Darren LaRose (Third-year Law Student, University of Alberta)
The World Wide Web has grown at a phenomenal rate since it burst into the public consciousness in the mid 1990s. As the Internet has become increasingly pervasive both in our day-to-day lives and in the world of business, it makes sense that legal disputes would arise as well. The sheer quantity of domain names available online and the potential for overlap of competing interests mean that domain disputes in particular are bound to continue increasing, at least for the near future.[1]
Many domain name disputes are settled through the dispute administration panels set up by the registrar authorities of the various domain suffixes, and many more still are resolved either through litigation or out of court settlements and dealings.
In early 2008, it was revealed that Alberta Premier Ed Stelmach had threatened to sue a young University of Alberta student who had registered the domain name edstelmach.ca. This threat was novel in the world of domain disputes in Canada, as Stelmach threatened to sue based on the tort of misappropriation of personality, a relatively new and unlitigated tort that has not yet been tried in the Internet or domain name contexts.
This article will examine the tort of misappropriation of personality with respect to Canadian case law and apply the law to the facts of this dispute. Further, it will argue that despite the murky nature of the case law regarding this tort, if the edstelmach.ca dispute were to go to trial, the lawsuit based on the tort of misappropriation of personality would likely not succeed. Stelmach would likely find that this case is not actionable because it does not meet the requirements of the tort of misappropriation of personality. First, the use of his name alone would likely not be enough to render him immediately identifiable to a relevant group of people. Second, although the use of his name was unauthorized, the use was not in the endorsement context required, and therefore no damage to Stelmach could have occurred. Finally, even if a misappropriation were to be found by the courts, Cournoyer’s right to freedom of expression would likely trump Stelmach’s right to exclusively exploit his personality.
This article will also examine the larger question of to what extent domain dispute resolution policies should apply with respect to personal name domain names. I will argue that extending and clarifying the tort of misappropriation of personality would be the easiest way to protect commercially valuable personal names, as it covers these sorts of disputes already, protects the public policy considerations of freedom of expression and privacy, and could fairly easily be moulded by the courts to fit the Internet context.
The edstelmach.ca domain dispute
began on 4 April 2007, when David Cournoyer, then a Liberal Party of Alberta
employee and a University of Alberta student, registered edstelmach.ca for
CDN$14. This, as Cournoyer notes, was
some four months after Stelmach became Premier of Alberta.[2] The Canadian Internet Registry Authority
(CIRA), the body that oversees domain name registrations in Canada, operates on
a first come first serve basis, like most other domain registrars. It makes no effort to verify or inquire into
any intellectual property rights that may be infringed by the registrant of the
domain name at the time of the registration.
Initially, Cournoyer simply directed
http://www.edstelmach.ca to his blog. Anyone who typed http://www.edstelmach.ca into their web browser would
be redirected to http://daveberta.blogspot.com, with the URL of the latter
website now appearing in the browser navigation bar. Approximately one week before receiving a
letter from Stelmach’s counsel, Cournoyer changed the redirection of
http://www.edstelmach.ca such that the URL now pointed toward a third-party
Wikipedia entry for a former Alberta Premier.[3]
Cournoyer
then received a letter from Stelmach’s counsel shortly before Christmas,
alleging that Cournoyer was interfering with Stelmach’s “right to control the
use of his or her persona and to exploit his or her personality”.[4] The letter demanded that the domain name be
turned over to Stelmach immediately, that Stelmach be compensated both for any
ad revenue accumulated while the domain name was pointed to
http://daveberta.blogspot.com, and imposed a reasonable fee for the use of
Stelmach’s name.[5] Failure on the part of Cournoyer to comply
with these demands would result in litigation.[6]
At
this point, Cournoyer issued a
press release to several media outlets. Subsequently, Stelmach decided
to engage in further negotiations. Cournoyer was offered $14 for the
domain
name, which was met with a counter-offer whereby Cournoyer would
transfer the
domain name to Stelmach in return for the Premier donating $1,000 to an
Edmonton charity.[7] Stelmach refused this offer,[8]
and the domain name dispute remains unresolved as of this writing.
It is also important to note that
Cournoyer has indicated that he has no intention of selling the website to a
third party and has turned down a substantial offer from an interested buyer.[9]
The tort of misappropriation of
personality has never been used in the domain name dispute context in Canada
before. It is therefore instructive to
examine why counsel for Stelmach chose to base their legal argument on this
tort rather than on one of the more conventional domain name dispute processes.
