Note: Readers may want to find an umbrella, as the following article may pour up a few too many lyrics for some.

Poor Topshop is not finding a lot of love in a hopeless place after losing an appeal against Justice Birss' decision that it had committed an act of passing off. The company found themselves unable to talk that talk for Lord Justices Richards, Kitchin and Underhill in the Court of Appeal in Fenty & Ors v Arcadia Group Brands Limited & Anor[2015] EWCA Civ 3.  

The facts

In 2012, Topshop began selling a sleeveless t-shirt called the RIHANNA TANK. The t-shirt was screen printed with an image of Rihanna that was taken during the music video shoot for her single We Found Love.

Topshop obtained a licence to use the image from the original photographer. However, Rihanna launched an action against the company, alleging that the use of her image was unauthorised and would lead people to mistakenly believe she had endorsed the clothing. She is, after all, the only girl in the world.

Primary judgment

As reported in an earlier Scintilla blog, Justice Birss found in favour of the singer and didn't love the way Topshop misrepresented the t-shirt. He held the company had committed an act of passing off. Whilst Rihanna wasn't awarded any damages, Justice Birss did grant an injunction prohibiting Topshop from selling the t-shirt without informing prospective purchasers that it had not been approved or authorised by Rihanna.

Appeal

Lord Justice Kitchin gave the leading judgment in the appeal and emphasised the absence in English law of an 'image right' or 'character right' that can be used by celebrities to control their name or image. However, he noted the common law protection of goodwill and the prohibition on a person passing off 'his goods or services as those of another'. In this case, the 'misrepresentation that [Rihanna] was associated with the t-shirt made it more attractive and so played a material part in the decision of the public to buy it'.

His Lordship was careful to note that 'it by no means follows simply because the name of a celebrity appears on appears upon a consumable commercial item, the public will assume that it has in some way been endorsed by that celebrity'. The previous relationship between Topshop and Rihanna, as well as Rihanna's status as a style icon, was integral to establishing the relevant association in this case.

Topshop contended that Justice Birss failed to properly distinguish between character merchandising and false endorsement. Lord Justice Kitchin found that the prior relationship between Topshop and Rihanna was key to the perception fans may have that she had authorised and approved the t-shirt. In other words, there was a representation she endorsed the t-shirts and was materially responsible for their quality.

Topshop also asserted that it was Disturbia for the court to accept that selling a garment with a recognisable image of a famous person does not, in and of itself, amount to passing off, and then claim misrepresentation by omission has occurred. Lord Justice Kitchin found the two principles could operate simultaneously (no need to send out an S.O.S just yet). While Topshop may have an image right, it does not have the ability to utilise an image right in circumstances which give rise to a misrepresentation.

Additionally, public perception does not need to be assessed by an objective standard and it was 'plainly relevant to consider potential customers who were both fans of Rihanna and prepared to shop in a Topshop store'.

Comment

The decision remains consistent with Australian law. Similar to England, an action of passing off in Australia requires proof of the 'classic trinity': goodwill, misrepresentation and damage. However, in Australia it is common for the action to be coupled with a claim for misleading and deceptive conduct under section 18 of theAustralian Consumer Law. Unauthorised endorsement, in a similar context, was most notably argued in the Crocodile Dundee case (Hogan v Koala Dundee Pty Ltd(1988) AIPC 90-527). Justice Pincus in that case held that a retailer trading as 'Dundee Country' and selling products reminiscent of the film misappropriated the applicant's business reputation and drew a wrongful association of goods with the film.

Retailers who choose to utilise celebrity images, particularly 'style icons', without permission play a risky game of Russian roulette. They need to be cautious of any suggestion of endorsement or collaboration with the celebrity if they have previously engaged in promotional activity together.