Living off fame: protecting a celebrity's name as a trademark in Canada
Fasken Martineau - Canada
Jean-Philippe Mikus, Silviu Bursanescu
01 Sep 2010
In a globalised market it is essential to protect a celebrity's name properly in each jurisdiction. Actors, singers, professional athletes and other celebrities are all asked to lend their name to promote a wide range of
products and services. Céline Dion, Wayne Gretzky, Paris Hilton and many others have all embarked on this adventure. Why? Because the use of the celebrity's name captures the public's attention, sparks curiosity
and creates interest in the products and services.
This drawing power is of great commercial value to manufacturers and distributors. For a celebrity, it can add a significant amount of income to the fees and royalties that he or she receives in relation to his or her artistic
or sports career. In some cultural industries that are going through hard times, this additional income source can be significant and must be properly protected. If the legal structure is set up properly, this income can
also benefit the celebrity's heirs.
In Canada, protecting a celebrity's name can be a legal headache. This is why understanding the different
types of protection available and using them in a timely manner is important. Companies that utilise a
celebrity's name will want representations and warranties regarding its use, and the celebrity could be
required to compensate business partners if problems arise. On the other hand, if the proper protection is in
place, the celebrity or his or her licensees will be able to react quickly to obtain injunctive relief in order to
prevent future violations.
This article explores the various sources of protection available in Canadian law (and their limitations), and
then briefly examines possible strategies for maximising the available protection.
Basic protection under provincial law
If the celebrity does not take any particular legal steps in Canada, he or she will have to rely mainly on
provincial law to protect his or her fame from unlawful appropriation by third parties. This protection can leave
much to be desired in many areas.
Several provinces specifically prohibit the use of an individual's name through privacy laws or, in Quebec,
under the Charter of Human Rights and Freedoms and the Civil Code of Quebec, which prohibit the usurpation
of a person's name. There are provincial privacy laws in British Columbia, Manitoba, Saskatchewan and
Newfoundland and Labrador (Privacy Act, RSBC 1996, c 373; Privacy Act, CCSM, c P125; Privacy Act, RSS
1978, c P-24; Privacy Act, RSNL 1990, c P-22.) However, these laws contain several limitations which can
put a damper on their practical application.
Some laws require that it first be proven that the use of the celebrity's name is commercial or otherwise done
with a pecuniary objective. Someone with bad intentions could claim that the celebrity's name is used for a
charitable purpose, or at least not for profit. In many cases it will also have to be proven that the person
actually intended to exploit the celebrity's name. The need to prove intention often makes the case more
difficult, as direct proof of intention is rarely available. On the other hand, the wording of the Civil Code of
Quebec does not limit a person's right to control the use of his or her name in this way, although there is an
exception for news reporting.
In provinces where no privacy legislation has been enacted, usurping an individual's reputation is penalised by, among other things, the tort of appropriation of personality developed by the courts as part of the common
law. This tort may occur through the appropriation of a celebrity's name. However, what the common law
endeavours to prevent first and foremost is the use of a celebrity's name in such a way that consumers could be led to believe that the celebrity gave his or her consent or support to the marketing of the product or service
in question. Thus, the incidental use of a celebrity's name (eg, on the back of the celebrity’s shirt in a picture
showing a sports scene in which the celebrity competes) could lead an advertiser to claim that the public will
not perceive that the celebrity has approved anything. Also, at common law a claim that the use is in the
public interest (eg, the use of the celebrity’s name to inform the public or for charitable or commemorative
purposes) could limit the protection given to the celebrity's name.
A significant limitation affects several of these recourses under provincial law. As part of an action taken under
this tort of common law (and even as part of legal actions taken in Quebec and British Columbia under
provisions relating to privacy and the use of a person's name), it is not possible to claim part of the profits
earned by the merchant in connection with the illegal use of the celebrity's name or to recover the infringing
materials. Instead, the celebrity must prove the damages that he or she suffered personally, in particular by
adducing evidence of his or her moral suffering or the loss of fees that he or she would have received under similar circumstances. The celebrity will have the burden of bringing this evidence, which means that personal
information may need to be revealed, such as his or her licensing income or prior contracts and licences.
What is more, as an individual's right to his or her name belongs to him or her, it cannot be assigned to a
company. The celebrity will therefore have to exercise his or her remedies personally, which entails being
directly involved in the proceedings. It may also be difficult for a celebrity to claim damages suffered by a third
party, such as a licensee which temporarily loses the exclusive use of the name to which it is entitled under a
licence.
