Asia IP

Designers and retailers will now be on their guard when using celebrity images on their products, as the Court of Appeal recently upheld the High Court's 2013 decision that Topshop's sale of t-shirts bearing a photo of Rihanna amounted to passing off.

The High Court, in the first UK case won by a celebrity alleging passing off in relation to the use of their image in merchandising, had decided Rihanna had goodwill in her image, and Topshop was found to have misrepresented to its customers that it had some association with Rihanna by using that image, and specifically that Rihanna had endorsed the t-shirt to which the image was applied, as consumers are generally aware of artist-authorised merchandising and Rihanna's fans would recognise the picture as being from the artwork for her latest single. That would encourage them to buy the t-shirt, causing losses to Rihanna's merchandising business and loss of control over her reputation in the fashion sphere.

The Court of Appeal has confirmed the High Court's findings, but reiterated that there is no concept of "image rights" per se under English law and that famous individuals must always rely on some other cause of action, for example passing off, as in this case. Moreover, the Court acknowledged that the sale of garments bearing recognisable images of a person does not, in and of itself, amount to passing off.  However, the facts of this case were highly determinative and it was significant that Rihanna tended to actively trade in her image for merchandising purposes, that the image used was a highly recognisable image taken from a video shoot and was part of the range used on Rihanna's official merchandise, and that Topshop had played on its relationship with Rihanna, including high-profile visits she had made to its Oxford Street store. This made the ruling, according to the Court of Appeal, "close to the borderline".

Baker & McKenzie reported that this decision nonetheless highlights that designers and retailers will need to take into account that using celebrity images could in principle lead to an assertion of passing off, particularly where the celebrity makes a habit of trading on her image and has lucrative merchandising deals to protect. Although the court rejected the concept of a standalone image right, there is arguably a trend towards greater protection of image rights under UK law, certainly where the context of use implies the use of the image was authorised. Previously, the well known F1 racing driver Eddie Irvine succeeded in a passing off claim in respect of the use of his image in an advert for a radio station, again on the grounds that the manner in which the image was used amounted to a false statement that he had endorsed the station. Outside of the UK, the US has a well established common law right preventing commercial use of an individual's image without permission. Closer to home, Guernsey has introduced a fully fledged “image right” whereby individuals can now register their rights and may potentially have a right to seek damages outside Guernsey for infringement.