Rihanna v Topshop: t-shirt held to be false endorsement

Background

Rihanna is a world famous pop star and one of the hottest properties in music.  Topshop is one of the best known high street fashion brands in the UK.  In March 2012, Topshop started selling a t-shirt with a photograph of Rihanna on it.  Although Topshop had taken a licence from the photographer, it had not sought consent from Rihanna.  She (and her companies) took the position that such sales infringed her rights.  Topshop disagreed and the case ended up in court. 

Image Rights and Privacy

The Judge, Mr Justice Birss, made it very clear at the outset that this was not an “image rights” case.  He was at pains to stress that no such concept exists in English law and there is no general right to control the reproduction of one’s image (Douglas v Hello [2007] UKHL 21).  He also referred to the fact that a person’s image can sometimes be protected by the law of privacy, but in this instance, no such claim was being made.  This was simply a case of passing off.

Essential Elements of Passing Off

In order to succeed with a claim for passing off – false endorsement being a specific type of passing off – Rihanna had to show that: (1) she had goodwill and reputation amongst the relevant members of the buying public; (2) the conduct complained of was a misrepresentation, i.e. Topshop was likely to have deceived members of the buying public into buying the t-shirt because they thought it was authorised by Rihanna; and (3) such misrepresentation caused damage to her goodwill.

Evidence Given at Trial

For a trial lasting only four days, there were a lot of witnesses – 12 in total – and although an application had been made prior to trial to limit some of the evidence, a variety of witnesses from a range of industries and disciplines gave evidence to the court.  Although Rihanna herself did not go into the witness box, her legal team called a member of her management team, a brand director at a rival UK high street fashion retailer, her creative director, and the owner of a brand licensing agency, amongst others.  Topshop put forward various employees and suppliers as witnesses, including its head of marketing and the managing director of Knitmania (the company which supplied the Rihanna t-shirt to Topshop).  The Judge gave a very clear appraisal of the evidence given by these various witnesses.

Summary of the Law

The Judge gave a concise summary of the present law.  He referred to the three elements of passing off as stated in Reckitt & Colman v Borden [1990] 1 All E.R. 873 – the so-called Jif lemon case –  i.e. goodwill, misrepresentation and damage.  He commented that, historically, merchandising and endorsement cases had given rise to problems in passing off cases, but referred to the judgment of Laddie J in Irvine v Talksport [2002] FSR 60, and commented that he could not improve on Laddie J’s analysis.  In short, provided the facts support it, there is nothing in law to prevent a case of passing off being made out in a false endorsement case.  In that case, the Formula 1 driver, Eddie Irvine, had a property right in his goodwill which he could protect from unlicensed appropriation consisting of a false claim or suggestion of endorsement for a third party’s goods or business (in that case, the Talksport radio station).  Laddie J drew a distinction between “endorsement” and “merchandising”: the former being when a product is endorsed by someone by telling the relevant public that he/she approves of it; whereas merchandising involves images or characters from, for example, a film being exploited by selling clothing and toys. 

The Judge applied the principles set out in Irvine v Talksport to the present case.  Importantly, he identified the key issue as being able to distinguish two different reasons why a person might be moved to buy the product in question.  If they bought the t-shirt simply because they wanted to buy an image of the pop star, no misrepresentation had occurred.  Rather, for a false endorsement claim to succeed there must be a misrepresentation about trade origin.  The Judge stated that selling a garment with a recognisable image of a famous person is not, in and of itself, passing off.  Instead, false belief engendered in the mind of the potential purchaser must play a part in their decision to buy the product in order to constitute passing off. 

Application of the Law to the Facts

Goodwill

The Judge first considered the issue of goodwill.  He pointed out that Rihanna is a world famous pop star with a cool and edgy image.  Further, that through her companies, she runs a very large merchandising and endorsement operation and has endorsement agreements with Nike, Gillett, Clinique and LG Mobile.  In addition, in 2012, Live Nation paid a significant sum for the right to sell Rihanna merchandise, including clothing.  Separately, in 2010 and 2011, Rihanna authorised goods were available in Topman, Topshop’s brother store. 

