This fall, Air Canada signed pop diva Céline Dion as the centrepiece of its $46 million advertising campaign designed to reintroduce the airline to the Canadian public after emerging from bankruptcy protection. Air Canada has discovered what advertisers have long known - the cachet of a celebrity to reinvigorate a brand. But advertisers who wish to use celebrity images in their campaigns must be extremely careful not to infringe the celebrity’s legal rights, which include copyright, trade-mark and misappropriation of personality protections.
In Canada, the Copyright Act protects original literary, dramatic, musical and artistic works and gives the copyright owner the sole right to reproduce the work or any substantial part of it. Since copyright protects the expression of an idea and not the idea itself, you can create your own fictional marine character, but if he substantially resembles the popular cartoon character "SpongeBob SquarePants", then you will be infringing the copyright in that character held by its author. Also, one work may attract different layers of copyright protection. For instance, an advertiser intending to use a photograph of a celebrity or fictional character must ensure that they secure the consent of the owner of the copyright in the photograph as well as the consent of the celebrity, or author of the fictional character, or risk an action for copyright infringement. Similarly, an advertisement that reproduces a video of a celebrity singing a song could require consents from the producer of the video footage, the celebrity and the organization handling the copyright in the musical work. Copyright infringement can lead to significant fines, injunctive relief and, under certain circumstances, imprisonment.
A trade-mark is any mark used to distinguish one person’s wares and services from those of another. The federal Trademarks Act ("TMA") states that the owner of a registered trade-mark has the exclusive right to use that trade-mark throughout Canada in association with the wares and services for which it has been registered. But can celebrity images be considered trade-marks?
Not unless they have been used to distinguish one person’s wares and services from those of another. For instance, the image of Paul Newman that appears on his salad dressing would be considered a trade-mark. However, section 9 of the TMA does provide some protection to celebrities in that it states that no one shall adopt, in connection with a business, any mark consisting or likely to be mistaken for: (1) any matter that may falsely suggest a connection with any living individual; or (2) the portrait or signature of any individual who is living or has died within the preceding thirty years. Therefore, advertisers are prohibited from creating an illusion of endorsement or using the signature or portrait of any living individual, with protection for an individual’s portrait extending 30 years after their death.
Trade-mark rights can also be secured for a mark incorporating an expression of a fictional character. To prove infringement of the trade-mark the owner must establish that the alleged infringer made use of the character in relation to goods or services (by using it on packaging or point of sale material or in advertising in the case of services). Passing off, which is another right of action under the TMA, merely requires that the character be used in association with the infringer’s wares and services in such a way that the public will assume that the owners of the character sponsored or endorsed the product or services in some way.
The penalty for doing this can be an award of damages, lost profits, delivery up of offending material and injunctive relief.
Misappropriation of Personality
Even if the advertising campaign you are considering has passed the copyright and trade-mark hurdles, be careful not to trip on the tort of misappropriation of personality. If your advertising campaign uses the name, image or personality of a celebrity, or someone that people will assume is the celebrity, without their consent, you could be liable.
Courts have defined "personality" to include a person’s image, name, voice and any other elements that might uniquely identify a celebrity. In order for a celebrity to plead misappropriation of personality, she or he must show that the advertiser has used her or his personality for commercial gain. Although it does not matter whether the celebrity is living or dead,1 misappropriation of personality does not apply to fictional characters.
Infringement of this tort will entail damages calculated on the basis of a "lost user fee" which is the fee that the celebrity should have received for the use of her or his personality and is often directly proportional to how famous the celebrity is.
Questions to Consider
Before starting a campaign incorporating the use of unauthorized celebrity images, ask yourself the following essential questions and review your answers with legal counsel:
- Have you obtained some form of consent (preferably written) for the use of the celebrity’s image in your campaign?
- Is the celebrity living or deceased? If deceased, how long has the celebrity been deceased?
- Is the purpose of your campaign commercial gain?
- Who owns the photograph(s) or image(s) that you will be using?
- Have you conducted a trade-mark search for the image you plan on using in your campaign?
Before investing significant time and effort in an advertising campaign involving the use of celebrity images, careful consideration of the business and legal issues involved is crucial. It is interesting that certain companies (e.g., Pepsi) have recently terminated virtually all of their celebrity endorsements in their major campaigns, suggesting that the risks outweighed the benefits. On the other hand, Air Canada has enlisted the help of a Canadian superstar to quick start its latest campaign. Prudent advertisers will use knowledgeable counsel to assist in avoiding legal pitfalls.
1 The fact that personality rights of celebrities are passed to their estates in Canada was confirmed by way of an injunction that was granted by a Nova Scotia court on November 25, 2004 to the estate of Don Messer, a famous Canadian fiddler, involving the unauthorized use of Messer’s personality. The court ruled that the company using Mr. Messer’s personality had to cease such use until the determination of the case, which is expected sometime next year. (Hapi Feet Promotions Inc., Frank Leahy and Dawn Penelope Attis, Executrix of the Estate of Don Messer v. Barbara Martin and Grayec Management Incorporated).
The foregoing provides only an overview. Readers are cautioned against making any decisions based on this material alone. Rather, a qualified lawyer should be consulted.
© Copyright 2004 McMillan Binch LLP