Rihanna and Topshop 'passing off' ruling highlights need for retailers to check celebrity business activities, says expert

The Court ruled that Topshop is liable for 'passing off' by selling T-shirts featuring an image of the pop star Rihanna without her consent.

Intellectual property law specialist Robert Graham of Pinsent Masons, the law firm behind Out-Law.com, said that the ruling should act to warn retailers to be mindful of celebrities' business activities before using their image on products in order to avoid confusing consumers and opening themselves up to 'passing off' claims being brought against them.

"This judgment confirmed the previous the legal position namely that, setting aside privacy or copyright issues, celebrities do not have a general right to control the reproduction of their image," Graham said. "However in this case Topshop’s use of Rihanna’s image was found to be an act of passing off, in part because Topshop’s previous collaborations with celebrities, including Rihanna, was likely to enhance the likelihood of a purchaser being under the impression that the garment has been authorised by her."

"The judge was also persuaded by the argument that the image used was similar to an image used for a Rihanna album cover, thereby increasing the likelihood that consumers would believe that she had endorsed the product," he added.

"For retailers proposing to use such images on products this judgment underlines the importance of thoroughly checking whether the image or the past or current business activities of the celebrity or the retailer would be likely to persuade consumers that the product was authorised or endorsed by the celebrity," Graham said.

In the UK if you can prove that there is 'goodwill' in a business asset, then this goodwill is protectable. Goodwill is essentially the value in creating a recognised business reputation.

If another trader 'passes off' their services as being yours and appears to claim that their services are yours or that you are in some way connected or have endorsed the services, then you can take action. You can claim damages or seek an injunction to prevent that use, so long as you can show that you have or are likely to suffer damage as a result of the use.

Although Topshop obtained a licence from the photographer who captured the image emblazoned on the T-shirts, the company did not obtain permission from Rihanna to use the image. Rihanna objected and claimed that the unauthorised use infringed on her goodwill rights..

Mr Justice Birss said that Rihanna's business activities in the world of fashion had meant that she had built up goodwill rights in the fashion, as well as music, industry. Examples of her fashion activities include promoting Gucci and Armani clothing and designing clothes and directly endorsing items for River Island. She had also previously authorised some goods sold in Topshop, according to the judgment.

"In 2012 Rihanna was and is regarded as a style icon by many people, predominantly young females aged between about 13 and 30," Mr Justice Birss said. "Such people are interested in what they perceive to be Rihanna's views about style and fashion. If Rihanna is seen to wear or approve of an item of clothing, that is an endorsement of that item in the mind of those people."

"[Rihanna has] and had in 2012 ample goodwill to succeed in a passing off action of this kind," the judge added. "The scope of her goodwill was not only as a music artist but also in the world of fashion, as a style leader."

Topshop misrepresented Rihanna's endorsement of the T-shirts they sold with her image on it, Mr Justice Birss ruled.

"The public links between Topshop and famous stars in general, and more importantly the links to Rihanna in particular, will enhance the likelihood in the purchaser's mind that this garment has been authorised by her," the judge said. "In my judgment a substantial portion of those considering the product will be induced to think it is a garment authorised by the artist. The persons who do this will be the Rihanna fans. They will recognise or think they recognise the particular image of Rihanna, not simply as a picture of the artist, but as a particular picture of her associated with a particular context, the recent Talk That Talk album."

"For those persons the idea that it is authorised will be part of what motivates them to buy the product. I am quite satisfied that many fans of Rihanna regard her endorsement as important. She is their style icon. Many will buy a product because they think she has approved of it. Others will wish to buy it because of the value of the perceived authorisation itself. In both cases they will have been deceived," he said.

The judge found that Topshop's misrepresentation had caused the pop star's business to lose out on sales.

"If, as I have found, a substantial number of purchasers are likely to be deceived into buying the t-shirt because of a false belief that it has been authorised by Rihanna herself, then that will obviously be damaging to [her] goodwill," Mr Justice Birss said. "For one thing it amounts to sales lost to her merchandising business. It also represents a loss of control over her reputation in the fashion sphere."

"The mere sale by a trader of a t-shirt bearing an image of a famous person is not, without more, an act of passing off. However the sale of this image of this person on this garment by this shop in these circumstances is a different matter. I find that Topshop's sale of this Rihanna t-shirt without her approval was an act of passing off," he ruled.