Reference:  EWCA Civ 3
Court: Court: Court of Appeal
Date of Judgment: 22 January 2015
On 22 January 2015, the Court of Appeal delivered its keenly awaited judgment in the case between British fashion retailer Topshop and the world famous pop star Rihanna. The case raised interesting and significant questions regarding the protection of image rights within the UK.
English law does not recognise so-called “image rights” - proprietary rights allowing an individual to control the use of his or her image or other unique personal characteristics for any commercial purpose. Instead, celebrities must rely on a combination of other related rights including trade marks, copyright, privacy rights, and passing off rights.
Passing off is perhaps the most effective tool available to a celebrity looking to prevent his or her name, image or likeness being used in a way which falsely suggests that they have endorsed a certain product. This was the cause of action utilised by Rihanna in her claim against Topshop.
In 2012, Topshop started selling – both online and in store – a t-shirt bearing a prominent and, as the judge described it, “striking” image of Rihanna. The image was a photograph taken during the video shoot for the single We Found Love from her Talk That Talk album. Rihanna issued proceedings alleging that, although the copyright in the photograph had been licensed to Topshop by the photographer, Topshop had not obtained a licence from her to use her image and contended that the retailer’s action amounted to passing off on the basis that purchasers of the t-shirt would wrongly believe that it had been endorsed by her.
Topshop argued that nothing on the tag or labelling of the t-shirt made any suggestion that it had been authorised by Rihanna and so, it was alleged, nothing had been done which could be said to amount to passing off.
At first instance, the Birss J confirmed that a claimant is required to demonstrate the three elements of goodwill, representation and damage. Accordingly, simply selling a garment bearing a recognisable image of a famous person is not sufficient to establish a claim of passing off. The judge emphasised that the issue is always one of fact that will depend on the nature of the relevant market and on the perceptions of the relevant customers. In that regard, the judge found the following factors were in Rihanna’s favour:
1. Rihanna had promoted a specific association between herself and the world of fashion and had established substantial goodwill as a style icon.
2. Topshop had made considerable efforts to emphasise connections in the public mind between the store and famous stylish people. The store had sought to point out occasions when Rihanna was wearing Topshop items and had run a shopping competition in 2010 when Topshop offered the entrants the chance to win a personal shopping appointment with Rihanna at their flagship Oxford Circus store.
3. The image, which showed Rihana looking directly at the viewer with her hair tied above her head with a headscarf, was very similar to a publicity shot used for promotion of the Talk That Talk album. The judge held that the relationship between the image in question and the images of Rihanna for the album and the video shoot would be noticed by her fans.
4. A substantial portion of Rihanna’s fans would have been misled into thinking that the t-shirt had been authorised by Rihanna and this authorisation would be part of what motivated them to buy it. This would have resulted in lost revenue for Rihanna’s own merchandising business and a loss of control over her reputation in fashion.
The Court of Appeal rejected the appeal by Topshop. Much of the appeal focussed on the contention that the judge had failed properly to have regard to the distinction between merchandising and endorsement. Topshop alleged that purchasers of t-shirts bearing images of famous pop stars buy them “not because they believe that the garments have any material connection with the pop stars at all but simply because they want to wear a garment carrying a picture of their idol”. It was therefore argued that merchandising carries with it no misrepresentation.
Kitchin LJ, giving the leading judgment in the Court of Appeal, agreed with Birss J in saying that it by no means follows that simply because the name or image of a celebrity appears upon a consumable commercial item, the public will assume that it has in some way been endorsed by that celebrity. However, there would be examples where the use of such an image would constitute a false suggestion that the goods had, in fact, been endorsed. In order to meet this requirement, the Court of Appeal held that:
“First, it must be shown that application of the name or image to the goods has the consequence that they tell a lie. This requirement, which is closely allied to distinctiveness, will not be satisfied if the name or image denotes nothing about the source of the goods. Second, it must be shown that the lie is material.”
In upholding the original decision, the Court of Appeal was entirely satisfied that the judge had proper regard to the distinction between endorsement and general character merchandising and that his findings on the use by Topshop of this particular image in these particular circumstances amounted to the necessary misrepresentation was sound.
Image rights are recognised in a number of jurisdictions outside of the UK where they continue to develop – see, for instance, Guernsey’s recent legislation enacted in December 2012. Many celebrities will see this judgment as potentially taking them one step closer to being able to control the dissemination of their image in the UK, particularly as it follows closely in the aftermath of the judgment of Dingemans J in the case of Weller v Associated Newspapers Limited last year. There, musician Paul Weller succeeded in a claim against Associated Newspapers for misuse of private information in relation to an article published on Mail Online which included unpixellated pictures of his daughter Dylan and twin sons John-Paul and Bowie. That decision highlighted the risks of publishing otherwise innocuous photos of children engaged in day to day activities in public places. Mail Online said at the time that they intended to appeal and described this decision as "a worrying development in our law" which seems to have "conferred unfettered image rights for children"
Given the constant media coverage of celebrities in the UK, it would be extremely lucrative to be able to dictate how and when one’s image could be used. However, even in finding for Rihanna, this case is unlikely to create any sort of quasi-right in this regard. The Court of Appeal was at pains to emphasise that no right exists in English law which allows a famous person absolute control over the use of his or her image. It was not the use of an image of Rihanna that constituted passing off by Topshop per se but the particular manner in which the retailer did so. Lord Justice Underhill described the case as borderline and said that the decision was heavily reliant on both the fact of Rihanna’s past public association with Topshop and the use of a very distinct image similar to that which Rihanna had used to promote her Talk That Talk Album.
Nonetheless, that the decision was so heavily founded upon the particular facts of the case rather than any defined legal principles may work in favour of celebrities who object to their image being used to sell non-licensed goods. This lack of certainty arising from this case may make retailers think twice before deciding to produce items of clothing which bear the likeness of a celebrity.