In around March 2012, Topshop, the fashion retailer, started selling a T-shirt with an image of Rihanna, a famous singer, on it. The image was a photograph taken by an independent photographer with whom Topshop had a licence but there was no licence from Rihanna. Rihanna contended that the sale of this T-shirt without her permission infringes her rights.
Topshop sold around 12,000 of the T-shirts for £22 each, resulting in Rihanna filing a £3.3 million claim in the UK where, like Hong Kong, there is no legislation or common law that protects “personality rights” per se. The judgment in the UK case differs from the current position in Hong Kong where there is no strong protection of personality rights to celebrities. The Hong Kong position also differs from that in mainland China where there is stronger protection in the form of the civil code on right of portrait.
Personality Rights in Hong Kong
The right of publicity or as it is often called personality rights, is the right of an individual to control the commercial use of his or her name, image, likeness, or other unequivocal aspects of one’s identity. It is generally considered a property right as opposed to a personal right, and as such, the validity of the right of publicity can survive the death of the individual (to varying degrees depending on the jurisdiction).
Personality rights are generally considered to consist of two types of rights: (i) the right of publicity, namely to keep one’s image and likeness from being commercially exploited without permission or contractual compensation, which is similar to the use of a trademark and the right to privacy, and (ii) the right to be left alone and not have one’s personality represented publicly without permission. In common law jurisdictions, publicity rights fall into the realm of the tort of passing off as in the case of Rihanna.
In Hong Kong, the main case on personality rights is between Cantopop singer/actor Andy Lau Tak-wah and Hang Seng Bank over the alleged unauthorized use of Andy Lau’s image on the Bank’s credit cards. Andy Lau sought to restrain the bank from manufacturing, supplying, promoting or marketing StarSelect Mastercards or Megastar Collectible Phonecards bearing his name, image and/or likeness. Hang Seng Bank held a licence from Television Broadcasts (TVB) allowing the use of photographs of 10 artists, including Andy Lau’s, in the promotion campaign. TVB, in turn, had an agreement with the former television star dated 5 September 1997, under which Andy Lau was to perform for the station. Related copyright and other rights of products resulting from such performances rested with TVB.
The judge in the Court of First Instance refused an application by Andy Lau for an interim injunction to stop Hang Seng Bank from using his image, pending a full hearing. It was held that “what the defendant (Hang Seng Bank) has done is no more than offering to affix the plaintiff’s (Andy Lau’s) photographs onto its credit cards or phonecards.” The Court did not consider that the public would consider that the plaintiff has ‘endorsed’ the defendant’s products.
In the Rihanna’s case, both parties agreed that selling a T-shirt with an image of Rihanna did not, of itself, amount to a representation that it had been authorised by the star and the absence of such evidence was in the defendant’s (Topshop’s) favour. However, the image of Rihanna was highly significant, being taken on set when filming one of her famous music videos. That being the case, the Court formed the view that many fans would buy the T-shirt because either they think Rihanna had approved of it or of the value of the perceived authorisation itself. In both cases, they would have been deceived.
On the question of damage, it was found that a substantial number of purchasers were likely to be deceived into buying the T-shirt because of a false belief that it had been authorised by Rihanna herself, then that would obviously be damaging to her goodwill, eg loss of sales to her merchandising business or loss of control over her reputation in the fashion world.
Conclusion
The Court concluded by saying that the mere sale by a trader of a T-shirt bearing an image of a famous person was not an act of passing off. This conclusion is consistent with the Hong Kong judgment. However, “the sale of this image of this person on this garment by this shop in these circumstances” was a different matter. So Rihanna succeeded in her passing off claim and Topshop’s sale of this Rihanna T-shirt without her approval was an act of passing off.
On the question of passing off, the Hong Kong court decided differently. It now remains to be seen if the Rihanna’s case will be followed in Hong Kong in future cases of infringement of personality rights.
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