What happens when an influencer promotes a brand that violates a registered trademark?
In the following example (currently pending a resolution), we will illustrate the liability exposure for influencers related to their advertising practices in paid promotions of companies who may be held liable for trademark infringement.
Petunia Products, Inc. (“Petunia”), an international cosmetics company, owns the BROW BOOST® trademark, which it uses in connection with its “Billion Dollar Brows” eyebrow primer and conditioner product.
In July of 2020, Rodan & Fields, LLC (“R+F”), a cosmetics company in competition with Petunia, began to sell a product called “Brow Defining Boost.” This did not fare well with Petunia.
Dispute against R+F:
Petunia filed a complaint which alleges that the R+F’s “Brow Defining Boost” product, which performs a similar function as Petunia’s brow product, improperly utilizes their Trademark, “Brow Boost”, on product packaging and in their advertising practices.
Here are the 2 ways a social media influencer can find themselves liable for damages in their advertising practices:
1. SEO Ad Words
Petunia alleged that R+F used Google’s AdWords service to bid on search terms that use the Trademark, Brow Boost. As a result, customers who search for “Brow Boost” on Google are directed to hyperlinks for R+F’s product.
2. Social Media Hashtags
Petunia alleged that R+F’s Independent Consultants improperly and deceptively promoted their brow product by using the hashtag “#BROWBOOST,” which also causes dilution of Petunia’s social media presence.
Dispute against beauty blogger and social media influencer:
Petunia also named model and beauty influencer, Molly Sims (“Sims”), as a co-defendant in the lawsuit. Petunia accuses Sims of: (1) direct trademark infringement, (2) contributory trademark infringement, (3) false advertising, and (4) unlawful and unfair business practices.
Sims promotes various beauty products on her beauty blog, Molly Sims: Beauty Everywhere, and on her Instagram account @mollybsims. Sims allegedly published a blog post on her site to promote R+F’s product using the “Brow Boost” mark. She also provided a link to R+F’s website where the product was available for sale.
In a second blog post, Sims opens by thanking R+F for sponsoring her post and favorably reviews the 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.” Petunia claims that Sims used the mark “Brow Boost” in this blog post, however, Sims denies this. The blog posts have since been removed from her website.
Petunia claims that in her sponsored blog post, Sims “promoted a product which competes with their product, sounds like their product, and is marketed through similar channels as those used by the plaintiff.”
Sims moved to dismiss Petunia’s claims against her and argued that:
- liability for trademark infringement should not cover third parties, like her, that author sponsored blogs about a product;
- her blog post is not likely to confuse customers about the source of the product; and
- she did not use the trademark in commerce.
The Court refused to dismiss all of the claims against Sims, and only dismissed the claim for contributory trademark infringement since she was not aware of the alleged infringement. However, the Court allowed the other claims to proceed and determined that Sims’ posts were paid advertisements, and thus, “crossed from protected consumer commentary to commercial use.”
We will follow this case and see where the dust settles when it’s resolved. Although, we may never get to a court’s ruling on these specific issues if Sims and Petunia settle the matter without the Court’s intervention. Only time will tell.
Here are 2 tips for social media influencers and bloggers to mitigate some of their liability exposure on the issues raised above:
- Contracts: social media influencers and bloggers should always only accept any paid advertising opportunities where iron-clad contracts are signed. The contracts should, at the minimum, require the company to take the full liability of any of their wrongdoing and represent and warrant that the company is not infringing on the intellectual property rights of others or violating any laws.
- Research: social media influencers and bloggers should always do their due diligence on the companies they are associating themselves with to ensure that they are aligned with the right companies.
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