Domain name disputes in Canada are
governed by the CIRA Domain Name Dispute Resolution Procedure (CDRP).[10] It is beyond the scope of this article to
examine the provisions of the CDRP in detail but, essentially, a complainant
can bring a proceeding under the CDRP if: (a) “the Registrant’s dot-ca domain name is Confusingly Similar to a
Mark” owned by the complainant, (b) “the Registrant has no legitimate interest
in the domain name”, and (c) “the Registrant has registered the domain name in
bad faith”.[11] According to s. 3.2 of the CDRP, a “Mark” can
be either a trademark used in Canada “for the purpose of distinguishing the
wares, services or business”, a trademark registered with the Canadian
Intellectual Property Office (CIPO), a “certification mark”, or "the
alphanumeric and punctuation elements of any badge, crest, emblem or mark in
respect of which the Registrar of Trade-marks has given public notice of
adoption and use pursuant to paragraph 9(1)(n) of the Trade-marks Act (Canada)”.[12]
Because the CDRP deals with disputes
involving trademarks, and is governed by Canadian trademark law, a case brought
by Stelmach under the CDRP would be unlikely to succeed. The most obvious roadblock for Stelmach is
that trademark law in Canada only applies to wares and services, not names and
personalities. Stelmach is likely hoping
to rely on a string of celebrity domain name cases in the United States brought
under the Unified Domain Name Dispute Resolution Policy (UDRP), upon which the
CDRP is based. In these cases, all
involving celebrity domain names, the arbitration panels of the UDRP
overwhelmingly favoured the celebrity complainants and ordered the domain names
in question turned over. The panels
found in these cases that while the celebrities did not have actual trademarks
in their names, they did have “trademark rights” acquired due to their
celebrity and notoriety.[13] Because the CDRP definition of a mark is
much more specific and consistent with the Trade-marks
Act[14]
than the UDRP, it is extremely unlikely that a panel would find the name “Ed
Stelmach” to have acquired trademark status.[15] Further, even if it were found that the name
had acquired the secondary meaning required, Stelmach’s case would still likely
be unsuccessful given that Cournoyer’s blog would likely fall under the good
faith criticism provisions of the CDRP.[16]
There is no statutory help for
Stelmach in Alberta either. Unlike
British Columbia and Saskatchewan, which have statutes related to invasion of
privacy, Alberta is governed solely by the common law with respect to the tort
of misappropriation of personality. The
Privacy Act of British Columbia, for
example, has codified to a certain extent the common law tort of
misappropriation of personality, in deeming that “[i]t
is a tort, actionable without proof of damage, for a person to use the name or
portrait of another for the purpose of advertising or promoting the sale of, or
other trading in, property or services, unless that other, or a person entitled
to consent on his or her behalf, consents to the use for that purpose.”[17] It
appears unlikely that these statutes would help Stelmach even if they existed
in Alberta, as the tort articulated above clearly focuses only on disputes
involving the sale of property or services.
It is clear, then, that Stelmach's options
in terms of seizing edstelmach.ca from Cournoyer are relatively limited. The tort of misappropriation of personality,
a new and developing tort, appears to be the best option to pursue this claim.
The tort of misappropriation of
personality is relatively young and has not been the subject of much litigation
in Canada. Most of the case law related
to the tort has been created and advanced by the Ontario courts, and, as of yet,
there have been no Supreme Court of Canada decisions dealing specifically with
the tort to clarify some of its more murky areas.
The tort was first articulated in
the 1971 Ontario trial court decision of Krouse
v. Chrysler Canada Ltd.[18] In that case, the plaintiff was a football
player with the Hamilton Tiger Cats, who was identifiable to many football fans
by his jersey number “14”. When a
Chrysler car dealership published an advertisement featuring a number of
Canadian Football League and National Football League photographs, including a
picture of the plaintiff in action, Mr. Krouse brought an action, making
reference to passing off and wrongful appropriation of personality. The existence of the tort of misappropriation
of personality was upheld at the appeal court level.[19] In that decision, Estey J.A. stated that circumstances exist “in which the Courts would be justified in holding a
defendant liable in damages for appropriation of a plaintiff's personality.”[20] The justice articulated
this new tort as requiring that the plaintiff be clearly identifiable by his
“image, voice or otherwise” and that the conduct of the defendant invade on the
plaintiff’s right to “exploit his personality.”[21] Justice Estey
indicated as well that in order for an exploitation of personality to take
place, the use of the plaintiff’s image, voice, or other likeness must suggest
an endorsement of the defendant’s product or services. Here, the Justice found that the picture was
meant to conjure the dynamic nature of football in general, and it would not be
apparent to an objective observer that the plaintiff was endorsing the Chrysler
car dealership. Justice Estey therefore
found that there was no misappropriation of personality and dismissed the
claim.[22]
The next major decision in Canada
related to the tort of misappropriation of personality was another Ontario
decision, Athans v. Canadian Adventure
Camps Ltd. [23] In this case, the plaintiff, a professional
water skier, took issue with an advertisement created by the defendants that
depicted a hand-drawn silhouette of a water skier performing one of the
plaintiff’s signature moves. The Court
found that while the depiction of the plaintiff was not a photograph, it was so
strikingly similar to the plaintiff’s own promotional material that a relevant
group of water skiing enthusiasts would be able to immediately identify the
drawing as being of the plaintiff. Here,
as in Krouse, the Court found that it
would not be apparent to anyone viewing the material that Athans was endorsing
the camp, and so the action could not succeed on those grounds.[24] However, the Court also articulated a second
approach, suggesting that the plaintiff had the right to exclusively market and
commercially exploit his image and personality and that the camp had infringed
on that right. The court awarded $500 to
the plaintiff on this basis. Although
this second approach suggests that an apparent endorsement by the plaintiff of
the defendant’s product is not required, in fact this second approach does fit
within the endorsement context. As
Lederman J. stated in Gould Estate v.
