The use of the pop singer Rihanna’s image on T-shirts sold by Topshop has been found to amount to the English tort of passing off. The T-shirts went on sale in March 2012 and bore a photograph of Rihanna taken during the filming of her “We found love” video in 2011, which was subsequently used for a marketing campaign for the single and the “Talk the Talk” album. The photograph was taken by an independent photographer, who had provided a licence to Topshop to use the image but the retailer did not have a licence, nor consent, from Rihanna, to commercially exploit the image. As the singer wore the same clothes and hairstyle in the video as in the photograph, Rihanna’s fans would have recognised the image and may have associated it with the marketing campaign for the related single and album – creating a misrepresentation that the product was officially authorised by or associated with the singer. An important background fact is that English law does not currently recognise the concept of ‘image rights’ as such. Furthermore, there was no privacy law issue engaged in this case. It proceeded solely on the basis of passing off, namely that consumers would wrongly believe that the T-shirts were officially authorised by Rihanna herself, when in fact they were not.

Goodwill and Reputation

As an internationally recognised pop star, Rihanna was found to have substantial goodwill, which extended into the area of fashion and was sufficient in 2012 on which to base a claim for passing off. Rihanna, at that stage, had already produced a range of merchandise and was heavily involved in fashion having done promotional work for Gucci and Armani and having signed an agreement to design clothing for the UK clothing retailer River Island.

“The scope of her goodwill was not only as a music artist but also in the world of fashion, as a style leader”.

Decision, Paragraph 46.

Misrepresentation of Image

The Court found that the use of the image on the T-shirts did amount to a misrepresentation by Topshop that it had been authorised by the artist and would have motivated a substantial proportion of consumers, namely fans of Rihanna, into purchasing the T-shirts in the mistaken belief that Rihanna had authorised them. See the Court’s Decision. Whilst some consumers motivated to buy the product may have bought it simply to get an image of the singer, some would have been induced into buying the product based on this misrepresentation. The perception of the product being officially authorised would have also added to the perceived value of the product. Topshop argued that there was no proof of any confusion, nor were there any comments posted on the Topshop website that indicated consumers had thought that Rihanna had authorised the T-shirts. This was a point in Topshop’s favour but, alone, not sufficient to decide the case. The Court was not impressed by Topshop’s argument that the T-shirts in issue were very fashionable, design-led garments and so the public would not think they were officially authorised artist merchandise, which it characterised as generally being plain T-shirt ‘blanks’ with the artist and tour dates screen printed on them. It also rejected Topshop’s argument that, as there were many other items of unauthorised clothing available on the market from other retailers bearing Rihanna’s image, the public would not just assume that the Topshop t-shirt was authorised by the singer. The Court also noted that many of these other products might also be infringing rights of one type or another, so seeking to rely upon them to excuse Topshop’s actions would not help. The fact that the retailer was Topshop – which had previously worked to establish links with famous people – was likely to have increased the likelihood of consumers thinking that the product was authorised. Topshop had produced authorised garments (e.g. by Kate Moss) in the past and, unlike a market stall, the fashion chain had sought to emphasise endorsements by and links with famous people in the past – including with Rihanna. The absence of wording on the clothing’s labels to state that the T-shirt was authorised was insufficient to prevent the misrepresentation being made to consumers.

Damage

With consumers buying the T-shirt in the mistaken belief that it was authorised, sales of Rihanna’s official merchandise would have been damaged and this would represent a loss for Rihanna in control over her reputation in the fashion industry.

Comments and Implications

This case is the first to be reported, at least in modern times, in which a celebrity or famous person has successfully claimed for passing off in relation to the unauthorised use of her image. As with all passing off claims, this case turned on its own particular facts and on the perceptions of the relevant customers and the specific market. There should be no assumption that the law of passing off will necessarily apply to all unauthorised uses of the image of a celebrity or famous person. The specific market for the goods in question is a crucial factor as is the manner in which the celebrity exploits his or her image his or herself. Nevertheless, it serves as an interesting example of the breadth of what can be covered by the law of passing off, giving famous persons, in the right set of circumstances, the ability to use the common law to protect the commercial exploitation of their own image. Sources: Robyn Rihanna Fenty and others v Arcadia Group Brands Ltd (t/a Topshop) and another [2013] EWHC 2310 (Ch), 31 July 2013

This article was prepared by  Jonathan Ball (jonathan.ball@nortonrosefulbright.com / +44 20 7444 5560) of Norton Rose Fulbright’s Intellectual property group.