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.

Toronto is ground zero for these domain debates. It’s where this week the international domain regulatory body, the (ICANN) applications for new generic top-level domains (gTLDs), which are the suffixes of internet addresses.

The conflicts at play are outlined in two recent ICANN-related conference panels on new generic top-level domains (gTLDs). was hosted by the (NCUC) subgroup of ICANN in the days leading up to the conference and was hosted at the conference proper this past Sunday and featured Michele Jourdan, the Manager of New gTLD Communications for ICANN.

The good news story

The ultimate goal of the new top-level domain process is to increase choice and competition in the world of websites. To a greater extent, that is the purpose of ICANN. They have occasionally been releasing handfuls of new ones, such as .biz and .info, but this new round represents a significant increase of nearly 2000 applications for new domains.

“It’s interesting times ahead,” said Jourdan during her presentation.

The new domains will allow a wider variety of characters outside the current ones, which are largely based on the American Standard Code for Information Interchange (ASCII) computer language, which is biased toward the Latin alphabet. New domains will be available in a much broader range of character sets – for example Chinese, Arabic and Cyrillic – so that top-level endings of the domains will now match the characters used in the first part of the URLs.

Freedom of expression concerns

Freedom of domain expression is a hot-button issue. ICANN’s current process for domain applications includes a significant subjective component. After ICANN receives the application and processes it – they can at this point refuse the application based on their own, somewhat objective evaluation guidelines – the application information is posted online .

According to panelist , a professor at the Syracuse University School of Information Studies and a founder of the Internet Governance Project, there is a censoring impact of crowd-sourcing portions of the domain application approval process that can result in ��mob mentality.

“The implied standard here is, if enough people make enough noise, they can block an application for any reason. It doesn’t have to be specified. It doesn’t have to be illegal. It can simply be threatened by the fact that a lot of people don’t like it. Now to people who believe in freedom of expression, that whole standard, the community veto standard is completely problematic. It’s anti-freedom at its core.”

Protecting the public interest

In theory, the increase in the supply of domain endings should reduce the demand or for any certain or specific ones; an increase in options should reduce competition. But more domain suffixes may actually create more conflict between corporate and public interests. Rather than arguing over a single website URL, the fights will be over entire gTLD sections of the internet. The stakes with gTLDs are far higher than for individual sites within the .com or .ca pre-established gTLD.

The .patagonia tug of war is a good example. American retailer Patagonia Inc. has submitted an application for .patagonia, despite it also being the name of a region in South America straddling Argentina and Chile. Argentina’s representative to ICANN has understandably objected to the application, about a region’s rights to possession of their gTLD.

Panelist Philip Corwin, a lawyer from the , expressed anti-trust concerns about the ability of leading internet search providers and web giants like Google and Amazon to control a disproportionate amount of domain digital real estate.

In his oped for the Domain Name News, , Corwin outlines the danger of consolidating popular domain endings in the hands of a few.

“The bids by [Amazon and Google] to acquire new domain names such as ‘.book,’ ‘.shop’ and ‘.movie’ renewed fears among competitors that a powerful few will dominate the Internet marketplace of the future…If Internet users embrace the new domains, the companies that control them could bear considerable influence on Web traffic.”

Problematic governments

But corporations are not the only interest to balance. Governments can also act as roadblocks to increasing internet choice and competition. Some more restrictive governments may block certain top-level domains entirely, which can also be referred to as taking “fragmentary” or “cessation” actions.

Moreover, some governments struggle with the technical components of the international regulatory regime said panelist and ICANN board member .

“One of the big challenges is that today the processes that are in place in the intermediaries or in the platforms, the processes that are used by the governments, are usually not documented enough, transparent enough, accountable, and worst of all – or most important of all ��– they are not well interoperable.”

