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The High Court has ruled that Topshop’s use of a image of pop star Rihanna on a t-shirt amounts to passing off. Mr Justice Birss did emphasise that the mere sale of a t-shirt featuring an image of a famous person was not in itself an act of passing off. However, the wider circumstances of the case (including Rihanna’s reputation in the fashion industry and Topshop’s history of working with celebrity style icons) meant that the court considered that a substantial number of consumers would be deceived into thinking that this was an authorised image.
In March 2012, Topshop started selling a t-shirt with an image of Rihanna on it. Topshop had a licence from the photographer to use the image, but the image was not authorised or licensed by Rihanna herself. Rihanna argued that the use of her image on the t-shirt amounted to passing off. There was no suggestion that Topshop may have infringed her right to privacy and it is important to remember that in the UK, there is no such thing as an “image right”.
The three basic elements of a claim in passing off have long been established and were set out in the leading case Jif Lemon in 1990. The claimant must demonstrate that:
The law of passing off had previously been held to extend to situations of false endorsement. In Irvine v Talksport Laddie J held that Eddie Irvine (a famous racing driver) had a property right in his goodwill which he could protect from unlicensed appropriation through a false claim or suggestion of endorsement.
Nonetheless, Mr Justice Birss emphasised that selling a garment with a recognisable image of a famous person on it would not in itself amount to passing off. In order to constitute passing off it is necessary for the false misrepresentation to play a part in the consumer’s decision to then purchase the product. On examining the particular circumstances of this case, the court found that a substantial number of consumers would be deceived into believing that the use of Rihanna’s image on the t-shirt was
authorised and that this would play a part in motivating their purchase.
The court first considered whether or not Rihanna had a goodwill and reputation attached to the goods in question. On hearing the evidence, the court acknowledged that the scope of Rihanna’s goodwill was not only as a music artist but also in the world of fashion, as a style leader. In particular, the court heard of Rihanna’s previous involvement in the fashion industry - Rihanna had promoted H&M’s Fashion Against Aids clothing collection and had collaborated with the likes of Armani and Gucci. She also entered into an agreement with River Island to design clothing to be sold in their stores. Mr Justice Birss said “The fact that River Island entered into the agreement shows that Rihanna’s identity and endorsement in the world of high street fashion was perceived in 2012 to have a tangible value by an organisation well placed to know”.
On considering whether or not Topshop’s use of Rihanna’s image was a misrepresentation, it is important to note that there was no evidence of any actual confusion, but that this was not determinative. The overall context was highly relevant. He noted that consumers today are aware that a celebrity may seek to engage in an endorsement deal in the clothing market, but that this did not mean that a garment bearing a celebrity image must necessarily have been authorised.
Also relevant was the fact that Topshop had previously sold celebrity-authorised products. For example, Topshop had very publicly collaborated with Kate Moss in the past. Conversely, Topshop gave evidence that its customers understood that some of its t-shirts with images of famous celebrities were not licensed by the celebrity in question. The court concluded that customers did not have any positive expectations either way and that such garments may or may not be licensed by the person depicted on them. However, the court also noted that Topshop made efforts to emphasise connections between the store and stylish celebrities. Rihanna had previously been connected with Topshop in a number of circumstances - for example, Topshop ran a competition to win a personal shopping competition with her in 2010 and had publicised the fact that Rihanna had visited their store in February 2012. Mr Justice Birss considered that a substantial number of customers would have been aware of these instances. Consequently, the public links between Topshop and famous stars in general, and in particular Rihanna, enhanced the likelihood that the purchaser might believe the garment to be authorised.
As to the image itself, the image was taken by a photographer during a video shoot for Rihanna’s music video for her single “We Found Love”. The single was hugely successful and the video gained a great deal of publicity as it was widely reported that the landowner of the shoot location had complained that Rihanna was wearing risqué clothing. In addition, images featuring on Rihanna’s Talk That Talk album were similar. Consequently, it was of note that to Rihanna’s fans who knew her work, the particular image might well be thought to be part of a marketing campaign.
In conclusion on the point of misrepresentation, Mr Justice Birss stated that:
“Although I accept that a good number of purchasers will buy the t-shirt without giving the question of authorisation any thought at all, in my judgment a substantial portion of those considering the product will be induced to think it is a garment authorised by the artist. The persons who do this will be the Rihanna fans… For those persons the idea that it is authorised will be part of what motivates them to buy the product.”
Mr Justice Birss’s judgment concludes that this misrepresentation would be damaging to Rihanna’s goodwill – it amounts to lost sales to her merchandising business and represents a loss of control over her reputation in the fashion sphere. Having made out all three elements of such a claim, Topshop’s sale of the t-shirt was therefore considered to be an act of passing off.
It is important to remember that the law of passing off recognises that goodwill may be limited to a particular section of the public and that for the purposes of assessing a misrepresentation, the relevant public should consist of the actual or potential customers of the claimant. Rihanna’s reputation in the fashion industry may not be widely known to the public at large, but is something that her fans are likely to be very aware of. Her fans are also likely to be aware of Rihanna’s previous connections with Topshop and this increased the likelihood that they may be confused. In addition, the threshold for creation of goodwill is relatively low and so the fact that there may only be a relatively small number of Rihanna fans as a proportion of the general public did not mean that Rihanna’s claim was bound to fail.
Despite the decision, it is clear that using a celebrity image on a garment will not in itself amount to passing off. The decision was made on the particular facts of the case, which are unusual. Whilst it is always necessary to exercise caution in using celebrity imagery, permission will not generally be required, provided that use of the image does not do anything to mislead the public as to a commercial connection with the celebrity. Of course, it will always be necessary to have the permission of the photographer or copyright owner.
For more information please contact Ian Wood, Partner
T: +44 (0)20 7203 5124