02/09/2013

By Catherine Richardson, associate at Charles Russell LLP


Rihanna’s Claim and Passing Off

In March 2012, Topshop started selling a t-shirt with an image of Rihanna on it. Topshop had a licence from the photographer to use the image, but the image itself was not authorised or licensed by Rihanna herself. Rihanna argued that the use of her image on the t-shirt amounted to passing off. There was no suggestion that Topshop may have infringed her right to privacy and it is important to remember that in the UK, there is no such thing as an “image right”.

There are three key elements to a successful claim in passing off. The claimant must show:

1 - goodwill or reputation attached to the “get-up” or particular mark concerned;
2 - a misrepresentation by the defendant; and
3 - damage

Whilst the law of passing off had previously been held to extend to situations of false endorsement, the judge emphasised that generally, selling a garment with a celebrity image on it will not in itself amount to passing off. However, Rihanna’s claim succeeded because the court felt that Rihanna’s fans may believe that the t-shirt was endorsed by the star and that this may motivate their purchase. The specific facts of the case were key in reaching the decision.

Goodwill
The claimant must demonstrate goodwill or reputation attached to the “get-up” or particular mark concerned; a traditional passing off case might involve an unregistered trade mark right such as a brand name or logo, but unusually in this case the court considered the goodwill attached to Rihanna’s image in the context of the fashion industry. The court acknowledged that the scope of Rihanna’s goodwill extended to the fashion world; she is seen as a trend-setter and style icon, having collaborated with brands such as Armani, Gucci and River Island.

Misrepresentation
As the judge said “misrepresentation is the real issue in this case”, the question was whether customers bought the t-shirt because they like the product (and, no doubt, Rihanna) or because the use of Rihanna’s image made a misrepresentation that the product was endorsed by her. There was no evidence of any actual confusion, but this was not determinative. The judge was careful to point out that although customers are aware that celebrities engage in merchandising that does not mean they always want to buy authorised products; they often simply like the look. Many garments carry celebrity images which are not authorised.
However, Topshop had previously sold celebrity authorised products (for example, Topshop’s well publicised collaboration with Kate Moss) and made efforts to emphasise connections between the store and stylish celebrities. Rihanna had also been connected with Topshop, notably when they ran a competition to go shopping with Rihanna in 2010, and when Rihanna’s visited to their store in February 2012. A substantial number of customers would have been aware of these instances and this, the judge said, enhanced the likelihood that they may believe the garment was authorised.
Furthermore, the particular photograph was taken during a video shoot for a popular Rihanna music video and as Rihanna’s fans were familiar with her work, this may be mistaken as part of a marketing campaign. The judge concluded that Rihanna fans may be misled into believing that there was a commercial connection between Topshop and Rihanna and that this would motivate them to buy the product.

Damage
It is not generally difficult to prove damage if goodwill and misrepresentation have been shown. In this case, the misrepresentation was thought to be damaging to Rihanna’s goodwill – including lost sales to her merchandising business and a loss of control over her reputation in the fashion sphere.

The implications
Using a celebrity image on a garment does not automatically amount to passing off. The decision was made on the particular facts of the case which are unusual. However, before using celebrity imagery, retailers should consider whether their consumers (even if it is only some of their consumers) may be confused into believing that the product has been endorsed or authorised by the celebrity in question. Permission will not be expressly required provided that use of such an image does not do anything to mislead the public as to the commercial connection with the celebrity. Of course it will always be necessary to have the permission of the photographer (or copyright owner).