By Tania Shires, Executive Legal Director, Icondia
While the outcome of Rihanna’s recent battle with Topshop1 may have been a surprise to many, it did not create any new law. Indeed the decision of Mr Justice Birss reiterated established principles of English law, and highlighted its limitations when it comes to preventing the unauthorised use of celebrity images: “[Today in England [there is] no such thing as a free standing general right by a famous person (or anyone else) to control the reproduction of their image”.
Rihanna succeeded in her complaint based on Topshop’s sale of a t-shirt bearing her picture, but the grounds for her victory were very fact-specific: Rihanna was a recognised style-icon, with whom Topshop had fostered an association, and the picture resembled a publicity shot for a then-recent musical release.
It is clear from the decision that there are a large number of situations in which someone may be morally-aggrieved by the unauthorised commercial exploitation of their image, but legally left without a remedy – in England at least. Under Guernsey’s Image Rights (Bailiwick of Guernsey) Ordinance 2012 (“the IRO”), it is an offence for someone to use another’s protected image for a commercial purpose or benefit without the consent of that image’s owner.
If Rihanna had registered her personality and associated images on Guernsey’s Image Rights Register, her claim against Topshop may have been much more straightforward: she was a registered personality, her images were protected, Topshop could not use that image for commercial benefit without her permission, and to do so was an infringement of her rights. Internet sales would likely trigger a breach of the Guernsey law, and if she wanted, Rihanna may then have also sought to enforce the Guernsey judgment in the UK courts on the basis of the principles in the Star Wars Stormtroopers case2.
Some commentators have suggested that the decision in Rihanna’s case demonstrates that you don’t need a separate “image right”, because the common law tort of passing off provides sufficient protection. A closer reading of Mr Justice Birss’ decision reveals that the opposite is in fact the case. The judgment suggests that the outcome was finely balanced on the facts, and if any of the following had applied Rihanna would have been unlikely to succeed:
(a) if Rihanna had not been a recognised fashion icon (for example, Wayne Rooney or Bruce Forsyth);
(b) if the shot had been so unflattering so as to obviously not have been one that Rihanna would have endorsed; or
(c) if the photo had been one of her in a setting/pose/style unrelated to any video or album images (for example, her sitting at a café having a coffee).
This suggests that the terms of the judge’s decision actually encourage the paparazzi to intrude more in celebrities’ private lives, and to publish/exploit clearly unflattering images so there can be no credible suggestion that the celebrity has endorsed their use. Surely these are not developments that the law should be seeking to encourage.
1 Robyn Rihanna Fenty & Ors v Arcadia Group Brands Limited (T/A Topshop) & Anor  EWHC 2310 (Ch).
2 Lucasfilm Ltd and others v Ainsworth and another  UKSC 39.
Guernsey’s image rights law recognises this and could provide a celebrity with protection beyond the limited scope of the Rihanna decision. It does not matter in which sphere the personality’s image has acquired value, and there is a presumption, albeit rebuttable, that registered images have actual or potential value.
As was clearly stated in the Rihanna decision, it “is certainly not the law [in England] that the presence of an image of a well-known person on a product like a t-shirt can be assumed to make a representation that the product has been authorised”. To establish passing off it is necessary to prove a misrepresentation about trade origin. It is not sufficient to demonstrate that the public would think there was some kind of connection between the celebrity and the producer of the image. The connection must be so strong as to lead the public to assume that the celebrity has made him or herself responsible for the quality of the goods. This is a very difficult requirement to establish.
“Selling a garment with a recognisable image of a famous person is not, in and of itself, passing off”. Nor is it likely to be a trade mark infringement (if the image is registered as a trade mark), if it is not obvious from the way the image is used that the celebrity has endorsed it. Copyright will be similarly unhelpful for the celebrity who does not own the copyright in pictures taken of him or her.
Guernsey’s new law recognises that today there is significant value attached to the way in which a person’s image is perceived, and strives to give people control over the way in which this value is exploited. An action for infringement arises where an unauthorised party uses a protected image in a way that takes unfair advantage of, or is detrimental to, a personality’s distinctive character or repute. Infringement may thus be established in circumstances where claims for passing off, trade mark infringement or breach of copyright may all fail.
As the court in Rihanna’s case recognised, the legal argument there was not concerned with whether an image right can or should be developed in England. The decision does, however, highlight the limited extent to which English law can protect celebrities from the unauthorised exploitation of their image. Guernsey has led the way in recognising the significant value associated with image rights, and provided a mechanism to ensure that image owners get the recognition, protection and commercial advantage that they deserve.
This note is only intended to give a brief summary and general overview of this area of law. It is not intended to be, nor does it constitute, legal advice and should not be relied upon as doing so.
Tania Shires a dual-qualified lawyer (admitted as a barrister and solicitor in New Zealand and a solicitor in England and Wales). She has lived and worked in Guernsey since 2004 and has a strong practical background in commercial litigation, dispute resolution and IP issues. Tania was heavily involved in the development of Guernsey’s IP regime. Tania is an executive Legal Director of Icondia.
Icondia comprises a team of experts that focus exclusively on the registration and management of image rights for an international customer base.
For further information visit www.icondia.com.