On the 31st of July, 2013, the Chancery Division of the England and Wales High Court decided the dispute between Rihanna and Topshop’s parent company Arcadia, regarding the use of the singer’s image on their T-shirts. Rihanna’s claim was based on the tort of passing off.
Rihanna’s claim of passing off, to be successful, requires satisfaction of three conditions- firstly, Rihanna must have goodwill and reputation among the relevant members of the public, secondly, there must have been a misrepresentation to the extent that would deceive the public into thinking that the T-shirts were authorised by Rihanna and thirdly, the misrepresentation should cause damage to Rihanna’s goodwill.
On the first ground, the Court held that Rihanna had goodwill and a reputation not just as a pop star but also as a style icon especially among females in the age group of 13 and 30. Rihanna had announced in 2012 that she was going to be designing clothes for the company River Island. Her name was a registered trademark and she had a brand logo known as the R slash logo. While the presence of the R slash logo and her name on a merchandise clearly indicates that such merchandise is endorsed by Rihanna, its absence, the Court held, could not conclusively establish that the goods were not endorsed by her.Therefore, the Court held that the Rihanna had sufficient goodwill to satisfy the first test under the claim of passing off.
With respect to the second test of misrepresentation, the issue revolved around whether the public would understand these T-shirts as having been endorsed/authorised by her or whether they would view the T-shirts as “merchandising”, where the goods are not usually considered to be authorised by the artist concerned. As this is an issue that has to be primarily decided on the facts and circumstances of the case, the Court looked at the image on the T-shirts in question. The image on the T-shirts had been taken during a famous video shoot of Rihanna in Northern Island for her single “We Found Love” from her 2011 album “Talk that Talk”. The Court on the facts held that the image on the T-shirts could be understood by her fans as a “publicity shot for a then recent musical release”. The Court stated that it was extremely likely that this image would be understood by her fans as a part of the marketing campaign for her music release. Therefore, the Court concluded that ”a substantial portion of those considering the product will be induced to think it is a garment authorised by the artist.” Such persons would buy the T-shirts, according to the Court because they either consider the garment to have been approved of by Rihanna or for the perceived value of her authorisation. In both these instances, the consumers would have been deceived and the second prong under the claim of passing off is satisfied.
The Court then stated that if a substantial number of people are deceived into buying the Topshop T-shirts under the mistaken belief that they were endorsed by Rihanna, then this would be damaging to the claimant’s goodwill. This is because it would result in losses of two kinds to them, a loss of sales to Rihanna’s merchandising business and a loss of control of her reputation in the fashion sphere. The Court rightly noted that it did not make a difference to the damage caused whether the T-shirts were of high quality or not as it was the claimants’ right to decide what garments the public must view as endorsed by Rihanna.
Therefore, the Court noted that, in light of the facts and circumstances of the present case, Topshop’s sale of the T-shirts with Rihanna’s image without her approval amounted to passing off. However, the Court warned that the mere sale by a trader of a garment with the image of a famous person would not by itself amount to passing off. In the instant case, it amounted to passing off because of the specific facts and circumstances therein.