A Good Ad is Hard to Find…Especially One that is Non-infringing

Brandon Evenson is a JD candidate at Osgoode Hall Law School.

Most advertisements are disappointing. They suffer from gimmicky jingles, exaggerated punchlines, and fake endorsements. Yet every once-in-a-while there comes an ad that is witty, sophisticated, and original. Such an ad, more often than not, parodies popular culture.  But what happens when the ad runs headlong into the law of trademarks and personality rights?

Such may be the case with a recent ad from SWEEP and SARCAN.

SWEEP (Saskatchewan Waste Electronic Equipment Program) is a non-profit corporation established by manufacturers, retailers, and other stakeholders for the purpose of coordinating the collection and recycling of obsolete electronic equipment. SWEEP was established for the purpose of complying with Saskatchewan’s Waste Electronic Equipment Regulations. The regulations require all first sellers of electronic equipment  (eg. manufacturer, distributor, owners, vendor, importer, etc.) to either operate or have someone else operate, a product management program. This program is to provide a recycling option to the population of Saskatchewan for their waste electronic equipment including desktop computers, laptops, displays, televisions, mp3 players, etc. SWEEP partnered with SARCAN, a private Saskatchewan waste disposal firm, to provide these disposal and recycling services.

The challenge with such a program is seldom the logistics or technical requirements for recycling electronic waste. Rather, the difficult task lies in garnering public support to fund the program, and generate awareness so that the services are used. SWEEP and SARCAN have been running a series of transit, radio and TV ads meant to inform the public of SARCAN’s electronic recycling depots, and to secure support for the Electronic Handling Fee consumers are charged on new electronic equipment.

One of their well-crafted bus ads parodies the 1940s movie classic Gone with the Wind. The ad depicts a picture of Clark Gable looking longingly at an old, yellowed computer monitor piled next to a stripped computer chassis. Across the top in bold, orange lettering the ad reads “GONE WITH THE WINDOWS 95″. Along the bottom are the quoted words: “ ‘FRANKLY MY DEAR, YOU SHOULD SWEEP IT TO SARCAN’ ” The standard “SWEEP IT TO SARCAN” logo appears in the top left corner.

Why parody an old movie? Perhaps this ad targets the older generation who could be more likely to recognize and relate to the film and less likely to recycle electronic waste. Or perhaps re-using an old movie is a theme that resonates with SWEEP/SARCANs goals of re-cycling old electronic waste. Whatever their reasons, SWEEP/SARCAN may have come dangerously close to exposing themselves to liability.

Misappropriation of Personality Rights

The first issue is in regards to the personality rights of Clark Gable. The tort of misappropriation of personality allows an individual a proprietary right in the exclusive marketing, for gain, of his personality, image and name, and the law entitles that individual to protect that right if it is invaded (see Krouse v. Chrysler Canada).

The leading case in Canada on the elements of the tort is Athans v. Canadian Adventure Camps. The court held that for a plaintiff to succeed in the tort of misappropriation of personality, the plaintiff must prove that

1)    They have a reputation;

2)    There was a misappropriation of the plaintiff’s personality for the defendant’s gain;

3)    It caused damage to the plaintiff; and

4)    There is no public interest to precluding a finding.

The court also noted that there is no need to see if there is consumer confusion – what matters is the misappropriation.

In the present case it would appear that the elements of the tort are met. Despite insisting that with enough courage you can do without one, Clark Gable undoubtedly has a reputation. Clark Gable (or his estate) suffered damages (assuming he was not compensated) because of the use of his personality. There is no public interest to preclude a finding. And SWEEP/SARCAN used Clark Gable’s endorsement for their own gain. The endorsement was not simply limited to the use of Clark Gable’s picture, but also included a quote telling on-lookers to use the services of SWEEP and SARCAN: “FRANKLY MY DEAR, YOU SHOULD SWEEP IT TO SARCAN”.

It may be argued that Clark Gable has been dead for close to 50 years and that this right should terminate upon death. Yet In Gould Estates v. Stoddard Publishing, the court commented that there is no reason why personality rights should not be divisible to heirs. The court was clear that personality rights should last at least 14 years and insinuated that 50 years after death is not an unreasonable length of time given that copyright protection has that length of term. The law is not certain on this point, however, and despite the court’s comments in Gould, it is not entirely clear that personality rights should extend past the life of the personality anyways.

There is a difference between copyright and personality rights. The value of personality rights lies not in the work but rather in the endorsement of a product or service by someone who the public recognizes and holds in high esteem. Advertisers believe that consumers would be more likely to purchase their products or services if there is a positive endorsement from a personality, or if the personality is somehow associated with their product or service. The consumer psychology goes something like this:

You, personality, use or are associated with this product/service and if I purchase it, I can be more like you / we will have something in common.

Alternatively the consumer may think:

You, personality, like this product/service and since I think highly of you for one reason or another, I will value your opinion in this regard and purchase this product/service.

Despite this author’s personal view that paid endorsements are unconvincing, the continued use in every industry suggests otherwise. Even so, after the death of the personality, the consumer psychology rational must surely breakdown.  How can someone who is deceased truly provide an endorsement? If consumers weren’t incredulous of a personality’s remunerated endorsement while living, surely consumers would be unable to believe a personality’s postmortem endorsement from the grave. Such an endorsement should not be more likely to cause consumers to purchase a product, thus, the endorsement would not be of any value to an advertiser.

Conceivably one exception would be where the personality provided their endorsement of the product/service/organization just prior to their death, and the organization would like to continue to use this endorsement. The value of the endorsement, however, would still erode with time as the products/services/organization changed.

Depreciation of Goodwill in a Trademark

The second issue is with regards to the use of the Windows 95 mark. Sections 19 and 20 of the Trade-marks Act would not prohibit the use of the mark, as it is quite obvious the words “Windows 95” is not functioning as a trade mark to identify the services of SWEEP/SARCAN. That said, section 22 may pose a problem for the ad. Section 22 prohibits another person from using a registered trade-mark in such a way as to depreciate its goodwill. For there to be infringement, section 22 requires that (1) a casual observer would recognize the mark, (2) the goods or services need not be the same, (3) that there is section 4 “use”, and (4) the likely effect is to depreciate the value of the goodwill attached to the mark.

The first and second elements are easily satisfied. The third element is also satisfied. For wares, an advertisement would not be sufficient to amount to section 4 “use”. However, SWEEP and SARCAN are not offering wares, they are offering services. And as per s. 4(2), a “trade-mark is deemed to be used in association with a service if it is…displayed in the … advertising of those services.”  The fourth element is more difficult to prove. One possible argument is that the ad depreciates the goodwill in the Windows 95 mark by suggesting it is obsolete and should be disposed of.

It would seem that it would be difficult to succeed on either an action in infringement or depreciation of goodwill. This is indeed fortunate for SWEEP and SARCAN who are certainly benefiting from their clever campaign. And this is especially fortunate for those who enjoy a good parody since it is true what they say: “A good ad is hard to find.”