Robyn Rihanna Fenty and others v Arcadia Group Brands Ltd (t/a Topshop) and another [2013] EWHC 2310 (Ch), 31 July 2013

Introduction

This case is concerned with so called 'image rights'. In the UK, there is currently no free standing law of 'image rights' and those seeking to prevent unauthorised use of their image, must cherry-pick from a mélange of statutory and common law causes of action. Celebrities argue that their image is a financial asset, and that appropriate remedies should be available to them when a person or business misuses this asset. In order to be granted such a remedy, they must establish what cause of action they will be relying on. In this case, Rihanna relied on the common law tort of passing off. In this field, the purpose of passing off is to vindicate the claimant's exclusive right to goodwill and to protect the claimant from damage. Damage could occur when the defendant had 'squatted' on the claimant's exclusive right.

The facts of this case and the law of passing off

In March 2012, Topshop started selling a t-shirt with an image of Rihanna on it. The image was a photograph taken by an independent photographer while Rihanna was filming a video for a single from her 'Talk That Talk' album. Topshop had a licence to use the photograph, but no licence from Rihanna.

As noted above, this case is concerned with passing off. To establish passing off, three things must be proved by Rihanna.

  1. That she had sufficient goodwill and reputation amongst the relevant members of the public.
  2. That the conduct complained of must be shown to deceive those members of the public into buying the product because they think it is associated or authorised by her.
  3. That this misrepresentation must cause damage to her goodwill.

Did Rihanna succeed?

Historically, merchandising and endorsement have given rise to problems in passing off cases as it is necessary for the claimant to show that they have goodwill and reputation at the time of the acts which are the subject of the complaint. In the present case, there was no difficulty for Rihanna to show that she has sufficient goodwill and reputation. She runs a large merchandising and endorsement operation and the second and third claimants are companies she uses to conduct her trading relevant to this case. In 2010 and 2011, Rihanna authorised goods to be sold in Topman. She has also entered into various contracts with H&M, Gucci and Armani. In 2012 Rihanna entered into an agreement with River Island to design clothing.

In terms of misrepresentation, a critical problem is to distinguish between two different reasons why a person might be moved to buy the product in question, and was described by the judge as being "the real issue in this case". If when they buy the t-shirt, a person simply wishes to buy an image of the pop star, then no misrepresentation has taken place. Merely recognising that the image is an image of the celebrity can never be sufficient to make the claimant's case. For passing off to succeed there must be a misrepresentation about trade origin.

Topshop argued that there is nothing on the t-shirt which represents it as an item of official Rihanna merchandise and customers do not think it is, and nothing on the swing tag or other labelling makes any suggestion it is a Rihanna authorised garment. Topshop sells many garments like this and the public has no expectation that the garments are authorised by the person shown in the image. The claimants argued, of course, to the contrary, submitting that this particular image, the way it was presented and the nature of the t-shirt itself, as well as the position of Topshop as a major reputable high street retailer, contributed to an expectation of authorised use. Taking these things together, they argued there is a real likelihood that a substantial number of customers would be deceived into thinking it was an authorised image and would buy the product as a result of that mistaken belief.

The judge accepted that on buying the garment a good number of purchasers would do so without giving a second thought to the question of authorisation, however, after hearing the evidence, he found that a substantial portion of those considering the product would be induced to think it was a garment authorised by the artist; the persons who would do this would be Rihanna fans. They would recognise or think they recognised 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 motivating factor which drives them to buy the product.

In relation to damage, the judge held that as a substantial number of purchasers are likely to be deceived into buying the t-shirt because of the false belief it is authorised by Rihanna, then this would obviously be damaging to her goodwill. It represents lost sales to her merchandising business, and also represents a loss of control over her reputation in the fashion sphere. Consequently, it was found that an act of passing off had occurred.

Comment

As the judge in this case observed, it may be the case that various 'celebrities' may wish there were, but there is currently no codified law in relation to image rights, as such. Will the outcome of this case change things and mean a free standing 'image right' is introduced? This remains to be seen, as passing off will only be applicable in certain circumstances, and as the judge in this case pointed out, 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. This case may well be appealed, which will allow the Court of Appeal an opportunity to examine an area of law that has had little judicial analysis in the past.