Who: Robyn Rihanna Fenty, Roraj Trade LLC, Combermere Entertainment Properties LLC, Arcadia Group Brands Limited, Top Shop/Top Man Limited.
Where: Court of Appeal
When: 22 January 2015
Law stated as at: 28 January 2015
What happened:
The Court of Appeal has upheld the decision of Justice Birss at the High Court in finding that the sale by the appellants (collectively “Topshop”) of a t-shirt bearing Rihanna’s image amounted to passing off.
Background
In 2012 Topshop sold a t-shirt containing an image of Rihanna which was taken when she was recording the video for a single from her “Talk Talk” album. Rihanna subsequently sued Topshop for the use of her image on the t-shirt, claiming that this amounted to passing off. Her claim was based on the fact that she had not licensed the use of her image in relation to fashion clothing and that a substantial number of people buying the t-shirt would think that she had endorsed it. Topshop disagreed and argued that Rihanna was in effect claiming an image right – which is not recognised under English law.
Rihanna was very active in the fashion sphere. Further, Topshop had taken steps to emphasise its connection with Rihanna. For example, in 2010 it ran a shopping competition in which Topshop offered entrants the chance to win a personal shopping trip with Rihanna at its flagship Oxford Circus store. In addition, Topshop frequently put out publicity material referring to Rihanna which included posts on its Twitter feed commenting on Rihanna’s visit to their Oxford Circus store.
High Court decision
Birss J, at first instance held that, the mere sale of a t-shirt bearing an image of a celebrity does not in itself amount to passing off. However, due to the circumstances surrounding the image and the specific relationship between Topshop and Rihanna, he found that a substantial number of consumers were likely to be deceived into buying the t-shirt because of a false belief that it had been authorised by Rihanna.
The Appeal
On appeal, Topshop claimed, inter alia, that the judge had wrongly proceeded on the basis that there was no difference between an endorsement case and a merchandising case. Kitchin LJ, giving the leading judgment in the Court of Appeal, held that he was satisfied that the judge gave proper regard to the distinction between endorsement and general character merchandising. He said that the judge considered all the principles of both merchandising and endorsement and then held that on the facts in question, the use of the image would indicate that the t-shirt had been authorised and approved by Rihanna.
Kitchin went on to reject Topshop’s other grounds of appeal – whilst he did find that there was some weight in Topshop’s argument that the judge focussed on an expression of opinion by one of the witnesses having earlier rule that it was argument, ultimately this was found not to have affected the conclusion the judge came to.
The other Court of Appeal judges agreed with Kitchin’s finding, with Lord Justice Underhill noting that he felt that this case was “close to the borderline”.
Why this matters:
Rihanna’s success was not merely due to her celebrity or her “look” but the fact that there was a past public association with fashion design and Topshop, and the image had been used in the publicity for one of her albums, so fans were all the more likely to think it was approved.
So whilst other celebrities might look to the decision eagerly as a signal that they can easily protect their image under English common law, in reality they will face quite a challenge as liability for the tort of passing off is not easy to establish. However, the case does underline that advertisers and marketers should proceed with caution when making any reference to recognisable personalities in advertising without their consent.
