International pop sensation, Rihanna, recently hit the headlines after triumphing in a passing-off claim against well-known high street store, Topshop (owned by the Arcadia Group).
Rihanna’s claim involved an image of her printed on a sleeveless t-shirt, which was sold in Topshop stores in 2012. The image in question was taken by an independent photographer at the (much publicised) shooting of the artist’s music video in Ireland for the 2011 hit single, “We Found Love”. Although Topshop sought and obtained a licence from the photographer to use the image, they did not seek permission from Rihanna herself.
In July 2013, the High Court found in Rihanna’s favour and held that the unauthorised use of the photograph on the t-shirt constituted passing off. Mr Justice Birss was careful to consider all relevant factors, and his final decision was based upon the following key (case-specific) findings:
Rihanna is not just a pop star, but also a style icon, with very large merchandising and endorsement businesses – her goodwill extends beyond music and into the fashion world as a “style leader”;
The photograph in question bore a very close resemblance to images associated with Rihanna’s "Talk That Talk" album and would be recognised as such;
Topshop has frequently run campaigns that are endorsed/authorised by celebrities, including products authorised by and events featuring Rihanna herself; and
Topshop also sought to publicise occasions on which Rihanna wore or chose Topshop items.
Upholding Mr Justice Birss’ decision and rejecting Topshop’s appeal, the Court of Appeal was nevertheless keen to reiterate that “There is in English law no "image right" or "character right" which allows a celebrity to control the use of his or her name or image”. In reaching its decision, the court focused on misrepresentation (the second limb of the ‘classic trinity’ of passing off elements) and the key distinction between character merchandising and endorsement, as discussed in the Irvine case. Concurring with Mr Justice Birss, and taking account of the specific facts of the case, it was held that use of the image on the garment did not merely amount to character merchandising, but instead gave consumers the distinct impression that the product had been endorsed (authorised and approved) by Rihanna, even if there were no Rihanna trade marks applied to the garment or its labels/swingtags – “Many of her fans regard her endorsement as important for she is their style icon, and they would buy the t-shirt thinking that she had approved and authorised it”.
As summarised by Lord Justice Underhill in his supporting judgment:
“The judge's conclusion that some members of the relevant public would think that the t-shirt was endorsed by Rihanna is based essentially on two things - her past public association with Topshop and the particular features of the image itself, which is apparently posed and shows her with the very distinctive hairstyle adopted in the publicity for Talk That Talk. I do not believe that either by itself would suffice; in particular, Rihanna's association with Topshop does not seem to me to have been such as to weigh very heavily in the balance. But the judge considered the question very carefully, taking due account of the factors going the other way, and in my view he was entitled to find that the two features in combination were capable of giving rise to the necessary representation.”
There is little doubt that the outcome of this case – as is the case with most, if not all, passing off cases – was entirely fact-specific and that the magnitude and extent of Rihanna’s fame (goodwill) coupled with the parties’ past dealings had a significant role. The fact nevertheless remains that there is no presumption under English law that the use of a well-known name (such as an individual celebrity or fictional character) must have been franchised or licensed – the burden of proof falls firmly on the celebrity/rights owner to show that (in the eyes of the consumer) the offending use extends beyond mere merchandising and actually implies endorsement.
In a world where celebrity endorsements and franchises are becoming more and more extensive the scope of protection for what lawyers in other jurisdictions might refer to as “personality rights” may be on the rise.