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Rihanna v Topshop - Case Commentary

September 30, 2013

Written by Joseph Slane (4th Year LLB)

The Dispute

In March of 2012 Topshop sold a t-shirt bearing an image of Rihanna. Topshop had a license to use the image from the photographer, but no permission was given by Rihanna herself.  In July of 2013 Rihanna brought an action against Topshop, contending that the sale of the top without her approval infringed her intellectual property rights, and amounted to passing off. Birss J found for Rihanna, agreeing that the sale of the top did amount to passing off.[1] This case provides an interesting development in the law of passing off, and also raises interesting considerations regarding consumer awareness and celebrity marketing power.

 

Passing Off

Those studying Intellectual Property and also Obligations will be familiar with the basic elements of passing off: goodwill, misrepresentation and damage. In order to establish passing off in this case, Rihanna had to establish that she possessed goodwill or a reputation amongst relevant members of the public. Furthermore, Topshop’s sale of the t-shirt had to amount to a misrepresentation likely to deceive those members of the public that the t-shirt was authorised by her. Finally, she was required to establish that this misrepresentation would damage her goodwill. 

The Differences between Endorsement and Merchandising

Prior to analysing the three elements, Birss J referred to previous passing off case law in the context of merchandising and false endorsement, including Irvine[2] and also Mirage Studios.[3] He highlighted that merchandising concerns the situation where a character or image is exploited to sell a particular product. On the other hand, where a product is endorsed, an individual conveys to the public that they approve of or are associated with the product. Despite these differences, Birss J highlighted that there was in fact no difference in law between an endorsement or merchandising case; the three elements of passing off still required satisfaction and the legal principles were identical in each.

Albeit not a ground-breaking development, this provides a welcome clarification on these particular types of passing off cases, particularly for students, which can at times seem confusing and difficult to distinguish. Regardless of whether the case concerns endorsement or merchandising, so long as the three elements are present, passing off can be established.

Interestingly, while previous merchandising cases have considered character merchandising (for example the Teenage Mutant Ninja Turtles[4]) this appears to be the first successful merchandising case establishing passing off where a celebrity’s image has been used on a product.

Establishing Rihanna’s Goodwill

In analysing the first requirement, Birss J believed that Rihanna’s previous business activities, combined with her status as a ‘style icon’ beyond the world of music contributed to the establishment of goodwill. Her large merchandising business alongside her promotion contract with Gucci, and also her designing contract with River Island, highlighted her public association with fashion. These ventures also highlighted the financial value of her identity within the fashion market.

This provides an interesting development in relation to the goodwill of celebrities and music artists. Birss J’s analysis recognises the ability for artists to possess goodwill that extends to the fashion market. Given Rihanna’s extensive fashion business ventures, alongside her public association with the fashion market and status as a ‘style icon’, Birss J believed that Rihanna possessed protectable goodwill. This may provide an opportunity for artists in a similar position to establish goodwill with ease in the future. Image plays an important role in music today, with many artists engaging with the fashion market by means of designer or endorsement contracts, or even creating clothing lines. Taking artists like Kanye West or Pharrell Williams for example, these are both artists who are known for their public links and business ventures in the fashion market. After this case, it appears more artists in this position will be able to establish protectable goodwill. Furthermore, fashion retailers will now have to pay closer attention to the status and business ventures of an artist or celebrity whose image they wish to use. [5]

Establishing Topshop’s Misrepresentation

Misrepresentation was the primary issue in this case, for it was essential to establish for certain that the relevant members of the public would believe the t-shirt was authorised by Rihanna.

Birss J considered a range of factors in evaluating whether misrepresentation occurred. Firstly, he considered that while customers are well aware of authorised merchandising by music artists, they may not always buy products with an artist’s image because they believe it to be authorised; they may in fact just like the look of it.

This is a particularly important consideration, considering the nature of fashion and the reasons why consumers may buy products bearing a celebrity’s image. Consumers may simply purchase said products to show their admiration for the individual, or simply because they like the look or style of it, rather than on the basis that the product is authorised.

Birss J also acknowledged that many high street retailers sell garments of a similar nature, including images of Rihanna. However the existence of those garments did not necessarily preclude misrepresentation in this case. 

This is clearly an important and current acknowledgment, given the nature of the growing links between particular musicians and the fashion market that are widely publicised today. While many consumers may consider it unlikely that such garments are officially licensed, particularly given the abundance of this type of garment in fashion stores today and the nature of buying official artist merchandise, this may not be the case for everybody. As more artists are building reputations within the fashion market, more consumers may be curious and aware of the potential that an artist could have in fact licensed or authorised the product.

