Recent Cases Involving Celebrities Highlight the Importance of Protecting Intellectual Property Rights

Torion Bowles, Partner at Warner Goodman reviews two cases involving global superstars in the music industry, which have recently highlighted the importance of protecting intellectual property rights.

Two recent cases, one heard in the Court of Appeal of England and Wales and one in the United States District Court of Los Angeles, have both resulted in surprising decisions which, although dealing with high profile, high value disputes, send an important message to any owner of intellectual property.

Robyn Rihanna Fenty and others v Arcadia Group Brands Ltd and another [2015] EWCA Civ 3

Robyn Fenty, or Rihanna as she is globally known, issued proceedings against Arcadia Group Brands Ltd, trading as Topshop, for infringement of her image rights. Between March and August 2012 Topshop sold a t-shirt bearing Rihanna’s image for which no prior authorisation or approval had been given.

The image was taken by an independent third-party photographer who owned the copyright in the image, and who licenced the use of the image to Topshop’s manufacturing company for use on the garments. The t-shirt was described as the “Rihanna Tank” and “Photographic Rihanna Motif Tank”. The name of the t-shirt was subsequently changed, with all references to “Rihanna” removed, after 8 days of being for sale online; one of Rihanna’s licensing vehicles owns a Community Trade Mark for the word “RIHANNA”.

Nonetheless, the t-shirt remained for sale, with the alleged infringing image on it. The image was taken when Rihanna was filming the video to accompany her single “We Found Love”, a video which received much publicity in the UK.  Rihanna and her licensing vehicles issued proceedings on the basis that, whilst they may not own the copyright in the image (that being owned by the photographer), the use of the image on the t-shirts was not licensed by her. They claimed that a significant number of people would be led to believe that the garment, and the use of the image, had been endorsed by her when in fact she was not connected with it in any way, save for the image being of her.

The Court of Appeal upheld the High Court’s ruling that under the law of England and Wales there is no image right or character right that allows a celebrity to control the use of their name or image. There is, however, the law of passing off which enables a person to protect goodwill and prevents one person passing off its goods and services as being  those of another or as connected with that other. It was held that Topshop’s use of Rihanna’s image did constitute passing off based on the past relationship between Rihanna and Topshop, and the particular features of the image in question.

Topshop did not try to argue the absence of an image right, but rather the right to market goods bearing an image which may give rise to misrepresentation. The law of passing off prevents this type of deception to the general public.

It was made clear by the Court of Appeal that every case would turn on its own particular facts, but the three requirements of a passing off action (goodwill, misrepresentation and damage) can be applied to cases such as these.

The Advertising Standards Authority Code of Advertising Practice (CAP) prohibits the use of an identifiable image which implies personal approval without consent of the person. For the average individual it is probably possible to seek an injunction to prevent the use of such an image, however, damages would be nominal. Celebrities, however, are able to recover damages in such cases as they are generally able to charge for licensed usage of their image.

Under the Human Rights Act 1998 (HRA), all UK legislation must be in accordance with the European Convention on Human Rights (ECHR). Article 8 of the Convention is the right to private and family life. This does not however give an individual a right of action against a wrongdoer. If an individual wishes to bring a claim under the HRA, the claim would have to be against the government for not properly enacting laws in accordance with the ECHR.

Marvin Gaye v Robin Thicke and Pharrell Williams

Pharrell Williams and Robin Thicke, the writer and producer, and performer respectively of, “Blurred Lines”, the hit song of 2013, have been ordered by the US District Court in Los Angeles to pay damages of $7.4m to Marvin Gaye’s children. 

Marvin Gaye’s children, the owners of the copyright in his music, sued Pharrell Williams and Robin Thicke on the basis that “Blurred Lines” infringed the copyright in Gaye’s “Got to Give Up”. After hearing that both Williams and Thicke had been influenced by the music of Marvin Gaye during their childhood, and hearing instrumental versions of both pieces of music, the jury decided that Williams and Thicke were guilty of plagiarism. The actual notes of the music of the two songs were also examined and used as evidence to demonstrate the similarity between the two. The sheet music composition of the two songs showed the differences between them; however, the percussion is similar. This has raised concern within the music industry as technically the percussion does not form part of the musical composition of “Got to Give Up”; this was added to the song later. As the percussion element of the song was not contained in the written composition, this should not have formed part of the case as it could not actually have been copied; it was a mere “sound-alike” not a “sample”.

It has been said by some in the music industry that this ruling could have a catastrophic effect on the industry. The similarities between the two songs have been said to be so slight, and so common within the music industry, that if many cases are brought to court on the same basis it could spell disaster for the industry and the courts having to deal with the influx of claims. Many artists are influenced by their predecessors, but this ruling highlights how careful artists have to be when taking inspiration from others; there is a fine line between being influenced by something and infringing its copyright.

The Gaye family are now seeking an injunction to prevent further distribution of the hit song which has sold over 7.3 million copies in the United States alone, and made profits of $16.68m. Williams and Thicke are expected to appeal the decision and the application for an injunction. It is anticipated that this case is far from over and litigation may continue for many years, with final judgment being given by the Supreme Court of the United States of America.

If you require any advice on intellectual property rights, you can contact Torion or the Commercial team on 02380 717717 or visit their section of the website here.

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.