Stoddart Publishing Co:
Athans was a
situation where an identifiable 'representational image' was utilized by a
waterskiing school in the school's promotional brochure. Therefore, on the basis of these Canadian authorities 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.”[25]
Gould is a more modern case that expands on
the foundation for the tort of misappropriation of personality laid by Krouse
and Athans. Gould was
decided at the Court of Appeal level[26]
on the basis of copyright infringement, but the decision also affirmed some
important trial court advancements of the tort of misappropriation of
personality. In his trial judgment,
Lederman J. suggested public policy values such as freedom of expression must
be balanced against the right of people to protection from the commercial
exploitation of their personalities. This approach, which is similar to the approach American law takes regarding
the right to publicity, is described in Gould
as a “ 'sales vs. subject' distinction”:[27]
Sales
constitute
commercial exploitation and invoke the tort of appropriation of
personality. The identity of the
celebrity is merely being used in some fashion. The activity cannot be
said to be about the celebrity. This is in contrast to situations in
which
the celebrity is the actual subject of the work or enterprise, with
biographies
perhaps being the clearest example. These
activities would not be within the ambit of the tort. To take a more
concrete example, in
endorsement situations, posters and board games, the essence of the
activity is
not the celebrity. It is the use of some
attributes of the celebrity for another purpose. Biographies, other
books, plays, and
satirical skits are by their nature different. The subject of the
activity is the celebrity and the work is an attempt
to provide some insights about that celebrity.[28]
The disputed
book in Gould contained 26 pages of
text written by the defendant, along with interviews and photographs of
Gould. The court found that there was a
public interest in learning more about Gould and that the book therefore fell
into the protected category. No unlawful
misappropriation of personality had occurred.
In
Aubry v. Éditions Vice-Versa Inc.,[29] a
case from Quebec, the Supreme Court of
The public's right to information,
supported by freedom of expression, places limits on the right to respect for
one's private life in certain circumstances. This is because the expectation of
privacy is reduced in certain cases. A person's right to respect for his or her
private life may even be limited by the public's interest in knowing about
certain traits of his or her personality. In short, the public's interest in
being informed is a concept that can be applied to determine whether impugned
conduct oversteps the bounds of what is permitted.[30]
Krouse, Athans, and Gould all support the idea that in order for a tort of misappropriation of personality action to succeed, there must be evidence that the appropriation suggests an endorsement by the plaintiff of the defendant’s product or service. There have been a number of lower level cases, however, including Racine v. C.J.R.C. Radio Capitale Ltée[31] and Baron Philippe de Rothschild S.A. v. Casa de Habana Inc.,[32] that have suggested that simply using the personality of an individual without consent is all that is required for the tort to be actionable.
In Racine, a former professional football player was terminated from his position as a radio personality by the defendant radio station. He brought successful actions for both wrongful dismissal and misappropriation of personality. The plaintiff argued misappropriation of personality on the grounds that the radio station gained an advantage from the use of his name and reputation after his termination. The radio station had publicized the hiring of Mr. Racine a great deal, though it does not appear from the facts that they used his name after Racine’s termination. The County Court of Ottawa-Carleton found that the radio station had benefited from the publicity of having Racine as an employee, and that its actions – given the wrongful dismissal – constituted a misappropriation of personality. In this case, people were drawn to the radio station by Racine’s presence, not by his endorsement of a product in any advertising.[33]
In Rothschild, the defendant placed a sign in front of his store reading “Rothschild at Yorkville” in order to garner more prestige for his shop. The judge found, in granting a motion for interlocutory injunction brought by the plaintiffs, that the use of the name “Rothschild” was enough to constitute an appropriation of personality, even though there was no suggestion that the plaintiff was endorsing any product or service of the defendant.[34] As lower court decisions, however, the Racine and Rothschild cases are less persuasive at trial than the Ontario Court of Appeal decisions in Athans, Krouse, and Gould, which all support the requirement of apparent endorsement.
The cases discussed above remain the leading authorities in Canada on the tort of misappropriation, although they have been modified and interpreted in various ways in subsequent decisions.
To summarize, Krouse and Athans establish the following four elements for a successful tort of misappropriation of personality action:
1) The plaintiff is clearly identifiable, by image, voice or otherwise;
2) There is an element of commercial exploitation of the plaintiff in an endorsement context;
3) The plaintiff does not consent to the use of their personality;
4) Damages to the plaintiff are proven, caused either through tarnishing the plaintiff’s image, or interference with the plaintiff’s exclusive right to market his or her image.
In addition to these fundamental elements, the Gould and Aubry decisions add the requirement that public policy considerations, such as freedom of expression and privacy concerns, must be taken into account.
With the lack of high court decisions related to the tort of misappropriation of personality specifically, the exact nature of what is required to fulfill these elements is still murky in Canadian law. I will now proceed to analyze the facts of the edstelmach.ca case with respect to the elements of the tort, while attempting to expand on the meaning of each element.
