Thursday, 1 August 2013

Fenty and other v Arcadia Group Brands Ltd and otehrs [2013] EWHC 2310 (Ch)

Once upon a time, I had a Lindisfarne tee-shirt of which I was rather proud. I imagine this was about the time of Fog on the Tyne - nearly as good as, though much more successful than, Nicely out of Tune. It never occurred to me that there might be some commercial connection between the band and the tee-shirt - after all, the band was in the music business, not the rag trade. Nor did the resemblance of the design of the tee-shirt to a Newcastle Brown Ale label concern me. After all, there was a significant overlap between rock music and the drinks industry - related fields of activity, to my teenaged self - and S&N (as it then was) sponsored Lindisfarne, at least to the extent of a crate of beer from time to time, so it seemed perfectly natural to mark the connection in this way.Merchandising, as we have come to know and love it, was more apparent in my other great area of interest, motor racing. Already, Colin Chapman had brought in commercial sponsorship, and at the British Grand Prix one could buy all manner of regalia from Gold Leaf Team Lotus and Yardley BRM - though most of the other teams back in the early seventies still limited their sponsorship to companies which actually supplied stuff they used in the cars, like petrol and spark plugs. So the idea of a connection between the subject and the tee-shirt must have been planted in my mind by then.
Times change. Rock bands do sponsorship deals for more than just a few bottles of beer. In motor racing, the sponsor's name usurps that of the maker of the cars. And as the world knows, in Fenty v Arcadia Group Brands Ltd [2013] EWHC 2310 (Ch) (31 July 2013),  or Rihanna v Topshop as it is better known, the popular singer succeeded in her passing off claim against the retailer which was offering garments bearing her image. In fact, it looks to me like a particularly unflattering image, but that doesn't seem to have been raised in the trial, although there might well have been a remedy had that been proved. On the other hand, it might simply be fashionable to look like that, though I cannot understand why that might be the case. And a fortiori I cannot understand why anyone might wish to hang such an image on their chest. But some people might have said the same about my Lindisfarne tee-shirt (my parents probably did, which may account for why I have no idea what became of it) so I will say no more on that topic.
As I tell my students, every passing off case (and therefore every passing off exam answer or essay) starts its legal analysis with either Advocaat or Jif Lemon, usually the latter because Lord Oliver's explanation is so much more comprehensible than Lord Diplock's. In Fenty the judge, Birss J, chose Jif. Then, very quickly, for obvious reasons (and if they aren't obvious to you read the case) it's on to Irvine v Talksport [2002] FSR 60 (at first instance, before Laddie J: the appeal is at [2003] EWCA Civ 423 (01 April 2003)). There it was established that a claim for passing off could be made out on the basis of a false endorsement: Eddie Irvine had valuable goodwill which he was entitled to protect when Talksport used his image without permission. The appeal concerned only the quantum of damages, or (looking at it the other way) how much he could have charged had they asked for his endorsement. The judge put this at about the cost of an hour of a good intellectual property QC's time: the Court of Appeal raised him by a factor of twelve-and-a-half (to £25,000), which is a pretty significant matter. The higher figure was at the bottom of the scale of what Eddie said he would expect to charge for an endorsement, famously averring (through his counsel) that he wouldn't get out of bed for less.
It probably takes a great deal more to persuade Rihanna to shake a leg. But the whole endorsement thing is still present: as the judge observed, her fans are influenced by her views on matters of fashion, and follow her lead, so that her endorsement of a fashion item will be very influential, and therefore valuable - which is why she has struck a number of deals with clothing manufacturers and others to give such endorsements, usually in the form of her name or a stylised letter R being attached to the goods.
Topshop argued that there was no misrepresentation. In the judge's words, "Customers buy it because they like the product and the image for their own qualities". I find that hard to believe: it is quite contrary to my experience that anyone would wear a garment depicting a celebrity who they did not like. Tee-shirts and the like (and the garment in suit, described as "a 'boyfriend style tank' (i.e. an oversized sleeveless t-shirt)"is probably best categorised as "like" a tee-shirt) usually convey some sort of message, like this one or the shirt currently in that shop's window, which reproduces a letter to the Governor of the Bank of England about the proprietor's difficulties in securing a bank loan.
In the present case, it was important that the image used was from a particular photo-shoot which meant that it resembled one of Rihanna's album covers. It was also relevant that Topshop courted celebrities, and had put on promotional events with Rihanna in the past - so the public would be receptive to the idea that there might be an endorsement here. The garment and its swing tag were completely lacking in any reference to Rihanna (although the garment had been sold online under the rubric "RIHANNA TANK", a point which the judge regarded as making no difference). Customers would, the judge decided, buy the garment having been deceived into thinking that it was duly authorised by their icon. He went on to conclude:
75. The mere sale by a trader of a t-shirt bearing an image of a famous person is not, without more, an act of passing off.  However the sale of this image of this person on this garment by this shop in these circumstances is a different matter.  I find that Topshop’s sale of this Rihanna t-shirt without her approval was an act of passing off.  I find for the claimants. 
Mishcon de Reya, Topshop's solicitors, say  that their client will be seeking leave to appeal. Leave, one might think, to throw more good money after bad. It seems to me (a safe distance from the case, of course, and therefore unaware of all sorts of things that might make me think otherwise) that in the light of Irvine Topshop's defence was doomed to failure. Birss J's judgment is not a major development of the law of passing off: it seems to me to be a smaller step from Irvine than Irvine was from the cases that had gone before. Of course the judgment is fact-specific, and the sale by a trader of a garment bearing the image of a famous person will not always be passing off. But it seems to me that you could change the facts quite a lot and still be in the passing-off zone.
This strikes me as a clear-cut case of passing off, and one which happily makes arguments for the introduction of some ludicrous new image or personality right, like the Guernsey Lawyers' Welfare Ordinance, less compelling than otherwise they might have been.

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