The English legal system does not acknowledge image rights. Celebrities cannot claim a monopoly on their image, nor a right to control the use of their name, likeness and other attributes that the public associates with them. Historically, they have resorted, as a compromise, to other forms of protection, such as registered trade marks and passing off (see explanation of passing off below), in particular.

However, a recent appeal judgement by the English Courts indicates that in certain circumstances, and depending entirely on the facts of the case, the Common Law tort of passing off can be “stretched” to prohibit the commercial use of celebrities’ images. This precedent is, in the view of the author, likely to be applied tightly, but presents an opening that celebrities will look to rely on to control the use of their image by unauthorised third parties.

The appeal judgement relates to the entertainment industry and follows a case successfully brought by pop-star Rihanna against the high street retailer Topshop. However, the implications for sports personalities, for whom a large proportion of the earnings originates from product endorsements, are self- evident and possibly greater that those for the entertainment industry.

Passing off

For our Continental readers, I will need to take a step back and explain the Common Law tort of passing off as a necessary premise to understanding the judgement. Please bear with me whilst I do so. For those readers familiar with the concept of passing off, you may skip this section and go straight to the heading “Background”.

It is often tempting to say that passing off is the closest thing the English system has to unfair competition. However, there is an important difference: passing off is not designed to protect from unfair competition, but to protect goodwill.

To succeed in a passing off claim, a claimant must establish three elements: 1) goodwill, 2) misrepresentation and 3) damage, as defined in the landmark case Reckitt & Colman Products Ltd v Borden [1990] R.P.C. 341, HL (at p.406):

• Goodwill: This is an entirely different concept from “being famous” and relates to a commercial activity in relation to specific goods or services.

Goodwill or reputation attach to the goods or services which the person or business in issue supplies in the mind of the purchasing public by association with the identifying ‘get up’ (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging). Because of such goodwill, the get-up will be recognised by the public as distinctive specifically of the plaintiff’s goods or services.

Goodwill is the value of the attraction to customers which the get-up possesses.  It has often been described as “the attractive force which brings in custom” or it could be described as the market’s perception of the value of the quality of the business and its products.

• Misrepresentation: In simple terms, there is misrepresentation when the way in which a product is offered “tells a lie” as to its origin, but it is important to note that no evidence of actual customer confusion is required for there to be misrepresentation.

The claimant must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that the goods or services offered by the defendant are the goods or services of the plaintiff.

• Damage: The claimant must demonstrate that he suffers or, in a quia timet action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant’s misrepresentation that the source of the defendant’s goods or services is the same as the source of those offered by the plaintiff.

Background

In 2012, Topshop started selling a T-shirt that had on its front a photograph of pop-star Rihanna taken by an independent photographer during the video shoot for the single “We Found Love”. The T-shirt we will be discussing is shown at the top of this blog article.

The video shoot, which took place in Northern Ireland, attracted a fair amount of press attention when the owner of the land on which it was made complained about the risqué clothing that Rihanna was wearing.

Topshop had obtained a licence to use the image from the photographer, but had not obtained a licence from Rihanna, who sued the high-street retailer for passing off.

First Instance Decision

In the first instance decision in 2013 (which can be found here) [Neutral Citation Number: [2013] EWHC 2310 (Ch) – Case No: HC12F01378, (1) Robyn Rihanna Fenty (2) Roraj Trade LLC (3) Combermere Entertainment Properties LLC (Claimants) v. (1) Arcadia Group Brands Limited (t/a Topshop) (2) Top Shop/Top Man Limited (Defendants)], the High Court found that the use of Rihanna’s photograph on the infamous T-shirt amounted indeed to passing off.

As Lord Justice Kitchin (‘Kitchin LJ’) summarised, Rihanna brought proceedings claiming that “a substantial number of people buying the T-shirt would think that she had endorsed it ,whereas, in fact, it was not connected with her at all. ” and that Topshop’s activities amounted to passing off.

Topshop responded, quoting again Kitchin LJ’s words, that “Rihanna had not asserted that this particular image or any features of it had become distinctive of her or her clothing and that she was, by these proceedings, claiming an image right, that is to say a right to control the licensing of her name and likeness, and that no such right is recognised in English law.”

The First Instance judge (Justice Birss) found that the unauthorised use of Rihanna’s image on the infamous T-shirt by Topshop amounted to passing off. In particular, he found that:

– Rihanna had goodwill relevant to the case not because of her success as a singer, which in itself does not constitute relevant goodwill, but because she was regarded by the public as a fashion icon and for her activities in the fashion world. In particular, she was not merely interested in fashion or seen to enjoy fashion, but had been involved in commercial activities relating to the fashion industry.

Rihanna had previously authorised clothing sold by Topman (a chain of stores associated with Topshop) and had participated in a competition organised by Topshop a couple of years earlier in which the winner would have the opportunity of a shopping appointment with Rihanna at Topshop’s flagship store in London. The competition required participants to write a short statement as to why they wanted the shopping appointment with Rihanna.

It is relevant to mention, and the judge noted, that Rihanna had also entered in an earlier agreement with another high-street chain, River Island, for which she had designed a range of clothing to be sold in its stores.

– Whilst nothing on the swing tag or other labelling of the T-shirt made any suggestion that it had been authorised by Rihanna, Topshop had in the past undertaken collaborations with other fashion icons and Rihanna’s fans would recognise the image on the T-shirt and might believe that it was a publicity shot for the recent musical release. Moreover, shortly before the T-shirt was put on sale, Rihanna had visited the Topshop store in Oxford Circus and Topshop had publicised the event, particularly through Twitter. This was one of a number of occasions in which Rihanna chose Topshop garments and Topshop publicised it very effectively. For example, one tweet relating to the latest visit read: “Ridiculously excited! @Rihanna is in our Oxford Circus store as we tweet. Ah, wonder what she’ll buy…”. The judge noted that Topshop had in the past sought to take advantage of the position of the singer as a fashion icon. As such, the facts of the case lead to the conclusion that there was misrepresentation in the use of Rihanna’s image on Topshop’s T-shirt.