Analysis
i) Endorsement and Unauthorized Use
As
discussed above, Krouse, Athans, and Gould all state that for a tort of
misappropriation of personality action to succeed, the court must conclude that
the appropriation of personality amounted to an apparent endorsement of the
defendant’s product. It would be
difficult for Stelmach to argue that any apparent endorsement exists, mainly
because Cournoyer is not selling any product on his website. It seems clear, then, that Stelmach’s action
would fail the Krouse endorsement
requirement.
Stelmach’s
only hope here is to argue that unauthorized use of his name with only some
connection to a product or service of the plaintiff is enough to constitute the
tort of misappropriation of personality, as articulated in the lower court
decisions of Rothschild and Racine. If Stelmach could persuade the court that http://blogspot.daveberta.ca
is akin to the radio station in Racine,
or the cigar shop in Rothschild,
which both received benefit by the use of the respective plaintiffs’ names
without any specific endorsement, then he could succeed in fulfilling this
requirement. Cournoyer would then need
to argue that a visitor entering the domain named “http://www.edstelmach.ca”
would be directed immediately to http://daveberta.blogspot.com, where it is
quite clear, based both on the content of the site and the URL appearing in the
browser, that there is no connection between Stelmach’s personality and the
website. There is a chance Stelmach
could succeed at this step based on the broader requirements articulated in Rothschild and Racine. However, as trial
court decisions, these two cases will be less persuasive to the court than the
Court of Appeal judgments in Krouse,
Athans, and Gould. It is more likely, then, that the action
would fail based on the more restrictive apparent endorsement requirements of Krouse, Athans, and Gould. For the purposes of this analysis, however, I
will assume that the broader test prevails so that the action can continue.
ii) Consent
In
this dispute, it is fairly clear that Stelmach did not consent to the use of
his name in the http://www.edstelmach.ca domain name, so the element of lack of
consent is satisfied.
iii) The Plaintiff is Clearly
Identifiable
The question here is whether or not simply using Premier Stelmach’s name in a domain name is enough to clearly identify him. Counsel for Cournoyer would no doubt argue that the domain name, read with no other context other than that the website it points to is a political blog written by an Albertan, is not enough to render the Premier immediately identifiable to a potential visitor.
Krouse, Athans, and Gould were all cases where it was the use of an image or likeness of the plaintiff that was grounds for the alleged misappropriation of personality. Justice Estey in Krouse suggested that a misappropriation could occur based on the use of someone’s “image, voice or otherwise.”[35] Although the use of a name could be argued to fall in the “otherwise” category, all these cases were decided based on the use of a visual likeness of the plaintiff. Names are less likely to be instantly recognizable than images, particularly in the Internet domain name context, where they are completely devoid of context until the webpage is viewed. Krouse, Athans, and Gould make it clear that the use of an image can constitute a misappropriation, but they give no indication as to where the lower threshold for identifiability lies.
The lower courts have been more likely to recognize use of a name alone as sufficient to appropriate a personality. The British Columbia Supreme Court has suggested that use of a name or likeness alone is enough to ground a cause of action in Joseph v. Daniels.[36] However, that case was again decided on the basis of an image. The Court found that a picture of someone’s torso with the face cropped out of the picture was not enough to make that person identifiable.
The only cases in Canada dealing with the use of names in a misappropriation of personality context are the lower court cases of Rothschild and Racine. In Rothschild, the Ontario High Court of Justice found, in granting a motion for an interlocutory injunction, that the plaintiff's use of the name “Rothschild” on a sign in front of his cigar shop was in fact a misappropriation of the defendant’s personality.[37] In Racine, publicizing Racine as an employee of the defendant’s radio station by name only was enough to constitute a misappropriation of personality. Neither of these lower court authorities is very persuasive, so it remains unclear whether use of a name alone is sufficient to appropriate a personality.
Geography and level of celebrity also play an important role in the identifiability requirement. In Athans, the court determined that simply being identifiable to the community of water skiing enthusiasts was enough to fulfill the requirement.[38] In Holdke v. Calgary Convention Centre Authority,[39] the court adopted a more strict view of the audience and community aspects of the identifiability requirement than in Athans. Hess J. suggested that, for the plaintiffs to succeed, they needed to be sufficiently “well known in the Calgary area” so as to be “recognizable in the advertisement.”[40] Counsel for Cournoyer would then need to argue that Stelmach does not possess the level of fame in the larger community (likely the population of Alberta) required to be immediately identifiable simply by his name alone. This would distinguish the case from Rothschild, where the plaintiff's family was an old and famous family known for its wealth.
Stelmach
would likely succeed on this branch of the identifiability requirement, as he
is well known to both the smaller community of politically savvy Internet users
and the larger population of Alberta. Both Athans and Holdke indicate, then, that the fact
that Premier Stelmach is not necessarily well known outside of Alberta is not
relevant, so long as he is identifiable to a community of potential visitors to
the domain name.
