Robyn Rihanna Fenty v Arcadia Group Brands Ltd (t/a Topshop), High Court
The High Court has concluded that Topshop’s sale of T-shirts bearing a photograph of Rihanna, a well-known popstar, without her permission amounted to passing off. However, this would not necessarily always be the case, and the fact that it found in the celebrity’s favour on this occasion was due to the particular facts – notably that based on the surrounding circumstances people would believe that she had endorsed the use of the image. This was different from a concept of simply enabling people to protect all rights in their image.
So what happened here? In early 2012, Topshop started selling a t-shirt with an image of Rihanna on it. Topshop had secured a licence to use the image from the photographer who had taken the photograph, but had secured no consent from Rihanna. Rihanna subsequently issued a claim against Topshop claiming that use of her image without permission was infringing her rights and amounted to passing off.
The High Court judge made the following comments:
- The case was not concerned with image rights. There was no right in England for a famous person (or anyone else) to control the reproduction of their image;
- There was nothing in law to prevent a case of passing off being made out in a false endorsement case. This was to include mechanising as there was no difference in law between endorsement and mechanising;
- Merchandising rights had been considered by an English court previously and despite a previous case concluding that mechanising rights did not exist in English law, a more recent case concerning character mechanising had, however, opened the door to consideration that goods bearing the image of a famous person were often considered by the public to be licensed. The decision as to whether this applied in law was always one of fact. Courts were to consider the nature of the relevant market and the perceptions of relevant customers on the facts of each case. The judge made an important point that it was not the law that the presence of an image of a famous person raised an automatic assumption that the product was authorised;
- A misrepresentation was required for a passing off claim to succeed. The judge considered a number of points when looking at misrepresentation, including consumer awareness of an artist authorising mechanising, that there were many sales of unauthorised mechanise bearing Rihanna’s image, that Topshop was more likely to sell products endorsed or authorised by celebrities (because of Topshop’s actions generally), the connection between Topshop and Rihanna and the fact that the particular image used was based on a photograph taken during a video shoot for a Rihanna single and similar to that used on an album cover so that fans of the star may think the image (and t-shirt) was therefore part of the marketing campaign for that project; and
- Rihanna was a world famous pop-star and operated a large mechanising and endorsement business, including the sale of garments and there was a clear association between the star and the fashion industry. Rihanna therefore had ample goodwill to establish this element of a passing off action.
The star’s claim was therefore successful.
This case is particularly interesting as it is the first case in a while to consider a claim for passing off for use of a celebrity’s image on mechandising. The judge in this case, however, stressed that the judgment was not an open invitation to celebrities to bring similar claims and underlined that “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.” Serious consideration of the facts of each case should therefore be taken before launching a similar claim. In addition, with Topshop considering an appeal against the decision, this may not be the last we hear on the subject.