I. INTRODUCTION *
II. PUBLICITY: SELLING FAME ITSELF *
B. Labour Theories of Celebrity and the Myth of Ordinariness *
C. Popular Culture: Dominant and Subversive Meanings *
B. Early Development of the Right *
C. Elements of the Right of Publicity: A Constant Battle *
B. Leading Cases: Doctrinal Incoherence *
C. Recent Developments and Our Likely Future Course *
B. Analogies to Other Intellectual Property Regimes *
The twentieth century has produced a celebrity-obsessed
culture across North America. As a result, the famous have had unparalleled
opportunities to exploit and profit from their success through commercial
endorsements and other media portrayals of their images. But when parodists
and free riders used celebrities’ images without seeking approval or royalty
payments, the celebrated struck back through the courts. A new common law
branch of intellectual property, the right of publicity, emerged in the
1950s in the United States. It was based on the notion that unauthorized
uses of a celebrity’s images denied the person a property interest in his
or her identity. A handful of Canadian cases have considered similar claims,
establishing a new tort—the appropriation of personality. But no coherent
doctrine has emerged in this country and the decisions have been mired
in confusion between property and privacy principles. This article argues
that Canadian courts should reject the American doctrine, which grants
a monopoly to celebrities over depictions of their images without requiring
the public interest balancing that infuses statutory regimes of intellectual
property or constitutional free-expression guarantees.
Personality, image, and identity are among the most ephemeral concepts known to humanity. All three words have been the subject of endless study within philosophy, psychology, sociology, and other disciplines. There is no widely accepted meaning for these terms, nor can they be reduced to a convenient list of descriptors. To expect the law, therefore, to come up with a coherent doctrine for dealing with the misappropriation of these concepts is a tall order indeed and most efforts to devise such legal principles have led to unsatisfactory results. While this complaint could be made about any area of law—especially in the intellectual property disciplines—attempts to define the scope of individuals’ rights in their personalities, images, or identities, particularly celebrities, have been most problematic. Many of the disputes giving rise to claims of this type of appropriation seem at first glance to be trivial, but they raise fundamental issues about the degree to which our society wishes to define personal attributes as property. It could be said that all publicity about such persons is beneficial (whether to them or to someone else).
Canadian law in this area remains in a relative state of infancy compared to the United States. Our courts have dealt with this issue more often and more directly than has the legal system of the United Kingdom and other western countries, but important questions remain to be answered. For example, should the sons of the late Princess Diana be given a monopoly over the rights of others to use or display her picture, her signature, or her voice? Should the courts interfere when parodists or advertisers "borrow" some recognizable aspect of a famous actor’s or athlete’s likeness merely because the celebrity did not have a veto over that use (or a financial stake in the publicity that a media portrayal might generate?)
American courts have adopted (nearly universally) the concept of the right of publicity, the "inherent right" of every human being to control the commercial use of his or her identity. While it has been stated in several formulations, the right of publicity posits the notion that individuals have a proprietary interest in the manner in which their identities are portrayed in a commercial setting. The concept is deceptively "commonsensical," but the precise boundaries of this "right" remain uncertain and its mere acceptance as a legal principle continues to be attacked by a minority of judges and commentators. The matter is further complicated because no uniform standard applies to the right of publicity across the country. Rather, it is defined according to a crazy quilt of state statutes and common law doctrines.
Owing largely to the ingenuity of the "industry of plaintiffs’ counsel," the common law right of publicity has expanded outward to cover a variety of personal characteristics since it was first "recognized" in 1953. Courts have compensated celebrities against unauthorized uses of their voices, phrases with which they are associated, and even the names of characters they once played. Some famous people have enjoined the use of look-alikes in advertising, while in other cases the estates of long-dead entertainers have been able to control the depiction of those people beyond the grave, arguing successfully that the right of publicity is descendible. Most recently, the famous have won the "right" to suppress computer-enhanced versions of previously published photographs of them in portrayals by satirists and website operators. Dustin Hoffman, for example, was awarded $3 million after a Los Angeles magazine published, without his consent, an altered version of a publicity photo from his 1982 film, "Tootsie." Other celebrities have asserted publicity rights in order to enjoin publication of real as well as simulated nude pictures of them on the Internet.
A handful of cases have established that an action for appropriation of personality exists in Canada but its scope remains uncertain. But the jurisprudence reveals a lack of doctrinal clarity. Courts have given contradictory signals about whether the action is grounded in privacy or property principles and whether the rationale is in preventing unjust enrichment, preventing consumer confusion, or some other concept such as an incentive to engage in creative endeavours akin to copyright. It remains an open question as to what uses will constitute "commercial" appropriation. It is also uncertain whether someone can recover upon a mere showing that an aspect of his or her "personality" was used without authorization or whether some injury must first be proved. Finally, the degree to which constitutional and "fair dealing" justifications can be applied in order to keep some commercial uses of another’s personality in the public domain remains all but unknown.
Since advertisers and other purveyors of "commercial" forms of communication seldom seek to associate themselves or their products with anonymous individuals, the vast majority of plaintiffs in commercial appropriation cases have been celebrities. It is important, therefore, to consider the appropriateness of constructing legal doctrines that only serve famous people. This article attempts to demonstrate that such doctrines are inappropriate because they amount to judicial subsidization of the affluent and celebrated, those who are already in the best position to assert and protect their interests. At the very least, proponents of a right of publicity for Canada ought to present a compelling justification for special legal protection of celebrities that trump the public interest in knowing about and interpreting their lives. Michael Madow asserts that no such justification has been demonstrated in American law, but the right of publicity has become too deeply engrained in that legal culture for this deficiency to matter. In Canada, we have instead attempted to bend a number of unrelated doctrines including defamation, passing-off, and breach of confidence, to arrive at results akin to those reached in the United States. The courts there have frequently cast themselves in the role of theatrical agent, collecting royalties on behalf of celebrity litigants.
Part II of this article will examine the concept of publicity in order to dispel the notion that celebrities, through conscious effort, create their identities. In some cases, it is no doubt true that the achievement of success and public recognition is the product of hard work, perseverance, or innate talent. More commonly the creation of a celebrity is the result of clever public relations and other factors that are divorced from the person’s efforts. Within the "unreality industry" of professional sports, music, television, etc., publicists and celebrity photographers have gone to great lengths to create a "myth of ordinariness." Popular culture is a battleground of sorts, on which dominant and subversive meanings always compete for space. If we choose to grant to celebrities the right to require prior authorization for use of their "personalities" through a right-of-publicity action, they will unfairly be able to select acceptable meanings and interpretations of their work.
Part III will explore the emergence of the right of publicity in the United States and its split personality between privacy and property theories. For a plaintiff to recover on a privacy rationale means that damages flow from the psychic distress of having some personal characteristic exposed to the public. This is exactly the opposite of what the right of publicity actually protects—the unauthorized taking of a business opportunity to promote oneself. The analysis will consider the customary elements of the action, as well as the difficulties of setting limits on what characteristics and what sort of "takings" will be actionable.
Current Canadian law is the topic of Part IV. Until the 1970s, no Canadian court recognized anything like the right of publicity as a tort. We followed English decisions that rejected a right to privacy or any notion that a person owned aspects of his or her likeness, personality, and identity. But in the Ontario Court of Appeal in 1973, Estey J.A., much as Judge Jerome Frank had done in the United States, created the tort of appropriation of personality, virtually out of thin air. More recently, the Supreme Court of Canada declared the right to control the use of one’s image to be an inherent aspect of the right of privacy. While the case interprets Quebec civil law and may be of limited use elsewhere, the Court’s reasoning mirrors American right of publicity cases that recognize the commercial appropriation of identity as the violation of a proprietary right. It also highlights, in the author’s view, an unfortunate tendency to devalue expressive freedom.
The need to leave appropriate scope for the public domain is the focus of Part V. It will consider the case for restricting the right of publicity on freedom of expression grounds and the analogy with other, statutory intellectual property regimes. Those statutes are premised on the need to balance creators’ rights with the rights of the public to benefit from the development of intellectual property, such as the "fair dealing" defence to a copyright infringement claim. Recent American case law has relied on the similar (although broader) "fair use" defence to carve a significant exception out of the right of publicity.
Pandora’s box has been opened by some Canadian decisions. If our courts either restrict the tort of commercial appropriation of personality for celebrities or broaden the public-interest exemption to it, the contortions of academic debate over the American law will not be necessary. The article concludes with the idea that we do not need the right of publicity and that we should not be forced to live with it. Quite simply, not everything to which a value can be attached should be defined as property.
II. PUBLICITY: SELLING FAME ITSELF
Although not every case that asserts the appropriation of personality involves "celebrities" and others who seek or achieve notoriety, the focus in this article will be almost entirely on those who acquire that status. This is because the cases focus overwhelmingly on the rights and interests of celebrities.
A. The Star System
Publicity is one of the most pervasive influences on western culture this century. Unless one entirely avoids television, newspapers, magazines, movies, and books, one cannot escape the bombardment of celebrity endorsements, news about the famous, or media advisories about "what’s hot " in fashion, music, sports, books, food, etc. All of this is by design.
