In a case where the profile of the parties far outshone the legal substance and had many media outlets overexcited, global popstar Rihanna yesterday ( 31 July) won a High Court battle against high street retailer Topshop over the unauthorised use of her ‘brand’. The £5m case has resulted in untold lovely column inches and hopefully hefty fees for the two firms involved, Reed Smith and Mishcon de Reya.
Suing parent company Arcadia Group, the Barbadian songstress, whose real name is Robin Fenty, filed the claim after Topshop sold t-shirts with her face printed on without permission.
She was represented by 8 New Square’s Martin Howe QC and Hogarth Chambers Andrew Norris, who were instructed by Michael Skrein at Reed Smith, while One Essex Court’s Geoffrey Hobbs QC and 11 South Square’s Hugo Cuddigan acted on behalf of the retail giant under the instruction of Jeremy Hertzog at Mishcon de Reya.
The issue at trial, which took place over a four day period between the 17 and 23 July, was whether Topshop had committed the tort of passing off by using Rihanna’s photograph on its t-shirts. There has been little precedent for the rights of celebrities to protect their image in the UK, with the most established case involving former Ferrari F1 driver Eddie Irvine who successfully sued TalkSport in 2002 for using his image to endorse the radio station.
Mr Justice Birss, who opened his 16-page judgment with the thumpingly literal line: ‘Topshop is a well-known fashion retailer. Rihanna is a famous pop star’, ruled that a substantial number of purchasers would likely be deceived into buying the t-shirt because of a ‘false belief’ that Rihanna had authorised it, which would ultimately be ‘damaging to the claimants’ goodwill’.
‘For one thing it amounts to sales lost to her merchandising business. It also represents a loss of control over her reputation in the fashion sphere. The fact the garment is a high quality product does not negate that aspect of damage. It is a matter for the claimants and not Topshop to choose what garments the public think are endorsed by her.’ So far, so obvious.
He added: ‘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 person on this garment by this shop in these circumstances is a different matter. I find that Topshop’s sale of this Rihanna t-shirt without her approval was an act of passing off. I find for the claimants.’
Certainly the case has done much to enhance the profile of the two solicitors, Mishcons’ Hertzog and Skrein at Reed Smith. Hertzog was quoted in City AM this morning saying: ‘There is “no such thing as a free standing general right by a famous person (or anyone else) to control the reproduction of their image”. Put simply, there is nothing unlawful in selling garments bearing the images of well-known celebrities without the approval of the celebrity in question.’ Meanwhile, Skrein and Reed Smith have stayed quiet, with a single line: ‘The judgment speaks for itself,’ the only comment attributed to Skrein so far.
Jason Rawkins, head of the fashion group at Taylor Wessing, says the odds were always ‘stacked up against Topshop’.
‘There haven’t been many image rights cases in England because most just settle,’ he says. ‘It’s quite interesting when you compare what was going on in the 70s to now, and how the world has moved on. The judgment is partly a reflection of how the real world has changed and ultimately how the public have changed in their thinking. It is now the norm for celebrities or musicians to make money outside of the day job.
‘It’s quite specific. They had done collaborations with Kate Moss, Kate Bosworth and even Rihanna herself. And Rihanna had also done collaborations with H&M and Armani. So there’s a connection in people’s minds between Rihanna and fashion, and between Topshop and celebrities. The photograph they used was also similar to how she appeared on one of her albums. That’s another reason people would think it was authorised.’
‘The interesting question is whether it will now be easier for celebrities to get home on passing off. I suspect it’s now going to be significantly easier for celebrities in the modern world to win on these sorts of cases because of the way they operate these days.’
‘I think the decision broadens the circumstances in which passing off can be claimed and is likely to lead to more claims against the use of celebrity images on products,’ adds Peter Brownlow, IP partner at Bird & Bird. ‘In the previous UK leading image rights case, Irvine v Talksport, the Judge drew a distinction between “celebrity endorsement” – where the use of the image was to endorse a product and “character merchandising” where there was mere use of the image on a product such as clothing or a mug. The former amounted to passing off but the latter didn’t. This case appears to blur that distinction.’
Perhaps pop stars such as Rihanna should brush up on their knowledge of offshore legal jurisdictions, as Guernsey has been pioneering legislation and a register for image rights that can be enforced effectively.
Topshop will be seeking leave to appeal, according to Mishcons’ website. But for now, it seems that as far as the English legal system is concerned, the singer has found love in a hopeless place (sorry).