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UNITARY PATENT

In 2012 Member States and the European Parliament agreed on the "patent package" - a legislative initiative consisting of two...

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Topshop Lose their (T)Shirt….Again

As regular readers will remember, in the Spring 2014 edition of MakeYour Mark (see “Snippets”), we reported the success of the famous pop singer Rhianna in the English High Court. In that case, the sale of a t-shirt bearing an image of Rhianna by Topshop, the well-known British fashion retailer, in 2012 was found to be an act of passing off. Topshop were ordered to pay Rhianna’s not insubstantial legal costs.
By way of a recap, the dispute concerned the t-shirt design shown below which was considered, by the High Court Judge, Birss (J), to be a fashion item rather than tour merchandise.

The image was taken by a photographer at a photo shoot for Rhianna’s video to accompany her hit single “We Found Love”. Topshop had a license from the photographer to use the image but no license from Rhianna to sell the t-shirt bearing the image. Rhianna sued Topshop for passing off.

The Judge held that “the mere sale by a trader of a t-shirt bearing an image of a famous person is not, without more, an act of passing off. However, the sale of this image of this person on this garment by this shop in these circumstances is a different matter”.

Topshop were found to be passing off despite the absence of any evidence of the t-shirt being bought in the belief that it was authorised by Rhianna or of any other evidence of actual confusion. Whilst this was relevant, it wasn’t determinative. The Judge also accepted that Topshop’s customers might expect some of its t-shirts bearing images of famous celebrities or musicians to be licensed by the celebrity or the artist. However, according to the Judge, in other cases the retailer’s customers might not expect such a licence to be in place. In spite of this finding, in the Rhianna case, in Mr Justice Birss’ view, a substantial number of purchasers of the t-shirt would have been likely to be deceived into buying the garment because they falsely believed that Rhianna had authorised it. This would, in turn, damage the singer’s goodwill and would also represent a loss of control of her reputation in the “fashion sphere” and loss of sales for her significant merchandising business.

It was particularly relevant in this case that, in 2012, when the unauthorised t-shirts were on sale, Rhianna was regarded by many people, predominantly young women aged 13-30 (i.e. Topshop’s target market) as a “style icon”. Rhianna entered into an agreement with River Island (a Topshop rival) that year to sell her own range of clothing, showing, according to the Judge, that “Rhianna’s identity and endorsement in the world of high street fashion was perceived in 2012 to have a tangible value by an organisation well placed to know”.

Also damning for Topshop’s case was their past public association with Rhianna:

•    In 2010, they ran an online competition for customers to win a personal shopping appointment with Rhianna at their flagship Oxford Street branch;
•    Rhianna had previously endorsed goods in Topman, Topshop’s brother store; and
•    A week or two before the Rhianna t-shirt went on sale, Topshop staff had sought to publicise her visit to one of their stores on Twitter.

Topshop, perhaps not surprisingly, were disappointed with the High Court decision and were granted permission to appeal to the Court of Appeal, Robyn RhiannaFentyv Arcadia Group Brands - [2015] EWCA Civ 3.

Lord Justices Kitchen, Underhill and Richards heard the appeal and, in a judgment handed down on 22 January 2015, upheld the lower court’s decision although Underhill (LJ) thought the case “close to the borderline”.

Whilst the Appeal Court agreed that there is no “image right” or “character right”, in the UK, they concluded that the law of passing off prevented deception such as was found in the present case.
 
Kitchen (LJ), agreed with the lower court that use of Rhianna’s image amounted to a misrepresentation for the purposes of passing off because of:

1) Rhianna’s past relationship with Topshop; and
2) The particular features of the image (on the t-shirt) itself, which resembled official publicity shots for Rhianna’s “Talk TalkTalk” album and associated “We Found Love” video.

Comment

This decision is not a watershed moment in the protection of celebrity merchandise in the UK since this case turned specifically on its facts. Had Rhianna not had a past public relationship with Topshop and had the image in question not been so close to the publicity shots used for her album, she may not have succeeded.

In future, celebrities trying to prevent the unauthorised use of their images on merchandise will still have to prove all the usual criteria for a passing off case, namely, their ownership of goodwill and reputation in the area concerned, that the defendant’s activities amount to a misrepresentation and that these activities have caused or are likely to cause damage to the celebrity’s goodwill and reputation.
 
Some famous faces may find it easier than others to meet these stiff criteria. For example, would the Court have reached the same decision had the image been of the Duchess of Cambridge or Prince George? Any item of high street clothing bearing an image of either Kate or George generally sells quickly. However, would anyone really assume that a t-shirt bearing either of their images is official Royal merchandise? Probably not.

The Rhianna decision also serves as a stark reminder to retailers that they should tread carefully when selling unofficial merchandise bearing the images of well-known stars. Rhianna will, no doubt, again seek substantial damages and legal costs from Topshop. Her High Court legal costs alone were estimated at a staggering £919,000. Whether she will be found shopping at Topshop in the near future remains to be seen.