A few months ago, this Kat discovered from her favourite and very reliable source of legal information, ie Vogue, that this decision had been appealed.
Indeed, Vogue was right and in fact today the Court of Appeal issued its decision in Fenty v Arcadia, confirming Birss J's judgment and holding that "the sale by Topshop of the t-shirt amounted to passing off."
In 2012 Topshop started selling - both in its stores and online - a T-shirt [or, to be more precise, and as Birss J explained at the time of his judgment, a "“boyfriend style tank” (i.e. an oversized sleeveless t-shirt)"] bearing the image of Rihanna. Topshop had secured a licence from the holder of the copyright in the photograph, but had not asked Rihanna for permission to use her image.
Rihanna brought proceedings, claiming that (as Kitchin LJ summarised) "a substantial number of people buying the t-shirt would think that she had endorsed it when, in fact, it was not connected with her at all. Rihanna contended that Topshop's activities therefore amounted to passing off."
Birss J ruled in favour of Rihanna in light of the particular circumstances of the case. In particular he found misrepresentation also on consideration that in the past the singer had been associated with Topshop, and that the image reproduced on the T-shirt was taken during the video shoot for the We Found Love single and was similar to other images used on Rihanna's promotional merchandising. The latter meant that Rihanna's fans might have believed that Topshop T-shirt had an image which "is not just recognisably Rihanna, [but] it looks like a publicity shot for what was then a recent musical release."
|No image (rights) available|
Kitchin LJ started his analysis by confirming what Birss J had stated in his judgment, ie that "[t]here is in English law no "image right" or "character right" which allows a celebrity to control the use of his or her name or image." [para 29] This means that "[a] celebrity seeking to control the use of his or her image must therefore rely upon some other cause of action such as breach of contract, breach of confidence, infringement of copyright or, as in this case, passing off." [para 33]
This said the judge reviewed the elements of a passing off action, and recalled that to succeed it is enough the goods or services of a trader like Topshop, are represented as being in some way connected or associated with another trader (Rihanna in this case, as she engages in licensing activities connected to the use of her image).
After recalling Laddie J's decision in Irvine and the distinction between character merchandising and endorsement, Kitchin LJ found that Birss J had applied the law correctly by stating that it is not a necessary feature of merchandising that members of the public will think that the products in issue are in any sense endorsed by the celebrity or creator of the character in issue. What is required, instead, is in the first place that the claimant has a relevant goodwill and that the impugned activity involves a false representation that there is a connection between the claimant and the goods in issue of a relevant kind, that is to say that the claimant is materially responsible for their quality. This false representation must have a part in the purchaser's decision to buy.
Richards and Underhill LJJ agreed with Kitchin LJ, although Underhill LJ noted: "I am bound to say that I regard this case as close to the borderline." [para 63]