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Company Buys Marilyn Monroe’s Image Rights – But For How Long?

It reads like a bit of a stretch to find some “Canadian content”, but when CBC News reported late last week that a company had purchased the “image rights” to Marilyn Monroe (the CEO of the company is evidently based in Toronto, and the company appears to have an office in Canada but otherwise appears, from the info on their website, to be primarily a US company) it actually raised some interesting issues about post-mortem publicity rights held by the estates of deceased celebrities.

As has been previously discussed on the Signal, rights in a celebrity’s image, particularly for purposes of endorsements and use of the image in connection with merchandise or services, are an element of what in the United States are called “publicity rights” and which in Canada would be covered by the tort of “appropriation of personality” or, in certain provinces, accorded protection by a provincial Privacy Act (British Columbia, Manitoba, Saskatchewan and Newfoundland and Labrador).  Protection for publicity rights in the United States is similarly jurisdiction-dependent: different states offer protection of different forms and duration.  The critical question for purposes of considering rights in Marilyn Monroe’s image is the extent to which publicity rights extend to deceased celebrities.

In the United States, different states offer differing degrees of protection: for example, California protects the publicity rights of deceased celebrities (for a period of 70 years following death), whereas New York does not recognize such rights.  In Canada, a similar jurisdiction-specific analysis must be undertaken: the Privacy Acts in BC, Saskatchewan and Newfoundland expressly exclude deceased individuals from the protection offered by the Act.  Manitoba’s legislation is silent on the matter.  There is common law protection for what we can loosely call “publicity rights” (under the guise of the tort of appropriation of personality), but we don’t know for how long such a right persists after a celebrity passes away.  The Ontario Supreme Court in Gould Estate v. Stoddart Publishing Co., 1996 CanLII 8209 (ON S.C.) stated that

The right of publicity, being a form of intangible property under Ontario law akin to copyright, should descend to the celebrity’s heirs. Reputation and fame can be a capital asset that one nurtures and may choose to exploit and it may have a value much greater than any tangible property There is no reason why such an asset should not be devisable to heirs … and it seems reasonable to conclude that whatever the durational limit, if any, it is unlikely to be less than 14 years.

So, with respect to deceased celebrities in Canada, the most we can conclude is that their heirs do have a protectible interest at common law, and that such right likely lasts for at least 14 years.  Beyond that, we’re into the realm of speculation.  Absent a trade-mark registration, the rights which have been purchased in the image of Marilyn Monroe (who died in 1962, almost 50 years ago) may not be enforceable in Canada (at least by means of the common law tort – and certainly are not enforceable in BC, Saskatchewan and Newfoundland and Labrador under their respective Privacy Acts).  For a detailed analysis of these issues, see David Collins’ “Age of the Living Dead: Personality Rights of Deceased Celebrities” (39 Alta Law Rev 914 (2001-02)).

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Company Buys Marilyn Monroe’s Image Rights – But For How Long?

Title Dispute – Similar or Identical Titles for Film and TV Projects

Aaron Moss, writing at Law Law Land, has a great post about identical or similar movie titles: Reuse and Confuse? The Recycling of Hollywood Movie Titles.  He provides a slew of examples of how Hollywood’s major studios have dealt with competing movie titles (the settlement in respect of Austin Powers in Goldmember (a title to which the producers of Goldfinger objected) evidently obliged star Mike Myers to record on-air promos for airings of the latter movie).  As Moss notes, titles are generally not capable of copyright or even trade-mark protection, so in what arena do disputes arise and get settled?

The answer is the MPAA’s Title Registration Bureau, a voluntary agreement that is binding on all member organizations of the MPAA, including the major studios, as well as independent producers who sign the agreement. Members register in-development film projects with the bureau, which sends out lists of proposed titles. The members can then object to a title that is similar to one that has been previously registered. If the challenged title is not voluntarily withdrawn by the registering studio, the dispute will proceed to mandatory arbitration.

