Rihanna forces Topshop to take a bow in "why is my face on your t-shirt" litigation before the UK High Court of Justice

Posted by Charles Colman

In the relatively high-profile case of Robyn Rihanna Fenty v. Arcadia Group Brands (T/A Topshop), [2013] EWHC 2310 (Ch), Rihanna has prevailed against Topshop before a division of the UK's High Court of Justice.  The court's decision, embedded below, revisits issues that LAW OF FASHION has explored before (in particular, here, here, and here) -- albeit in the context of English rather than U.S. law.

My client, professorial, and publishing obligations make it impossible for me to analyze the decision at length just now.  (For other people's take on the case, look here, herehere, and any number of other places.)  But on a cursory half-skimming of the decision, my initial reaction is that the Court's ruling rests in surprisingly large part on the perceived knowledge of Rihanna fans -- more precisely, on those fans' awareness that the particular photo reproduced on Topshop's t-shirts had previously been used as part of a specific Rihanna marketing campaign.  Check out this passage, authored by The Hon. Mr Justice Birss:

"Although I accept that a good number of purchasers will buy the t-shirt without giving the question of authorisation any thought at all, in my judgment a substantial portion of those considering the product will be induced to think it is a garment authorised by the artist. The persons who do this will be the Rihanna fans. They will recognise or think they recognise the particular image of Rihanna, not simply as a picture of the artist, but as a particular picture of her associated with a particular context, the recent Talk That Talk album. For those persons the idea that it is authorised will be part of what motivates them to buy the product. I am quite satisfied that many fans of Rihanna regard her endorsement as important. She is their style icon. Many will buy a product because they think she has approved of it. Others will wish to buy it because of the value of the perceived authorisation itself. In both cases they will have been deceived...."

This strikes me as unusual (though not necessarily incorrect), because so many trademark-law rulings hinging on whether consumer are "likely to be confused" about third-party affiliations, endorsements and the like are premised on the idea that consumers have very little knowledge at all.  (Indeed, readers of certain judicial decisions might be led to believe that the "consumers" in question wandered out of a cave for the first time in their lives and immediately confronted the purchasing decision at the core of much trademark litigation.)  Here, the consumers in question are deemed by the judge to have enough knowledge to recognize the larger context of the photo in question, but not enough knowledge to know that Rihanna and Topshop have no endorsement relationship.  (I haven't read enough of Justice Birss' decision to find out if he addresses the -- perhaps far more numerous -- consumers who are not dedicated Rihanna fans and/or don't care either way about the artist's "authorisation," but nevertheless buy the shirt.)

How Judge Birss can be so certain of his conclusion about Rihanna fans' state of mind, it's tough to say.  But his confidence in "what consumers understand" reminds me of a certain Second Circuit decision in a certain appeal over alleged trademark rights in red-soled shoes, in which three appellate judges were quite sure -- notwithstanding the absence of any specific evidence in the record -- that consumers would associate red soles with a particular company only where the "upper" portion of the shoe was made in a contrasting color.  (Better to attempt to read minds, I guess, than to resolve difficult and controversial issues like the application of the "aesthetic functionality" doctrine?  Primer here, FYI.)

In any event, as someone deeply concerned about the rapid (and unwarranted) expansion of trademark "rights," I greatly appreciated this passage in the Rihanna opinion:

"I reject the claimants’ suggestion that Topshop’s customers think that any garment bearing an image of a famous person and on sale in Topshop will be authorised by that person...."

But the world continues to await clear guidance on when, exactly, it's safe to use images of celebrities on apparel without their consent, and when it isn't.  In the meantime, you'll have to consult attorneys like me...

 

Robyn Rihanna Fenty v. Arcadia Group Brands (T/A Topshop)

[2013] EWHC 2310 (Ch)





[Like everything on LAW OF FASHION, this post is for entertainment and informational purposes only, and does not constitute legal advice or create an attorney-client relationship among any individuals or entities. Any views expressed in this post or at the linked web pages are those of the relevant writer(s) on a particular date, and should not necessarily be attributed to Charles Colman; Charles Colman Law, PLLC; New York University; The Center for the Study of Fashion, Law, or Society; or any subdivisions, agents, representatives, or clients thereof. Neither the writer of this post nor LAW OF FASHION (or any person or entity associated with either) can or will warrant the thoroughness or accuracy of the content here or at the cited sources.]