This Student Companion by Anna Kingsbury appeared in the April 2015 edition of the New Zealand Law Journal  NZLJ 101a.
STUDENT COMPANION: INTELLECTUAL PROPERTY
Fenty & Ors v Arcadia Group Brands Ltd & Anor  EWCA Civ 3
This was a decision of the United Kingdom Court of Appeal about passing off in relation to an image. The claimant, Rihanna, was one of the world’s most popular recording artists, and the defendants together owned and operated the well-known Topshop retail fashion stores. Rihanna complained about the use by Topshop of an image of her on a t-shirt sold by Topshop. The image was derived from a photograph, and the use was licensed by the copyright owner, but not by Rihanna. Rihanna’s claim was that use of the image would lead consumers to think that she had endorsed its use on the t-shirt, and that the use constituted passing off.
At first instance, Birss J found that the use in the circumstances of the case did constitute passing off. He found that Rihanna had large merchandising and endorsement businesses and that she had ample goodwill in the world of fashion and as a style icon. He noted that the mere sale of a t-shirt bearing an image of a famous person did not, in itself, amount to passing off, but on the facts he found that a substantial portion of those considering the product would be induced to think it was a garment authorised by Rihanna. Important factors were her past public association with Topshop and the fact that the particular image was similar to images used on her album cover. There was no evidence of actual confusion but that was not determinative. The Judge found passing off.
Topshop appealed. The Court of Appeal dismissed the appeal and confirmed Birss J’s decision that the use by Topshop amounted to passing off. The Court began by reiterating the basic principle that there was in English law no “image right” or “character right” allowing a celebrity to control the use of his or her name or image. A celebrity must rely on some other cause of action, such as passing off in this case which protects goodwill. The action required the claimant to establish goodwill or reputation, a misrepresentation, and damage. This case raised issues of character merchandising and endorsement. On the facts, Rihanna argued that she had reputation and goodwill in connection with her business activities, that use of her image on the t-shirt amounted to a misrepresentation that she had endorsed it, and this led people to buy it, causing damage to her goodwill.
The Court said, confirming Birss J’s view, that it by no means follows that simply because the name or image of a celebrity appears on a consumable commercial item, the public will assume it has been endorsed by the celebrity. Each case will depend on its facts. Topshop argued that buyers of t-shirts bearing images of famous pop stars do not buy them because they believe that the garments are endorsed, and even if they did believe they were endorsed this would not affect the buying decision. The Court accepted that a claimant needed to establish that the use of the image was a misrepresentation, and that it affected the buying decision. However the Court found that the Judge had applied the correct principles and held that in all of the circumstances of the case the use of the image would indicate that its use was endorsed by Rihanna, and that this would lead people to buy it. One Judge observed that the case was close to the borderline, but all agreed to dismiss the appeal and uphold the finding of passing off.
The full April 2015 edition of the New Zealand Law Journal is available on the LexisNexis research database.