For a Canadian take on the topic of protecting film and TV titles, see my IPilogue post (reproduced in full after the jump – and which, ironically, bears one of the single worst titles I’ve ever fashioned for a blog post), Neither Fish Nor Fowl – Trade-mark and Copyright Protection for Titles.

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Title Dispute – Similar or Identical Titles for Film and TV Projects

Remembrance Day Poppies and Online Uses

[It’s November, and Remembrance Day is only a handful of days away, so the topic of this post is bound to come up at some point for Canadians: the use of poppy images in media or online endeavours (poppy twibbon, anyone?).  Below is the text of an article I wrote which originally appeared in the February 10, 2006, issue of The Lawyers Weekly published by LexisNexis Canada Inc. (A .pdf of the article can be accessed here.)  To the best of my knowledge, the Legion still finds itself between a rock and a hard place when it comes to this issue as a result of the competing statutes and registrations in place which govern the Legion’s rights in and to the poppy image – and Canadians will likely still find themselves frustrated by the position which the Legion is obliged to take on the matter.  The Legion publishes a Poppy Manual which is worth reading.  Analogous issues arise in relation to the iconic “Red Cross” and its use in entertainment products such as video games (see also here).]

On Nov. 4, 2005, a representative of the Royal Canadian Legion contacted Pierre Bourque, author of the widely-read Canadian news website www.bourque.com, and demanded the removal of a digital image of a poppy posted on the site. The Legion asserted a right to prohibit unauthorized use of the poppy image arising from the Legion’s registered trade-mark of the image. Bourque had included the image on his website to mark Remembrance Day. When Bourque made note of the Legion’s demand on his website (under the caption “Legion Declares War on Bourque”), the reaction was swift and furious: dozens of online pundits condemned the Legion’s perceived heavyhandedness and, according to Bourque, “hundreds and hundreds of emails poured into the Legion”. News coverage rapidly spread to radio, the CBC and the Sun chain of newspapers.  Many of the negative responses expressed surprise that the poppy could be the subject of a trade-mark registration at all, coupled with anger that well-intentioned activities on the part of a person wishing to join the Legion in remembering the sacrifices of previous generations of Canadians were giving rise to potential legal action.

Many Canadians would regard the poppy as virtually a cultural artifact: since 1921 artificial poppies have been annually worn in Canada as a symbol of remembrance. After World War I, inspired in particular by John McCrae’s 1915 poem “In Flanders Fields”, the poppy became a widespread token for commemorating war dead. Judging by the online reaction, many Canadians would be surprised to learn that the poppy image can be treated as an item of commerce, no different from a logo for a vacuum manufacturer. Troubling issues about the commodification of cultural items are raised, as well as concerns relating to the pitfall-laden nature of trade-mark enforcement. Do we really want the poppy to be subject to potential dilution, the vagaries of trade-mark law and potentially ineffectual enforcement of their mark by the Legion? Do we want to force the Legion to be in the position of having to devote time and resources to the policing of its marks?

The nature of the Legion’s right to the poppy image is complex. The poppy is the subject of seven separate CIPO registrations, including the poppy image alone, various Legion logos incorporating it and even the word “poppy”. Most interesting is Application Number 0980289, which displays the image of a poppy and bears the appellation “Mark Protected by An Act Respecting the Royal Canadian Legion” – this is a separate registration from the mark found under Registration Number TMA586995, which is the identical image but in the more traditional format for trade-mark registrations.

The Legion’s rights in the poppy image arise from two distinct sources: the Trade-Marks Act (the “TMA”) and An Act Respecting the Royal Canadian Legion (the “Legion Act”). The latter is a private statute, not available in consolidations or even online at the Department of Justice’s database [UPDATE: the Legion Act, and its amendments, are now available online at the Legion’s website]. Enacted in 1948, the Legion Act incorporated the Legion; a 1981 amendment made three important additions to the statute: the poppy image (together with certain other visual insignia) was made a mark of the Legion; it became prohibited for any person to, without the authorization of the Legion, adopt or use, in any circumstances, any mark of the Legion or any mark that is “confusing” or “likely to be mistaken” for such a mark; and the poppy image was made a “registered trade-mark” for purposes of the TMA.

