On 22 January 2014 the Court of Appeal upheld the High Court decision in a claim for passing off brought by global superstar Rihanna against Topshop.
The dispute centered on a t-shirt which was sold by Topshop in its stores and through its website. The t-shirt bore an iconic image of the singer derived from a photograph taken from a video shoot for a single from her 2012 album “Talk That Talk”; similar images had been used by Rihanna in promotional material for the album. The use of the image on the t-shirt by Topshop was not endorsed or authorised by the singer in any way. In the High Court Birss, J explained, “Rihanna’s case was that the presence of her image on the t-shirt in the circumstances of this case amounted to a misrepresentation which was likely to mislead potential customers”.
Birss, J found that Rihanna had significant goodwill in the fashion retail sphere, having made considerable efforts to promote an association in the public mind between herself and the world of fashion, citing her collaboration with other high street stores in the UK (notably River Island). This meant that Rihanna’s brand was valuable and marketable in the UK fashion industry. Birss, J continued by stating that if, as he believed to be the case, a substantial number of consumers were likely to be deceived into buying the t-shirt because of a false belief that it had been authorised by Rihanna then that would obviously damage her goodwill. Furthermore it would result in a loss of sales to her merchandising businesses (previous endorsements include Nike, Gillette and Clinique) and also represent a loss of control over her reputation in the fashion sphere. It was, he thought, for her to choose which garments she endorsed. In all the circumstances, Topshop’s sale of the t-shirt without her approval amounted to passing off.
On appeal, Kitchin, LJ stressed that the use of an image of a person on a garment was not of itself passing off, re-emphasising the basic principle that “in English law no “image right” or “character right” which allows a celebrity to control the use of his or her name or image” exists. Kitchin, LJ referred to Lord Walker’s contention in the Douglas case that , “under English law it is not possible for a celebrity to claim a monopoly in his or her image, as if it were a trademark or brand.”
However, Kitchin LJ stated that “the proposition that a famous personality has no right to control the use of her image in general does not lead inexorably to the conclusion that the use of a particular image cannot give rise to the mistaken belief by consumers that the goods to which it is applied have been authorised.” Indeed, under the specific set of circumstances of this case, the Court of Appeal focused on two important factors that meant that the correct conclusion had been reached by the High Court: (1) Topshop had, over time, emphasised its connection to and relationship with Rihanna (and other stylish celebrities) including competitions and appearances at their flagship store; and (2) the specific image on the t-shirt was distinctive and high profile in nature and the use of this image by Topshop was capable of making Rihanna fans think that it was part of, the marketing campaign for her “Talk That Talk” album. As a consequence, the sale of that t-shirt bearing that particular image amounted to a representation that the pop star had endorsed it. Underhill LJ (in his supporting judgment) stated he did not believe either factor by itself would suffice but the two features in combination were capable of giving rise to the necessary representation and as such the use of the image amounted to misrepresentation for the purpose of passing off.
In reaching his decision, Kitchen LJ found that it was not necessary for Birss J to have assessed the relative factors objectively from the perspective of those who were not fans of Rihanna; as the t-shirts were being sold through Topshop stores, it was “plainly relevant” to consider potential customers who were both fans of Rihanna and prepared to shop in a Topshop stores, and to also take into account Topshop’s publicity about and promotion of its connection with Rihanna. Birss J was entitled to find that Topshop was both recognising and seeking to take advantage of Rihanna’s public position as a style icon; many of Rihanna’s fans would regard her endorsement as important for she is their style icon and that they would buy the t-shirt thinking that she had approved and authorized it.
It should be noted that Underhill, LJ believed this case was “as close to borderline” as possible. Although Rihanna’s claim was successful in this instance, the outcome very much depended on the particular circumstances of the case. As such it seems the conditions for succeeding in passing off claims in future image rights disputes will be tightly construed.
To read the full Court of Appeal judgment click here.