Reloaded – Rihanna claim against Topshop upheld

The Court of Appeal has upheld Rihanna’s false endorsement claim against Topshop over the sale of a t-shirt bearing her image.[1] Lord Justice Kitchin, giving the lead judgment, considered that the trial judge had not failed to appreciate the distinction between endorsement and general character merchandising, and that he was entitled to find that Topshop was seeking to take advantage of Rihanna’s public position as a “style icon”.  Despite the absence of an image right as such in UK law, the use of a pop star’s image on a t-shirt – particularly one derived, as in this case, from a publicity shoot for an album – could still, in relevant circumstances, give rise to the mistaken belief that the t-shirt had been authorised by her.

Background

In 2012, Topshop began selling a t-shirt showing an image of one of the world’s biggest pop stars, Rihanna.  At the time Topshop sold many garments bearing images of celebrities, some of which were authorised, and others that were not.  The image in this case derived from a photograph taken on a video shoot for a single from Rihanna’s “Talk That Talk” album, and similar images had been used by Rihanna in connection with the album.  Although Topshop had a licence of the copyright in the photograph, the use of Rihanna’s image was not approved.

Rihanna argued that a substantial number of people buying the t-shirt would think that she had endorsed it, when in fact she had not.  She contended that Topshop’s activities therefore amounted to passing-off.  As well as being a singer, Rihanna also controls a large merchandising and endorsement business.  Over the years, she has had endorsement agreements with Nike, Gillette, Clinique and LG Mobile. She has also made considerable efforts to promote an association in the mind of the public between herself and the world of fashion.  Much of the clothing authorised by Rihanna bears a distinctive logo referred to as the “R slash” logo.  The logo and the name “Rihanna” are used extensively, but not universally, on her authorised goods.

High Court judgment

The trial judge, Mr Justice Birss, found that by 2012 Rihanna was regarded as a “style icon” by many people, particularly young women aged between 13 and 30.  If they saw Rihanna wearing an item of clothing, they would believe she had endorsed it.  He also found that Rihanna (and her associated companies) had acquired significant goodwill in relation to fashion clothing.

At the heart of the case was whether or not Topshop’s activities amounted to a misrepresentation.  Rihanna’s case was that, in the circumstances, the use of her image on the t-shirt amounted to a misrepresentation that was likely to mislead customers.  There was a real likelihood that a substantial number of people would be deceived into thinking that it was an authorised product, and that they would purchase it as a result.  In contrast, Topshop argued that consumers bought the t-shirt because they liked the product and the image for their own qualities.

The trial judge accepted that there was no evidence of any actual confusion before him.  He also recognised that consumers were well aware of the merchandising and endorsement activities of music artists, but this did not mean that consumers always wanted to buy products which those artists had authorised.  Separately, he considered that consumers would not have been surprised to find goods on sale in Topshop that had been endorsed by celebrities, but they had no positive expectation when they saw clothing carrying recognisable images.

The trial judge attributed particular importance to the specific relationship between Topshop and Rihanna.  Topshop had made a considerable effort to emphasise its connection with various celebrities, including Rihanna.  In particular, there was a shopping competition in 2010 in which Topshop offered entrants the chance to win a personal shopping appointment with Rihanna.  Separately, Rihanna visited Topshop in February 2012 (shortly before the t-shirt went on sale), which Topshop publicised very effectively.  An official tweet to Topshop’s 350,000 followers read: “Ridiculously excited! @Rihanna is in our Oxford Circus store as we tweet.  Ah, wonder what she’ll buy …”

In the trial judge’s view, these events showed that Topshop had recognised and sought to take advantage of Rihanna’s position as a style icon.  Further, a substantial number of potential purchasers of the t-shirt would have known of the 2010 competition and her 2012 shopping trip.

As for the t-shirt itself, neither the swing tag nor the label carried her name or logo.  The image was, however, significant, as it was taken during the video shoot for the “We Found Love” single from the 2011 “Talk That Talk” album.  The video had been filmed in the UK, and its controversial nature meant it had been the subject of substantial media attention.

The trial judge held that the relationship between the image on the t-shirt and the images for the album and the video shoot would be noticed by her fans.  Further, it looked like a publicity shot for the album.  To Rihanna’s fans, the image might be considered to be part of the marketing campaign for the album.

