UK: Rihanna vs. Topshop: A Long-Awaited Success For The Celebrity Industry

Last Updated: 23 September 2013
Article by Lisa Broad

Well-known pop star and "style icon" Rihanna has succeeded in a High Court battle against high street fashion retailer Topshop. The court found that the sale by Topshop of t-shirts bearing an image of the singer, without her approval, amounted to passing off. Following previous similar failed claims by celebrities such as Abba and the Spice Girls, the ruling is the first time that a celebrity has succeeded in this country in a passing off case in relation to the use of his or her image on items of clothing.

Passing off and merchandising and endorsement: the law

The law of passing off requires the claimant to establish three elements: (i) goodwill attaching to goods or services; (ii) misrepresentation by the defendant to the public (whether or not intentional) leading the public to believe that the goods or services offered by him are the goods or services of the claimant; and (iii) damage caused to the claimant, by reason of the mistaken belief created by the defendant's misrepresentation. Where the three elements are present, a case for passing off should succeed 1.

The relationship borne by passing off to merchandising and endorsement has historically been problematic with the courts consistently finding that merchandising rights did not exist in English law. In 1977 the court held that use of the name of the pop group Abba on transfers and badges did not amount to passing off on the basis that there was no real possibility that the public would be confused into thinking that Abba had approved the goods merely because their name or photograph appeared on them 2 . Similarly, some years later, the use of a photograph of the Spice Girls on the cover of a sticker collection was held not to amount to passing off 3 .

A notable exception came in 1991 when it was held that passing off had been established where cartoon characters called the Teenage Mutant Ninja Turtles were used on clothing without authorisation, since the public did expect the goods to be licensed 4. This case was distinguished from the Abba case on the basis that it was brought in the context of the unauthorised reproduction of images of cartoon characters in which copyright subsisted, rather than the name or image of a celebrity. Nonetheless the decision is generally viewed as opening up character merchandising law in England.

It has been established that there is nothing in the law to prevent a case of passing off being made out in a false endorsement case provided that it is supported by the facts. In the deciding case 5, racing car driver Eddie Irvine was held to have a property right in his goodwill which he could protect from unlicensed appropriation consisting of a false suggestion of endorsement of a third party's goods or business.

In the decision that is the subject of this article 6 the High Court made it clear that there is no difference in law between merchandising and endorsement cases. In both, passing off will be established where the three elements of the test referred to above are present. The issue is however always one of fact, and the false belief of the purchaser is key: to constitute passing off, a false belief engendered in the mind of the potential purchaser must play a part in his or her decision to buy the product.

Facts

For a number of months in 2012 Topshop sold a t-shirt bearing an image of Rihanna. The image used was a so-called "third party image", meaning that it was taken by an independent photographer and, whilst Topshop had a copyright licence from the photographer to use the photograph, it did not have authorisation from Rihanna. Rihanna issued proceedings against Topshop contending that the sale of the t-shirt without her permission infringed her rights and, in particular, amounted to passing off.

High Court decision

The High Court reiterated that there were no such thing as "image rights" in English law: a person has no free-standing general right to control the reproduction of his or her image 7. The case was therefore concerned with passing off, and in his judgment Mr Justice Birss considered each of the three limbs of the test for passing off in turn.

(i) Goodwill

The court had little difficulty in finding that Rihanna had sufficient goodwill, both as a music artist and in the world of fashion, to satisfy the first limb of the test. She is a world-famous pop star, regarded by many as a style icon, who runs a large merchandising and endorsement operation and promotes a public association between herself and the fashion world, notably in agreements with Gucci, Armani and high street retailer River Island. Rihanna's endorsement in the world of high street fashion was clearly perceived to have tangible value by organisations well-placed to know. Rihanna's perceived approval of an item of clothing is an endorsement of that item in the mind of many people.

(ii) Misrepresentation

Misrepresentation was the key issue in the case. Topshop contended that the garment was simply a t-shirt bearing an image of Rihanna and that the public had no expectation that it was authorised by her. Rihanna submitted that in the particular circumstances of this case customers were misled into believing that she had endorsed the t-shirt.

The court considered the point in detail, addressing the various circumstances of the case before considering the issue as a whole.