The celebrity's death puts an end to any claim for moral damages and, in British Columbia, Saskatchewan
and Newfoundland and Labrador, completely extinguishes the action right based on provincial law. In Quebec
and the other common law provinces, the monetary aspect of a celebrity's right to his or her name survives his
or her death and devolves to the heirs. However, Canadian courts have speculated that the duration of such a
devolution could be limited, referring in particular to patent law (20 years) or copyright (50 years). As the
courts have not yet decided this issue, there is a danger that the protection of the name will lapse after a certain period following the celebrity's death, thus putting an end to the exclusive use of his or her name. In
this regard, it is important to look to trademark legislation for longer-term protection.
An important additional form of protection: trademarks
Trademark law can play an important role in protecting a celebrity's name and the commercial value
associated with it. Two forms of protection are available: that associated with trademark registration and that
associated with the use of the trademark, also known as common law trademark rights.
This second form of protection is more precarious as it is directly dependent on the extent of the use of the
celebrity's name with wares and services. If an artist only uses his or her name in his or her main area of
activity, he or she may not be protected with respect to all possible wares and services. For example, a pop
singer could easily claim rights relating to the sale of musical instruments, films or music-oriented video
games, but could have more difficulty claiming the passing-off of his or her trademark with respect to haute
couture, accessories and fragrances. The celebrity is most vulnerable during the start-up period. When the
use is well underway, with good diversification of products and services, greater protection is possible.
However, even after the start-up period, protection through use only extends in principle to areas of the
country where marketing actually took place.
The Trademarks Act (RSC 1985, c T-13) prevents the appropriation by a third party of an individual's name,
portrait or signature as a trademark unless his or her consent is obtained. This protection is provided under
Sections 9(1)(k) and 9(1)(l) of the Trademarks Act:
"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;
(l) the portrait or signature of any individual who is living or has died within the preceding thirty years."
Section 9(1)(k) of the act protects the celebrity's name against several forms of appropriation, even where there is not an exact reproduction of the celebrity’s name, provided that the use somehow suggests a connection with the celebrity. Some celebrities have an uncommon or particular first name that is well known
to the public, such as Alanis Morissette. An enterprising individual may be tempted to use her first name as a
trademark or commercial name, such as “Alanis memorabilia”. Under Section 9(1)(k) Morissette may have a
valid claim against such an individual; however, she would have the burden of proving that the trademark or
commercial name was sufficiently evocative that the public would associate it with her. Moreover, the
protection is applicable only while the celebrity is still alive. After the celebrity’s death, only his or her portrait
and signature are protected for up to 30 years (Section 9(1)(l) of the Trademarks Act). Thus, the estate would
have no recourse under the Trademarks Act if a third party were to use the celebrity’s name, except if it was
registered as a trademark.
Registration of trademarks under the Trademarks Act plays an important and complementary role to the
protection offered to trademark use and protection of the name under provincial law. First, a registered
trademark normally provides protection across Canada and legal proceedings can be taken in the Federal
Jean-Philippe
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Court which, if successful, will be enforceable country-wide. Second, a trademark is both perennial and
transferable. Indeed, in principle the trademark is perpetual, subject only to renewals at 15-year intervals.
Therefore, should the celebrity pass away, his or her trademark(s) will be passed on to his or her successors,
who will be able to pursue their commercial exploitation or assign such trademark(s) to one or more third
parties.
Moreover, the registered trademark is also transferable. For tax and management reasons, the celebrity will
probably want to ensure that a company owns the trademark registration. For example, several trademarks
registered in Canada using the words ELVIS PRESLEY are owned by Elvis Presley Enterprises Ltd. This type
of structure can easily be set up for the registration procedure, provided that the celebrity's written consent is
filed with the Registrar of Trademarks. Unlike the protection of privacy laws, the third party which has acquired the registered trademark can claim all remedies afforded by the Trademarks Act to protect its rights.
However, the registration process in Canada can prove perilous. Under Section 12(1)(a) of the Trademarks Act
a trademark made up of a word that is primarily the name or the surname of an individual who is living or has
died within the preceding 30 years is in theory not registrable. The applicable test to determine whether registration is allowed is one of perception by the Canadian public:
"[18] The next stage in considering the problem of applying section 12(1)(a) to the word "FIOR" is to consider
whether "FIOR" is "primarily" the surname of a living person (Note that the French version uses the word
"principalement" where the English version uses "primarily".) In other words, is the chief, main or principal
character of "FIOR" that of a surname or is it principally or equally a word invented to be used as a trade
mark?" (Standard Oil Co v Canada (Registrar of Trademarks), [1968] 2 Ex CR 523 (Ex Ct), at 531.)