Although Stelmach likely has the level of celebrity required to make him identifiable to a large enough audience, it remains unclear whether or not Cournoyer’s use of “Ed Stelmach” in the domain name is enough to constitute a misappropriation of personality. If the courts take a cue from their lower court counterpart decisions in Racine and Rothschild, Stelmach may be successful in fulfilling the identifiability requirement. The more persuasive Ontario Court of Appeal authority suggests that a generic name, without image or likeness, is not enough.
iv) Commercial Exploitation
In most of the cases related to the tort of misappropriation of personality in Canada, the commercial exploitation element hinges on the plaintiff’s likeness being used to allegedly advertise or endorse a product for the commercial gain of the defendant. The instant case is different in that Cournoyer is not associating Stelmach with any product for sale. To fulfill the commercial exploitation requirement, then, Stelmach must show a commercial exploitation from a perspective outside of the advertisement of goods and services.
The letter from Stelmach’s counsel suggests three different ways that it could be argued that Cournoyer’s alleged appropriation of the Premier’s personality might be construed as a commercial exploitation. First, counsel suggest that because http://daveberta.blogspot.ca runs Google Adsense advertisements, Cournoyer must have received some additional revenue when http://www.edstelmach.ca pointed towards his site, and that Stelmach should therefore be entitled to at least of portion of that revenue. Second, the letter suggests that Stelmach should be entitled to reasonable compensation for the use of his name in http://www.edstelmach.ca to send traffic to http://www.daveberta.ca. Finally, the letter states that Cournoyer has acted in bad faith. [41] Using the term “bad faith” is consistent with the language of the CDRP. This usage is likely intentional and suggests that the fact that Cournoyer purchased the domain name is, in and of itself, a commercial exploitation. “Bad faith”, as per the CDRP and UDRP, suggests that Cournoyer is purposely trying to deprive Stelmach of the domain name, with a view either to force Stelmach to purchase the domain name from Cournoyer, or simply to hurt Stelmach financially by not allowing him to register the domain. I will examine each of these arguments in turn.
With respect to the Google Adsense advertisements on http://www.daveberta.ca, it is likely that the additional traffic that http://www.edstelmach.ca provided to Cournoyer’s blog could have resulted in some additional revenue. Cournoyer has stated, however, that his total advertising revenue is less than $100.[42] Without promotion of the domain name, any additional traffic from the http://www.edstelmach.ca domain would likely only account for a small fraction of his monthly traffic. In Krouse, the Ontario Court of Appeal concluded that celebrities, by nature of their public notoriety, must expect a certain level of exploitation of their commercial and privacy rights.[43] Because the Google Adsense revenue is so small, and is only nominally related to the http://www.edstelmach.ca domain name, the court would likely conclude that this revenue falls within the reasonable amount of commercial exploitation that is to be expected by a celebrity. That argument would be particularly persuasive in this case, as Stelmach is a politician, and Cournoyer is a political blogger who writes about Stelmach on a regular basis. Supporting a political commentary site through advertisements should not lead the politicians who are the subject of the blog on that site to expect a portion of the revenue.
The suggestion that Stelmach is entitled to reasonable compensation for the use of his name hinges on the holding from Athans, where the court found that a celebrity has a right to “the exclusive marketing for gain of his personality, image and name”. [44] Stelmach’s argument here would be that he has been denied an opportunity to negotiate a fee for the use of his name. That argument is unlikely to succeed, however, as negotiating a fee for the use of one’s name in a domain name is basically unprecedented. There is no market for that type of advertising, and no domain name owner would pay the fee. Stelmach cannot have been denied an opportunity that did not ever exist.
In order for Stelmach’s bad faith argument to succeed, the court must find that the act of purchasing http://www.edstelmach.ca itself was a commercial exploitation of Stelmach’s name. This argument is again unlikely to succeed, however, as Cournoyer has made no offer to sell the domain name back to Stelmach. Rather, Cournoyer has suggested that the Premier donate $1,000 to charity in exchange for the domain name.[45] In Horton v. Tim Donut Ltd.,[46] the court found that an appropriation made for purposes of a charitable donation was not an actionable tort.[47] In addition, Cournoyer has made no indication that the domain is for sale to any party, and indeed has turned down an offer from an interested third party to purchase the domain for $125,000.[48] It is likely, then, that the court would not find a commercial exploitation from the purchase of the domain name per se.
v) Damages
The question of damages is another somewhat murky area of the tort of misappropriation. Although there have been some Canadian cases that have suggested in obiter dicta that the tort of misappropriation of personality might be actionable even without proof of damages, the bulk of the more authoritative case law, such as Krouse and Athans, suggests that the plaintiff must prove damages.[49] Because so far the case law does not support the possibility of non-economic damages,[50] Stelmach is limited to arguing economic damages. To be successful here, Stelmach would have to show that his personality has a “commercial value”.[51] The letter sent by Stelmach's counsel indicates that they believe this to be the case as they suggest that Stelmach is entitled “to the amount he would reasonably have received in the market for the permission to use his name.”[52] The fact that Premier Stelmach does not appear to have used or marketed his image as of yet (at least in the commercial context) does not preclude Stelmach from claiming that his personality has “commercial value.”[53] However, it is important to note that Cournoyer is not selling any items and therefore Stelmach is not inadvertently endorsing any product. Furthermore, Cournoyer is operating his site as a hobby, presumably with no budget to license the names and personas of the political figures whom he writes about. In Athans, the Court found that damages in misappropriation of personality cases should “be the amount [the plaintiff] ought reasonably to have received in the market for permission” to use the likeness.[54] As discussed above, no market exists in this case and the negotiation of a fee for the use of one’s name in a domain name is unprecedented. It is likely then that the Court would find that the plaintiff would not be “able to negotiate a fee”[55] for the use of his name and persona and therefore no damage is proven.
vi) “Sales vs.
