Character merchandising disputes can be messy where there isn’t a contract, and tort law has traditionally resisted recognising personality rights or rights in your own image. 

But the UK Court of Appeal has now given a fillip to performing artists by finding Topshop liable in passing off to Rihanna for use of her image.

What’s in a photo?

In 2012, the well-known High Street retailer Topshop began selling a fashion t-shirt featuring a clearly recognisable image of the singer Rihanna.  The photograph was taken during a video shoot for a single from Rihanna’s “Talk That Talk” album. 

The photo was taken by an independent third party photographer, who, as owner of copyright in the photograph, licensed it to Topshop.  Rihanna though hadn’t approved use of the photograph and issued proceedings against Topshop in passing off.  Rihanna won in the High Court, and Topshop appealed. 

In the business of merchandising

What makes this case potentially different from standard use of a celebrity image is that Rihanna is in the business of merchandising her image.  She has large merchandising and endorsement businesses and had previously authorised products she endorsed to be available in Topman stores (part of the Topshop group).

Because Rihanna uses her image, her name and an “R” logo for goods she endorses, the High Court Judge found Rihanna was a style icon and had developed goodwill in relation to fashion clothing.  Topshop was a fashion retailer with a reputation for signifying “youth and modernity”, so there was an overlap of business interests.

The appeal

Passing off is a tort which protects goodwill.  The action requires a misrepresentation which damages goodwill.

In the UK (as here) there is no “image right” or “character right”.  That is why Michael Douglas and Catherine Zeta-Jones relied on the law of confidentiality to protect their wedding photos.  The House of Lords in the Douglas case strongly resisted the idea that a celebrity could claim a monopoly in his or her image, as if it were a trade mark or a brand.

For Rihanna there was no issue of confidentiality; rather the issue was whether Topshop had represented its own goods and serves as being connected or associated with Rihanna’s, in such a way as to be likely to damage her business.

Similar cases have been successful in the past: Formula One racer Eddie Irvine won against a radio station which had issued brochures using his image.  In that case Justice Laddie had found that Irvine could have suffered damage because the brochure implied his endorsement. 

In Rihanna’s case, the Court of Appeal agreed that a “false endorsement” action could lie in passing off.

Lord Justice Kitchen approached that case as requiring two hurdles to be overcome: that the use of the image on goods has the consequence that they tell a lie, and that the lie is material. 

Here the use of Rihanna’s image wrongly implied her endorsement – the t-shirts “told a lie” that would be material to Rihanna’s fans, who might purchase the t-shirt under a false belief.

In making this finding, the Court emphasised that it was not creating a general right of image control.  The particular circumstances – including the use of imagery that Rihanna would herself use in music videos and promotional material, and her previous association with Topshop - warranted a finding of liability. 

Nonetheless, Lord Justice Underhill described Rihanna’s case as “borderline”.

Implications for New Zealand

Despite the initial judicial resistance in this and similar cases, the laws preventing public deception (the tort of passing off, and our Fair Trading Act 1986) can be exploited by celebrities for the purposes of image control. 

Key will be whether the use of the image wrongly creates a public perception of a celebrity endorsement.  While some may be deterred, it is likely that clever marketers here and abroad will be looking at how to keep using celebrity images without creating that possibility of association.