New Zealand: Passing off as Rihanna

In a recent case from the Chancery Court, Rihanna, a prominent pop star, successfully sued Topshop, a high street fashion retailer, for passing off.

Topshop had been selling T-shirts emblazoned with a photograph of Rihanna. The photograph had been taken by a freelance photographer, so Rihanna had no intellectual property in the image itself. Rather, she alleged that Topshop's use of the image would lead consumers to believe that the T-shirt was official Rihanna merchandise, and that they would buy the product as a result of that mistaken belief.

Justice Birss was careful to note from the outset that the basis for the action was not "so called image rights" to control the reproduction of one's image. Such rights, while recognised in the United States and Canada, do not exist in the United Kingdom. Nor did the case fall under the umbrella of the tort of invasion of privacy.

In order to establish the tort of passing off, Rihanna had to satisfy the three-pronged test of goodwill, misrepresentation, and damage. That is, she had to show that she had goodwill and reputation among members of the public, that Topshop's conduct amounted to a misrepresentation, and that the misrepresentation caused damage to her good will. The essence of Rihanna's complaint was that consumers would be deceived into thinking that the t-shirt was authorised by Rihanna and would buy the product as a result of that mistaken belief.

In terms of Rihanna's goodwill and reputation, the Judge noted that Rihanna was a famous popstar with a "cool, edgy image". She had an extensive merchandising and endorsement operation through her related companies, and had entered into various endorsement and agreements with third parties.

The Judge found that on the evidence, Rihanna was a "style icon" and that if she was seen to wear or approve of an item of clothing, that would be an endorsement of the item in the mind of consumers, particularly young females aged between 13-30. The first element of the claim was proved, as ample goodwill existed not only in relation to Rihanna's reputation as a musician, but also as a fashion icon.

Turning to misrepresentation, which was the pivotal issue of the case, the Judge emphasised that "No one is entitled to be protected from confusion as such". If a person is buying a product simply because they want to buy an image of a pop star, then there is no misrepresentation. For misrepresentation to exist, it must be about the origin of the product. In other words, it was necessary for Rihanna to show that the product would lead consumers to believe that was responsible for it.

Topshop argued that there was no misrepresentation because there was nothing on the garment representing it as an item of official Rihanna merchandise. For instance, the distinctive Rihanna logo was absent.

Further, the T-shirt was a high quality fashion garment rather than standard pop star merchandise, and that consumers would be able to distinguish between the two. It was argued that fashion garments sold at high street shops are generally more "design-lead" and of a higher quality than the kind of merchandise one could buy at a musician's concert.

Further, the T-shirt was produced at a time when there was a fashion trend for image T-shirts, and the public had no expectation that such garments were authorised by the person shown in the image. There was no evidence adduced that consumers had in fact been confused by the product.

Justice Birss rejected these arguments. He accepted that the use of a photo on a T-shirt would not necessarily lead consumers to believe that the garment was authorised by the subject of the photo, but found that in this case, misrepresentation was made out.

First, he considered that the context of the relationship between Rihanna and Topshop was significant. Topshop had promotional relationships with various famous personalities. In particular, they had previously engaged in promotional events with Rihanna, and when she visited their store shortly before the T-shirt was on sale, "tweeted" about Rihanna's visit on Topshop's Twitter fee.

Secondly, the image of Rihanna on the T-shirt could be confused with a publicity shot for her single "We Found Love", as the image depicted her wearing the same hairstyle and headscarf as in music video for that song. The commercial nature of the unauthorised photograph increased the prospect of confusion.

On balance, the Judge considered that the nature of the image, and the public links between Topshop and Rihanna, would increase the likelihood that consumers would think the garment had been authorised by Rihanna. The Judge was satisfied that the perception that Rihanna had authorised the product would motivate some consumers to buy the product and as such, consumers would be deceived.

Finally, on damage, the Judge held that once misrepresentation was proven, it followed that there would be damage to Rihanna's goodwill, in terms of sales lost from Rihanna's own merchandising and her loss of control over her reputation in the fashion world.

In short, Topshop found itself in a hopeless place.

This decision very much turned on its specific facts, but it is significant as being the first case in England where a famous personality has won a passing off case based on their image on clothing.

It also demonstrates the fine line between passing off cases based on endorsements, and the developing law of "image rights", which is not recognised in the United Kingdom or New Zealand. Although the Judge said the case was not about "image rights", the effect of the decision was to confer on Rihanna a right to control the use of commercial-style images of herself, particularly by retailers with whom she had a previous relationship.

It may be that photographers, fashion designers and retailers will need to show more caution about the type of celebrity images they place on products. The more similar the image is to authorised merchandise, the more likely it is that consumers will be confused. This in itself is fairly orthodox. But the case also recognises the increasing overlap between pop stars and high end fashion. Celebrity merchandise is no longer restricted to cheap, low-quality T-shirts, which means that a retailer cannot necessary distinguish their product based on quality.

Retailers will need to be particularly careful if they have had a previous association with the celebrity (or celebrities in general), whether through promotions or stocking authorised merchandise.

It remains be seen whether this case emboldens other celebrities to bring similar claims. The moral of the case? Don't take on Rihanna, because she definitely won't Love the Way you Lie.

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