www.musicweek.com 11.10.13 Music Week 23 I n March 2012, Topshop started selling a t-shirt featuring a photo of Rihanna taken by an independent photographer. Topshop had a licence to use the copyright on the image but no permission from Rihanna. The superstar contended that the sale of such a t-shirt without her authorisation infringed her rights. Topshop did not agree. On March 30, 2012, Rihanna filed a lawsuit with the chancery division - a part of the high court of justice that deals with intellectual property claims - against Topshop’s parent company Arcadia Group and Topshop/Topman Limited. After four days of hearing, Mr Justice Birss ruled on July 31, 2013 that the mere sale of a t-shirt bearing an image of a famous person, by a trader, is not, without more, an act of passing off. However, the sale of this image, of this person (Rihanna) on the garment, by this shop, in these circumstances, is a different matter. Mr Justice Birss ruled that Topshop’s sale of this Rihanna t-shirt without her approval was an act of passing off. In a second judgment, on 26 September 2013, Mr Justice Birss ordered Topshop to pay the performer’s legal costs of almost £1 million, with an interim payment of £200,000 to be made within 14 days from the date of the judgment. In addition, he granted Rihanna an injunction to prevent any future similar wrong use of her image, imposing a permanent ban on Topshop selling these infringing t-shirts. How did the judge reach the decision to condemn Topshop for passing off? Passing off is an intellectual property right under English law. To understand passing off, we need to define what goodwill is: goodwill is a form of property constituting the market perception of the value and quality of a business and its products. This goodwill can be protected against interference or damage by passing off. Passing off is therefore a tort that may be used in preventing a trader from making misrepresentations that damage the goodwill of another trader. There are three conditions for passing off to be established, as the judge set out in his judgment: There must be some evidence that Rihanna has goodwill and a reputation amongst the relevant members of the public; Topshop’s conduct must be shown to make a misrepresentation - i.e. it must be likely to lead the public to believe that the t-shirts had been authorised by Rihanna therefore deceiving those members of the public into buying the product. There must be some evidence that the misrepresentation caused some damage to Rihanna’s goodwill. According to Mr Justice Birss, these three conditions were met and therefore he ruled that Topshop had infringed Rihanna’s intellectual property rights by passing off. What implications will the case have for retailers and designers? This is not the first time that celebrities and brands have clashed about differing views surrounding the use of image rights in a commercial context. In 2003, Catherine Zeta-Jones took legal action against French skincare company Caudalie for running an ad campaign saying that the actress was seen buying its products, which Ms Zeta-Jones refuted. The lawsuit was filed in Los Angeles in September 2003 and I believe that the parties reached an off-court settlement some time after. The key finding for retailers and brands here is that they rarely win in these lawsuits in which they are defendants. And, if a brand owner or retailer were to win an intellectual property infringement case, it could still feel like a loss because of the high costs of litigation associated with the lawsuit and the reputational damage that they will invariably suffer. Retailers and designers must run by their in- house or external legal teams, any “creative” project involving a “homage” to, or “quasi-endorsement” by another artist, creative person or brand. Legal checks and clearance processes need to be done before any product is launched in the market. What implications will the case have for music artists, their managers and labels? Music artists, especially those who have signed endorsement and merchandising deals with brands, need to emulate Rihanna by adopting a systematic approach against non-authorised brands using their image and personality rights. Represented by an apt and reactive lawyer - who needs to first check all the facts and that the legal requirements for violation of image rights have been met - artists should not hesitate to send a cease- and-desist letter to the infringing brand. In this letter, artists and their legal representatives could refer to passing off - if the infringement is happening in England and Wales - or other types of legal arguments - if the infringement is happening in other jurisdictions - that are customarily used in cases of violation of image and personality rights. The quicker an artist and their lawyer react to the infringement by sending a cease-and-desist letter, the higher the probability of success in court, should the infringing brand refuse to quickly discontinue the sale of the infringing products and/or provide some damages to the musical artist, whose image and reputation have been tarnished by that brand’s actions. VIEWPOINT RIHANNA VS TOPSHOP “Artists need to emulate Rihanna by adopting a systematic approach against non-authorised brands using their image” ANNABELLE GAUBERTI, CREFOVI UNDERSTANDING RIHANNA VS TOPSHOP LEGAL n BY ANNABELLE GAUBERTI ABOVE Finishing on top: Rihanna was granted an injunction to prevent Topshop selling t-shirts bearing a particular photo of her taken by an independent photographer Annabelle Gauberti, founding partner of law firm for creative industries Crefovi, explains the law surrounding ‘passing off’ and what Rihanna’s recent victory against Topshop means for artists
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www.musicweek.com 11.10.13 Music Week 23
In March 2012, Topshop startedselling a t-shirt featuring aphoto of Rihanna taken by an
independent photographer.Topshop had a licence to use the copyright on theimage but no permission from Rihanna.