The cultural niche occupied by the poppy is not entirely unique: the TMA recognizes that there are certain marks of a national, international, civic or public nature such that they are not properly the subject of use as a mark to designate a product or service. Section 9 of the TMA lists these prohibited marks, which include various Crown and state symbols (such as armorial crests, flags and the letters “RCMP”), as well as the national flags of foreign states, United Nations symbols and the emblems of the Red Cross, Red Crescent and Red Lion. Section 11 of the TMA prohibits the use “in connection with a business” (which makes this protection less comprehensive than that found in the Legion Act) of a mark identified in section 9. This gives rise to yet a third facet of the Legion’s interest in the poppy: section 11 of the TMA also extends its prohibition on use to the marks listed in sections 13 and 14 of the Unfair Competition Act, which include the “emblem of any fraternal society, the legal existence of which is recognized under any law in force in Canada” – such as the Legion Act.

A confusing amalgam of rights results: the poppy is treated as a registered trademark for certain purposes; though not quite a prohibited mark (under section 9), it is treated similarly (following a race through some old statutes, under section 11; and, in some respects, is almost a sui generis IP right with extremely broad reach (under the Legion Act, the tracking down of which even briefly stumped a law library). Some form of protection for the poppy symbol is appropriate: to discourage use by unscrupulous individuals or prevent it being associated with endeavours which reflect poorly on the memory of the veterans it is meant to honour. Would it not be better if the poppy were protected in some fashion, such that it’s use in commercial activities was prohibited, but that non-commercial use by people of goodwill wishing to take part in a Canadian tradition be allowed (even encouraged)? If the mark is sufficiently important to our culture, it should be added to the list of prohibited marks rather than being buried in a partly-forgotten statute, possibly susceptible to loss due to ineffective enforcement by the Legion. The answer lies with whether we want to allow an intellectual property regime designed to protect commercialinterests to be used to protect cultural interests.

Remembrance Day Poppies and Online Uses

Jersey Shore Trade-marks: The (Canadian) Situation

A flurry of stories appeared in August 2010 about the stymied efforts of Nicole "Snooki" Polizzi, cast member of the MTV hit Jersey Shore, to register her nickname as a trade-mark in the United States.  The news stories themselves (such as this item at The Smoking Gun) focused on the rejection of Snooki’s application because the USPTO (Patent and Trademark Office) examiner thought there would be a likelihood of confusion with the already-registered mark "The Adventures of Snooky", which is based on a children’s story book series. 

Polizzi’s situation is slightly more nuanced than that, however: it appears that the Snooki application was not rejected outright, but only as it related to the category of "books" (the purported text of the rejection can be found here).  A quick search of the USPTO online database reveals there are a surprisingly large number of registrations for various iterations of "Snooky" (including one for "electric motors operating blinds") and "Snookie’s".  As might be expected, however, there is only one application for "Snooki".  The "Snooki" application reveals that registration was sought for two categories: "printed matter, namely books" and "entertainment in the nature of personal appearances by a television personality".  Only the former category was rejected, so presumably Snooki’s application for registration in the latter category is still alive.

Eriq Gardner, writing at THR, Esq., posed the question: Which ‘Jersey Shore’ Star Could Actually Trademark Their Name?, and reported on the efforts to obtain US federal trademark registrations by DJ Pauly D (two applications (here, here), both rejected on a preliminary basis due to likelihood of confusion with registration for "DJ Paulie’s Worldwide Countdown"), The Situation (application rejected (and now suspended) due to likelihood of confusion with registered mark (though I’m unable to find a record of the Situation’s application)) and Jwoww (application still alive, though clarifications have been requested by the USPTO). 

Eriq’s post leads, naturally, to the question: Which ‘Jersey Shore’ Star Could Actually Trade-mark Their Name in Canada?

