The Court of Appeal has today handed down its judgment in Robyn Rihanna Fenty & Ots v Arcadia Group Brands Ltd & Anr ("Topshop"), concerning Topshop's sale of a t-shirt bearing Rihanna's image without her permission. The Court of Appeal dismissed Topshop's appeal, finding that its sale of the t-shirt amounted to passing off.
Rihanna is a famous pop star and Topshop is a well-known high street fashion retailer. Topshop started selling a t-shirt in 2012 which had on the front an image of a photograph taken of Rihanna by an independent photographer. The photograph had been taken during the video shoot for a single on Rihanna's 'Talk That Talk' album, and showed the artist wearing the same clothing and headscarf as she appeared on that album cover. The video had received significant press attention in the UK due to an objection by the owner of the land on which the video was filmed about the risqué clothing worn by Rihanna. Although Topshop had obtained a licence from the photographer, it did not obtain a licence from Rihanna, who brought a claim for passing off.
High Court decision
At first instance, Birss J found that Topshop's unauthorised sale of the t-shirt bearing Rihanna's image amounted to passing off on the basis that:
- Rihanna had ample goodwill, the scope of which was not only as a music artist but also in the world of fashion, as a style leader.
- Rihanna had previously authorised clothing which had been available in Topman (Topshop's brother store) and had participated in a competition two years previously in which the winner won a personal shopping appointment with her at Topshop's flagship store.
- Rihanna had entered into an earlier agreement with the established high street fashion store River Island, under which she had agreed to design clothing to be sold in-store.
- The relationship between the image on the t-shirt and the Talk That Talk album cover and video would be recognised by Rihanna's fans. As such, the image was not merely recognisable as Rihanna, but could be taken for a publicity shot for what was at the relevant time a recent musical release.
- Topshop had had previous well-publicised collaborations with other style icons.
The Court of Appeal's judgment
Kitchin LJ (giving the leading judgment) held as follows:
- While repeating the general principle that there is in English law no "image right" or "character right" which allows a celebrity to control the use of his or her name or image, he found that in this case Rihanna had overcome the "two critical hurdles" in a claim for passing off, namely:
- the application of the name or image to the goods has the consequence that they tell a lie about the source of the goods, and
- the lie must be material so as to have an effect upon the customer's buying decision.
In all the circumstances of the case, Topshop's sale of the t-shirt bearing the image of Rihanna amounted to a misrepresentation that Rihanna had endorsed it.
- The proposition that a famous personality has no right to control the use of her image in general does not necessary lead to the conclusion that the use of a particular image cannot give rise to the mistaken belief by consumers that the goods to which it is applied have been authorised.
- It was not necessary for Birss J to have assessed the relative factors objectively from the perspective of those who were not fans of Rihanna. As the t-shirts were being sold through Topshop stores, it was plainly relevant to consider potential customers who were both fans of Rihanna and prepared to shop at Topshop, therefore taking into account Topshop's publicity about and promotion of its connection with Rihanna.
- Birss J was entitled to have regard to the fact that the relationship between the particular image used and the images for the album and video would be noticed by her fans.
Before this case, it was generally understood that merely putting a celebrity's image on merchandise without their permission did not constitute an infringement of their rights. This case indicates that, while this general principle still applies, it is subject to exceptions in certain circumstances, namely where the use of the image amounts to a misrepresentation that the goods have been endorsed by the celebrity in question, making customers more likely to purchase the item on which they appear.
However, these exceptions are likely to be tightly construed. Underhill and Richards LJJ, while agreeing with Kitchin LJ, regarded this case as "close to the borderline". They indicated that the outcome was highly dependent on the particular facts, in particular both Rihanna's past public association with Topshop and the particular features of the image itself.
Nevertheless, it is likely that this decision will fuel further image right cases, particularly given that celebrities are increasingly branching out from their original field into the world of fashion.
The Judgment of the Court of Appeal may be viewed here.
The Judgment of Birss J in the High Court may be viewed here.