Court of Appeal upholds Birss J in Rihanna's Case
In Fenty and Others v Arcadia Group Brands Ltd and another  EWHC 2310 (Ch),  WLR(D) 310 Mr Justice Birss gave judgment to Robyn Rihanna Fenty (better known as Rihanna) and her corporate licensing companies against Top Shop for selling a t-shirt that reproduced a photo of the singer. The claim was brought not for infringement of copyright since the owner of the copyright in the photograph had licensed the reproduction of his work but for passing off. Rihanna and her companies had claimed that the t-shirt misrepresented authorization or approval of the manufacture and distribution of the garments and that such misrepresentation damaged her commercial activities. I wrote about the case in Passing off - Fenty v Topshop 10 Sept 2013 and readers are referred to that note for an appreciation of the judgment.
A lot of people were surprised by Mr Justice Birss's decision including me though I was eventually won over by his Lordship's reasoning after re-reading the case several times. However, others were not. Robert Furneaux of Sipara wrote:
"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!"Well there has been an appeal which came on before Lord Justice Richards, Kitchin and Underhill in Fenty and others v Arcadia Group Brands Ltd and another  EWCA Civ 3 (22 Jan 2015) and they upheld the judgment of the judge below.
Top Shop appealed on four grounds which are summarized in paragraphs  to  of Lord Justice Kitchin's judgment:
"25 First, the judge wrongly proceeded on the basis that there was no difference in law between an endorsement case and a merchandising case. Character merchandising generally serves to provide the products concerned with features of shape or get-up which become part of the make-up of the products themselves. It is not the province of the common law to create or confer exclusive rights in particular categories of product.His Lordship, who delivered the lead judgment, considered those arguments one by one.
26. Second, the judge properly and correctly acknowledged that the sale of a garment bearing a recognisable image of a famous person does not, in and of itself, amount to passing off. However, the judge fell into error thereafter in failing to proceed on the basis that the law of passing off treats the use on garments of such images as origin neutral. So, Mr Hobbs continues, the claim for passing off in the present case should only have been entertained upon the basis that the market for garments carrying images of Rihanna was, at least in principle, a market which others were lawfully entitled to enter. Further, the injunction granted by the judge is founded upon the proposition that Topshop is answerable for a misrepresentation by omission, that is to say for failing clearly to inform prospective purchasers that the t-shirts were not approved or authorised by Rihanna. Once it is accepted, as it must be, that selling a garment with a recognisable image of a famous person does not, in and of itself, amount to passing off, any claim for misrepresentation by omission should have evaporated.
27. Third, the judge ought to have recognised and accepted that the absence of an image right is a matter of law and not a matter of fact. Further, he ought to have assessed the claim having regard to the perceptions of those persons for whom the presence of the image of Rihanna on the t-shirt was origin neutral, and not the perceptions of those persons who were liable to regard the presence of the image as an indication of authorisation. Indeed, had the judge assessed the issue from the correct perspective he would have been bound to find that the claim as pleaded and pursued disclosed no sustainable basis for a finding of liability.
28. Fourth, the judge fell into further error in finding Topshop liable for misrepresentation in the way that he did because Rihanna had never properly alleged or developed a case that the particular image in issue was in any way distinctive as a result of any marketing or promotional activity which she had ever carried out; that there was no admissible evidence that this image was in any way distinctive; and that the evidence upon which the judge relied had no probative value. In this connection Topshop also seeks permission to appeal against the decision and consequential order of the judge at a pre-trial review hearing which took place on 5 July 2013 concerning objections to the admissibility of the evidence contained in six of the witness statements served on behalf of Rihanna, including that of Mrs Perez, a member of Rihanna's management team, who gave the critical evidence upon which the judge relied."
As to the first ground he said at paragraphs  and :
"45. In the present case I am entirely satisfied that the judge did have proper regard to the distinction between endorsement and general character merchandising. He began his analysis of the law by reminding himself that to make good any claim in passing off it must be established that the claimant has a goodwill, that the defendant has committed a misrepresentation and that the claimant has, as a result, suffered damage. He then referred to the decision of Laddie J in Irvine and acknowledged that it is not a necessary feature of merchandising that members of the public will think that the products in issue are in any sense endorsed by the celebrity or creator of the character in issue. He continued that it must be shown that the claimant has a relevant goodwill and that the impugned activity involves a false representation that there is a connection between the claimant and the goods in issue of a relevant kind, that is to say that the claimant is materially responsible for their quality. Finally, of course, the belief which this false representation engenders in the minds of the purchasers must play a part in their decision to buy.In the light of the foregoing the learned Lord Justice dealt with the second ground shortly at paragraph :
46. With all these principles in mind the judge then approached the facts of present case and made his findings. He considered that the use of this image would, in all the circumstances of the case, indicate that the t-shirt had been authorised and approved by Rihanna. Many of her fans regard her endorsement as important for she is their style icon, and they would buy the t-shirt thinking that she had approved and authorised it. In short, the judge found that the sale of this t-shirt bearing this image amounted to a representation that Rihanna had endorsed it. In my judgment the reasoning of the judge discloses no error of principle of the kind for which Mr Hobbs contends."
