Fenty & Ors v Arcadia Group Brands Ltd & Anor

English law recognises no freestanding image or character right by which a celebrity may control the use of a name or likeness. A celebrity may nevertheless succeed in passing off where there is relevant goodwill and the defendant’s conduct conveys a material false representation of authorisation or endorsement which causes, or is likely to cause, damage.

The appearance of a celebrity’s image on merchandise is not inherently an indication of origin or authorisation. The court must assess the particular image and the whole commercial context. It is sufficient that a substantial number of relevant consumers are likely to be deceived, even if many consumers give authorisation no thought. In a merchandising case, the suggested connection must influence the purchasing decision and indicate that the claimant has accepted responsibility for, or approved, the goods.

The claimants included the recording artist Rihanna and companies responsible for her licensing activities. The defendants, collectively Topshop, sold a fashion t-shirt bearing a recognisable photograph of Rihanna. The photographer had licensed use of the photograph, but Rihanna had not authorised the garment.

Birss J held that Rihanna possessed substantial goodwill in fashion and that, in the particular circumstances, a substantial portion of prospective purchasers would believe that she had authorised the t-shirt. Those circumstances included the nature of the image, its apparent connection with a recent album campaign, and Topshop’s previous publicity concerning Rihanna. The judge granted an injunction: [2013] EWHC 2310 (Ch).

Topshop appealed, contending principally that the judge had confused merchandising with endorsement, effectively recognised an image right, approached consumer perception incorrectly, and relied upon inadmissible opinion evidence. It also sought permission to appeal against an earlier evidential ruling reported as [2013] EWHC 1945 (Ch); [2013] FSR 37.

1. Appeal dismissed; permission to appeal against the pre-trial ruling refused. Kitchin LJ delivered the leading judgment. Underhill and Richards LJJ agreed, although Underhill LJ regarded the case as close to the borderline.

2. English law contains no freestanding image or character right. A celebrity cannot claim a monopoly over the use of a name or likeness. Protection must be found in an established cause of action, such as passing off. The court endorsed the false-endorsement analysis in Irvine v Talksport Ltd [2002] EWHC 367 (Ch).

3. A passing-off claimant must prove goodwill, a misrepresentation leading or likely to lead the public to believe that the defendant’s goods or services are those of, or materially connected with, the claimant, and resulting or likely damage. In a false-endorsement case, the claimant must possess significant goodwill and show that a not insignificant section of the relevant market would understand the defendant’s conduct as communicating endorsement, recommendation or approval.

4. Merchandising does not necessarily imply endorsement. In a merchandising case, the claimant must overcome two related hurdles. The application of the name or image must communicate a falsehood about the goods’ source or authorisation, and that falsehood must be material to the purchasing decision. The suggested connection must be of a kind under which consumers would understand the claimant to have approved the goods or accepted responsibility for their quality.

5. The absence of an image right did not require the particular image to be excluded from the factual assessment. Nor did it give a trader a positive right to use an image where, in its particular context, that use deceived consumers. The judge correctly considered the whole matrix, including the image’s appearance as a publicity photograph, its association with a recent album, Topshop’s prior publicity linking itself with Rihanna, and factors pointing away from authorisation.

6. The relevant question was whether a substantial number of consumers were likely to be confused, not whether every consumer would be. Potential customers who were Rihanna fans and prepared to shop at Topshop formed a relevant part of the public. The judge was entitled to find that the image and the parties’ public association, taken together, represented that Rihanna had authorised the garment and materially influenced purchasing decisions.

7. The judge had inappropriately referred to a witness’s opinion about likely consumer perception after treating it as argument not requiring cross-examination. That reference did not affect the result. The image, the album materials and the surrounding evidence independently entitled him to find that fans would regard it as an authorised publicity image. It was therefore unnecessary to decide more generally when evidence about trade practice or consumer perception constitutes expert evidence.

1. Court of Appeal (Civil Division): By [2015] EWCA Civ 3, dismissed Topshop’s appeal from the judgment on passing off and refused permission to appeal against the pre-trial evidential ruling.
2. High Court, Chancery Division: By [2013] EWHC 2310 (Ch), Birss J held that the sale of the t-shirt amounted to passing off and granted an injunction restricting further dealings unless prospective purchasers were clearly informed that Rihanna had not approved or authorised it.
3. High Court, pre-trial review: By [2013] EWHC 1945 (Ch); [2013] FSR 37, Birss J determined objections to witness evidence, excluding one statement but otherwise rejecting the admissibility objections addressed in that ruling.