In Ireland, there is no legal right to the use of your own image. This is also the case in the United Kingdom. Neither country has a law against the unauthorised use of one’s image, name or likeness by a third party.
In recent years, the big business of personal endorsements by celebrities and sports stars has highlighted the value which can be attributed to a person’s image. For some individuals their image is their ‘brand’ which, if in danger of being devalued or damaged, must be protected.
Without a free-standing “image” right, an alternative right of action must be argued in order to seek legal protection from the Courts. The common law tort of “passing off” has traditionally been relied on by famous persons to prevent the unauthorised use of their image. However, certain grounds must be established in order to be granted protection by the Courts in such circumstances.
A recent UK Court of Appeal case of Robyn Rihanna Fenty and others v Arcadia Group Brands Ltd (t/a Topshop) (“Rihanna v Topshop”) has further strengthened the tort of ‘passing off’ as a solution for celebrities who wish to prevent the unauthorised use of their ‘image’.
To date, celebrities have relied on the tort of “passing off” in any attempts to control the unauthorised use of their image by others.
Passing off protects against any misrepresentation in respect of a good’s origin where the representation made is likely to mislead or confuse the public.
The test for passing off was established in the UK case of Reckitt & Coleman Products Limited v Borden Ink. The ‘Jiff-Lemon case’ established the ‘classic trinity’ of passing off i.e. the three elements central to any case. A claimant in passing off must establish: –
(1) That goodwill or reputation attaches to the goods or services of the claimant;
(2) That a misrepresentation by a third party (whether intentional or not) leads the public to believe that the goods or services offered by that party are the goods or services of the claimant; and
(3) That the misrepresentation causes damage to the claimant.
The Irish Courts adopted this test in DSG Retail Ireland Limited v PC World Limited.
Passing Off is a ‘flexible’ legal remedy which can be invoked in a variety of circumstances. It is for this reason that it has been utilised by individuals, such as celebrities and sports stars, who wish to prevent the use of their image by third parties.
‘Image’ Passing Off Actions
Confusion caused by misrepresentation is at the heart of any action for passing off. This has applied to any of the actions taken for the alleged ‘misuse’ of a person’s ‘image’.
F1 driver, Eddie Irvine, took an action to prevent a radio station using a doctored version of his image in its promotional material as he claimed that it suggested he endorsed the radio station (Irvine v Talksport). The Court held that a misrepresentation could occur where a third party’s product or service appeared to be endorsed by the individual who’s image was being used and in such circumstances an action in passing off could arise. It was recognised that a substantial part of Irvine’s income was through endorsement and misuse of his image could dilute his reputation thereby causing him damage.
Rihanna v Topshop
In July 2013, the UK High Court granted an injunction to Rihanna which prevented Topshop from selling a t-shirt which displayed her image. It was held that the sale of the t-shirt amounted to ‘passing off’ as it encouraged people to buy the t-shirt thinking it was endorsed by Rihanna and that she had consented to the use of her image.
Topshop appealed the High Court’s decision.
In February 2015, the UK Court of Appeal considered the case and upheld the earlier decision. The Court of Appeal agreed that the use of Rihanna’s image on the t-shirt amounted to a misrepresentation by Topshop that Rihanna had approved the product resulting in damage to the goodwill she held as a “fashion icon”.
“Passing off” as a common law remedy is reliant on facts and each case will be determined by the circumstances that exist. This is reflected in the decision of the Court of Appeal which when assessing the legitimacy of the representation made by Topshop, made reference to two particular facts: –
(1) Firstly, Rihanna had a previous association with Topshop through a personal shopping competition for fans and Rihanna’s involvement had been promoted by Topshop through its twitter account. The Court considered this to show the shop’s desire to link itself to the singer’s celebrity profile.
(2) Secondly, the image used on the t-shirt which although licensed from a third party photographer was similar to the promotional images used by Rihanna for her “Talk, Talk, Talk” album (same clothes and hair) and so could be considered by the public as being an authorised publicity shot.
It was held that the circumstances of the case were ‘borderline’ but these two points in combination amounted to a misrepresentation.
This recent decision, whilst acknowledging that no express “image right” exists, reaffirms that celebrities may seek to control the use of their image through an action in ‘passing off’.
The third party must commit a misrepresentation to the public in order to rely on this remedy. Rihanna v Topshop clarified that this requirement will be determined by the facts of each case and evidence of a solitary event may not be enough to establish misrepresentation.
What is most clear from this decision is that the Courts have become more willing to recognise the value in a famous person’s image and that unauthorised use by a trader in promoting its product can suggest endorsement and result in the dilution of a celebrity’s ‘brand’.
Contact Maria Edgeworth for more information.
This publication is for guidance purposes only. It does not constitute legal or professional advice. No liability is accepted by Ogier Leman for any action taken or not taken in reliance on the information set out in this publication. Professional or legal advice should be obtained before taking or refraining from any action as a result of the contents of this publication. Any and all information is subject to change.