Pop star Rihanna wins ‘passing off’ dispute with Topshop over t-shirt ‘image rights’

Judges in the Court of Appeal in London dismissed the appeal by Arcadia Group Brands Limited and Topshop Limited after agreeing that members of the public and fans would think that the t-shirt was endorsed by the singer.

The court heard that in 2012 Topshop began to sell in its stores and through its website a t-shirt displaying a clearly recognisable image of Rihanna, which was derived from a photograph taken when she was on video shoot for a single from her “Talk That Talk” album.

However, the picture was taken by an independent third party photographer, who, as owner of the copyright in the photograph, licensed the use of the image to Topshop.

Rihanna issued proceedings and alleged that, whatever may have been the position in relation to the copyright in the photograph, the use of her image in relation to fashion clothing was not licensed and that a substantial number of people buying the t-shirt would think that she had endorsed it when, in fact, it was not connected with her at all.

Topshop responded that Rihanna had not asserted that the particular image or any features of it had become distinctive of her or her clothing and that she was claiming an “image right”, that is to say a right to control the licensing of her name and likeness, and that no such right was recognised in English law.

The judge accepted that the mere sale by a trader of a t-shirt bearing an image of a famous person did not, in and of itself, amount to passing off, but he found the sale by Topshop of this t-shirt was, in the particular circumstances of this case, likely to lead people to buy it in the belief that it was a t-shirt which Rihanna had approved or authorised, and that this had caused her damage.

He found that Topshop’s activities therefore amounted to passing off and he granted an injunction prohibiting the retailer from dealing in it any further without clearly informing prospective purchasers that it had not been so approved or authorised.

However, Topshop appealed, arguing that the judge wrongly proceeded on the basis that there was no difference in law between an endorsement case and a merchandising case, and that the judge “fell into error” in failing to proceed on the basis that the law of passing off treats the use on garments of such images as origin neutral.

It was submitted that the judge ought to have recognised and accepted that the absence of an image right is a matter of law and not a matter of fact. Further, he ought to have assessed the claim having regard to the perceptions of those persons for whom the presence of the image of Rihanna on the t-shirt was origin neutral, and not the perceptions of those persons who were liable to regard the presence of the image as an indication of authorisation.

It was also argued that the judge fell into further error in finding Topshop liable for misrepresentation in the way that he did because Rihanna had never properly alleged or developed a case that the particular image in issue was in any way distinctive as a result of any marketing or promotional activity which she had ever carried out.

However, Lord Justice Kitchin – with whom Lord Justice Underhill and Lord Justice Richards agreed – held that the reasoning of the judge disclosed “no error of principle” of the kind for which Topshop contended.

Handing down the judgment, Lord Justice Kitchin said: “In the present case I am entirely satisfied that the judge did have proper regard to the distinction between endorsement and general character merchandising. He began his analysis of the law by reminding himself that to make good any claim in passing off it must be established that the claimant has a goodwill, that the defendant has committed a misrepresentation and that the claimant has, as a result, suffered damage.

“He considered that the use of this image would, in all the circumstances of the case, indicate that the t-shirt had been authorised and approved by Rihanna. Many of her fans regard her endorsement as important for she is their style icon, and they would buy the t-shirt thinking that she had approved and authorised it. In short, the judge found that the sale of this t-shirt bearing this image amounted to a representation that Rihanna had endorsed it.

“Rihanna has always accepted that she has no right in English law to prevent any use of her image. Further and specifically, she acknowledges that the sale of garments bearing recognisable images of her does not, in and of itself, amount to passing off.

“Here the judge came to the conclusion that the use of this particular image on fashion t-shirts sold by Topshop amounted to a misrepresentation by Topshop that the garments had been approved or authorised by Rihanna. There is no inconsistency between this finding and the proposition that Rihanna has no absolute right to prevent traders selling garments carrying her image.”

The judges added that Topshop’s arguments would require the court both “to shut its eyes to reality” and to put on one side well settled principles.

Lord Justice Kitchin said: “In any case of passing off the claimant must establish that he has a goodwill in his business under the name or other feature he is seeking to protect, and that the use of that name or other feature by another trader amounts to a misrepresentation which is calculated to cause deception and so cause damage to his goodwill and his business.

“It follows that the judge was entitled to find that the sale by Topshop of the t-shirt amounted to passing off. I would therefore dismiss the main appeal and refuse permission to appeal against the judgment of 5 July 2013.”