Mayer Brown partner Sarah Byrt discusses Rihanna’s passing off case against Topshop…
This is the first time that a celebrity has won a passing off case relating to their image on clothing (see judgment). Back in the 70s, ABBA failed to get an injunction because at that time, fans would not necessarily think that merchandise with the group’s image on was authorised. It is over 10 years since the law took a big step forward in Irvine v Talksport, when Eddie Irvine successfully sued over the unauthorised use of his image in a direct mail campaign.
Passing off is dynamic in that it moves in line with consumer perceptions. Even today, it is far from a foregone conclusion that every use of a star’s image on a piece of clothing amounts to passing off with, as the judgment makes clear time and time again.
You need to show the “classic trinity” of passing off – goodwill (which Rihanna showed with ease), misrepresentation (the crucial point here – were people likely to buy the t-shirt in the “false belief” that it was endorsed by Rihanna?) and damage.
This case applies traditional concepts of passing off to the world of celebrity endorsement. The judge was quite clear that this was not a case of “image rights”, since those are not recognised in the UK.
Rihanna could not rely on copyright, because the photographer who had papped her during her video shoot held the copyright; nor could she rely on trade marks because (other than a few days online) Topshop had not used her name in relation to the t-shirts. So she was left with passing off and having to show misrepresentation. When used in a passing off sense, “misrepresentation” does not mean that Topshop actively tried to deceive customers, just that people mistakenly believed the product to be endorsed.
Against her was the fact that Topshop had not used her name or logo plastered all over the product, as it might have been expected to do for an authorised range, as when it did its tie-up with Kate Moss. But the other circumstances, taken together, pointed towards misrepresentation.
It was very relevant that Rihanna is making a name for herself as a fashion designer and has collaborated on fashion collections, and that the photo looked like the promotional material for her album.
Topshop’s own position as a leading high street fashion retailer also counted against it: customers might not necessarily think that t-shirts on a market stall are authorised, but they are more likely to think that when they see a t-shirt in a well-known store which enters into fashion collaborations – and which had even run a promotion with Rihanna herself a couple of years before.
The judge commented about the symbiotic relationship between shops and celebrities, shown when the Topshop team tweeted about Rihanna visiting the store last year.
Mr Justice Birss was quite clear that not every use of a famous face on a t-shirt will amount to passing off, so this case is very fact-dependent.
Nevertheless, it is significant because it gives celebrities a useful precedent to refer to when they are making similar claims (even if the facts are different) and so it should make retailers more careful than ever, especially when faced with a wealthy star who has a sizeable merchandising deal to protect.
Sarah Byrt is an intellectual property partner at Mayer Brown