The
judge who hit the headlines when he declared
Apple’s designs cooler than Samsung’s
has now
ruled on a case between pop star Rihanna (whom he describes
as having a "cool, edgy image") and the fashion-forward
quasi-disposable clothing chain Topshop.
Although Birss’s ruling was very fact-specific,
it offers some hints as to the way the courts may address
disputes between famous individuals and those who want to make
money from their celebrity.
Birss (right) made it clear in the decision that there was
no such thing as a general right by a famous person to control
the reproduction of their image, following the ruling of the
House of Lords in a high-profile
dispute between Michael Douglas and Hello!
magazine. "The mere sale by a trader of a T-shirt bearing
an image of a famous person is not an act of passing off," the
judge said.
But he ruled that in this case, Topshop’s sale
of the T-Shirt, emblazoned with a photo of the singer taken
without her permission, amounted to passing off.
That was because
Birss was satisfied that Rihanna (or her witnesses, since
Rihanna didn’t appear before the judge in person)
had demonstrated the necessary conditions to win a case of
passing off: that she has a goodwill and reputation among
relevant members of the public; there was misrepresentation;
and the misrepresentation damaged her goodwill.
Rihanna’s case was greatly helped by her own
commercialising efforts: the singer has promoted products for
Gucci and Armani and agreed to design clothes for highstreet
chain River Island. So perhaps there is an ironic lesson for
other celebrities. The lack of image rights in English law
means that Garbo-esque stars who want to be alone still have
little opportunity to control the way their images are used.
Those who choose to exploit ruthlessly their own brand,
however, have a greater chance of preventing others from doing
the same.