– The judge considered that if, as he believed to be the case, 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 then that would obviously damage her goodwill. This would result in a loss of sales to her authorised merchandising business, but, more interestingly from our perspective, it also represented a loss of control over her reputation in the fashion sphere.

The judge accepted that the mere sale by a trader of a T-shirt bearing the image of a famous person does not, in itself, amount to passing off, but this case, based on its facts, fell square into the test for passing off. Topshop appealed against the decision.

The Appeal Decision

The Court of Appeal Decision (which can be found here) [Neutral Citation Number: [2015] EWCA Civ 3– Case No: A3/2013/2087 & A3/2013/2955, (1) Robyn Rihanna Fenty (2) Roraj Trade LLC (3) Combermere Entertainment Properties LLC (Claimants/Respondents) v. (1) Arcadia Group Brands Limited (t/a Topshop) (2) Top Shop/Top Man Limited (Defendants/Appellants)] confirmed the findings of the first instance decision.

Kitchin LJ started off his judgement by setting out some basic principles and re-iterating that “there is in English Law no “image right” or “character right” which allows a celebrity to control use of his or her name or image. (…) A celebrity seeking to control the use of his or her image must therefore rely upon some other causes of action such as breach of contract, breach of confidence, infringement of copyright or, as in this case, passing off“.

He then stated that simply because the name or image of a celebrity appears on a product, it does not follow that the public will assume that it has in some way been endorsed by that celebrity, and emphasised the role of evidence in passing off cases of this kind: the claimant must make good his case on evidence (para. 43).

Accordingly, Kitchin LJ proceeded to review the First Instance Judge’s assessment of the evidence put forward by Rihanna vis-à-vis the elements of passing off, considering the First Instance Judge’s findings correct and providing some useful additional comments in relation to them.

With regard to goodwill, Kitchin LJ, in particular, agreed with Rihanna’s counsel who submitted that the styling competition organised by Topshop and involving a shopping appointment with the singer was particularly striking: it attracted 1,300 entries in four days and the participants’ comments were illustrative of their devotion to Rihanna and that potential customers of Topshop look to her not just as a singer but as an authority on fashion. The singer had, therefore, goodwill in relation to fashion.

These are a couple of examples of the statements made by participants to the competition:

“I would love to win a style consultation with Rihanna as she is so unique, stylish and knows just what to wear to look stunning. I really could do with her help as I seem to have come to a standstill in what to wear and what not to wear, I’m hoping Rihanna can spice me up a little and bring my sparkle back.”

“Rihanna’s style is effortless cool, with a edgy, rockstar twist. I love the fact that she is not afraid to try something new or outrageous and that her style reflects her attitude. I try to do this with my own style where I mix hard styles with softer fabrics and Statement pieces to get across my relaxed, grunge/rock personality. She is a true style icon, who many people can learn from.”

Other examples quoted in the judgement were of similar tenor and content.

As to misrepresentation, Kitchin LJ noted in particular that “the vice in the impugned activities lay not in the use of Rihanna’s image but in using it in such a way as to cause misrepresentation”. The judge noted how Topshop in other occasions had publicised Rihanna’s shopping visits to their stores and said that this formed an important part of the background against which the impression created by the T-shirt had to be considered.

The appeal was consequently dismissed and the first instance decision upheld.

Comments

In various passages of both first instance and appeal judgements, the judges repeated expressly or impliedly the statement that no image rights exist under English law and referred to past judgements in which the same principle had been affirmed.

A significant example is Kitchin LJ’s reference to the Douglas & Others v Hello! case (see decisions [2007] UKHL 21 and [2008] 1 AC 1), in which the two well-known film actors, Michael Douglas and Catherine Zeta-Jones, sought to prevent the publication and use of unauthorised photographs taken surreptitiously at their wedding. In that case, Lord Hoffmann (with whom Baroness Hale of Richmond and Lord Brown of Eaton-under-Heywood agreed) said at para. 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.”

The Douglases succeeded in their claim, but not on the basis of a mere right to control the use of their image.

Another important point to be noted is the comment added to Kitchin LJ’s judgement by one of the other two appeal judges, Lord Justice Underhill (para. 63). Whilst agreeing with Kitchin LJ’s judgement, he stated: “I am bound to say that I regard this case as close to the borderline”.

Therefore, whilst it may be tempting to see the appeal decision in the Rihanna case as an opening to a form of protection of image rights in the English legal system, the author considers that if it is, it is a very narrow one. The judges were at pains to impart the message that no such right exists in the English legal system and the impression we get is that there is no appetite by the Courts to create one.

The principle to be taken away from this decision is, in the author’s view, that passing off cases with a flavour of image rights claims will be assessed fairly strictly on the facts and supporting evidence and, in order to be successful, will need to meet the classic test for a passing off case.

However, the decision is bound to generate other “image rights” cases as celebrities from all fields get involved more and more into fashion. Moreover, it provides useful guidance on how, in certain circumstances, a celebrity might bring a successful claim to prevent the unauthorised use of his or her image.

It will be interesting to see if in the next case of this nature, judges will take again a strict view in favour of passing off, or a more flexible interpretation of it in the direction of image rights.

Manuela Macchi  20 August 2015

This article first appeared in Global Sports Law and Taxation Reports (GSLTR) and is mentioned in the June editorial here.