Passing off: no carte blanche for celebrity image rights

The recent decision of the English Court of Appeal in Robyn Rihanna Fenty (& others) v Topshop Limited (& another) handed down on 22 January 2015, whilst not giving carte blanche to celebrity image rights nevertheless demonstrates how far ‘passing off’ law has developed and can be deployed to protect celebrity images.

Background

The facts of this case focused on pop star Rihanna’s objection to Top Shop selling a t-shirt bearing her picture. The image derived from a photograph taken while she was shooting the video for a single from her Talk That Talk album. She claimed Topshop’s act amounted to ‘passing off’ because Top Shop consumers would believe she had approved the t-shirt as part of her merchandising for the tour. Topshop claimed that English law did not protect image rights and that consumers would not automatically believe the t-shirt was Rihanna merchandising. In the High Court, Rihanna succeeded in convincing the Judge, Birss J, that she had goodwill in clothing, use of her image in this particular circumstance was likely to lead people to buy the t-shirts in the belief she had approved or authorised them and this had, subsequently, caused her damage. Birss J found ‘passing off’ had been proven. Topshop appealed to the Court of Appeal.

Judgement of The Court of Appeal

In the leading judgment, Kitchen LJ commented, “Overall, the judge found that by 2012 Rihanna was regarded as a style icon by many people, particularly young women aged between 13 and 30. He considered that such people are interested in what they perceive to be Rihanna’s views about fashion. If they see Rihanna wearing or approving an item of clothing then they think it has been endorsed by her. In all these circumstances the judge found that Rihanna and her associated companies had acquired a significant goodwill in relation to fashion clothing.”

Some t-shirts sold in Topshop were endorsed by celebrities and some were not. The Rihanna t-shirt in question was on sale for 5 months in 2012, sold 12,000 units and was originally (for a short while) advertised as a ‘Rihanna Tank’ and ‘Photograph Rihanna Motif Tank’. There was no information on the tags or otherwise to indicate the t-shirts were authorised by Rihanna.

The heart of the case in front of the High Court and again on appeal was whether or not the sale amounted to an actionable misrepresentation. The Judge accepted there was no evidence before him of actual confusion. He was significantly influenced, however, by Topshop’s own efforts to link their clothes to Rihanna and thereby profit from her position as a style icon. In particular, they ran a style competition in 2010 to win a personal shopping appointment with Rihanna and promoted a visit by Rihanna to the Oxford Street Topshop in 2012.This, coupled with the specific image- in which Rihanna looked directly at the camera during a promotional photo shoot for her album, led him to the conclusion there was a tangible likelihood that a substantial number of persons would be deceived into thinking the t-shirt was an authorised product.

Topshop argued 4 grounds of appeal on which they said the Judge had erred namely (1) that there was a difference between character merchandising and endorsement; (2) pictures on t-shirts should be judged from the perspective of being origin neutral; (3) there is no image right under English law; and (4) Rihanna had not proved the image in question was distinctive. The Court of Appeal rejected these grounds holding that the Judge had properly applied the case of Irvine v Talksport [2001] on character merchandising, namely that for a character merchandising case to succeed, consumers do not have to believe the products are in any sense endorsed by the celebrity or creator of the character. Instead, there simply has to be relevant goodwill, a false representation that there is a connection between the claimant and the goods in issue and a belief that the claimant is materially responsible for the quality of said goods. In addition, that belief must then play a part in the decision to actually buy the goods.

Kitchen LJ did not feel that the Judge had to approach the t-shirt from the consumer’s perspective, believing that such an image would be origin neutral- involving the Judge shutting “his eyes to reality” and putting aside “well settled principles”.

Rihanna herself accepted she had no absolute right under English law to prevent use of her image but these particular circumstances founded a ‘passing off’ claim and the Court of Appeal agreed. Kitchen LJ cited the Douglas v Hello [2007] House of Lords case (in which Catherine Zeta-Jones and Michael Douglas sought to prevent publication of photos of their wedding obtained in breach of confidence) as the leading decision on there being no celebrity image right as such and the Elvis Presley Trade Marks case [1999] as an example of not being able to prevent use of photographs of celebrities per se. Finally, the Judge was entitled to hold that the image in question, coming from a photo shoot was striking.

Conclusion

One might be forgiven for thinking the evidence supporting Rihanna’s claim looks somewhat flimsy. This conclusion is indeed hinted at by Lord Justice Underhill who, although concurring with Lord Justice Kitchen, commented “I am bound to say that I regard this case as close to the borderline” because, it was simply based on two things: the past public association between Rihanna and Topshop and the distinctiveness of the image itself. But, in his view, the Judge considered these matters carefully and was entitled to come to the conclusion he reached.

The final decision marks no great change in the law but indicates a subtle whittling away of the English court’s reluctance to embrace a celebrity image right. It is no surprise then, that they do so by once more broadening that flexible, common law friend – the ‘passing off’ claim.