Birss J also considered the status of Topshop as a leading high street retailer, who had collaborated officially with celebrities including Kate Moss in the past. However, he held that customers would have no positive expectation that a garment bearing a celebrity’s image would be authorised or not from the fact it was a high street retailer alone. However, he drew attention to Topshop’s previous attempts to capitalise on Rihanna’s status. He analysed Topshop’s promotion of their relationship and connections with the ‘We Found Love’ singer, for example tweeting when she was in their store or wearing their clothing. Interestingly, Birss J rejected that such tweets and blogs would be seen as mere gossip, and instead emphasised the importance of social networking to both parties’ businesses. The publicity of this relationship would increase the likelihood that purchasers would believe garment was authorised.

This is a particularly interesting consideration, and highlights that attempts by fashion retailers to publicise links with celebrities or artists can in fact contribute to creating the impression that products bearing that artist’s image may be authorised. Not only does this highlight the importance of social networking in regards to consumer awareness, but also that fashion retailers should be very careful about the links they wish to highlight to the public, particularly if they wish to use that artist’s image on their products later on.

Finally, Birss J considered that the t-shirt’s fashionable characteristics did not preclude the finding of misrepresentation, given Rihanna’s status in the fashion world. Furthermore, he noted that the image used on the t-shirt would be noticed by Rihanna fans as similar to the images used on the ‘We Found Love’ video, and as a result be likely considered part of promotional material by them, and therefore authorised.

These two considerations are of particular interest for the future. Firstly, the notion that a particularly fashionable garment will not preclude misrepresentation highlights the crossover between the fashion and music markets. It acknowledges the reality that musicians and artists are extending merchandising beyond the standard lower quality tour shirt, and are branching out into the fashion market through means of more fashionable garments for merchandising purposes.

Furthermore, the analysis acknowledges that using a well-known image of an artist, or an image associated with a particular music video may lead to the confusion that the image is part of official promotional material, particularly to the artist’s fans.

Importantly, the t-shirt had absolutely nothing on it indicating it was an official item of Rihanna merchandise for example a logo or labelling. No comments on the website indicated that the consumers were confused at all. Despite this evidence, Birss J held that this alone was not determinative of a lack of misrepresentation.

This is an interesting point made by Birss J. This acknowledges again that artists’ association with fashion alone can potentially create an impression of authorisation, even without a distinctive logo or label expressing official authorisation.

The Final Decision

Drawing together the above considerations, Birss J concluded that the public would in fact believe the t-shirt to be authorised. Birss J believed that while a number of purchasers would buy the t-shirt without even considering authorisation, a substantial portion of those considering the product would: the Rihanna fans. Given the promotional nature of the image, combined with Topshop’s public relationship with Rihanna, together these enhanced the likelihood that the fans would believe that the t-shirt was authorised. The apparent authorisation would have motivated them to buy the product and be deceived.  

In regards to damage, Birss J held that Topshop’s misrepresentation would damage her goodwill through sales lost to her merchandising business, and also loss of control over her reputation in the fashion sphere.

This very week, the High Court granted an injunction in favour of Rihanna preventing any future use of the image in favour by Topshop, and also ordered Topshop to pay her legal costs.[6]

Conclusion

This case represents an intriguing development in the law of passing off in the context of artist and celebrity merchandising. Notably, the judgement illustrates the ability for music artists to possess goodwill capable of extending into the fashion market. This certainly recognises the growing reality that more artists are attempting to build a reputation in the fashion world. Furthermore, the judgement provides a basis for artists in similar positions to protect their goodwill by means of a passing off action, so long as the remaining elements are present. This could have a dramatic effect on the fashion market, considering the fact that so many high street retailers sell products of this kind.

Furthermore, Birss J’s analysis of consumer misrepresentation also recognises the above reality. The judgement also recognises that consumers are aware of the growing overlap between music and fashion, and as a result are more likely to be open to misrepresentation where an artist’s image is used to sell a product. In this respect, the judgement exemplifies a very current and aware approach to consumer awareness and passing off in today’s fashion market.

While this may be the case, the growing power of artists and celebrities requires thought. The case does confirm that celebrities do not have an overarching right to control reproduction of their image; however, it does recognise that artists who have a reputation in the fashion market by means of their status and business ventures may be able to establish goodwill, and prevent their image being used where misrepresentation and damage is likely to occur. While this represents a current approach to passing off, some may argue that this disproportionally contributes to the already colossal marketing power that celebrities already possess. Others may disagree, and consider that the law has rightfully advanced to protect artists from having their image unfairly exploited for commercial gain. Either way, the law has progressed, and it will be intriguing to see if this case provides a basis for more claims of this kind in the future.



[1] Robyn Rihanna Fenty and others v Arcadia Group Brands Ltd (t/a Topshop) and another [2013] EWHC 2310 (Ch)

[2] Irvine v Talksport [2002] FSR 60

[3] Mirage Studios v Counterfeat Clothing [1991] FSR 145

[4] Ibid

[5] Robert Graham, Out-Law.com, ‘Rihanna and Topshop 'passing off' ruling highlights need for retailers to check celebrity business activities, says expert’, 1 August 2013

[6] Robyn Rihanna Fenty and others v Arcadia Group Brands Ltd (t/a Topshop) and another [2013] All ER (D) 225 (Sep)

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