Hilton v. Hallmark: What Would Happen in Canada?

November 14, 2007 by Gillian Dinning

Paris Hilton has filed a federal lawsuit over a U.S. $2.49 Hallmark greeting card that uses a photograph of the heiress and her trademarked phrase “That’s Hot.” Ms. Hilton is seeking at least U.S. $500,000 in actual damages and a permanent injunction barring Hallmark from further exploitation of her name and likeness. Although this case will play itself out in the U.S., it is interesting to think bout how Canadian copyright law would address this issue.

There are two areas of potential copyright infringement on Hallmark greeting card: (1) the use of Ms. Hilton’s photograph and (2) the use of the phrase “That’s Hot”. Regarding photographs, section 13(2) of the Copyright Act, states that where if the original photograph  “was ordered by some other person and was made for valuable consideration, and the consideration was paid… the person by whom … original was ordered shall be the first owner of the copyright.” This means that Ms. Hilton would retain the copyright over her picture, as long as she ordered and paid for the picture to be taken by someone else, and Hallmark would be guilty of infringement

But other copyright owners, such as visual artists and musicians, do not have this freelance-or-commission limitation on their copyright, so why should photographers? Bill C-60 has been proposed to address this apparent inequality by repealing section 13(2) of the Act to give first ownership of copyright to the photographer rather than to the subject. However, since Bill C-60 has not yet been adopted, Canadian photographers continue to be disadvantaged in this respect.

But, what if the photograph reproduced was not taken on Ms. Hilton’s orders but was, for example, taken by the paparazzi during one of Ms. Hilton’s public appearances? Assuming the photograph was taken by a person not a corporation, section 6 of the Act states that the term of the copyright will “be the life of the author, the remainder of the calendar year in which the author dies, and a period of fifty years following the end of that calendar year”. In this scenario, the photographer, not Ms. Hilton, would retain copyright of the photo and would therefore be allowed to assign or sell these rights to Hallmark without Ms. Hilton’s permission.

Ms. Hilton’s second potential copyright infringement claim concerns Hallmark’s use of her signature phrase “That’s Hot”. Generally, the reproduction of a work in any material form is a prima facie infringement of copyright, according to section 27(1) of the Act. But the first question to ask is whether Ms. Hilton actually has copyright ownership of that particular phrase. Section 2 of the Act does not expressly include spontaneous speech as part of the works covered by the Act, and Canadian jurisprudence has determined that short combinations of words are not protected as such protection would risk monopolizing the ideas that underlie the expression (Vaver, p26). Therefore, in Canada, Hallmark would have been well within its rights to use that phrase on the card.

Let’s assume, however, that Ms. Hilton does have copyright over the phrase. Would Hallmark’s use of the phrase constitute copyright infringement? In Robertson v. Thompson, the Supreme Court of Canada, determined that reproducing the work without its original context did amount to an infringement of the owner’s copyright. Since Ms. Hilton generally uses the catch-phrase “That’s Hot” as a commentary on the appeal or likeability of something or someone, Hallmark’s use of the phrase to comment on the physical temperature of a bowl of soup has undoubtedly taken the context out of the phrase.

In the end, the answer to the question of whether Ms. Hilton would be successful in suing Hallmark for infringement in Canada is: “it depends”. If the photograph of Ms. Hilton used in the card was commissioned by Ms. Hilton for valuable consideration, and if Ms. Hilton did not contract her copyrights to the photographer, then Hallmark has infringed on her copyright. However, if the photograph was not taken on Ms. Hilton’s orders, the photographer would retain copyright of the photograph and would therefore retain the right to assign or sell the image to Hallmark. Regarding the use of the phrase “That’s Hot”, Ms. Hilton would likely not be able to surmount the burden of proving that she has exclusive copyright in that particular turn of phrase. If, however, Ms. Hilton was successful in proving copyright ownership, she could have a valid claim against Hallmark since they have decontextualized the phrase and used it without her permission.

If Ms. Hilton’s law suit is successful in the U.S., Hallmark could consider designing a new line of greeting cards specifically tailored to copyright infringement in order to recoup some of their losses. They could begin with “Oops, I Did It Again… Sorry for infringing on your copyright!”, but not without Britney Spears’ permission, of course.