Case(s): Fenty & Ors v. Arcadia Group Brands Limited (t/a Topshop): The High Court of Justice Chancery Division, Case No: HC12F01378; The Court of Appeal (Civil Division), Case No: A3/2013/2087 & A3/2013/2955.
Facts: In March of 2012, retailer Topshop began selling a t-shirt with an image of singer Rihanna Fenty on it. The image was a photograph taken by an independent photographer during a video shoot for her single, “We Found Love,” which was later used to promote her “Talk That Talk” album. Topshop had a license to use this photo from the photographer, but the retailer did not have a license, and thus did not have consent, from Rihanna.
According to the Rihanna’s lawsuit, her team tried to negotiate with the Arcadia Group (Topshop’s parent company) for about eight months over the rights to her image, “but they offered her $5,000 and said they don’t care.”
Rihanna and her team then brought suit in the United Kingdom, arguing that the sale of this t-shirt without her permission infringed her rights.
The High Court of Justice Chancery Division
On July 31, 2013, Mr. Justice Birss ruled for Rihanna, finding that Topshop’s sale of the T-shirt bearing a photograph of the singer without her authorization was an act of passing off. In his decision, Justice Birss pointed out that that UK law does not recognize image rights or rights of publicity, noting that “there is today in England no such thing as a free standing general right by a famous person (or anyone else) to control the reproduction of their image.” This case was instead concerned with what’s known as “passing off.” Justice Birss held that a “a substantial number of purchasers are likely to be deceived into buying the t-shirt because of a false belief that it has been authorised by Rihanna herself.”
In a separate hearing, Justice Birss awarded Rihanna a permanent injunction against Topshop and granted $320,000 in damages.
Topshop appealed the ruling.
The Court of Appeal (Civil Division)
On January 22, 2015, the Court of Appeal unanimously affirmed the High Court’s decision. The three appeal judges agreed that marketing the item without Rihanna’s approval amounted to “passing off.” While Topshop’s lawyers argued there was “no intention to create an appearance of an endorsement or promotion,” the Court of Appeals unanimously ruled to dismiss the appeal.
To establish passing off, three things must be established by Rihanna: (1) That she has a goodwill reputation among the relevant members of the public; (2) That the use in question constitutes a misrepresentation, meaning it is likely to deceive people into buying the t-shit because Rihanna authorized it; and (3) This misrepresentation will damage her goodwill.
In considering goodwill, the High Court concluded that “claimants have and had in 2012 ample goodwill to succeed in a passing off action of this kind. Furthermore in 2012 the fact that an item of clothing was a more design led fashion garment, rather than a lower quality simple plain t-shirt, would not be understood to rule out, in the mind of a purchaser, the idea that it was a Rihanna endorsed product or an item of authorised Rihanna merchandise. The scope of her goodwill was not only as a music artist but also in the world of fashion, as a style leader.” The Court of Appeals agreed, and further pointed out that the singer had engaged in significant endorsement activity in the past, including with H&M, Topshop, and more.
On misrepresentation, the High Court noted that in order for there to be passing off, customers must actually be deceived into thinking that Rihanna authorized the t-shirts and subsequently purchases the t-shirt for that reason. The judge noted that the fact that “there is no indication of artist authorisation on the swing tag or neck label points firmly against authorisation,” but this is “not strong enough to negate the impression the garment is authorised.” He went on to say that “a substantial portion of those considering the product will be induced to think it is a garment authorised by the artist.” The Court of Appeals agreed with this reasoning, too.
And finally, it was determined that this misrepresentation will cause damage to Rihanna’s goodwill. The sale of the t-shirt based on the false belief that she authorized it “amounts to sales lost to her merchandising business” and “also represents a loss of control over her reputation in the fashion sphere.”
In the UK, celebrities do not have a general right to control the use of his or her photo. And this case does not establish a general right for celebrities to do that. What it does is provide protection for a set of facts like Rihanna’s – wherein it is likely that a consumer would be misled into thinking the celebrity had authorized the use of her image.
The fact that the singer had a previous association with Topshop and that the retailer used a promotional photo of Rihanna from her album increased the chances that consumers would be misled. The decision might have gone the other way had one or both or these elements been different.