For professional players especially, endorsement and sponsorship agreements based on licensing the use of their name and image can be lucrative. Where unauthorized use of an athlete’s image is published for commercial gain, there are several avenues of recourse for the athlete and/or his or her collective players’ association, depending on the province in which the appropriation occurs.

Tort of Appropriation of Personality Rights

Protection for the commercial aspect of personality rights is found in the law of torts in Canada. When one has a marketable image, as professional hockey players do, there is a risk of others making unauthorized use of the image for their own commercial gain. In Canada, an athlete is able to protect his or her personality rights through the common law tort of appropriation of personality. This is similar to the rights of publicity in the United States.

The law surrounding personality rights in Canada is still developing and some aspects are still uncertain. This cause of action was first recognized in Canada in 1973 by the Ontario Court of Appeal in Krouse v. Chrysler Canada Ltd.,¹ where a football player’s image in gameplay action was used as part of an advertisement. While noting that there was authority at common law to provide protection of one’s likeness, voice, or personality from unauthorized commercial use, the court ultimately found that the image was used to associate the advertising to the game of football generally and that a reasonable person would not imply that the plaintiff had endorsed the defendant’s products. It is only where a defendant utilizes a plaintiff’s personality to the extent that the public would consider the plaintiff to be actually endorsing the defendant’s product that it could be said there was an appropriation of personality rights.

The existence of the tort of appropriation of personality was confirmed in 1977 in Athans v. Canadian Adventure Camps Ltd.,² when the Ontario High Court of Justice found that a professional water skier’s rights to market his personality had been infringed by the unauthorized use of his image for commercial purposes, which constituted an aspect of the tort of appropriation of personality.

Following the establishment of the tort of appropriation of personality in Krouse and Athans, the law has continued to develop. Based on the case law, the tort of appropriation of personality requires at least two elements: (1) the likeness of the plaintiff must be identifiable by the viewer, and (2) the likeness must be used for a commercial purpose.

Identifiable by the Viewer

For appropriation of personality to be made out, the likeness that is used without consent must be identifiable. In Joseph v. Daniels,³ a photograph of the torso of a bodybuilder was used without authorization. The court found that there was no appropriation of personality because the viewer of the photograph would not be able to identify the plaintiff as the subject. This may have been different if the plaintiff had a unique or identifiable torso.

However, an exception to this requirement is found in Athans. In this case, the defendant used a drawing of the plaintiff in a pose that was used and known as his “trademark” image. The evidence showed that ordinary viewers would not recognize the plaintiff in the drawing. However, the court found that because the plaintiff had previously marketed and adopted the image as his “distinctive indicia,” the use of that line drawing by the defendant caused a loss to the plaintiff by infringing his exclusive right to market his personality. This was found to be a right that was separate and distinct from any action based on infringement of copyright or trademark. This case differs from Krouse in that the defendant used a line drawing inspired by a photo of Athans. The Ontario High Court of Justice found the defendant liable for appropriating Athans’s representational image. The court did not require a misrepresentation of endorsement, as in Krause; rather, it imposed a less stringent test requiring a plaintiff to establish the unauthorized use of an element of his personality. The court held that “[t]he commercial use of his representational image by the defendants without his consent constituted an invasion and pro tanto an impairment of his exclusive right to market his personality.”⁴

Although there have been other cases in Canada, it remains uncertain in Canada whether a plaintiff must meet the threshold test of establishing that the defendant falsely suggested that the plaintiff granted his or her endorsement.

Used for Commercial Purpose

The tort of appropriation of personality is based on the exclusive right to commercialize one’s personality. When the use of one’s personality is not for a commercial purpose, it is sometimes considered to be for public interest. In Gould Estate v. Stoddart Publishing Co.,⁵ the trial judge referred to the comment in Krouse on the obvious need for limits on appropriation of personality where it may conflict with the public interest (as adopted from the United States notion of “sales vs. subject”). Where an image is appropriated for some commercial exploitation, this will constitute an appropriation of personality. However, where the person is the subject of the work, such as in a biography, these uses would fall outside the tort. In other words, where the person is the subject of the work, there is public interest in knowing more about the person. Likewise, in Horton v. Tim Donut Ltd.,⁶ the Ontario Court of Justice found that there was no appropriation of personality where a portrait of the famous hockey player Tim Horton was used for charitable and commemorative purposes and in the public interest.

