Mr Justice Birss, newly elevated to the High Court of England & Wales, has handed down two decisions in the last week in which so-called “t-shirt use” has been in the spotlight.
These are two sensible decisions from the man who famously referred to Samsung’s Galaxy Tablets as being “not as cool” as Apple’s designs.
In the result:
- Topshop’s sale of t-shirts bearing a photograph of Rihanna amounted to passing off.
- The earlier use of QUEENSBERRY on t-shirts by Sports Direct was not sufficient to invalidate a registration obtained by BBL for QUEENSBERRY for clothing based on passing off (under the UK equivalent of Australia’s s42, “contrary to law” provision) or bad faith. Thus BBL’s registration was valid and infringed.
The differing outcomes simply emphasise the fact-specific nature of the passing off enquiry – “the issue will always depend on the nature of the relevant market and on the perceptions of the relevant customers. It is certainly not the law that the present of an image of a well known person on a product like a t-shirt can be assumed to a make a representation that the product has been authorised” (Fenty, at 34).
The Fenty decision is likely to prove helpful in cases in which claimants are relying on an endorsement or merchandising angle, including where social media is a relevant factor.
In BBL, the localised use of QUEENSBERRY in order to promote a boxing gym simply wasn’t sufficient to give rise to the relevant goodwill on which Sports Direct could make its case under passing off. The BBL decision on bad faith also echoes (without referencing) the decision of Arnold J in Cipriani, in which it was emphasised that bad faith is an absolute ground, which provides (under EU law) one of only two exceptions to the first-to-file principle. This is particularly striking when compared against the recent Australian decision of Bennett J in DC Comics v Cheqout Pty Ltd (discussed here), in which the bad faith ground was upheld based on language redolent of relative grounds, namely Europe’s unfair advantage provisions. We may be seeing the beginnings of a divergence between the UK approach and that in Australia. The irony is that Dodds-Streeton J’s decision in Fry (discussed here), which was cited in DC Comics, was based heavily on UK case law.
In Part 1 of this article, we look at the Fenty decision. Part 2 of this article will look at BBL.
Fenty & Ors v Arcadia Group Brands Ltd (t/a Topshop) & Anor  EWHC 2310 (Ch) (31 July 2013)
The facts are neatly summarized in the decision as follows:
Topshop is a well known fashion retailer. Rihanna is a famous pop star. In March 2012 Topshop started selling a t-shirt with an image of Rihanna on it [shown below]. The image was a photograph taken by an independent photographer. Topshop had a licence from the photographer but no licence from Rihanna. Rihanna contends that the sale of this t-shirt without her permission infringes her rights. Topshop does not agree. This action is the result.
Mr Justice Birss considered the classical trinity of factors needed to establish passing off:
The evidence showed that Rihanna is a famous pop star with a “cool, edgy image”, and that she also has various endorsement agreements in place with Nike, Gillette, Clinique and LG Mobile. Goods authorised by Rihanna were sold in Topman in 2010 and 2011. Rihanna had also carved out merchandising rights in relation to high end fashion. To this end, she had separately promoted goods for H&M, Gucci and Armani, and – in 2012 – the high street store River Island. The agreement with River Island was first publicised in July 2012 and so could not have had much of an impact on the public, but it showed that “Rihanna’s identity and endorsement in the world of high street fashion was perceived in 2012 to have a tangible value by an organisation well placed to know”.
It was held that in 2012 Rihanna had more than ample goodwill with which to succeed in a passing off action: “[t]he scope of her goodwill was not only as a music artist but also in the world of fashion, as a style leader". This was so much so that “[i]f Rihanna is seen to wear or approve of an item of clothing, that is an endorsement of that item in the mind of those people.
Mr Justice Birss took a number of issues into account here, including the following.
- The circumstances of the trade and the relevant consumers – they are well aware of authorised merchandising and that a musician might seek to engage in endorsement and merchandising activity, but this was not in itself sufficient.
- Perceptions around Topshop generally - it is a leading high street fashion retailer, not “a market stall”.
- Efforts made by Topshop to associate itself with famous stylish people (including Rihanna). For example, in 2010 Topshop ran a competition with a chance to win a personal shopping appointment with Rihanna at the Oxford Circus flagship store.
- Social media was relevant. News of Rihanna’s visit to Topshop in February 2012 was tweeted to Topshop’s 350,000 followers.
- The garment itself was a critical factor. It was clearly fashionable (“well up with what were then the current trends”), but this was seen as a neutral factor (“it could be authorised but it need not be”). The image was a striking one, and was taken during the video shoot for the “We Found Love” single, for the Talk Talk album. The images for the Talk Talk album showed Rihanna with the same hairstyle and headscarf as shown on the t-shirt: “the relationship between this image and the images of Rihanna for the album and the video shoot would be noticed by her fans. This is an important point. This image is not just recognisably Rihanna, it looks like a publicity shot for what was then a recent musical release. To someone who knew Rihanna but did not know her current work, the image is simply one of the person concerned. However to her fans who knew her work, I think this particular image might well be thought to be part of the marketing campaign for that project.”
Considering these in the round, Mr Justice Birss concluded that “a substantial portion of those considering the product will be induced to think it is a garment authorised by the artist. The persons who do this will be the Rihanna fans. They will recognise or think they recognise the particular image of Rihanna, not simply as a picture of the artist, but as a particular picture of her associated with a particular context, the recent Talk That Talk album. For those persons the idea that it is authorised will be part of what motivates them to buy the product. I am quite satisfied that many fans of Rihanna regard her endorsement as important. She is their style icon. Many will buy a product because they think she has approved of it. Others will wish to buy it because of the value of the perceived authorisation itself. In both cases they will have been deceived.”
The likelihood of deception would “obviously be damaging” to Rihanna’s goodwill, representing lost sales, and a loss of control over her reputation in the fashion sphere (even bearing in mind Topshop’s product was a high quality garment).
The sale of this garment, by this shop, in these circumstances, was an act of passing off.