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Trade Mark Lawyer Update

Feb 20, 2015

Can you use an unlicensed image of a celebrity on your products?

Pop Star, Rihanna, was successful in stopping Topshop selling t-shirts bearing her image,but her victory was a narrow one and other prospective claimants may not be so lucky.
 

Background

In 2012, Topshop began to sell in its stores and through its website a t-shirt displaying a clearly recognisable image of Rihanna. This particular photograph was taken by an independent third party photographer, who licensed the use of the image to Topshop. As a result, the issue of copyright infringement was not relevant in this case and Rihanna had to base her claim on a different intellectual property right (IPR).

In this case, she relied on the law of passing off, i.e. that this clothing was not licensed and that a substantial number of people buying the t-shirt would think that she had endorsed it when, in fact, it was not connected with her at all.

Topshop responded that Rihanna was 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 under English law.

At first instance, the judge (Birss J) held that the mere sale by a trader of a t-shirt bearing an image of a celebrity does not, in and of itself, amount to passing off. But, in the particular circumstances of this case, the image of Rihanna was likely to lead people to buy it in the belief that it was a t-shirt which Rihanna had approved or authorised, and that this had caused her damage. This amounted to passing off.

Topshop appealed this decision to the Court of Appeal.

The Appeal

There were various complex technical points which emerged in the appeal, but one of the central questions to decide was whether:

(a) the Rihanna t-shirts in question gave the impression of “false endorsement”; or
(b) as Topshop alleged, purchasers of t-shirts bearing images of famous pop stars buy them not because they believe that the garments have any material connection with the pop stars at all but simply because they want to wear a garment carrying a picture of their idol. Topshop thus argued that merchandising carries with it no misrepresentation (as to false endorsement). Even if some members of the public did believe there was some sort of licensing arrangement with the pop star in question, then it was most unlikely to have an effect upon their buying decisions.

The Court of Appeal held for Rihanna, stating that the t-shirt did amount to a false endorsement. However, one of the Court of Appeal judges held that it was very much a borderline type of case and some facts were crucial in tipping the balance in favour of Rihanna, namely: (1) the particular features of the image itself, which shows a distinctive hairstyle adopted in Rihanna’s previous publicity for Talk That Talk and (2) Rihanna’s past association with Topshop. These two features in combination were just about capable of giving rise to the necessary misrepresentation under the law of passing off.

Comment

This is not the first English case to provide protection, under passing off, for false endorsement. The F1 racing driver, Eddie Irvine, successfully sued Talksport in relation to advertisements which were held to be false endorsements.

What seems to be important in such cases is the nature of the image in question and whether the celebrity in question has engaged in previous endorsement work in the past, which meant that members of the public were conditioned to think that the image in question amounted to the same thing and would have an influence on their buying decisions.

Unfortunately, for those in business wishing for legal certainty, this Rihanna v Topshop case will not provide it. Cases such as this are very fact specific, providing ample scope for each side in future similar disputes to argue their own opposing positions. This is because English law does not provide for an “image right”, but does potentially allow unlicensed character merchandising, so long as it does not amount to being a false endorsement and/or infringe any other IPRs, such as copyright, registered designs, unregistered design and registered trade marks.

While the Rihanna case may give major retailers serious pause for thought about engaging in unlicensed character endorsement, the fact of the matter is that this decision is unlikely to have much of an effect lower down the retail chain. Smaller players will continue to sell unlicensed character mechanising, but then will rely on this grey area of law to deter claimants from pursuing them and the fact that few celebrities will actually want to get involved in expensive, risky and time-consuming litigation (particularly against small players with shallow pockets).