Subject” and Public Policy Analysis
Applying the “sales vs. subject” test from Gould is relatively simple given the facts of this case, as Cournoyer's blog clearly falls within the “subject” category. Stelmach is one of many political figures that Cournoyer writes about on his blog. Cournoyer does not attempt to sell any products or services, and his blog functions merely as a hobby rather than as a serious source of income. He does not even charge a fee for access to his website, so there is little doubt that Cournoyer's site is in the protected “subject” category as elucidated by Lederman J. in Gould.
To perform the public policy analysis articulated by the Supreme Court in Aubry, Stelmach's right to privacy and his right to exclusively market his own image must be weighed against Cournoyer's freedom of speech. This analysis will likely render the same result as the “sales vs. subject” test, for many of the same reasons. The fact that Stelmach is a famous public figure will also factor into the analysis. As L'Heureux-Dubé and Bastarache JJ. state in Aubry:
The
balancing of the rights in question depends both on the nature of the
information and on the situation of those concerned. This is a question that
depends on the context. Thus, it is generally recognized that certain aspects
of the private life of a person who is engaged in a public activity or has
acquired a certain notoriety can become matters of public interest. This is
true, in particular, of artists and politicians, but also, more generally, of
all those whose professional success depends on public opinion.[56]
vii) Summary and Conclusion
It
is clear from the analysis of the various elements of the tort of
misappropriation of personality that Stelmach would likely not be successful
should his case go to trial. While the
court would likely find that the use of his name was unauthorized, and enough
to identify him within the relevant community, it would be very difficult for
Stelmach to argue successfully that there has been a commercial exploitation of
his personality beyond the minimum that is to be expected as a public
figure. Then, even if the court did find
commercial exploitation, it is clear that Cournoyer’s blog would be viewed
favourably in the public policy analysis from Aubry, and that his right to freedom of expression and to
disseminate information in the public interest would be more important than
Stelmach’s right to exclusively control and market his personality.
Should There be Dispute Resolution
Procedures for Personal Name Dot-ca Domain Names?
The
Internet, as a new medium, has opened up many new opportunities for business
and commerce, as well as giving the general public an unprecedented ability to
access information. The law has
struggled to deal with this new medium that extends beyond borders and
jurisdictions, as well as beyond the drafters' intentions for most legislation. This has raised the fundamental
question: do we try to adapt our
existing law to the Internet context, or is new law (or no law at all)
required? Answering this question is far
beyond the scope of this article, so instead I will examine a much smaller
aspect of it: what should the law be with respect to personal name domain
names?
i) The Dot-name Dispute Resolution
Procedure
One
solution might be to adopt a dispute resolution procedure for personal name
domain names similar to the one used in dot-name domain disputes. The Eligibility Requirements Dispute
Resolution policy (ERDRP) states that in order for a registrant to be eligible
to register a domain name in the format “firstname.lastname.name” or
“name.name,” the domain name must correspond to their legal name, and the
registrant must have a trademark or service mark in a fictional character name
that corresponds with the domain name.[57]
The
above system would work well to protect both names with commercial value and
those with only non-commercial value, but would also create some problems and
impose undue restrictions on the usage of domain names. Because personal names are so often generic,
it stands to reason that there would be many duplicate entitlements to any
given domain name. A first come, first
serve system would likely apply, and parties with matching eligibility could
negotiate for the domain name after it had been registered. The positive aspect of this system is that it
truly levels the playing field for personal domain registrations. Members of the general public and celebrities
would be equally entitled to their personal name domain name. Furthermore, commercial exploitation would be
less likely, as a matching legal name would be required to be eligible to register a domain name.
The
downside to applying the dot-name system to dot-ca personal name domain names
is that such a system would unduly restrict the usage of a personal name domain
name. Sites that wish to engage in
good-faith criticism of a person and use the person’s name in the domain name
would be unable to do so. The dot-name
domain suffix was created for the express purpose of creating personal web
presences online, so this restriction is inherent in the system. Dot-ca domains have no such usage
restrictions, and to impose those restrictions would not be fair to otherwise
eligible registrants who lack the legal name requirement, and wish to engage in
good faith criticism.
ii) Personal Names With No Commercial
Value
Those individuals whose personal names carry some commercial value should have some remedy should their name be used in such a way as to suggest an endorsement of a product or otherwise be exploited for commercial gain. For the vast majority of people, however, their personal name carries no inherent commercial value. For those names, little or no regulation appears to be necessary. A first come, first serve system would function fine for these sorts of personal names. The Coase Theorem has often been suggested as an argument against legal entitlements to domain names in general, and would apply especially well with personal names.[58] The theorem suggests that when transaction costs are zero, negotiations between the parties will render the most efficient outcome regardless of legal entitlements.[59] Because these are personal name domain names with no commercial value, the playing field is relatively level, and the person who values the domain name more will negotiate to obtain it. The value of a domain name to any one party is low, and because there is no commercial value, there is less chance of a party holding a domain name hostage to prevent competition. For personal name domain names with no commercial value, then, the current system of no regulation functions well as it is.
