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23 September 2013
The High Court recently held that fashion retailer Topshop's unauthorised use of an image of pop star Rihanna amounted to passing off. This is the first reported English case of a claimant successfully relying on passing off to claim compensation for the unauthorised use of his or her personal image on merchandise.
In 2012 Topshop sold a sleeveless t-shirt in the United Kingdom bearing Rihanna's image, which it had licensed from a third-party photographer. As Rihanna did not own copyright in the image or any associated trademark rights, she turned to the tort of passing off for protection.
The High Court upheld the well-established position under English law that there is no such thing as an individual's right to protect his or her image from being used to endorse a product, or from being used on a product's packaging. Although such an 'image or personality right' may be recognised elsewhere in the world, including in the United States, it is not presently recognised in the United Kingdom.
However, the court went on to find that Rihanna had successfully proved the key elements of passing off (ie, goodwill, misrepresentation and damage), and therefore was entitled to compensation from Topshop for this particular instance of unauthorised use of her image.
Passing off: merchandise and endorsements
The judge found that there is nothing as a matter of law which prevents an action for passing off from being successful in false endorsement cases (as in Irvine v Talksport) or in false merchandising cases. Although there had been an earlier merchandising case in which passing off had been established in respect of the unauthorised use of cartoon characters on goods (Mirage Studios v Counterfeat Clothing  FSR 145), there had not been a passing off case of a claimant successfully seeking redress for the unauthorised use of his or her own image on merchandise.
The judge went on to confirm that although selling a garment bearing a recognisable image of a famous person is not passing off in itself, each case must be considered on its own facts. It is therefore important when considering whether there has been passing off to look at the nature of the relevant market and the perceptions of the relevant customers. The real issue in this case was therefore to understand why a person might buy the t-shirt: either because they wanted to buy a t-shirt adorned with the image of a pop star (in which case there would be no misrepresentation) or because there was a misrepresentation that Rihanna had authorised the use of the image.
The judge noted the following facts in favour of Rihanna's claim:
He also noted the following neutral points, which were neither for nor against Rihanna's claim:
The judge concluded that it was clear that Rihanna had ample goodwill in fashion and as a style leader, particularly in the eyes of females aged between 13 and 30.
Misrepresentation to the relevant public
Turning to the second element of the tort of passing off, the judge noted the following points in favour of Topshop's defence:
However, the judge went on to note the following points in favour of Rihanna's claim:
The judge concluded that, to prospective purchasers, the image was a fairly strong indication that the t-shirt may have been authorised by Rihanna. The fact that there was no indication of artist authorisation on the swing tag or neck label was not enough to negate the impression that the garment was authorised. A substantial proportion of prospective purchasers (made up of Rihanna's fans) had been deceived into thinking that the t-shirt had been authorised by Rihanna, which would have motivated them to buy it.
As a substantial number of customers had been deceived into buying the t-shirt, it naturally followed that this damaged Rihanna's goodwill and caused her to suffer loss by way of reduced sales by her merchandising business and/or the loss of control of her reputation in the fashion world.
While previous cases have established that passing off can be used to prevent or compensate for the unauthorised use of a celebrity's image in false endorsement cases (Irvine v Talksport), this is the first reported English decision in which the principle has been extended to the unauthorised use of a celebrity's image in merchandising.
Although this decision has not created an 'image or personality right' in the United Kingdom, it has confirmed that the protection afforded to individuals extends to unauthorised merchandise. However, the decision also confirms that each case will be decided on its own facts and mere use of the image will be insufficient on its own. Protection will most likely be afforded to those individuals who already have their own merchandising lines.
For further information on this topic please contact David Cran or Adam Cusworth at RPC by telephone (+44 20 3060 6000), fax (+44 20 3060 7000) or email (firstname.lastname@example.org or email@example.com).
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