10 September 2013

Passing off - Fenty v Topshop

Topshop, Oxford Circus   Source Wikipedia

























Mr. Justice Birss summarized the issues in Fenty and Others v Arcadia Group Brands Ltd (t/a Topshop) and Another  [2013] EWHC 2310 (Ch), [2013] WLR(D) 310 admirably in paragraph [1] of his judgment in that case:
"Topshop is a well known fashion retailer. Rihanna is a famous pop star. In March 2012 Topshop started selling a t-shirt with an image of Rihanna on it. The image was a photograph taken by an independent photographer. Topshop had a licence from the photographer but no licence from Rihanna. Rihanna contends that the sale of this t-shirt without her permission infringes her rights. Topshop does not agree. This action is the result."
In the next paragraph his lordship stressed that this case was not concerned with so called "image rights":
"Whatever may be the position elsewhere in the world, and how ever much various celebrities may wish there were, there is today in England no such thing as a free standing general right by a famous person (or anyone else) to control the reproduction of their image (Douglas v Hello [2007] UKHL 21). There is a developing law of privacy but no question of that arises in this case. The taking of the photograph is not suggested to have breached Rihanna's privacy. A celebrity may control the distribution of particular images in which they own the copyright but that right is specific to the particular photographs in question. Whether an image right can or should be developed is not what this case is concerned with."
This was an action  for passing off the probanda for which are as follows:
"[Rihanna] must show that she has a goodwill and reputation amongst relevant members of the public; the conduct complained of must be shown to make a misrepresentation, i.e. to be likely to deceive those members of the public into buying the product because they think it is authorised by her; and that misrepresentation must cause damage to her goodwill. If these elements are established, Rihanna has a good claim against Topshop. If they are not, Rihanna has no ground in law to object to the sale of her image on the t-shirt. That is what this case is about."
Relying on the decision of Mr Justice Laddie in Edmund Irvine Tidswell Ltd. v Talksport Ltd  [2002] EMLR 32, [2002] WLR 2355, [2002] 2 All ER 414, (2002) 25(6) IPD 25039, [2002] 1 WLR 2355, [2002] FSR 60, [2002] EWHC 367 (Ch), [2002] EWHC 367 the judge set out the applicable legal principles:
"The claimant must have a goodwill to protect. If goods are then sold in circumstances in which the purchasers understand there to be a representation that the goods are authorised by the claimant or are in that sense "official" merchandise, but in fact that representation is a false one, then as long as the false representation is operative, the second element of passing off will be satisfied. To complete the tort the activity has to be damaging, but in a case like this, if the first two elements are proved, it most likely will be."
The judge emphasized that a critical problem in cases of this kind is to distinguish between two different reasons why a person might be moved to buy the product in question. As he explained at paragraph [35]:
"If when they buy the t-shirt, they simply wish to buy an image of the pop star, then no misrepresentation has taken place. Merely recognising that the image is an image of the celebrity can never be sufficient to make the claimant's case. For passing off to succeed there must be a misrepresentation about trade origin."
The reason why this distinction is important is that selling a garment with a recognizable image of a famous person is not, in and of itself, passing off. To be passing off, a false belief engendered in the mind of the potential purchaser must play a part in his or her decision to buy the product.

Mr Justice Birss described Rihanna as "a world famous pop star" with "a cool, edgy image." He held that "she was and is regarded as a style icon by many people, predominantly young females aged between about 13 and 30." He explained that such people are interested in what they perceive to be Rihanna's views about style and fashion. Thus, if Rihanna is seen to wear or approve of an item of clothing, that is an endorsement of that item in the mind of those people which, in his lordship's view, was enough to succeed in an action for passing off.  Her goodwill was not only as a music artist but also in the world of fashion, as a style leader.  In reaching his decision the judge appears to have noted that Rihanna had actually designed clothes for River Island.