He held that the nature of the image itself was a fairly strong indication that the t-shirt might be authorised by Rihanna.  The public links between Topshop and celebrities (and more importantly, Rihanna in particular) would enhance the risk of consumers’ believing the t-shirt had been authorised by her.  Although he recognised that neither the swing tag nor the neck label carried her name or logo (factors pointing against authorisation), this was not sufficient to negate the contrary impression.

In the trial judge’s view, a substantial portion of those considering the product would have been induced into thinking it was authorised by Rihanna.  Those individuals would have been Rihanna fans, and they would have recognised the image as a particular picture of her associated with the Talk That Talk album.  The idea that it was authorised would have been part of what motivated them to buy it, since they regard Rihanna’s endorsement as important given that she is their style icon.

The judge accepted, however, that the mere sale of a t-shirt bearing an image of a celebrity does not, in itself, amount to passing-off.  Rather, the sale by Topshop of this t-shirt was, in the circumstances, likely to lead people to buy it in the belief that it was authorised by Rihanna, and that had caused her damage.

Grounds of appeal

Topshop contended that the trial judge had erred in four respects:

1. he wrongly proceeded on the basis that there was no difference in law between an endorsement case and a merchandising case;
2. although he correctly acknowledged that the sale of a garment bearing a recognisable image of a celebrity does not, in itself, amount to passing-off, he should have found that, as a result, any claim for misrepresentation by omission was not made out;
3. he ought to have recognised that the absence of an image right is a matter of law and not a matter of fact, and he should have assessed the claim taking account of the perceptions of individuals for whom the presence of the image of Rihanna on the t-shirt was “origin neutral”; and
4. Rihanna had never properly developed a case that the particular image was in any way distinctive, there was no admissible evidence that it was distinctive, and the evidence on which the judge relied had no probative value.

Court of Appeal judgment

Legal principles

Kitchin LJ summarised the basic legal principles.

First, there is no “image right” that allows a celebrity to control the use of her name or image.  Instead, a celebrity must rely on (among other things) the law of passing-off.  The three basic elements of a passing-off case, as set out in Reckitt & Colman Products Ltd v Borden Inc. [1990] RPC 341, are that the claimant must demonstrate:

1. a goodwill or reputation attached to the claimant’s goods or services in the mind of the purchasing public by association with the particular name or get-up under which those are offered to the public, such that the name or get-up is recognised by the public as distinctive of the goods or services;
2. a misrepresentation by the defendant to the public leading (or likely to lead) the public to believe that the defendant’s goods or services are the goods or services of the claimant; and
3. damage that the claimant suffers, or is likely to suffer, by reason of the erroneous belief engendered by the misrepresentation.

The law of passing-off was, however, developed in Irvine v Talksport Ltd [2002] EWHC 367, which drew a distinction between “false endorsement” and “character merchandising”.  When a person endorses a product, she tells the relevant public that she approves of it or is happy to be associated with it.  Merchandising, on the other hand, involves exploiting images, themes or articles that have become famous.

In the Irvine case, it was held that if someone acquires a valuable reputation, the law of passing-off will protect that person from unlicensed use by third parties.  Further, it will vindicate the claimant’s exclusive right to the reputation or goodwill, and will not allow others to use it so as to diminish its exclusivity.  There is, however, still a need to demonstrate a misrepresentation, because it is the misrepresentation that enables the defendant to take advantage of the claimant’s reputation.  In summary, in a “false endorsement” case, the claimant must show that:

• the claimant had a significant reputation or goodwill at the time of the acts complained of; and
• the defendant’s actions gave rise to a false message that would be understood by a “not insignificant section” of the market that the goods had been endorsed by the claimant.

Kitchin LJ endorsed Laddie J’s decision in Irvine.  He noted, however, that in Elvis Presley Trade Marks [1999] RPC 567, it was held that members of the public bought Elvis Presley merchandise not because it came from a particular source, but because it carried the name or image of Elvis Presley.  Further, he noted that, in addressing the critical issue of distinctiveness, there should be no assumption that only a celebrity may ever market the celebrity’s own character.

