In Petunia Products, Inc. v. Rodan & Fields, LLC and Molly Sims, the United States District Court for the Central District of California held that a social media influencer – a person “presumed to have the power to affect the purchase decisions of others” – could be sued for direct trademark infringement in connection with the products the influencer endorsed.
In this case, the plaintiff, a cosmetics company, owned the BROWBOOST® trademark, which it used in connection with its eyebrow product. Defendant Rodan & Fields (“R&F”), a competitor of plaintiff, marketed its own eyebrow product called “Brow Defining Boost.” Plaintiff claimed the R&F product infringed on its trademark and that R&F’s promotion of its product on social media with the hashtag #BROWBOOST diluted plaintiff’s social media presence. Plaintiff also alleged that a social media blogging influencer employed by R&F, defendant Molly Sims, posted a blog which infringed on plaintiff’s trademark because the blog promoted the allegedly infringing product. Sims moved to dismiss the complaint, claiming plaintiff failed to adequately plead claims for direct trademark infringement, contributory infringement, false advertising, and unlawful and unfair business practices.
With regard to the direct infringement claim, Sims argued that “liability for trademark infringement should not cover third parties, like her.” The court rejected that argument, noting that “to prevail on a trademark infringement claim, a plaintiff must show that the defendant used the plaintiff’s trademark in commerce and that the use was likely to confuse customers as to the source of the product.” The court found that Sims’s blog satisfied the commercial use requirement because the blog advertised a product (as opposed to merely providing consumer commentary about it). The court also found plaintiff had adequately alleged that Sims’s blogging activity would confuse customers because the R&F product Sims promoted was named similarly to plaintiff’s trademarked product and the products were sold in the same channels. Accordingly, the court denied the motion to dismiss the direct infringement claim (and, for the same reasons, also denied the motion to dismiss plaintiff’s unlawful and unfair business practices claim).
The court, however, did dismiss the claims for contributory infringement and false advertising, finding that plaintiff had not adequately pled facts to support those claims. The court though afforded plaintiff fourteen days to amend its complaint by pleading facts sufficient to allege those claims.
Although the Petunia Products case is far from over, social media influencers should take note of this decision and bear in mind that they could possibly be held liable for trademark infringement in connection with the products they promote in blogs and vlogs. Social media influencers would be well-advised to perform proper due diligence before endorsing a brand’s products and they might even consider entering into defense and indemnity agreements with the brands they work with before promoting those brands’ products.
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