Court of Appeal confirms that Rihanna can prevent Topshop selling T-shirts bearing her image
The Court of Appeal has today confirmed a previous ruling of Birss J (summarised here) that Rihanna did have a case in passing off and could prevent the use of her image on one of Topshop's
The Court of Appeal has today confirmed a previous ruling of Birss J (summarised here) that Rihanna did have a case in passing off and could prevent the use of her image on one of Topshop's T-Shirts.
The Court confirmed there is no "image right" or "character right" in English law, which would allow a celebrity to control the use of his or her name or image. Instead a celebrity must continue to rely upon some other cause of action such as breach of contract, breach of confidence, copyright infringement or passing off. Rihanna was successful because there had been a misrepresentation that she was associated with Topshop's T-Shirt. Because many consider Rihanna to be a style icon, this played a material part in the decision to buy it.
The Court was keen to emphasise that this case was borderline and the outcome was firmly driven by the particular facts of this case: Rihanna had previously been involved in Topshop promotions and the image was similar to one that had been used to promote her CD. There will therefore be other uses of celebrity images on commercial items that will fall on the other side of the line because there is no misrepresentation or perceived endorsement.
Of most interest was the Court's rejection that they had to assess factors objectively and treat the use of images on garments as origin neutral. This would require the Court to shut its eyes to reality. The T-shirts were being sold in Topshop stores so it was plainly relevant to consider potential customers who were both fans of Rihanna and prepared to shop in a Topshop store. Similarly, the judge was also entitled to take into account the activities of Topshop promoting its connection with Rihanna. This conclusion appears sensible and in accordance with well-settled principles such as establishing goodwill in features that are to be protected.
Rejection of the Appeal
Topshop had argued that the judge had incorrectly proceeded on the basis that there was no difference in law between an endorsement case and a merchandising case. Purchasers of T-shirts bearing images of pop stars buy them not because they believe they have a connection with the pop star but because they want to wear a garment carrying a picture of their idol. Lord Justice Kitchin rejected this and confirmed that there are two hurdles which a claimant must overcome in a passing off claim in a merchandising case:
Kitchin LJ thought Birss J was correct to say that the use of Rihanna's image would indicate that the T-shirt had been authorised and approved by her and many of her fans would buy the T-Shirt because she had approved and authorised it – she is their style icon. In short, the T-shirt bearing the image amounted to a representation that Rihanna had endorsed it.
Even though a famous personality has no general right to control the use of her image, the use of a particular image can give rise to the mistaken belief by consumers that the goods to which it is applied have been authorised. The vice in the impugned activities lay not in the use of Rihanna's image but in using it in such a way as to cause a misrepresentation.
The Court confirmed there is no "image right" or "character right" in English law, which would allow a celebrity to control the use of his or her name or image. Instead a celebrity must continue to rely upon some other cause of action such as breach of contract, breach of confidence, copyright infringement or passing off. Rihanna was successful because there had been a misrepresentation that she was associated with Topshop's T-Shirt. Because many consider Rihanna to be a style icon, this played a material part in the decision to buy it.
The Court was keen to emphasise that this case was borderline and the outcome was firmly driven by the particular facts of this case: Rihanna had previously been involved in Topshop promotions and the image was similar to one that had been used to promote her CD. There will therefore be other uses of celebrity images on commercial items that will fall on the other side of the line because there is no misrepresentation or perceived endorsement.
Of most interest was the Court's rejection that they had to assess factors objectively and treat the use of images on garments as origin neutral. This would require the Court to shut its eyes to reality. The T-shirts were being sold in Topshop stores so it was plainly relevant to consider potential customers who were both fans of Rihanna and prepared to shop in a Topshop store. Similarly, the judge was also entitled to take into account the activities of Topshop promoting its connection with Rihanna. This conclusion appears sensible and in accordance with well-settled principles such as establishing goodwill in features that are to be protected.
Rejection of the Appeal
Topshop had argued that the judge had incorrectly proceeded on the basis that there was no difference in law between an endorsement case and a merchandising case. Purchasers of T-shirts bearing images of pop stars buy them not because they believe they have a connection with the pop star but because they want to wear a garment carrying a picture of their idol. Lord Justice Kitchin rejected this and confirmed that there are two hurdles which a claimant must overcome in a passing off claim in a merchandising case:
- the application of the name or image to the goods has the consequence that they tell a lie. This will not be satisfied if the name or image denotes nothing about the source of the goods.
- the lie is material. If the lie only amounts to a false suggestion that the good are licensed, this may have no effect on the buying decision.
Kitchin LJ thought Birss J was correct to say that the use of Rihanna's image would indicate that the T-shirt had been authorised and approved by her and many of her fans would buy the T-Shirt because she had approved and authorised it – she is their style icon. In short, the T-shirt bearing the image amounted to a representation that Rihanna had endorsed it.
Even though a famous personality has no general right to control the use of her image, the use of a particular image can give rise to the mistaken belief by consumers that the goods to which it is applied have been authorised. The vice in the impugned activities lay not in the use of Rihanna's image but in using it in such a way as to cause a misrepresentation.