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The Rihanna Row: Where Fashion Clashes with Privacy

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About The Author

Jade Rigby (Writer)

Jade is a third year Law student at Newcastle University. She is currently completely an Erasmus year abroad at Universitat Pompeu Fabra in Barcelona, Spain, and will return to Newcastle in 2015. Jade is predominantly interested in commercial law, but also writes on criminal and private law topics.

Fashion designers will have to avoid more than just colour clashes in the future. In 2012, Topshop, a firm favourite on the high street fashion scene, clashed with superstar musician Rihanna over the sale of T-shirts which were printed with pictures of her on them. The ongoing legal battle has finally been put to rest as, on 22nd January 2015, the Court of Appeal dismissed an appeal from Topshop’s owners ‘Arcadia’ concerning the judgment of the High Court from 5th July 2013. The Court of Appeal have had the final say on this matter, refusing Arcadia permission to appeal their judgment.

The unauthorised use of celebrity images is not a rare topic in the England and Wales jurisdiction. In 2012, a French magazine published unauthorised pictures of Kate Middleton. As tort students across the country will undoubtedly know, Catherine Zeta Jones and Michael Douglas  have also taken legal action against Hello magazine for the unauthorised publication of pictures of their wedding. Without specific privacy laws governing image rights, the sphere of celebrity privacy, if it exists at all, is under threat from technological advances and increasing popularity of celebrities.

Facts of the case

As previously noted, the legal battle between Rihanna and Topshop began in 2012 after Topshop began to sell T-Shirts with an unauthorised picture of Rihanna on them.

It is important to note that the present case, Robyn Rihanna Fenty and Others v Arcadia and Others [2015] EWCA Civ 3, is not a question of copyright law. The Court of Appeal was aware that an independent third party photographer, as owner of the copyright in the photograph, had the right to license the use of the image to Topshop.

Rather, Rihanna’s legal team argued that:

the use of her image in relation to fashion clothing was not licensed and that a substantial number of people buying the t-shirt would think that she had endorsed it when, in fact, it was not connected with her at all. Rihanna contended that Topshop’s activities therefore amounted to passing off.

Passing off is a tortious concept. It aims to protect ‘goodwill and prevents one person from passing off his goods or services as those of another.’ It governs the law in relation to misrepresentations made by one party that damage the goodwill of another.

Topshop responded by alleging that Rihanna was trying to claim ‘an image right, that is to say a right to control the licensing of her name and likeness, and that no such right is recognised in English law.’

In the High Court ruling, Mr Justice Birss held that, in this particular case, Topshop had acted in a way which would suggest that Rihanna had endorsed the item, and that this has caused her damage. However, the judge accepted that ‘the mere sale by a trader of a T-shirt bearing an image of a famous person does not, in and of itself, amount to passing off.’ An injunction was ordered against Topshop ‘restraining them from using Rihanna’s image in the future’.

The Appeal

Lord Justice Kitchin led the judgment from the Court of Appeal. Topshop appealed both the decision and the injunction. Topshop argued that Mr Justice Birss had made four mistakes in his judgment:

1) That the judge wrongly proceeded on the basis that there was no difference in law between an endorsement case and a merchandising case.

Arcadia argued that:

Purchasers of t-shirts bearing images of famous pop stars buy them not because they believe that the garments have any material connection with the pop stars at all but simply because they want to wear a garment carrying a picture of their idol. Merchandising therefore carries with it no misrepresentation.

However, Lord Justice Kitchin rightly dismissed this ground of appeal. Merchandising cases can, and often do, involve misrepresentations.

In a merchandising case it must be shown that:

  1. The application of the name or image to the goods has the consequence that they tell a lie. This requirement, which is closely allied to distinctiveness, will not be satisfied if the name or image denotes nothing about the source of the goods; and
  2. The lie must be material. It may amount to no more than a false suggestion that the goods are licensed and, as such, it may have no effect upon the buying decision, but it is still a material lie.

Hence, Mr Justice Birss was entitled to proceed on the basis that there was a misrepresentation as, in light of all of the circumstances of the case, ‘the use of this image would… indicate that the T-shirt had been authorised and approved by Rihanna.’

