Rihanna’s successful claim against Topshop, which prevents it from selling t-shirts displaying a photograph of her, has been reported as being ‘a test case about the ability of celebrities to control their public image’ (see The Guardian’s report of the judgment). It was, in fact, a passing off claim and, as the Court of Appeal made clear in their decision ([2015] EWCA Civ 3), there is in English law no right to control one’s image.
However, despite this the decision does hold the door open for certain celebrities to bring proceedings if their image is being used in a way which falsely suggests that they have endorsed or approved goods or services and they have been caused damage as a result.
Factual Background
Rihanna, described by the Court of Appeal as ‘one of the most popular recording artists in the world’, complained about the sale by Topshop of a £22 sleeveless t-shirt featuring a photograph of her derived from a video shoot for her Talk That Talk album. In the image she is looking directly into the camera with her hair tied over her head with a headscarf. The photographer owned the copyright in the photograph and he had licenced the use of it to Topshop. Rihanna contended that the sale of the t-short amounted to passing off as a substantial number of people buying it would think that she had endorsed it when she has not. Topshop’s response was that what Rihanna was claiming was an image right and seeking to control the licensing of her name and likeliness and that this was not something that was recognised in English law.
The decision of Mr Justice Birss
Birss J gave judgment in July 2013 ([2013] EWHC 2310 (Ch)). He found that Rihanna and her associated companies had acquired significant goodwill in relation to fashion clothing – in the fashion world she was seen as a ‘style leader’.
He also found that Topshop had made considerable effort to emphasise its connection with various famous stylish people, including Rihanna. He relied upon two matters: the first was a shopping competition in 2010 in which Topshop offered contestants the chance to win a personal shopping appointment with Rihanna at its flagship Oxford Circus store; and the second was a visit by Rihanna to Topshop in February 2012 which was used by Topshop in a tweet to emphasise the fact that Rihanna was wearing or thinking of wearing Topshop clothing.
The judge also found that the image used on the t-shirt looked like a publicity shot for Rihanna’s album that was released at the time and that her fans “might well think that the image was derived from the publicity material for the album and formed make of the marketing campaign for it.” (Birss J Judgment [69])
The judge concluded that a substantial portion of those considering the product would be induced to think that it was a garment authorised by Rihanna. This would have been part of what motivated them to buy it as they would think that she had approved of it.
The fact that a substantial number of consumers were likely to be deceived into buying the t-shirt because of a false belief that it had been authorised by Rihanna would “obviously damage her goodwill” and “would result in a loss of sales to her merchandising business and also represent a loss of control over her reputation in the fashion sphere” (Birss J Judgment [74]).
The Appeal
The Court of Appeal first noted that there is in English law no “image right” or “character right” which allows a celebrity to control the use of his or her name or image [29]. This was confirmed in the case of Douglas & ors v Hello! Ltd & ors (No 3) [2007] UKHL 21, [2008] 1 AC 1, when Michael Douglas and Catherine Zeta-Jones sought to prevent the publication and use of unauthorised photographs taken at their wedding. Lord Hoffmann (with whom Baroness Hale of Richmond and Lord Brown of Eaton-under-Heywood agreed) said at [124]:
“There is in my opinion no question of creating an “image right” or any other unorthodox form of intellectual property. The information in this case was capable of being protected, not because it concerned the Douglases’ image any more than because it concerned their private life, but simply because it was information of commercial value over which the Douglases had sufficient control to enable them to impose an obligation of confidence.”
Accordingly a celebrity seeking to control the use of his or her image must rely upon some other cause of action such as breach of contract, breach of confidence, infringement of copyright or passing off.
In this case Rihanna relied on passing off. Kitchin LJ referred to Reckitt & Colman Products Ltd v Borden Inc & Ors [1990] RPC 341 when explaining the three elements that a claimant must establish in order to succeed in such a claim at [33] and summarised them in [43] as follows:
“[A Claimant] must show that he has a relevant goodwill, that the activities of the defendant amount to a misrepresentation that he has endorsed or approved the goods or services of which he complains, and that these activities have caused or are likely to cause him damage to his goodwill and business.”
Topshop had a number of grounds of appeal, none of which succeeded. It first contended that the Judge failed properly to have regard to the distinction between merchanising and endorsement. It argued 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. Merchandising therefore carries with it no misrepresentation. Further, even if some members of the public do believe that there is in existence some sort of licensing arrangement with the pop star in question then it is most unlikely to have an effect upon their buying decision.
Kitchin LJ agreed that these were material issues but held that the judge had properly considered the issues and determined that, in all the circumstances of the case, that the sale of the t-shirt bearing that image amounted to a misrepresentation that Rihanna had endorsed it [47]. The fact that some of the purchasers may not have thought this did not matter: all that Rihanna needed to establish was the likelihood of confusion of a substantial number of consumers, but not necessarily all of them [50]
Although there was a fair complaint that the judge had focused in his judgment on part of the evidence of a witness having earlier ruled that it was argument and not something that needed to be cross examined upon, Kitchin LJ found that this had no effect upon the conclusion to which the judge came [61].
After considering the rejecting the other arguments put forward by Topshop Kitchin LJ held that the Judge was entitled to find the sale by Topshop of the t-shirt amounted to passing off.
Underhill LJ (with whom Richards LJ agreed) agreed with Kitchin LJ; however he said that it was a borderline case and that the finding that ‘some members of the relevant public’ would find that Rihanna had endorsed the t-shirt was essentially based on her past association with Topshop and the features of the Image itself. He made it clear that neither of these by themselves would have been sufficient but in combination were capable of giving rise to the necessary representation [63]
Comment
While there is no general right to control one’s image, this decision confirms that such a right can be asserted via a passing off claim. With the growth in celebrities being used to endorse products and services it will not be hard for the ‘goodwill’ element of a passing off claim to be satisfied. Nor, if one has such goodwill, is it likely that the ‘damage’ element would present much of an obstacle (Birss J found that the mere fact that a substantial number of purchasers are likely to be deceived into buying the t-shirt because of a false belief that it has been authorised by Rihanna herself would have been damaging to her goodwill as it would amount to sales lost to her merchandising business and represented a loss of control over her reputation in the fashion sphere [74]). That therefore leaves the need to show a misrepresentation by a false endorsement – this is most difficult hurdle for potential claimants and will obviously depend on the facts. It is here that companies using celebrities’ images without their approval need to be careful, both about the impression created by the particular image and any public links with such celebrities, as both of these could shift the balance and result in a finding against them.
Sara Mansoori is a barrister at Matrix Chambers practising in Media and Information Law.
Interesting though the Rihanna case is, it hardly ranks as breaking new ground or as a ‘test case’ in the words of the Guardian. Irvine v Talksport [2003] EWCA Civ 423 (http://www.bailii.org/ew/cases/EWCA/Civ/2003/423.html) had already established many of the same points as the Rihanna case, although obviously the facts were different.