Intellectual Property: Fenty v Arcadia Case - Essay Example

INTELLECTUAL PROPERTY] Part A: Key Factors in Fenty v Arcadia [2013] EWHC 2310 (Ch) that Persuaded Mr Justice Birss to Rule in Favour of the Claimants and the Reasoning Behind his Decision In Fenty v Arcadia [2013] EWHC 2310 (Ch), the issue of using of celebrity images on merchandising without celebrity consent or authority has been addressed. The case involves Rihanna who is an American pop star and Topshop, an England based fashion retailer.1 Rihanna was concerned that Topshop produced and sold a T-shirt bearing her photograph. The photograph in question was taken by an independent photographer and Topshop had obtained a licence from the photographer, but it had not obtained a licence from Rihanna.2 The main question that arises from this case is whether the use of a celebrity’s image on merchandise can amount to the tort of passing off. It was argued that Topshop had infringed the rights of Rihanna and that consumers were misled into thinking that she had endorsed the use of her photograph on the T-shirt, and this might have led to enhanced commercial sales and consumer confusion, which in turn had damaged her reputation. This is because Topshop’s action may have represented a loss of control of Rihanna in the fashion industry.3 As a result, Rihanna filed a suit against Topshop for manufacturing and retailing T-shirts bearing her photograph without her authorisation. The judge hearing the case ruled in favour of Rihanna. In the United Kingdom, there is no personality right that prevents unfair exploitation, in cases where a party evokes a celebrity’s image.4 Therefore, in the United Kingdom, there is no general right that famous people or any person can enjoy and use to control the reproduction of their images. The law of passing off is used by celebrities to protect their image. However, they have to show that they have goodwill in their image. They also have to show that there has been a misrepresentation, leading to public deception. This was ruled out by Mr Justice Birss who said that consumers of this era have full awareness that music artists take part in merchandising and endorsement in fashion apparel. According to Mr Justice Birss, consumers may not want to purchase products which have been authorised by artists, but they will rather purchase products with pictures on them because they love the look of it.5 One of the key factors that persuaded Mr Justice Birss to pass a ruling in favour of Rihanna was that Topshop, the fashion retailer, had engaged in promotional efforts involving Rihanna. For instance, there was a competition, in which the entrants could win a personal shopping appointment with Rihanna in 2010.6 Also, Topshop sold the T-shirt two weeks after there had been tweeting about the visit of Rihanna to Topshop’s Oxford Circus store.7 Therefore, even if there was no official agreement between Rihanna and Topshop, the aforementioned activities indicated that Topshop capitalised on the public position of Rihanna as a style icon to increase its own sales. Another factor that Persuaded Mr Justice Birss to pass the ruling in favour of Rihanna is the particular image that had been included the T-shirt that was being retailed by Topshop. The particular photograph was taken when Rihanna shooting a video for her 2011 ‘Talk That Talk’ album.8 Therefore, the image exceeded its recognisability as just Rihanna, but looked as a publicity shot of her album being released. This contributed to Mr Justice Birss’ finding that the image on the T-shirt could make fans to believe that this message was part of the album’s marketing campaign. Mr Justice Birss reasoned that Topshop used the popularity of Rihanna to market its products. For instance, the fashion retailer had been tweeting about its promotions carried out with Rihanna and given that Topshop had more than 350,000 followers, majority of them would think that Rihanna had authorised the use of her photograph on the T-shirts9. On the other hand, the perceived authorisation of the image on the T-shirt could motivate people to purchase it because most of the artist’s fans regarded her endorsement as important because she represents a style icon for them.10 So, majority of the consumers could buy the T-shirt, thinking that she had approved for the inclusion of the image while some wished to buy it because of the value of the perceived authorisation itself. This means that the consumers would have been deceived.11 In addition, the photograph that was used on the T-shirts