Date: 31 July 2013
Earlier this week the English High Court handed down judgment in a passing off case brought by Rihanna against a major clothing retailer, Topshop.
The case concerned the sale of unauthorised tank tops bearing an image of Rihanna taken from her 2011 single, "We Found Love". Neither the shirts nor the tags suggested the tops were official merchandise, but equally there was no indication they were not. The supplier of the shirts (who notably indemnified Topshop in the action) had a copyright license from the supplier of the artwork, but not from Rihanna. Nevertheless, no copyright isses arose in the case, which was solely concerned with passing off.
The judge concluded that Topshop was indeed passing off the shirts as official merchandise. Rihanna's fans would recognise the image from the video shoot for her single and associate it with publicity and marketing for her album. Rihanna was a "style icon" and Topshop was a leading fashion retailer which had publicly associated itself in the past with various celebrities, including Rihanna, in promotions and competitions. To Rihanna's fans, her endorsement of a fashion garment was important, and on the facts the judge was satisfied that some customers would be deceived into buying the shirts because they thought they were authorised, even though there was no evidence of confusion.
This case is important because it shows how passing off can enhance, or even stand in for, a copyright claim to protect official licensees and merchandising revenue streams. Passing off is highly fact dependent, but where an image from a film or publicity shoot appears on a garment there may well be an expectation that it is authorised promotional merchandise. Where the facts establish that, there may be no need for evidence of actual confusion for the claim to prevail.
This decision of course concerns the UK, but the findings may well assist in similar unfair competition actions brought elsewhere in the EU, such as in Germany, where our other major offices are based.
In case you wish to read it, you can access a copy here.