iii) Personal Names With Commercial
Value
For personal name domain names that have some commercial value, such as names of celebrities, the current system of domain name disputes does not function well, as it fails to protect the commercial exploitation of famous and valuable personal names. Because the CDRP is consistent with Canadian trademark law, personal names are not covered as they are not marks used for purposes connected with commercial products and services. We have seen that the tort of misappropriation of personality as it stands is ill-suited to dealing with these cases, mainly due to its still murky requirement of identifiability.
Extending
the CDRP to cover disputes related to personal names with commercial value
would be an efficient solution in and of itself, but it would also present some
larger problems that would likely render such a change impractical. On the positive side, the existing
arbitration procedures are already in place, and having these cases covered by
the CDRP would decrease the costs associated with the dispute and keep the vast
majority of the more minor disputes out of the courts.
The most obvious way to extend the CDRP to cover these sorts of disputes would be to simply adopt a broader interpretation of a “mark”, such as the definition in the UDRP. By allowing a claim to proceed based on trademark rights, the dispute resolution process can protect those people whose names have some commercial value through their notoriety or celebrity, even if they have not (and cannot) actually register a trademark under the Trade-marks Act.
Public policy considerations must be taken into account with regard to this new dispute resolution policy as well. The rights of the individual to privacy and to commercially exploit his or her name must be balanced with the right of the public to freedom of expression. The CDRP itself balances these considerations quite well. Section 3.6 of the CDRP states that, notwithstanding a finding that the domain name was registered in bad faith, the registrant will be entitled to keep the domain name if they can show that they are using it for a legitimate purpose. Legitimate purposes can include, “without limitation, criticism, review or news reporting.”[60] The CDRP, then, already has provisions to protect the freedom of expression of those who wish to engage in good faith criticism through the use of a protected mark. Extending the CDRP to cover trademark rights would simultaneously ensure that celebrities could protect their personal use domain names from commercial exploitation, while ensuring that freedom of expression is not compromised.
Of course, a major implication of extending the definition of “mark” is that changes would also have to be made to existing legislation, such as the Trade-marks Act, such that all the dispute decisions from the CDRP would not simply be overturned on appeal. The law of trademarks would therefore need to be extended to include the common law trademark rights afforded to famous celebrities for the use of their name in the U.S. That is, courts in Canada would have to be willing to accept that a famous celebrity name could acquire a secondary meaning as a trademark, regardless of whether that name is used in association with commercial goods and services. It seems unlikely that the courts and the legislatures would be ready to make such a fundamental change at this time.
In the end, the most efficient and effective way to protect celebrities would be to extend the tort of misappropriation of personality to cover the domain name context specifically. Celebrities with a certain level of notoriety could be protected based on the use of their name alone, where their name is exploited in a domain name for commercial purposes. The “sales vs. subject test” from Gould and the public policy test from Aubry would ensure that freedom of expression and good faith criticism are protected. The courts could easily extend the tort at common law to make it stretch to the Internet context, without overturning or modifying existing trademark legislation that was not designed to function in the domain name context to begin with.
As of this writing, the http://www.edstelmach.ca domain name dispute has not yet been resolved. Cournoyer's domain name registration is set to expire on 4 April 2008, and Cournoyer has suggested that he is not interested in renewing the domain name, so the dispute may end then. Stelmach's reluctance to commence actual litigation against Cournoyer suggests that Stelmach’s counsel is aware that any action would be unlikely to succeed, as I have concluded in this article. However, it would have been very beneficial both for the development of the tort of misappropriation of personality and for the law related to domain name disputes in general for this matter to go to trial. As it stands, the law surrounding this new tort is still full of contradictions that could be best resolved through a pure tort of misappropriation of personality action, separate from the passing off, copyright, and trademark actions that have tended to be a part of the tort of misappropriation of personality actions to date.
With the decisions in Gould and Aubry, the tort of misappropriation of personality has moved closer to the American Right of Publicity, which has been used quite frequently to contest domain name usage with various levels of success.[61] Had the facts of the instant case been different, so that Cournoyer had been, for example, selling some kind of political merchandise, it is far more likely that an action based on misappropriation of personality could succeed. As the tort continues to develop in Canada, it is therefore very likely that we will see another action in the domain name dispute context soon.
[1]
World Intellectual Property Organization (WIPO), WIPO Domain Name Dispute Resolution Statistics, online: WIPO
<http://www.wipo.int/amc/en/domains/statistics/
>.
[2] David Cournoyer, premier ed stelmach threatens to sue alberta blogger over edstelmach.ca, online: daveberta.ca <
http://daveberta.blogspot.com/2008/01/premier-ed-stelmach-threatens-to-sue.html
[3]Ibid.
