Is it legitimate for a clothing retailer to use the image of a celebrity on clothing without the consent of the celebrity? That was the question a United Kingdom (UK) high court had to consider recently.
A UK high street retailer, Topshop, sold significant numbers of t-shirts bearing the image of pop star Rihanna. While Topshop had the consent of the photographer, they did not have Rihanna's consent to use her image.
This case reminds fashion designers, manufacturers, retailers and others that they must exercise care when using the images of celebrities to help promote their goods.
In this column, we look at the law in New Zealand, discuss whether the case would have been decided differently here, and provide some tips on what New Zealand fashion designers, manufacturers and retailers should be aware of in the future.
Can you use celebrity images in New Zealand?
In the UK and in New Zealand there is no specific legal prohibition against the use of a celebrity's image.
Despite that situation, there are ways that a celebrity can object to their image being used without consent.
In this case, Rihanna relied on the law of passing-off. This needs proof the celebrity has a reputation and the use of their image is likely to cause customers to be confused into thinking the celebrity has allowed the use of their image. The celebrity must also show that this has caused them damage.
The common law action of passing-off is part of New Zealand's law. The test for passing-off in New Zealand is similar to the test in the UK. If faced with the same fact situation, we expect a New Zealand judge would reach the same conclusion.
We review the judge's findings in this case, as the facts were unique and impacted on the judge's decision.
For passing-off, the complainant must prove three elements: reputation, misrepresentation, and damage.
Reputation - The judge in the Topshop case found that Rihanna had sufficient reputation in the high-end fashion industry. Despite being considered a 'style icon', Rihanna was not able to rely solely on her celebrity status to prove reputation. Instead, Rihanna produced evidence, over time, of her attempts to build her reputation in the fashion industry, creating linkages with other high-end products and even dabbling in the art of design herself.
Misrepresentation - Topshop argued, but the judge did not accept, the view that celebrity images are often used on t-shirts and the public do not automatically assume those images are endorsed by the celebrity themselves. Instead, the judge felt the evidence in this case suggested a misrepresentation had taken place, because:
• the particular image was taken during a music video shoot, featured in the music video, and similar images were used on other promotional material for that song
• a relationship between Rihanna and Topshop existed, which was strengthened by tweets from Topshop mentioning Rihanna's visit to one of Topshop's stores.
Damage - The judge also found that damage resulted, because:
• Rihanna did not receive any compensation for the 12,000 units sold
• there would be losses to her merchandising business
• there was a loss of control over her reputation in the fashion industry.
Fair Trading Act
Fashion designers, manufacturers and retailers also need to be aware of the Fair Trading Act, which is designed to prevent misleading and deceptive behaviour in the course of trade.
Using an image that suggests a celebrity has authorised your use of their image, or endorses your product, when this is not the case, could be considered misleading and deceptive and in breach of this act.
To prove a breach of the Fair Trading Act, it is necessary to prove reputation and misrepresentation.
We expect a New Zealand judge would also find Topshop's actions were in breach of our Fair Trading Act.
There were no copyright issues to consider as Topshop had obtained consent from the photographer who took the photo.
How does this case impact on your use of celebrity images?
The decision may encourage other celebrities to complain about the unauthorised use of their image, in countries where 'image rights' are not protected.
Celebrities rely on their images to sign multi-million dollar endorsement deals and will not take lightly to any unauthorised use. The more influential the celebrity is, the greater the likelihood of passing off being proved.
You should always take care when using a celebrity image on your product. Using a celebrity's image that suggests an endorsement of, or association with, your product, could result in a passing-off or Fair Trading Act claim against you.
Before using any photographs or copyright works, you will also need consent from the copyright owner.
So, before thinking of snapping a celebrity, think of Rihanna, and seek advice.
An edited version of this column appeared in the October 2013 edition of Apparel magazine.