Rihanna’s recent victory against Topshop for selling a t-shirt bearing her image (see Fenty v Arcadia Group Brands Ltd (t/a Topshop) [2013] EWHC 2310 (Ch)) is an excellent result for celebrities wishing to exploit their personal brands on Twitter and other social media.
Image rights are not generally recognised under UK law other than by contract; there is no freestanding right by celebrities (or anyone) to control the reproduction of their image. Celebrities wanting to protect the commercial value in their image therefore have to rely on other causes of action to prevent companies using their image without consent.
In Douglas v Hello [2005] EWCA Civ 595, Catherine Zeta-Jones and Michael Douglas successfully sued Hello! magazine for breach of privacy and confidence when it used unauthorised photos of their wedding in an attempt to spoil an exclusive commercial deal with OK magazine. And in Irvine v Talksport [2002] EWHC 367 (Ch), the Formula 1 driver Eddie Irvine successfully relied on the tort of ‘passing off’ to obtain damages for the unauthorised use of his image in an advert on the basis that it created the false impression that he had endorsed Talksport. Rihanna’s recent claim also relied on passing off and Rihanna’s connection to Topshop through social media played an important part in the decision.
Rihanna’s claim
In 2012 Topshop sold a sleeveless t-shirt with a full image of Rihanna on it. The image was taken by an independent photographer who licensed Topshop to sell it. Rihanna had no copyright in the photograph and so argued that sale of the t-shirt without her permission infringed her rights on the grounds of passing off as those who bought it were likely to think she had endorsed the product.
Passing off requires a claimant to establish three elements: first, that they have goodwill and a reputation amongst relevant members of the public; secondly, that the conduct complained of is a misrepresentation; and thirdly that this is likely to cause them damage.
Rihanna was easily able to prove that she had goodwill and reputation as a ‘world famous pop star‘ and ‘a style leader‘ in the world of fashion. As the third element naturally follows from establishing the first two, it was the second which was the most crucial, and also the most difficult to prove. Rihanna had to show that the sale of the t-shirt with her face on it was likely to deceive consumers into thinking it was a product endorsed by her.
The judge emphasized that the current position in English law is that a misrepresentation is not made through the ‘mere use‘ of a celebrity’s image, but held that in this case the circumstances meant that there had been a misrepresentation. This was for a number of reasons but the judge particularly took into account that the image used ‘look[ed] like a publicity shot for what was then a recent musical release‘ and that the consumers, largely Rihanna’s fans, would be likely to recognise this and think that she had endorsed the product as part of a marketing campaign. The judge deemed this likelihood to be enhanced by the public links between Topshop and Rihanna.
The judge was also satisfied that the third limb of passing off was satisfied – that damage had been caused, namely financial damage of sales lost to Rihanna’s marketing business and loss of control over her reputation in the fashion sphere. However, damages were left to be assessed on another day.
In the Eddie Irvine case, damages were eventually assessed by the Court of Appeal as £25,000, which represented not the loss of sales to Eddie Irvine but the amount that Talksport would reasonably have been required to pay for the use of Irvine’s image. If Rihanna opts for this measure of damages, it will be very interesting to see what a court thinks Topshop would have been required to pay. It may seek to find out what Nivea paid Rihanna before ending the deal because her lyrics didn’t quite fit with Nivea’s brand values of ‘trust, family and reliability‘.
Tweets
As well as being a useful reminder of the law of passing off, the Rihanna decision is also interesting for its relevance to social media.
One of the public links between Rihanna and Topshop considered by the court was a tweet from Topshop’s twitter account which read:
‘Ridiculously excited? @Rihanna is in our Oxford Circus store as we tweet. Ah, wonder what she’ll buy…’
The judge noted that Topshop tried to dismiss this sort of activity as ‘simply chatter and gossip‘ but disagreed, noting that Tweets could be a ‘key channel‘ for both parties to communicate with their customers and fans.
Twitter is a key channel because of the size and relevance of the audience with whom celebrities can communicate. There is therefore an increasing practice of celebrities being paid to tweet about products and brands.
In addition to the tort of passing off, the use of celebrity endorsement on social media is also subject to advertising regulation by the Committee of Advertising Practices Code and the Consumer Protection from Unfair Trading Regulations 2008, which have provisions to ensure that social media marketing communications must not mislead consumers. The Committee of Advertising Practice has recently provided guidance as to what this means for celebrity endorsements and the Rio Ferdinand and Wayne Rooney cases (A12-185515, A12-183247) are good examples that it must be made clear when celebrities are being paid to tweet, for example by using hashtags such as ‘#ad‘.
There has also been controversy recently over celebrities tweeting in response to the receipt of free gifts from companies and we may see the Advertising Standard Authority adjudicate on these issues over the coming months.
Conclusion
Companies therefore need to tread with caution when using celebrity images, particularly through social media. If the celebrity has consented and been paid, the marketing communications must be clear that they are marketing communications, otherwise the Advertising Standard Authority may come knocking. Where a celebrity has not given consent, companies must be careful not to give the opposite impression, otherwise a hefty legal bill may await.
But it is all good news for celebrities; the Rihanna case will provide useful ammunition for any celebrity wanting to exploit their brand on social media and more widely.
Ashley Hurst is a Partner and Iona Millership is a trainee in the Commercial Litigation team at Olswang LLP
