Topshop Liable For ‘Passing Off’ By Using Rihanna’s Image

Not only is Rihanna extremely successful when it comes to selling records, but she has also become one of the world’s most famous fashion icons! Like many other celebrities, Rihanna has created her own brand which includes clothes, make-up and perfumes and she has certain registered trademark protection for her name in relation to those products. However, when high street store Topshop was selling a t-shirt bearing Rihanna’s image, that protection would not prevent them from doing so.

UK Intellectual Property laws do not recognise that a person has an exclusive right to protect their own image, but there are various stand-alone Intellectual Property rights which can be drawn upon for protection.

Topshop had said the image for the t-shirt was provided by way of a licence from the photographer who took it. For the purposes of Copyright, in most circumstances that may be acceptable; the person who took the photograph would be the author and would likely own the copyright in the image. However, that does not protect a party from the tort of Passing Off, which is what the High Court found in July 2013.

So providing the requirements have been met, (so if you are famous enough!) an image may be protected in this way. The criteria for a claim in passing off was laid down in the case of Reckitt & Colman Products Ltd v Borden Inc [1990] 1 All E.R. 873. The Claimant must have built goodwill in their image; the Defendant must have made a misrepresentation that creates an association between his goods and the Claimant; and the Claimant will likely be caused damage.

In the Judgment Birss J discussed various ways Rihanna’s business activities in the world of fashion had built her up goodwill. Through her companies, she runs a large merchandising and endorsement operation. She made an effort to promote a specific association in the public mind between her and the world of fashion.

In 2010 and 2011 for example Rihanna authorised goods which were available in Topman (part of the same Arcadia group); Topshop had a shopping competition to win a personal shopping appointment with Rihanna at their flagship Oxford Circus store; and in February 2012 Topshop also tweeted that they had a visit from Rihanna. River Island had also an agreement with her to design clothing to be sold in their stores.

In discussing the market generally, the Judge accepted there was a cross-over between garments sold as authorised merchandise associated with musicians and their tours, which are of a particular character and use cheaper techniques like screen printing, and the high street fashion market which is more design-led, based on current trends and generally of higher quality. However it was accepted that the fact it was a fashion garment did not mean that it was unlikely to be authorised or endorsed by someone else, and Birss J concluded 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.

When considering misrepresentation, Topshop argued there was nothing on the t-shirt which would lead the public to believe that it was an official item of Rihanna. However, the Judge said that ‘the public links between Topshop and famous stars in general, and importantly the links to Rihanna in particular, will enhance the likelihood in the purchaser’s mind that this garment has been authorised by her’.