Protection Of Celebrity Images In The U.K. – Rihanna Decision Affirmed By Court Of Appeal

Fenty & Ors v Arcadia Group Brands Limited (t/a Topshop) ([2013] EWHC 2310 (Ch), aff'd, [2015] EWCA Civ 3

We refer to our December 2013 Information Letter report on the decision by the UK High Court finding Topshop liable for passing off for engaging in unauthorized sale of T-shirts bearing an image of the well-known pop star Rihanna. In a ruling dated January 22, 2015, the Court of Appeal (Civil Division) has now upheld this decision. The case is significant in that prior cases have tended to rule against celebrity plaintiffs in such merchandising cases. Our prior report on the decision may be summarized as follows:

In a highly-publicized decision in July 2013, the High Court of England and Wales (Justice Birss) ruled that the UK-based retailer Topshop's sale of a T-shirt bearing a photograph of the singer without her authorization was an act of passing off. The T-shirt, which the retailer began selling in March 2012, featured an image of Rihanna taken during a video shoot for her single, "We Found Love," which was later used to promote her "Talk That Talk" album featuring that single. While Topshop's manufacturer had obtained a license from the photographer, Topshop had failed to seek authorization from Rihanna herself. Rihanna (and two of her corporate licensing vehicles) sued Topshop for passing off on the ground that sale of the T-shirt featuring her image would create the false impression that Rihanna had authorized the T-shirt.

In his decision, Justice Birss emphasized that UK law does not recognize image rights or rights of publicity, noting that "there is today in England no such thing as a freestanding general right by a famous person (or anyone else) to control the reproduction of their image." Instead, celebrities must rely on passing off to prevent the unauthorized third-party use of their images.

The plaintiff in a passing off action must establish that: (i) he or she has goodwill and reputation among relevant members of the public; (ii) the use in question constitutes a misrepresentation (i.e., is "likely to deceive those members of the public into buying the product because they think it is authorized by [the plaintiff]"; and (iii) the misrepresentation must cause damage to the individual's goodwill. It has been difficult for celebrities to prove misrepresentation in such cases. Courts have reasoned that consumers merely purchased the product because it featured the celebrity, and not because of the false belief that the...