Fenty & Ors v Arcadia Group Brands Ltd (t/a Topshop) & Anor  EWHC 2310 (Ch) – Read judgment
The ruling in the Rihanna/Topshop case marks a significant trend, both in case law and society, towards equating image with commodity. Increasingly, celebrities and sports personalities earn large sums of money from sponsorship and advertising deals because companies recognise that their image sells products. So how can so-called image rights be protected?
The legal regime around image rights has arisen out of common law concepts of property, trespass and tort (civil wrong). The common law system means that precedents for the protection of an individual’s likeness have arisen from judges’ decisions in cases involving unauthorised exploitation of a likeness where an individual has suffered damage as a result. Some US states have enacted specific legislation equating celebrities’ personality rights with property rights, where expiration of the rights occurs 70 years following the death of the celebrity.
In England, however, the legal regime to protect a celebrity’s image rights is complex. Celebrities operate in a manner more akin to a company, using their image and name as assets that they want to protect as a marketable commodity. A judge must therefore rely on precedents set by case law and determine whether misrepresentation of that individual’s likeness has occurred in the course of trade under the law of passing off.
Bringing an action of passing off
Passing off is closely related to the protection of trade marks. It is designed to prevent misrepresentation in the course of trade to the public. Three elements must be fulfilled in order for a celebrity to be successful in bringing a claim for passing off. These are:
- Goodwill (meaning that an intangible asset has a quantifiable commercial value) owned by a trader
- Damage (or perceived damage) to goodwill
In Fenty v Arcadia (aka Rihanna v Topshop), the judge clarified that a retailer selling a garment with a recognisable image of a famous person is not, in and of itself, passing off. Rather, the item must engender a false belief in the mind of a potential purchaser which influences their decision to buy the product. The judge had to apply all three elements to establish whether there was passing off .
1. Is goodwill owned by Rihanna and is Rihanna a “trader”?
As Rihanna’s name and likeness are valuable commodities for which companies pay a lot of money to use, the element of goodwill existed. Additionally, as Rihanna runs a very large merchandising and endorsement operation with agreements in place with third party companies to sell her merchandise (including clothing), not to mention that she designs clothing to be sold in River Island, she was deemed to be a trader.
2. Has misrepresentation occurred?
It was held that customers could be misled for a number of reasons, one of which is that the photograph on the t-shirt is a high-quality shot and is similar to one of Rihanna’s album covers. But the nail in the coffin for Topshop was its pre-existing relationship with Rihanna. Rihanna had been invited to the launch of Topshop’s flagship store in London, and Topshop had sent a tweet out to its 350,000 followers on Twitter informing them of her presence in its store, presumably to promote the store. As Topshop also ran a competition where buyers could win tickets to see Rihanna in concert, the judge concurred that the public would assume that Topshop had an agreement with Rihanna to sell her clothing and were therefore more likely to buy the t-shirt with her image on it.
3. Has there been any damage to Rihanna’s goodwill?
The judge decided that the purchase of the Topshop t-shirt by members of the public (and in particular Rihanna’s fans) who believed it to be merchandise authorised by Rihanna could lead to lost sales of official merchandise. The sale of this t-shirt also represents a loss of control over Rihanna’s reputation in the fashion sphere.
Is she the only girl (in the world)?
Rihanna’s dispute with Topshop is not the first case of passing off in relation to false endorsement to be brought in the UK. In 2002 a useful precedent for celebrities bringing actions in passing off was set. Eddie Irvine, a Formula One racing driver, brought an action of passing off against Talksport (a UK radio station) for the use of a photograph of himself holding a Talksport branded radio (this item had been added to the photograph) on a brochure advertising the station. Irvine claimed that the photograph wrongly suggested that he endorsed the radio station and that he had suffered loss and damage as a result. The judge concluded that Irvine had a property right in his goodwill which he could protected from unlicensed appropriation or suggestion of endorsement of a third party’s business.
The judge made it very clear that this case is not to do with image rights. However, the issue of image rights continues to develop across the world, with Guernsey becoming the first country to pass a law on the protection of personality and image rights in 2012. It would have been interesting if Rihanna had registered her image rights in Guernsey, as that would have instigated a landmark court case. From this ruling though it looks like English judges are not big fans of image rights, but given the trend and the likelihood of more of these types of cases arising, the UK may eventually decide to introduce statutory legislation to protect celebrities’ image rights.
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- Further reading: Excellent article on controlling your image rights
- Who owns the copyright on barristers’ advocacy? – Emily Goodhand
- A1P1 and property rights in the Supreme Court again