Rihanna wins Passing off claim against Top Shop

September 2013

Artists, merchandise


Rihanna has won her legal battle with Topshop over a T-shirt the high street retailer sold bearing her image. The star sued Topshop’s parent company Arcadia for $5 million (£3.3m) over the T-shirt, which featured a photo taken during a video shoot in 2011. Her lawyers told the High Court in London the fashion chain duped fans and may have damaged her reputation. They said the picture was “very similar” to images used on CD sleeves for one of her albums.

Mr Justice Birss ruled that a “substantial number” of buyers were likely to have been deceived into buying the T-shirt because of a “false belief” that it had been approved by the singer. He said it was damaging to her “goodwill” and represented a loss of control over her reputation in the “fashion sphere”.

Topshop’s lawyers had claimed the 25-year-old was making an unjustifiable bid to establish a “free standing image right” over use of her picture in the UK. The photograph used by Topshop had been taken during filming of a music video in Northern Ireland in 2011.

In a two-minute judgment Mr Justice Birss, said there was “no such thing as a general right by a famous person to control the reproduction of their image. The taking of the photograph is not suggested to have breached Rihanna’s privacy. The mere sale by a trader of a T-shirt bearing an image of a famous person is not an act of passing off. However, I find that Topshop’s sale of this T-shirt was an act of passing off”. Mr Justice Birss however did not make an assessment of any liable damages in his ruling.

The judgment appears to bring British passing off law up to date, running through the classical Jif Lemon case of Reckitt & Colman v Borden, through the 1970s consolidation of the law in Tavener Rutledge v Trexapalm (the Kojak Lollipops case) [1977] RPC 275, Lyngstad v Anabas (goods carrying photographs of the pop group Abba) [1977] FSR 62, and Wombles v Womble Skip Hire (skips for collecting rubbish branded Womble) [1975] FSR 488, thence to the age of merchandising and endorsement in Mirage Studios v Counterfeat Clothing (the Teenage Mutant Ninja Turtles case) [1991] FSR 145 and Irvine v Talksport [2002] FSR 60, and finally up to the age of the social media, with references to Twitter and tweets.

In the USA, rapper Riff  Raff (born Jody Christian) is alleging that one of the main characters in the movie Spring Breakers, Alien, who is played by James Franco  has misappropriated his likeness alleging there is a strong resemblance between him and Alien’s character due to “long braids and blinged-out grillz”.

In the wake of Cariou v Prince and the recent ‘Green Day’ decision in the USA (see below), over on the IPKat Birgit Clark reports from Germany where the Dusseldorf Higher Regional Court has held that a defendant who had offered “pop art style” portraits of the well-known young German golf professional Martin Kaymer for sale on his (the defendant’s) website as well as on an internet auction site infringed his image rights. The portraits showed a photograph of the golf professional, which the defendant had created by altering the colour combination of photographs into pop-art style.  He sold one of these portraits online via an internet auction site achieving a rather humble sale price of €43.50.  The defendant argued that his portraits were meant to pay “tribute” to Mr Kaymer and that the dissemination of the portraits also served the “higher interest of art” as well as the information interest of the general public. The court, upholding the court of first instance, found that the defendant had infringed Mr Kaymer’s right in his own image or likeness (§ 22 of the German Act on the Protection of the Copyright in Works of Art and Photographs (Kunsturhebergesetz)) resulting in an injunction and damages.  The court could not detect an overriding interest of art; this in particular since the portraits were mostly of a “decorative character” that did not show any artistic creation which went beyond pure craftsmanship.

And Hewlett-Packard has asked that a lawsuit being pursued against it by American singer and ‘The Twist’ man Chubby Checker, over an app available in it’s app store, be dismissed. Checker sued HP over an app it distributed called ‘The Chubby Checker’, which claimed to help users work out the size of a man’s penis using the always reliable shoe-size comparison method. Checker, real name Ernest Evans, said the app violated his trademarks and publicity rights, and has sued HP for distributing it.

Robyn Rihanna Fenty v Arcadia [2013] EWHC 2310 (Ch). This report taken from the IPKat http://ipkitten.blogspot.co.uk/2013/07/so-cool-in-court-as-rihanna-tops.html and see our August 2013 Updates  Rihanna tests image rights in English law

Riff Rapp’s latest claim against the producers of the Spring Breakers movie here http://ipkitten.blogspot.co.uk/2013/08/misappropriation-of-likeness-rapper.html



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