The UK Court of Appeal dismissed Topshop’s Appeal, finding there was passing off in the sale by them of t-shirts bearing an image of Rihanna.
In 2012 Topshop started selling T-shirts with an image of Rihanna appearing on it, as shown below:
Click here to view image.
Rihanna brought passing off proceedings claiming that people buying the t-shirts would believe that she had endorsed the product.
In general terms there is no English law concerning image rights which would allow a celebrity to control the use of their image. It is generally accepted that when images of famous people appear on goods that there is no expectation from the public that the goods bearing the famous person’s image actually originate from them.
However, in certain circumstances, depending on the facts, it is possible to use the law of Passing Off to stop the use of an image.
There are certain requisites for succeeding in a Passing Off action and the claimant must be able to show that they have goodwill, that there was a misrepresentation and that they suffered damage whether actual or potential.
In this particular case Rihanna was able to show that she had goodwill in the UK and was recognised in the fashion industry as well as the music industry. Key to the case was the issue of misrepresentation and she was able, through the particular facts of the case, to show that the purchasing public would in fact believe that she had endorsed the products herself. By proving this she was able to show damage and succeed in her Passing Off claim.
First Instance Decision
At first instance the Judge, Birss J ruled in Rihanna’s favour. As discussed above there was a finding that she had goodwill.
In relation to the misrepresentation, the following facts supported her case:
- Rihanna had previously been associated with Topshop.
- She also had an endorsement with another high street chain River Island.
- The image was produced during a video shoot for her single and was similar to images she used on her own promotional merchandising. She is wearing the same clothing and headscarf as appear on her album cover.
- Topshop had also previously entered into collaborations with other famous people.
This led to a finding that her fans would think the t-shirt was endorsed because, "is not just recognisably Rihanna, [but] it looks like a publicity shot for what was then a recent musical release."
The Judge upheld the First Instance decision and confirmed that what is required is first the relevant goodwill. Secondly it must be shown that the complained of activity involves a false representation that there is a connection between the claimant and the goods and services in issue, so that the claimant would be responsible for their quality. This false representation must have a part in the purchaser’s decision to buy.
Given this decision, how large a risk is taken when deciding to put the image of a famous person on products?
Well, the case did confirm that the UK does not have a law concerning image rights. There will still be cases where the famous person will not be able to stop their image appearing on goods which have nothing to do with them.
However, it is clear that there are other ways in which famous people can try to stop the unauthorised use of their image. In particular as in this case the law of Passing Off. This is especially so if they can succeed in showing that the public believe the products have been endorsed by the particular famous person.
Success in the action will depend on the particular facts of the case. One of the judges on appeal regarded the decision as ‘close to the borderline’.
The decision may lead to more proceedings by famous people but not all famous people will be able to provide the required evidence of misrepresentation to succeed.