But countries do not necessarily lag by choice. There is an historic socio-economic, linguistic and regional dimension to internet technology development. These biases continue to manifest in ICANN and its processes, for example, as previously mentioned in terms of the lack of alphabet character diversity. Similarly, the gTLD application regions of origins are telling. , of the 1930 applications received during the last application window, only 17 were from Africa and only 24 were from Latin America. Europe and North America submitted 675 and 911 respectively.

��

What it all means

There seems to be general consensus among the digital classes that ICANN has the authority to continue and develop norms for assigning internet names and numbers. Having one established internet regime, no matter how much room there may be for improvement, is helpful to provide a single, credible forum to debate these crucial contemporary issues. The next job is increasing the diversity of voices in that forum.

There is still much to be done by way of reducing the commercial biases of ICANN and its processes, as well as creating more objective and transparent processes. To paraphrase from Professor Mueller, if ICANN is going to have a bias, then let it be for liberal democratic principles.

��

Getting involved

Those interested in promoting the public interest of domain assignment can visit the NCUC .

The Noncommercial Users Constituency (NCUC) is the home for civil society organizations and individuals in the Internet Corporation for Assigned Names and Numbers (ICANN) Generic Names Supporting Organization (GNSO). The NCUC is a Constituency within the Noncommercial Stakeholder Group (NCSG) at ICANN. With real voting power in ICANN's policy making and Board selection, it develops and supports positions that favor noncommercial communication and activity on the Internet. The NCUC is open to noncommercial organizations and individuals involved in education, community networking, public policy advocacy, development, promotion of the arts, children's welfare, religion, consumer protection, scientific research, human rights and many other areas. I agree to advocate a non-commercial public-interest position.

Denise Brunsdon is a JD/MBA candidate at Western University.

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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.

Digital technology has made it possible to resurrect dead celebrities, by way of digital clones��created from photos and footages, and to manipulate their image such that they can be a part of new creative projects. This process, called reanimation, raises a number of legal concerns over the protection provided for the image and dignity of these dead celebrities (see: Joseph J. Beard, “Casting Call at Forest Lawn: The Digital Resurrection of Deceased Entertainers- A 21^st Century Challenge for Intellectual Property Law” (1993) 8 High Tech. L.J. 101). In responding to these legal concerns a re-examination of intellectual property schemes, which may protect both the source images required for reanimation and a celebrity’s right in their image, is necessary.

A celebrity’s rights in their image, even post mortem has been protected in Canada by way of personality rights (see: Gould Estate v. Stoddart Publishing Co. (“Gould”) at and Horton v. Tim Donut Ltd. (“Horton”) at ). Personality rights, while utilized to protect the unauthorized use of a celebrity’s image (mainly for commercial purposes) may be inapplicable against the intellectual property rights afforded to the owners of the images that facilitate reanimation, particularly when the end product is characterized as an artistic, rather than commercial endeavour. This inadequacy of celebrity protection exists in the Canadian statutory regime as well, where the Copyrights Act and Trade-Marks Act, by current interpretation, are of little use to celebrities, who are not considered authors and thus owners of their own work.

In order to prevent the misuse of celebrity images post mortem, a reinterpretation of IP rights is required, paying attention to the way in which the image is used in the reanimation process. Reanimation often involves scanning a model that has been constructed from the image, derived from photos or footage, of a celebrity (for a detailed description of the reanimation process, see: Lorene Duran, “Humanipulation: Legal Issues in the Computer Animated Manipulation of the Human Image in Feature Film” at ).

The IP rights that can be adapted to address this new use of image ironically belong to the copyright regime. This is ironic in the sense that copyright regimes have traditionally been used to protect the rights of those who capture and reinvent the image. In this way the celebrity, who may be the subject of the image, has often not been the owner and copyright holder. Reanimation may however redefine this understanding of ownership of the image so that it is possible for the interest of the celebrity or celebrity’s estate to be protected under copyright.