Ours is a consumer society. In order to get us to consume more voraciously, advertisers have long sought to associate their wares with attractive, instantly recognizable figures from public life. They hope that people’s positive feelings for the stars will translate into positive feelings about the product being pitched. As early as the First World War, actors and athletes were enlisted regularly to give endorsements of products in advertisements. Charles Lindbergh, for example, cut deals with Mobil Oil and AC Spark Plugs even before he completed his 1927 solo flight across the Atlantic. While it would be an exaggeration to say that it has been a direct path from the "yellow journalism" of the late nineteenth century to the "Disneyfication" of Times Square, it is possible to trace our modern cult of celebrity to a number of easily identified factors and influences. I will illustrate these influences in a discussion about Hollywood’s "star system."
Far from being a centre of artistic expression, Charles Eckert asserts that the Hollywood dream factory of movie production was the conscious creation of conglomerate builders. Throughout the 1920s, when the West Coast entertainment industry was being built, business became consumer minded, following a fifty-year fixation on production above all other goals. During this period, Hollywood (as we now know it) evolved from a nickel and dime business to a massive industrial enterprise, funded by the likes of A.T.&T., RCA, The House of Morgan, and Goldman Sachs—major investment houses and many of America’s largest corporations. Unlike the railroads, steel mills, and other construction that these firms had financed, Hollywood’s financiers peddled a new intangible—fame.
Before the First World War, for example, most films were in the nature of documentaries, featuring stories about real-life persons, and reflecting the news of the time in order to highlight the scientific aspects of the new moving picture technology. Human "actors," in fact, were seldom identified. Gradually, narrative forms (comedy and drama) eclipsed the documentary and the studios sought to draw attention to the artistic uses of the medium, particularly to the actors who filled new fictionalized roles. By 1909, "picture personalities" began to appear in films, either using their own names or names the public assigned to them. The success of early fan magazines depended to a large extent on the pleasure the public took in knowing the players’ names. By disseminating this information, film companies built brand loyalty through product individuation—the recognition and identification of an actor from film to film.
Through carefully planned, predictable steps and "gimmicks," Hollywood image makers concocted a person’s film persona, then worked tirelessly to reinforce that persona by attempting to manage the publicity about the star’s private life. Thomas Harris, a communications theorist, has documented the efforts of publicists to "create" the enduring images of screen legends Marilyn Monroe (provocative sex symbol) and Grace Kelly (genteel, patrician "lady.") In both cases, publicists cooked up a "discovery" by sending glamour pictures to print media and planting rumours of romance with another star already known to the public or a possible starring role in a major film (for which casting had already taken place). To be sure, "use of the truth as raw material was exploited with phenomenal effectiveness" for both stars but biographical information was used selectively to support the themes on which their respective screen identities were based.
The techniques of entertainment publicity have become more subtle and sophisticated (video press releases, movie "junkets" for journalists, etc.) but the purpose remains the same: "getting some target public to do something as a result of the publicity seen in the media." These efforts are bolstered through "staggering amounts of market research" by television networks, book publishers, music producers, and film studios that is designed to increase the predictability of success of their media ventures. A recent Madison Avenue tactic has been to design provocative advertisements in such a way as to trigger public controversy and thereby generate "free" news coverage. First practiced by political consultants in the 1980s, this technique has "become a standard act in the repertoire of product and service marketers."
While the communications industries of the twentieth century turned stardom into a global business, Professor Leo Braudy has traced the widespread marketing of famous persons’ images to the mid-eighteenth century, when Josiah Wedgwood produced a series of portrait medallions of "Illustrious Moderns" such as Voltaire and Rousseau. New methods of mass publicity, including the diffusion of books, pamphlets, and caricatures were thought to engender "a new quality of psychic connection between those who watch and those who … perform on the public stage." Benjamin Franklin, serving as America’s ambassador to France in the late 1770s, reveled in the publicity he generated among the populace. Although the flamboyant founding father’s face appeared on "fans, perfume bottles, and a hundred other items of fashion," a review of Franklin’s correspondence indicates that he did not begrudge the sellers’ profits that derived from his image. Rather, he and other early national leaders, including Washington and Jefferson, believed that broad dissemination of their images advanced the interests of the nascent republic. They viewed their images "as a kind of common republican property, appropriately deployed in any way that would further the cause of independence and nation building." The founders essentially turned themselves into stars in order to create positive associations among the public with the bold social and political experiment they undertook.
It was motion pictures and radio, however, that uncoupled fame from greatness and achievement. From the early years of the century those media built a machine that allowed people to become famous without doing anything particularly remarkable or admirable. In the twentieth century, fame became something that could be fabricated purposely, even overnight, by the masters of the new "machinery of glory."
If the law is going to recognize a tort of appropriation of personality, its proponents ought to demonstrate a compelling public interest for the doctrine. To date, courts have expressed little interest in challenging "the platitudinous assertions, unsupported by any empirical evidence, about how celebrities achieve fame and distinctive public images."
B. Labour Theories of Celebrity and the Myth of Ordinariness
In most cases involving a claim of appropriation of personality, one of the premises for recovery is that the plaintiff exerted great effort to attain a position of fame and success. The theory is that these persons ought not to endure free riders, who simply take for their own profit or enjoyment the image of the celebrity. This "fruits of labour" argument can be traced to an influential article by Melville Nimmer, written shortly after the right of publicity was first identified by a court. The argument is framed in metaphorical terms: that the defendant has reaped where it has not sown. There is something charming, perhaps even romantic, about the notion of the ambitious, starving artist who achieves greatness after toiling in obscurity.
But commentators have criticized this "property" rationale for being over-simplistic or inaccurate. Many unknown entertainers expend similar resources developing abilities that are equal or superior to those of celebrities, yet fail to attain the compensation or adulation that is bestowed on the famous. Celebrities do not always work hard for their fame; sometimes "they become well-known as a result of dumb luck, serendipitous involvement in public affairs, or even criminal conduct." And even if one starts from the premise that fame results from hard work, awarding a property right in the persona for this reason alone is inconsistent with the quid pro quo requirement of intellectual property law that the celebrity also contribute something of value to society.
Cultural anthropologists argue that this property/labour rationale for appropriation of commercial identity is based on two myths that were propagated, largely by movie studios, in the middle decades of this century: the myth of hard work and the myth of ordinariness. They describe a "massive effort … to reeducate the public, to convince them that movie stars, though extraordinary in talent, beauty, and income, were entirely like their audience in basic values and desires. … It was constantly put about that … the stars worked farmers’ hours in factory like conditions." Reality, however, was much more complicated.
Celebrities have acknowledged on occasion that their success lies in factors entirely beyond their efforts. For example, Vanna White, the letter turner of the game show "Wheel of Fortune," who has been called "one of the more inexplicable celebrities in the history of fame," provided a candid assessment of her fame in a magazine article:
C. Popular Culture: Dominant and Subversive Meanings
A significant problem with the asserted appropriation (or right of publicity) tort is that it can be used to deny to the public the right to participate in defining popular culture. This is a complex dispute within the broader field of cultural studies, so a complete analysis of the issue is beyond the scope of this article. However, a few comments should provide context for the legal issues at play. In every case, the public plays a significant role in determining who attains celebrity status—whether or not the subject of the spotlight seeks that status. Somehow, the media (particularly television) must pick up on the celebrity’s image and disseminate it, while the celebrity must appeal to the vagaries of public taste at the moment. The process of creating a celebrity is therefore usually one of symbiosis among the three constituencies. Madow states the principle as follows:
One of the most interesting such disputes involves the efforts by representatives of the late Princess Diana to prevent the unauthorized use of her name, picture, likeness, signature, voice, and other characteristics in the United Kingdom. Neither a right to privacy nor an action for the unauthorized appropriation of "personality" has been recognized in British law, but lawyers for her estate have gone to extraordinary lengths in an attempt to control so-called commercial depictions of her.
Faced with a flood of unauthorized books, "limited edition" collectors’ plates, playing cards, dolls, mugs, videos, and even stamps from the Togo Republic, the late princess’s trustees amended her will after her death in an attempt to give the estate control of her "intellectual property rights." It remains to be seen how broadly the courts will interpret such a provision, or whether it will be upheld at all. Media lawyers have speculated that it will be difficult to protect her image through the law of copyright or trademarks after an English court ruled that "there is nothing akin to copyright in a name." This traditional hostility in British law to granting property status in names and likenesses was recently confirmed by the Patent Office. Still, Diana’s representatives approved an "official" charity logo and set out to register aspects of her "identity" in five American states in order to take advantage of statutes that protect the right of publicity. The death of the princess has shone a bright light on the conflict between a vibrant public domain and the desire to prevent "tacky" exploitation of a celebrity’s memory.
