You may remember that, back in May, CovBrands reported that Rihanna was suing Topshop for selling a t-shirt, which bore her image, without her consent. The judgment is in and the High Court has ruled that Topshop is liable on the grounds of passing off.
However, the court did not take the opportunity to introduce a “right of publicity” to English law that would have given celebrities a standalone right to control commercial use of their name, image, likeness or other aspects of their identity, as CovBrands previously wondered.
In light of this case retailers will need to be very careful if they are thinking of using a celebrity image on garments; if consumers are likely to be persuaded that the garment has been endorsed by the celebrity the retailer may well have liability.
So what is “Passing Off”?
To establish a case of passing off for use of an image on a garment, a celebrity will need to show:
- that goodwill or reputation attached to the product;
- misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that the product offered by it is authorised by the celebrity; and
- damage to the celebrity, by reason of the mistaken belief created by the defendant’s misrepresentation that the source of the defendant’s product is the same as the source of those offered by the celebrity.
Rihanna satisfied each of these hurdles on the basis that, as Mr Justice Birss said in his judgment:
- she had “ample goodwill to succeed in a passing off action of this kind… not only as a music artist but also in the world of fashion, as a style leader”;
- “a substantial portion of those considering the product will be induced to think it is a garment authorised by the artist”; and
- damage arose as a result of sales lost to Rihanna’s merchandising business and as a result of a loss of control over Rihanna’s reputation in the fashion sphere.
A number of key facts influenced Mr Justice Birss’ finding of passing off. First, the image on the t-shirt was based on a photograph taken during the video shoot for Rihanna’s single “We Found Love” from her 2011 “Talk That Talk “ album, which was released shortly before the garments were sold. Second, Topshop had a track record of collaborations with stylish celebrities, including Kate Moss. Taken together, these facts were likely to lead the public into thinking that Rihanna had endorsed the t-shirt when, in fact, she had not.
While, on the back of this case, it will not automatically be unlawful to sell garments bearing the images of well-known celebrities without the approval of the celebrity in question, retailers would be wise to take account of this decision nonetheless. If a retailer is thinking of using an image of a celebrity on its products without consent of that celebrity, it would be well advised to check whether the image or business activities of the celebrity would be likely to persuade consumers that the product was endorsed by the celebrity. Otherwise, it may fall foul of the law of passing off, just as Topshop has.
Apparently, Topshop will be seeking leave to appeal. As ever, CovBrands will keep you updated with developments.