In July 2013 the UK High Court held that the sales by Topshop of T-shirts containing an image of Rihanna without the famous pop star’s consent amounted to passing off. There was an appeal which was handed down by the Court of Appeal yesterday – 22 January 2015. The judgment demonstrates just how fact-dependent passing off actions are and that they habitually fall to be decided on evidential details.
This is an interesting case which concerns image rights and the ability of famous people to prevent others using their names or images on products without their consent. In English law there is no “image right” or “character right” which allows a celebrity to control the use of his or her name or image. In the words of Lord Walker, “Under English law it is not possible for a celebrity to claim a monopoly in his or her image, as if it were a trademark or brand. Nor can anyone (whether celebrity or nonentity) complain simply of being photographed.…”.
The ability to protect images is derived from a bundle of rights such as breach of contract, breach of confidence, infringement of copyright or, as in this case, passing off. The law of passing off can be invoked to prevent the unauthorised use of a name or likeness of a famous real or fictitious person provided certain requirements are met. In this case Rihanna had to show that (1) she had a reputation and goodwill in connection with her business activities; (2) that the use of her image on the T-shirt amounted to a misrepresentation which was likely to deceive members of the public into believing it was approved of and authorised by her, and (3) that she suffered damage as a result.
In Rihanna’s favour was that the law of passing off has developed over the years and the courts recognise that it is common for famous people to exploit their images through endorsement. A number of cases involving amongst others, former motor racing driver Eddie Irvine, Michael Douglas and Catherine Zeta Jones, and on the character merchandising side the Teenage Mutant Ninja Turtles highlight this fact. It by no means follows that simply because the name or image of a celebrity appears on a commercial product the public will assume it has been endorsed by the celebrity. But there is a tricky balance to be found – is the name or image descriptive of the goods or distinctive of the source?
A matter of fact
Rihanna’s case was that that the public would be deceived into believing that the T-shirts sold by Topshop were approved by her. Topshop said that customers bought the T-shirt because they liked the product and image; it was a high quality fashion-led garment which was very different from standard pop star merchandise and that there was nothing which represented it as Rihanna’s official merchandise, which often contained a distinctive “R slash logo”, and the relevant public would not think it was.
The Claimants were held to have sufficient goodwill at the commencement of the legal proceedings. In a nutshell Rihanna was by 2012, when Topshop’s sales commenced, a very famous and recognisable pop star with, importantly, her own substantial merchandising and endorsement business. Rihanna’s companies had an agreement for her clothing designs to be sold in another high street store.
In addition, it was evident that young people, particularly women between the ages of 13 and 30 were interested in Rihanna’s views on fashion and if they see her wearing or approving an item of clothing they think, often, that it has been endorsed by her.
The crucial element in a passing off action is usually the second limb – whether there has been a misrepresentation – and so it proved here. Interestingly there was no actual evidence of confusion in this case but whilst this was relevant, it was not determinative. Arcadia, the owner of Topshop, had in fact sold authorised goods bearing Rihanna’s name in another store in its group but it did not have a licence from Rihanna to use the image in question. Ironically, Topshop had obtained a licence from the owner of the copyright in the photograph which it had used on the offending garment.
Topshop goes to great lengths to emphasise its connections with well-known stylish people and had in the past publicised two events involving Rihanna including a personal shopping appointment with her at the flagship Oxford Circus store. The events underscore that Topshop had sought to exploit Rihanna’s reputation and this helped to clarify how the impression created by the T-shirt had to be considered.
Also, the image of Rihanna was a striking one and was taken from the video shoot for the “We Found Love” single from the 2011 “Talk That Talk” album. Because of the publicity surrounding the shoot the judge thought that the image would be taken by Rihanna’s many fans as part of the publicity material for the album and therefore approved by Rihanna. This was important because it might well motivate many fans to buy the product.
In terms of damage to goodwill the judge said that as 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 then that would obviously damage her goodwill. It would result in a loss of sales to her merchandising business and also represent a loss of control over her reputation in the fashion sphere.
The Court of Appeal
The Court of Appeal rejected Topshop’s various arguments that the judge had got it wrong. The arguments were largely directed at the fact that there was no misrepresentation in circumstances where commercial enterprises were fundamentally able to use images of famous people on products, and that the image in question was not distinctive. The Court emphasised that there is no inconsistency between the lower court’s finding of passing off in this specific case and the proposition that Rihanna has no absolute right to prevent traders selling garments carrying her image.
Passing off is a wonderfully fluid tort which is a powerful tool in the appropriate circumstances. However, as the Court of Appeal has emphasised once again – it is all about the evidence. One of the three appeal judges, Lord Justice Underhill, whilst agreeing with Lord Justice Kitchin, said that it was a borderline case which essentially fell to be decided on the evidence of Rihanna’s past public association with Topshop and the particular features of the image used, which was apparently posed and shows her with the very distinctive hairstyle adopted in the publicity for Talk That Talk. Whilst not convinced that these two factors were sufficient Underhill LJ could not depart from the careful analysis of all of the evidence in the lower court which suggested a false representation which, in the court’s opinion, had impacted on the purchaser’s decision to buy the product.
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