Comment: Rihanna and Topshop battle shows observing image rights shouldn’t just be a US phenomenon

News that US R&B singer, Rihanna, has won a high court battle with Topshop over the unauthorised use of her photograph on a t-shirt highlights that even in the absence of an express “image right” in the UK, celebrities can still rely on other areas of law, such as “passing off”, to prevent retailers from profiting from the use of their image.

In this particular case, Rihanna’s lawyers argued that Topshop’s customers would believe that the t-shirt was endorsed by Rihanna, and that the fashion chain had therefore deceived fans and may have damaged the star’s reputation in the process. The fact that she has already agreed to license her name and image to a clothing line with another high street retailer – River Island – meant that there was a greater likelihood that consumers could be confused and think that she may also have endorsed the t-shirt at Topshop.

In summing up, Mr Justice Birss, said there is “no such thing as a general right by a famous person to control the reproduction of their image. The taking of the photograph is not suggested to have breached Rihanna’s privacy. The mere sale by a trader of a T-shirt bearing an image of a famous person is not an act of passing off. However, I find that Topshop’s sale of this T-shirt was an act ofpassing off”.  

Although there is likely to be a payout to Rihanna in recognition of this ruling, the amount is yet to be decided.

This case may result in further lobbying for the introduction of an “image right”  in the UK and indeed, Rihanna’s representatives have publically announced that they are seeking to establish a ‘free standing image right’ in order to prevent the unauthorised use of her image in this country.

The earning potential of celebrities from licensing agreements linked to various types of merchandise has risen exponentially in recent years. Rihanna has already licensed her name and image to a wide range of merchandise including make-up, perfume, calendars, soft drinks, jewellery, books and official T-shirts and is likely to be earning  millions of dollars a year from such agreements.

In view of this, image rights protection has become all the more important to celebrities around the world. The US and Germany, amongst other countries, have introduced a self standing “personality” or “image” right, and equivalent legal protection in the UK is now needed.

Using imagery of well-known individuals can generate a great deal of revenue for celebrities and retailers alike. However, implementing product lines including a celebrity’s image without the relevant permissions may cost a retailer dearly in terms of damaged reputation and legal proceedings.

Due diligence is at the heart of this – by recognising the potential risks in the unauthorised use of an image of a celebrity at the planning stage of any product development, retailers can seek to avoid any potential legal proceedings.

In a fast-moving consumer-led market, it is not surprising that retailers are keen to be associated with well-known individuals in order to attract consumers. However, as this case has demonstrated, they are not always free to do so.

• Marisa Broughton is a partner trade mark attorney at Withers & Rogers