The Court of Appeal has confirmed that pop star, Rihanna, could prevent high street fashion retailer, Topshop, from selling a t-shirt bearing an iconic image of her.
English law does not recognise ‘image rights’ as such. So celebrities or creators of fictional characters need to rely on ‘normal’ legal grounds to bring complaints where their image or that of a fictional character they create is used without their permission - whether that be breach of confidence, confidentiality, copyright or (as in Rihanna’s case) the law of passing off.
To bring a claim for passing off a business needs to show it has a reputation in its name or branding, that the defendant has misrepresented itself as being connected with the reputation of the business, and that the business has suffered loss as a result.
In the Court’s judgment, it first confirmed that selling a product with a picture of a celebrity will not in itself be sufficient for the celebrity to bring a claim for passing off. However, where the particular circumstances suggested the celebrity had authorised the use of the image or approved of the association with the products, when in fact she had not, the celebrity could have a legitimate case.
Topshop had previously made a point of trying to associate its brand with famous people, and Rihanna in particular – including publicising her visits to stores, and running competitions for styling sessions with her. In addition, the image was iconic of her ‘Talk the Talk’ album and the famous music video (where the farmer whose land was used for filming complained!). Taking these factors into account, and the fact Rihanna had invested substantial effort in building her reputation as a fashion icon, the Court of Appeal agreed that Topshop’s use of the photograph crossed the line into suggesting Rihanna had endorsed its sale of the t-shirt.
It should be noted that one of the Appeal judges expressly commented that this was a case ‘close to the borderline’. Nevertheless, it serves as a word of warning to those involved in merchandising and product supplies to make sure they stay on the right side of the law when exploiting famous names and icons.
The case is also interesting for photographers. The photographer of the Rihanna picture used on the t-shirts was an independent third party, who owned the copyright in the image and gave permission to Topshop to use it. Despite this, – and he was of course not party to the action – the photographer’s right to exploit the copyright in his work was in practical terms trumped (in these particular circumstances) by the pop star’s right against false endorsement.
Taylors' Intellectual Property team, led by Tony Catterall, is recognised nationally and internationally for its expertise and experience in protecting and enforcing the rights of designers, particularly in the textiles, fashion and home furnishings sectors. It has won many notable and key cases in the High Court, Court of Appeal and Supreme Court against major corporates. Taylors is the only North West-based firm to have been appointed as a Legal Affiliate to the national organisation, Anti-Copying in Design (ACID).
If you have any queries, please do not hesitate to contact Tony Catterall, Head of our Intellectual Property team, on 0844 8000 263 or via email firstname.lastname@example.org.