Pop sensation Rihanna has successfully sued fashion retailer Topshop in the UK for passing off, after it sold a T-shirt with her famous face without approval. Topshop licensed the image from an independent photographer, who snapped the singer whilst filming her music video for the single “We Found Love” for the album “Talk That Talk” (2011). As the photographer owned the copyright in the images, neither the photographer, supplier or Topshop sought Rihanna’s permission.
Topshop sold around 12,000 T-shirts for £22, leading Rihanna to file a £3.3million claim in the UK where, like Australia, there is no legislation or common law that protects “personality rights” per se. So if the image rights of the rich and famous aren’t specifically protected, how did Rihanna succeed?
Rihanna established the tort of passing off. With her significant reputation as a singer and “style icon”, Rihanna persuaded the Court that the particular image, as well as the position of Topshop as a high street retailer, created a real likelihood that a substantial number of fans would be deceived into thinking the T-shirt was a Rihanna authorised product. Where fans bought the T-shirt under this false belief, there was damage to Rihanna’s goodwill, loss of sales and loss of control over her image and reputation.
The 1 2 3 of Passing Off
Passing off requires the claimant to establish goodwill in their brand or reputation, misrepresentation by the defendant, and damage as a result. So how did Rihanna prove her case? Both parties agreed that selling a T-shirt with an image of a Rihanna does not, of itself, amount to a representation that it has been authorised by the star, or passing off.
On goodwill, with Rihanna’s own fashion label with River Island in the pipeline and an enviable list of endorsements with major brands, the Court was satisfied that the singing sensation had significant goodwill and reputation as a fashion icon, particularly amongst 13-30 year old women.
As to misrepresentation, the image of Rihanna was highly significant, being taken on set when filming her music video. The image was also highly resonant of materials used by Rihanna to promote her album. To those fans who knew Rihanna’s work, the T-shirt image might well be thought to be publicity shot, and part of the marketing material for Rihanna’s music. Fans who buy a T-shirt on the assumption Rihanna has approved of it, or because of the value of the perceived authorisation, will have been deceived. The court also placed significance on the “symbiotic” relationship between Topshop and famous stars in general, including Rihanna with whom it ran a competition and shared dual publicity on social media, and that it contributed to the expectation of authorisation.
Whilst label lovers may infer that the absence of trade marks “RIHANNA” and the “R slash logo” used by Rihanna for her clothing and merchandise suggest an unauthorised garment, the absence of a Rihanna’s trade mark or “badge of origin” on the goods was not determinative in this case.
Although the Court is yet to make an assessment of damages, Rihanna was found to have suffered damage to her goodwill, sales to her merchandising business and loss of control over her reputation in the fashion sphere.
Personality Rights? Only in America?
On celebrity rights, Justice Birss noted:
“Whatever may be the position elsewhere in the world, and how ever much various celebrities may wish there were, there is today in England no such thing as a free standing general right by a famous person (or anyone else) to control the reproduction of their image”.
To some however, the decision marks the opening of the floodgates to “image rights” akin to the USA. In the Big Apple, Topshop may have had to seek Rihanna’s permission to use her “personality rights”, or the right of publicity. Personality rights are state-based laws which prevent unauthorised commercial use of a person’s name or likeness. Currently, 19 States have statutes that recognise personality rights, and a number of States’ common law recognises personality rights. For example, in New York, section 51 of the Civil Rights Law provides that any person whose name, portrait, picture or voice is used for advertising purposes or for the purpose of trade without consent, may obtain an injunction or bring an action for damages.
Lessons for Retailers, designers (and the paparazzi)
For photographers, taking a photograph that is consistent with the artist’s own authorised material, may limit their ability to commercialise the work if it amounts to passing off, such as the use of a celebrity photograph by a retailer on a product where the celebrity is known to have his or her own merchandising licensing deals.
For fashionistas, the type of good, namely a high quality “boyfriend style tank” and “image garment”, was not determinative. As pop artists and fashion labels increasingly overlap (think Victoria Beckham or Kylie Minogue), the Court found that there was no longer a sharp distinction in the minds of the public between artist authorised merchandise (lesser quality garments sold on tour) and fashion garments (design led, based on current trends and generally of higher quality). The fact that a garment is a fashion garment was not an indication, of itself, that the product is unauthorised in the mind of consumers.
It’s also a lesson for suppliers and retailers. The supplier, Knitmania, had given an indemnity to Topshop in relation to the Rihanna T-shirt. Whilst the terms of this indemnity were not revealed, standard contracts for supply of goods include an indemnity from the supplier to the retailer that a product does not infringe the legal rights of any third party. Where such rights are infringed, the supplier will be under a contractual obligation to indemnify the retailer for damages resulting from the breach.