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Who needs image rights when you have passing off?



Emma Barraclough


That many people believe the urban legend that has an English judge enquire in court: “Who are the Beatles?” attests to the view that judges operate far outside mainstream culture. Not so Mr Justice Colin Birss

Colin BirssThe 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.

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Article Comments

With respect, I think the Rhianna v Topshop decision demonstrates exactly why passing off is not sufficient to protect valuable image rights. Maybe the Image Rights (Bailiwick of Guernsey) Ordinance 2012 provides the start of the answer?: http://icondia.com/wp-content/uploads/2013/08/Rihanna-v-Topshop.pdf

Tania Shires Aug 22, 2013

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