was similar to those that Rihanna used in her album covers.12 Therefore, according to Justice Mr Justice Birss’ reasoning, the use of Rihanna’s picture on Topshop’s T-shirts that was similar to the pictures that the artist used in her album covers could prompt her fans to purchase the T-shirts, believing that the T-shirts were manufactured and retailed as a promotional campaign of the albums. Though the circumstances were different, this case reaffirms the ruling in a previous case between a celebrity and a radio station. In Irvine and Another v Talksport Ltd [2002] EWHC 367 (Ch), Eddie Irvine, a well known Formula One driver brought an action against Talksport.13 Talksport held a special promotional campaign for the rebranding of the station from Talk Radio to Talksport. Flyers bearing a picture of Irvine were distributed to media buyers. Talksport had manipulated the original picture, which showed Irvine holding a mobile phone by replacing the mobile phone with a radio and adding the words “Talk Radio”.14 According to Irvine, the distribution of the flyers bearing his picture was a false implication that he endorsed Talksport and this was an actionable passing off.15 Given that Irvine had a property right in his goodwill, he could protect it from unlicensed appropriation that consisted of a third party’s goods or services. A false representation that the goods or services have been authorised by the claimant amounts to passing off, if the representation is operative.16 It was held that it was often appropriate to assess damages in false endorsement cases on the basis of the licence fee which would have been agreed by a notional willing endorser and endorsee and Irvine was awarded £25,000 by the Court.17 Part B: Appeal against the Legal Reasoning that led to the Aforementioned Judgment on Behalf of the Defendants IN THE COURT OF APPEAL ON APPEAL FROM THE HIGH COURT OF JUSTICE CHANCERY DIVISION INTELLECTUAL PROPERTY BETWEEN: (1) ROBYN RIHANNA FENTY (2) RORAJ TRADE LLC (3) COMBERMERE ENTERTAINMENT PROPERTIES LLC (CLAIMANTS/RESPONDENTS) - and - (1) ARCADIA GROUP BRANDS LIMITED (T/A TOPSHOP) (2) TOPSHOP/TOP MAN LIMITED (DEFENDANTS/APPELLANTS) DEFENDANTS’ SKELETON ARGUMENT FOR PERMISSION TO APPEAL Ricchards & Sons LLC 12TH MAY 2014 On behalf of Arcadia group Brands Limited (T/A Topshop) and Topshop/Top Man Limited, I seek permission to present an appeal by the defendants against the decision of Mr Justice Birss on the aforementioned case. In the case, Mr Justice Birss found for the claimants and ruled that there was misrepresentation and that Topshop’s sale of T-shirts bearing a photograph of Rihanna without her approval as an act of passing off. According to Mr Justice Birss, a mere trading a T-shirt bearing a photograph of a famous person is not, in itself, an act of passing off, but the specific sale of the image of Rihanna on the T-shirt manufactured and traded by Topshop in the aforementioned circumstances is a different matter. Also, Mr Justice Birss claimed that a substantial number of purchasers were likely to be deceived to purchase the T-shirt because of a false belief that it had been endorsed or authorised by Rihanna herself. Further, the purported deceit would obviously be damaging the claimants’ goodwill in that it would amount to sales lost to her merchandising business and represent a loss of control over her reputation in the fashion sector. It was also indicated by the judge that the claimant had the discretion of choosing the garments that the public thinks are endorsed by her.18 The Grounds for Appeal Mr Justice Birss was wrong in law to establish that the sale of a T-shirt bearing Rihanna’s image without her approval by Topshop amounted to misrepresentation because a mere sale of a T-shirt bearing a photograph of a famous person is not, in itself, an act of passing off. Mr Justice Birss was wrong in law in claiming that a T-shirt bearing a photograph of Rihanna traded by Topshop would deceive the public into believing that Rihanna endorsed the garment because this could not be proved by evidence. Mr Justice Birss was wrong in law in claiming that the picture that was used on the T-shirt was similar to the photographs that Rihanna had used in her album covers could mislead the public to believe that the T-shirt was traded as part of the campaign of promoting Rihanna’s albums because this could not be proved by evidence. Mr Justice Birss was wrong in law in establishing that majority of the consumers could buy the T-shirt, thinking that Rihanna had approved for the