Rihanna’s case against Topshop, Robyn Rihanna Fenty v Arcadia Group Brands Ltd, continues to make the news. This was, of course, the case where Topshop used a photograph of Rihanna on a t-shirt without getting the star’s permission, and Rihanna sued for passing-off. The photograph, which had been taken by an independent photographer, showed Rihanna wearing the same clothing she’d worn on the video of a single from an album called ‘Talk That Talk’, a video that had received considerable publicity. 

Passing-off is all about goodwill, misrepresentation and damage. The UK court accepted that consumers seeing the t-shirt would mistakenly believe that it had been endorsed by Rihanna, and that there was therefore passing-off. Topshop took this decision on appeal. The Court of Appeal recently dismissed the appeal, holding that there was clearly a misrepresentation that Rihanna had endorsed the product.

But it seems to have been a close call. The judge who handed down the main judgment said that Rihanna had managed to overcome ‘two critical hurdles’. These were establishing that the use of the image involved a misrepresentation about the source of the goods, and establishing that the misrepresentation was material in that it affected the customer’s buying decision. The other two judges described the case as being ‘close to the borderline’. They made it clear that they had been very much influenced by the somewhat unusual facts of this case.

So just what were these facts? Well, as their lordships discovered, Rihanna has been heavily involved in fashion for some time, and people know this – Rihanna is something of a fashion icon, having once had an arrangement with the fashion brand River Island in terms of which she designed clothing for them, and having previously endorsed clothing that was sold at Topman, a store that’s related to Topshop. And the judges were prepared to accept that Rihanna’s fans would see a clear link between the t-shirt and the album.

The Rihanna decision is regarded as fairly important in the UK. That’s because the issue of celebrity endorsement has always been seen as being quite tricky. As the Court of Appeal emphasised, there’s no such thing as an image right in the UK (or publicity right as it’s called in the USA). And even though there was a famous case of a celebrity succeeding in a passing-off case - Formula One driver, Eddie Irvine, successfully sued a radio station that used his photograph on an adverting billboard without permission, with the judge accepting that people would wrongly assume that he had endorsed the station - the UK authorities have in the past taken the view that when it comes to goods like t-shirts, posters and mugs, people seeing photos of celebrities think little of it, other than perhaps ‘this is a t-shirt/poster/mug of Rihanna’. In other words, they think that the celebrity is simply the subject matter of the product.

So what is a celebrity to do? In South Africa the law on passing-off is very similar to that in the UK, so a passing-off case is clearly an option. Based on the Rihanna decision, the more product endorsement the celebrity does, the better their chances of being able to stop unauthorised image use.  It would probably also be a good idea for the celebrity to let it be known that they endorse products.

The South African celebrity may have other options too. South Africa does recognise something akin to an image right, although we call it the right to identity. This area of the law is fairly undeveloped, although there have been cases where it has been successfully raised, including one involving  former Miss South Africa, Basetsana Kumalo, who successfully sued Cycle Lab for using her photograph in an advertisement without permission. The Code of the Advertising Standards Authority may also offer an avenue, because it says that an advertiser cannot portray a celebrity without their consent, except in cases where it doesn’t interfere with their right of privacy or amount to unjustified commercial exploitation - a former CEO of SAA tried this route when Nando’s brought out its ‘Chicken or beef Mr Nqdula, we suggest chicken peri-peri’ advertising campaign,  but the ASA ruled that the use of his name had been justified because he had been much in the news. Copyright will only be an option in cases where the celebrity owns the copyright in the particular photograph that’s been used, something that’s unlikely to happen.

Celebrities should, however, give serious consideration to getting trade mark registrations. A celebrity can register not only their name, but also photos and line drawings of themselves in respect of defined goods.  Obvious categories to go for would be clothing, cosmetics and printed materials. It is a requirement for trade mark registration that the applicant must genuinely intend to use the trade mark on the goods, but this intention will, I think, be present if the celebrity realistically anticipates entering into licence or endorsement relationships. A registration isn’t limited to the exact trade mark that’s registered, which means that a registration for a photograph would give protection against the use of photographs that might be regarded as confusingly similar. A trade mark infringement case is generally far easier to prove than a passing-off case and so a trade mark registration is suggested.