New Zealand Fashion Week, the pinnacle event on New Zealand's fashion calendar, where designers, fashion stores, celebrities, buyers, media, and consumers all descend on Auckland vying to get a sneak peek at the trends for 2014, wrapped up over the weekend. But fashion designers and stores need to be aware of a recent UK decision where Rihanna successfully sued fashion retailer Topshop for passing-off, because the store sold t-shirts featuring a photo of her without her permission.
We examine the law in New Zealand, discuss whether the case would have been decided differently here, and provide some tips on what New Zealand designers and stores should be aware of in the future.
Can you use celebrity images in New Zealand?
In New Zealand, as is the case in the UK, there is no specific legal prohibition against the use of a celebrity's image. But, the common law action of passing-off is part of New Zealand's law, and could impact on whether you can use a celebrity's image on your product.
The test for passing-off in New Zealand is similar to the test in the UK. If faced with the same fact situation, then we expect a New Zealand judge would reach the same conclusion.
As the fact situation in this case was unique and impacted on the judge's decision, it is worth reviewing the judge's findings.
For passing-off, the complainant must establish three elements: reputation, misrepresentation, and damage.
Reputation: The judge in the Topshop case concluded that Rihanna had sufficient reputation in the high-end fashion industry. Interestingly though, and as expected, Rihanna was not able to rely solely on her celebrity status to establish reputation. Instead, Rihanna produced evidence, over a period of 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. Rihanna was considered to be a "style icon".
Misrepresentation: the judge in Topshop did not agree with the proposition by the defendant that celebrity images are often used on t-shirts and the general public do not automatically assume those images are endorsed by the celebrity themselves. Instead, the judge felt that 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 or links between Rihanna and Topshop already existed, which were enhanced 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 sphere.
Fair Trading Act
Fashion designers and outlets also need to be aware of our Fair Trading Act, which was put in place to prevent misleading and deceptive behaviour in the course of trade.
If you use a celebrity's image in a way that suggests the celebrity has authorised your use of their image, or endorses your product, then your actions could be considered misleading and deceptive and breach this Act.
The test to prove a breach of the Fair Trading Act is a two prong test, requiring reputation and misrepresentation.
As we already expect the courts to agree with the UK judge's findings, we expect a New Zealand judge would also find Topshop's actions are in breach of our Fair Trading Act.
Topshop had obtained consent from the photographer who took the photo, so no copyright issues arose in this case.
Before using any photographs or copyright works, you will also need consent from the copyright owner.
How does this case impact on your use of celebrity images?
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.
Celebrities rely on their images to sign multi-million dollar endorsement deals and will not take lightly to any unauthorised use. Just ask the countless stars that appear on our television and magazine advertisements endorsing just about every type of product available.
Before using any celebrity name or image, think of Rihanna. If you need advice, contact an intellectual property lawyer.