"Rihanna has always accepted that she has no right in English law to prevent any use of her image. Further and specifically, she acknowledges that the sale of garments bearing recognisable images of her does not, in and of itself, amount to passing off. However, as Mr Martin Howe QC, who appears with Mr Andrew Norris on her behalf, submits, it does not follow that the image itself must be excluded from the matrix of facts which are said to give rise to an overall representation that she has endorsed the goods to which it has been applied. I am entirely satisfied that the proposition that a famous personality has no right to control the use of her image in general does not lead inexorably to the conclusion that the use of a particular image cannot give rise to the mistaken belief by consumers that the goods to which it is applied have been authorised. Here the judge came to the conclusion that the use of this particular image on fashion t-shirts sold by Topshop amounted to a misrepresentation by Topshop that the garments had been approved or authorised by Rihanna. There is no inconsistency between this finding and the proposition that Rihanna has no absolute right to prevent traders selling garments carrying her image. Nor is the judge's approach undermined by the form of injunction which he ultimately granted. It simply recognises that the vice in the impugned activities lay not in the use of Rihanna's image but in using it in such a way as to cause a misrepresentation. As Mr Howe submits and again I accept, Topshop is in effect contending not for the absence of an image right, but rather for a positive right to market goods bearing an image even if the use of that image in particular circumstances to particular customers gives rise to a misrepresentation. To accede to that submission would be to sanction a trade which results in the deception of the public."Lord Justice Kitchin considered that the third ground was misconceived. It would in his Lordship's view require the court both "to shut its eyes to reality and to put on one side well settled principles". He explained at paragraph :
"In any case of passing off the claimant must establish that he has a goodwill in his business under the name or other feature he is seeking to protect, and that the use of that name or other feature by another trader amounts to a misrepresentation which is calculated to cause deception and so cause damage to his goodwill and his business. The claimant must therefore establish the likelihood of confusion of a substantial number of consumers but not necessarily all of them. Here the t-shirts in issue were being sold through Topshop's stores. It was therefore plainly relevant to consider potential customers who were both fans of Rihanna and prepared to shop in a Topshop store. So also the judge was bound to consider and take into account the activities of Topshop in publicising and promoting its connection with Rihanna over a period of time."Turning to the final ground, Lord Justice Kitchin saw no merit in the first limb:
"The statement of claim made clear that Rihanna contended that the image was unauthorised and had been taken whilst she was filming for one of her singles in Northern Ireland. This theme was developed in the statements of those witnesses who gave evidence on her behalf and then, in her opening written argument at trial, there appeared a full exposition of her contentions. She explained that that the image shows her dressed for her video for the single We Found Love from the Talk That Talk album; that the video shoot received lengthy press coverage, partly as a result of the complaints by the farmer upon whose land it was made; and that the image is recognisably her in that music video context."However, there was more substance in the second. Topshop had objected to the evidence of Mrs Perez on the ground that it amounted to expert evidence for which no permission had been given. Lord Justice Kitchin agreed that Top Shop was entitled to complain that the trial judge had focused upon an expression of opinion by that witness having earlier ruled that it was argument and not something that needed to be cross-examined. However, despite the legitimacy of Topshop's complaint, there was plenty of other evidence upon which Mr Justice Birss coud rely. It followed that the judge was entitled to find that the sale by Topshop of the t-shirt amounted to passing off and that the main appeal should be dismissed and permission to appeal against the judgment of 5 July 2013 refused.
Lord Justice Underhill agreed that the appeal should be dismissed, and that permission to appeal against Birss J's decision of 5 July 2014 should be refused but nevertheless considered that the appeal came close to the border line. He explained at paragraph :
"The judge's conclusion that some members of the relevant public would think that the t-shirt was endorsed by Rihanna is based essentially on two things - her past public association with Topshop (as described by Kitchin LJ at paras. 17-18) and the particular features of the image itself, which is apparently posed and shows her with the very distinctive hairstyle adopted in the publicity for Talk That Talk. I do not believe that either by itself would suffice; in particular, Rihanna's association with Topshop does not seem to me to have been such as to weigh very heavily in the balance. But the judge considered the question very carefully, taking due account of the factors going the other way, and in my view he was entitled to find that the two features in combination were capable of giving rise to the necessary representation."In other words, as I explained in my previous case note, this case turned on the fact "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." Lord Justice Richards agreed with both Lord Justice Kitchin and Lord Justice Underhill.
Lord Justice Kitchin went out of his way to emphasize that there is in English law no "image right" or "character right" which allows a celebrity to control the use of his or her name or image. If a celebrity wishes to control the use of his or her image he or she must rely upon some other cause of action such as breach of contract, breach of confidence, infringement of copyright or, as in this case, passing off. However, there is one jurisdiction in the British Isles where images rights do exist as I explained in my article on Guernsey's Image Rights Legislation 2 Jan 2013 and as Kate Storey amplified in her guest post on Guernsey's image rights 8 Jan 2013.
I should be amazed if this appeal is not discussed in the seminar on the Law of luxury goods series: intellectual property – how to protect, manage & monetize the know-how & intangible capital of luxury & fashion brands that IALCI (the International Association of Business Lawyers) will hold at the Pullman St Pancras Hotel on 10 Feb 2015. I shall be giving a presentation on the enforcement of intellectual property rights and my friend Alexander Rozycki will discuss John Kaldor Fabricmaker UK Ltd v Lee Ann Fashions Ltd  EWHC 3779 (IPEC) (21 Nov 2014) which I discussed in Is this a copy? John Kaldor Fabricmaker UK Ltd v Lee Ann Fashions Ltd 11 Dec 2014. If you want to attend that seminar you can book through the form on that website. If you would like to discuss this article or the law of passing off in general, call me in 020 7404 5252 during normal office hours or send me a message through my contact form.