In 2013 global pop sensation Rihanna took legal action against the retail giant and its parent company Arcadia Group Brands Ltd, for using an image of her on a t-shirt and succeeded in the High Court with her claim of passing-off.
We wrote about Rihanna's legal victory over Topshop in 2013 when they appealed against its defeat but in a unanimous decision three members of the Court of Appeal have ruled that the High Court Judge who decided the case was correct to side with Rihanna.
High fashion in the High Court
The original High Court decision of Mr Justice Birss caused some controversy, primarily because of its glamorous subject matter as opposed to the legal details of the case. Despite finding in Rihanna's favour, the Judge was at pains to point out that no new law was being developed as a result of his findings. Unlike other jurisdictions (including many US states) there is no such thing in English law as 'image rights'. In some jurisdictions it is possible for celebrities to rely on extensive statutory protection for their personal brand covering everything from their voice to their signature. In Guernsey it is possible to register such rights. However, in the UK the courts have refused to extend the law to prevent the use of a celebrity's image if they consider that the use is simply fair competition without misrepresentation.
In the UK celebrities may be able to use existing law to protect their images and reputations in certain circumstances.
In their well known claim against Hello! Magazine, Michael Douglas and Catherine Zeta-Jones persuaded the High Court that Hello!'s publication of photographs taken without consent at their wedding was a breach of confidence and they were awarded substantial damages. Celebrities who are out to leverage their famous names may also use trade mark or copyright law to pursue third parties taking unfair advantage of their personas. Rihanna relied on passing-off in her claim against Topshop, following the precedent set by Formula One driver, Eddie Irvine in his victory over commercial radio station Talksport in 2003.
Irvine argued that a photograph of him, which had been doctored to show him holding a Talksport Radio, was calculated to amount to a false endorsement. The High Court agreed and awarded Mr Irvine damages of £25,000. It was important to the success of his case that Mr Irvine could demonstrate that he was in the business of giving endorsements, for significant sums of money and that the public were likely to be mislead by the photograph into believing that he had endorsed Talksport.
Rihanna's fashionable persona
In order to succeed in her claim of passing off, Rihanna's legal team had to demonstrate that she had passed a three stage test. Firstly she had to demonstrate goodwill in the relevant field, secondly she had to show that there was a misrepresentation to the public and finally there must be some identifiable damage. The Court of Appeal has upheld Mr Justice Birss' finding that Rihanna's case met all stages of the test for passing-off.
Rihanna, the Judge found, enjoys considerable goodwill in the world of fashion and fashion retail. Despite it being outside of her primary business interests, Rihanna had engaged in calculated efforts in the world of fashion and her collaborations with other high street stores in the UK (notably River Island), meant that her personal brand was (and is) a marketable commodity in UK fashion.
In its appeal Topshop's lawyers argued that the High Court Judge had applied the legal tests as if to a case of false merchandising (which this was not) rather than one of false endorsement. The Court of Appeal rejected this suggestion finding that the judge had properly considered whether the relevant public were likely to buy the garment thinking that Rihanna had approved it and he was entitled to find that was the case. It was important to this finding that the image used by Topshop was strikingly similar to the picture used on the front of Rihanna's 'Talk That Talk' album making it appear like an authorised image. Topshop's previous deliberate efforts to associate its brand with Rihanna, largely via social media, were also crucial to the finding that there was a misrepresentation to the public.
The final stage of the passing-off test was met as the judge found that Rihanna had suffered damage, both in terms of the lost fees she could have charged for her endorsement but also damage in terms of her loss of control over her (limited) rights to her personal goodwill and image in the market.
Setting styles but not precedents
Although this case has caused much interest in the possible extent of the law of passing-off, its real contribution has been to demonstrating how narrow the law is when applied to the image of an individual. The first 62 paragraphs of the 64 paragraph Court of Appeal judgment is taken up with Lord Justice Kitchen's analysis, but possibly the most important statement in the judgment is in the single paragraph penned by Lord Justice Underhill who noted 'I am bound to say that I regard this case as close to the borderline.' The combination of factors weighing in Rihanna's favour here was crucial. Had Rihanna not had a past public relationship with Topshop and had the image used not been so similar to that used on her album cover, Rihanna's claim would have failed.
In future, unless there is a real likelihood that consumers will believe something is endorsed by a celebrity when it is not, it is unlikely that the law of passing-off will be of much assistance to those in the UK looking to prevent third parties from riding on the coattails of their name and personal brand.
This document is for informational purposes only and does not constitute legal advice. It is recommended that specific professional advice is sought before acting on any of the information given.