Reanimation involves the use of footage or photographs, both of which are copyrighted material, with the ownership vested in the party responsible for the fixation of the image (ex. photographer, producer etc.). The relationship that exists when dealing with ownership over footage or an image is often defined by the terms of a contract between the celebrity and the producer or photographer. Most contracts provide that a photographs taken or frames films are to be used exclusively in that particular project (see: Conrad Nest, “From ‘ABBA’ to Gould: A Closer Look at the Development Rights in Canada” (1999) 5 Appeal: Review of Current Law and Law Reform 12-17 at para. 24 at ).

In the Gould decision for example, the Court, in finding in favour of the author of a book on Gould, which utilized images from an interview years prior, emphasized that its decision was based on the permission granted by Gould to taking the original photographs (at paras. 16 and 26). Since the photos were not later altered or used for a purpose beyond the authorization of Gould, it did not amount to a misappropriation of Gould’s image. The same line of argument was successful in the Horton case, which allowed the use of the image of the deceased hockey player for charitable purposes since the use did not deviate from the initial contract allowing for the use of the image (at paras. 21 and 23). By extension, the Court in these decisions seems to pronounce that the permission of the subject is negated should the image be altered in such a way so as not to serve the original purposes for which it was captured. It would seem that in the realm of digital imaging, which relies heavily on the alteration of the original image, a new form of authorization from the subject is required. Had the celebrity granted permission for such alterations, then this permission would be adequate but since reanimation technology is a significantly new use of an image, it is fair to state that the celebrity’s intent in granting the original permission was not in contemplation of these new forms of use.

Reanimation’s new uses of a celebrity’s image thus allows for the use of copyright to protect the image of the celebrity post mortem. It should be noted however that the limitations of copyright protection, such as its 50-year length, and the exceptions made for fair use and educational purposes remain. It is in filling these gaps that personality rights may still have a role in protecting the image of the celebrity from misuse, and as this right is characterized as a transferable property right, the span of its protection is not bound (see: David Collins, “Age of the Living Dead: Personality Rights of Deceased Celebrities” (2002) 39 Alta. L. Rev. 914-933, paras. 20-22 at ).

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Last week, U.S. President Barack Obama found himself in a strange place: Plastered across a 30-foot billboard in Times Square, hawking rain coats. The depicted a bold-looking Obama walking along the Great Wall of China with his hands dug into the pockets of a black jacket with the tag line “Weatherproof: A Leader In Style”. Although the photo was properly licensed from the Associated Press, Weatherproof did not clear the ad with the White House. The billboard was eventually taken down a few days later (at the White House’s request), but the whole situation raises some interesting issues around personality rights, particularly for extremely public figures like the President.

“This ad is clearly misleading because the company suggests the approval or endorsement of the president or the White House that it does not have,” . Yet this is not the first brand that has tried to associate itself with Obama. Vancouver-based yoga clothing company Lululemon recently ran an “” magazine ad featuring a cartoon Obama sitting in the lotus position. Similarly, the Vatican has gone to great lengths to try to in advertisements and merchandise. And, of course, there was the infamous .

Celebrities in Ontario are generally protected by the appropriation of personality tort. Cases like Krouse v. Chrysler Canada Ltd. et al. (1973), 1. O.R. (2d) 225, 40 D.L.R. (3d) 15, 13 C.P.R. (2d) 28 and Athans v. Canadian Adventure Camps Ltd. et al (1977), 17 O.R. (2d) 425, 80 D.L.R. (3d) 583 (Ontario High Court) established that celebrities have a proprietary right in the marketing for gain of their personality, image and name. Comparable rights of publicity exist in most other common law jurisdictions as well.

However, the line gets blurry when the advertisements don’t actually suggest��that the celebrity is endorsing the product. In Krouse, for example, a car company used a photo of the plaintiff (a football player) in its promotional materials, but only in the form of a generic football action shot. The plaintiff’s face was not shown and he was identifiable only by his jersey number. In Athans the defendants used a drawing of the plaintiff (a famous water skier) in their summer camp pamphlets but made no indication regarding the plaintiff’s actual endorsement or involvement in the camp. In both of cases it was unclear whether there was an express intent to misappropriate the celebrity’s likeness for profit.