[4]Letter from Tyler S. Shandro to David
Cournoyer (3 December 2007), online: daveberta.ca <http://david.cournoyer.googlepages.com/edstelmach.ca.pdf>
[Letter].
[5]
Ibid.
[6]
Ibid.
[7]
Interview of David Cournoyer (4 March 2008) [unpublished; Interview].
[8]
Ibid.
[9]
Ibid.
[10]Canadian Internet Registration
Authority, “CIRA Domain Name Dispute Resolution Policy,” online: Canadian
Internet Registration Authority <http://www.cira.ca/official-doc/CDRP_Policy_2003-12-04_en_final.html>
[CIRA, “DR Policy”].
[11]
Ibid., s. 3.1.
[12]
Ibid., s. 3.2.
[13]
See Roberts v. Boyd, WIPO
Administrative Panel Decision D2000-0210 (29 May 2000), online: WIPO <http://www.wipo.int/amc/en/domains/decisions/word/2000/d2000-0210.doc>;
Brosnan v. Network Operations Center (27
August 2003), WIPO Administrative Panel Decision D2003-0519, online: WIPO
<http://www.wipo.int/amc/en/domains/decisions/word/2003/d2003-0519.doc>.
[14]
R.S.C. 1985, c. T-13.
[15]
Jeremy Loome, “Expert: Alta. premier won't win web fight”, Edmonton Sun (10 January 2008), online: CNEWS <http://cnews.canoe.ca/CNEWS/MediaNews/2008/01/10/4765827-sun.html
>.
[16]
Ibid.
[17]
R.S.B.C. 1996, c. 373, s. 3(2).
[18]
[1972] 2 O.R. 133 (H.C.J.).
[19]
Krouse v. Chrysler Canada Ltd. (1973),
1 O.R. (2d) 225 (C.A.) [Krouse].
[20]
Ibid. at 241.
[21]
Ibid.
[22]
Ibid.
[23]
(1977), 17 O.R. (2d) 425 (H.C.J.) [Athans].
[24]
Ibid.
[25]
(1996), 30 O.R. (3d) 520 (Ct. J. (Gen. Div.)) at 525 [Gould, emphasis
added].
[26]
(1998), 39 O.R. (3d) 545 (C.A.).
[27]
Gould, supra note 25 at 527.
[28]
Ibid.
[29]
[1998] 1 S.C.R. 591 [Aubry].
[30]
Ibid. at para. 57.
[31]
(1977), 17 O.R. (2d) 370 (Co. Ct.) [Racine].
[32] (1987), 19 C.P.R. (3d) 114 (Ont.
H.C.J.) [Rothschild].
[33]Racine,
supra note 31 at 373.
[34]Huw Beverley-Smith, The Commercial Appropriation of Personality
(Cambridge, U.K.: Cambridge University Press, 2002) at 129.
[35]
Krouse, supra note 19 at 241.
[36]
(1986), 4 B.C.L.R. (2d) 239 (B.C.S.C.).
[37]
Susan H. Abramovitch, “Misappropriation
of Personality” (2000) 33 Can. Bus. L.J. 230 at 235-36..
[38]
Athans, supra note 23 at 431.
[39]
2000 ABPC 80, 265 A.R. 381 [Holdke].
[40]
Ibid at para. 20.
[41]
Letter, supra note 4.
[42]
Archie McLean, “Stelmach Threatens to Sue Blogger”, Edmonton Journal (9 Jan 2008) online: Edmonton Journal <http://www.canada.com/edmontonjournal/news/cityplus/story.html?id=bcda9867-ff86-4104-814d-9e25a98623ef&k=49846>.
[43]
Krouse, supra note 19 at 239.
[44]
Athans, supra note 23 at 434.
[45]
Interview, supra note 7.
[46] (1997), 75 C.P.R. (3d) 451 (Ont. Ct.
J. (Gen. Div.)) [Horton].
[47]
Ibid. at 461.
[48]
Interview, supra note 7.
[49]
Beverley-Smith, supra note 34 at 127.
[50]
Beverley-Smith, supra note 34 at 137.
[51]
Dale Gibson, Athans v. Canadian Adventure
Camps Ltd., 1977 CarswellOnt 453 (S.C. H.C.J.)., Annotation
[52]
Letter, supra note 4.
[53]
Beverley-Smith, supra note 34 at 123.
[54]
Athans, supra note 23 at 437-38.
[55]
Holdke, supra note 39, at para. 21.
[56]
Aubry, supra note 29 at para. 58.
[57]
Internet Corporation for Assigned Names and Numbers (ICANN), Eligibility Requirements Dispute Resolution
Policy, online: ICANN <http://www.icann.org/udrp/erdrp-policy.html>,
s. 4(b).
[58]
Steven D. Levitt, “A Freakonomics
Contest: The Coase Theorem Online” The
New York Times (13 November 2007), online: The New York Times <http://freakonomics.blogs.nytimes.com/2007/11/13/a-freakonomics-contest-the-coase-theorem-online>.
[59]
Ibid.
[60]CIRA, “DR Policy,” supra note 10, s. 3.6(d).
[61] Beverley-Smith, supra note 34.