The superstar contended that the sale of such at-shirt without her authorisation infringed herrights. Topshop did not agree.
On March 30, 2012, Rihanna filed a lawsuitwith the chancery division - a part of the high courtof justice that deals with intellectual property claims- against Topshop’s parent company Arcadia Groupand Topshop/Topman Limited.
After four days of hearing, Mr Justice Birss ruledon July 31, 2013 that the mere sale of a t-shirtbearing an image of a famous person, by a trader, isnot, without more, an act of passing off. However,the sale of this image, of this person (Rihanna) onthe garment, by this shop, in these circumstances, isa different matter. Mr Justice Birss ruled thatTopshop’s sale of this Rihanna t-shirt without herapproval was an act of passing off.
In a second judgment, on 26 September 2013,Mr Justice Birss ordered Topshop to pay theperformer’s legal costs of almost £1 million, withan interim payment of £200,000 to be madewithin 14 days from the date of the judgment. Inaddition, he granted Rihanna an injunction toprevent any future similar wrong use of her image,imposing a permanent ban on Topshop sellingthese infringing t-shirts.
How did the judge reach the decision to condemnTopshop for passing off? Passing off is an intellectual property right underEnglish law.
To understand passing off, we need to definewhat goodwill is: goodwill is a form of propertyconstituting the market perception of the value and
quality of a business and its products. This goodwillcan be protected against interference or damage bypassing off.
Passing off is therefore a tort that may be used inpreventing a trader from making misrepresentationsthat damage the goodwill of another trader.
There are three conditions for passing off to beestablished, as the judge set out in his judgment:
There must be some evidence that Rihanna hasgoodwill and a reputation amongst the relevantmembers of the public;
Topshop’s conduct must be shown to make amisrepresentation - i.e. it must be likely to lead thepublic to believe that the t-shirts had beenauthorised by Rihanna therefore deceiving thosemembers of the public into buying the product.
There must be some evidence that themisrepresentation caused some damage toRihanna’s goodwill.
According to Mr Justice Birss, these threeconditions were met and therefore he ruled thatTopshop had infringed Rihanna’s intellectualproperty rights by passing off.
What implications will the case have for retailersand designers? This is not the first time that celebrities and brandshave clashed about differing views surrounding theuse of image rights in a commercial context.
In 2003, Catherine Zeta-Jones took legalaction against French skincare company Caudalie for running an ad campaign saying thatthe actress was seen buying its products, whichMs Zeta-Jones refuted. The lawsuit was filed inLos Angeles in September 2003 and I believe thatthe parties reached an off-court settlement some
time after.The key finding for retailers and brands here is
that they rarely win in these lawsuits in which theyare defendants. And, if a brand owner or retailerwere to win an intellectual property infringementcase, it could still feel like a loss because of thehigh costs of litigation associated with the lawsuitand the reputational damage that they willinvariably suffer.
Retailers and designers must run by their in-house or external legal teams, any “creative” projectinvolving a “homage” to, or “quasi-endorsement” byanother artist, creative person or brand. Legalchecks and clearance processes need to be donebefore any product is launched in the market.
What implications will the case have for musicartists, their managers and labels? Music artists, especially those who have signedendorsement and merchandising deals with brands,need to emulate Rihanna by adopting a systematicapproach against non-authorised brands using theirimage and personality rights.
Represented by an apt and reactive lawyer - whoneeds to first check all the facts and that the legalrequirements for violation of image rights have beenmet - artists should not hesitate to send a cease-and-desist letter to the infringing brand. In thisletter, artists and their legal representatives couldrefer to passing off - if the infringement ishappening in England and Wales - or other typesof legal arguments - if the infringement ishappening in other jurisdictions - that arecustomarily used in cases of violation of image andpersonality rights.
The quicker an artist and their lawyer react tothe infringement by sending a cease-and-desistletter, the higher the probability of success incourt, should the infringing brand refuse to quicklydiscontinue the sale of the infringing productsand/or provide some damages to the musical artist,whose image and reputation have been tarnishedby that brand’s actions.
VIEWPOINT RIHANNA VS TOPSHOP
“Artists need to emulate Rihanna byadopting a systematic approach againstnon-authorised brands using their image”ANNABELLE GAUBERTI, CREFOVI
UNDERSTANDING RIHANNA VS TOPSHOP
LEGALn BY ANNABELLE GAUBERTI
ABOVEFinishing ontop: Rihannawas granted aninjunction topreventTopshop sellingt-shirts bearinga particularphoto of hertaken by anindependentphotographer
Annabelle Gauberti, founding partner of law firm for creative industries Crefovi, explains the lawsurrounding ‘passing off’ and what Rihanna’s recent victory against Topshop means for artists
23 Viewpoint_v4_News and Playlists 08/10/13 10:23 Page 1
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