Topshop Tries…and Fails to Steal Rihanna’s Face

by Perri Michael

Rihanna recently won her lawsuit against British fashion retailer, Topshop, after they used a photo of her on a widely distributed t-shirt. The photo was from a 2011 video shoot the singer did that eventually ended up in the CD sleeve of her album Talk That Talk. In 2013, a London court ordered Topshop to cease distribution of the t-shirt because it failed to notify consumers that Rihanna did not authorize or endorse the item. The judges noted that a substantial number of Rihanna’s fans were likely to believe that she had authorized the company to use her image on the t-shirt.  “The judge had ruled that the item was damaging to Rihanna’s goodwill, and represented a loss of control over her reputation in the fashion sphere.”[1]Therefore, Topshop’s use of the image was a misrepresentation leading to "passing off," a term used to enforce unregistered trademark rights.

In the United States, the right to of publicity is the right to control the commercial use of someone’s identity and the laws vary from state to state. If this case were brought in the U.S., Topshop would not likely have a viable defense against Rihanna’s claim of a violation of right of publicity. Under New York's right of publicity statutes, Civil Rights Law N.Y. §50 and §51, an individual may bring an action against any person or company that uses his or her "name, portrait, picture or voice" without consent for the purpose of trade and may seek damages. N.Y. Civ. Rights Law §§ 50,51 (McKinney 2011). To claim a violation of the right of publicity, a party must establish that a person, firm or corporation has used his or her: (1) name, voice, portrait or picture; (2) without consent; (3) for trade or advertising purposes.

Here, Topshop used a picture of Rihanna’s face that was easily recognizable to millions of her fans globally, who were led to believe she endorsed it. The pop-star notably did not consent to Topshop’s use of her image and Topshop sold the apparel through e-commerce in addition to a majority of their three hundred stores across the UK and in the stores located in the U.S.  Rihanna uses her popularity as a pop-artist to sell a number of items including apparel and beauty products that could potentially be sold in the same marketing channels Topshop engages in, leading consumers to believe she endorsed the products. In addition, Rihanna has entered into a number of endorsement agreements with companies, including River Island, who is a direct competitor with Topshop.

Although Rihanna’s face is not trademarked, the court in Experience Hendrix, LLC. v. Electric Hendrix, LLC noted , “[a] famous person’s name may have secondary meaning if it is likely to be recognized by prospective purchasers. If a mark consists of the name of an historical figure or other noted person and is likely to be recognized as such by prospective purchasers, secondary meaning ordinarily will not be required. Unless consumers are likely to believe that the named person is connected with the goods, services, or business, the use will be understood as arbitrary or suggestive. DA VINCI on jewelry, for example, is an inherently distinctive designation.”  2008 WL 3243896 (W.D. Wa). In the Jimi Hendrix case, the rock icon’s estate won a trademark infringement case against the CEO of Electric Hendrix Spirits, LLC, for using the star’s name and image to promote a brand of vodka. The court held the vodka products created a substantial likelihood of confusion and ordered the CEO to cease using the star’s name and image for commercial purposes.

Another possible approach Rihanna could use to argue against Topshop’s use of her image (in the U.S. at least) may be a false endorsement claim under §43(a) of the Lanham Act, which “occurs when a person’s identity is connected with a product or service in a way that consumers are likely to be misled about that person’s sponsorship or approval of the product or service.”[2]To prove a violation under the false endorsement claim of the Lanham Act, the celebrity must prove their likeness can be protected under trademark law due to their fame and association with a good or service “For a likeness to be protected it must have a meaning independent of the person’ it must refer not just to the individual but to the goodwill of a commercial enterprise.”[3]

There is (more than) a high likelihood that consumers would believe Rihanna’s face on a t-shirt, sold by a leading retailer, would be endorsed by the star. As previously noted, Rihanna uses her image to promote a number of apparel and beauty products globally. Rihanna is not only a pop-star but she is also a brand that has the potential for protection under trademark law. Based on the forgoing, Rihanna could possibly use both the right of publicity and the Lanham act to protect her image from being used without consent in the U.S.

 

[1] Samantha Conti, “Rihanna Wins Topshop T-Shirt Suit”, WWD, July 2, 2015, http://www.wwd.com/business-news/legal/rihanna-wins-topshop-case-8130889?module=business-news-legal-page-1

[2] http://itlaw.wikia.com/wiki/False_endorsement

[3]http://www.inta.org/tmr/documents/volume%2094/vol94_no6_a3.pdf