In fact, Rihanna had made a particular effort to promote a specific association in the mind of the public between herself and the world of fashion.  She had also promoted clothing for H&M, Gucci and Armani between 2008 and 2012.  In 2012, Rihanna entered into an agreement with one of Topshop’s rivals, River Island.  At the time, River Island was the only high street retailer for which Rihanna was designing and with which she had a direct endorsement relationship.  The fact that River Island had entered into such an agreement showed that Rihanna’s endorsement in the world of high street fashion was perceived to have tangible value. 

The Judge observed that an important part of Rihanna’s branding is the so-called “R slash” logo.  This logo is used on a broad range of goods authorised by Rihanna, although not universally.  The same could also be said for the word “Rihanna” itself. 

Overall, the Judge found on the evidence that, in 2012, Rihanna was regarded as a style icon by many people, particularly women between the ages of 13 and 30, who would be interested in her views about style and fashion.  The claimants had ample goodwill to succeed in a false endorsement claim. 

Misrepresentation

The Judge identified misrepresentation as the real issue in this case.  He summarised Topshop’s case by saying this was simply a t-shirt bearing a large image of Rihanna on it and customers bought it because they liked the product and the image for their own qualities.  At the time, there was a trend for image t-shirts and nothing on the t-shirt suggested that it was official merchandise.  The defendants also pointed out that there were many other similar t-shirts on sale containing images of other well-known individuals, and also large numbers of other unauthorised garments sold by other retailers bearing images of Rihanna. 

The claimants’ case, on the other hand, was that in the particular circumstances of this case, customers were misled due to the particular image used which had been taken during the video shoot for Rihanna’s single “We Found Love” from the 2011 album “Talk That Talk”; the way it was presented; the nature of the t-shirt itself; and the position of Topshop as a major reputable high street retailer.  Overall, they argued that there was a real likelihood that a substantial number of customers would be deceived into thinking it was an authorised product.

The Judge then looked at the other circumstances of the case.  He commented that customers today are aware of authorised merchandising by music artists and the idea that a musician may seek to engage in endorsement and merchandising activities in the clothing market.  He also noted that certain customers may want to buy a t-shirt simply because they like the look of the image on it and do not expect the garment must have been authorised.  Of the many garments on sale bearing Rihanna’s image which had not been authorised, in his view, a large portion of them were likely to infringe the copyrights controlled by the claimants as they showed album covers.  He accepted the claimants’ evidence that they tried to police sales of such goods as best they could but took a proportionate approach.  Overall, the Judge did not accept the existence of such items to have led customers to believe that any garment bearing the image of Rihanna will necessarily be unauthorised. 

The Judge then considered Topshop’s position.  First, he rejected the claimants’ suggestion that Topshop’s customers would think that any garment bearing the image of a famous person and on sale in Topshop would be authorised.  Nevertheless, he noted that as a leading high street fashion retailer, purchasers would not be surprised to find goods on sale in Topshop which had been endorsed.  He pointed out, in particular, the very public collaboration between Topshop and Kate Moss some years ago.  Overall, he found that Topshop’s customers had no positive expectation either way when they saw garments in stores carrying recognisable images. 

Next, he turned to the relationship between Topshop and Rihanna.  He observed that Topshop makes a considerable effort to emphasise its connections with famous stylish people, including with Rihanna in the past.  In 2010, it had held a shopping competition offering entrants a chance to win a personal shopping appointment with Rihanna at its flagship Oxford Circus store.  Separately, when Rihanna had visited Topshop in February 2012, around a week or two before the t-shirt went on sale, Topshop had sought to take advantage of the event by sending a tweet about it to Topshop’s 350,000 Twitter followers.  It was clear that Topshop was seeking to emphasise the fact that Rihanna was wearing or was thinking about wearing Topshop clothing.  The Judge stated that social media was a key channel by which both the claimants and the defendants communicated with their fans and customers.  He also noted that Topshop was mentioning Rihanna not as a public service newsgathering organisation, but because it was seeking to take advantage of Rihanna’s public position as a style icon.  Finally, the Judge considered that purchasers of the t-shirt would be mainly women aged 13 to 30.  He noted that although one would not need to be a fan of Rihanna in order to buy the t-shirt, a large number of the purchasers would be.  Further, that a substantial number of the purchasers would have been aware of the 2010 shopping competition and that Rihanna had been shopping in Topshop in February 2012. 

