The Court of Appeal has upheld a ban on Topshop selling a sleeveless t-shirt bearing the image of the singer Rihanna that had been produced without her consent.
The t-shirt, originally sold in 2012, featured a photograph of the singer taken by an independent photographer during a video shoot for her hit single “We Found Love” in 2011. The photographer, who owned the copyright in the photograph, subsequently licensed the image to Topshop. Rihanna and two of her corporate licensing agencies brought proceedings against Arcadia, Topshop’s parent company, in 2013 on the basis that buyers may mistakenly believe that she had approved the garment.
In July 2013 the High Court found in Rihanna’s favour and held that Topshop’s unauthorised use of the photograph amounted to passing off. As the judge put it, “the scope of her goodwill [in relation to fashion clothing] was not only as a music artist but also in the world of fashion, as a style leader,” and there was a real likelihood that buyers would be deceived into thinking that the t-shirt was an authorised product.
Arcadia appealed the judgment in 2014 on the grounds that the High Court judge had misinterpreted the law on celebrity merchandising, arguing that the t-shirt in question was no different from any other unofficial merchandise featuring, for example, Elvis or Jimi Hendrix. However, the three Court of Appeal judges unanimously dismissed the appeal.
There is in English law no “image right” or “character right” which allows a celebrity to control the use of his or her name of image. In order to bring a claim based on image rights another cause of action, such as breach of contract, breach of confidence, infringement of copyright or, as in this case, passing off, must be relied upon.
The court emphasised that the purpose of the law of passing off is to protect goodwill in that it prevents one person passing off his goods or services as those of another. One judge commented that this case came close to the borderline, but ultimately certain factors tipped the balance in Rihanna’s favour:
The image itself was very distinctive and, to Rihanna’s fans in particular, recognisably similar to the publicity images and materials for her “Talk That Talk” album.
Rihanna’s past public association with Topshop, including a 2010 competition to win a personal shopping appointment with her.
Topshop had previously publicised occasions on which Rihanna wore Topshop items or shopped in Topshop, and was therefore “both recognising and seeking to take advantage of Rihanna’s public position as a style icon.”
This result does not alter the basic principles of the law on passing off, nor does it indicate a move towards a free-standing law of “image rights” such as in the US. However, it does reinforce the ability of celebrities, in certain circumstances, to control the use of their image and limit the ways in which their celebrity status can be exploited without their consent.