Rihanna shelters under Passing Off Umbrella
05 February 2015
In 2012 Topshop started selling a T-shirt featuring a clearly recognisable image of Rihanna, currently one of the most popular recording artists in the world. Although Topshop had obtained a licence to use the photograph in question from the copyright owner of the photograph, they had not obtained permission from Rihanna herself.
Rihanna brought a claim for passing off, on the basis that the sale of a T-shirt featuring her image would create the false impression that she had authorised the product.
The Court of Appeal confirmed that there is no general ‘image' or ‘character' right per se in the UK which allows a celebrity to control the use of his or her name or image. However, it found in Rihanna's favour on the basis of the law of ‘passing off', which can be used to enforce unregistered trade mark rights and is intended to reduce consumer confusion concerning the origin of goods. The Court held that Rihanna had succeeded in showing that she had acquired protectable goodwill in her image and name, and that Topshop's use of it was a misrepresentation to the public that the T-shirt was endorsed by her. Although the Court emphasised that this case was not about 'image rights', the case illustrates that the UK law of ‘passing off' could be used to recognise a protectable 'exploitation of image' right.
However, important to this decision was Rihanna's previous endorsement activity, and the fact that she has been very active in this sphere, not least with her previous collaborations with Topshop, and other high-street retailers such as H&M and River Island. It was found that Rihanna had therefore made considerable efforts to promote an association in the public mind between herself and the world of fashion.
The Court found that, by 2012, Rihanna was regarded as a "style icon" by many people, particularly young women aged between 13 and 30. It was demonstrated that such people are interested in what they perceive to be Rihanna's views about style and fashion. Thus, if Rihanna is seen wearing an item of clothing, then they are likely to think it has been endorsed by her. It was therefore found that Rihanna had acquired significant goodwill, not just as a music artist, but also in relation to fashion clothing. The facts therefore indicated that the relevant public would probably consider that the T-shirt was endorsed by Rihanna.
A key message for businesses to take from this case is that Rihanna's success might encourage other celebrities to be more vigilant regarding the use of their image on merchandising products.
Depending on the celebrity, the use of his/her image that might suggest a collaboration with, or endorsement by, the celebrity, could result in similar action being taken. Businesses will therefore need to proceed with caution when offering such items to the public. Permission from the celebrity may be required.
If you need any further information on this matter please contact Katie Smith, Sanjay Kapur, John Peacock or Lucy Mills.