Rihanna successfully sues Topshop for passing off over t-shirt bearing her photograph

In Fenty v Arcadia Group Brands Limited (t/a Topshop) ([2013] EWHC 2310 (Ch)), the High Court of England and Wales (Chancery Division) has found that Topshop's sale of a Rihanna t-shirt without her approval was an act of passing off.

In March 2012 the fashion retailer Topshop began selling a t-shirt that featured on its front a photograph of the musician Rihanna. The t-shirt was produced for Topshop by Knitmania UK Ltd, a clothing design and manufacturing company, which had licensed the photograph in question from the owner of the photograph, but not from Rihanna herself. Rihanna brought a claim against Topshop for passing off, on the basis that the sale of the t-shirt featuring her image would create the false impression that Rihanna had authorised the t-shirt.

There is no separate concept of 'image rights' in English law. Nevertheless, celebrities have relied on passing off before English courts to prevent the use of their image by a third party. Such claims will be successful where the individual can demonstrate to the court that:

• he or she has goodwill amongst the relevant members of the public;
• the use complained of constitutes a misrepresentation to those members of the public; and
• the misrepresentation causes damage to the individual’s goodwill. 

The misrepresentation would be that the relevant members of the public were deceived into purchasing the product featuring the individual as they believe that it has been authorised or endorsed by that individual. If the relevant public bought the t-shirt merely because the individual featured, this would not suffice. 

Mr Justice Birss began by considering whether Rihanna had the necessary goodwill amongst the relevant members of the public. He noted that Rihanna has a number of companies that exploit her image commercially. She has, or had, endorsement agreements with a large number of major brands. Rihanna had also made efforts to promote an association with the world of fashion, having worked with several high-end fashion labels and having signed an agreement to sign a collection for a high-street fashion store. In particular, the judge considered, this demonstrated that Rihanna’s endorsement of high-street fashion was of value at the relevant time. Rihanna was found to have “ample goodwill” on this basis.

The misrepresentation, Mr Justice Birss commented, was the real issue in this case. To assess whether there had been a misrepresentation as to the trade origin of the t-shirt, the judge examined the circumstances of its sale as well as the garment itself, as he considered that the relevant public would not necessarily expect that a garment featuring a celebrity would be authorised by the celebrity. As to the circumstances of sale, he noted that Topshop sold both authorised celebrity goods as well as those licensed in similar way to the t-shirt in dispute. This meant Topshop’s customers would have no expectation either way. He also noted that Topshop went to particular efforts to associate itself with stylish artists such as Rihanna, and that they had derived publicity from her visiting the store in the past.

The judge then considered the context of the image, which he concluded had been taken during a video shoot for one of Rihanna’s singles.  This, he felt, would be noticed by fans as the outfit she was wearing in the photograph would be recognisable as a publicity shot associated with the single and the album from which the single was taken. Taking the circumstances of sale and the image itself together, Mr Justice Birss concluded that a substantial portion of the relevant public would believe the image was authorised, and thus Topshop had made a misrepresentation as to the trade origin of the t-shirt. As for damage, the judge found that it would amount to lost sales for Rihanna’s merchandising business, as well as loss of control of her reputation in the fashion sphere.

The judge was keen to stress that this case was not about 'image rights', but instead the case illustrates that the English law of passing off does recognise an 'exploitation of image' right that can be protected. The distinction may be a fine one, but the facts of the case demonstrate the boundaries of where the line can be drawn. Uses of a celebrity image that suggest an official status (assuming that the celebrity in question can establish goodwill in endorsement/merchandising) are prohibited, whereas 'unauthorised' images are more likely to be acceptable.

The fact that this case came to court is also a reminder that other mechanisms can (and should) be explored by celebrities to control the use of images that may appear 'official'. If the copyright in the photoshoot images had been assigned to Rihanna, or if the photographer had been forbidden from further licensing or exploiting the photograph, then the issues may have been much simpler. Image rights are undeniably valuable and are becoming more so in modern commerce.

Hiroshi Sheraton and Leigh Smith, McDermott Will & Emery UK LLP, London