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Could We Be Seeing More Influencers Being Held Liable For Trademark Infringement?

Credit: Mizuno K | Pexels

Love them or hate them, influencers are here to stay, causing significant changes to commerce. Companies have transitioned from traditional marketing channels to seeking out influencers to promote their products or brands. Platforms like TikTok, Youtube, and Instagram have revolutionized media; average people have found themselves going from posting for fun to now managing their platforms as small businesses. Most of the profits influencers obtain are through paid advertisements, where they enter into contracts with companies to promote new products to their audiences.

However, the bigger the payment, the bigger the liability. Some of these influencers might find themselves posting “get ready with me to go to court” videos if they fail to inquire about the partnership ahead of time. This was the case for Molly Sims, a model and influencer who found herself named as a party in the civil suit for direct trademark infringement between Petunia Products and Rodan & Fields.

Petunia Products, Inc. v. Rodan and Fields LLC

Petunia Products, Inc. v. Rodan & Fields, LLC is a 2021 case decided by the United States District Court for the Central District of California. No. 8:21-CV-00630 (C.D. Cal. July 28, 2022). What differentiates this case from other trademark infringement disputes is the implications it sets forth for TikTokers, bloggers, and other social media influencers. Petunia Products named influencer Molly Sims as a party to the lawsuit for promoting Rodan & Fields’ brow serum, “Brow Defining Boost,” through a paid review. The suit alleged that defendants committed “trademark infringement, contributory trademark infringement, false advertising under Cal. Bus. & Prof. Code § 17500, and unlawful and unfair business practices under Cal. Bus. & Prof. Code § 17200.” The plaintiff’s product, an eyebrow primer called “Billion Dollar Brows,” has been in commerce for over twenty years, using the trademarked term “BROW BOOST” in its advertising. In 2020, Rodan & Fields introduced a similar product, the aforementioned “Brow Defining Boost,” which it aimed to market using “influencer blogging.”

Credit-Mizuno K | Pexels

The plaintiff alleges that an influencer is a person “presumed to have the power to affect the purchase decisions of others.” Molly Sims, a seasoned model and actress, has served on ad campaigns for well-known brands, such as Michael Kors and CoverGirl. In recent years, she’s had great success running her own website, where she provides readers with fashion and beauty recommendations, including the paid advertisement for the Rodan & Fields brow product. In her blog, Sims raved about the “new Brow Defining Boost” and thanked Rodan & Fields for sponsoring the post. She also included a link to purchase the product, along with the price. While she didn’t use the term “Brow Boost” explicitly, the court found that the post’s phrasing was similar enough to the trademark that it qualified as an infringement nonetheless.

Sims moved to dismiss the claim on the grounds that “liability for trademark infringement should not cover third parties,” and that there was not enough evidence to indicate that her blog post would cause confusion for consumers. The court denied Sims’ motions, finding that the claims against her could move forward due to the post’s clear advertising efforts.

Essentially, Sims found herself caught in a crossfire between two competing brands. Rodan & Fields was allegedly using bad advertising practices to bid on Google’s search terms so that customers who searched for “Brow Boost” were redirected to its website. While Sims was unaware of any infringement or bad practices, she was likely being used by Rodan & Fields to increase its Google searches.

A trademark is “any word, symbol, device, or any combination thereof,” adopted and used to identify and distinguish goods made or sold by the owner. Once a person creates a trademark and uses it in commerce, they have provided notice that they own the mark and the ability to use it in connection to the sale of a good or service. A civil action may arise when another party uses or reproduces the mark in connection with the sale or advertisement of any good or service, and the use is likely to cause confusion as to the source of the good or service. To state a claim of trademark infringement under 15 U.S. Code § 1114, the owner of a trademark must allege that (1) there was prior use of the trademark in connection with sales or advertising and (2) the infringing mark is being confused with their mark. Wood v. Apodaca, 375 F. Supp. 2d 942, 948 (N.D. Cal. 2005).

When Sims filed her motion to dismiss, she argued that Petunia Products failed to state a claim for relief that was plausible on its face. Bell Atl. Corp v. Twombly, 550 U.S. 544, 570 (2007). Sims specifically argued that liability for trademark infringement should not cover third parties, like herself, who author sponsored posts without knowledge that they infringe a trademark. She argued that her blog post was not used in commerce, but rather, that it was “mere commentary,” which is protected by the First Amendment. Bosley Medical Institute, Inc. v. Kremer, 403 F.3d 672, 677 (9th Cir. 2005). However, the court found that the post was more than mere commentary. It distinguished the precedent set forth in Kremer because, unlike in Kremer, Sims provided direct links to the Rodan & Fields website, making it a paid advertisement. This paid advertisement was no longer merely commentary, but an advertisement for commercial use. Therefore, the motion to dismiss on the grounds of direct infringement was denied by the court.

In the end, the parties settled and the court entered a joint stipulation for dismissal with prejudice. However, the denial of the motion to dismiss created a new gray area of litigation. When a motion to dismiss is denied, the case must continue instead of ending early because the defendant failed to convince the court that the claim lacked legal sufficiency. Molly Sims’ arguments did not meet that threshold, and she could have remained a party if the litigation continued, setting a precedent for any influencers who may want to engage in brand deals in the future.

This case serves as an eyeopener for influencers, companies engaging in trademark clearances, and potential plaintiffs. Plaintiffs filing a claim for trademark infringement can now seek to name influencers as a third party in their suit. In addition, this case reminds brands that failure to conduct in-depth trademark clearances can lead to civil litigation. While this case settled, it will likely lead to an influx of new litigation for influencers who are not careful with who they conduct business with.

Influencers need to understand the risks that come with partnerships and how to minimize them to avoid future litigation. It would not be surprising to see an increase in influencers demanding indemnity provisions in their advertisement agreements. Overall, as influencers continue to become more commercially influential, the substance in their content may now have more meaningful legal repercussions.

*The views expressed in this article do not represent the views of Santa Clara University.


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