Protecting your image

The recent High Court case of Fenty v Arcadia Group Brands Ltd (t/a Topshop) [2013] EWHC 2310 (Ch), better known as Rihanna v Topshop, provides an insight into the way in which the UK judiciary is dealing with celebrities’ attempts to protect the valuable asset that is their image.

There is no doubt that celebrity endorsement sells products. Celebrities increasingly use their image as a commodity that can be commercialised, traded and licensed, similarly to more traditional forms of IP.

In the UK, however, there is no single law protecting image rights per se. Instead, image rights are protected by a combination of pre-existing laws such as passing off, privacy and trade marks. This article considers the current law, focusing on Rihanna v Topshop, and examines Guernsey’s alternative solution.

The current law

At present, a patchwork of laws protects various aspects of image rights in the UK:

• the CAP Code and BCAP Code set out guidelines on using individuals in adverts;
• breach of confidentiality/privacy can be used to prevent the unauthorised use of an individual’s image without their consent, but with numerous exceptions;
• celebrities can register their name and other words/logos as trade marks, but this only prevents the unauthorised use of words/phrases/images the same as or similar to their trade marks;
• passing off can be used to prevent unauthorised endorsements; and
• copyright can prevent the use of specific images, but only if the celebrity owns copyright.

Rihanna v Topshop

Topshop manufactured and sold a t-shirt with an image of Rihanna on it. Copyright in the image belonged to an independent photographer from whom Topshop had a licence. Rihanna sued Topshop for passing off.

The court began its judgment by noting: “It is important to state at the outset that this case is not concerned with so called ‘image rights’. Whatever may be the position elsewhere in the world, and however much various celebrities may wish there were, there is today in England no such thing as a freestanding general right by a famous person (or anyone else) to control the reproduction of their image (Douglas v Hello! [2007] UKHL 21).”

The court acknowledged that the mere sale of a T-shirt with a celebrity’s image on it, without consent, would not automatically amount to passing off. Here, though, a false representation of endorsement had been made.

The T-shirt used an image of Rihanna but did not use her name (a registered trade mark). It was not presented as official merchandise. There was no evidence of public confusion. However, Topshop sought to make connections with celebrities. It had previously tweeted about Rihanna being in-store in the past and had held a competition for a personal shopping day with her. The image was taken from a shoot for one of Rihanna’s album covers. Thus, the T-shirt would be taken by fans to be part of that publicity campaign. On balance, the court considered that Topshop had passed the T-shirt off as being endorsed by Rihanna. Topshop is appealing this judgment.

Few previous passing off cases based on unauthorised endorsements have succeeded, and this case seems to have turned very much on its own facts.

The Guernsey approach

Guernsey has introduced a more comprehensive solution. In 2012, Guernsey was the first country in the world to introduce a register of image rights. This allows the registration and protection of personality and image rights in any person (including natural and legal persons, groups and even fictional characters). Personality right covers a person’s name, voice, signature, likeness, appearance, silhouette, feature, face, expressions (verbal or facial), gestures, mannerisms and any other distinctive characteristic or personal attribute. Image right covers specific images or photographs.

Unauthorised use of these in Guernsey without consent infringes the image right, which can be enforced in the Guernsey courts. A personality right can be registered for up to 10 years for around £1,000. Individual images can be registered for around £100 and protection lasts for three years.

It is questionable whether there is a need for a specific law on image rights in the UK. Certainly, the Guernsey example appears to provide more comprehensive protection. However, commentators have raised concerns that this could hinder freedom of speech, such as reporting or commenting on news items involving celebrities. The current UK approach arguably strikes an adequate balance between freedom of speech and protection of celebrities’ commercial interests.