Similarly, (although they are notionally trademark matters) Mattel Inc. has engaged in a worldwide battle with individuals and organizations that use images of the toymaker’s "Barbie" doll. Over the last few years, Mattel has pursued aggressively anyone that dares to associate itself with the Barbie name in any way the company considers unflattering. Mattel sued a San Francisco artist who sold about 150 satirical dolls that featured names such as Exorcist Barbie, Tonya Harding Barbie, and Drag Queen Barbie. Although the artist estimates that he made about $2,000 in the venture, Mattel sought $1.2 billion in damages. Mattel threatened to sue the operator of a "Distorted Barbie" website and his Internet Service Provider for copyright infringement for its use of text and photos featuring the doll. The company even started a trademark infringement action against a collectors’ club that raised $120,000 for charity in annual "Barbie Grants a Wish" fundraising events.
Editorial writers and social commentators have expressed considerable outrage, arguing that Mattel is going too far in its efforts to "police" its intellectual property rights. "Protecting a trademark is one thing. Mangling the First Amendment is another," wrote columnist Suzanne Fields. According to Madow, these cases, and dozens of others like them, mark a threatening tendency within intellectual property law over recent decades. He asserts that
III. DEVELOPMENT OF THE RIGHT OF PUBLICITY
Before attempting to analyze the state of the law in Canada, it would be useful to review the development of the right of publicity in the United States, where a rich body of jurisprudence and commentary has been produced. Because of confusion about the underlying policy rationale for the tort of commercial appropriation of personality, the right of publicity is now a sui generis tort of unfair competition, recognized at the state level under the common law or under statute. In some American states, an action is available under both common law and statutory regimes.
The conceptual confusion is focused on whether the indicia protected under the right of publicity are based on privacy or property notions—and on whether the harm to plaintiffs is pecuniary or emotional. The inability to reconcile two competing theories of liability, combined with a lack of guidance from the United States Supreme Court has led to a strange patchwork of law. Part IV, below, will discuss a similar pattern of doctrinal incoherence in the more limited Canadian case law on appropriation of "publicity" rights.
A. Privacy and Property: Choosing Sides
Nearly every academic comment about the right of publicity traces its history to an influential law review article written by Samuel Warren and Louis D. Brandeis while they were Boston lawyers. Popular myth holds that it was written as a response to intrusive press coverage about Warren’s socially prominent family. Subsequent review of the era’s newspapers revealed, however, that the authors had not been the victims of the excesses of "yellow journalism." The "unromantic reality" is that the origin of the article "lies to a great extent in the hypersensitivity of the patrician lawyer-merchant and the verbal facility and ideological ambivalence of his friend and former law partner." This ideological ambivalence is one of the reasons that the law remains in such disarray.
Warren and Brandeis premised the right to privacy on the "right ‘to be let alone.’" Their point was to disentangle privacy from property notions that infused the American common law of copyright. In other words, the recognition of a right of privacy means that the law will take notice of an injury, even though no intellectual effort has been appropriated, no right of property or contract is involved, and the resulting damages are exclusively those of mental anguish. They sought to protect the "[t]houghts, emotions, and sensations" that comprise the inviolate personality of the individual.
Their theory can hardly be described as an instant hit within the legal community. The New York Court of Appeals, in one of the first considerations of the "clever article," rejected the notion of a common law right to privacy. The court refused to award damages to a young woman whose photograph had been placed, without her knowledge, on advertising posters for a flourmill with the slogan "Flour of the Family." Fearing a flood of litigation from people who claimed to have been humiliated by what might be constitutionally protected comment, the majority refused to open Pandora’s Box. In response to "a storm of public disapproval," however, the state legislature rushed to pass a statute that made it both a misdemeanor and a tort to use the name, portrait, or picture of any person for "advertising purposes or for the purposes of trade" without written consent. Soon thereafter, Georgia became the first jurisdiction to recognize a common law right of privacy in a case that involved the non-consensual use of a photograph of an anonymous man, together with a phony testimonial for an insurance company. The basis of recovery was the plaintiff’s "wounded feelings" resulting from the loss of his personal privacy interest. The wrong was not the "taking" of Pavesich’s image on film but the psychic harm that its publication caused him. This crucial distinction is the basis for much of the confusion in the current "right of publicity" jurisprudence.
The next major step in the process of developing rights of personality was an "immediately influential" article by William Prosser. He synthesized prior case law and interpretation of the Warren and Brandeis article into four distinct privacy violations: intrusion upon one’s private affairs; public disclosure of private facts; public portrayal that places plaintiff in a (non-defamatory) "false light;" and appropriation. The remainder of this article focuses almost exclusively on the appropriation tort, since it is widely thought to be the basis for commercial appropriation of personality or right of publicity claims.
There is nothing inherent in the vague concept of "personality" to mandate its being considered either a personal or proprietary right. Characterization of the nature of a "right" to privacy is thus a matter of policy. The law could commodify personality as property, making it alienable, assignable, and descendible on death. As with other property rights, the law could make mere appropriation or deprivation of a personality right actionable, without proof of fault or intention by the taker. On the other hand, characterization as a personal right, much like reputation in a defamation action, would mean that privacy rights are neither alienable, assignable, nor descendible. Warren and Brandeis came down on the "personal right" side of the line, as did most courts throughout the first half of this century. Such a right is not meant to protect against the loss of economic opportunity from the use of one’s image. Celebrities who voluntarily appeared in advertisements or "publicity photographs" on other occasions would, it seems logical to assume, not be harmed emotionally when a third party uses the person’s image for similar purposes. The fact that the third party may be motivated by commercial gain should not be relevant to an inquiry about the famous person’s hurt feelings. Only the opportunity to profit from the use of the photograph would be lost. There would be no psychic pain beyond the momentary reaction of surprise from seeing one’s picture displayed publicly when one was not expecting such a thing.
A number of early cases applied such reasoning, creating what became known as the "waiver" doctrine. Although the aggrieved celebrity lost an opportunity to share in the (potential) profits of the advertiser, "the publicity he [got was] only that which he had been constantly seeking and receiving." On the other hand, there was nothing to stop a "private person," such as the plaintiff in Pavesich, from suing advertisers and others who appropriated some aspect of his or her personality. It was assumed that it violated human dignity for an unknown member of society to have his or her image taken by an advertiser, etc., without consent. As a result of this line of cases, the law was clear, albeit harsh in its application to well-known plaintiffs. To be sure, celebrities did not enjoy losing the opportunity to make money from their likenesses, nor were they pleased that "free riders" were able to borrow their identities for use in advertising and other depictions. But the gravy train for advertisers was derailed more or less permanently in 1953 by a decision of an appeals court judge that turned personality into a commodity. A new right for the famous was born.
In the Haelan case, Judge Jerome Frank turned a case of inducing breach of contract into the founding document for a new branch of American intellectual property law. The dispute turned on some fairly obnoxious conduct by the defendant. A number of major league baseball players had signed exclusive agreements with Haelan (Topps’ rival in the chewing gum business) to feature their pictures on trading cards. Topps then obtained similar agreements from the players, through an agent, to shield itself from the tort claim of knowingly inducing breach of contract. In some cases, however, Topps made its cards without the players’ consent. Lacking either tort or contract claims against Topps, the plaintiff was forced to argue that it had some sort of exclusive property interest in the identities of the players with whom it signed agreements. Topps countered that Haelan’s contracts amounted to nothing more than waivers of the players’ right to sue for invasion of privacy. The contracts could not give Haelan enforceable rights against third parties, Topps argued, because privacy rights were not assignable. Frank J. rejected that view and rewrote New York common law to reflect the plaintiff’s position:
B. Early Development of the Right
Professor Nimmer, likely recognizing the potential power and scope of the new right of publicity, made the first effort to get the new baby up and walking. In his 1954 article he sought to divorce the new "right" from its prior associations with privacy and unfair competition doctrine, since both areas of the law served to restrict the enforcement of what he called "publicity value." This effort was clever, since it enabled celebrity plaintiffs to avoid entirely the waiver principle of privacy law and the requirement of showing a likelihood of confusion by the defendant’s use of the plaintiff’s identity in unfair competition law. He noted the problems of relying on traditional legal theories of liability, such as breach of contract (there seldom was a contract between plaintiff and defendant) and defamation (plaintiffs could not recover for truthful claims made about them).
Because "publicity values" generally result from celebrities’ expenditures of time, skill, and effort in an attempt to cultivate familiarity, Nimmer concluded that the right of publicity necessarily should be recognized as a property right. For all these reasons, he stated that "the nature of the inadequacy of the traditional legal theories dictates in large measure the substance of the right of publicity." As has been explained in Part II, above, these conclusions are not inherently accurate or supportable. Other commentators questioned the theoretical underpinnings of the right of publicity but because he was the first out of the starting gate, Nimmer’s view has become the dominant one.
C. Elements of the Right of Publicity: A Constant Battle
By the mid-1960s, celebrity plaintiffs throughout the United States attempted to assert their new "rights" under Nimmer’s "fruits of labour" rationale in a number of unusual contexts. Because the right of publicity was regarded as a property matter under state law, the law quickly developed into a patchwork. While great variation remains, a synthesis of the case law indicates that, generally, the following elements must be proved to establish a claim for appropriation of a plaintiff’s identity under the right of publicity: the appropriation by the defendant of an identifiable personal characteristic of the plaintiff; for a predominantly commercial purpose; without the consent of the plaintiff; and as a result of which the plaintiff suffers identifiable pecuniary damage, such as a diminished ability to earn money from the use of his or her identity.
