By Darren Meale
Robyn Fenty — Rihanna to most of us — enjoyed victory in the English High Court earlier this year when she succeeded in stopping High Street fashion retailer Topshop from selling an unauthorised t-shirt bearing her image. 12,000 units of this t-shirt were sold, most at £22 each.
Some retailers sell clothing and accessory ranges endorsed by celebrities in carefully choreographed commercial partnerships, such as LK Bennett’s link-up with Rosamund Pike and Dorothy Perkins’ Kardashian Kollection. Some of that gear will bear the name or image of the celebrity. On other occasions, products bearing the likeness of a celebrity, such as the t-shirt in this case, will be created and marketed without the involvement or consent of the celebrity. Here, the t-shirt was entirely unauthorised. The image itself was acquired legitimately from the photographer who took it during a photoshoot for the video to Rihanna’s single “We Found Love”. Rihanna thus had no claim for infringement of copyright. Nor did she attempt to rely on any privacy laws.
Instead Rihanna relied on trade mark and “passing off” law. She claimed that the sale of the t-shirt gave the false impression to the public that she had endorsed or authorised it. The sale damaged the goodwill she enjoyed in her image and robbed her of the royalties and other income she would have commanded had she agreed to the t-shirt’s production.
In considering her claim, the judge in the High Court, Mr Justice Birss, was cautious. There is no distinct “image right” in English law which allows celebrities and other high-profile figures to control the use of their name and likeness. Instead, those with valuable personalities have had to rely on one or more of trade mark, passing off, copyright, and privacy laws. So far as passing off is concerned, the celebrity has to prove they enjoy “goodwill” in their image — essentially public recognition linking it to them; that the public is deceived by the t-shirt into thinking that the celebrity authorised it — so the t-shirt involves a “misrepresentation” — and that such misrepresentation causes the celebrity damage. The judge decided that the burden was on Rihanna to prove the key requirement; that there was a misrepresentation. He noted that it was “certainly not” the law that “the presence of an image of a well known person on a product like a t-shirt can be assumed to make a representation that the product has been authorised.”
However, having considered all the facts in this case, he found in favour of Rihanna and agreed there was a misrepresentation.
Topshop didn’t just put Rihanna’s image on a t-shirt. They had made a considerable effort to emphasise a connection between them and Rihanna. They ran a competition for a personal shopping appointment with Rihanna. They tweeted when Rihanna visited its flagship store. They made other statements on social media. Topshop sought “to take advantage of Rihanna’s public position as a style icon.” Coming from the video photoshoot, Rihanna fans and Topshop customers might think the image used on the t-shirt was part of the marketing campaign for the track and associated album. So taking everything into account, the judge felt that a substantial portion of those considering buying the product — namely, Rihanna fans — would think that the garment was authorised. As fans, they regarded Rihanna’s endorsement as important. “She is their style icon,” the judge remarked.
As a “cool” celebrity and style icon, Rihanna clearly enjoyed goodwill in her image, having worked with H&M, Gucci, Armani, and River Island to collaborate on and/or design clothing. Damage was obvious as noted above. The judge therefore held that Topshop was committing passing off, and Rihanna was successful. The judge’s concluding paragraph begins “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.” So although celebrities may see the decision as supporting their attempts to control their image, the judge was sure to establish that the general rule — or perhaps the starting point — was against them.
Nevertheless, fashion and a number of other types of retailers (such as the card shops which sell celebrity face masks or greetings cards with celebrities on them) should pay close attention to this judgment. It might be acceptable in principle to apply celebrity images to one’s products, but one should not do it without giving careful consideration to the impact that application will have to a customer’s impression of the manufacturer’s relationship with that celebrity. This is particularly important if a business already has some association, however limited, with the individual in question.
It is interesting to consider on what basis the judge reached his decision that Rihanna fans would be deceived. Trade mark infringement and passing off cases often consider direct evidence from members of the public, so the judge can see first hand whether people are confused. In recent months, the English courts have become resistant to this kind of evidence; or rather the manner in which it is collated – by “witness collection exercises”. Lawyers have been left scratching their heads to how to prove to the judge whether or not people are confused. Perhaps as a result of this judicial attitude, there was no evidence from confused consumers in this case. Instead, the judge had to put himself into the mind-set of a 13- to 30-year-old female and decide what they would think. Sensible and appropriate as Mr Justice Birss’s judgment was, one might think there must be benefit in judges hearing something from the very public which passing off law is designed to protect (along with traders’ goodwill) before coming to their decisions.
Darren Meale is a senior associate solicitor specialising in intellectual property litigation. He was previously at Dentons in London and will soon join Simmons & Simmons. He also sits as a Deputy District Judge in the County Court. He is the author of “Rihanna’s face on a T-shirt without a licence? No, this time it’s passing off” in Journal of Intellectual Property Law & Practice, available to read for free for a limited time.
Journal of Intellectual Property Law & Practice (JIPLP) is a peer-reviewed journal dedicated to intellectual property law and practice. Published monthly, coverage includes the full range of substantive IP topics, practice-related matters such as litigation, enforcement, drafting and transactions, plus relevant aspects of related subjects such as competition and world trade law.