This blog considers the recent case of Fenty v Arcadia  EWHC 2310, in which Rihanna successfully sought damages for a passing off claim she brought against Topshop for using a T-shirt with her image on, without her authorised consent.
In 2012 Topshop began selling a T-shirt with an image of Rihanna on it. Although Topshop had acquired a licence from the photographer (eliminating any potential copyright infringement), Topshop had not acquired a licence from Rihanna to allow them the right to use a photograph of her. Rihanna contended that such actions by Topshop infringed her rights, something with Topshop refuted.
In relation to the potential rights Rihanna could argue infringement for, Mr Justice Birss swiftly dismissed the contention of ‘image rights’, stating that in England “there is no such thing as a free standing general right by a famous person (or anyone else) to control the reproduction of their image”. Mr Justice Birss identified that the case boiled down to the matter of passing off, and suggested that for Rihanna to be successful in her claim she needed to demonstrate that (1) she had goodwill and a reputation amongst the public (2) that the conduct complained resulted in a misrepresentation, and (3) that the misrepresentation caused damage to her goodwill. These factors were considered in turn.
It was held that Rihanna is regarded a style icon amongst those aged 13- 30. On that basis it was found that there was clearly ‘ample’ goodwill to succeed in an action of this kind.
To amount to passing off it had to be shown that there was a misrepresentation about the trade origin. Simply wishing to buy an image of a pop-star or simply selling a t-shirt with a recognisable image of a famous person would not amount to a misrepresentation. There had to be a ‘false belief engendered in the mind of the potential purchaser’, which resulted in that person purchasing the product. It was held that the public link between Topshop and celebrities, together with the links Topshop had to Rihanna would enhance the likelihood in the purchasers mind that the t-shirt was authorised by her. Furthermore, the fact that Rihanna’s trademarks, which can been seen on products endorsed by her, were absent was not strong enough to negate the impression that the t-shirt had been authorised by her.
It was held that the a substantial portion of those considering purchasing the product (including Rihanna fans) would have been induced into doing so on the belief that the T-shirt has been authorised by Rihanna. On that basis the presence of a misrepresentation was found.
It was held that due to the misrepresentation being present, there would be damage suffered by Rihanna, regardless of the fact that the product was considered ‘high quality’.
Considering the above points, the judge found in favour of the claimant and damages in the sum of £3.3M were awarded to Rihanna.
This case clearly sets outs the importance of intellectual property in ‘all things celebrity’. With goodwill and reputation being fundamental to the success and profitability of celebrities, ensuring that such rights are protected and monitored is of crucial importance. Not only does this refresh and update the law of passing off, it clearly demonstrates that whilst a garment can be freely sold bearing the image of a famous person on it, the sale of such a garment in these circumstance would amount to passing off. This case provides a useful reminder to those retailers of the dangers of passing off and the need to consider whether their actions could amount to an intellectual property infringement in the future.