As the judge remarked at paragraph [47], misrepresentation was the real issue in this case.  There was evidence before the court that Topshop had marketed itself as a place where celebrities did their shopping. Once when Rihanna visited its Oxford Circus store, Topshop tweeted:
"Ridiculously excited! @Rihanna is in our Oxford Circus store as we tweet. Ah, wonder what she'll buy…"
The consequence was that prospective purchasers would look at the t-shirt on sale in Topshop and conclude that that garment had been authorized by her.  For those persons the idea that it is authorized will be part of what motivates them to buy the product. The judge was quite satisfied that many fans of Rihanna regarded her endorsement as important.
"She is their style icon. Many will buy a product because they think she has approved of it. Others will wish to buy it because of the value of the perceived authorisation itself. In both cases they will have been deceived."
As for damage, the judge concluded that the claimants would lose sales and suffer damage to their goodwill.

Thus, all three elements of an action for passing off were established and the claim succeeded.

I have to say that I was very surprised by the result. I first learned of the case before the trial was over from one of the counsel in the case at the IP Bar garden party and I was very sceptical as to the cause of action although, of course, I kept my opinions to myself at the time.  I instinctively sided with Topshop whose case was set out by Mr. Justice Birss at paragraph [47]:
"Topshop's case is simple. The item is a t-shirt bearing a large image of Rihanna on it. Customers buy it because they like the product and the image for their own qualities. No doubt in many cases they will like Rihanna. There was at the time a trend for image t-shirts. There is nothing on the t-shirt which represents it is an item of official Rihanna merchandise and customers do not think it is. It is a high quality fashion led garment, a "boyfriend style tank" (i.e. an oversized sleeveless t-shirt). The image has been printed using sublimation rather than screen printing, an expensive process which enhances its high quality nature. That is very different from standard pop star merchandise. Nothing on the swing tag or other labelling makes any suggestion it is a Rihanna authorised garment. There is no R slash logo. Topshop sell many garments like this. The public has no expectation that the garments are authorised by the person shown in the image."
I think a lot of judges would have agreed with that argument especially as there are authorities like Kojak (Tavener Rutledge v Trexapalm [1977] RPC 275), Abba (Lyngstad v Anabas  [1977] FSR 62) and Wombles (Wombles v Womble Skip Hire [1975] FSR 488) which have been distinguished but are still good law. However, the fact that I was surprised does not mean that I think the decision was wrong.  On the contrary, having read the trial judge's reasoning at least 6 times I now see where he was coming from and actually think I agree with him.

What this case goes to show is that every passing off claim turns on its own facts and the special facts of this case seem to be that Rihanna was no mere clothes horse with a voice but a fashion authority (indeed a designer among other things) and that Topshop had gone out of its way to show a connection with Rihanna. Yet another salutary warning that one should be very careful about what one tweets about.   I don't think that the facts upon which this case turned will occur very often. I also think that in most merchandising and endorsement cases the Topshop argument will succeed.

I will discuss this case among other things in my talk on "Branding - Trade Marks, Passing off, Domain Names, Geographical Indications" on 25 Sept 2013 which is now fully booked.  You can put your name down on our waiting list and I will post the slides and notes to Slideshare. I will probably also give the talk again in the North if someone wants to host me there.  In the meantime, if anyone wants to discuss this case or passing off in general give me a ring on 020 7404 5252 or fill in my contact form. You can also tweet me, write on my wall or send me a message through G+, Linkedin or Xing.

Robert Furneaux of Sipara writes:
"i was reading your review on the case but cant seem to post a comment! my problem with the case is around the finding of misrepresentation. i am no fashion afficiendo but my sense is that few fashion icons produce collections containing pretty basic t-shirts with photos of themselves on. indeed the River Island collection by Rhianna contains nothing like it. i just dont think TS customers would be confused in that way... hope there's an appeal!"

1 comment:

Jane Lambert said...

Thanks for your comment which I have posted to my article.

As I said, I think this case (if it is rightly decided) turns on very special facts.