Last month, the Court of Appeal of England and Wales handed down its judgment in the highly publicised legal battle between pop star Rihanna, and fashion giant Topshop and its parent company Arcadia Group Brand Ltd (Topshop). The Court of Appeal upheld the High Court’s July 2013 decision that Topshop’s sale of t-shirts showing a photograph of Rihanna – without her consent – constituted passing off.
In 2013, Rihanna brought a claim against Topshop for damages of £3.3million ($5million) following the sale by Topshop (beginning in March 2012) of t-shirts featuring a photograph of Rihanna. The photograph in question was taken during a video shoot in 2011 by an independent photographer who, as the owner of the copyright in the photograph, had licensed the use of the image to Topshop.
As Rihanna had not given her consent, the singer contended that in the circumstances of the case, the presence of her image on the t-shirt amounted to a misrepresentation that she was associated with it, encouraging members of the public to buy it and resulting in damage to her reputation and goodwill as a ‘fashion icon’. She relied upon the particular image, the way it was presented and the nature of the t-shirt itself, together with the position of Topshop as a major and reputable high street retailer.
Topshop, on the other hand, argued that the t-shirt was simply an item of clothing and that customers purchased it because they liked the product and image. The retailer claimed that the t-shirt was a high quality fashion-led garment that was very different from standard celebrity merchandise, there was nothing which represented it as Rihanna’s official merchandise and nothing to cause the public to think it was.
In July 2013, the High Court decided in favour of Rihanna and found that the sale of that particular t-shirt by Topshop amounted to passing off because it was likely to lead people to buy it in the false belief that she had approved or authorised it. The High Court granted an injunction prohibiting Topshop from selling the garment without informing purchasers that it had not been approved or authorised.
Topshop appealed the decision on a number of grounds, alleging that the High Court fell into error in four respects including (i) a failure to differentiate between an endorsement case and a merchandising case and (ii) failure to recognise that the law of passing off treats the use on garments of such images as origin neutral. On 22 January 2015, the Court of Appeal’s three judges unanimously dismissed Topshop’s appeal and upheld the High Court’s decision.
The judgment is a landmark one and is the first successful celebrity case of its kind. It raises a number of interesting intellectual property issues including the extent to which the tort of passing off can be used by an individual as a mechanism to control the use of his or her image.
Both courts took the view that Rihanna’s allegations did present a substantial case in passing off and that each element of the action was satisfied. In his judgment in the Court of Appeal, Kitchin LJ explained that the law of passing off is not designed to protect a person against fair competition but what it does protect, however, is goodwill and it prevents one person passing off his or her goods or services as those of another. The court affirmed the views of Birss J in the High Court and found that:
- Rihanna had goodwill as both a music artist and as a ‘style icon’;
- A significant number of customers were likely to have been deceived into buying the t-shirt as a result of a false belief that it had been authorised by Rihanna or that it was official merchandise; and
- The sale of the t-shirt was damaging to Rihanna’s goodwill, amounted to a loss of sales of her merchandising business and resulted in a loss of control over her reputation in the fashion sphere.
Nonetheless, Kitchin LJ was mindful to note that it does not automatically follow that simply because the name or image of a celebrity appears upon a consumable commercial item, the public will assume that it has been endorsed by that celebrity.
A decision on the facts
The case was very much decided on the facts. Despite Topshop’s protests that the second limb of a passing off action was not satisfied i.e. that no misrepresentation had been made; the Court found that the following two features were decisive:
- Rihanna and Topshop had a previous association and Topshop had made considerable effort to emphasise that connection. Firstly, a shopping competition was run in 2010 in which Topshop offered entrants the chance to win a personal shopping appointment with Rihanna and second, a visit by Rihanna to Topshop in February 2012. These events show that Topshop had, in the past, recognised and sought to take advantage of Rihanna’s public position as a ‘style icon’.
- The image that appeared on the t-shirt was a distinctive one; it was taken during the video shoot for "We Found Love" in Northern Ireland in 2011 which received a high level of media attention at that time. Rihanna’s hairstyle and clothing in the image were that which was chosen for the promotional material for her 2011 album "Talk That Talk". The court held that this would have made it very likely that the image would be taken to be an authorised publicity shot.
However, Underhill LJ made it clear that he regarded the case as "close to the borderline" and considered that neither of the above facts alone would suffice, but that in combination they were capable of giving rise to the necessary representation.
The controversial and much-debated issue regarding the ability (or rather, inability) of individuals to control the use of his or her name or public image formed the basis of one of the grounds of Topshop’s appeal and featured in both the High Court and Court of Appeal dicta. Although on the face of it, it may seem that Rihanna has been granted a so-called "image right", both courts were eager to stress the "basic principle" that English law does not have such a free-standing right. Kitchin LJ instead advised that an individual seeking to control the use of his or her image must rely on some other cause of action such a breach of contract, breach of confidence, infringement of copyright or, as Rihanna did, passing off.
Both the High Court and the Court of Appeal were seemingly mindful to ensure that the floodgates remained firmly shut to the potential landslide of future claims by individuals with an apparently similar grievance to Rihanna. The question remains as to whether this pre-emptive strike by the UK courts is enough to distinguish the specific facts of Rihanna’s case and the particular circumstances surrounding Topshop’s actions from any potential claims? However, what is certain is that this landmark judgment will act as a warning to retailers to tread with caution when using individuals’ images without authorisation.
Robyn Rihanna Fenty and others v Arcadia Group Brands Ltd (t/a Topshop) and another  EWCA Civ 3