Who: Robyn Rihanna Fenty, Roraj Trade LLC, Combermere Entertainment Properties LLC, Arcadia Group Brands Limited (t/a Topshop), Top Shop/Top Man Limited, Mr Justice Birss
Where: High Court, London
When: 31 July 2013
Law stated as at: 2 September
What happened:
Rihanna brought a case against Topshop after Topshop started selling a t-shirt bearing an unapproved image of Rihanna in March 2012. As specific image rights do not exist under English law, the case was brought using the common law grounds of passing off. Mr Justice Birss was adamant in this judgment that, although he allowed the claim of passing off to succeed, there is still no free standing right in England for anyone to control the reproduction of their own image.
Elements of passing off
In order to prove passing off, Rihanna had to show that:
1. she has goodwill and reputation amongst members of the relevant public;
2. the use of her image on the t-shirts amounted to misrepresentation i.e. members of the public bought the t-shirt because they thought that she had authorised it; and
3. this misrepresentation as to the origin of the goods caused damage to her goodwill.
Merchandising, endorsement and passing off
Irvine v Talksport [2002] FSR 60 established the principle that, “provided the facts support it, there is nothing in the law to prevent a case of passing off being made out in a false endorsement case.” In addition, it has been established that, where goods are sold in a manner where customers falsely believe them to be official merchandise, then the misrepresentation aspect of passing off will be established.
However, the mere presence of an image of a celebrity on a product is not always a representation that the product has been authorised.
Passing off requires that the image engenders a false belief that the product was officially authorised and that this led to the public to purchase the product. This incorrect belief as to trade origin is essential in proving passing off in these circumstances.
Goodwill
Mr Justice Birss held that Rihanna did have goodwill in her image. This was further evidenced by her numerous endorsement agreements, including those with clothing manufacturers and sellers such as H&M and Armani. In addition he concluded that not all of this official merchandising contained references to her name of her R slash logo.
Mr Justice Birss concluded that Rihanna is seen as a style icon, especially by young females aged between 13 and 30. As such she had sufficient goodwill to succeed in the passing off action.
Misrepresentation
Misrepresentation was the key issue in this case. There was nothing on the t-shirt expressly stating that it was official Rihanna merchandise nor was there any evidence of customer confusion.
Therefore the judge had to assess the image and background and consider whether this led to confusion amongst the relevant public. In this instance these were Rihanna’s fans. Mr Justice Birss held that fans are aware of the prevalence of both merchandise and endorsement by musicians in the clothing market. Moreover they are aware that such goods are not always authorised by the artist.
However, Topshop have a reputation of celebrity collaborations such as that with Kate Moss. They also ran a competition to win a personal shopping appointment with Rihanna at their Oxford Circus branch in 2010. Moreover they have publicised material and images showing Rihanna wearing their clothes on social media sites to promote the Topshop brand. There are many links between Topshop and endorsement and/or merchandising in general and with Rihanna in particular.
The image itself was taken from a video shoot for Rihanna’s single “We Found Love” from the 2011 “Talk That Talk” album. This was shot in Northern Ireland and received a large amount of publicity at the time due to complaints over the content of the video. The image on the t-shirt showed Rihanna in the same outfit with the same hairstyle as the music video. This link would have been noticed by her fans and, as Mr Justice Birss stated, fans may have thought that it was part of her advertising campaign. This led the judge to conclude that:
“The mere sale by a trader of a t-shirt bearing an image of a famous person is not, without more, an act of passing off. However, a sale of this image of this person on this garment by this shop in these circumstances is a different matter.”
Damage
Once the judge had concluded that there was misrepresentation and a false belief that the t-shirt had been authorised by Rihanna, then it was implied that her goodwill would be damaged.
Why this matters:
This case does not change the English law position that celebrities do not have a free standing right to control the reproduction of their image. However, this is a rare instance in England of a celebrity succeeding in a passing off action and preventing the use of her image on this product. The finding is, however, very specific to these facts and parties and is not an indication that all celebrities would succeed against all defendants who used their image in this way.
Topshop are seeking permission to appeal so this is unlikely to be the last that we hear of this case.
