Fenty & Ors v Arcadia Group Brands Ltd & Another  EWCA Civ 3
The Court of Appeal has upheld the High Court's decision to grant an injunction preventing the appellants (collectively referred to as "Topshop") from selling a t-shirt bearing an image of the world-famous pop star and style icon, Rihanna (the claimant, Robyn Rihanna Fenty).
In 2012 the appellants began selling t-shirts which were printed with a photograph of Rihanna in their well-known Topshop stores. The photograph had been taken during the video shoot for one of the singles from her album, "Talk That Talk". It had been taken by an independent third party and owner of the copyright in the photograph, who had licensed the use of the photograph to Topshop.
Rihanna had not authorised Topshop's use of her image and subsequently issued proceedings alleging that the sales of the t-shirts amounted to passing off. Rihanna claimed that, regardless of who owned the copyright in the photograph, the use of her image on fashion clothing by Topshop had not been licensed and was likely to mislead the public into believing that it had been endorsed by her.
In ordinary circumstances, the sale of a t-shirt displaying an image of a famous person is not enough to constitute passing off. However, in this particular case the judge held in favour of Rihanna at first instance as she was able to establish the required elements for a passing off claim:
Rihanna is a world famous recording artist with a well-established merchandising and endorsement business. She is regarded as a style icon by many people and, in the words of Birss J, sitting in the High Court, would have had “ample goodwill to succeed in a passing off action of this kind [in 2012]”.
- Misrepresentation on behalf of Topshop
In the photograph that is displayed on the t-shirts, Rihanna is wearing an outfit from a video shoot that she did for her “Talk That Talk” album which was released in 2011, not long before the t-shirts went on sale. To fans of Rihanna the t-shirts could therefore have been confused as forming part of a marketing campaign for her recently released album. Rihanna had two past connections with Topshop; a competition to win a personal shopping appointment with the star in Topshop's Oxford Circus store in 2010 and a visit by the star to the same store in 2012, not long before the t-shirts went on sale. These factors, coupled together with Topshop's position as a leading high street fashion retailer, which is known by many for its fashion connections with various famous people, were enough to establish that there had been misrepresentation. This was summarised by Birss J as follows:
"72. … Although I accept that a good number of purchasers will buy the t-shirt without giving the question of authorisation any thought at all, in my judgment a substantial portion of those considering the product will be induced to think it is a garment authorised by the artist. The persons who do this will be the Rihanna fans. They will recognise or think they recognise the particular image of Rihanna, not simply as a picture of the artist, but as a particular picture of her associated with a particular context, the recent Talk That Talk album. For those persons the idea that it is authorised will be part of what motivates them to buy the product. I am quite satisfied that many fans of Rihanna regard her endorsement as important. She is their style icon. Many will buy a product because they think she has approved of it. Others will wish to buy it because of the value of the perceived authorisation itself. In both cases they will have been deceived."
- The misrepresentation caused damage to Rihanna’s goodwill
Birss J held that Topshop's misrepresentation of the t-shirts would have led a "substantial number" of people to purchase the t-shirt on the false belief that they had been endorsed by Rihanna. This would have led to reduced sales in her own merchandise and also a lack of control over her own reputation which clearly amounted to damage to her goodwill.
Topshop appealed against the decision of the High Court on four grounds. Firstly, they relied on the argument that the judge failed to recognise that there were differences in law between endorsement and merchandising. In their view people were not inclined to purchase the t-shirts because they believed that they had been endorsed by Rihanna, but rather because they bore the image of Rihanna, their idol, and there was therefore no misrepresentation. Kitchin LJ, delivering the leading judgment for the Court of Appeal, dismissed this argument confirming that the High Court had properly established that this was an issue relating to endorsement.
Secondly, Topshop contended that the High Court had failed to acknowledge that where an image of a famous person is used on goods, that image should be treated as origin-neutral in assessing a passing off claim. Kitchin LJ again dismissed this ground for appeal, on the basis that what was in dispute "lay not in the use of Rihanna's image but in using it in such a way as to cause a misrepresentation".
Thirdly, Topshop argued that Birss J should have assessed the claim having regard to the perceptions of those persons for whom the presence of the image of Rihanna on the t-shirt was origin neutral, and not the perceptions of those persons who were liable to regard the presence of the image as an indication of authorisation and this correct perception would have led the court to find that the elements of a claim for passing off had not been established. Topshop failed on this ground also. The Court of Appeal confirmed that it was necessary to consider the past connections between Rihanna and Topshop and not to "shut its eyes to reality".
Finally, they objected to the admissibility of six of the witness statements which Rihanna had relied on. Topshop submitted that the High Court had sought to rely on the opinion of a member of Rihanna's management team, who had not been permitted by the court to give expert evidence and who had not been cross-examined. Accordingly, Topshop argued that Rihanna had failed to properly establish that the image that was used on the t-shirts was in any way distinctive. Kitchin LJ conceded that whilst this argument was legitimate, this did not affect Birss J’s overall reasoning and he was still therefore correct to come to the conclusion that he did.
The appeal was therefore dismissed and it was confirmed that Topshop's activities had amounted to passing off. The court, however, made clear that this case should not be taken to amount to a general principle and turns primarily on its particular fact, as emphasised by Underhill LJ who said, “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 (as described by Kitchin LJ at paras. 17-18) 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.”