A recent decision of the High court of Justice confirms that use of a celebrity image, in this case Rihanna, can constitute Passing off when applied to a t-shirt and sold in a major high street store.
In March 2012, Topshop started selling a t-shirt featuring an image of Rihanna, taken by an independent photographer during a video shoot. It is argued by Rihanna that this photograph was taken without her permission (despite the photographer granting a licence to the retailer).
In the absence of “image rights” protection, Rihanna had to rely on the common law tort of passing off, to protect herself against the misappropriation of her image. In order to succeed, Rihanna had to prove that she had established sufficient goodwill and reputation in the minds of the relevant public, such that Topshop’s use was likely to deceive consumers into believing that Rihanna had endorsed, or authorised the T-shirt sales. The misrepresentation, i.e. the sales of the unauthorised t-shirt, must therefore have caused some damage to the celebrities’ reputation and goodwill.
Despite the difficulties faced by celebrities when enforcing their image rights against unauthorised endorsements in the UK, the court found in favour of Rihanna; holding that she had established sufficient goodwill and reputation, that it was capable of leading the relevant public into believing there was an association between the two.
In this case, the court took into account the previous dealings that Rihanna had established with Topshop, namely via online competitions on Twitter, and previous endorsements that had been in place, back in 2010 and 2011. In addition, the financial value of Rihanna’s image was relevant given that she has previously entered into agreements with major fashion companies such as H&M, Gucci, Armani and most recently River Island in 2012.
In their defence, Topshop argued that they had not attempted to create an association and that there was nothing on the t-shirts to suggest that they were official Rihanna merchandise. Topshop argued that many high street retailers use images of celebrities on their garments and there is not an expectation by the public that each image is endorsed by the celebrity that it depicts. Despite, the judge taking into account that, whilst a number of consumers may simply want to buy an image of a celebrity, the fact that the two have previous been associated, and that the image was taken at a video shoot, suggests that there is potential for confusion. This is strengthened by the fact that the purchasing public would recognise the image as Rihanna and purchase the t-shirt on this basis alone.
In summary, the fact that a substantial amount of consumers would purchase the garment on the basis that it was endorsed by the celebrity, suggests a likelihood of confusion and potentially damaged goodwill, in terms of lost sales and control over both reputation and official merchandise.
In light of the above, and in the absence of UK “image right” protection, this case has enhanced the ability for a celebrity to rely on Passing Off when their image is used in an unauthorised manner. It has also brought the law of Passing Off up-to date with the value of celebrity endorsement, and the era of social media, with references to an association through Twitter. That said we do not expect to see a flurry of celebrities relying on the law of Passing Off for the unauthorised use of their images. In this case, particular emphasis was placed on the fact that mere use of a celebrity’s image will not be tantamount to Passing Off. The court will however take into account the circumstances of use, and association in each particular case.