Things get even hazier with uber-public figures like Obama and the Pope, who to some extent live and work constantly in the public eye. It could be argued that these figures are so ubiquitous that they really have no expectation of being able to control and commercialize their images. In the Weatherproof ad there was no indication that the President was actually endorsing the jackets, nor does the ad even use his name. Furthermore, there is probably very little expectation on the public’s part that the President or the Pope would ever endorse a clothing brand. Most Americans would probably not assume that their president was acting as a Weatherproof spokesman despite his appearance in their ad. These factors make it difficult to see where exactly the misrepresentation or the damages were in this case.

Rights of personality remain a tricky issue, even more-so for the super-famous and political figures. In this case it appears the White House managed to use their political muscle to get the ads taken down, but Weatherproof certainly got more than their share of publicity out of the whole stunt. Meanwhile, here in Canada the only ads our Prime Minister has been in lately are . Stephen Harper: A follower in style?

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A recent out of California dismissed the case of NFL Hall of Fame player Jim Brown against video games giant Electronic Arts (EA), producers of the popular Madden football series. Mr. Brown alleged that EA misappropriated his "name, identity and likeness" by using a representation of him on some teams in the game. The dismissal was granted based on a First Amendment defence that protects "expressive works" such as video games.

Many of us from Generation Y grew up playing sports video games where Michael Jordan, Barry Bonds or Wayne Gretzky were not included because they did not agree for their likeness to be used. Instead, video game developers simply made replica players on the same team but with the players' names excluded. This is what is done in Madden for "historical" players who do not have a licence with EA for their likeness.�� While this has not been an issue in the past, Mr. Brown felt that his replica player, who has his approximate physical attributes but not his name or correct jersey number, was a misappropriation of his likeness.

Specifically, Mr. Brown put forth an unfair competition claim under , under a theory of false endorsement. In general, this claim alleges the misuse of a trademark based on some distinguishing characteristic which is likely to confuse customers about the plaintiff's sponsorship of the product. The First Amendment provides a defence against Lanham Act claims asserted against the creator of expressive works. Based on the test from , the following two part test must be met for the claim to succeed:

1. The defendant's use of the plaintiff's mark must be relevant to the underlying work.
2. The use of the trademark must explicitly mislead customers about the source or content of the work.

While the use of the Jim Brown doppelgänger was held to be relevant, it was ruled that "a leap of logic" would be needed to equate the use of the anonymous, mis-numbered player to endorsement of the game. This seems to be a just ruling based on the Rogers test. In fact, given the aforementioned history of the video game business and that all players used in advertising and marketing of the game are represented in game by their actual names and numbers it does not take a "leap of logic" to conclude that EA is implicitly showing that Brown chose not to endorse the Madden game.

Canadian is slightly different to the law applied in Brown. In order for the tort to be established, the plaintiff must prove that:

1. The exploitation of the plaintiff's identity must be for a commercial purpose;
2. The exploitation must clearly capture the plaintiff.

This brings forward a much different issue than the Rogers test. The endorsement question is absent from this evaluation. Using the Canadian standard, the Brown case would turn on whether the replica player "clearly captures" the plaintiff. It seems that Brown would have actually succeeded, as the judge seemed prepared to concede that an avid football fan would be able to recognize the great Jim Brown as the running back on the historical teams of which he is a part.

In an interesting development, several former NCAA football players have suit against EA and the NCAA for using their likeness in EA's college football game. Because the claim was made based on the "illegal profit" made by the NCAA rather than Brown's "false endorsement" argument, the players' lawyer does not expect the First Amendment to apply. Their claim may be stronger than Brown's because EA uses their actual jersey numbers and EA even has a where the user can download the players' actual names. Some argue that the NCAA has long departed from amateur ideals and has turned into a professional sports organization that does not pay its athletes. These people claim that the NCAA unfairly exploit their unpaid student athletes by collecting vast amounts of money from ticket sales, TV rights and jersey sales. Thus, this is a huge case for the NCAA for if they lose, it may open the floodgates for likeness claims regarding jersey sales, promotional materials and more.

