Not when it comes to Topshop’s use of her image! – Rihanna wins case over Topshop t-shirt

Rihanna’s recent Court victory over Topshop for selling a t-shirt bearing her image – see judgment Robyn Rihanna Fenty and ors v Arcadia Group Brands Limited and anor [2013] EWHC2310 (Ch) – offers further useful guidance on how celebrities may seek to control exploitation of their own image.

In 2012, Topshop sold a sleeveless t-shirt with a full image of Rihanna on it.  The image had been lawfully licensed to Topshop by an independent photographer.  Rihanna brought a claim against Topshop for passing off on the basis that purchasers of the t-shirt were likely to think that she had endorsed it and this damaged her goodwill and infringed her rights.

Mr Justice Birrs upheld the claim finding that a substantial number of purchasers would have been deceived into thinking that the t-shirt had been approved by Rihanna and had bought it for that reason.  Because of her association with the world of fashion and status as a ‘style icon’, the Judge considered that purchase of the t-shirt in the mistaken belief that it had been endorsed by Rihanna would be damaging to her established goodwill and reputation among relevant members of the public. 

In his short judgment, Mr Justice Birrs made clear that selling clothing with a recognisable image of a famous person is not, of itself, an act of passing off.  For passing off, there must be a representation about trade origin that creates a false belief in the potential purchaser’s mind that influences the decision to buy the product.  Merely recognising the image as that of a celebrity is not sufficient for passing off to be made out.

In this case, Mr Justice Birrs made clear that his decision was fact specific.  He considered it significant that Topshop had previously made promotions with Rihanna, including a competition for entrants to win a personal shopping appointment with her in 2010 at its flagship Oxford Street store and two weeks before the sale of the t-shirt, Topshop had tweeted about a recent visit by Rihanna to Topshop.  The Judge thought this indicative of Topshop taking advantage of Rihanna’s public position as a style icon to increase its sales.  Further, the image in question was one of Rihanna taken during a video shoot for her single “We Found Love” for her 2011 “Talk That Talk” album.  The image was not just recognisably of Rihanna, but one that looked like a publicity shot for her album.  Mr Justice Birrs found that the use of that particular image on the t-shirt might lead Rihanna’s fans to believe that it was part of her marketing campaign for the album.  The Judge was of the view that the public was likely to have been deceived about the origins of the Topshop t-shirt and this damaged Rihanna’s goodwill (evidenced by her associations with brands such as H&M, Gucci, Armani and River Island) and resulted in loss of sales for her own merchandising business.  The result was loss of Rihanna’s control of her reputation in the fashion sphere and financial damage to her.

Rihanna can be thanked for her contribution to continuing development of English passing off law, through classic passing off cases – see Reckitt & Colman v Borden [1990] (‘Jif Lemon’), Tavener Rutledge v Trexapalm [1975] (Kojak Lollipops), Lyngsted v Anabas [1977] (goods carrying photographs of the pop group ABBA), Mirage Studios v Counterfeat Clothing (‘Teenage Mutant Ninja Turtles’) [1991] FSR145 and Irvine v Talksport (‘false endorsement’) [2002].  With its significant references to merchandising through social media, Twitter and Tweets, the case is a contemporary example of English passing off law.

Significantly, the Judge made clear at the beginning of his Judgment that English law does not recognise ‘image rights’ as such.

After introducing the parties at the beginning of his Judgement, Mr Justice Birrs stated:

“Whatever may be the position elsewhere in the world and however much various celebrities may wish there were, there is today in England no such thing as a freestanding general right by a famous person (or anyone else) to control the reproduction of their image”.

It is clear from the Judgment that Rihanna’s lawyers steered clear of making any claim for breach of image or personality rights such as exist in several civil law jurisdictions in Europe and numerous states in the United States and Canada.  China protects rights of personality through statute and use of another’s image for commercial use without that person’s consent is prohibited.  Uniquely, in December 2012, Guernsey enacted the Image Rights Bailiwick of Guernsey Ordinance 2012 allowing for registration of a personality rights, together with images associated with that personality.

English law also allows celebrities to protect their images through claims for copyright and/or trademark infringement and the developing law of privacy and the Rihanna case reconfirms that the law of passing off is another means for celebrities to seek to protect their image and commercial interests.