The overall context: consumer awareness of authorised merchandising

It was clear to the court that today's customers were aware that celebrities engage in endorsement and merchandising activity in the clothing market. It was also clear that there were many garments on sale bearing Rihanna's image which had not been authorised by Rihanna. In the court's opinion, customers would not expect that any garment bearing a celebrity image must have been authorised by the individual depicted in the image, nor would they believe that any garment bearing an image of Rihanna would necessarily be unauthorised. Consumer awareness of authorised merchandising did not make it more or less likely that customers were misled when buying the t-shirts.

Topshop and Rihanna

The court found that Topshop's customers had no positive expectation either way with regard to endorsement by celebrities when they saw garments in the store carrying recognisable images.

Nonetheless, Topshop had made considerable effort to emphasise connections in the public mind between the store and celebrities, notably with Kate Moss and, importantly, Rihanna. In 2010 the store ran a competition in which entrants could win a personal shopping appointment with Rihanna at the flagship store. In 2012, just weeks before the t-shirt went on sale, Topshop publicised the fact that Rihanna was visiting the store via Twitter, emphasising that Rihanna was wearing, or thinking of wearing, Topshop clothing. Topshop was seeking to take advantage of Rihanna's public position as a style icon and such public links between Topshop and Rihanna would enhance the likelihood in the customer's mind that the garment had been authorised by her.

The t-shirt

The fact that the swing tag and label on the t-shirt made no reference to Rihanna or her 'R slash' logo was neutral. Customers would not assume that the garments were unauthorised simply because there was no express assertion that they were authorised.

The image on the t-shirt was taken during the video shoot for the single "We Found Love" from the 2011 "Talk that Talk" album. Significantly, it showed Rihanna with the same hairstyle and headscarf as the Talk That Talk album cover. This meant that the image was not just recognisably Rihanna but looked like a publicity shot for what was then a recent musical release. The court found that it was entirely likely that, to her fans, the image might be thought to be part of the marketing campaign for that project. This was an important point in the decision.

Misrepresentation: conclusion

The court concluded that, in the circumstances, a substantial portion of those considering the product (namely Rihanna fans) would be induced to think that it was a garment authorised by the artist. They would have recognised that particular image of Rihanna not simply as an image of her but as a particular image of her associated with the particular context of the Talk That Talk album. Many of these people would have bought the product because they thought that she had approved it; others would have bought it because of the value of the perceived authorisation itself. In each case, the idea that it was authorised was part of what motivated them to buy the product and in each case they would have been deceived.

(iii) Damage

The test for damage was easily satisfied. If a substantial number of purchasers were deceived into buying the t-shirt because of a false belief that it was authorised by Rihanna herself, then that would have damaged Rihanna's goodwill, both by way of sales lost to her merchandising business and a loss of control over her reputation in the fashion sphere.

(iv) Conclusion

The mere sale by a trader of a t-shirt bearing an image of a famous person does not, without more, constitute passing off. However, in the particular circumstances of this case, Topshop's sale of the Rihanna t-shirt without her approval was an act of passing off.

Comment

The decision is an important one. Whilst character merchandising claims have previously succeeded in relation to fictional characters, this is the first reported case in the UK in which a celebrity has successfully brought a passing off action to prevent third parties from using his or her image on merchandise without authorisation.

The High Court was keen to emphasise that the decision was made on the facts and the particular circumstances of the case were crucial to its outcome. It does not mean that a passing off action can be brought every time the image of a celebrity is used on merchandise without his or her permission. Nonetheless, it will please many in the celebrity industry. It recognises the earning potential in celebrity images and, despite its fact-based approach, gives celebrities a long-awaited precedent on which they can seek to rely when making similar claims in the future. Retailers, on the other hand, will need to be increasingly vigilant to ensure that they do not misrepresent celebrity endorsement of their products to their customers and therefore potentially open themselves up to passing off claims from celebrities who may have a substantial merchandising deal to protect.

There are reports that Topshop is considering seeking an appeal against the judgment. If an appeal is allowed, we could see yet further development of the law in this area which, many would argue, is long overdue.

Footnotes

1 Reckitt & Colman Products Limited v Borden Inc 1990 UKHL 12

2 Lyngstad v Anabas Products 1977 FSR 72

3 Halliwell & Ors v Panini & Ors (unreported)

4 Mirage Studios v Counterfeat Clothing 1991 FSR 145

5 Irvine v Talksport 2003 EWCA Civ 423

6 Fenty and others v Arcadia Group Brands Ltd (t/a Topshop) and another 2013 EWHC 2310 (Ch),

7 Douglas v Hello 2007 UKHL 21

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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