2) A claim for passing off should only have been entertained on the basis that the market for clothing featuring images of Rihanna was a market which others were lawfully entitled to enter.

Hence, although the judge acknowledged that the sale of clothing bearing a recognisable image of a famous person does not, in itself, amount to passing off, he failed to proceed on the basis that the law of passing off treats the use of such images on clothing as origin neutral.

On the second ground of appeal, Lord Kitchin was not satisfied that the fact that a famous personality has no right to control the use of their image leads ‘inexorably to the conclusion that the use of a particular image cannot give rise to the mistaken belief by consumers that the goods to which it is applied have been authorised.’ Hence, in this particular case, Topshop was liable for misrepresentation, and the injunction should not be lifted against Topshop. Lord Kitchin should be commended for this strong defence. The court has to be alive to practical reality, and it would be naïve to ignore the fact that consumers may buy products under the mistaken belief that Rihanna had endorsed the product.

3) The judge ought to have recognised that the absence of an image right is a matter of law and not a matter of fact. Further, he should not have assessed the claim from the perspective of people who would see the image as an indication of authorisation.

Lord Kitchin dismissed the third ground of appeal on the basis that the court would have to ‘shut its eyes to reality and to put on one side well settled principles’. The judge considered factors which were relevant to the case, including ‘the activities of Topshop in publicising and promoting its connection with Rihanna over a period of time’. The claimant need only establish the likelihood of confusion for a substantial number of consumers, but not necessarily all of them.

4) The judge should not have found Topshop liable for misrepresentation. Rihanna had never properly alleged or developed a case that the particular image was a result of any marketing or promotional activity that she had done. There was no evidence that the image was in any way distinctive.

Although Lord Kitchin accepted that there was some validity to the fourth ground of appeal, he ultimately held that:

The judge found on the evidence, as I believe he was entitled to, that the image itself is striking because it is oversized and shows Rihanna’s face and shoulders; that Rihanna is looking straight at the camera with her hair tied above her head in a head scarf, in other words that she is in a pose; and that similar images had been used for the recent Talk That Talk album and associated video. It seems to me that, having come this far, the judge was also entitled to go on and make the finding … that the relationship between this image and the images for the album and video would be noticed by her fans. Indeed the nature of the image may be thought to have made it very likely indeed that it would be taken to be an authorised publicity shot for what was then her recent musical release.

The appeal against the previous decision and injunction was unanimously dismissed by the bench.

Passing Off and the Progress of Privacy

Lord Kitchin set out some basic guiding principles of English law before responding directly to the grounds of appeal. His obiter dicta reveals an important insight into the development of image rights in the English law.

First, there is no ‘image right’ or ‘character right’ which allows a celebrity to control the use of his or her name or image. Lord Kitchin recognised that celebrities who sought to control such images must rely ‘upon some other cause of action such as breach of contract, breach of confidence, infringement of copyright or, as in this case, passing off.’

Passing off, as Lord Kitchin identifies, protects ‘goodwill and prevents one person passing off his goods or services as those of another.’

The three elements of the passing off doctrine, as explained in Reckitt & Colman Products Ltd v Borden Inc & Ors [1990]:

  1. The claimant must establish a goodwill or reputation attached to the goods or services which he supplies;
  2. The claimant must demonstrate a misrepresentation by the defendant to the public; and
  3. The claimant must demonstrate that he has suffered or that he is likely to suffer damage because of the erroneous belief of the public, which was caused by the defendant’s misrepresentation.

Lord Kitchin held that Rihanna had a sustainable case for passing off because she had allegedly suffered damage to her business as a result of the T-shirt.

It is particularly interesting that Lord Kitchin commented on the turbulent history of celebrities and image protection. We can see here how, in practice, the common law has been moulded and developed in order to protect the sphere of privacy. To a certain extent, this demonstrates how the law can be used to achieve results which do not directly correlate with circumstances envisioned by the original legal doctrines. That is not to suggest that such development is wrong, however. Privacy, for example, is a complex concept. There is no universal definition or scope of privacy, and thus it is particularly difficult to implement via statute. A statute protecting privacy in relation to image rights would, therefore, be difficult to compile and, almost inevitably, incomplete. It may well be ‘a bridge too far’.

