Back in March 2012, Topshop began selling a t-shirt with the image of pop star Rihanna on the front. Topshop had a licence from the photographer to use the image but no consent from Rihanna herself.
In January 2015, Rihanna successfully convinced the Court of Appeal that the sale of these t-shirts without her consent amounted to passing off.
Retailers will quite rightly question the logic behind such a decision. How can a Court accept Topshop’s point that there is no concept of image rights in English law and then rule in Rihanna’s favour?
To answer this question, we need to understand what passing off is.
What is Passing Off?
Passing off enables you to protect your business from someone who is trying to take unfair advantage of your reputation e.g. using your name or selling similar looking goods.
To succeed, you need to be able to show three things:
1) Goodwill - connected to your goods/services.
2) Misrepresentation – that the public have been confused into buying the goods/services thinking they were actually yours.
3) Damage - e.g. loss of profit/reputation.
In July 2013, the High Court considered whether Rihanna could demonstrate the Classical Trinity, they found as follows:
1) Goodwill – Rihanna was a “style icon” associated with fashionable clothing and had “ample goodwill.”
2) Misrepresentation – this was the crux of the case and the Court hung its hat on two points:
i) In the past, Topshop had made a concerted effort to associate themselves with Rihanna; and
ii) The image on the t-shirt was taken from the video of her single “We found love.”
Those two points combined meant the public could assume the t-shirt was associated with the marketing campaign for “We found love” and would be part of what would motivate her fans to buy it.
3) Damage – this case resulted in a loss of:
i) sales to her merchandising business; and
ii) control over her reputation in the fashion industry.
Court of Appeal Comments
Whilst the overall decision will leave retailers feeling aggrieved, the Court of Appeal’s comments will provide some comfort. They stressed that:
- Simply because the name or image of a celebrity appears upon a product, doesn’t mean the public will automatically assume that it has been endorsed by them.
- Passing off does not exist to prevent fair competition.
- This case was “close to the borderline,” had it not been for the specific facts i.e. her past association and the distinctiveness of the image; her case would not have succeeded.
It would be naïve to dismiss the importance of this case simply because the Court of Appeal deemed it was close to the borderline. Despite what commentators might state, the facts of the case were not unique and it won’t be hard for celebrities to draw analogies in future cases.
Whilst this case won’t necessarily open the floodgates, it is an area that will continue to be tested. Celebrities have wealth, reputations to protect and in the right circumstances will take a stance against retailers.
So in light of the above, what practical steps can retailers take to protect their position?
1) Ensure that your buying teams understand the implication of this case and that they may need to obtain appropriate licenses to sell certain goods.
2) Put in place policies to enable your teams to assess the risk that proposed products and ranges might infringe the rights of another party.
3) Distinguishing situations where passing off is a real risk will be hard. Put in place guidance and procedures to ensure your teams have access to appropriate legal advice when necessary.
4) Protect yourselves through proper commercial arrangements: In particular:
- When negotiating with the supplier, consider your position on indemnities. Topshop had an indemnity from their supplier to cover this situation. Photographic agencies will be on notice of the risks now though.
- Remember that an indemnity is only as good as the party giving it. A case like this would test the finances of most big suppliers. As such, consider asking your supplier to take out appropriate indemnity insurance.
- If you do, ensure you have contractual provisions to allow you to monitor that policy and ensure that it is still valid.
Written by Adam RussellThis information is intended as a general discussion surrounding the topics covered and is for guidance purposes only. It does not constitute legal advice and should not be regarded as a substitute for taking legal advice. DWF is not responsible for any activity undertaken based on this information.