Trademark case: Topshop found guilty of passing off
In 2011 and 2012 the well known, British high street chain of clothing stores, Topshop sold T-shirts also known as a ‘muscle sleeve’ due to there specific design, with the large, bursting image of the world wide, famous singer/artist Rhianna on them, without her permission.
Rihanna took legal action to stop the sale of the product named the ‘Rhianna Tank’, and on Wednesday the 31st of July 2013, Topshop were found guilty at the high court of ‘passing off’, with the singer suing for damages ranging at approximately 5 million dollars.
With so much unofficial merchandise sold world wide, what makes Topshop’s sale of these T-shirts so wrong?
Well, the question is ‘when you walk into Topshop and look at the T-shirt in question do you think that it is an official Rhianna endorsed T-shirt or do you think it is a piece of merchandise that someone else is selling without her approval?’
The rationale of passing off was simply described by Lord Langdale MR in ‘Perry v Truefit (1942)’. ‘ A man is not to sell his own goods under the pretence that they are the goods of another man’. Though history has shown that the development in the law of passing off still lacks in clarity and precision. Having said that, it is possible to devise the certain elements needed to succeed in an action of passing off.
1) The claimant must have goodwill; this is the advantage of the good name or reputation with the attractive force to bring in custom.
2) The defendant has made a misrepresentation that is likely to deceive the public.
3) This reputation must have damaged the goodwill of the claimant.
The argument therefore being that the sale of the Topshop “Rhianna Tanks” reduces the sales of other official Rhianna T-shirts.
The context and element of Topshop’s reputation must also be taken into account, as ‘in 1997 the Spice Girls lost a case against Panini, which produced a sticker book of the brand’.
Rhianna does not own the copyright to her face, which was elaborated upon by Judge Mr Justice Birss who stated “there is no such thing as general right by a famous person to control the reproduction of their image, and the mere sale by a trader bearing an image of a famous person is not an act of passing off”. However, it was held that a substantial number of buyers were deceived by the product and the sale was damaging to Rhianna’s goodwill and reputation, which found Topshop’s sale of the t-shirts an act of ‘passing off’.
In the judgement, Topshop were said to be ‘surprised’ by the decision and believe that Rhianna’s relationship with Topshop over several years played a detrimental part to the case.
This case considered a number of specific factors including the reputation of Topshop, Rhianna’s clothing line in competing highstreet chain River Island, and how and when the photograph of Rhianna on the T-shirts was taken. Therefore this does not open the door to other celebrities attempting to protect their image rights.
(Southampton Solent Student Year 3)