The High Court has recently held that the fashion retailer Topshop's unauthorised use of an image of the famous pop star, Rihanna, amounted to passing off. This is the first reported English case of a claimant successfully relying on passing off to claim compensation for the unauthorised use of their personal image on merchandise.
In 2012 Topshop sold a sleeveless t-shirt in the UK bearing the famous celebrity Rihanna's image, which it had licensed from a third party photographer. As Rihanna did not own copyright in the image or any associated trade mark rights, she turned to the tort of passing off for protection.
The High Court upheld the well-established position under English law that there is no such thing as an individual's right to protect his or her image from being used to endorse a product or from being used on a product's packaging. Although such an 'image or personality right' may be recognised elsewhere in the world, including in the USA, it is not currently recognised in the UK.
However, the Court went on to find that Rihanna had successfully proved the key elements of passing off (namely, goodwill, misrepresentation and damage) so that she was entitled to compensation from Topshop for this particular instance of unauthorised use of her image.
Passing off: merchandise and endorsements
The judge, Birss J, found that there is nothing as a matter of law which prevents an action for passing off from being successful in false endorsement cases (as in Irvine v Talksport) or in false merchandising cases. Although there had been an earlier merchandising case in which passing off had been established in respect of the unauthorised use of cartoon characters on goods (Mirage Studios v Counterfeat Clothing  FSR 145), there had not been a passing off case of a claimant successfully seeking redress for the unauthorised use of his or her own image on merchandise.
Birss J went on to confirm that, although selling a garment bearing a recognisable image of a famous person is not, of itself, passing off, each case must be considered on its own facts. It is therefore important when considering whether there has been passing off to look at the nature of the relevant market and the perceptions of the relevant customers. The real issue in this case was therefore to understand why a person might buy the t-shirt, either because they wanted to buy a t-shirt adorned by the image of a pop star (and so there would be no misrepresentation), or because there was a misrepresentation that Rihanna had authorised the use of the image.
Birss J noted the following facts in favour of Rihanna's claim:
- Rihanna is "a world famous pop star with a cool, edgy image" who, by acting through her own companies, runs a very large endorsement and merchandising business.
- By promoting various collections for H&M, Gucci, Armani and River Island (the latter of which was still being negotiated at the time of Topshop's alleged infringement), Rihanna had made an effort to promote a specific association between herself and the world of fashion which is of tangible value.
He also noted the following neutral points, which were neither for nor against Rihanna's claim:
- The public does not generally make a distinction between clothing products authorised by artists and fashion garments, and the fact that an item is a fashion garment is not of itself an indication which makes it unlikely to be authorised or endorsed by someone.
- Although Rihanna's 'R slash' logo and the word RIHANNA (which is itself a trade mark) is used on a large scale on goods authorised by Rihanna, it is not used on every product that she authorises. Neither mark was present on Topshop's t-shirts, however, the presence of such tags was not necessary for a successful claim in passing off.
Birss J concluded that it was clear that Rihanna had ample goodwill in fashion and as a style leader, particularly in the eyes of females aged between 13 and 30.
Misrepresentation to the relevant public
Turning to the second element of the tort of passing off, Birss J noted the following points in favour of Topshop's defence:
- There was no actual evidence of any confusion amongst Topshop's customers, although this was not determinative.
- In the wider clothing marketplace, many items bear Rihanna's image, many with, and some without, authorisation. The existence of these items is not sufficient to lead customers to believe that anything bearing an image of Rihanna will necessarily be authorised by her. Further, Topshop customers have no positive expectation either way as to whether a garment is authorised by the person whose image is on it when they look at garments in Topshop stores.
However, Birss J went on to note the following points in favour of Rihanna's claim:
- Topshop makes a significant effort to emphasise connections between itself and famous people, through publicity, competitions and social media such as Twitter, including previous appearances by Rihanna at Topshop's flagship London store earlier in 2012.
- The image itself was based on a photograph taken during the video shoot for Rihanna's well publicised single 'We Found Love', which received a great deal of press attention in the UK. Birss J thought that Rihanna's fans would perceive a relationship between the t-shirt image and the images of Rihanna for the single (and album) and may well think the garment was part of the official marketing campaign.
Birss J concluded that, to prospective purchasers, the image was a fairly strong indication that the t-shirt may have been authorised by Rihanna. The fact that there was no indication of artist authorisation on the swing tag or neck label was not enough to negate the impression that the garment was authorised. A substantial proportion of prospective purchasers (made up of Rihanna's fans) had been deceived into thinking that the t-shirt had been authorised by Rihanna, which would have motivated them to buy it.
As a substantial number of customers had been deceived into buying the t-shirt, it naturally followed that this damaged Rihanna's goodwill and caused her to suffer loss, either by way of reduced sales by her merchandising business and/or the loss of control of her reputation in the fashion world.
Whilst previous cases have established that passing off can be used to prevent, or compensate for, the unauthorised use of a celebrity's image in false endorsement cases (Irvine v Talksport), this is the first reported English decision where the principle has been extended to the unauthorised use of a celebrity's image in merchandising.
Although this decision has not created an 'image or personality right' in the UK, it has confirmed the protection afforded to individuals extends to unauthorised merchandise. But the decision also confirms that each case will be decided on its own facts and mere use of the image will not be sufficient on its own. Protection will most likely be afforded to those individuals who already have their own merchandising lines.