The singer’s recent trademark win over Topshop isn’t necessarily good news for celebrity claimants; each case will be taken on its merits.
On 22 January, the Court of Appeal issued its much-anticipated decision in the case of Fenty v Arcadia, confirming the law on image rights, merchandising, and endorsement in the UK.
The case arose from a Topshop T-shirt bearing an image of pop star Rihanna (Robyn Fenty) taken during filming of the video for her 2011 hit single We Found Love (feat. Calvin Harris). Topshop had lawfully acquired the image but the T-shirt was produced without Rihanna’s consent. The singer claimed that the use of the image created a misrepresentation that the shirt was endorsed or authorised by her; this amounted to false endorsement, a type of ‘extended passing off’.
In 2013, the High Court found in favour of Rihanna, deciding that a substantial number of consumers would buy the shirt due to the false belief that it was officially endorsed. This was damaging to Rihanna’s goodwill, causing loss of sales in her official merchandise and representing loss of control over her reputation ‘in the fashion sphere’.
The appeal by Topshop, and resulting judgment, focused on four points:
1. Merchandising and endorsement are different
Character merchandising involves exploiting the name or likeness of famous characters (real or fictional). Endorsement involves approval of goods (explicitly or implicitly), by association. A celebrity’s name or image on an item, will not necessarily cause the public to assume it has been endorsed (for example Princess Diana’s image on a porcelain plate, or Elvis Presley’s name on toiletries). Each case will be decided on its facts.
2. A garment bearing a celebrity’s image is not automatically passing off
The sale of garments bearing images of Rihanna does not, in itself, amount to passing off. However, use of a particular image may give rise to a mistaken belief that those goods have been authorised; this is what the law seeks to prohibit.
3. Assessment from the consumers’ perspective
There must be the likelihood of confusion of a substantial number of consumers (but not all of them). It was relevant to look at potential customers who were Rihanna fans, prepared to shop in Topshop, and take into account Topshop’s publicity of its previous connection with Rihanna.
4. Procedural/evidential issues in Rihanna’s case (this was effectively dismissed)
The court upheld the finding of false endorsement, but this was based on specific circumstances: past public association between the parties, and features of the image itself. In addition, one judge stated that this case itself was ‘borderline’.
Furthermore, the judgment confirms that there continues to be no ‘personality/image right’, in the UK. A celebrity seeking to control their image must therefore rely upon some other cause of action, such as contract, breach of confidence, copyright or, as here, passing off.
Nevertheless, brands may now be more cautious about using famous faces to sell their products. Retailers using celebrity images need to be aware that anything wrongly suggesting official endorsement could lead to legal action. This point may be driven home when damages (claimed at $5m (£3.3m)) are finally decided.
Dorothea Thompson is a trainee music and entertainment solicitor at Bray and Krais