In a Court of Appeal jugdgment this week, R&B star Rihanna won a fight viewed by some as the thin edge of the wedge to introducing image rights into English Law. Cambridge commercial and IP lawyer Stephen Oliver gives his view.
The star's legal advisors were successful in defending an appeal by Topshop against a High Court ruling that held that Topshop were guilty of passing off a T-shirt with Rihanna’s image as having been approved by her.
What is enshrined in English law?
In English law there is no protection for image rights. This principle was established in the case brought by Michael Douglas and Catherine Zeta Jones against Hello magazine.Without a contractual restriction or a claim for breach of copyright or privacy, a celebrity is unable to prevent the publication or use of their image.
A 101 on 'passing off'
So how did Rihanna persuade the Court to stop Topshop selling the offending T-shirt? Rihanna based her claim on the tort (civil wrong) of passing off. “Passing off” prevents one person selling goods and claiming that they are another’s goods or associated with or endorsed by that person. The ingredients of passing off are (i) that the person asserting the right to protection has developed goodwill in the products in question (in this case clothing) (ii) that there is misrepresentation to the public that the goods are that other person’s goods or associated with or endorsed by that person and (iii) as a result of the misrepresentation that person has suffered or is likely to suffer loss or damage.
So how did the Court reach its decision?
The Court was easily persuaded that Rihanna was not only a music superstar but also a fashion icon basing its findings on Twitter posts describing her style as “effortless cool and edgey” getting her over the first hurdle of establishing goodwill in clothing. The second hurdle, the misrepresentation to the public, was at the heart of the case. Could it really be said that by simply using a photograph of Rihanna, Topshop had represented to the public that Rihanna had somehow endorsed the product?
The image in question was well known and associated with a particular Rihanna music video which had attained notoriety because of a complaint from a farmer on whose land the video was recorded. More importantly however, in terms of establishing a risk of association or endorsement, was the fact that Topshop had used Rihanna’s visit to their flagship London store and given customers the opportunity to win a personal shopping appointment with her shortly before the T-shirt went on sale. This swayed the Court to finding that there was a risk that consumers would believe that the T-shirt had been endorsed by her. On the final element of passing off, namely damage, the Court had no hesitation in concluding it would result in a loss of sales of her merchandising and a loss of control of her reputation in the fashion sphere.
What should traders deduce from this decision?
So where does this decision leave traders who want to use images of celebrities on their products? The Court was at pains to point out that its decision was not creating an image right in English Law. This case was fact sensitive and turned on the distinctiveness of the particular image and the prior association between Rihanna and Topshop.
The use of any image on products will give rise to a number of legal issues and traders should not now simply assume that because English law does not recognise image rights the use of any particular image may not be prohibited for other reasons.
What's your view?
Have a comment on this article? Please contact Cambridge commercial solicitor Stephen Oliver.