In a recent Court of Appeal decision, Rihanna’s passing off claim against Topshop has been upheld. This appeal decision is an important ruling in relation to the protection of celebrity image rights in the UK.
In March 2012, Topshop started selling a t-shirt which featured an image of Rihanna. The original photograph of Rihanna which appeared on the t-shirt had been taken by an independent photographer. Topshop had a licence from the photographer to use the photograph. But, it did not have Rihanna’s consent. Following the launch of the t-shirt, Rihanna issued proceedings against Topshop claiming that the sale of the t-shirt without her permission amounted to passing off.
In July 2013, the High Court held that the unauthorised sale of the t-shirts did amount to passing off. However, the judge noted that the mere sale by a trader of a t-shirt bearing an image of a famous person does not, itself, amount to passing off. But, he found that the sale of the t-shirt bearing Rihanna’s image by Topshop was, in the particular circumstances of the case, likely to lead people to buy it in the belief that it was a t-shirt which Rihanna had approved or authorised and, as a result, this had caused damage to Rihanna’s goodwill, including the loss of her control over her reputation in the fashion sphere.
Topshop appealed the decision, arguing (amongst other matters) that the judge had failed to properly distinguish between merchandising and endorsement and that a garment bearing a celebrity’s image does not automatically amount to passing off.
In the recent judgement of the Court of Appeal, it was confirmed that in English law there was no ‘image right’ which allowed a celebrity to control the use of his or her image. As a consequence, a celebrity seeking to control the use of their image had to rely on some other cause of action such as breach of contract, infringement of copyright or passing off.
In terms of a passing off claim, it was noted that, to successfully pursue a claim for passing off it must be established that the claimant has goodwill, that the defendant has committed a misrepresentation and the claimant has, as a result, suffered damage. In the recent decision, it was reaffirmed that is not a necessary feature of a passing off claim in relation to merchandise that members of the public thought that the products were endorsed by the celebrity.
In the case of Topshop’s use of Rihanna’s image on a t-shirt, the appeal court agreed with the High Court decision that, on the facts of the case (namely Rihanna’s extensive merchandising and endorsement businesses, her past public association with Topshop and the distinctiveness of the image), the sale of the t-shirts amounted to a misrepresentation that Rihanna had endorsed the t-shirt and that, as a consequence, many Rihanna fans would have bought the t-shirt thinking that Rihanna had approved and authorised it.
The Court of Appeal decision reaffirms the principal that celebrities may rely on the law of passing off to prevent an unauthorised use of their images. However, the judgment makes it clear that the question of whether the use of an image amount to passing will depend on the facts of each case. The use of a celebrity image is not, of itself, passing off. Only in specific circumstances will the use of an image on products without the permission of the celebrity amount to passing off.