Damages

Once the tort has been made out, namely, there is some injury to the plaintiff, the onus is on the plaintiff to prove the damages.⁷ In Athans, the court based the assessment of damages on what the plaintiff would have received as a reasonable license fee for the use of the image. Other cases have suggested that damages awarded will typically only be nominal. Given the frequency of athlete endorsements in commercials and the existence of players’ licensing programs, one can imagine that in an appropriation of an image belonging to an elite player, meeting the test that there was a loss of a license fee that would have been obtained had the defendant contracted with the player to use his or her personality would be fairly easy.

Other Potential Actions Available to Athletes

Privacy Rights and Statutory Appropriation of Personality Rights

Four Canadian provinces have enacted privacy legislation that provides for statutory appropriation of personality actions. Manitoba, Saskatchewan, and Newfoundland have created a general tort of privacy, within which personality rights fall.⁸ British Columbia has separated this into two distinct torts: appropriation of personality tort and tort of privacy.⁹ While there are differences in the four statutes, broadly speaking, the requirements for statutory appropriation of personality actions are: (1) wrongful use of an individual’s name or likeness; (2) the individual is recognizable; (3) the purpose of the use is wrongful, e.g., for advertising or promoting the sale or trading (although not every promotional use will be deemed wrongful); and (4) proof of wrongful intent in certain circumstances (contrast this to the common law tort, which does not require proof that the defendant intended to exploit the plaintiff’s personality).¹⁰

While proof of damages is a necessary element of the common law appropriation of personality tort, the provincial statutory actions do not require such proof. Remedies for statutory appropriation of personality are provided within the statutes of Manitoba, Saskatchewan, and Newfoundland and include an award of damages, an injunction, or an order requiring an accounting of profits. While the British Columbia Privacy Act (BCPA) does not have specific remedy provisions, a plaintiff would have the option of an injunction and damages, although it is unclear if an accounting of profits is available.

In Manitoba, Saskatchewan, and Newfoundland, the statutes provide that the statutory rights are in addition to, and not in derogation of, any other right of action, including the common law tort. Thus, one can choose whether to sue pursuant to the tort or the statute, but double recovery would not be permitted. The British Columbia statute is silent on the issue of whether the common law action is preempted by the statute.¹¹

Trade-marks Act

Professional athletes may also have a potential action under section 9(1)(k) and (l) of the Trade-marks Act,¹² which provides:

9 (1) No person shall adopt in connection with a business, as a trade-mark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for, . . . . (k) any matter that may falsely suggest a connection with any living individual; [or]

(l) the portrait or signature of any individual who is living or has died within the preceding thirty years[.]

Pursuant to the Trade-marks Act, where a person’s portrait or signature is adopted as a trademark, there is a prima facie infringement. Thus, section 9(1)(l) does not require proof of an unauthorized endorsement in contrast to what was required in Krouse.

In Carson v. Reynolds,¹³ Johnny Carson brought an application under section 9(1)(k) to prevent the registration of a trademark “Here’s Johnny” in connection with a portable toilet business. On appeal from the Registrar, the Federal Court of Canada, Trial Division found that the phrase falsely connected Carson with the sale of portable toilets. The Federal Court’s interpretation of section 9(1)(k) was broader than expected. Additionally, the court did not require the plaintiff to prove injury or damages.

In Baron Philippe de Rothschild, S.A. v. La Casa de Habana Inc.,¹⁴ the Rothschild family, which was known for banking services and fine wine, brought an application under section 9(1)(k). The family alleged that a cigar merchant could not adopt the phrase “Rothschild at Yorkville” as a trademark for a store specializing in tobacco products. The court, in issuing an injunction against the use of the name, stated that the name falsely suggested a connection with a group of living individuals. The court also held that no proof of damages was necessary, which makes it substantially easier for a plaintiff to obtain injunctive relief.

Not only does section 9 prohibit the use of an individual’s portrait or signature as a trademark, but it also prohibits the use of trademarks that falsely suggest a connection with a living individual.

