Court of Appeal: Topshop's use of Rihanna's distinctive image is unlawful

United Kingdom

In Fenty v Arcadia Group Brands Ltd ([2015] EWCA Civ 3, January 22 2015), the Court of Appeal has upheld a High Court judgment, finding that Topshop's unauthorised use of Rihanna's image on a t-shirt constituted passing off.

In 2012 the appellants (collectively Topshop, the well-known high street fashion retailer), sold a t-shirt bearing a recognisable image of the famous artist, Rihanna, which was derived from a photograph taken when she was on a video shoot for a single from her "Talk That Talk" album. The photograph, which shows Rihanna with her hair tied above her head in a head scarf and was used in connection with her album, was taken by an independent third-party photographer, who licensed the image to Topshop.

Rihanna did not own the copyright or any IP rights in the image, however she brought a claim against Topshop in the High Court, successfully arguing that its use of her image constituted unlawful passing off. Mr Justice Birss granted an injunction prohibiting Topshop from continuing to sell the t-shirt without clearly informing customers that it was not authorised by the artist. Topshop appealed this decision.

In the High Court, Birss J found that Rihanna had established the requisite elements of passing off - namely that :

  1. she had relevant goodwill/reputation in connection with her business activities (both as an artist, and a style icon);
  2. there was a misrepresentation by Topshop that would be likely to lead the public to believe that the t-shirt was endorsed or approved by her; and
  3. she had suffered damage as a result of this belief.

In reaching his decision, Birss J considered it important that Topshop has made a "considerable effort to emphasise its connection with various famous stylish people, including Rihanna". In particular, a Topshop competition in 2010 offered the winner a personal shopping appointment with Rihanna, and the artist's visit to the Oxford Street store in 2012 was highly publicised.

Birss J noted that the image itself was also an important factor. It is a striking image that fans would recognise from the music video shoot for Rihanna's album. The video, which was filmed in Northern Ireland, had received a lot of publicity in the United Kingdom due to the risqué clothing that Rihanna was wearing, which led to complaints from the owner of the land on which it was filmed. Birss J was satisfied that many of Rihanna's fans would recognise the image, and wish to buy the product because they would, mistakenly, think that she had endorsed or approved it.

The leading judgment in the Court of Appeal was delivered by Lord Justice Kitchin, who began by emphasising that "there is in English law no 'image right' or 'character right' which allows a celebrity to control the use of his or her name or image…". However, in this case, Kitchin LJ considered that Rihanna had successfully overcome the two "critical" hurdles in a claim for passing off in a merchandising case - namely:

  1. "the application of the name or image to the goods has the consequence that they tell a lie"; and
  2. "the lie is material".

Kitchin LJ considered that Birss J had made no error of principle in finding that "the sale of this t-shirt bearing this image amounted to a representation that Rihanna had endorsed it." The court emphasised that, while Rihanna has no right to control the use of her image in general, it was the fact that the image was used in a way which gave rise to this misrepresentation that meant the conduct amounted to passing off. He held that Topshop was essentially arguing for the right to use the image, even if in particular circumstances, this would give rise to a misrepresentation, and stated that "to accede to that submission would be to sanction a trade which results in the deception of the public".

Kitchin LJ also rejected Topshop's submission that Birss J ought to have assessed the factors objectively, from the perspective of customers who were not necessarily fans of Rihanna, and therefore for whom the presence of an image on clothing was origin neutral. However, as the t-shirts were being sold through Topshop's stores, the court held it was "plainly relevant" to consider customers who both (i) shop in Topshop, and (ii) are fans of the artist. Topshop's history in promoting its connection with Rihanna should therefore be taken into account.

It is clear from this judgment that a celebrity's image on a product cannot be used in such a way as to amount to a misrepresentation that the celebrity has endorsed that product without committing the tort of passing off. However, the decision also emphasises that the principle that celebrities do not have a general right to control the use of their image still applies, and Lord Justices Underhill and Richards regarded this case as "close to the borderline".

This decision essentially resulted from the specific features of the image in question (ie, that the image is associated with an authorised music video and implies that the use of the image is similarly authorised) and Rihanna's past association with Topshop. Underhill LJ noted that neither of these factors alone would have been likely to suffice, but that the judge was entitled to find that the combination of the two features were capable of giving rise to a misrepresentation. The decision was therefore quite fact-specific and the court confirmed that the hurdles to demonstrating the requisite misrepresentation are not easily overcome; despite this and other similar cases, passing off should not be considered a 'back-door' introduction of an 'image right' into English law.

Mark Lubbock and Danica Barley, Ashurst LLP, London

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