POP star Rihanna has prevented Topshop selling T-shirts displaying her picture in a test case reinforcing the ability of celebrities to control their public image.
The court of appeal has ruled that the fashion retailerâ€™s unauthorised use of the singerâ€™s photograph amounted to â€œpassing offâ€ â€“ illegally exploiting an unregistered trademark.
The three court of appeal judges â€“ Lords Justices Richards, Kitchin and Underhill â€“ affirmed there was no English law directly allowing anyone to restrain reproduction of their name or image. But their judgment provided further legal grounds for the famous to limit the circumstances in which commercial advantage can be derived from exploiting their celebrity status.
The dispute dates back to 2012, when Topshop began selling a Â£22 sleeveless T-shirt bearing a recognisable image of Rihanna derived from a photograph taken of her during a video shoot for her Talk That Talk album.
The picture was taken by an independent photographer who, as owner of the copyright in the photograph, licensed the use of the image to Topshop. Rihanna and two of her corporate licensing companies then launched legal action alleging that the use of her image for fashion clothing was not licensed and that people buying the T-shirt would think she had endorsed it.
The high court found in favour of the Barbadian performer and granted an injunction prohibiting Topshop from selling the clothes without informing prospective purchasers that it had not been approved or authorised.
Topshopâ€™s unsuccessful appeal examined precedents where other celebrities, such as Michael Douglas and Catherine Zeta-Jones, had tried to stop pictures of them being published.
Because there are no directly applicable laws, Kitchin said, â€œa 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.â€
He added that passing off does not â€œprotect a person against the sale by others of the same goods or even copied goods. What it protects is goodwill and it prevents one person passing off his goods or services as those of another.
â€œNo one may, by the use of any word or name, or in any other way, represent his goods or services as being the goods or services of another person and so cause that other person injury to his goodwill and so damage him in his business.
â€œThis allegation did disclose a sustainable case in passing off. In substance Rihanna alleged that she had suffered damage to the goodwill in her business as a result of the misrepresentation, implied in all the circumstances, that she had endorsed the T-shirt.â€ The law of passing off, Kitchin explained, had expanded over the years.
Commenting on the implications of the judgment, Mike Gardner, head of intellectual property at the law firm Wedlake Bell, said: â€œRihanna was forced to rely on the English common-law right of passing off because in the UK, unlike certain other countries, there is no â€˜image rightsâ€™ law to help celebrities to control the commercial use of their image.
â€œThe court of appeal has dismissed Topshopâ€™s appeal against that earlier high court decision, so the ban remains in place. This ruling, in what was seen as a finely balanced case, may encourage other celebrities to make similar claims in the future.
â€œRetailers will have to be extra careful in how they sell items bearing celebrity images. They will need to learn lessons from what happened with Topshop. Anything that is seen as wrongly suggesting an official tie-up or endorsement by the celebrity could lead to legal action.â€
Georgie Collins, an intellectual property partner at the law firm Irwin Mitchell, said: â€œIn the UK, there is no free-standing law of â€˜image rightsâ€™ that allows a person to control the reproduction of their image, contrasted with the US. Anyone seeking to protect and prevent the unauthorised use of their image must choose from a variety of rights, including trademarks, copyright, designs and the developing law of privacy. The court of appeal has just reinforced this position.â€
Leon Glenister, a barrister at Hardwicke Chambers, said: â€œUntil now celebrities have struggled to protect their image being used by other organisations. Even now there needs to be an implied endorsement of the product [for a celebrityâ€™s case to succeed]. Without that, there is no protection of image.â€ – The Independent