The Court of Appeal has today dismissed fashion retailer Topshop's appeal, confirming that Topshop's unauthorised use of an image of the famous pop star, Rihanna, amounted to passing off.
In 2012 Topshop sold a sleeveless t-shirt in the UK bearing the celebrity Rihanna's image, which it had licensed from a third party photographer. As Rihanna did not own copyright in the image or any associated trade mark rights, she turned to the tort of passing off for protection.
The High Court upheld the well-established position under English law that there is no such thing as an individual's right to protect his or her image from being used to endorse a product or from being used on a product's packaging. Although such an 'image or personality right' may be recognised elsewhere in the world, including in the USA, it is not currently recognised in the UK.
However, the Court went on to find that Rihanna had successfully proved the key elements of passing off (namely, goodwill, misrepresentation and damage) so that she was entitled to compensation from Topshop for this particular instance of unauthorised use of her image.
The Court of Appeal (led by Lord Justice Kitchin) held that the Judge was right to reach the conclusion that he did based on the evidence before him.
The Court of Appeal reiterated 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; simply because the name or image of a celebrity appears upon a consumable commercial item, it by no means follows that the public will assume that it has been endorsed by that celebrity.
In reaching its decision, the Court of Appeal dismissed Topshop's contention that the Judge ought to have assessed the passing off claim having regard to the perceptions of those persons for whom the presence of Rihanna's image was "origin neutral". The Court of Appeal stated that it was plainly relevant for the Judge to consider (as he did) potential customers who were both fans of Rihanna and prepared to shop in a Topshop store – this reflected "real life". Topshop's marketing activities (ie publicising and promoting its connection with Rihanna over a period of time) was also a relevant factor in the Court of Appeal's decision.
The decision confirms that each case will be decided on its own facts and mere use of an image will not be sufficient on its own. Interestingly, Lord Justice Underhill, whilst agreeing with Lord Justice Kitchin, did say that he considered this to be a "close to borderline" case and that both Rihanna's past public association with Topshop and the particular distinctive features of the image itself were essential to Rihanna's claim; in his view, either of these factors alone would not suffice.
Whilst the decision reaffirms the position that there are no image rights per se under English law, it would appear that protection under the law of passing off will most likely be afforded to those individuals who already have their own merchandising lines, such as David Beckham, and, in particular, those individuals that have a previous association or connection to the defendant.