First ground of appeal

Topshop argued that purchasers of t-shirts bearing images of famous pop stars buy them not because they believe that the garments have any material connection with the pop stars at all, but simply because they want to wear a garment carrying a picture of their idol.  So merchandising carries with it no misrepresentation.  A claimant must, therefore, overcome two hurdles in a claim for passing-off in a merchandising case:

1. It must be shown that application of the name or image to the goods has the consequence that they tell a lie. This requirement will not be satisfied if the name or image denotes nothing about the source of the goods.
2. It must be shown that the lie is material. In many merchandising cases, the lie amounts to no more than a false suggestion that the goods are licensed and, as such, it may have no effect on the buying decision.

Kitchin LJ was, however, satisfied that the trial judge had given proper regard to the distinction between endorsement and general character merchandising: he had referred to Irvine and acknowledged that it is not a necessary feature of merchandising that members of the public will think that the product is in any sense endorsed by the celebrity or creator of the character in issue.  He considered that the use of this image would, in all the circumstances, indicate that the t-shirt had been authorised by Rihanna.  In short, the trial judge found that the sale of this t-shirt bearing this image amounted to a representation that Rihanna had endorsed it, and Kitchin LJ concluded that the reasoning of the trial judge disclosed no error of principle.

Second ground of appeal

Kitchin LJ saw no inconsistency between (a) the proposition that Rihanna has no absolute right to prevent traders selling garments carrying her image and (b) the trial judge’s view that the use of the image amounted to a misrepresentation of authorisation.  The trial judge was entitled to draw that distinction, and Kitchin LJ characterised Topshop’s submission as a flawed contention of a positive right to market goods bearing an image, whether or not its use deceived the public.

Third ground of appeal

Topshop argued that the trial judge ought to have assessed the relevant factors objectively from the perspective of those for whom the presence of an image on clothing was “origin neutral”.  Kitchin LJ held that such an approach would require the court both to shut its eyes to reality and to disregard well-settled principles.  It was also plainly relevant to consider potential customers who were both fans of Rihanna and prepared to shop in Topshop.  Furthermore, the judge was bound to take into account the activities of Topshop in publicising its connection with Rihanna.

Kitchin LJ, like the trial judge, placed significant importance on the 2010 competition, as well as the other publicity relating to Rihanna wearing or choosing Topshop items.  The trial judge was entitled to find that Topshop was both recognising and seeking to take advantage of Rihanna’s public position as a “style icon”.

Fourth ground of appeal

Topshop argued that Rihanna’s case was never properly alleged in the pleadings or developed in the course of the proceedings, and that it was not supported by evidence of any probative value.  Kitchin LJ found there was nothing in the first of these points.  The second point, however, had more substance in his view.  Nevertheless, he considered that the trial judge was entitled to find that the image is striking, and that similar images had been used for the Talk That Talk album and associated video.  Further, he was also entitled to make the finding that the relationship between the image and the images for the album and video would be noticed by her fans, and that it may be taken to be an authorised publicity shot for the release.

Conclusion

Accordingly, Kitchin LJ held that the trial judge was entitled to find that the sale of the t-shirt amounted to passing-off.

Comment

It is helpful to have a Court of Appeal decision confirming the law in this area.  It is worth noting, however, that in the judgment given by Lord Justice Underhill (endorsing Kitchin LJ’s reasoning), he regarded this case as “close to the borderline”.  In his view, the trial judge’s conclusion had essentially been based on two factors:

1. Rihanna’s past public association with Topshop; and
2. the particular features of the image itself, which was apparently posed and showed Rihanna with the very distinctive hairstyle adopted in the publicity for Talk That Talk.

Underhill LJ did not believe that either factor would be sufficient by itself.  In particular, Rihanna’s association with Topshop did not seem to him to have been “such as to weigh very heavily in the balance”.  This gives additional helpful guidance on the weight of evidence likely to be required to prove false endorsement, given that these cases are inevitably decided in light of all of the relevant facts.

Tom Iverson, Associate, Michael Simkins LLP

Article written for Entertainment Law Review.

Abstract:

The Court of Appeal has upheld Rihanna’s false endorsement claim against Topshop over the sale of a t-shirt bearing her image.  The trial judge had not failed to appreciate the distinction between endorsement and general character merchandising: despite the absence of an image right as such in UK law, the use of a pop star’s image on a t-shirt could still, in relevant circumstances, give rise to the mistaken belief that the t-shirt had been authorised by her.  While turning on its particular facts, the decision usefully illustrates what is required to prove false endorsement.