Designers and retailers will be on guard when using celebrity images on their products as the Court of Appeal of England and Wales recently upheld the High Court’s 2013 decision that Topshop’s sale of T-shirts bearing a photo of singer Rihanna amounted to passing off, says Emily Riddle, an associate at Baker & McKenzie in London.

The High Court, in the irst UK case won by a celebrity alleging passing off in relation to the use of their image in merchandizing, had decided Rihanna had goodwill in her image, and Topshop was found to have misrepresented to its customers that it had some association with Rihanna by using that image.

The Court of Appeal has conirmed the High Court’s indings but reiterated that there is no concept of “image rights” per se under English law; moreover, the court acknowledged that the sale of garments bearing recognizable images of a person does not, in and of itself, amount to passing off.

This decision nonetheless highlights that designers and retailers will need to take into account that using celebrity images could in principle lead to an assertion of passing off, particularly where the celebrity makes a habit of trading on her image and has lucrative merchandising deals to protect, says Riddle.

Cheah Yew Kuin, local principal at Baker & McKenzie.Wong & Leow in Singapore, says the decision provides some insight as to what could happen in similar cases in Singapore.

Cheah says there is no concept of “image rights” per se under Singapore law, either. As such, if a case like this were to arise in Singapore, the issues the Singapore Courts will consider are likely to be similar to those taken into account for in the Rihanna case.

“As a starting point, it must be noted that under the Copyright Law, the owner of the copyright in a photograph is generally the photographer and not the subject of the photograph. In the case of Robyn Rihanna Fenty & Ors v. Arcadia Group Brands and Topshop/ Topman, the image used on the Topshop T-shirts was derived from a photograph that had been taken by a third-party photographer who had taken the photograph without Rihanna’s express permission. As that photographer had licensed Topshop to use the photograph, this was not a case of copyright infringement.

As there is no “image right” per se, celebrities who wish to protect the use of their images, such as in the present case, would generally have to rely on the tort of passing off. To establish passing off, the celebrity would have to establish the elements of goodwill, misrepresentation and damage, Cheah says.

Cheah notes that the element of goodwill is generally established if the celebrity can show that his or her image has been used for product endorsements. The misrepresentation to be shown would be that members of the public, in seeing the use of the celebrity’s image, would be misled into thinking that the product or service where the celebrity’s image is used is one that is endorsed by the celebrity. Damage would then be shown by establishing possible loss in licensing revenue.

“In the Rihanna case, the Court of Appeal of England and Wales acknowledged that the sale of T-shirts bearing Rihanna’s image was not, in and of itself, passing off. To establish passing off, Rihanna had to show that the public was deceived into thinking that the T-shirts had been authorized by her. The particular facts of the case, such as Rihanna’s past public association with Topshop and the particular distinctive features of the image itself, persuaded the Court to rule that there was indeed such misrepresentation, Cheah says.

“While there has not been a similar case in Singapore, we would expect similar principles to be applied,” he says.