When R&B meets IP: Rihanna stops Top Shop crop tops

Well, alright then, they were t-shirts, but it was too good a title to resist!

The end of July saw the handing down of judgment by Mr Justice Birss in the intellectual property claim brought by R&B singer Rihanna against Arcadia, the company behind the high street "Top Shop" brand.

The ruling was in the singer's favour based on her claim in passing-off against the company.

Top Shop stores had been selling t-shirts bearing an image of the Rihanna based on a photograph which closely resembled one of her album cover images. They had acted correctly in obtaining a copyright licence from the photographer who had taken the picture, upon which the print was based, but they did not seek Rihanna's consent to the use of her image in this way.

Birss J's judgment underlines the existing legal position in this country (and distinct from other parts of Europe) that celebrities do not have a special and separate "image right" enforceable at law, but that they may in some circumstances rely on the existing legal doctrine of passing-off to prevent the sale of unauthorised items bearing their image.

The leading case along similar lines is from around 10 years ago when the (then) Ferrari Formula 1 driver, Eddie Irvine, successfully brought a claim in passing-off against radio station TalkSport. The radio station had digitally altered a photograph of Irvine talking on a mobile phone to make it appear that he was holding a portable radio emblazoned with the TalkSport logo. Irvine claimed that the use of his (commercially valuable) image in this way wrongly implied a connection and endorsement of TalkSport by him, to which he had not consented.

Irvine's case, and Rihanna's, were based in the tort of passing-off and required them to establish the "classic trinity" of passing-off which was established by the case of Reckitt & Colman Products Ltd. v Borden Inc. [1990] (better known as the Jif Lemon case since it centred around the famous lemon juice packaging). This "trinity" is:

• The goods or services of the claimant have acquired goodwill or reputation in the marketplace that distinguishes those goods or services from those of competitors;
• The defendant has misrepresented their goods or services so that the public may have the impression that the offered goods or services are those of the claimant or are commercially connected to the claimant's business in some way (i.e. confusion is likely to occur); and
• The claimant may suffer loss or damage because of this misrepresentation.

Rihanna's lawyers successfully argued that because substantial and valuable goodwill exists in her image (particularly in the image of her as depicted which closely resembled the cover of her album "Talk that Talk"), and because consumers know that, as part of the commercial activities that she undertakes using her image, she officially endorses certain fashion brands and products (she had previously worked with Gucci, and indeed with Top Shop themselves on other products in the past), a substantial number of customers seeing the t-shirts bearing her likeness in Top Shop would assume that these were officially endorsed "Rihanna" products.

In addition, the Judge noted that in terms of the likely loss or damage to Rihanna's commercial interests, there would almost certainly be a loss of sales to her own official merchandising business (which of course does sell products that she endorses to bear her image) as well as a loss of control of her reputation in the sphere of fashion, where she is commercially active.

The Judge was careful to emphasise that the mere sale of a t-shirt bearing an image of a celebrity would not necessarily automatically amount to passing-off, but in these circumstances, and taking account of the commercial uses to which the celebrity in question puts that image and accordingly gathers goodwill in it, Rihanna was entitled to protection via the doctrine of passing-off.

Businesses involved in producing consumer merchandise, particularly clothing, posters, promotional materials, should therefore think carefully before using any images of famous individuals even where they have, as in this case, secured the appropriate rights to the photograph or image itself. The legal position could well turn on what commercial activities the celebrity themselves has become involved in.

This article is for general guidance only. It provides useful information in a concise form. Action should not be taken without obtaining specific legal advice.