Take a bow: Rihanna’s claim for passing off against Topshop upheld by the Court of AppealPrint publication
The case  concerned the sale by Topshop of T-shirts bearing an image of the popstar Rihanna. Although Topshop had a licence from the photographer to use the image, it did not seek permission from the singer herself. Rihanna argued that the sales of the T-shirts without her consent constituted passing off. She maintained that the sales would be damaging to her goodwill, particularly given her association with the fashion world.
The case was not about image rights, save for confirmation by the Court of Appeal that under English law a celebrity does not have the right to control the use of their image generally. Nor was the case about privacy. It was about passing off and the three elements needed to substantiate a claim, namely:
- a goodwill or reputation attached to the relevant goods or services
- a misrepresentation by the defendant to the public (whether or not intentional) leading, or likely to lead, the public to believe that the goods or services offered by him are those of the claimant
- damage to the claimant, arising from the erroneous belief that the source of the defendant’s goods or services is the same as those offered by the claimant.
Judgment in the High Court was given by His Honour Judge Birss QC. He referred to the High Court decision in Irvine v Talksport  in which it had been held that there was nothing in law to prevent a case of passing off being made out in a false endorsement case. He said that this case was not a false endorsement case but a merchandising case, although the legal principles were the same in each case as regards a passing off action. On appeal, Kitchin LJ, who gave the leading judgment, held that Birss J had correctly distinguished between the concepts of merchandising and endorsement, in particular that it was not a necessary feature of merchandising that members of the public thought that the products were endorsed by the celebrity (or the creator of the character in issue in the case of character merchandising).
Kitchin LJ explained that in a claim for passing off in a merchandising case, the claimant had to show:
- the application of the name or image to the goods had the consequence that they told a lie. That requirement, which was closely allied to distinctiveness, would not be satisfied if the name or image denoted nothing about the source of the goods
- the lie was material and had an effect upon the buying decision.
On the facts of this case Kitchin LJ considered that the sale of the T-shirts bearing Rihanna’s image did amount to a representation that she had endorsed it; many of her fans would regard that endorsement as sufficiently material to cause them to buy the T-shirts.
Kitchin LJ rejected the argument that there was any inconsistency between Birss J’s finding that the use of Rihanna’s image on the T-shirts amounted to a misrepresentation that they had been approved or authorised by Rihanna and the proposition that she did not have an absolute right to prevent traders selling clothing bearing her image.
Kitchin LJ also held that Birss J had acted correctly in taking into account the activities of Topshop in publicising and promoting its association with Rihanna over a period of time, for example, by communicating to the public when the singer wore one of their items or visited one of their stores, and that Topshop was seeking to take advantage of Rihanna’s public position as a “style icon”, who was associated with fashionable clothing.
The use of the word “lie” in Kitchin LJ’s judgment is striking, suggesting that the hurdle for celebrity claimants or the creators of characters (the recent case about Betty Boop for example, which we summarised here) in establishing passing off will be a high one. This is confirmed by the supporting judgment of Underhill LJ who considered that this case was “close to the borderline”. Of particular relevance to Underhill LJ was Rihanna’s past association with Topshop and the particular image in question which was associated with one of her albums, and as such, could be assumed to be part of the marketing campaign for that record. The judgment in this case is particularly fact specific, and should not be taken too readily as authority in other cases with very different factual scenarios.
The Court of Appeal has also upheld the costs order against the retailer as although it had made a number of without prejudice offers, nothing it had offered bettered or matched the injunction granted in the singer’s favour.
  EWCA Civ 3
  FSR 60