Things look good for the GTL (or GFF or IFF) crowd.  The Trade-marks Act (Canada) contains (in Section 12(1)(a)) a restriction on the types of words which can be registered as trade-marks in Canada: a word that is "primarily merely the name or the surname of an individual who is living" (or who has died within the last thirty years) is not registrable.  Unless, that is, one can qualify under Section 12(1)(b), which provides that if a person’s name or surname has been used in Canada so as to become "distinctive", then that name is registrable as a trade-mark.  (Hence, for example, the fact that "Britney Spears" is a registered trade-mark in Canada.) 

Helpfully, however, for most of our trade-mark seeking Jersey Shore gang, they aren’t seeking to register their own names, but rather nicknames (though in the case of DJ Pauly D, his proposed mark is at least in part comprised of his actual first name).  Nicknames of famous people don’t seem to be registered all that often in Canada (though homegrown wrestling legend Bret "Hitman" Hart has a registered mark).  A quick search of the Canadian Intellectual Property Office’s online trade-mark database reveals that our favourite Shore-ites are unlikely to face any obstacles from registered marks: there is no "Snooky" or "Snooki" registered, nor any obviously conflicting registered mark which uses the word "Situation", nothing which seems to conflict with the registration of "Pauly" (or even "Paulie") (though there are 107 search results for marks with "DJ" present in them) and, though it probably goes without saying, "Jwoww" likewise seems not to appear too often in marks which have been registered to date.

Jersey Shore Trade-marks: The (Canadian) Situation

Trade-mark Protection for a Fictional Beer

The UK’s Intellectual Property Office (IPO) has issued a trade-mark decision (Trademark Inter-partes Decision O/359/09 [.pdf] – hat tip to Harbottle & Lewis LLP) of significance for the creators of fictional brands: the IPO refused a trade-mark application on the basis that a protectable goodwill interest had arisen in a fictional brand of beer.

Viewers of the long-running English soap opera Coronation Street will recognize the name at the centre of the matter: Newton & Ridley.  N&R is a fictional brewery and brand of beer which is depicted in the fictional Coronation Street world – it is served in the fictional pubs which populate the fictional world, a world replete with N&R bar taps, beer mats, delivery vans and even a fictional history of the business dealings of the N&R brewery.

A company, evidently unaffiliated with ITV (the producer and broadcaster of Coronation Street), called itself Newton & Ridley Beer Company Limited, and filed an application for registration of "Newton & Ridley" in connection with the sale of certain alcoholic beverages (namely, "Beer; ale; lager; stout and porter").  ITV opposed the application, relying on its own registered mark for N&R in the "printed matter" category (which included beer mats), and the goodwill which had accrued to the mark by virtue of ITV’s continuous visual use of the mark in the show since the 1960s.  ITV had also evidently for a number of years sold an actual beer using the name Newton & Ridley until a change in the Ofcom Broadcasting Code earlier this decade made it untenable for ITV to continue such sales.  It was also pointed out by ITV that allowing the third party company to sell the beer using the mark would, because the Ofcom Broadcasting Code prohibits giving "undue prominence" to a product or service, have the perverse result of effectively preventing ITV from continuing to show the N&R brand, which it had created, on its own show.

The IPO accepted the arguments of ITV, recognizing that goodwill had accrued to ITV in respect of the mark not from the sale of beer by ITV (which had stopped in 2005) but from "the exposure of NEWTON & RIDLEY on Coronation Street itself".  The creation and depiction of a fictional brand, in short, can have real world impact and value.  That goodwill and "attractive force" meant that purchasers of the unauthorized Newton & Ridley beer would be confused into thinking it had some connection with the television show.  Accordingly, the mark was not registered.

The IPO took note of a similar decision reached by the Federal Court of Australia (Twentieth Century Fox Film Corporation and Matt Groening Productions Inc v the South Australian Brewing Co Ltd and Lion Nathan Australia Pty Ltd [1996] FCA 1484) in connection with the sale by a brewery attempting to register a trade-mark for Duff Beer.  Regrettably, no reported cases appear to address the possibility of using Elsinore Beer.

Trade-mark Protection for a Fictional Beer