Welcome to #IPThursday !! The following thread deals with the issue of so called “Image Rights”. Specifically, can you prevent someone from using a photo of you, even if they have acquired the rights to use it legally? 
We all know the star of our story today, Rihanna @rihanna (born Robyn Fenty in 1988 in Barbados). She is one of the most famous recording artists in the world. By 2012 she had sold around 30 million albums, 120 million singles and won over 200 awards, including 5 Grammies
In addition to her music, Rihanna is famous for her fashion sense, which includes various clothing and make up lines. She’s seen as a pioneer in both fields and her empire is valued at over $600million (this will be important later on in this story).
Rihanna also runs very large merchandising and endorsement business and over the years she has had endorsement agreements with Puma, Nike, Gillette, Clinique and LG Mobile.
Moreover, she does partnerships with many retail brands where she endorses and promotes their clothing. She promoted H&M’s Fashion Against Aids clothing collection in January 2008, which involved her designing her own t-shirt, which was publicised as part of that exercise.
So, how did Riri end up embroiled in a bitter legal dispute. Well meet the second party to our story, British Fashion Retailer Top Shop.
Top Shop was founded in 1964 as an extension of a retailer known as Peter Robinson. It is a high end fashion shop for young women, selling clothes, shoes, accessories and make up.
Topshop initially struggled to maintain its identity as a high end fashion brand. It was only through the advent of the internet in the 90s that they truly made their mark as a leading fashion brand. Now they have shops world over, including SA.
They are also a sponsor of the London Fashion Week, and more recently they signed a deal to launch active fashion wear with Beyonce. This joint venture is presently known as Ivy Park.
In 2011, a photographer took a picture of Rihanna in a video shoot for a single on the album Talk That Talk. Rihanna is looking directly at the camera with her hair tied above her head with a headscarf. Its been described as a striking image and she has used similar images since.
The photographer was an independent third party who then licensed the photograph to Topshop. Remember according to Copyright law, the person who takes the photograph is the owner of the Intellectual Property. Not the subject of the photo.
If you go to a photographer and ask him to take a picture of you, as a general rule, the photographer owns the IP in the photo. Even if you own the physical copy. There are some exceptions to this rule at times.
In 2012, Topshop took the photo and started selling sleeveless t-shirts with the photo of Rihanna printed on it. It was sold for £22. It was initially described as the “Rihanna Tank”, however, since the name Rihanna itself is a registered trade mark they decided to remove it.
Rihanna was not happy and she took Top Shop to court in the UK. She was of the view that the presence of her image on the shirt in this case amounted to a misrepresentation which was likely to mislead potential customers. Basically, she felt that this was passing off by TopShop.
She felt that the use of her face would give the impression that she had endorsed the t-shirts, or that she had some sort of relationship with Topshop.
Topshop argued that there was nothing in the T-Shirts that suggested that Rihanna had approved or endorsed them. Most of Rihanna approved merchandise and clothing feature the “R” sign or the trade mark “Rihanna”. Like this 👇🏾
They further argued that they had acquired the rights to use the photo legally from the owner of the IP. So there was no legal basis to stop them from using the photo. On the face of it this is true....
What made this case difficult for Rihanna is that in England, and most Anglo countries, “image rights” actually don’t exist. There is no law that allows a celebrity to control the use of his or her name or image once it’s out in the public.
So they have to rely on other legal remedies. Such as breach of contract such as Non Disclosures clauses etc, trademark or copyright infringement, defamation of character or, as in this case, Passing Off.
In order for Rihanna to prove passing off, THREE elements had to be met:
1. Misrepresentation that your goods are associated with another person (the unlawful act)
2. A substantial number of people were likely to be deceived into believing she authorized the shirts.
3. Damages
1. Misrepresentation that your goods are associated with another person (the unlawful act)
2. A substantial number of people were likely to be deceived into believing she authorized the shirts.
3. Damages
Most celebrities would likely fail on proving the last 2 requirements. And this is why....Believe it or not, it is hard to prove how the use of your image on clothing passes off the other person’s goods as your own or approved by you.
The reason is because well known people have thousands of images out there already. Just because one is used on clothing, in a magazine or elsewhere does not necessarily mean that they are endorsing each use.
What did help Rihanna is that she has a fashion line of her own, she endorses a lot of retail outlets and her fans know this. Topshop would be in direct competition with her. The judge agreed that Topshop was passing off their t-shirts as Rihanna clothing or approved by Rihanna.
The judge went on to say that Rihanna has millions of fans worldwide. Many of her fans regard her endorsement as important for she is their style icon, and they would buy the t-shirt thinking that their icon had authorised it.
The judge also said that this misrepresentation caused Rihanna harm as Topshop was now competing with her other authorised clothes. All the requirements for passing off were met, 3 out of 3.
Topshop didn’t agree with the judgement and so they decided to appeal. They felt the judge had gotten it wrong. Rihanna herself had admitted that she cannot prevent anyone else from using her photo, especially since she didn’t own the IP to it.
The Appeal judges also dismissed Topshop’s case and awarded Rihanna £3,3 million in damages. They said that the relationship between this image, the images for the album and the video would be noticed by her fans. Especially if they know that she has a clothing line of her own.
This case was very important for celebrities. This is because “image rights” aren’t actually a thing in most countries and their images (often they don’t own the copyright) are used by anyone. If Rihanna did not have a clothing line, it would have gone very differently.
Think of it this way, if Ludacris owned a chain of barbershops, he could sue 90% of the Barbers on the African continent, from Cape to Harare to Lagos to Cairo for passing off their shops as affiliated with his. Most barbershops have a picture of Ludacris on their wall somewhere.
Luckily for our barbers, I don’t think he does. Our barbers just run the risk of the photographers or companies that own the copyright in the photos coming after them. The odds of this are slim.
Big Lesson: This was a landmark case, it proved that celebrities can and will come after people who use their images to draw an association with their goods. Best to err on the side of caution! ❤️💛💚
