Influencers tell us to “click on the link” in their bios, “shop” via their platforms and watch their videos where they summarize the good and the bad of whatever product or service they are marketing. We click, we shop and we listen to these influencers. A question that often arises for those in the influencer business is whether they can be liable for product claims or statements. The short answer there is “yes” – the influencer can be liable for their own claims, and so it is important that they have a solid contract in place with any brand to help insulate them from liability. A similar question was recently raised in Petunia Products, Inc. v. Rodan and Fields, LLC et al., where Petunia Products, Inc. (“Petunia”) challenges influencer Molly Sims, as well as the owner of the product she was touting, Rodan & Fields, LLC (“R+F”), for trademark infringement due to posts that Ms. Sims made about the product she was asked to review by Rodan & Fields, LLC. Simply put: Petunia claims that Ms. Sims was infringing its trademark by posting about R+F’s product.
Petunia owns the “BROW BOOST” trademark responsible for its “Billion Dollar Brows” eyebrow product. In addition to any common law rights that Petunia claims to own in the phrase “BROW BOOST,” Petunia owns a federal trademark at U.S. Trademark Reg. No. 3100739, covering eyebrow primers and conditioners.
Rodan & Fields is a company that specializes in skincare and lash products. The company retained Molly Sims to draft a sponsored post on her blog promoting the company’s new “Brow Defining Boost” eyebrow product. In the blog post, Ms. Sims provides links to the R+F website and gives what she argues is a “simple product review” where she lets readers know how she uses the product in question and provides before and after photos.
In April 2021, Petunia sued R+F and Ms. Sims for trademark infringement and related claims based on its rights in “BROW BOOST.” Petunia alleges that Ms. Sims and R+F unlawfully used Petunia’s registered “BROW BOOST” trademark in online advertising to sell competing cosmetic products, which have and continue to harm the goodwill and reputation of Petunia’s registered mark. Generally, the complaint alleges (1) direct infringement, (2) contributory infringement, (3) false advertising, and (4) unlawful and unfair business practices against Ms. Sims and R+F.
Ms. Sims’ Motion to Dismiss
Ms. Sims moved to dismiss herself from the lawsuit altogether rather than answering Complaint as R+F did. She reduced her conduct to one singular blog post about the R+F product where she clearly identified R+F as the seller and contended that the Complaint did not sufficiently allege claims against her. Ms. Sims argued that the lawsuit against her as a third-party influencer was a misdirected claim that should be lodged solely against R+F. Ms. Sims further argued that because “Petunia does not allege that [she] sold or offered the product for sale,” and conflates R+F’s alleged actions with those allegedly made by her, the claims against her should be dismissed.
In opposition, Petunia reiterated its primary allegations against R+F and maintained that R+F’s contractual sponsorship with Ms. Sims to use her reputation, authority, knowledge, reach, and relationship with her social media audience to “influence,” infringed upon Petunia’s mark. Petunia further argued that it sufficiently alleged a direct infringement claim against Ms. Sims because it alleged that Ms. Sims advertised the product in violation of the Lanham Act and provided a link to consumers to purchase the product. Petunia further asserted that it sufficiently alleged a contributory infringement claim against Ms. Sims because she induced her followers to share a link where the product in question was offered for sale.
The Court’s Decision on Ms. Sims’ Motion to Dismiss
The court dismissed the contributory infringement and false advertising claims against Ms. Sims but it denied the motion to dismiss with respect to the direct infringement and unfair business practices claims. The contributory infringement and false advertising claims were dismissed because Petunia failed to allege that Ms. Sims had knowledge of either the alleged infringement or the alleged misleading statements.
As it relates to the direct infringement and unfair business practices claims, however, the court found otherwise. The court reasoned that Petunia sufficiently alleged that Ms. Sims used its trademark in commerce and that the use was likely to confuse customers as to the source of the product. Although Ms. Sims’ blog post reviewed the R+F product, the court found that because Petunia alleged that Ms. Sims authored the sponsored blog post in question and provided a link to R+F’s website where readers could “SHOP THE [ALLEGED INFRINGING] PRODUCT,” Ms. Sims’ use was in connection with the advertisement of the product that “crossed from protected consumer commentary to commercial use.” Furthermore, the court reasoned that Petunia sufficiently plead likelihood of confusion, as R+F’s “Brow Defining Boost” was quite similar to Petunia’s trademarked, “Brow Boost.”
Ms. Sims’ Defenses
Ms. Sims has since filed an answer to the Complaint. In her answer, Ms. Sims relevantly asserts the following affirmative defenses: (1) Ms. Sims’ nominal and fair use of “Brow Defining Boost” merely referred to the product as R+F had produced it to Ms. Sims for review; (2) because Petunia has previously permitted other third party uses that are more similar to its mark than “Brow Defining Boost,” it is estopped from asserting that Ms. Sims’ use of “Brow Defining Boost” is infringing; and (3) to the extent Ms. Sims is held to have used any trademark in commerce by way of her testimonial, she lacked any control or involvement in the alleged infringement.
Takeaway: It is notable that the court permitted Petunia’s trademark infringement claim to go forward as to both R+F and Ms. Sims. While many influencers routinely write blogs and other social media posts marketing various products, the fact that these are posts commissioned by third parties does not insulate the influencer from potential liability. In addition, brands should also continue to ensure they are clearing and considering any third party rights when promoting their products, even if the promotion is conducted by a third party. It is in the best interest of brands and influencers to have contracts in place to minimize the risk associated with advertising practices of either party.
While the merits of this case have yet to be decided, the court’s decision here signals that third-party influencers may be more liable for their role in marketing products than the courts and product owners historically gave them credit. This case is one to continue to watch.