News of RIHANNA's dramatic win in a passing off case in the UK yesterday for the unauthorised use of her image on clothing by Topshop, is hot. Aside from the fact that this is news about a celebrity suing a major a fashion chain, it's hot because of the sophisticated way in which Rihanna has gone about developing her brand, it illustrates shifts in consumer thinking and the flexibility of the English law passing off action. However, had this situation occurred in South Africa, Rihanna would have had more legal options because personality rights are better recognised.
The Judge's final paragraph sums up the position in England: "The mere sale by a trader of a t-shirt bearing an image of a famous person is not, without more, an act of passing off. However the sale of this image of this person on this garment by this shop in these circumstances is a different matter. I find that Topshop's sale of this Rihanna t-shirt without her approval was an act of passing off."
This case is particularly fact specific. Had this been Elvis, Princess Diana or even Kate Middleton on a T-shirt sold by Topshop, the decision is very likely to have been different. Indeed, in recent times, both Elvis and Princess Diana have suffered the indignity of being too famous for protection under English trade mark law, which also does not have a constitutional right to privacy.
The difference in the current case is that Rihanna was able to show that she has created goodwill for herself, not just as a famous singer and celebrity, but as a style leader whose business is in fashion. She has protectable goodwill and upon examination of the circumstances of the trade by Topshop, which are important, it was felt that consumers would be deceived and Rihanna's goodwill damaged.
It is possible that even fifteen years ago, this case might have been decided differently, not because Rihanna, as we know her today, did not exist but because of shifts in fashion marketing, personality branding and consumer behaviour, all considered in the decision.
Interestingly, under South African law Rihanna would have more legal options against a local Topshop doing the same thing. This is because South African law recognises personality rights and the right to privacy as well as unlawful competition which is considerably wider than the English law action for passing off.
The South Africa approach is illustrated in Kumalo v Cycle Lab. In this case, a well known local celebrity and businessperson successfully sued a retailer for the use of her image in advertising without permission, on grounds that it violated her personality rights and not using passing off.
"..the plaintiff's image has been used in a misleading way. It generates the false impression that she endorses the lady-specific cycling products sold by the defendant and the defendant's campaign to promote cycling among women. Use of her image in this manner constitutes a violation of her right to identity. The appropriation and misuse of the plaintiff's image is wrongful and would be considered by persons of ordinary and reasonable sensibilities to constitute an iniuria which is deserving of legal protection."