Rihanna 2 – 0 Topshop

In November last year, we blogged about the appeal that was underway in the litigation between Rihanna and Topshop.

In that judgement, handed down on 22nd January, the Court of Appeal affirmed the decision of the trial judge and found that Topshop’s sale of a t-shirt bearing a photo of the pop star, without her permission, constituted passing off.

Whilst the above summary may imply that the courts are moving towards recognising an enforceable image right, in reality, the case does no such thing.

Not only did the Court of Appeal, like the trial judge, ground their reasoning firmly in the doctrine of passing off (whilst providing useful analysis of its operation within a modern commercial context) but they also made it clear that the case does not provide a sure-fire mechanism by which celebrities can prevent commercial use of photos taken of them.

The Facts

Rihanna is an extremely successful pop singer who is well known not only for her music but also for her edgy style. Like many other celebrities, she also runs a very large merchandising and endorsement business. In addition, she has made considerable efforts to promote herself in the fashion industry, through her past involvement with H&M, Gucci and Armani, thereby seeking an association with that industry.

Topshop is a well-established fashion retailer with a worldwide reputation, selling affordable fashion on the high street and online. The t-shirt at the centre of this dispute was sold by Topshop from 6th March 2012 to 13th August 2012 and featured a photograph of the singer taken at the shoot of a promo video for one of her singles (“We Found Love”).

Topshop had previously obtained a licence from the photographer to use the photo in question – copyright in the photograph itself (which belonged to the photographer) was not in issue. Around 12,000 of those t-shirts were sold.

To establish that passing off has occurred a claimant must demonstrate three things:

1. That s/he has goodwill or reputation attached to goods or services which the purchasing public associate with the claimant, such that the name or get up is recognised as distinctive of the claimant’s goods or services;
2. That the defendant has made a misrepresentation leading the public or likely to lead the public to believe that goods or services offered by the defendant are the goods or services of the claimant; and
3. That the claimant has or is likely to suffer damage as a result of that misrepresentation.

Rihanna contended that she had a reputation and goodwill in connection with her business activities and that the use of her image on the t-shirt amounted to a misrepresentation which was likely to deceive the public into believing it was approved of and authorised by her.

In agreeing with her, the Court of Appeal, like the trial judge, placed emphasis not only on a perception of Rihanna as a style icon amongst her fans but also on earlier promotional activities of Topshop in publicising and promoting a connection with the pop star.

Two such instances feature in the judgement – a competition run by Topshop in 2010 for one of its customers to win a styling consultation with Rihanna and also a tweet sent by Topshop when Rihanna visited Topshop’s flagship store in Oxford Street in February 2012.

In addition, the Court of Appeal held that the trial judge was entitled to take into account the fact that the photo in question had been taken whilst Rihanna was filming a promotional video for her then-current single and that similar images to that in the photo had been used not only in that video but also in Rihanna’s current album.

The Court held that the nature of the photo might therefore have been taken to have been an authorised publicity shot and that the trial judge was entitled to find that the relationship between the image on the t-shirts and the images for the album and video would be noticed by the singer’s fans.

Comment

Clearly, this case is good news for Rihanna but its overall impact should not be overestimated. Image rights remain unrecognised as an enforceable right within the UK and the appellate court was quite clear that it is not a foregone conclusion that the use of a name or an image of a celebrity would lead the public to assume that the products to which that name or image was applied were authorised by the celebrity in question.

As ever, the particular facts of each case will have to be considered carefully. It’s interesting that one of the appellate Judges, Lord Justice Underhill, considered that this case was ‘close to the borderline’ and that he did not consider that absent either Rihanna’s past association with Topshop or the link between the photo and Rihanna’s own promotional material that the case would have succeeded. For Lord Justice Underhill, Rihanna’s past association with Topshop was the less important of those factors.

Had Topshop used a different image of the singer, the result of this case could perhaps have been quite different.