Nicola Hill, Associate and Jude King, Trainee Solicitor, Browne Jacobson LLP
This is the era of celebrity. It has become a global commercial enterprise in its own right. From launching personalised perfume ranges to being the face of fashion houses, there can be no doubt that celebs are a high value commodity. As such, every star wants to protect their image or name. Yet whilst many states in the US recognise a ‘right of publicity’ – the right to control the commercialisation of their own image – such a right has never existed under English law. As Colin Birss J succinctly put it at first instance in this case:
“Whatever may be the position elsewhere in the world, and however much various celebrities may wish there were, 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.”
This position was confirmed recently by the Court of Appeal (CA) in Fenty v Arcadia, who upheld Rihanna’s $5 million claim in passing off against the British fashion retailer, Topshop, but denied the existence of an image right under English law. It came as a mixed blessing to many in the celebrity field, who had pinned hopes on Rihanna’s case being an opportunity to finally introduce image rights into the UK.
The case involved a well-known UK fashion retailer Top Shop – a store synonymous with London cool. Topshop began selling a t-shirt featuring an image of RiRi herself both online and in their stores. Despite having a licence from the photographer allowing them to use the image, Topshop did not have Rihanna’s permission, who then complained to Top Shop that the sale of the t-shirt without her permission infringed her rights. Topshop’s response, one could say, was that she should just ‘shut up and drive’.
Rihanna subsequently brought proceedings against the fashion giant alleging passing off (N.B. this is a long-established English common law tort requiring the Claimant to prove goodwill, misrepresentation and damage).
At first instance, Birss J clarified that English law does not treat merchandising and endorsement differently; what is required for both is that a substantial portion of those considering the product will be induced to think it is authorised by the artist, and that they are in some way responsible for their quality/appearance. He considered the evidence at hand and found that Rihanna met all three criteria. Rihanna was thus successful and granted protection under the, ahem, ‘umbrella’ of the English legal system.
On 22 January 2015, the CA delivered its judgment. It upheld the first instance decision, concurring that Rihanna had the requisite goodwill in the goods in question, both as a style icon in her own right and having her own fashion line and collaborations with companies such as Gucci and one of Topshop’s biggest rivals, River Island. The CA further found misrepresentation on the facts because Rihanna had previous associations with Topshop and also the image appeared to be a publicity shot for her then current album ‘Talk That Talk’ so the relevant public were likely to be deceived into thinking that the product was authorised by Rihanna. Damage was proven through the loss of merchandising business in addition to loss of control over her reputation. It was held that Birss J was correct in upholding passing off, but to the disappointment of many, there was no likelihood of the CA introducing an image right any time soon.
Further, the CA was at pains to reiterate that this case turned squarely on its facts and that the sale of clothing bearing recognisable images of celebrities does not, in itself, amount to passing off. This case is clearly not designed to open the floodgates for false endorsement claims.
So what does it mean going forward? Firstly, there is clearly no intention to introduce a US-style image right into the UK. Neither is it intended that passing off becomes a back-door personality right. What Fenty does do, however, is to send a clear message to English retailers and designers to exercise caution in using celebrity imagery. It also gives our superstar clients a glimmer of hope that, in the right circumstances at least, they might be able to take back some control over use of their image in England. So for that… Take a Bow, Rihanna.