Passing off & image rights
- John Deane
- Updated: Sat, 17th Dec 2016
Topshop, the fashion brand, used an image of Rihanna, a singer, on their goods. The High Court said that Topshop’s use of the image amounted to passing off.
The message is: when using images, get photographer’s permission, as was the case here. However check whether you need the celebrity’s permission as well, which was not the case here.
The key question to ask on a claim for passing off
The question boils down to who is bringing the claim and who is the defendant. This question determines whether there has been any passing off. This is because customers might consider:
- There is a commercial relationship between Rihanna and Topshop;
- They might not consider if there is a commercial relationship between Rihanna and another.
Passing off & image rights
Topshop purchased the rights from an independent photographer to use an image he had taken of the pop star Rihanna. Topshop used the image. However, Rihanna objected to Topshop’s use and brought an action for passing off.
Passing off is difficult to prove even though we know it goes on. It’s difficult because proving requires:
- The claimant, who is the person who believes that their property has been infringed, has to show a reputation i.e goodwill in the goods or services;
- Showing misrepresentation by the defendant, i.e. the person being sued. The misrepresentation causes, or is likely to cause, the public confusion: that the goods/services offered by the defendant are those of the claimant;
- Damage to the claimant: is particularly difficult to assess, and creates contentious issues.
Robyn Rihanna Fenty and others v Arcadia Group Brands Ltd (t/a Topshop) and another  EWHC 2310 (Ch)
Rihanna demonstrated goodwill through indications from her world wide music popularity. She also was seen as a fashion icon herself.
For the judge, factors that demonstrated the second required element were:
- Consumers commonly believed that artists had authorised merchandise use;
- Rihanna produced evidence that some unauthorised use could not pragmatically be pursued. Much of the unauthorised use was images of her album covers, which were copyright issues.
- The shop was Topshop. It was not implausible that Rihanna and Topshop were somehow working together.
- Rihanna had sustained losses to her merchandising business.
The difference between passing off & image rights
- England does not recognise a right to image rights. California, for example, recognises a right to control the commercial use of your image.
- There is no general right, in the UK, to control the reproduction of your image.
- The issue in dispute here was passing off and not image rights.
Whether there is a passing off claim depends on the facts. Not every image of every famous person on a garment is itself passing off. However, here it was, because:
- It was easy to link Rihanna and Topshop. It was reasonable to assume a customer would think Rihanna had authorised her image to be displayed on Topshop’s goods.
- Topshop would have known this and indirectly used it to increase its mark up and ultimate profits.
- This case shows attempts at such indirect profits will not be entertained.
Our advice when using images
- Get permission from both the photographer and the actual star before using the image.
- It is a global world, overloaded with images. To determine the line between celebrity and no-risk is hard.
- Protect yourself through proper commercial arrangements.
- Consider the use of a licence agreement that gives you the right to use the image or intellectual property works.
John Deane is the partner running the commercial team. John handles the contentious issues that arise out of the use of intellectual property rights. Often, the issues overlap. Practical solutions are offered by the team.