The post No Touchdown for Jim Brown in Suit Against Electronic Arts appeared first on IPOsgoode.

In this blog, I examine the ambit of protection given to personality rights in Canadian law. I focus, in particular, on the common law tort of appropriation of personality. The tort was first articulated by the Ontario Court of Appeal in Krouse v. Chrysler Canada Ltd., (1973), 1 O.R. (2d) 225 (Ont. C.A.)�� It allows an individual to control the commercial use of his or her name, image, likeness, voice, reputation or other unequivocal aspects of his or her identity. The tort seems to be quite amorphous. However, case law suggests that the plaintiff must prove at least two elements:

(1) the exploitation of the plaintiff’s identity was for a commercial purpose and

(2) the exploitation clearly and primarily captured the plaintiff.

(1) The exploitation of the plaintiff’s identity must be for a commercial purpose

To evaluate whether��exploitation is for a commercial purpose, the trial judge in Gould Estate v. Stoddart Publishing Co, (1996), 30 O.R. (3d) 520 (Ont. Gen. Div.), adopted the ‘sales v. subject’ distinction as outlined by U.S. courts. In particular, if the defendant has used the plaintiff’s likeness or name ‘predominantly in connection with the sale of consumer merchandise or solely for the purpose of trade’ then the tort would be established. For example, a board game using the names of famous golfers to increase the sales of the board game would most likely infringe on the golfers’ personality rights.

On the other hand, if the plaintiff were the subject of the defendant’s work or enterprise the defendants’ actions would most likely not infringe the plaintiff’s personality rights. This is because the court would regard the defendant’s work as one that is in the public interest. For example, the subject of a biography is the plaintiff himself. Thus the work’s purpose is not to augment the sales of a product by associating that product with the plaintiff but to provide some insights about the plaintiff’s life.

The case of Gould Estate v. Stoddart Publishing Co concerned a famous pianist who was interviewed by Jock Carroll for an article in Weekend Magazine. Nearly forty years later (in 1995), Carroll published through Stoddart Publishing Co. a book called ‘Glenn Gould: Some Portraits of the Artist as a Young Man’, which included some of the photographs and conversations that Carroll recorded during the interview with Gould. Gould had died in 1982 and Gould Estate did not authorize the publication or receive royalties from the book. As a result, Gould Estate sued Stoddart Publishing Co. on three grounds, one of which was the tort of appropriation of personality.

Applying the ‘sales v. subject’ distinction, the trial judge concluded that there is a public interest in knowing more about Canada’s musical geniuses. In particular, the book was about Gould; it provided insights to anyone interested in the famous pianist and as such was in the public interest. Since the first element of the tort was not established, the defendant was not liable.

(2) The exploitation must clearly and primarily capture the plaintiff

The second element of the tort of appropriation of personality, which did not arise in��Gould Estate v. Stoddart Publishing Co, was clearly articulated in����Joseph v. Daniels and Krouse v. Chrysler Canada Ltd.

In Joseph v. Daniels the plaintiff, an amateur bodybuilder, sued the defendant, a photographer, for appropriation of personality arising from the unauthorized use of a plaintiff's photograph. The photograph in question showed the plaintiff from neck to waist holding a kitten. The court held that the tort of appropriation of personality did not apply. The viewer of the photograph would not have been able to identify the plaintiff since the photograph only depicted the plaintiff’s torso.

In Krouse v. Chrysler Canada Ltd., the plaintiff was a famous football player. Chrysler Canada distributed a promotional item that depicted the plaintiff in his Hamilton Tiger Cat Football Club uniform bearing��the number ‘14’. As a result, Krouse sued Chrysler Canada for appropriation of personality. The Ontario Court of Appeal held that the defendant was not liable because the use of the plaintiff's image was incidental and not the primary object of the photograph. The defendant had sought to gain trade advantage by associating his product with the popular game of football and not with any particular team or participant.

