Full case report
Robyn Rihanna Fenty v Arcadia Group Brands Ltd (T/A Topshop)
Reference  EWHC 2310 (Ch)
Court High Court of Justice, Chancery Division, Intellectual Property
Judge Birss J
Date of Judgment 31 Jul 2013
passing off – t-shirt – intellectual property – goodwill
C, a famous pop star and style icon, issued proceedings against D, a well-known high street fashion retailer, for selling a t-shirt bearing her image. The image had been photographed by an independent photographer during the video shoot for a single from her 2011 “Talk That Talk” album. D had a license from the photographer but no license from C.
C contended the sale of the t-shirt without her permission infringed her rights on the grounds of passing off as the public would assume she had licensed the use of her image to D.
D argued that customers would buy the shirt because they liked the product and the image for their own qualities. There was nothing on the t-shirt which represented it as an item of C’s merchandise and the public would not think it was. The t-shirt, D maintained, was a high quality fashion-led garment that was very different from standard pop star merchandise.
Whether C could establish the three elements of a passing off claim, namely:
- That she had goodwill and a reputation amongst relevant members of the public;
- That D’s conduct constituted a misrepresentation; and
- That such a misrepresentation was likely to cause damage to her goodwill.
Finding for C:
1. C had ample goodwill to succeed in a passing off action of this kind. C was a world famous pop star who ran very large merchandising and endorsement operations. C was regarded as a style icon by many people, predominantly young females aged between about 13 and 30. Such people were interested in what they perceived to be C’s views about style and fashion. If C was seen to wear or approve of an item of clothing, that was an endorsement of that item in the mind of those people. Further, the fact that the item 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 product endorsed by C or an item of C’s authorised merchandise.
2. Misrepresentation was the real issue. J Birss considered various aspects of the particular circumstances of the case, namely that:
(i) The absence of comments on D’s website indicating that anyone had bought the t-shirt in the belief that it had been authorised by C and lack of other evidence of any actual confusion were relevant points in D’s favour but not determinative.
(ii) D had made considerable efforts to emphasise connections in the public mind between the store and famous stylish people, such as C. An important example of this was a shopping competition held by D in 2010, offering the entrants the chance to win a personal shopping appointment with C at their flagship store in Oxford Circus.
(iii) A week or two before the t-shirt was on sale, D had tweeted the fact that C was visiting the store. J Birss rejected D’s submission that this was simply chatter and gossip. Particularly bearing in mind the age and nature of the relevant customers, the internet and social media were an important part of both C and D’s business. They constituted some of the key channels by which both C and D communicated with their fans and customers. D had mentioned C because it thought it would sell more products by doing so.
(iv) The fact that there was no indication of artist authorisation on the swing tag or neck label pointed firmly against authorisation but was not strong enough to negate the impression that the garment was authorised. Although a good number of purchasers would buy the t-shirt without giving the question of authorisation any thought at all, a substantial portion of those considering the product would be inducted to think it was a garment authorised by the artist. C’s fans would recognise the particular image of her as associated with her recent album. For those persons, the fact that it was authorised would be part of what motivated them to buy the product. Some would buy the t-shirt because they thought C had approved it, others because of the value of the perceived authorisation itself. In both cases, they would have been deceived.
3. If, as J Birss had found, a substantial number of purchasers were likely to be deceived into buying the t-shirt because of a false belief that it had been authorised by C, then that would obviously be damaging to C’s goodwill. It would amount to sales lost to C’s merchandising business and represent a loss of control of C’s reputation in the fashion sphere.
Birss J made clear that the case was not concerned with “so called image rights” and emphasised that there is today in England no such thing as a free standing general right by a famous person (or anyone else) to control the reproduction of their image. The tort of passing off constituted the only ground in law for C to object to the sale of clothing items bearing her image.
This decision, marking the first time that a celebrity has succeeded in this jurisdiction in a passing off claim in relation to the use of his or her image on items of clothing, will be welcomed by the celebrity industry. It should not, however, be taken to signify that the mere sale by a trader of a clothing item bearing an image of a famous person, will, without more, constitute an act of passing off. In reaching his decision, Birss J took care to emphasise the importance of the particular circumstances of the case.
NOTE: Following his decision in July 2013, in September 2013, J Birss ordered that D make an interim payment of £200,000 for C’s legal fees within 14 days, even though he found C’s bill (an estimated £919,000) to be “startling” and “somewhat surprising”. The judge also granted an injunction to restrain D from using C’s image in the future and gave D permission to appeal against both the costs and passing off ruling.
Reed Smith for Cs, Mishcon de Reya for Ds
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