of any value to an advertiser.

Conceivably one exception would be where the personality provided their endorsement of the product/service/organization just prior to their death, and the organization would like to continue to use this endorsement. The value of the endorsement, however, would still erode with time as the products/services/organization changed.

Depreciation of Goodwill in a Trademark

The second issue is with regards to the use of the Windows 95 mark. Sections 19 and 20 of the Trade-marks Act would not prohibit the use of the mark, as it is quite obvious the words “Windows 95” is not functioning as a trade mark to identify the services of SWEEP/SARCAN. That said, section 22 may pose a problem for the ad. Section 22 prohibits another person from using a registered trade-mark in such a way as to depreciate its goodwill. For there to be infringement, section 22 requires that (1) a casual observer would recognize the mark, (2) the goods or services need not be the same, (3) that there is section 4 “use”, and (4) the likely effect is to depreciate the value of the goodwill attached to the mark.

The first and second elements are easily satisfied. The third element is also satisfied. For wares, an advertisement would not be sufficient to amount to section 4 “use”. However, SWEEP and SARCAN are not offering wares, they are offering services. And as per s. 4(2), a “trade-mark is deemed to be used in association with a service if it is…displayed in the … advertising of those services.”  The fourth element is more difficult to prove. One possible argument is that the ad depreciates the goodwill in the Windows 95 mark by suggesting it is obsolete and should be disposed of.

It would seem that it would be difficult to succeed on either an action in infringement or depreciation of goodwill. This is indeed fortunate for SWEEP and SARCAN who are . And this is especially fortunate for those who enjoy a good parody since it is true what they say: “A good ad is hard to find.”

The post A Good Ad is Hard to Find…Especially One that is Non-infringing appeared first on IPOsgoode.