The High Court has confirmed in a recent judgment that the sale by international clothing group Topshop of t-shirts bearing a photograph of the well-known pop star Rihanna without her approval amounted to passing off. Although this has prompted a mass of press coverage about whether this heralds a new “image right” for celebrities, the case when examined closely is squarely in line with the existing law of passing off.
Some jurisdictions do allow a famous person to object per se to the use of their image on merchandise. Birss J., hearing the action, confirmed that there was no such right in English law. However, in certain circumstances the law of passing off may be able to prevent such use. In this case, the Judge concluded that a substantial proportion of consumers looking to purchase the garment would believe that it was authorised or endorsed in some way by the artist. The Judge considered various circumstances pointing to passing off in this case including that consumers were well aware that music artists endorse various products. He also noted, however, that many garments for sale in high street stores carry the image of music artists including Rihanna which are not authorised by the person being depicted.
Rihanna was and is considered a style icon by many people the Judge noted. Moreover, Topshop had enjoyed a commercial relationship with Rihanna in the past. This included using her visit to one of its stores as a marketing opportunity and a competition in 2010 in which the winner received a personal shopping appointment with Rihanna. Further, the Judge noted that Topshop is a leading high street fashion retailer, where consumers would not be surprised to find goods on sale which had been endorsed or approved by celebrities. For example, Topshop had a well-known collaboration with Kate Moss.
The image itself on the t-shirt was based on a photograph taken on the video shoot of “We Found Love.” This is one of Rihanna’s most successful singles and the Judge felt that the relationship between the image and the video shoot from which it came would be noticed by fans. It was not the case that the use of any image of Rihanna (or other celebrity for that matter) would amount to passing off but the use of this particular image and the manner in which it was used would amount to passing off. The Judge noted that the image might look to fans like a publicity shot for what was then a recent music release and fans might think it was part of the general marketing campaign for that project.
Roy Crozier states, “there is little surprising about this judgment. A claim based on false endorsement is not new. The judgment turns on its facts and certainly does not mean that any use of a celebrity image amounts to passing off, nor does it create any separate doctrine of image rights which, as Birss J stated, does not exist as a separate and distinct cause of action in English Law. However, it reiterates that retailers need to be aware of the risk when using unauthorised celebrity images and so they should carefully consider the facts surrounding the use of the image which may lead members of the public to believe that the product is being authorised or endorsed in some way by the celebrity. Further, companies which supply products carrying images of celebrities to retailers need to be careful as to the terms which they have imposed upon them by retailers. Such terms could result in a company indemnifying the retailer in relation to the sale of products in circumstances where it was the manner in which the product was sold (as opposed to merely the image on the product itself) which resulted in a successful claim for passing off.”