Saturday, July 20, 2019

Comment: The Pop Star, the Retailer and that T-Shirt


Rihanna, the famous pop star, style icon and trend setter has just successfully sued Arcadia over its Topshop t-shirt bearing an image of her. We ask why Rihanna was successful in this case, where others have failed, and what lessons retailers can take away from it.

In England, there is no such thing as a free standing general right by a famous person (or anyone else) to control the reproduction of their image. This is not necessarily the position elsewhere in the world, but the English court reaffirmed the position in Fenty v Arcadia.

So, just because a retailer sells a product bearing the image of a famous person, it does not follow that this is an infringement of that celebrity‘s rights. However, English law, through the tort of passing off, does recognise that in some cases the retailer should be stopped from overstepping the mark, particularly where the public falsely believes that the celebrity has endorsed the product, or where the product appears to be official merchandise but is not. Rihanna found herself in the middle of one such case.

To succeed in a passing off action of this nature, the celebrity must show that (1) he or she has a goodwill to protect, (2) there has been a false misrepresentation (which need not be intentional) that the product is authorised by the celebrity, or is “official” merchandise and (3) the activity is damaging to the celebrity.

Most celebrities will be able to demonstrate that they have goodwill and that they have suffered some damage (for example lost endorsement opportunities, lost merchandising business) because of the retailer‘s actions. So it is feature (2) that is the most difficult to prove.

Assume we are talking about an image of a pop star printed onto a T-shirt sold in a high street store as were the facts before the court in the Rihanna case.

A preliminary but important question for retailers to consider is whether the use of the image itself is licensed. Topshop had obtained an appropriate licence from the photographer, but if it is not obtained, the retailer could be susceptible to a separate copyright infringement claim.

Moving to the question of what constitutes feature (2), it is clear and the court found in the Rihanna case that customers are well aware of authorised merchandising by music artists and are also well aware of celebrity endorsements of products. But equally customers also recognise that the appearance of an image of a pop star on a t-shirt does not automatically mean that the t-shirt is official merchandise or that the pop star has endorsed it.

So, the court has to look at the particular facts of the case. Factors which point in the direction of official merchandise include swing tags or labelling bearing the artist‘s trade mark or moniker and also the use of an image which fans would associate with a particular album, tour or marketing campaign. Equally the appearance of tour dates (typically on the back of the t-shirt) indicates that the t-shirt is “official”.

The most telling factor in this case was the relationship between the artist and the retailer. As a starting point, as the judge put it “Topshop is not a market stall. It is a leading high street fashion retailer and purchasers would not be surprised to find goods on sale in Topshop which have been endorsed or approved by celebrities”.

Most importantly there was a real connection between Rihanna and Topshop. In 2010 Topshop organised a shopping competition which offered entrants the chance to have a personal shopping experience with Rihanna at the flagship Oxford Circus store. Additionally, Rihanna had visited the Oxford Circus store just a week of two before the launch of the Topshop t-shirt – a visit which prompted a lot of media attention and an excited tweet from @Topshop. Both events, in the mind of the court, demonstrated that Topshop was recognising and seeking to take legitimate advanta