Rihanna defeats appeal by Topshop in T-shirt ‘passing off’ claim

In Robyn Rihanna Fenty and others –v- Arcadia Group Brands Limited and another ([2015]  EWCA Civ 3), lawyers for Topshop sought unsuccessfully to set aside last year’s finding in the High Court that the clothing store was liable for ‘passing off’ under common law for the unauthorised use of the singer’s image on T-shirts.

Topshop had obtained a licence from a photographer to use images he had taken of Rihanna during a video shoot.  However, it had not obtained a licence from Rihanna.  In 2012 the images were reproduced by Topshop on a £22 sleeveless T-shirt.

Presently under English law an individual does not have standalone “image rights”.  As such there is nothing wrong in principle in a clothing store using an image of a pop star on their T-shirts.  However, the basis of Rihanna’s claim was that Topshop were misrepresenting to customers that the singer had endorsed the T-shirts.  This argument succeeded in the High Court.  Topshop appealed to the Court of Appeal.

In his judgment Lord Justice Kitchin commented:-

“No 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…This 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.”

Lord Justice Underhill summarised the misrepresentation:-

“I am bound to say that I regard this case as close to the borderline. The [High Court Judge's]conclusion that some members of the relevant public would think that the T-shirt was endorsed by Rihanna is based essentially on two things - her past public association with Topshop … and the particular features of the image itself, which is apparently posed and shows her with the very distinctive hairstyle adopted in the publicity for Talk That Talk. I do not believe that either by itself would suffice; in particular, Rihanna's association with Topshop does not seem to me to have been such as to weigh very heavily in the balance. But the judge considered the question very carefully, taking due account of the factors going  the other way, and in my view he was entitled to find that the two features in combination were capable of giving rise to the necessary representation."

Whereas this might be seen as a landmark case and opening of the floodgates, Underhill LJ's remarks suggest that prospective claimants should proceed with a degree of caution.  It will be necessary to satisfy the court that there is clear evidence of the risk of substantial consumer confusion as to whether a product has been endorsed.

As a result of the Court of Appeal decision an injunction preventing Topshop from selling the T-shirts will remain in place and the singer will be entitled to recover damages she has suffered to her goodwill.