Trademark suits against sponsored influencers and bloggers
Can an influencer be held liable for trademark infringement if they are paid to promote a brand and the brand’s name is trademark-infringing? Yes, a federal district court just ruled. As a result, trademark lawsuits against influencers could become much more common, potentially reshaping how firms and their influencers interact contractually.
Rodan & Fields paid supermodel Molly Sims to promote their “Brow Defining Boost” product on her blog. Petunia, a competitor, owns the registered trademark BROW BOOST, which it uses to market its “Billion Dollar Brows” eyebrow primer and container. Petunia filed a federal lawsuit in Los Angeles against Rodan & Fields and Sims. Petunia cited Brow Defining Boost by name in her blog post, arguing that the three-word product name infringes on the two-word BROW BOOST.
Sims filed a petition to dismiss in July, arguing that “responsibility for trademark infringement should not cover third persons, such as herself, who author sponsored blogs about a product without checking that the product does not violate trademark rights.” On August 6, U.S. District Judge Cormac Carney ruled largely against Sims, refusing to dismiss the claims of direct trademark infringement and unfair competition. Petunia had sufficiently argued that the blog post was a commercial use of its trademark that could lead to consumer confusion.
Sims’ blog post is clearly “a paid advertisement,” and thus amounts to “commercial use,” according to the judge, and is likely to confuse consumers because she “promoted a product that competes with the plaintiff’s product, sounds like the plaintiff’s product, and is marketed through similar channels as those used by the plaintiff” in her sponsored blog post. Sims’ argument that there is little likelihood of confusion because she explicitly identified R+F (rather than Petunia) as the source of the “Brow Defining Boost” product failed to persuade the court, with Judge Carney holding that “identifying R+F as the source does not necessarily mean a consumer will not infer an affiliation between R+F and the plaintiff.”
The Impact of the Judgement
While Petunia naming Sims was unusual, others may employ this strategy more frequently because influencers are easy targets and can help plaintiffs. Influencers might include TikTok producers or YouTube vloggers who want to get out of a lawsuit as soon as possible, potentially pitting them against the corporation that paid them for the post and creating a hostile situation between the parties.
On the other hand, influencers would be called out by brands adopting “scorched earth” techniques to guarantee that the influencer’s infringement is stopped as soon as possible. If the brand is able to stop the influencer from infringing by issuing cease and desist letters directly to influencers (celebrities and non-celebrities alike), threatening infringement claims until they delete posts and/or retract reviews, it benefits the enforcer. However, brands may be hesitant to use that strategy if they want to work with that influencer again in the future or if they’re going after someone with a big profile whose fans would strike out at the brand.
Influencers who learn of the Petunia decision may seek compensation from the companies who recruit them. And companies may want to implement policies and procedures to ensure that influencers only use competitors’ trademarks in ways that the companies approve.