Under Judge Frank’s original formulation the entitlement was narrow and straightforward: "the right to grant the exclusive privilege of publishing [the plaintiff’s] picture." The Prosser article extended this definition to include the plaintiff’s "name or likeness." Until the early 1970s, courts tended to construe this definition narrowly. However, since that time, the trend has been to expand the nature of the personal characteristics that are subject to the right of publicity. Courts have done this by broadening the traditional interpretation of "name or likeness" to include such things as nicknames or phrases associated with the celebrity, drawings, and celebrity look-alikes, or by moving well beyond the Prosser formulation and including "associative" characteristics, such as voice idiosyncrasies.
Recent cases have considered whether the defendant merely "evoked" the identity of the plaintiff through one of many potential identifiers. These cases do not rely upon a realistic rendering of the plaintiff. Instead, they are based on the trappings that surround the celebrity’s image, the "penumbras" of identity. In White, Samsung produced one of many magazine advertisements in a series designed to tout the reliability of its vcrs. The ad featured a robot bearing a feminine physique, wearing a blonde wig and an evening gown. It stood next to a letter board that looked similar to the one on the game show. Comparing it to a picture of the plaintiff in front of the real board, a majority of the Ninth Circuit Court of Appeals held that the collective presence of features adorning the robot infringed the attributes of celebrity identity that are unique to Vanna White. It interpreted the "identity" requirement extremely broadly on the facts, but chose to remain vague about stating an overall test:
In fact, several previous cases required the plaintiff to prove that he or she developed a unique character. A concurring judge in California’s first case on the issue of descendibility of publicity rights stated that "an original creation of a fictional figure played exclusively by its creator may well be protectable." By this analysis, neither Sean Connery nor Roger Moore could claim title to the James Bond character, for example. Along these lines, David Welkowitz has commented:
The White majority accepted reflexively the notion that a "commercial" purpose to a defendant’s portrayal of a celebrity necessarily denies it a First Amendment defence. "Defendant’s parody arguments," the majority stated, "are better addressed to non-commercial parodies. The difference between a ‘parody’ and a ‘knock-off’ is the difference between fun and profit." One problem with such reasoning is that the line between advertising and entertainment is rapidly disappearing in our culture. Linda Stack notes that much of what the court would presumably include in its "fun" motivation category—movies, and television, for example—is being blended with what the court would clearly put in its "profit" motivation category. Advertisers, she notes, pay huge sums of money to have their products "placed" in movie scenes. Toy lines and children’s television programs and movies have "merged" into seamless marketing packages. In fact, USA Today recruits a group of volunteer readers every year to watch the commercials during the Super Bowl and to record their reactions to the ads’ entertainment value. Categorizing content as commercial or non-commercial, she concludes, is becoming impossible and is no longer an important distinction because celebrities are the largest beneficiaries of this blending.
Randall Coyne has identified four general categories of commercial appropriation cases: appropriation for advertising or endorsement purposes; for purposes of selling memorabilia; taking a plaintiff’s unique style or character that the plaintiff created or made famous; and appropriation of the plaintiff’s performance. He envisions a spectrum of liability, on which false endorsement and exploitative memorabilia sales fall to the least protected end, but mere imitation of a character’s speech, mannerisms, or dress should not be actionable without proof of deception. In any case, a mere underlying profit motive for the defendant’s use should not be regarded as establishing that the use was commercial or wrongful, and a few courts have agreed. Courts have split on issues such as whether the use of a celebrity’s likeness in a professional impersonator’s show violates the "commercial use" element.
Applying what amounts to per se liability merely because the defendant has put the plaintiff’s image in an advertisement without his or her approval might lead to unjust enrichment by plaintiffs. Recovery on such a basis could encourage a celebrity to sit back until someone uses his or her identity without first paying a licensing fee, then simply extract the fee through the courts. If a celebrity has not previously sought endorsements, he or she loses nothing simply because the defendant is making money. Indeed, the free publicity that the defendant generates for the plaintiff might serve the celebrity’s interests. At the same time, if an advertiser claims falsely that the plaintiff endorses its product, the celebrity may have an action in defamation or unfair competition. The problem is that no uniform definition of "commercial use" has emerged from the cases, and this has become one more matter of confusion in right of publicity cases.
IV. CANADIAN AND COMMONWEALTH RESPONSES
Only by addressing the conflict between the public’s desires and rights to participate in the process of creating popular culture and the desire on the part of celebrities and little-known individuals to prevent unflattering public portrayals of them can our courts develop a coherent doctrine in this area. The American case law can be a guide because it has canvassed fully the various arguments in favour of and opposed to granting intellectual property rights to famous people in their identities. However, the jurisprudence from the United States raises as many questions as it answers because no single theory or rationale of liability has guided its development. And more importantly, the influence of the "fame industries" in the United States has been strong to overwhelming in the development of the right of publicity, arguably weighting the balance of interests too far in the direction of protecting celebrities. In any event, using the unsettled tangle of American law would only obscure the underlying policy questions with which Canadian courts are now dealing on a more regular basis.
A variety of differences (or at least perceived differences) in legal and popular culture between our countries may militate against the wholesale adoption of American doctrine into Canadian law. First, although empirical evidence is hard to come by, it is possible to assert (notwithstanding the uncontested influence of American media) that Canadians are not as deeply ensconced in a celebrity culture as are their southern neighbours. Second, our law has long been leery of the sorts of privacy notions that formed the early basis of the right of publicity in the United States. Third, our legal system contains structural elements, such as cost-indemnity rules, that are designed to discourage, rather than facilitate litigation. The history of the right of publicity in the United States has been written by plaintiffs and their lawyers who have been willing to gamble on untested arguments in an effort to arrogate to themselves "control over the commercial use of their identities"—and often more importantly—money. Unlike the United States, where the courts have gone "star crazy," the same result need not be inevitable here.
A. The Indirect Approach
Over several decades, Canadian and Commonwealth courts have inched towards the sort of canon that has been developed in the United States as the right of publicity. Rather than recognizing such an action in one dramatic act of rhetorical flourish as Judge Jerome Frank did in Haelan, the keepers of the common law in this country have continued to meander around the edges of a variety of legal theories. The result of this indirect approach has been to engender confusion about what the action for "appropriation of personality" consists of, in what circumstances it will apply, against whom it will apply, and related questions about extending intellectual property rights through the common law.
To date, Canadian courts have only answered part of the question that faces them in cases of alleged appropriation of personality: should we compensate the plaintiff for some wrong he or she believes was done to his or her "personality?" Framed in this way, a judge need only determine whether he or she associates with the plaintiff’s sense of having been violated. In some cases, the court appears to go through a laundry list of potential wrongs until it fixes on one that might fit the plaintiff’s complaint of having his or her personality appropriated.
In Kaye v. Robertson, for example, the English Court of Appeal settled on malicious falsehood to enjoin a tabloid newspaper from publishing information about the plaintiff, a television actor who was in an intensive care unit following a freak car accident. Ignoring signs that restricted access to his hospital room a photographer and reporter conducted a fifteen-minute "interview" with the groggy plaintiff but were discovered by security and ejected from the hospital. Before the newspaper published the story, the plaintiff’s representatives secured an restrictive injunction.
The unanimous court concluded that a wrong had been done to Kaye by the "pornographic newspaper," then set out to discover a ground of liability. Libel was thought too speculative; passing-off did not work because the plaintiff was not a trader in the story about his accident; battery was not proved because there was no evidence that Kaye was damaged when the defendants took flash photographs of him; and no right of privacy exists in the United Kingdom, so there could be no claim for a privacy violation. Malicious falsehood was an easier case, the court held, because the defendants were deemed to know that Kaye could not consent to an interview, while their "draft" article contained a false imputation that he had consented.
This analysis is deeply flawed. First, rather than attempt to analyze the problem from "privacy" principles such as emotional distress to the plaintiff, the judges confined themselves to analyzing age-old torts, none of which "fit" the facts. Second, the judgment failed to consider a public interest in learning about the condition of a beloved television star apart from a passing reference to "the freedom of the press" in the context of the need for a privacy statute. Had the court adopted a principled approach, it would have weighed such factors as whether the plaintiff’s "right to be let alone" in his hospital room trumps the right of journalists to gather news. The focus ought to have been on whether Kaye would suffer embarrassment merely because information about his condition was disclosed to the public (arguably, he would not). The court even might have considered whether the plaintiff would have lost some marketing opportunity to capitalize on his misfortune.
Other examples of the indirect approach in appropriation of personality actions can be found under the law of libel, passing-off, breach of contract, nuisance, breach of confidence, copyright infringement, and even wrongful dismissal. This indirect approach continues to plague Canadian law. Labels are less important than reasoned analysis. Therefore, I do not propose to lay-out the incidents of identity that Canadian courts might recognize under an action for appropriation of personality. I will instead examine the "leading" Canadian cases with an eye towards establishing a principled approach. Given the constitutional/public interest considerations that should have a place in the analysis, it is unnecessary to adopt tests and labels from American law. The key elements of any action for appropriation of "personality" will be objective harm, intent, and proven damages.
