K&L Gates' Savannah Hardingham and Simon Casinader delve into Rihanna, Topshop, the risk of an unauthorised celebrity endorsement and what it means for Australian brands.
Previously, we have advised readers on the importance of ensuring that you own copyright in, or have appropriate licenses for, any images or prints that you utilise on garments, as failure to do so can expose you to the risk of being sued for copyright infringement.
In a recent decision in a long running court battle between pop icon Rihanna and retail giant Topshop (Rihanna’s Case), the UK Court of Appeal (Court of Appeal) has delivered a timely reminder that, in addition to having the legal right to use images themselves, designers and manufacturers also need to pay careful attention to what, or who, is portrayed in the images.
In Rihanna’s Case, the Court of Appeal confirmed the earlier High Court decision that Topshop’s use of an image of the Grammy award winning artist, Rihanna, on its t-shirts had amounted to the tort of passing off.
Rihanna vs Topshop
The dispute between Rihanna and popular fashion retailer Topshop arose in March 2012 when Topshop released a t-shirt with an image of Rihanna on it. Topshop had appropriately licensed the use of the image from the copyright owner (the photographer) but had no permission from the singer herself to use her image.
Rihanna claimed that a significant section of the public would think that the t-shirts were endorsed by her, when, in fact, the t-shirt was not connected to the singer at all, which amounted to passing off.
The court held in Rihanna’s favour, but was quick to say that the mere sale by a trader of a t-shirt bearing an image of a famous person is not, without more, an act of passing off. This was despite the fact that UK law, like Australia, does not recognise the ‘right of publicity’ which in the United States allows celebrities to control the commercial use of their names, likenesses and other recognisable aspects of their personas.
The particular facts that gave rise to the finding of passing off in this case were that:
Rihanna is regarded by many as a ‘style icon’ and many people, in particular young women, would believe that Rihanna has endorsed clothing that she appears on Topshop had previously sought to build a connection between Rihanna and its store through competitions and publicising occasions when Rihanna had shopped in its stores the striking photograph had been taken during an authorised music video shoot and the relationship between that image and the official images used to promote Rihanna’s music would be noticed by her fans.
What About in Australia?
As happened in the United Kingdom in Rihanna’s Case, while Australia does not recognise a U.S. style ‘right to publicity’, it is possible that Australian courts could also find that the use of a celebrity’s image, without their permission, amounts to passing off (or a breach of the Australian Consumer Law). In fact, personalities such as Kieren Perkins and Olivia Newton-John have previously been successful in these types of actions in Australia.
Key Takeaways
While the mere use of an image of a celebrity on a garment, without the celebrity’s consent, is not going to expose designers, manufacturers or retailers to the risk of a passing off action in Australia, Rihanna’s Case shows that, even without a recognised right to publicity, care needs to be taken when using such images on garments.
Labels should be savvy and make sure that, if they use a celebrity’s image or likenesses on their garments, that use cannot be interpreted by consumers as indicating that the celebrity in any way approves or endorses the garments or the label itself. This will depend on the context of the particular use and various factors can come into play, so assessing the risk can be a bit of a minefield. If in doubt, fashion labels should seek legal advice at the outset which, as Topshop has learned, can save a lot of time and money later.