LOGOS AND NO-GOS
THE RIHANNA VS. TOPSHOP T-SHIRT FACE-OFF
LEGAL ANALYSIS
Rihanna may well be feeling like “The Only Girl (In the
World)” having won her High Court claim against Topshop
for passing off. The claim related to a T-shirt which
Topshop had been selling that featured Rihanna’s image.
Essentially, the claim focused on whether customers
would be led to purchase the T-shirt on the basis they
thought it had been authorised, or endorsed, by Rihanna.
Merchandising v endorsement
BACKGROUND
In March 2012 Topshop began selling a T-shirt with an image
of Rihanna on it. The image was supplied to Topshop by an
independent photographer who had taken the photograph at
the video shoot for her single “We Found Love”. Accordingly,
there was no issue of copyright infringement and, likewise,
no issue of breach of confidence. Rihanna, however, had not
consented to the use of her image. Around 12,000 units were
sold in the three months that it was available to buy.
Rihanna could not rely on so-called “image rights” in England,
as she might have done were the claim in the United States. It
is established law that there is no such thing as a free standing
general right by a person to control reproduction of their image
(Douglas v Hello [2007] UKHL 21).
The case therefore concerned the tort of passing off, for which
Rihanna needed to prove three things:
1.
she had goodwill and reputation in her image amongst
relevant members of the public;
2.
there was an actionable misrepresentation (i.e. members
of the relevant public were deceived into purchasing the
T-shirt under the mistaken belief that she had endorsed
the product); and
3.
there had been damage to her goodwill.
The case largely turned on the second element – whether
Topshop had made a false claim or suggestion of endorsement,
which was liable to deceive customers.
Birss J made the point that, in the past, merchandising and
endorsement have proved difficult subject matters in passing off
cases. The key case in relation to false endorsement is Irvine
v Talksport [2002] FSR 60 in which Laddie J concluded that
Eddie Irvine had “a property right in his goodwill which he could
protect from unlicenced appropriation consisting of a false
claim or suggestion of endorsement of a third party’s goods or
business”.
The difference between merchandising and endorsement is that
it is not a necessary feature of merchandising that members of
the public would think that the products are endorsed by the
characters featured, as opposed to merely officially licensed by
the rights holder. However, the Judge explained that there is
in fact no difference in law between an endorsement case and
a merchandising case. The legal principles are the same and
relate to protection of goodwill. If the claimant has goodwill to
protect and then merchandise is sold in circumstances where the
purchaser believes that the merchandise has been endorsed, that
is an actionable misrepresentation.
Up until the early 1990s, merchandising rights were not found
to exist before the English Courts. This changed in 1991
following Mirage Studios v Counterfeat Clothing (The Teenage
Mutant Ninja Turtles case) in which it was accepted that the
claimant had proved that the public did expect goods bearing
the image of a famous cartoon character to be licensed.
However, the facts must always be made out and this will turn
on the nature of the relevant market and on the perceptions of
the relevant customers, as was proved in the current case.
The nature of the market and the perceptions of the relevant
customers
When looking at this question the Judge clearly appreciated
that there were two very distinct reasons why people might
have wanted to buy the T-shirt in question:
1.
The first group simply bought the T-shirt because
they wanted an image of the pop star. In this case no
misrepresentation has taken place, as the customers have
not been deceived.
2.
The second group buys the merchandise on the basis
that it is official merchandise that has been endorsed. This
therefore amounts to a misrepresentation about trade origin.
The stature of the retailer
Proof of damage
The stature of Topshop as a major reputable high street retailer
was also important in the case. The Judge pointed out that
members of the public would not be surprised if Topshop did
have relations with celebrities, which led to them having certain
authorised products on sale in their shop. Topshop “was no
market stall” and has in the past had high profile collaboration
with a number of celebrities and has also, historically, made a
great deal of effort to publicise its connections with famous
stylish people. In fact, in the past, Rihanna had publically
shopped in Topshop and the Judge identified that a number of
purchasers of the T-shirt would have been aware of this, which
may have increased the likelihood for deception.
The final part of the passing off test is proof of damage, which
is generally simple to make out in a case where the claimant
has goodwill and a misrepresentation has been established.
Where a number of purchasers have been deceived into buying
a T-shirt because of a false belief it had been authorised, this
will clearly be damaging to the claimant’s goodwill. Additionally,
the sale of the unauthorised T-shirt represents sales lost to her
merchandising business, as well as a loss of control over her
reputation in the fashion industry.
The nature of the product
The nature of the T-shirt itself was also important in the case.
The image featured on the T-shirt came from a video shoot for
Rihanna’s “We Found Love” video and the Judge explained
that many of Rihanna’s fans would have recognised this. Those
fans may well have believed that the T-shirt was a part of the
marketing campaign for that project.
Goodwill
Turning to the nature of Rihanna’s goodwill, the Judge explained
that Rihanna clearly had goodwill as a music artist. However,
she also had goodwill in the world of fashion, as a style leader.
The Judge found on evidence that Rihanna was regarded as a
style icon by many people, predominantly young females aged
between 13 and 30. These people are interested in Rihanna’s
views about style and fashion and if Rihanna wears or approves
of an item of clothing, that is an endorsement of that item in the
minds of those people.
Topshop argued that there was nothing on the T-shirt itself that
represented it as an item of official Rihanna merchandise and
in particular, it did not feature Rihanna’s well known “R slash”
logo, or indeed the word Rihanna itself, which is a registered
trade mark. Topshop also identified a number of other retailers
selling similar T-shirts featuring her image and argued that the
customers who purchase these garments appreciate that they
are not official merchandise, or endorsed; they simply like the
product and the image.
CONCLUSION
Whilst, as with all passing off cases, this case turns on its facts,
it provides some cautionary notes for businesses that use,
without permission, the goodwill of celebrities for commercial
gain, in a manner that may suggest an association, or
endorsement, from the celebrity in question.
CONTACT DETAILS
If you would like further information or specific advice please contact:
GEOFF STEWARD
DD: +44 (0)20 7849 2341
[email protected]
OLIVER SMEETH
DD: +44 (0)20 7849 2976
[email protected]
AUGUST 2013
MACFARLANES LLP
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This note is intended to provide general information about some recent and anticipated developments which may be of interest.
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