B. Leading Cases: Doctrinal Incoherence
One commentator has argued that it is unnecessary for Canadian courts to state a clear policy basis for the tort of appropriation of personality:
In Krouse, a "competent" Canadian Football League player "of lesser public following," sued a carmaker over its alleged use of his photograph in an advertising device known as a "Spotter." Beyond its use as an identification aid for fans, both sides of the "Spotter" contained colour photographs that featured cars, as well as an "action" photograph that showed three players. Although Krouse was the subject, only a uniform number made him identifiable. He won at trial on the basis that, since he had not consented to the use of the photograph, something of commercial value to him had been misappropriated and Chrysler was liable in passing-off.
Estey J.A. (as he then was) noted, repeatedly, in the unanimous judgment, that car dealers throughout eastern Canada distributed the Spotter to the public for advertising purposes. Whether he did this for some rhetorical purpose or merely to highlight the commercial use of the photograph is not apparent. He made it clear that Chrysler produced the device because it wanted to draw an association between the game of football and its cars, not to draw attention to the players depicted in the photographs, or even to their teams. He also repeated that there is "no reasonable basis for inferring" from the photograph on the "Spotter" that the players depicted on it (the others were not identifiable) could be seen to endorse Chrysler’s cars. Without identifying it as a privacy principle, Estey J.A. also held that professional athletes, by the nature of their jobs, expose themselves voluntarily to the public’s view, and can expect that their images will be published in newspapers and exposed on television broadcasts. Indeed, he concluded, "the object, value, and purpose of professional sport is to attract the public in the greatest numbers possible to the game and … the players will reap rewards proportionate to the numbers thus attracted." He did not use the term "waiver of rights," but Estey J.A. clearly indicated that professional football players impliedly consent to publicity of their identities. The final key finding was that, prior to initiating the case, Krouse had never attempted to market his name or other aspects of his "personality." In fact, he became better known as a result of the litigation than he ever did as a player.
Since the "appropriation of personality" tort had never been recognized by a Canadian court, it is understandable that Estey J.A. struggled with the nature of the claim being made. But instead of using the language of privacy and property, he analyzed existing torts in an effort to determine whether the asserted new action could fit within doctrines the law recognized. This shotgun approach, later to be used ineffectively in the Kaye case, permitted the court to duck the difficult policy issues.
He quickly disposed of breach of contract as a cause of liability. The photographer who took the picture for the "Spotter" had been authorized by the football team to take photographs, and Krouse’s contract with the team granted it the right to permit anyone to take pictures of its players, without compensating them. Unlike Frank J. in Haelan, Estey J.A. did not concern himself with whether the right to control one’s image was assignable.
Next, the judgment turned to tort law, defamation in particular, and rejected a comparison between the professional football player in Krouse and the situation of the amateur golfer in Tolley. Estey J.A. did not comment about whether Chrysler’s use of the "Spotter" had possibly harmed the plaintiff’s reputation. Similarly, because he concluded that Chrysler had not misrepresented the source of its product as coming from Krouse, and because the photograph could not be considered an endorsement of Chrysler’s vehicles, the carmaker could not be liable in passing-off.
The property concept of trespass was dispensed with in two short paragraphs. To prove an action in trespass or conversion, Estey J.A. held, the plaintiff would have to prove that Chrysler committed a "wrongful" appropriation for which he suffered "injury and damages" to a commercial interest. Finally, he noted that Ontario had no privacy legislation and that the New York statute had been held not to apply to the incidental telecasting without authorization of a professional entertainer on commercial television. This was the extent of any analysis about the concept of privacy.
But seemingly like a bolt of lightning, Estey J.A. then opined that "the common law does contemplate a concept in the law of torts which may be broadly classified as an appropriation of one’s personality." For all the reasons stated above, however, Krouse had not made out the elements of the action, whatever they were. Among the unanswered questions was whether this new cause of action was available only to celebrities, whether mere taking would be sufficient to establish liability or if some fault or intent element would be necessary, and indeed what was the nature of the right. How and why "endorsement" and "purpose" fit within the tort are mysteries. The presence of these two elements appears to mean that misrepresentation, akin to a passing-off action, is a required element of the action, but it was not made clear. Similarly, the term "commercial" was left hanging in the air, leaving open the possibility that only uses for "sales" purposes would be actionable.
In the next major case, Athans v. Canadian Adventure Camps Ltd., a relatively unknown professional water skier attempted to promote his image by selling a "trademark" photograph of himself "making a turn around a ball on a slalom course." Hoping to build a name for itself in the water skiing community, the fledgling summer camp negotiated with Athans for some unspecified involvement with the camp. So when the negotiations broke down, the camp and its advertising agency "stylized" the photograph into a line drawing on its brochure that obscured Athans’ face but still looked "strikingly similar" to the photograph that Athans sold. Just like in Krouse, Henry J. dismissed the passing-off action. Although Athans and the camp were both in the business of exploiting water skiing, the court held that no more than a handful of water skiing experts would be able to identify Athans from the brochure. As a result, it was unlikely that people who read the brochure—mostly parents of children who wanted to attend water skiing camp—would be confused or deceived into thinking that Athans was associated with the camp or that Athans had endorsed the camp’s program.
Even though few people would recognize the plaintiff in the drawing (owing to the "limited popular appeal" of water skiing), Henry J. concluded that "Athans has a proprietary right in the exclusive marketing for gain of his personality, image and name, and … the law entitles him to protect that right, if it is invaded." The court distinguished Krouse only on the basis that the "Spotter" in the earlier case had been used to draw attention to the game of football rather than to associate with the plaintiff’s personality. By contrast, the camp in this case had "deliberately incorporated a representation of [Athans’ trademark photo in] … promotional material."
The result is strange and contradictory. Henry J. adopted, seemingly out of the air, a vague "tort" standard that approximates the American, property-based, right of publicity doctrine. He stated:
Of the handful of appropriation of personality cases heard since Athans, none provided much analysis of the tort. For example, the judge in Racine tacked an appropriation remedy on to a claim for wrongful dismissal by a sports announcer against a radio station. The rationale for allowing the action is difficult to discern. He held that the plaintiff "found himself somewhat embarrassed; if not upset" when he was fired after calling only three football games. This suggests a privacy theory—compensation for emotional distress. At the same time, the judge noted that "‘reputation’ has long been regarded as a ‘right of property’ so as to support [a remedy] even when the victim’s economic interests are not affected … ." Finally, the judge misapplied Krouse, stating: "I need not dwell on this case in detail except to look at the fact that transgression by a company is actionable per se … ."
In 1983, people who had attended a conference about being unemployed sued the conference organizer after they found out that part of the proceedings were to be shown on television. Claiming that the defendants had misrepresented the reason that a filmmaker was videotaping the conference, the plaintiffs sought an injunction and damages for intentional infliction of mental suffering and appropriation of personality. The injunction application was dismissed because the plaintiffs had signed consent forms that authorized the conference organizers to "portray me, use my words, name, likeness and story in both documentary and fictionalized … works arising from" the conference. Hughes J. referred, bemusedly, to the contradictory signals coming from the Krouse and Athans cases: "it seems to me to be a little understood principle, particularly in the lower courts where judges have seen fit to disregard judgments of judges of coordinate jurisdiction."
Wallace J. of the British Columbia Supreme Court provided a more fulsome analysis of the appropriation tort in Joseph v. Daniels, in which an amateur bodybuilder sued a photographer who had recruited the plaintiff to pose with a cat for a magazine story. The photograph showed only the plaintiff’s torso, with his arms around the cat. The plaintiff was paid a $50 modelling fee but refused to sign a release authorizing the photographer to use the picture for any purpose. After the photograph won a design award, the defendant started selling it in calendars and posters, but never obtained the plaintiff’s consent. Noting the contradictions between Athans and Krouse, Wallace J. synthesized the appropriation action as follows:
Unlike Krouse, this case did not consider commercial use to be a necessary element in the action. However, the lack of a coherent policy rationale for the appropriation tort remained as a problem in the judgment. Had the plaintiff been "identifiable," it would have been nearly impossible to assess damages. As an amateur athlete, like the water skier in Athans, few people outside the world of bodybuilding would recognize the plaintiff. It can be assumed that he never attempted to exploit commercially the value of his "personality." If the defendant had not made posters and calendars, then presumably the plaintiff would not have made them either. The plaintiff might have suffered embarrassment by being exposed to the world with a cat in his arms and his amateur status might have been jeopardized if it was revealed that he had posed for pay. However, if the right is meant to protect a proprietary interest, then it ought not to compensate plaintiffs for emotional distress. Depending on the theory of liability that a court adopts, the plaintiff may or may not be in a position to prove any damages. And if proof of damage is regarded as part of the action itself (this is unclear), then the theory of liability could become a great deal more important in determining the scope of the right. The court in this case avoided the entire issue.