The common law, however, can provide a piecemeal definition, responding to particular problems as they arise. The common law can arguably achieve a better balance between privacy and freedom of speech because of this capacity for ad-hoc development. Consequently, ongoing development by the common law may ultimately provide a much better tailored solution to the privacy problem, whilst simultaneously developing the protections which go hand-in-hand with the recognition of privacy rights. Indeed, by insisting on an emphasis on the particular circumstances of each case, the Court of Appeal has ensured that the development into image rights has not gone on in an unconstrained fashion. The problem here, of course, is that the judiciary seem to be muddying the waters. What is private, and what is public, has become an increasingly complex question in the Age of the Celebrity. Readers interested in learning more about the pre-Rihanna approach to image rights by the courts and issues surrounding doctrine ‘stretching’ should see Leon Glenister’s discussion ‘The right, or lack of right, to image in UK law’.

A relevant issue to consider here is whether there would be any difference between establishing control of image rights through a specific legal regime and, as the courts have done, through an extended interpretation of contractual and tort doctrines. Distorting legal doctrines is open to the criticism that the judiciary is acting ultra vires, and thus causing a miscarriage of justice from within the justice system. It may be preferable, therefore, for a specific statute to be brought into force.

Moreover, it could be argued that a specific legal regime covering image rights would make legal proceedings much quicker and, consequently, much cheaper. The case at hand here is a strong example of this; years of litigation and escalating legal fees may have in fact rendered Rihanna’s success a pyrrhic victory.

Practical Effects: Using an Unauthorised Image

The current case demonstrates a significant extension of protection for celebrities. What is particularly interesting about this case, both in the High Court and on appeal, is the fact that the involved members of the judiciary have evaluated the case using arguments which are founded on practical realities. Significantly, no one issue has been considered in a vacuum, and the effect of this is that celebrities have been granted a level of control over their images which was not clearly defined before.

For businesses and designers, the judgment will have a significant impact on their work in the future. Although the judges were keen to emphasise that the circumstances surrounding this case were influential on the outcome, an important precedent has been set. Moreover, the clear, direct language used by Lord Kitchin and his colleagues in this instance has left no grey areas that could be the subject of future litigation or appeals. By recognising and tracing the legal history of protecting celebrity images, the court demonstrated an intention to at least protect progress made in relation to privacy rights. Moreover, by going further and developing the doctrine of passing off in such a way so as to encapsulate celebrity image rights, the court has made it very difficult for such images to be used without authorisation in the future.

Much of the judgment here focused on the background to the case. Clearly, this has not “opened the floodgates” for every image in every context. It is highly unlikely, for example, that Marilyn Monroe’s estate will pursue claims in this area if clothing bears her infamous silhouette. The unauthorised image of Rihanna showed her face and was directly related to the material that she was promoting around the same time. Image rights are not absolute; they are affected by context and circumstance. The practical effects of this judgment, therefore, may not be as revolutionary as first thought. It will be interesting to see how another bench will interpret the scope of this judgment, notably in relation to emphasising the circumstances or particular characteristics of the image in question.  

Ultimately, it is likely that future litigation will push the established boundaries of privacy, whether in relation to image rights or some other aspect of a celebrity’s work or personal life. The challenge of responding to these claims has been left to the courts and it appears that this, in fact, may be actually beneficial. Piecemeal privacy protection maintains a balance between the public and the private sphere. Lawyers have had to be creative on behalf of their celebrity clients, but this should not necessarily attract criticism. It is their job to search for the boundaries of the legal system. If the legislator will not define those boundaries, then it falls to our judiciary to interpret the law so as to solve legal problems in an increasingly celebrity-conscious world. 

Further Reading

The Guardian, ‘Rihanna Wins Topshop T Shirt Row’.

SJ Berwin, ‘Court of Appeal dismisses Topshop’s appeal in Rihanna passing off case’.

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Tagged: Commercial Law, Intellectual Property, Privacy Law, Retail

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