Rihanna vs. Topshop: A Long-Awaited Success For The Celebrity Industry

Well-known pop star and "style icon" Rihanna has succeeded in a High Court battle against high street fashion retailer Topshop. The court found that the sale by Topshop of t-shirts bearing an image of the singer, without her approval, amounted to passing off. Following previous similar failed claims by celebrities such as Abba and the Spice Girls, the ruling is the first time that a celebrity has succeeded in this country in a passing off case in relation to the use of his or her image on items of clothing.

Passing off and merchandising and endorsement: the law

The law of passing off requires the claimant to establish three elements: (i) goodwill attaching to goods or services; (ii) misrepresentation by the defendant to the public (whether or not intentional) leading the public to believe that the goods or services offered by him are the goods or services of the claimant; and (iii) damage caused to the claimant, by reason of the mistaken belief created by the defendant's misrepresentation. Where the three elements are present, a case for passing off should succeed 1.

The relationship borne by passing off to merchandising and endorsement has historically been problematic with the courts consistently finding that merchandising rights did not exist in English law. In 1977 the court held that use of the name of the pop group Abba on transfers and badges did not amount to passing off on the basis that there was no real possibility that the public would be confused into thinking that Abba had approved the goods merely because their name or photograph appeared on them 2 . Similarly, some years later, the use of a photograph of the Spice Girls on the cover of a sticker collection was held not to amount to passing off 3 .

A notable exception came in 1991 when it was held that passing off had been established where cartoon characters called the Teenage Mutant Ninja Turtles were used on clothing without authorisation, since the public did expect the goods to be licensed 4. This case was distinguished from the Abba case on the basis that it was brought in the context of the unauthorised reproduction of images of cartoon characters in which copyright subsisted, rather than the name or image of a celebrity. Nonetheless the decision is generally viewed as opening up character merchandising law in England.

It has been established that there is nothing in the law to prevent a case of passing off being made out in a false endorsement case provided that it is...