Misleading Advertising

The Competition Act¹⁵ of Canada prohibits the use of misleading advertising in general terms. A false endorsement using a professional athlete’s image, likeness, or voice in association with a product or service would likely fall within the prohibition of section 53(1). Thus, an athlete can also consider an action pursuant to this act where he or she can establish that an advertisement falsely suggests that the athlete is endorsing a defendant’s product or service.

Licenses

A carefully drafted license not only protects the user of the image against an appropriation action but also provides good evidence for a plaintiff to establish a value for the use of his or her image. When drafting licenses, particular consideration should be paid to the following issues:

• the nature of the right granted, e.g., copyright, trademark, or personality rights;
• whether the rights are for exclusive or nonexclusive use;
• territorial restrictions for the use of the right;
• the duration of the license;
• the license or royalty fee in return for the license; and
• any other conditions that might be required by the licensor, e.g., quality controls, to allow the licensor the rights to inspect the quality of the work sold by the licensee.¹⁶

Finally, if the source relates to a creative work such as a drawing, painting, or photograph to which an author has attribution rights, a licensee will be prohibited from changing the work used in any way unless a waiver of moral rights is obtained from the author. Moral rights are a Canadian legal concept, which may not be known by U.S. lawyers. Even where a creative work is sold and copyright is assigned to a new owner, moral rights will remain with the author of the work unless specifically waived. Without such a waiver, the author can sue for damages for the depreciation of the work.

Snow v. Eaton Centre Ltd.¹⁷ is the seminal Canadian decision on moral rights. Michael Snow was commissioned to do a sculpture called Flightstop consisting of a number of Canada geese in flight in the atrium of the Toronto Eaton Centre. During the Christmas season of 1981, red ribbons were placed around the necks of the geese. Snow sought an injunction to have the ribbons removed. The judge held that the sculpture’s integrity was “distorted, mutilated or otherwise modified,” which was “to the prejudice of the honour or reputation of the author” and contrary to section 28.2 of the Copyright Act.

Conclusion

Professional athletes in Canada have several avenues of legal protection for the appropriation of their personality rights. However, in this connected worldwide Internet era, the challenge is being able to find, sue, and enforce judgment against the unauthorized user of the athlete’s personality rights. Thus, regular monitoring of the Internet and other sources and early action to prevent the proliferation of images is prudent.

Endnotes

1. (1974), 1 O.R. 2d 225 (Can. Ont. C.A.).

2. (1977), 17 O.R. 2d 425 (Can. Ont. H.C.J.).

3. (1986), 4 B.C.L.R. 2d 239 (Can. B.C. S.C.).

4. Athans, 17 O.R. 2d at 437.

5. [1996] O.J. No. 3288 (Can. Ont. Gen. Div.) (QL).

6. [1997] O.J. No. 390, para. 23 (Can. Ont. Gen. Div.) (QL).

7. It is important to note that provincial privacy acts enacted in four Canadian provinces (British Columbia, Manitoba, Saskatchewan, and Newfoundland) provide that an action for the statutory appropriation of personality can be determined without proof of injury.

8. Privacy Act, R.S.M. 1987, c. P125 (Can.); Privacy Act, R.S.S. 1978, c. P-24 (Can.); Privacy Act, R.S.N. 1990, c. P-22 (Can.).

9. Privacy Act, R.S.B.C. 1996, c. 373 (Can.) [hereinafter BCPA].

10. Note that in British Columbia, the statutory appropriation does not require proof of intent except in certain situations. See BCPA s. 3(3)(a), (4)(b).

11. See Intellectual Property Law of Canada 567 (Stuart C. McCormack ed., 2d ed. 2010).

12. R.S.C. 1985, c. T-13 (Can.).

13. (1980), 115 D.L.R. 3d 139 (Can. Fed. Ct. Tr. Div.).

14. (1987), 19 C.P.R. 3d 114 (Can. Ont. H.C.J.).

15. R.S.C. 1985, c. C-34.

16. Intellectual Property Law of Canada, supra note 11, at 573–74 (citing Gordon J. Zimmerman, Rights of Publicity and Protection against the Unhappy Celebrity or By-Stander, in Legal Practical & Tactical Advertising 25–26 (1997)).

17. (1982), 70 C.P.R. 2d 105 (Can. Ont. H.C.J.).