inclusion of her image while some wished to buy it because of the value of the perceived authorisation itself. There was no evidence to prove this. Mr Justice Birss was wrong in law in finding out that because Topshop, the fashion retailer, had engaged in promotional efforts involving Rihanna, this indicated that Topshop had capitalised on the public position of Rihanna as a style icon to increase its own sales as this could not be proved with evidence. The ruling of the case in favour of the claimants was wrong in law because Rihanna had been engaging in promotional activities with Topshop. There lacks evidence that by trading a T-shirt bearing a photograph of Rihanna, Topshop deliberated to capitalise on her popularity in promoting its sales or damage her goodwill or reputation. Facts Misrepresentation has to be proved as a defendant’s calculated action of misleading during his or her course of trade to potential customers of his or her ultimate consumers of the goods or services that are supplied by that defendant. Therefore, a misrepresentation should intended to hurt the business or goodwill of another trader or person and must cause actual damage to a business or will probably do so. In the case of Fenty v Arcadia [2013] EWHC 2310 (Ch), Topshop had no intention to hurt Rihanna’s business or goodwill. It could not be proved that Topshop had prior intentions of damaging Rihanna’s business or goodwill whose main business activity is music and does not own a fashion apparel company that competes directly with Topshop. As mentioned by Mr Justice Birss, the act of trading a T-shirt bearing an image of a famous person is not, in itself, passing off. Based on this fact, it is not right to claim that the T-shirt that Topshop manufactured and sold, bearing the image of Rihanna was an actionable passing off. Rihanna’s image will always remain an image of her, despite the time and place where it is taken. Mr Justice Birss claimed that the picture that was used on the T-shirt was similar to the photographs that Rihanna had used in her album covers and this could mislead the public to believe that the T-shirt was traded as part of the campaign of promoting Rihanna’s albums. This was wrong because even if another image could have been used, still the public could recognise it as Rihanna’s image. Relying on the similarity of the image to other images used for Rihanna’s album covers to prove misrepresentation was wrong. Mr Justice Birss was wrong in establishing that majority of the consumers could buy the T-shirt, thinking that Rihanna had approved for the inclusion of her image while some wished to buy it because of the value of the perceived authorisation itself. Engaging a celebrity in a company’s promotional activities does not necessarily imply that such a company seeks to exploit the popularity and public position of the celebrity to increase its own sales. Rihanna had been engaging in promotional activities with Topshop and by it does not mean that Topshop deliberated to capitalise on her popularity in promoting its sales or damage Rihanna’s goodwill or reputation by trading a T-shirt bearing her photograph. The Law The fundamental nature of the tort of passing off is a misrepresentation that a defendant makes, which is calculated to cause damage to the business or goodwill of the claimant.19 A cause of passing off can be created, if all the five characteristics are present. The five characteristics that must be present so as to create a valid cause of passing off include misrepresentation, which has to be made by a trader in the course of trade to potential customers of his or her ultimate consumers of the goods or services that are supplied by that trader. This misrepresentation is intended to hurt the business or goodwill of another trader and causes actual damage to a business or will probably do so.20 There has to be a clear demonstration by the plaintiff that a misrepresentation, intentional or not, to the public leads to or is likely to lead the public to believe that goods or services offered by him are goods or services of the plaintiff.21 In addition, the public must identify with the plaintiff as a particular source of the goods, whether the public is aware of the plaintiff as a manufacturer or supplier of the goods or services. It must be proved that in each case a false presentation was made. This may be express or implied.22 Nobody has the right of representing his goods as the goods of someone else. Therefore, nobody should sell the goods under the pretence that they his goods