This prohibition does not cover the first name used alone, or a name or surname which is combined with other
words that make it distinctive. For example, the first name of the Canadian pop singer Shania Twain was
registered as a trademark (TMA739,326). Other distinctions should be made. Pen names and stage names
are not covered under the prohibition (Drolet v Stiftung Gralsbotschaft, 2009 FC 17). Moreover, signatures are
also registrable to be used as trademarks. For example, the signature of Gottlieb Daimler, founder of the
company that today manufactures the famous Mercedes-Benz cars, was registered as a trademark and is
used by the company on the windshield of every new car produced (TMA408,651).
In addition, people who have surnames which are not common in Canada or with a secondary meaning (eg,
'Black' or 'Elder') could avoid this prohibition (Colona Wines Limited v The Registrar of Trademarks, [1978] 1
FC 591). However, a common surname in Canada will not avoid the prohibition despite the existence of a
secondary meaning (Canada (Registrar of Trademarks) v Coles Book Stores Ltd, [1974] SCR 438). The
addition of a first name before these surnames may give rise to a greater risk of giving the impression that
they are in fact names of individuals, in which case their registration as a trademark would be prohibited. Also,
in a recent judgment the Quebec Court of Appeal adopted a different perspective to that which it has traditionally used in trademark matters (Octeau v Kempter Marketing Inc, 2010 QCCA 171). In that decision
the court held that a trademark made up primarily of a first name commonly used in another country was not
very distinctive, and thus warranted less protection, regardless of the average Canadian consumer's
knowledge of this fact.
A celebrity has very little leeway to change his or her name, due to these considerations; it is hard to imagine a celebrity changing his or her name in the middle of his or her career and explaining to journalists that he or she is doing so to strengthen a trademark! Moreover, if the celebrity is also known under a pen name or stage
name registration may be easier .
In addition, a celebrity may consider adding certain words to his or her name to make registration easier. It is
only when the trademark as a whole consists primarily of an individual's name or surname that there could be
an objection. For example, Dion was able to register the trademark BABES… BY CÉLINE DION (TMA688,612). Furthermore, as previously mentioned, such additions will usually make the trademark more
distinctive, thereby increasing the protection granted to it by the courts.
The law also creates certain exceptions to the application of Section 12(1) of the Trademarks Act, which
could be relied on if circumstances warrant. First, Section 12(2) provides that a trademark may be registered if
it has been used in Canada by the applicant or his or her predecessor in title in a manner which made it
distinctive as of the date on which an application for registration is filed. Thus, if a star has used his or her
name in Canada in association with wares or services, it could be argued that the name has become distinctive and is registrable. For example, the trademark CELINE DION (TMA666,631) was registered
pursuant to this exception since, when the application for registration was filed, it had already been used in
association with the wares and services in question.
It is important to follow the evolution of the celebrity's marketing strategy closely when his or her name is not
a priori registrable. When the marketing progresses, corresponding applications for registration should be
made claiming use of the trademark.
In addition, Section 14 of the Trademarks Act allows a trademark which is registered in another country (eg, the United States or Europe) to be registered in Canada notwithstanding Section 12 if it otherwise meets the more flexible requirements set out in that section. It was under this second exception that the eponymous
trademark of rapper Eminem was registered in Canada (TMA640,888). This is an interesting option, especially
for a star who was well known elsewhere and who wished to market his wares and services for the first time in
Canada, and who therefore could not benefit from the exception under Section 12(2) of the Trademarks Act.
Whether an action is based on a registered or common law trademark, the recourses available are more
important than in the case of a privacy-related violation, namely:
l
l
l
l
l
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seizure of the counterfeiting products, packaging or advertising materials before they enter into Canada
(Section 53.1 of the Trademarks Act);
injunctive relief (Section 53.2);
compensatory damages (Section 53.2);
accounting of profits (Section 53.2);
punitive damages (Section 53.2);
disposal by means of destruction, export or otherwise of the counterfeiting products, packaging, or
advertising materials (Section 53.2).
Conclusion
As we have seen, in Canada, provincial laws and the common law provide some protection of a person's
name. However, that protection is often limited: in some provinces it ends when the person dies, whereas in
others death leads to the loss of certain types of claim, such as moral damages. Also, an action under
provincial law for use of a person's name is a costly business which can take several years to resolve. It is
therefore wise to include trademark registration as part of a strategic plan for marketing products and services
bearing a celebrity's name.
It is essential to assess any portfolio of celebrities whom one represents or for whom one would like to
acquire an assignment of rights or a licence in order to ensure that their names are well protected and that, if
necessary, these rights can be successfully enforced by a court of law. Given the specific nature of this area
of law and the obstacles which could arise in setting up an efficient system of protection, it is important to call
on professionals who are familiar with this area of the law.
For further information please contact:
Jean-Philippe Mikus
Fasken Martineau
www.fasken.com
Email: [email protected]
Tel: +1 514 397 7400
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