Topshop is, as the name suggests, one of the top fashion retailers in the United Kingdom. In 2012 Topshop released a t-shirt with a photograph of Rihanna on it. The photograph was from a video shoot from a single “We Found Love” from the album “Talk That Talk”.
Rihanna complained. The complaint was not about the copyright in the photograph – Topshop had licensed the use of the image from the photographer – the complaint was that Topshop had no right to use Rihanna’s image.
Rihanna complained that people would think that she had endorsed or approved the use of her image, and Topshop was passing off. Knowing that English law does not recognise it, Rihanna did not argue the right to control the use of her image.
As Lord Justice Kitchen said in the Court of Appeal, a celebrity seeking to control the use of his or her image must therefore rely upon some other cause of action such as breach of contract, breach of confidence, infringement of copyright or passing off.
In order to succeed under passing off, Rihanna had to show that she had a reputation or goodwill in her image, that members of the public would falsely believe that she had endorsed the use of her image on the t-shirt, and that she would suffer damage as a result.
In the High Court, Rihanna succeeded. The judge found that the use of the image would indicate the t-shirt had been authorised and approved by Rihanna.
Many of her fans regard her endorsement as important for she is their style icon, and they would buy the t-shirt thinking that she had approved and authorised it. Topshop appealed to the Court of Appeal.
Applying the test for passing off, there was no doubt that Rihanna could establish a reputation and goodwill in her image. Rihanna herself is incredibly successful, as was the video, song and album that the image came from. The main question was whether the public would think that she had authorised the use of the image on the t-shirt.
The Court of Appeal took into account the fact that Topshop had publicised occasions when Rihanna had shopped at Topshop and worn Topshop items and Topshop often had connections with celebrities.
For example, Topshop had sent out a Twitter feed when Rihanna was shopping at its Oxford Circus store. Both the High Court and the Court of Appeal took account of Topshop recognising and seeking to take advantage of Rihanna’s public position as a style icon.
Rihanna regularly endorses products and argued that the misrepresentation (that she had authorised the t-shirt) made it more attractive and played a material part in the decision of the public to buy it, thereby making out the grounds for passing off.
If the same or a similar case was heard in New Zealand, a similar result would be likely. The same case would probably succeed under the Fair Trading Act in New Zealand as well.
While others have failed in preventing the use of their name or image (Michael Douglas and Catherine Zeta-Jones failed when they sued Hello! in relation to their wedding photographs and Elvis Presley’s estate failed in relation to the use of his name in relation to toiletries), the particular combination of Rihanna’s fame, Topshop’s previous publicity of Rihanna, the fame of the image used and the product the image was used, made for a successful case.
Kate Duckworth is a partner of Catalyst Intellectual Property. She is both a barrister and solicitor and a registered patent attorney. She is passionate about resolving disputes over intellectual property.