Posted by Stephen Welfare, Partner
On 1 September 2016 Withy King LLP merged with Royds LLP. The trading name for the merged firm is Royds Withy King. All content produced prior to this date will remain in the name of the firms pre-merger.
“It helps to be Famous” Stephen Welfare looks at Rihanna’s court win over Topshop
Back in the summer when the days were warmer and longer, a famous person went to the High Court complaining that her image was unfairly and unlawfully being exploited. That person was Rihanna and she won despite the court affirming that there is no law of Image Rights in England and Wales.
Back in the summer of 2011, a famous footballer, and before him a famous model, obtained so called super injunctions to prevent newspapers publishing stories about their personal lives (see Royds’ Dispute Resolution Bulletin Autumn 2011). In the case of Rihanna, she sued in the law of passing off, and to obtain their super injunctions, the footballer and model relied on the law of confidentiality (privacy). Would any of these Claimants have succeeded if they were not famous? The answer is no, but not by mere reason of their fame.
If a commercial enterprise wishes to make and exploit an association between its product and a famous person, then it must ensure that it has express consent. If a newspaper or other media platform (that will include social media) wants to report on a story about an individual away from his or her public or commercial life, it must ensure that the facts are correct, that innocent parties are not going to be adversely affected and the publication will not interfere with anyone’s human rights.
In this article I shall deal with the law on passing off and not confidentiality. In her claim against Topshop, Rihanna complained about a t-shirt sold by Topshop showing an image of her that was taken by an independent photographer during a video shoot of her “We Found Love” single. Topshop did get permission of the photographer to use the image. No problem with copyright which was owned by the photographer. Rihanna argued that Topshop nevertheless needed her permission. Butwhy? She did not own the copyright in the photograph and her face is not a registered Trade Mark.
Rihanna relied on the law of passing off. The law recognises the value of goodwill and in the appropriate circumstances, it will protect that goodwill. Celebrities who use their fame to endorse products can use the law of passing off to protect them from unauthorised uses of their name and/or image through false representations that another’s goods are in some way endorsed or sponsored by them. Rihanna was able to show that she did exploit her fame in this way and so she has a commercial goodwill that exists in her image that does not exist for the non famous. Being famous alone is not enough. The celebrity must be able to show, as Rihanna did, that she derives income in this way.
There is a distinction in fact between merchandising and endorsement. The former involves exploiting images, themes or articles which have become famous, whereas the latter involves a representation that the celebrity “approves of the product or service or is happy to be associated with it.” See the Judgment in Irvine –v- Talk Sport.
Classic merchandising would be the use of, say, a premier league football club badge on a product or its packaging. Endorsement is the use of the celebrity’s name or image in advertising/promotion of a product. An example of a highly successful use of an endorsement marketing strategy is jewellery brand and Royds’ client, Tresor Paris – www.tresorparis.com.
When the rival jewellery company, Nialaya “doctored” a Tresor Paris photograph of an endorsement of Tresor Paris’ products by the actor, Antonio Banderas, legal action was taken, resulting in the payment of damages, costs and the publication of an apology in the relevant Trade Press. But I digress, back to Rihanna and passing off.
The Judge explained that there was no difference between merchandising and endorsement in law. For the purposes of the law on passing off, what matters was not the recognition that the image was of a certain celebrity, but that there was a misrepresentation about the origin of the goods.
In Rihanna’s case, the Judge held that her fans would notice that there was a relationship between the image on the t-shirt and the video (and the CD cover). It looked like she had approved the t-shirt. Topshop was known to have links with Rihanna and other celebrities.
Topshop denied any attempted association, relying on the absence of her name on swing tags and neck labels, and that other retailers sold garments with Rihanna’s image on them. The Judge rejected this Defence. In his judgment most people considering buying the product would have been induced to think it was endorsed by Rihanna. They would recognise her image and the connection with her latest record. That connection and endorsement would be part of what motivated them to make the purchase. Those persons have been deceived. The deception by Topshop causes damage to Rihanna’s goodwill. Her merchandising business would have lost sales and so she is entitled to damages.
On the face of it, this Judgment does seem harsh on Topshop. After all, it had the permission of the photographer to use the photograph, so it was not in breach of copyright law. Topshop was not expressly saying that Rihanna was endorsing Topshop and it was not holding itself out as being official Rihanna merchandising. On the other hand, the Judgment does strike me as being one of common sense. Topshop must have known full well that the use of the Rihanna image was encouraging consumers to purchase Topshop garments and as a business familiar with celebrity endorsements, it seems to me that it was rather chancing its arm in not obtaining her permission and avoiding paying any royalty.
The lessons for retailers and indeed wholesalers supplying the goods, is that the use of the names and images of the famous usually comes at a price. If you do not want to pay royalties, then the best advice must be not to engage in merchandising or endorsements.
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