Rihanna wins appeal against Topshop
Written by Michael Coyle on 22 January 2015« Return to Reading Room
The image was derived from the owner of the work’s photograph. Rihanna sued for passing off. Topshop claimed the image right has no foundation in English law. This argument was based on Douglas & ors v Hello! Ltd & ors (No 3)  UKHL 21,  1 AC 1, and Michael Douglas’ and Catherine Zeta-Jones’, attempts to prevent the publication and use of unauthorised photographs taken at their wedding. Lord Hoffmann (with whom Baroness Hale of Richmond and Lord Brown of Eaton-under-Heywood) agreed, said at :
"There is in my opinion no question of creating an "image right" or any other unorthodox form of intellectual property. The information in this case was capable of being protected, not because it concerned the Douglases' image any more than because it concerned their private life, but simply because it was information of commercial value over which the Douglases had sufficient control to enable them to impose an obligation of confidence."
At the first hearing the Judge found in Rihanna’s favour. Topshop appealed.
At the first trial the Judge said: “The claimants have and had in 2012 ample goodwill to succeed in a passing off action of this kind. Furthermore in 2012 the fact that an item of clothing was a more design led fashion garment, rather than a lower quality simple plain t-shirt, would not be understood to rule out, in the mind of a purchaser, the idea that it was a Rihanna endorsed product or an item of authorised Rihanna merchandise. The scope of her goodwill was not only as a music artist but also in the world of fashion, as a style leader."
Topshop brought in the big guns and was represented by Mr Geoffrey Hobbs QC and Mr Hugo Cuddigan. The Appeal was based on the following 4 points:
[1.]“there was no difference in law between an endorsement case and a merchandising case. Character merchandising generally serves to provide the products concerned with features of shape or get-up which become part of the make-up of the products themselves. It is not the province of the common law to create or confer exclusive rights in particular categories of product.
[2.] the judge properly and correctly acknowledged that the sale of a garment bearing a recognisable image of a famous person does not, in and of itself, amount to passing off. However, the judge fell into error thereafter in failing to proceed on the basis that the law of passing off treats the use on garments of such images as origin neutral. So, Mr Hobbs continues, the claim for passing off in the present case should only have been entertained upon the basis that the market for garments carrying images of Rihanna was, at least in principle, a market which others were lawfully entitled to enter. Further, the injunction granted by the judge is founded upon the proposition that Topshop is answerable for a misrepresentation by omission, that is to say for failing clearly to inform prospective purchasers that the t-shirts were not approved or authorised by Rihanna. Once it is accepted, as it must be, that selling a garment with a recognisable image of a famous person does not, in and of itself, amount to passing off, any claim for misrepresentation by omission should have evaporated.
[3.] the judge ought to have recognised and accepted that the absence of an image right is a matter of law and not a matter of fact. Further, he ought to have assessed the claim having regard to the perceptions of those persons for whom the presence of the image of Rihanna on the t-shirt was origin neutral, and not the perceptions of those persons who were liable to regard the presence of the image as an indication of authorisation. Indeed, had the judge assessed the issue from the correct perspective he would have been bound to find that the claim as pleaded and pursued disclosed no sustainable basis for a finding of liability.
 the judge fell into further error in finding Topshop liable for misrepresentation in the way that he did because Rihanna had never properly alleged or developed a case that the particular image in issue was in any way distinctive as a result of any marketing or promotional activity which she had ever carried out; that there was no admissible evidence that this image was in any way distinctive; and that the evidence upon which the judge relied had no probative value. In this connection Topshop also seeks permission to appeal against the decision and consequential order of the judge at a pre-trial review hearing which took place on 5 July 2013 concerning objections to the admissibility of the evidence contained in six of the witness statements served on behalf of Rihanna, including that of Mrs Perez, a member of Rihanna's management team, who gave the critical evidence upon which the judge relied”.
The Appeal Judges dismissed the appeal but it was a close call. One of them said “I agree that the appeal should be dismissed, and that permission to appeal against Birss J's decision of 5 July 2014 should be refused, for the reasons given by Kitchin LJ. I am bound to say that I regard this case as close to the borderline. The 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 (as described by Kitchin LJ at paras. 17-18) 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”.
So to conclude – the decision does not mean that image rights are part of English law. They are not. However it does highlight that the courts are prepared and willing to intervene where the facts support the arguments.
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