For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Wednesday, 31 July 2013

So cool in court as Rihanna tops Topshop over T-shirts

Another day, another fascinating BBC snippet with which to enrich our understanding of contemporary IP law.  This time, courtesy of this Kat's good friend Lawrence Ryz (katpat!), comes this link:

"Pop singer Rihanna has won a legal battle with Topshop over a T-shirt bearing her image. The star sued Topshop's parent company Arcadia for $5 million (£3.3m) over the T-shirts, which featured a photo taken during a video shoot in 2011. Her lawyers told the High Court in London the fashion chain duped fans and may have damaged her reputation [as if such a thing were possible, snipes Merpel]. They said the picture was "very similar" to images used on CD sleeves for one of her albums.

Judge, Mr Justice Birss [the arbiter of all things cool], ruled that a "substantial number" of buyers were likely to have been deceived into buying the T-shirt because of a "false belief" that it had been approved by the singer. He said it was damaging to her "goodwill" and represented a loss of control over her reputation in the "fashion sphere".

Topshop's lawyers had claimed the 25-year-old was making an unjustifiable bid to establish a "free standing image right" over use of her picture in the UK. The photograph used by Topshop had been taken during filming of a music video in Northern Ireland in 2011.

In a two-minute judgment Mr Justice Birss, said there was
"no such thing as a general right by a famous person to control the reproduction of their image. The taking of the photograph is not suggested to have breached Rihanna's privacy. The mere sale by a trader of a T-shirt bearing an image of a famous person is not an act of passing off. However, I find that Topshop's sale of this T-shirt was an act of passing off".
Mr Justice Birss however did not make an assessment of any liable damages in his ruling.".
Good news for serious IP scholars is that the judgment in Robyn Rihanna Fenty v Arcadia [2013] EWHC 2310 (Ch), not yet posted on BAILII, can be read in full here.

The judgment, which this Kat has only just received and hasn't yet time to read in full, appears to bring British passing off law up to date, running through the classical Jif Lemon case of Reckitt & Colman v Borden, through the 1970s consolidation of the law in Tavener Rutledge v Trexapalm (the Kojak Lollipops case) [1977] RPC 275, Lyngstad v Anabas (goods carrying photographs of the pop group Abba) [1977] FSR 62, and Wombles v Womble Skip Hire (skips for collecting rubbish branded Womble) [1975] FSR 488, thence to the age of merchandising and endorsement in Mirage Studios v Counterfeat Clothing (the Teenage Mutant Ninja Turtles case) [1991] FSR 145 and Irvine v Talksport [2002] FSR 60, and finally up to the age of the social media, with references to Twitter and tweets.

Rihana's reputation here, here and here. She's a Bad Girl ...

STOP PRESS: the judgment is now accessible online from the Judiciary website here -- and on BAILII here

2 comments:

Aaron said...

Definitely a very interesting judgment.. also suggests (as I thought would be the case) that in using an image, much depends on the image in question in determining whether there is passing off.

Use a well-known image and it is more likely that passing-off can be established. A more obscure picture is more likely to be ok (depending on the circumstances).

I think the earlier Topshop competition and the River Island deal probably helped swing it, too.

Sits nicely with the Button Moon case of the last few weeks...

Anonymous said...

http://www.bailii.org/ew/cases/EWHC/Ch/2013/2310.html

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