“The Only Girl in the World”: the Rihanna judgment and the protection of ‘image rights’ in English law

Despite the evident commercial value in the ‘image’ of modern sports personalities (indeed there are annual awards held by the BBC to identify the most noteworthy) there is no specific right to protect one’s image under English law. Relying on a cocktail of different causes of action and legal rights, English law offers some protections to a person whose ‘image’ is exploited for commercial reasons. The ingredients include: copyright and trademarks, the torts of defamation, breach of confidence, passing-off as well potentially through statutory rules ensuring data protection.

In contrast, other jurisdictions such as the United States, Canada, France, Spain and Italy recognise ‘personality rights’ or a ‘right to broadcast’ one’s image, and thereby encourage the explicit commercialisation of these rights (interestingly, EU trademark legislation has remained neutral on the subject by leaving it to national law to come to a view, see article 53(2) of the Trademark Regulation (Reg. 207/2009)). One need only think about the deals struck by Real Madrid FC with their Galácticos – famously causing Cristiano Ronaldo “sadness” in 2013 - or the ongoing trial into allegations of tax fraud concerning Lionel Messi’s exploitation of his image rights through various company structures in Belize and Uruguay.

An interesting decision at the end of July 2013 illustrates the very different, albeit practical, approach taken by English Courts and the care with which both sportspersons and companies selling merchandise under their image must proceed when structuring their arrangements.

The Rihanna decision

In Robyn Rihanna Fenty and ors v Arcadia Group Brands Limited and Top Shop/Top Man Limited [2013] EWHC 2130 (Ch), the famous pop star brought a passing off claim against a high-street retailer in relation to T-shirts which carried a photograph of her on their front. Although the shop had obtained a licence from the photographer who had taken the picture in question, it had not obtained a licence from Rihanna. However, the court noted that Top Shop had previously made a “considerable effort to emphasise connections in the public mind between the store and famous stylish people” (at [56]).  In particular, in 2010 the retailer had organised a shopping competition which offered customers an appointment with Rihanna at its flagship store, and it had referred to the artist in its advertising material on a number of occasions. On a particular day in February 2012, the shop’s Twitter account had tried to emphasise the connection by flagging to its followers that the artist had visited the flagship store (readers may be interested to read Kerenza Davis’ recent post about the subtle lines between appropriate advertising, endorsements and the use of social media here). Evidently, one can imagine a number of ways in which associations between sportspersons and products might come about (with particularly interesting variations including the alleged use of brand names as phone passwords).

As Mr Justice Birss insisted, the case did not concern “image rights” (at [2]) but was instead focused around the elements required to prove passing off, i.e. that the alleged victim (i) has a goodwill and reputation among relevant members of the public (ii) that the conduct in question led to a misrepresentation likely to deceive the public (here that the public would purchase the garment on the basis that it was associated with and endorsed by the artist) and (iii) that this misrepresentation caused damage to Rihanna’s goodwill.

In terms of the first of these conditions, the judge had no difficulty with the idea that Rihanna, as a “world famous pop star” with “a very large merchandising and endorsement operation” (at [38]) had a goodwill affected by Top Shop’s actions. He found that she “was and is regarded as a style icon by many people, predominantly young females aged between 13 and 30” (at [45]). Whether this would apply to sportpersons would depend on their commercial activities (one might contrast David Beckham, for instance, with a person who has not cultivated relations with fashion or other brands). It may also depend on the link between the product in question (here fashion garments were closely related to Rihanna’s reputation as a ‘style icon’) and the person’s expertise or interests.

As to the misrepresentation, the Court carefully examined the distinction between ‘authorised’ products and unauthorised marketing which does not purport to be endorsed by the artist. The judge noted that customers today were often savvy purchasers, and on occasion “simply want to buy something with a picture on it because they like the look of it” (at [53]). This was not passing off in and of itself. Nevertheless, the presence of other factors in this case suggested conduct designed to sow the seeds of an association between artist and retailer in the minds of shoppers. Aside from the marketing activities discussed above, the judge found that the image in question appeared to resemble official imagery used by Rihanna (in this case that used in the artist’s music videos for two singles from a recent album). As such, the Court concluded that “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” (at [72]). Finally, the issue of damage was briefly dealt with, as it appeared evident that the sale of a product where substantial numbers of purchasers were deceived into believing they were authorised would damage the artist’s goodwill and constitute a “loss of control over her reputation” (at [74]).

This case illustrates two lessons for the sporting world. First, it is likely that there will be limited enquiry into whether there is a value to a sport icon’s reputation so long as there are sufficient indicators of their profile in the public’s mind. The same should hold true of the question of damage to that reputation and goodwill if a misrepresentation can be proven. Endorsement and ‘authorised’ products have a similar value in the context of sport (e.g. ‘official’ equipment or jerseys) as they do with other public personas.

Second, the key battleground of misrepresentation will be determined by the clarity with which an icon’s products are marketed. For instance, the judge noted that although Rihanna had a logo, this was not used universally across the products that she endorses (at [44]). Ensuring that this is the case (as, for instance, FIFA does) would increase the likelihood that unauthorised products are recognisable to the public. Vendors and other entities seeking to rely on the association must tread carefully in drawing such connections without the specific negotiation of endorsement contracts. Failing to do so could encourage a finding of misrepresentation.

However, the judgment is a welcome indication that English law continues to provide effective means of redress for celebrities (including sportspersons) who feel their reputation is being misused.