The Judge then commented on the nature of the t-shirts themselves.  It was not a standard merchandising t-shirt of the nature that would be found for sale at a venue as part of a tour.  Rather, it was a fashion garment.  However, the Judge held that given Rihanna’s status in fashion, the fact that it was a fashion item rather than a tour t-shirt had no bearing on whether customers would believe it had been approved or not.  The Judge also considered the lack of the “R slash” logo or the name “Rihanna” on the t-shirt was relevant to his decision. 

As for the image itself, the Judge noted that it was a still from a video shoot which had become famous and widely reported in the UK because of the risqué clothing Rihanna had worn.  As a result of the furore it had caused, the image would be noticed by her fans.  For someone who knew Rihanna, but who did not know her current work, the image was simply one of the person concerned.  However, to her fans who knew her work, the particular image may well be thought of as part of a marketing campaign for that project. 

The Judge’s Conclusion

The Judge found that the nature of the image itself suggested a fairly strong indication that this may be an authorised product.  The fact that it was a fashion garment and not a cheap merchandising tour t-shirt was neutral.  The fact that it was on sale at a high street retailer was also neutral.  However, the fact that that high street retailer was Topshop was not neutral.  The Judge noted the public link between Topshop and famous stars in general, and, more particularly, to Rihanna.  The Judge considered the lack of reference to Rihanna on the product itself or the use of the “R slash” logo would ordinarily point firmly against it being authorised, but in this instance, was not strong enough to negate the impression that the garment was authorised. 

The Judge accepted that a good number of purchasers would have bought the t-shirt without giving the question of authorisation any thought at all.  However, a substantial portion of those considering the product would have been induced into thinking that the garment was authorised by Rihanna.  Those persons would be Rihanna fans and they would have recognised, or thought they recognised, the particular image of Rihanna, not simply as a picture of the musician, but as a particular picture of her associated with a particular context, being the recent “Talk That Talk” album.  For those persons, the idea that the product was authorised would have been part of what had motivated them to buy the t-shirt.  Those purchasers would have been deceived.  Separately, the Judge noted there were several days when the t-shirt was for sale online with the title “Rihanna tank”.  That description had been quickly dropped, perhaps when Topshop realised that the word “Rihanna” was a registered trade mark.  Given that the Judge held that there had been a misrepresentation even without the use of the word, he did not need to determine the position over those few days. 

As for damage, since the Judge found a substantial number of purchasers were likely to have been deceived into buying the t-shirt under the false belief that it had been authorised, he held that it would obviously be damaging to the claimants’ goodwill.  It amounted to sales lost to Rihanna’s merchandising business and also a loss of control over her reputation in the fashion sphere. 

In summary, the Judge found that the mere sale of a t-shirt by a trader which bears the image of a famous person is not, without more, an act of passing off.  However, the sale of this image of this person in this shop in these circumstances, was an act of false endorsement.

Comment

Musicians and other high-profile individuals are often, perhaps unsurprisingly, highly protective of their images.  In the absence of “image rights” in England, the use of the law of passing off through false endorsement claims continues to be the most useful cause of action to prevent the misuse of a person’s image in promoting third party goods or services.  Having said that, the Judge was very clear to emphasise that the decision had been given in Rihanna’s favour because of the particular facts of the case, i.e. due to the particular image used on the particular garment sold by the particular store and with all the other surrounding circumstances.  Retailers clearly therefore take a risk when they choose to sell unauthorised products which could deceive the buying public.  They may now seek to reduce that risk by, for example, using images not connected to an individual’s principal business.  It will, however, be harder for stores such as Topshop, which has built a reputation for well-publicised collaborations with high-profile individuals, to mitigate such risk.  As for the individuals, they should take a protective (albeit proportionate) approach to policing the use of their image and managing authorised use, as doing so will improve their position in the event that a claim has to be brought.