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Thursday, August 15, 2013

What's in an image? English High Court finds passing off in Rihanna v Topshop

By Lawyer Jonathan Adamopoulos

The High Court of England and Wales, in Fenty & Ors v Arcadia Group Brands (t/as Topshop) & Ors [2013] EWHC 2310 (Ch), has found that Topshop, a fashion retailer, engaged in passing off when offering for sale t-shirts bearing the image of famous pop singer Rihanna. This is a warning to retailers when selling merchandise associated with celebrities even when the merchandise does not infringe registered trade marks.


The facts


Topshop had been selling t-shirts featuring a photograph of Rihanna, based on an image taken during a video shoot for one of Rihanna's singles. The t-shirts were sold in-store and on Topshop's website. Topshop had a licence from the photographer to use the photograph but not from Rihanna. As Topshop did not use the word 'Rihanna' (a registered trade mark) on the t-shirts, swing tags or in any relevant marketing, the singer was confined to the common law action of passing off.

Rihanna needed to demonstrate that she had an established goodwill or reputation among a relevant class of consumers, that Topshop's conduct was likely to deceive those consumers into thinking that the t-shirts were endorsed by, or originated from, her (ie a misrepresentation), and that there was at least a likelihood that the misrepresentation would be damaging to her goodwill. 

The court's ruling


Topshop was found to have engaged in passing off. Justice Birss found that Rihanna had an established goodwill in fashion, remarking that Rihanna 'was and is regarded as a style icon' primarily by young women between the ages of 13 and 30.

'If Rihanna is seen to wear or approve an item of clothing, that is an endorsement of that item in the mind of those people.'

Her goodwill was evidenced by her endorsement arrangements with other brands and in her involvement in design with various fashion houses.

The key issue was whether Topshop engaged in a misrepresentation in selling a t-shirt bearing Rihanna's image. Topshop argued that consumers would buy the t-shirt because they liked the product and that they would not expect that the garments were authorised or endorsed by Rihanna. Justice Birss disagreed, holding that in the circumstances, there was a strong indication that the t-shirts would be incorrectly perceived as authorised merchandise of Rihanna. This was despite no express mention being made by Topshop of Rihanna.

Importantly, Topshop has a history associating itself with 'famous stylish people'. For example, a month before the release of the t-shirts, Rihanna visited one of Topshop's stores in London. The event was publicised on Topshop's Twitter account and a competition was run giving winners the opportunity to shop with Rihanna during her visit. This increased the chances that consumers would think that the t-shirts were authorised by her. Secondly, the image itself was based on a famous shoot carried out in the UK (which had separately received media attention), so her fans would likely think the t-shirt was part of a marketing campaign for that particular single.

Comment


Whether or not selling merchandise with the image of a celebrity will amount to passing off will depend on the circumstances of each case. Justice Birss emphasised that merely including the image of a celebrity on a t-shirt does not, in and of itself, establish passing off. However, given the law of passing off protects a person's goodwill, passing off in respect of garments is likely to be found where the celebrity has significant influence in fashion.

The decision is consistent with Australian law. Protection against passing off in Australia is supplemented by section 18 of the Australian Consumer Law which prohibits misleading or deceptive conduct (or conduct which is likely to mislead or deceive). Section 29(g) extends this prohibition to false representations that goods or services have a particular sponsorship or approval.

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