In F.(P.) v. Ontario, a young offender being held at a provincial jail was photographed by the press during a "photo opportunity" he had been asked to attend by the superintendent. The plaintiff sued the newspaper and the province when the picture was published, claiming that he suffered embarrassment and emotional distress. The defendants lost an attempt to have the claim dismissed but no further report of the case is available. However, such a case raises interesting questions. Would the newspaper, for example, be able to claim a public interest defence, given that the event to which it was invited at the youth jail was "newsworthy?" To date, this issue has not been addressed in the case law, except in passing. More important, would the tort, as constituted in Krouse, cover a situation in which a newspaper publishes a photograph that the plaintiff did not consent to being taken? It is debatable whether such use would constitute commercial use. Finally, one must question whether the law recognizes the plaintiff’s "right to be let alone" in the context of a photograph taken at a press conference in a jail.
C. Recent Developments and Our Likely Future Course
The decisions in a 1996 Ontario case and a recent Supreme Court of Canada case indicate that our courts are beginning to reexamine the theoretical underpinnings of the appropriation action. The Ontario case has brought us closer to the American right of publicity law, while the Supreme Court case, based on civil law concepts, attempted to run the entire analysis within the language of privacy law.
Gould Estate v. Stoddart Publishing Co. forced an Ontario court to deal for the first time with the "intellectual" aspect of recognizing a proprietary claim in one’s identity, particularly the interplay with the Copyright Act. Roughly forty years before the litigation commenced the world-renowned musician Glenn Gould granted an interview to journalist Jock Carroll for a magazine article. Their discussions were numerous and included a trip together to the Bahamas, which was arranged by Gould’s agent. During several meetings, Carroll took more than 400 photographs of the twenty-three-year-old Gould, some of which (along with Gould’s comments) appeared in the magazine article. In 1995, Carroll published a book about Gould’s life as a young man, comprised largely of extracts from the conversations with Gould and dozens of the photographs. Carroll did not have authorization from Gould’s estate (the musician died in 1982) to use the photos or to publish the book, nor was the estate to receive royalties from the book’s sales. Carroll clearly owned copyright in the photographs, about seventy of which appeared in the ninety-six page book.
The estate argued that the use of the photographs in the book amounted to the tort of appropriation of personality, and that copyright in the conversations that Carroll recorded ought to rest with Gould’s heirs. If that view was correct, then use of either the photographs or the conversations would require the estate’s permission. The family sought to rely on the "well known" fact that Gould had jealously guarded his privacy and image and, apart from the magazine article, would not have granted permission to Carroll to publish the photographs and his sayings. But unlike the material at issue in Krouse, Athans, and Joseph, the Gould book could not be regarded as a purely commercial venture. It was a biographical portrayal of the artist at a time when his career was blossoming, to which the author added his own creativity, and Lederman J. agreed with the publisher that it provides insight to anyone interested in Gould. He concluded: "there is a public interest in knowing more about one of Canada’s geniuses." Aside from brief obiter remarks about the public interest in Krouse, it appears to be the first time in a Canadian case that a judge has balanced explicitly the rights of celebrities with the rights of the audience for portrayals of celebrities. This innovation should be lauded.
Because these cases frequently involve well-known individuals against well-known corporations, neither side will have an incentive to make representations in support of the public interest. Rather, any attempt to raise public interest considerations will likely be incidental to the private interests of the litigants. Lederman J. ought to have been aware of these dynamics, but there is little indication from the judgment that he took notice of them.
Unfortunately, the rest of the judgment did not reflect this willingness to innovate. Lederman J. referred to the conclusions in Athans and Joseph that the right to exploit one’s personality is a proprietary right before acknowledging Frank J.’s definition of the right of publicity in Haelan. But he made no mention of why the right is regarded as being proprietary, nor whether the rationale for this determination is the need to enforce the commercial value associated with one’s identity or the desire to protect human dignity by preventing the "taking" of personal characteristics of persons. Instead, Lederman J. skipped such an analysis entirely, preferring to focus on the easier, well-trodden "endorsement" issue. He noted that the judges in both Athans and Krouse considered whether the defendants had used the plaintiff’s identity to associate their products or services with the plaintiff, implying that the plaintiff endorsed the defendant’s activities. His cautious conclusion was that although the Athans court imposed liability in the absence of a finding of endorsement, "it would seem open to the court to conclude, on a contextual basis, that the tort of appropriation of personality, is restricted to endorsement-type situations." There was, however, no discussion of the policy issue of granting monopoly power over the depiction of the late musician to his heirs or of the balance that statutory regimes of intellectual property have struck between the interests of the public and those of creators.
Potentially more troubling than Gould is the Supreme Court of Canada’s decision in the Aubry case. The Court upheld findings of liability against a freelance photographer who took a picture of a young woman while she sat alone on a step in front a building in downtown Montreal—without her consent. The purported basis of liability was a violation of the woman’s privacy rights, which are explicitly guaranteed in Quebec’s Charter of Human Rights and Freedoms. The majority judgment, however, fell victim to the confusion that has infused the common law of appropriation of personality by mixing and matching property and privacy concepts in an inappropriate manner.
The defendant gave the photograph (without remuneration) to a literary magazine that published the black-and-white photograph adorning a short story. Just 722 copies of the issue were sold and the plaintiff only learned that the picture had been published when a friend showed it to her at school. However, the woman testified that she felt humiliated because the photograph had been published without her knowledge. The only basis for this alleged harm to her dignity was her statement that "people … at school … laughed at me." The trial judge awarded her $2,000 for damage to her reputation and the loss of privacy resulting from the picture’s publication. The majority in the Supreme Court of Canada characterized the trial judgment as "ambiguous regarding the nature of the damage this amount was meant to compensate."
Justices L’Heureux Dubé and Bastarache, for the majority, noted the three required elements of an action for civil liability under Quebec law, namely fault, damage, and causal connection. The purpose of the protection of privacy, they concluded, is to "guarantee a sphere of individual autonomy … [and] must include the ability to control the use made of one’s image, since the right to one’s image is based on the idea of individual autonomy, that is, on the control each person has over his or her identity." In other words, this rather circular definition means that privacy is based on a dignity or autonomy rationale, and autonomy implies a right to choose whether your identity will be exposed to the public, other than for free.
Fault can be established, therefore, as soon as the identifiable image of a person is published without consent. Absent some justification that the photograph serves a "public interest" the subject’s right to privacy will trump any rights of the photographer, regardless of the purpose for which the photograph was taken. This was made explicit: "In the case at bar, the [plaintiff’s] right to protection of her image is more important than the [photographer’s] right to publish … ." As for damages, the majority accepted the plaintiff’s bald assertion that she was embarrassed and humiliated. Citing an author who posited that the mere act of taking someone’s photograph can "strip [a person] of his or her transcendency and human dignity, since he or she is reduced to the status of a ‘spectacle’ for others," the majority upheld the damages assessment. Causation was not discussed.
Lamer C.J. dissented, but only on the issue of fault. He stated that the mere act of publication (or of taking the photograph) ought not to constitute fault. He cited the example of firefighters who interrupt a political meeting to evacuate a burning building. Under the majority’s rule, such an action might constitute a violation of privacy. Ultimately however, he agreed with the majority that the defendant had committee a fault, that the public interest did not justify the dissemination of the photograph, and that causation was not an issue. The chief justice complained that the majority had fused what might be two distinct rights: a) the privacy right based on a "narrow sphere" of personal autonomy, which includes a choice about the uses made of one’s image; and b) a commercial interest in one’s image. However, he stopped short of saying that such separate rights actually exist: "I would note simply that it is not contrary to public order for individuals, whether famous or not, to profit from consenting to the use of their image." Such a "two rights" approach would approximate very closely the right-of-publicity and privacy laws that coexist in many American jurisdictions. His point was a good one, but too cautiously asserted.
By stating the scope of the privacy "right" as broadly as it did, the majority sucked up all identifiable uses of a person’s identity into the notion of privacy. This concept contains a number of contradictions. Among them, it can hardly be said that a commercial use of a celebrity’s image would cause emotional distress or a harm to a dignitary interest. The Court did not have to face the issue, since the case involved a private person who had been picked out of obscurity. But if the plaintiff had been a professional athlete, for example, the damage would have been to his or her ability to earn money from the sale or exploitation of his image, not the embarrassment of being featured in a low-circulation literary magazine. Based on the speculative evidence the Court was willing to accept about the young woman’s discomfiture at being laughed at by fellow students, however, even a professional hockey player could probably assert a claim for emotional distress under the privacy rationale. Any damages such a person wins, however, would be a windfall. The scope of such liability is inherently boundless.
Lamer C.J. objected to the majority’s deferential standard of proof for damages, stating that there was no evidence on which the trial judge could have found the young woman was humiliated by seeing her photograph in print. The mere assertion that people laughed at her did not meet an evidentiary threshold that would be necessary to prove liability. However, his recommended standard was barely higher than that of the majority: "[I]f the respondent had stated, ‘I felt humiliated when I saw the photograph published in Vice-Versa magazine’, there would have been sufficient evidence of damage."