It is interesting to note that in Athans v. Canadian Adventure Camps Ltd. et al, (1977), 17 O.R. (2d) 425 (Ont. H.C.).,��that despite the unclear depiction of the plaintiff on defendant’s promotional material, the tort was made out. In particular, the plaintiff Athans was a famous water skier. The defendant, a student camp, promoted��its business by using a stylized photograph of Athans. Previously, Athans had frequently used the photograph to market his image. As a result, Athans sued for appropriation of personality. The court concluded that the tort, in its usual form, was not made out because the ordinary parent who sent his kids to the camp would not have recognized Athans on the stylized picture. Yet Athans was awarded damages.

It seems that the court in��Athans��relied on equity to carve out a narrow exception where clear depiction is not necessary. This exception seems to apply in cases (such as Athans) where the plaintiff has already marketed and charged for the use of his image and the use by the defendant of that image would cause a commercial loss to the plaintiff. In particular, the court noted that the defendant could have chosen among thousands of pictures that depicted a water skier. Yet the defendant chose to modify the one photograph that Athans had previously used to promote himself. The court also recognized that although the public would not think that Athans appeared on the camp’s promotional brochure, Athans had lost the opportunity to control the exclusive use of his promotional photograph and to charge for the commercial use of that photograph.

Thus the court concluded that ‘the commercial use of his [Athans] representational image by the defendants without his consent constituted an invasion��and pro tanto an impairment of his exclusive right to market his personality and this…constitutes an aspect of the tort of appropriation of personality’.

Do personality rights survive the death of celebrities?

While courts are in agreement that personality rights survive the death of celebrities, it is unclear for how long.

From the previous discussion on Gould Estate v. Stoddart Publishing Co, it is clear that Gould had personality rights and could have sued for infringement. However, Gould had passed away 14 years before his estate brought an action against the defendant. The question was: could the Gould Estate sue for the invasion of Gould’s personality rights after Gould’s death?

The trial judge concluded that the Gould Estate had standing to sue because personality rights survive the death of the right-holder (in this case Gould) and descend to the right-holder’s heirs (in this case Gould Estate). The court recognized that personality rights might be extinguished after some time. However, Lederman J was cautious not to establish a particular limitation period within which right-holder’s heirs could sue for breach of such rights. Lederman J simply concluded that the limitation period is unlikely to be less than 14 years since the protection of other intangible property such as patents and copyrights is longer. Since Gould had passed away 14 years prior to Gould Estate’s commencement of the action against the defendant, Gould’s personality rights would not yet have expired.��

Conclusion:

Courts have not clearly identified all the necessary elements of the tort of appropriation of personality. However, a look at the different approaches in the case law,��shows that the tort��requires at least two conditions: (1) the name, image, likeness, voice, reputation or other unequivocal aspects of the plaintiff are commercially exploited by the defendant and (2) the plaintiff’s personality indicia is clearly and primarily depicted by the defendant. Where the latter element is not met but a claimant had previously marketed his image ��and the defendant’s use caused a commercial loss to the claimant, courts might still award damages.

Furthermore, the 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’ (Gould Estate v. Stoddart Publishing Co).

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Lawyers for the clothing maker are expected to take a no holds barred approach and argue that Woody Allen’s past actions have damaged his reputation in North America such that the commercial value of his image is worth less than Allen claims. This is expected to include bringing up details of his well known affair with and subsequent marriage to his ex-wife’s adopted daughter Soon-Yi Previn.

Allen’s side claims this is an attempt to further embarrass and intimidate him. They maintain that Allen does not endorse products in the United States and that the advertisement gives the false impression that he endorses American Apparel. He further points to the clothing company’s reputation for provocative ads, which the company proudly acknowledges via a link on their site to view their “”, as providing further reason why he would not want to be associated with the company.

