A Los Angeles federal court issued a novel ruling about liability of social media influencers for trademark infringement. Petunia Products, Inc. v. Rodan & Fields (C.D.Cal. 2021) involved a standard trademark dispute between competitors in the cosmetics industry. The trademark owner sued not only its competitor, but a social media influencer the competitor had hired to promote its product. The district court denied the social media influencer’s motion to dismiss, holding that her actions constituted a “use in commerce” sufficient to hold her liable under trademark law.
Trademark owners should take note of another potential avenue to enforce their rights. Influencers and other social media promoters should also take note that in endorsing products, they may be exposing themselves to liability.
The Case
Petunia Products, Inc. owns the mark BROW BOOST for eyebrow conditioners, which it uses in connection with its “Billion Dollar Brows” eyebrow primer and conditioner product. In mid-2020, Rodan & Fields, LLC (“R+F”), a competitor, began to sell a product called “Brow Defining Boost.” Petunia Products had alleged that Rodan & Fields infringed its mark in various ways, including using its mark as an AdWord on Google’s service, and that it uses the hashtag #BROWBOOST to promote its competing product.
Molly Sims is a fashion model and media influencer who was hired by R+F to promote its allegedly infringing product. She maintains her own website, where she promotes various fashion products.
Sims authored a blog post in which she promoted the Allegedly Infringing Product and provided a link to R+F’s website, where the R+F product is available for sale. In the blog post, Sims opens by thanking R+F for sponsoring her post. She goes on to favorably review the Allegedly Infringing Product. At the end of the post, she includes a link to R+F’s website for those who want to “learn more about how to purchase Brow Defining Boost.” The end of the blog also includes an image of the Allegedly Infringing Product and its price.
The Court’s Ruling
A key issue on Sims’ motion to dismiss was whether she had made a “use in commerce” of the accused mark. The court held she did, and denied her motion, because commercial advertising falls within the scope of trademark law. Her repeated use of images of R+F’s product, with its (allegedly) infringing mark, promotion and endorsement of the product, and links to R+F’s own site where the product could be ordered, all constituted use in commerce sufficient to bring her acts within the scope of the Lanham Act.
This seems consistent with the Lanham Act, that subjects to liability any “use in commerce [of a confusing copy of a mark] in connection with the sale, offering for sale, distribution, or advertising of any goods or services . . .” 15 U.S.C. 1114(1). Sims’ use appears to be a classic case of use of a mark in advertising.
The district court rejected Sims’ argument that such a ruling would stifle legitimate commentary, which would be protected by the First Amendment, because the case involved commercial promotion for pay, not merely independent review or product criticism.
The district court distinguished Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672, 676 (9th Cir. 2005), a case where someone used a company’s mark in the context of a website critical of the mark owners’ business. There, the Ninth Circuit had emphasized that the accused website did not link to any commercial sites, did not offer any products or services, and did not contain any paid advertisement from any other commercial entity. In the Molly Sims case, in contrast, her use of the accused mark was clearly part of a paid advertising campaign, and linked to a site that offered the accused product.
Implications
The use of social media influencers has exploded in the last several years, and many companies have exploited its marketing power. Celebrities and other people with influence have likewise taken advantage of this new opportunity. Both should be aware of the potential exposure to liability. Influencers, for example, may wish to negotiate indemnification provisions in case of being accused of infringement.
Trademark and other intellectual property owners should also be aware of another possible weapon in their enforcement arsenal.