Rihanna right to get shirty with Top Shop says Court of Appeal

In a case brought in 2013 by the pop star Rihanna against Arcadia Group (the owners of retail chain Top Shop), the High Court held that the high number of sales of T-shirts bearing a photograph of Rihanna amounted to passing off. This was because although they had permission from the photographer to use the photograph (the photographer owned the copyright), they did not have Rihanna’s consent to use her image.

Top Shop went on to appeal the decision to the Court of Appeal, and contended that the original trial judge made a number of errors in reaching his conclusions. In January 2015, the Court of Appeal gave their judgment and the appeal was dismissed. The Court took the view that the High Court in 2013 was correct to find that the sale by Top Shop of the t-shirt amounted to passing off and so, the appeal should be dismissed.

Interestingly, one of the appeal Judges, Lord Justice Underhill said that he regarded the case as ‘close to the borderline’ as to whether there was passing off or not. This was because the original findings in the High Court, that some members of the relevant public (Top Shop shoppers and/or Rihanna fans) would think that the t-shirt was endorsed by Rihanna, were based essentially on two things;

• Rihanna had a prior public association with and endorsement of Top Shop, well known amongst her UK followers (Top Shop ran a competition in 2010 to win a personal shopping appointment with Rihanna and she also visited Top Shop in February 2012, which Top Shop heavily publicised to their 350,000 Twitter followers); &
• The particular features of the image itself. This was posed showing her with the very distinctive hairstyle adopted in the publicity for her album ‘Talk That Talk’.

LJ Underhill did not believe that either by itself would have been enough to see the appeal Court agree with the original decision but the two features in combination were capable of giving rise to the necessary apparent “endorsement”.

This passing off decision has stood the test of the Court of Appeal. As such other celebrities may now feel more empowered to complain about unauthorised use of their image on merchandise.

The take away point is that designers, manufacturers and retailers alike, in any industry sector, should consider seeking early legal advice if they have any concerns that any intellectual property rights may have been infringed.

If you are involved in a dispute and need advice on any aspect, please contact a member of our dispute resolution team.