Intellectual Property Update: Pop star pushes the Boundaries of Image Rights in the UK

In the week that Taylor Swift reportedly obtained a trademark in the USA to protect the use of her lyrics from her “Shake It Off” and “1989” albums, the Court of Appeal in England & Wales has upheld a decision where the use of an image of the pop star Rihanna on a T-shirt was found to be passing off and had damaged the goodwill and reputation of her business.  Torion Bowles, Commercial Litigation Solicitor at Hampshire based law firm Warner Goodman Commercial, reviews the controversial decision and reminds businesses of their responsibilities in relation to intellectual property.

In the case of Robyn Rihanna Fenty and others v Arcadia Group Brands Ltd and another [2015] EWCA Civ 3, the high street fashion retailer Topshop had sold a T-shirt displaying an image of Rihanna taken from a music video shoot for her 2011 “Talk That Talk” album. The photograph of Rihanna was taken by an independent photographer and Topshop had obtained a licence from the photographer to reproduce the image. However, Topshop had not obtained the authorisation or a licence from Rihanna to use the image on the T-shirt. Although Topshop did not need to obtain authorisation from Rihanna to use the image, she contended that the public would buy the T-shirt thinking she had authorised its sale and therefore Topshop were damaging the goodwill and reputation of her merchandising business.

In the case the Court of Appeal re-affirmed the classic elements of passing:

1. The claimant has goodwill or a reputation attached to their goods or services;
2. A misrepresentation has to be made by a defendant to the public (whether or not intentional) leading or likely to lead the public to believe that the goods or services offered are the goods or services of the claimant.
3. Damage caused to the goodwill/reputation of the claimant by reason of the erroneous belief engendered by the defendant’s misrepresentation that the source of the defendant’s goods or services is the same as the source of those offered by the claimant.

Lawyers for Rihanna successfully argued that by virtue of her being a style icon with mass appeal to women aged 13 to 30 years old, and having been publicly associated with Topshop in the past, the use of her image on the T-shirts would result in the public believing that she had authorised and/or was connected to the T-shirts. The Court found that the claimant had considerable goodwill and reputation in relation to her merchandising business, and the activities of Topshop involved a false representation that there was a connection between Rihanna and the T-shirts. The false representation did impact on the purchaser’s decision to buy and in turn damaged the goodwill and reputation of Rihanna.

The effect of the case is likely to be restricted to its facts in light of Topshop’s past association with Rihanna and the use of social media to publicise a visit by Rihanna to their London flagship store in the lead up to the release of the T-shirt. The floodgates are not expected to open with celebrities attempting to protect their precious image rights. The Court of Appeal was careful to stress that a celebrity’s (or anyone’s) image on a T-shirt did not constitute passing off per se and no one was automatically entitled to “image rights”. The Court of Appeal was clear that for an individual to acquire “image rights”, the individual would need to make the image the subject of a contract or licence or plead that the use of their image was an infringement of their copyright or a clear claim of passing off.

For more information on how Warner Goodman Commercial can assist you with protecting your intellectual property rights, and the goodwill and reputation of businesses contact Torion or the Commercial Team on 02380 717455.

ENDS

This is for information purposes only and is no substitute for, and should not be interpreted as, legal advice.  All content was correct at the time of publishing and we cannot be held responsible for any changes that may invalidate this article.