The billboards featured a still shot from Allen’s film Annie Hall of him dressed as a Hasidic Jew with the phrase “the Holy Rebbe” written in Yiddish above Allen’s image and the words “American Apparel” written in English beside his image (photos of the billboards can be seen and ).

The original seeks damages under of the New 91��ɫ State Consolidated Laws for breach of Allen’s right to privacy. These sections prevent the unauthorized use of a person’s image for commercial purposes. Damages are also sought under for misrepresenting Allen’s sponsorship of American Apparel on the billboards.

These facts highlight a difference between two of the philosophical underpinnings of this type of action, the privacy basis and the brand protection, or trademark, basis. Here, the underlying privacy basis is weak as the image used is not only of a celebrity but it is a screen capture of him in one of his films. That is, there is nothing being protected that has not already been made publicly and commercially available by the person in question. On the other hand, the basis for an action rooted in trademark principles is strong because of Allen’s celebrity and the control he seeks to maintain over his personal brand.

Despite any potential ruinous harm Allen has done to his reputation, it seems beyond doubt that his image is indeed worth something. As such, it seems that the case will be more about the quantification of this value than about interpreting these laws. While a person’s overall reputation would be an important factor in determining their image’s commercial value, perhaps more important is how successfully it reflects or promotes the company their image is being used to endorse. If that’s the case, maybe trumpeting Allen’s provocative public history isn’t the best way to show the low value of his image as used in one of American Apparel’s provocative ads? ����

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For the past year and a half, one political figure has evoked much publicity around the world that very few celebrities or politicians have enjoyed during their whole life. This political figure is the newly elected U.S. president, Barack Obama. The Obama craze has resulted in, what Megan Boler calls, a .��In the ., Obama’s face, name and memorable quotes are put on calendars, mousepads, ‘I kiss Obama’ chapstick and even Obama inauguration undies.��In , Obama-related products include doggie sweaters, oven mitts, and baby blankets.

This��Obama merchandization has raised an interesting issue, namely, to what extent politicians can protect and control the use of their image. has addressed the issue from the perspective of ��U.S. law. While it is clear that most states afford politicians a right of publicity that allows them to control the use of their image, the extent of protection is unclear. According to the US intellectual property professor, , politicians rarely exercise their right of publicity to stop the production of merchandise that display their image. Therefore, the content and remedies of the right of publicity in this context remain legally untested.��

In fact, a�� have hypothesized as to whether the Obama family could and would take legal actions against the company Ty (the company started selling Sasha and Malia dolls that resemble the First Family’s daughters).�� Although Ms. Obama's press secretary had clearly stated that it is ��it remains unclear whether any legal actions would be commenced.

French politicians seem to be more active in asserting their publicity rights. Recently, the, tried to stop the sale of a voodoo doll that closely resembled the president. The doll is emblazoned with some of Sarkozy's controversial quotes and allows people to stick needles in it. A Paris court of appeals refused to ban the production of the doll but forced its producers to put on a label describing the doll as offensive to the French president. Thus, French law seems to afford more clarity on the remedies politicians have against producers of merchandise that use their image.��

In Canada, politicians have different causes of action that allow them to control and protect their image. One alternative is the common law tort of misappropriation of personality, which is the Canadian equivalent of the U.S right of publicity. Other alternatives include passing off, defamation or breach of privacy. Canadian politicians have often availed themselves of one or more of these causes of action. Political figures have often used such causes of action against other politicians or the media for false statements or misrepresentation.

For example, in March last year, Prime Minister Stephen Harper against the Liberals for defamation and misappropriation of personality. At issue was a tape recording of an interview with Harper by Cadman biographer Tom Zytaruk. Harper's lawyer argued that the Liberals "have used the edited and doctored audio tape to wrongly usurp the plaintiff (Harper) of his right to control his own image and to portray the plaintiff in a false light."

However, the different causes of actions that allow a politician to control his or her image have rarely been utilized to stop the production of merchandise that use politicians’ images for commercial gain without permission. Thus similar to the U.S. law, Canadian law in this context remains untested.

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