Most Read Contributor in New Zealand, September 2016
Character merchandising disputes can be messy where
there isn't a contract, and tort law has traditionally resisted
recognising personality rights or rights in your own
But the UK Court of Appeal has now given a fillip to
performing artists by finding Topshop liable in passing off to
Rihanna for use of her image.
What's in a photo?
In 2012, the well-known High Street retailer Topshop began
selling a fashion t-shirt featuring a clearly recognisable image of
the singer Rihanna. The photograph was taken during a video shoot
for a single from Rihanna's "Talk That Talk"
The photo was taken by an independent third party photographer,
who, as owner of copyright in the photograph, licensed it to
Topshop. Rihanna though hadn't approved use of the photograph
and issued proceedings against Topshop in passing off. Rihanna won
in the High Court, and Topshop appealed.
In the business of merchandising
What makes this case potentially different from standard use of
a celebrity image is that Rihanna is in the business of
merchandising her image. She has large merchandising and
endorsement businesses and had previously authorised products she
endorsed to be available in Topman stores (part of the Topshop
Because Rihanna uses her image, her name and an "R"
logo for goods she endorses, the High Court Judge found Rihanna was
a style icon and had developed goodwill in relation to fashion
clothing. Topshop was a fashion retailer with a reputation for
signifying "youth and modernity", so there was an overlap
of business interests.
Passing off is a tort which protects goodwill. The action
requires a misrepresentation which damages goodwill.
In the UK (as here) there is no "image right" or
"character right". That is why Michael Douglas and
Catherine Zeta-Jones relied on the law of confidentiality to
protect their wedding photos. The House of Lords in the Douglas
case strongly resisted the idea that a celebrity could claim a
monopoly in his or her image, as if it were a trade mark or a
For Rihanna there was no issue of confidentiality; rather the
issue was whether Topshop had represented its own goods and serves
as being connected or associated with Rihanna's, in such a way
as to be likely to damage her business.
Similar cases have been successful in the past: Formula One
racer Eddie Irvine won against a radio station which had issued
brochures using his image. In that case Justice Laddie had found
that Irvine could have suffered damage because the brochure implied
In Rihanna's case, the Court of Appeal agreed that a
"false endorsement" action could lie in passing off.
Lord Justice Kitchen approached that case as requiring two
hurdles to be overcome: that the use of the image on goods has the
consequence that they tell a lie, and that the lie is material.
Here the use of Rihanna's image wrongly implied her
endorsement – the t-shirts "told a lie" that would
be material to Rihanna's fans, who might purchase the t-shirt
under a false belief.
In making this finding, the Court emphasised that it was not
creating a general right of image control. The particular
circumstances – including the use of imagery that Rihanna
would herself use in music videos and promotional material, and her
previous association with Topshop - warranted a finding of
Nonetheless, Lord Justice Underhill described Rihanna's case
Implications for New Zealand
Despite the initial judicial resistance in this and similar
cases, the laws preventing public deception (the tort of passing
off, and our Fair Trading Act 1986) can be exploited by celebrities
for the purposes of image control.
Key will be whether the use of the image wrongly creates a
public perception of a celebrity endorsement. While some may be
deterred, it is likely that clever marketers here and abroad will
be looking at how to keep using celebrity images without creating
that possibility of association.
The information in this article is for informative purposes
only and should not be relied on as legal advice. Please contact
Chapman Tripp for advice tailored to your situation.
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