or services while in the actual sense, they are the goods of another person. There is no property in a name, mark or get up. Therefore, not even distinctive and well known marks have a trademark. If a trader can distinguish his or her goods effectively as his or her own, then such a trader is allowed to use a mark, name or get-up. In fact, passing off is a wrongful invasion of a right of property vested in the plaintiff but the property which is protected by an action of passing off is not the plaintiff’s proprietary right in the name or get up, which the defendant has misappropriated, but the goodwill and reputation of the his business, which is likely to be harmed by the defendant’s misrepresentation.23 In Bristol Conservatories Ltd v Conservatories Custom Built Ltd, the defendants who were salesmen showed their prospective customers a portfolio of photographs of ornamental conservatories. However, the fact is that the photographs of conservatories of the plaintiff. This led to the customers believing that the photographs believing that the photographs were a sample of the defendant’s own goods and workmanship. It was held by the court of appeal that the defendants had made a representation by falsely claiming that the photographs that they displayed to their customers represented conservatories of their own design and work. The goodwill was demonstrated because the photographs were shown and had been misappropriated by the defendants.24 However, in this case, Topshop did not present goods belonging to Rihanna or her affiliate companies as Topshop’s products. Therefore, such a rule cannot apply here. Conclusion Based on the aforementioned facts and English law provisions for the tort of passing off, it has been noted that Mr Justice Birss was wrong in his ruling of this case, in which he found for the claimants and declared that Topshop’s activity of manufacturing and trading T-shirts with Rihanna’s picture without her authorisation was an act of passing off. Mr Justice Birss slipped from one justification of the action of using a famous celebrity’s image on a T-shirt without her authorisation to another, which is unfair advantage on the side of benefit to the defendant. The judge claimed that Topshop benefitted from trading T-shirts bearing the image of Rihanna because the company’s commercial sales increased while the goodwill or reputation of Rihanna was damaged, as far as the fashion industry is concerned. Since there was no direct link between the types of business that Topshop and Rihanna engage and that there was no evidence to show that that the public was deceived and goodwill was damaged, I request that the Court of Appeal allows this appeal and reconsiders Mr Justice Birss’ ruling. I also request the Court of Appeal to consider English law provisions and the facts presented herein for a better judgement and ruling. Part C: The Merits of the Appeal A trader can trade garments bearing an image of a famous person, just as Topshop has been doing before, selling garments that had photographs of famous people. Given this and the fact that a mere sale of a T-shirt bearing a photograph of a famous person is not, in itself, an act of passing off, the appeal is likely to overturn the initial judgement because there is no evidence to support that the activities of Topshop amounted to misrepresentation. In addition, there was no proof that the actions of Topshop were deliberated at obtaining own benefits and damaging the reputation of Rihanna. In England, a celebrity cannot restrict reproduction of her or his images given that there is no property right in images. Authorities [2013] EWHC 2310 (Ch), [2013] WLR (D) 310 Bibliography Blum, Jeremy and Ohta, Tom. "Unauthorised Use of Celebrity Images on Merchandising: No Right in Her Image per se but Rihanna Prevails against Topshop." (August 8, 2013) accessed 12 May, 2014. Boyd, Stephen. "Not in my Name." New Law Journal, (2013). pp. 1-2. Brabners. "Rihanna Knocks Topshop off the Top Spot." Insight, (2013). pp 1-10. Dickinson, Hill. "Behind the Scenes at the Museum." Contentious Business Update, (2013). pp. 1-16. Vrey, Rogier W. De. Towards a European Unfair Competition Law: A Clash between Legal Families: A Comparative Study of English, German and Dutch Law in Light of Existing European and International Legal Instruments. (Boston: Martinus Nijhoff Press, 2006). Wadlow, Christopher. The Law of Passing-off: Unfair Competition by Misrepresentation. (London: Sweet & Maxwell Press, 2011). [2013] EWHC 2310 (Ch), [2013] WLR (D) 310 Read More