Overall, the case represents an alarming indication of the Supreme Court’s thinking on the so-called appropriation of personality. Lower courts (outside of Quebec) will likely feel bound by the reasoning, if not the substantive law. The extreme deference that the Court showed for the plaintiff’s assertions means that any use of a person’s identity—famous or not—for a "commercial" purpose, will likely attract liability. And although the majority carved out some space for matters of "public interest" and for depictions of people who are in a "public place," the extent of these "defences" can only be discerned on a case-by-case basis in the future. Instead, the Court should have placed the burden on the claimant, to prove that a use of his or her identity was not in the public interest. Unless the so-called defences are interpreted broadly by other courts, the Aubry decision, much like the Athans case, creates the risk that the appropriation tort will simply gobble up other "reputation" torts and permit too much of our public discourse to be deemed property. Advertisers, artists, publishers, and others, fearing an appropriation action from some person they depict—even inadvertently—may refrain from creating their works in public places. We run a considerable risk of establishing an elaborate, common law scheme of intellectual property in identities, licensing the rights to "use" the images of our neighbours, colleagues at work, etc. To avoid such a risk, courts should draw a clear boundary between property and privacy rights, protecting individuals only from the unauthorized use of their personal rights, such that people who waive their "right ‘to be let alone,’" even impliedly, could claim no remedy.
V. LEAVING SCOPE FOR THE PUBLIC DOMAIN
A. Freedom of Expression Issues
In both the Canadian and American cases, the rights of plaintiffs not to have their identities displayed in public without authorization create innumerable conflicts with the constitutional rights of others to tell stories, poke fun at the powerful, and indeed to advertise their wares and services. Courts in both countries have struggled, to varying degrees, to achieve the balance between the competing rights. In a handful of cases, the rights of individuals, particularly anonymous persons whose images somehow appear in mass advertising efforts, will appropriately trump the rights of the sellers. Most cases are closer to the line—a line that is admittedly difficult to draw.
An example of such a case is White. There, the "associative value" of White’s persona was exactly what Samsung tried to achieve in its ad, but it was arguably as much entertainment—parody—as it was advertising. Fred Weiler has said it as well as anyone else: "not every element of an advertisement screams ‘buy.’ Advertising includes both a commercial proposal—a statement that the product is for sale—as well as rhetorical material … that attracts attention to the commercial proposal." The court in White, however, did not get the joke, holding that parody for profit was not deserving of protection under the First Amendment. This distinction based on commercial use is troubling. First, it is arbitrary and artificial. If the advertisement had been a mural painted on the side of a building by a street artist, for example, it still would have "evoked" White’s image. Second, it ignores the fact that commercial speech is still entitled to some protection under both the Canadian and American constitutions. It can hardly be said that policing the rights of celebrities to control the use of their identities is a governmental interest sufficiently important to restrict speech that would otherwise receive constitutional protection.
The parody defence occasionally does work. In Cardtoons, Ltd. Co v. Major League Baseball Players Association, a baseball card maker successfully asserted a First Amendment parody claim over its series of "spoof" trading cards. The cards featured exaggerated caricatures of the players, fictional names, "irrelevant" facts, and editorial commentary meant to poke fun at the inflated egos of professional baseball players. The court held that without a parody exception to Oklahoma’s extremely broad statutory right of publicity, First Amendment concerns might compel a finding that the statute is unconstitutional. It would impermissibly restrict the free-speech rights of parodists to force them to obtain prior consent.
The Zacchini case addressed another free-speech issue; namely whether the filming of a state fair daredevil’s entire fifteen-second act was "newsworthy." The portrayal of the plaintiff’s human cannonball act was accurate, thus denying him a remedy in defamation, but the television station had arguably jeopardized his right to earn money. If people saw the act on television, the argument went, they would not pay to see it at the fair. According to the majority, the need to compensate the plaintiff for the harm done as a result of this "total appropriation" of his performance outweighed any value the depiction might have had as news. Nurturing Zacchini’s incentive to perform was paramount.
Despite the lack of uniformity, Peter Felcher and Edward Rubin enunciated a general rule that American courts have at least tried to live by in appropriation cases. They state that "non-defamatory portrayals are protected from liability if they are deemed to be newsworthy or in the public interest, if they are partially informative, or if they possess artistic merit."
Canadian courts have only recently begun to analyze appropriation of personality cases according to free-speech principles. The early Dowell case presented an excellent opportunity for the court to weigh the relative interests of the parties and also to weigh the public interest. It also was a lost opportunity. At issue was whether a television producer would be allowed to air a program based on the plaintiffs’ participation at a conference about being unemployed. The case was determined on the issue of consent, since the plaintiffs had signed all-purpose authorizations for the defendants to use their images. But had the judge not been able to dispose of the case, one commentator has suggested that "a public interest defence would be almost a certainty." The event concerned a "highly newsworthy political topic," and a "slender amount of gain" by the filmmakers. Arguably, the case should have fallen into the protected sphere of Charter guarantees.
Gould presented an example of public interest principles at work. Lederman J. picked up on Estey J.A.’s dicta from Krouse, indicating an "obvious" need for limits to be place on the appropriation of personality tort. "Freedom of expression," he said, "would seem to be a compelling and reasonably coherent basis for defining" those limits. His analysis of American and Canadian case law led the judge to draw a "sales vs. subject" distinction. Anything held to be commercial exploitation—in which the celebrity is merely being used in some fashion—would be considered a sale and unprotected. On the other hand, situations in which the celebrity is the actual subject of the work or enterprise would fall outside the tort (and into what he called the "protected category"). Examples of the subject category included biographies, "other" books, plays, and satirical skits.
This distinction is useful to a point, but like White and other American cases, it relies on a characterization of the depiction rather than an assessment of interests as between the parties, as well as broader societal interests. The use of such a sharp distinction creates the risk that all advertising and promotional material will be prima facie unprotected, even if the sales pitch is mixed with elements of information, entertainment, or parody (broadly defined). In any event, expressive activity must be tested against the Charter’s guarantees.
The recent Tim Horton case was the first application of Lederman J.’s "protected category" doctrine from Gould. There, an artist, (not a party to the action) had used a photograph of the late hockey star and confectioner to create a commemorative print that hung in Tim Hortons stores. The print was used to advertise fundraising efforts on behalf of a charitable foundation. Three earlier prints had also been created, but each with the express permission of Horton’s estate. This time, however, consent was not sought. Lax J. made only passing mention of the "sales vs. subject" distinction. Instead, she considered "the gravamen of the tort: … the usurpation of the plaintiff’s right to control and market his own image." This approximates, to a great degree, the proprietary basis of the right of publicity in American common law.
In this case, she noted that during his life Horton had persistently exploited his own name and likeness, building a powerful association with the public. Horton and his widow (who sued through the estate) had encouraged this self-promotion and had authorized previous uses of his image for charitable as well as commercial purposes. In addition, the estate could not have lost an opportunity to profit from the image because similar portraits were already hanging in the stores when the print at issue was drawn. Like the Dowell case, Tim Horton turned on the issue of consent, but in dismissing the claim, Lax J. also held that the late plaintiff’s portrait, which was used for a charity event, fell within the protected category. She expressed no opinion as to whether the action arose under the "loss of an endorsement-type situation, or under the ‘sales vs. subject’ distinction discussed in Gould … ." However, even if the defendants used Horton’s image for a commercial purpose, such use was "incidental at best." Lax J. determined that the artistic portrayal of the hockey legend was "of as much public interest in the sports world as a book on [Glen] Gould’s life is to the music world." However, she too was able to duck the policy issue by focusing on the plaintiff’s prior consent to the use of the image. Had the portrait been used exclusively to sell doughnuts, Lax J. would have been forced to address the "public" nature of Horton’s persona and the appropriateness of granting to members of his family complete control over that persona, even after they sold the name and intellectual property rights of that name to the company that operated the stores.
Lederman J.’s judgment in Gould did not make clear whether uses of a celebrity’s identity that fall within the "protected category" are exempt from the appropriation tort or whether something that falls within the category is merely subject to a more stringent test to determine infringement. Creating an exempt category would be useful if it is broad enough to include most commercial uses of the celebrity’s identity. It would not be useful to create such a category if all "sales uses" (as defined by Lederman J.) fall outside of the protection. Narrowing the scope of the "protected category" would push the law too close to the strict (or absolute) liability view that Henry J. applied in Athans.
The Ontario Court of Appeal chose not to address the uncertainty that Lederman J.’s judgment created. Rather, the court decided the Gould case entirely on copyright principles, holding that the book’s author owned the copyright in all the photographs, as well as in the accompanying text. The estate could not prove that Gould retained any rights in the photographs, tape recordings, and interviews of the 1956 session or that the author’s rights expired once the magazine article was published. Accordingly, there was "nothing else to decide." Finlayson J.A., for the court, stated that "it is not necessary to decide the issues in this case on the basis of the relatively new development in tort of appropriation of personality … ." Not only did Gould consent unconditionally to the taking and use of the photographs in Carroll’s 1956 magazine article, the court noted that Gould’s agent had "buttonholed" the author about the interview and photo-shoot as a means of generating publicity for the young musician who was, at the time, "struggling financially in his music career."
