Court Holds that Influencers Can be Liable for Use of a Brand’s Infringing Trademark

Background

Rodan & Fields engaged former model Molly Sims to draft a sponsored post on her blog promoting the company’s new “Brow Defining Boost” eyebrow product. The post, which offered a favorable review, contained an image of the product, its price, and a hyperlink to the Rodan & Fields website, where readers could purchase the product. Cosmetics company Petunia Products subsequently sued for trademark infringement and related claims based on its trademark registration for BROW BOOST for “eyebrow conditioners.” In the complaint, Petunia named Molly Sims as a defendant in addition to Rodan & Fields.

The Court’s Decision

Molly Sims filed a motion to dismiss, claiming that liability for trademark infringement should not extend to a party, like her, that uses an allegedly infringing mark in a sponsored post at the direction of a third-party brand. The court disagreed, finding that Petunia’s trademark infringement claim against Sims could move forward.

Sims first argued that she had not used the allegedly infringing mark in commerce, a threshold requirement for trademark infringement. The court rejected this defense, finding that Sims’ blog post was a paid advertisement that clearly promoted the product in a commercial manner. The court then determined that Petunia had sufficiently pled a likelihood of confusion, noting the similarity in the marks, goods, and channels of trade. The court was unpersuaded by Sims’ argument that a likelihood of confusion could not exist because Rodan & Fields was clearly identified as the source of the “Brow Defining Boost” product, stating that “identifying [Rodan & Fields] as the source does not necessarily mean a consumer will not infer an affiliation between [Rodan & Fields] and [Petunia].”

The Takeaway

This case is a reminder to brands to engage in thorough trademark clearances to detect potential conflicts before investing in a new brand. Failure to do so can lead to infringement claims like those faced by Rodan & Fields and may require the product or service to be rebranded.

While still ongoing, this case could also signal changes to brand-influencer relations. Companies could see influencers pressing for more protection in influencer agreements, including more robust assurances that the company’s trademarks are non-infringing and stronger indemnification guarantees. This, in turn, could result in increased financial exposure for brands, as influencers may increasingly look to brands for indemnification when faced by infringement claims. It is worth noting, however, that trademark enforcement efforts have typically targeted the competing brand, rather than their influencers—perhaps because the brand is assumed to have “deeper pockets.” It remains to be seen whether this development will result in influencers being targeted more often in trademark infringement lawsuits.