As Fashionista-in-Law has previously reported here, in 2013 Rihanna succeeded in preventing Topshop from selling t-shirts bearing the pop star’s image based on a claim of passing off. The High Court (Justice Birss) held that Rihanna had demonstrated a reputation and goodwill in connection with her business activities relating to her image as a style leader and by using the image on fashion t-shirts Topshop had misrepresented that she had authorised such use.
In this latest bout between the pop star and the well-known high street retailer, the Court of Appeal (LJ Kitchen) dismissed each of Topshop’s four grounds of appeal:
- Endorsement versus Merchandising
Topshop claimed that J Birss did not differentiate between endorsement and merchandising. LJ Kitchen held that J Birss had explained the difference between the two concepts and that this was a case of merchandising, not endorsement. Furthermore, it was not a necessary feature of merchandising that consumers will think that products are endorsed by the celebrity. To establish a claim in passing off It was important that the claimant have a relevant goodwill, that the actions complained of give a false representation that there is a connection between the claimant, that the goods suggest that the claimant is responsible for these goods and that such a representation plays a role in the purchaser’s decision to buy the product concerned.
- Use of recognisable image not passing off
Topshop submitted that J Birss had failed to recognise that selling a garment with a recognisable image of a famous person does not, in and of itself, amount to passing off. Finding that Topshop’s claim was misconceived, LJ Kitchen reiterated that while Rihanna has no absolute right to prevent use of her image per se, use of the particular image on fashion t-shirts sold by Topshop amounted to a misrepresentation that the t-shirt had been approved or authorised by Rihanna. The issue was not that Topshop simply used the image but rather that they had used it in such a way that caused a misrepresentation.
- Assessment of relevant public
Topshop argued that J Birss had placed undue weight on the perception of those consumers who were likely to believe the t-shirts were endorsed by Rihanna but should have assessed the claim in relation to consumers who were unaware of the t-shirts’ origins. LJ Kitchen held that it would be impossible to assess the passing off claim without taking into consideration the background of the specific case. As the t-shirts were sold through Topshop’s stores, it was necessary to assess the public as comprising both fans of Rihanna and those who shopped or were likely to shop at Topshop’s stores. Accordingly J Birss was required to consider Topshop’s past relationship with Rihanna to promote and publicise its connection with Rihanna’s reputation as a style icon, which contributed to the finding that use of the image constituted a misrepresentation.
- Passing off not properly alleged and not supported by evidence
Finally, LJ Kitchen rejected Topshop’s claim that Rihanna had not clearly alleged or developed a case that the image used on the t-shirts was distinctive owing to its use in marketing or promotional activity and that there could be no misrepresentation as a result. Rihanna had clearly alleged in her statement of claim and in the witness statements submitted that the use of the image was unauthorised and that it was taken during the filming of her music video for one of her singles. The image would likely lead to the assumption that the image on the t-shirts was an authorised use of the publicity shot of her recent musical release. Topshop’s sale of t-shirts with Rihanna’s image therefore amounted to passing off.
Take away points
What this decision highlights is that, while no image rights exist under English Law, unauthorised use of images of famous people on merchandising may be prevented under the law of passing off, irrespective of the copyright position. Whether a claim in passing off can be made out will depend on the nature of the image concerned, the reputation of the celebrity as well as how the image is used. Arguably the outcome of this case may have been different if the image had not been used by Rihanna to promote her album and single. However, given Rihanna’s reputation as a style icon which she used to endorse products, unauthorised use of her image on fashion garments, regardless of whether the image had been used to promote her video, music or otherwise, may still have been prevented under the law of passing off if it created the impression of authorisation or endorsement.
To stay on the safe side, brands should avoid using images of celebrities on their apparel, particularly where those celebrities have endorsed their own range of apparel, or licensed others to use their image on third party apparel.