Topshop Loses Rihanna Passing Off Appeal

Posted: 3 years ago in: Case Study, NewsPosted By admin

BATTLE's summary of famous name case - Topshop v Rihanna appeal

Topshop Loses Rihanna Passing Off Appeal

  • Topshop loses Rihanna passing off appeal in the UK Court of Appeal.  The famous singer and renowned fashion chain disputed rights to use an image of the pop-star.  Topshop is a fashion retailer with a global reputation.  Topshop used an image of Rihanna on fashionable clothing in its stores in 2012.  The image was based on a photograph taken by an independent photographer.  He owned the copyright in the photograph.  He licensed use of the image to Topshop.
  • The image was derived from a photograph of Rihanna.  The picture was, taken on a video shoot for part of her “TALK THAT TALK” album.  Rihanna is posed, looking directly at the camera.  Her hair is tied above her head in a headscarf.  The shoot was well publicised.  It was a shoot in Northern Ireland.  It got press coverage because it was on land where a farmer had not given permission.
  • Rihanna took a UK High Court action to prevent use of the image.  It had not been licensed by her.  People buying the t-shirt would think she had endorsed it.  Whereas, in fact, it was not connected commercially with her at all.
  • The High Court held in favour of Rihanna’s side.

Rihanna – A top recording Artist

  • Rihanna sold around 30 million albums and 120 million singles in the seven years  before the high court case.  She also runs large merchandising and endorsement businesses.  She also promotes a link between herself and the world of fashion.

Rihanna Uses her R Slash Trademark

  • Rihanna uses her name and the R slash logo on many goods which she authorises.  Many people regard Rihanna as a fashion icon.  The court accepted that Rihanna had acquired a significant goodwill in relation to fashion clothing.
  • Initially Topshop sold the goods, described on-line as “RIHANNA TANK” and as “Photographic Rihanna motif tank”.  But all references to Rihanna were later removed.  Probably because Rihanna is a registered trade mark for clothing, the court said.  But the t-shirt was still available for sale, until the UK High Court issued a decision in July 2013 in favour of Rihanna’s passing off case.  See more information at BATTLE’s Rihanna v Topshop High Court – Decision page.

Character Merchandising and Endorsement Arguments

  • Topshop appealed the High Court decision to the UK Court of Appeal on a number of grounds.  The appeal case argued the sale of a garment bearing a recognisable image of a famous person in the UK does not, of itself, amount to passing off.  In some cases, the law of passing off can treat the use of such images as origin neutral.  Topshop argued that this was a market which it was lawfully entitled to enter.  The appeal argument was that the High Court found against Topshop in the first instance for a misrepresentation by omission, namely for failing to inform buyers that the t-shirts were not authorised by Rihanna.  If selling a garment with an image of a famous person does not amount to passing off, the claim  for misrepresentation by omission should have evaporated.
  • Character merchandising and endorsement are different in nature.  Character merchandising involves licensing the names of famous characters.  Endorsement implies authorisation and approval.

Celebrity Image Rights

  • The Court said there is in English law no “image right” or “character right” which allows a celebrity to control the use of his or her name or image.  But it is worth noting that a celebrity can rely on breach of contract, breach of confidence, infringement of copyright, or orthodox intellectual property rights, trademark infringement or passing off.
  • The law of passing off protects goodwill.  And it prevents one person passing off his goods or services as those of another.
  • Apart from a registered trade mark, no-one can claim monopoly rights in a word or a name.  Conversely, no-one may use a word or name to represent his goods as being those of another person to cause injury to goodwill and damage his business.
  • The case hinged more around the issue of representation, misrepresentation, goodwill and passing off.  The issue of reputation was not at the centre of the arguments, but the court did accept Rihanna could validy claim to be a style icon.

Image Used – Represented Endorsement by Rihanna

  • There were several factors in the case, concerning Rihanna’s goodwill, namely, Topshop’s links with Rihanna, and Topshop’s association with a style icon.
  • The judge considered that the sale of the t-shirt with Rihanna’s image amounted to a representation that Rihanna endorsed it.
  • Many fans would rate such endorsement by Rihanna as influential, and buy the t-shirt thinking she had approved and authorised it.

Not origin neutral – Topshop Loses Rihanna Appeal

  • The facts of Rihanna’s past public association with Topshop and the posed nature of the photograph taken together had some effect on the decision that the t-shirt could not be represented as origin neutral.
  • The Appeal Court decision upheld that of the High Court.  Passing off occurred. Topshop loses Rihanna appeal.
  • [Jan 2015]
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