Can a fashion retailer take a photograph of a celebrity, print it on a t-shirt and sell it without the celebrity’s approval? Yes, but sometimes no – not when the retailer has previously gone out of its way to draw a connection between its products and that celebrity; in this case Robyn Fenty, aka Rihanna.
How did this begin? Rihanna released her sixth album, Talk That Talk, in 2011. One of the singles was We Found Love. Photographs were taken of Rihanna at the shoot for the video to the single. The photographer, who was legitimately entitled to the copyright for the photographs, licensed one of them to Topshop which printed this t-shirt and sold it in its shops and online in 2012.
Because the image was licensed, there was no question of copyright infringement, and Rihanna did not own the copyright in any event.
Rihanna, and the companies that had been set up to exploit her image, did not let that stop them going after what they considered to be unauthorised merchandise. In the English High Court in 2013, Mr Justice Birss found in Rihanna’s favour when he decided that Topshop had committed the tort of passing-off, and caused damage to Rihanna’s goodwill.
Unhelpfully for practices trying to advise clients on what they can and can’t do, Mr Justice Birss concluded:
“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 the sale of this image of this person on this garment by this shop in these circumstances is a different matter…”
Topshop took the case to the Court of Appeal, but early in 2015 found out that it had lost again, with the appeal court upholding the High Court’s finding of passing-off.
Passing-off traditionally protects the goodwill a trader has in its business – usually through a name or perhaps a logo or get-up. It is often cited as protecting trade marks which have not been registered and so cannot avail themselves of the protection of trade mark law.
The tort has three ingredients:
- Goodwill – i.e., customers know of your business by its name, logo or get-up.
- A misrepresentation – a third party has misrepresented to the public that its goods or services are connected to yours, often by using the same or a similar name, logo or get-up.
- And finally, that misrepresentation has caused you damage.
Establish all three, and the court will order an injunction and require that the offending party compensate you.
Passing-off its part of the English common law, developed by judges over time, and thus is capable of evolving, and has evolved, to reflect changes in business and consumer behaviour. One area into which it has developed is to provide protection against false endorsement. In 2002, Talksport radio was found liable for passing-off when it doctored an image of F1 driver Eddie Irvine to show him holding a Talksport-branded radio, and used that image in advertising.
Rihanna was held to have goodwill in her image. Damage to that goodwill would include a lost licensing opportunity for the t-shirts. The key issue for the Court was whether there was any misrepresentation: the High Court judge stated 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.” So Rihanna needed to establish something more than just the fact of the t-shirt if she were to win her case.
Fortunately for Rihanna, Topshop didn’t just put her image on a t-shirt. It had made a considerable effort to emphasise a connection between the business and Rihanna. Topshop ran a competition for a personal shopping appointment with Rihanna. It tweeted when Rihanna visited its flagship store. It made other statements on social media. Topshop sought “to take advantage of Rihanna’s public position as a style icon.” Coming from the video shoot, 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. Passing-off was therefore established.
The Court of Appeal agreed. It explained the two critical hurdles that must be overcome by a claimant in Rihanna’s position: (1) the application of the name or image to the goods must tell the consumer a lie; and (2) the lie must be material – it must induce consumers to buy the product. The Court of Appeal was satisfied the trial judge had these important principles in mind and that his application of the facts to them was appropriate. With no findings of errors of principle, the Court of Appeal unsurprisingly upheld the trial judge’s decision. The Court of Appeal does not like to interfere with findings of fact from a lower court, providing everything else is above board, and this was no exception.
One of the three Lord Justices of Appeal added a remark at the end of the judgment that he felt the case was “close to the borderline” – and that it was only open to the trial judge to conclude as he did because of the combination of Rihanna’s past association with Topshop, and the nature of the image used, being one tied in with publicity for Talk That Talk.
There is a caution in both courts’ judgments: they were very clear that they were not attempting to extend the law of passing-off into the realms of a right of personality or image right – there is no such right in English law. Passing-off is flexible, but the vital ingredients remain and Rihanna only succeeded because the particular peculiarities of the image used and her relationship with Topshop put her in a different position to that in which many other celebrities whose images are used in this way are likely to be.
So it’s a good reminder for designers and retailers, but as much as it might be hailed by those with an image worth protecting, it’s also a conservative and cautious decision, heavily reliant on the peculiar facts. It is unlikely to herald a rash of t-shirt cases any time soon.
Featured image: ‘Justice isn’t blind, she carries a big stick’, by Jason Rosenberg. CC-BY-2.0 via Flickr.