The court clearly chose to avoid the difficult issues that were left open in Lederman J.’s judgment with respect to the scope of the "protected category" and the outer limits of the appropriation tort. While this is unfortunate, it is likely that the court decided to wait until a more "appropriate" case of alleged appropriation of personality came along, one in which the balance between commercial exploitation and the public interest will be less clear. In dismissing an application for leave to appeal by the Gould estate, the Supreme Court of Canada also declined to take up the issue.
At the same time, we are left with the Supreme Court’s decision in Aubry, which takes a narrow view of the public interest in appropriation cases. In the context of a privacy action, the majority held that the "defence" of public interest covers persons who become the subject of photographs taken in public, but only if they are somehow connected to a legitimate public activity that would justify a photographer being at the scene. Therefore, a previously unknown person who is "called on to play a high-profile role in a matter within the public domain," such as an important trial or an activity involving "public safety" would have no claim. The same is true for a person who is captured "in an incidental manner" in a photograph of a public place. This would cover the situation of being photographed as part of a crowd at a sporting event, parade, and so on. Overall, however, the Court’s statements about "acceptable" publicity are convoluted and cryptic.
The Court rejected an American test that attempts to determine whether the information conveyed through the unauthorized use of one’s personality is "socially useful," at least in the context of the Quebec Charter. Given the Supreme Court’s recent preoccupation with reputation and dignity, it is likely that the public interest defence will cover only activity that courts consider to be "valuable": narrowly electoral-political and "official" news, books published by mainstream publishers, and artistic expression that takes place in traditional public venues. Anything deemed to be primarily commercial will likely fall outside the "protected category" and will subject the defendant to per se liability under the appropriation tort. Advertising, including material that might have an element of social commentary or parody, will continue to be considered vulgar and exploitative. By the Supreme Court’s analysis, most nineteenth- and twentieth-century impressionist paintings could qualify as privacy violations, since so many of them capture the everyday conduct of obscure individuals in public places, and were sold commercially. In many cases, the artistic merit of those works was only discovered years after they were created. Had the impressionists been forced to obtain the consent, least of all the paid consent, of their subjects it is fair to assume that many of those paintings never would have been made.
B. Analogies to Other Intellectual Property Regimes
Advocates of the right of publicity point frequently to intellectual property statutes (and common law doctrines) for justifying the proprietary right to control the use of one’s image. Much like the economic incentive that copyright protection offers to authors, it is said, giving celebrities a monopoly over others’ ability to depict or associate with them creates the incentive to strive for excellence and fame. Similarly, such protection will encourage people to perform in order to enrich our culture. The main problem with this argument is that the celebrities are not required to give anything back to the culture in exchange for securing protection for their identities—the scheme flows all in one direction. Patents and copyrights, on the other hand, protect their creators’ literary works and inventions, but within a scheme of known rules and for limited duration. At the end of the protected period, the "property" reverts to the public for its use.
Unlike the statutory schemes of copyright, trademarks, patents, and integrated circuit topographies, the right of publicity and the appropriation of personality tort are essentially boundless doctrines that are governed and enforced by private, rather than public interests. Copyright, for one, can only apply to works that are fixed in a tangible form. The concepts of "personality" or "identity" are entirely intangible and not easily captured in a "work." There has been no effort, at common law, to define comprehensively the incidents of personality that are subject to protection. The works that are subject to copyright are defined exhaustively in the Copyright Act. Beyond those specific incidents, intellectual property law recognizes the need for free competition. In a decision he wrote before he joined the United States Supreme Court, Justice Stephen Breyer highlighted the general proposition that there is no legal bar to free riding on the investments of others:
Some commentators have recommended that courts adopt a broad "fair use" defence (fair dealing as it is known in Canada) in cases of appropriation of personality, arguing that such a doctrine would be an appropriate use of the copyright analogy. In particular, they cite Campbell v. Acuff-Rose Music, Inc., which involved a rap parody of the Roy Orbison song "Oh, Pretty Woman." The unanimous Court broadened substantially its interpretation of fair use, reversing a case that had said commercial use was presumptively unfair. Instead, commercial use may be just one of many factors that point to an unfair use. Under the new test, a use of a copyrighted work will be a fair use if it is "transformative," i.e., a productive use that employs the protected material in a different manner or for a different purpose than the original use. Noting the balancing of interests that is at the heart of copyright law, advocates of fair use have been able to apply the new, broader doctrine to infringements of the right of publicity/appropriation tort and to reduce the "chilling effect" such actions may have on expressive freedom.
An appeals court recently applied the fair use doctrine to protect a parody of a famous Annie Liebovitz magazine photograph depicting a nude, pregnant Demi Moore in profile. Part of the advertising campaign for the film, "Naked Gun 33 1/3: The Final Insult," the poster was created by computer enhancement and showed the "smirking face" of actor Leslie Neilsen attached to a body that looked remarkably similar to the Moore picture. Rather than mechanically copying the portion of the original Leibovitz photograph depicting Moore's body, Paramount had in fact commissioned another photograph to be taken of a nude, pregnant woman, similarly posed. Though the parody employed more of the original photograph than was "minimally necessary" to achieve the associative result, the court held that "the strong parodic nature" of the photograph tipped the balance "significantly toward fair use." The court regarded the advertisement as a commentary "on the seriousness, even the pretentiousness, of the original." As a result, the analysis favoured a finding of fair use.
The situation in Canada is slightly more complex. While the Copyright Act contains a fair dealing defence to an infringement claim, its terms are much more circumscribed than the American provision—restricted to private study, criticism, review, or news reporting. The provision remains largely untested, but James Zegers argues that the substance of the doctrine is the same as the American "fair use" principle. Applying these principles in cases of alleged commercial appropriation of personality would likely go a long way in restoring the balance between the interests of the public and those of celebrity plaintiffs.
Yet others draw analogies to passing-off and trademarks law in the hopes of expanding the protected category in the appropriation tort. As was indicated in Part IV(B), above, the common law action for passing-off exists to prevent deception or confusion among consumers about the source and identity of goods. It is based on the notion that a trader’s reputation or goodwill can be harmed by others who attempt to exploit an association with that trader’s goods, where no such association exists.
While American courts have gone to great lengths to extend the protection of the right of publicity to celebrities, they have also built in exceptions that introduce public interest balancing as part of the tort analysis. An example of this balancing can be seen in a case involving New York City Mayor Rudolph Giuliani. After New York magazine ran a brazen promotional advertisement for itself on the sides of city buses, the mayor ordered the transit authority to remove the ads, claiming they violated his statutory right of publicity. But a district court judge awarded an injunction to the magazine, compelling transit officials to reinstate the offending ads.
Scheindlin D.J. noted that it was "abundantly clear" from the advertisements’ text "that the Mayor was not endorsing the product. Further, she concluded that "the purpose of the ad not only promotes the interest of the for-profit entity, it also contains humor and satire, both of which enhance the quality of life for all New Yorkers." City law prevents the mayor from exploiting his public office for a commercial venture, so he could lose no commercial gain from the unauthorized use of his identity qua mayor. In addition, the mayor could not claim that consumers would be deceived by the ads because they correctly pointed out that the mayor had not taken credit for the magazine’s success. Ultimately, given the satirical and political tone of the ads, she concluded that the public interest in disseminating information about the mayor outweighed any possible damage that Giuliani could suffer.
While this case is unique because it involves an assertion of publicity rights by an elected politician, rather than a celebrity whose fame is created or bolstered by consumer sales, the reasoning can be extended easily to the more traditional "commercial" appropriation situations. By weighing the rights of New York’s celebrity mayor against the rights of the public (and the magazine) to criticize and interpret him, the court faced squarely the question of the relative interests in a battle over publicity. We should ask no less of courts in this country.
Canadian courts have recently been moving towards adopting common law doctrines akin to the "right of publicity" in the United States. Doing so, however, is problematic because our two systems of law have characterized the policy framework that underlies this right in different ways. While American law is a patchwork that recognizes personal privacy rights and proprietary interests in a person’s identity, the Canadian common law has not separated the rights conceptually. Rather, the catch-all appropriation action has developed without a clear conceptual basis to guide it. Given that fact, our courts ought to begin again the process of analyzing the appropriation tort, and recognizing it as the violation of a personal right giving rise to damages for psychic or emotional distress. The adoption of a broad property right over commercial uses made by others of an individual’s identity would lead directly to the situation that now exists in the United States—a judicial licensing scheme for celebrities in performance and advertising interests. That approach has been criticized because it tends to favour the rights of successful and well-known individuals over the rights of the public to depict, use, parody, or honour many of the cultural icons of our time. It can only be through a broad and generous definition of the public interest in creating and interpreting popular culture that Canadian law will avoid the conceptual and constitutional difficulties that plague the law in this area in the United States. This will be evident if our courts view the appropriation tort through the prism of statutory intellectual property law, which seeks to balance creators’ and users’ rights, and through the prism of the Charter, which seeks equality and does not place property rights on a pedestal.
* B.A., University of Western Ontario, 1993; M.S. (Journalism), Columbia
University, 1994; LL.B., Osgoode Hall Law School of York University,
1998; Law Clerk, Court of Appeal for Ontario, 1998-99.
The author wishes to thank Professors David Vaver and Jack Roberts
for their encouragement and for their helpful comments on an
earlier version of the article.