Between March and August 2012, Topshop sold t-shirts displaying a photograph of the popstar Rihanna. The image had been taken by an independent photographer whilst Rihanna was on a video shoot for her single “We Found Love” in Northern Ireland. (Incidentally, that video attracted a lot of press attention when the landowner of the shoot site complained about her state of undress during filming.) The photographer licensed the use of the image to Topshop which sold about 12,000 t-shirts for £22 each.
Unlike in the US, English law does not recognise an “image right” allowing a celebrity to control the use of their name or image, so Rihanna could not assert this. There are other potential legal avenues and in this case Rihanna commenced a passing off claim against Topshop.
“Passing off” is an English law tort (or civil wrong). Its underlying principle is that “A man is not to sell his own goods under the pretence that they are the goods of another man” (Perry v Truefitt (1842) 5 Beav. 66). It allows a trader to protect a name or trade mark (whether registered or not) or get-up to which it can attach goodwill. There are three elements to be established:
- A trader shows that it has goodwill attached to its goods or services by association with a name, mark and/or get-up which is recognised by the public as distinctive of the relevant goods or services;
- There is a misrepresentation by another trader leading, or likely to lead, the public to believe that its goods and services are those offered by the first trader or endorsed by the first trader;
- The first trader suffers, or is likely to suffer, damage as a result of the misrepresentation.
The first element was established as Rihanna was regarded as a style icon: she had a lucrative merchandising business and, in the past, had also endorsed Nike, Gillette and Clinique and promoted H&M, Gucci and Armani. Many would perceive her wearing or approving an item of clothing as her endorsement of it. It was held that she had the requisite goodwill in relation to fashion clothing, not just music.
The second element, whether there had been a misrepresentation, was the key battleground in the case. All circumstances were considered, including that:
- Consumers were aware of authorised merchandising by music artists, but that did not mean they always wanted to buy such products. Often they would buy a garment bearing an image just because they liked it;
- Topshop was a leading high street fashion retailer and consumers would not be surprised that some of its products had been endorsed by celebrities (as Kate Moss had once done), yet would not make an assumption either way if they saw a celebrity image on a garment;
- Topshop had previously sought to capitalise on Rihanna’s reputation by holding a competition in 2010 in which the winner won a personal shopping appointment with her at the flagship store and by tweeting in February 2012 that Rihanna was visiting that store;
- The image on the t-shirt appeared to be a publicity shot for her “Talk That Talk” album. Rihanna was looking directly at the viewer, wearing the same hair style and headscarf as the images for the album, and fans might believe it to be part of the marketing campaign.
The lack of Rihanna’s name or logo on the swing tag and neck label was insufficient to neutralise the impression that the garment was authorised by her given the nature of the image. Overall, there was a strong indication that the t-shirt was authorised by Rihanna and therefore a misrepresentation had taken place.
Finally, for the third element, it was considered that Rihanna’s goodwill would be damaged by consumers buying the Topshop product in the false belief that it was authorised by her and this would result in loss of merchandising sales and loss of control of her reputation in fashion.
Judgment and Appeal
All three elements proven, the passing off claim was successful. An injunction was granted preventing further t-shirt sales without making it clear that the product was not authorised by Rihanna.
On appeal, Topshop’s legal team asserted four technical reasons why the High Court judge had erred in his judgment. The Court of Appeal was not persuaded and the three judges unanimously dismissed it.
It is important to highlight, as the court did, that simply using a celebrity’s image on a t-shirt would not in itself amount to passing off. The misrepresentation must include an implied endorsement. Lord Justice Underhill described this case as “borderline”: together, Rihanna’s past association with Topshop and the features of the image itself were sufficient to prove endorsement; one of these features alone would not have been.
Fenty & Ors v Arcadia Group Brands Ltd & Anor  EWCA Civ 3