Written by Lillian Lee
On August 6, 2021, the United States District Court for the Central District of California held that a trademark owner could proceed on a claim of direct trademark infringement against a blogger and social media “influencer.” The court’s ruling highlights the possibility that brand influencers may be held liable for trademark infringement in connection with the products they promote.
Petunia Products, the owner of the BROW BOOST ® trademark—which is used for its “Billion Dollar Brows” eyebrow cosmetic product—filed a complaint against Rodan & Fields, LLC (“R+F”) for allegedly infringing upon its trademark in connection with R+F’s product called “Brow Defining Boost.” Plaintiff also sued model and influencer/blogger Molly Sims for direct infringement, contributory infringement, false advertising, and unlawful and unfair business practices under Cal. Bus. & Prof. Code § 17200. Plaintiff alleged that R+F had engaged Sims to blog about and promote the allegedly infringing product. Plaintiff asserted that given the similarity between its “Billion Dollar Brows” and R+F’s “Brow Defining Boost,” consumers were likely to believe that the latter product was affiliated with or sponsored by Plaintiff.
Sims moved to dismiss under Federal Rule of Civil Procedure 12(b)(6). The court granted Sims’s motion as to the contributory infringement and false advertising claims, but denied the motion with respect to the remaining claims.
In moving to dismiss the direct infringement claim, Sims asserted that “liability for trademark infringement should not cover third parties, like her, that author sponsored blogs about a product without confirming that the product does not violate trademark rights.” Sims argued that Plaintiff had not, as required, sufficiently pled that she used Plaintiff’s trademark in commerce, or that her use of the trademark in her blog post was likely to cause consumer confusion.
The court disagreed, holding that it was “reasonably inferred” that Sims’s post was not “mere commentary, which is protected by the First Amendment,” but “paid advertisement” that “crossed from protected consumer commentary to commercial use.” The court noted that in her blog post, Sims not only thanked R+F for “sponsoring” the post but also included a link to R+F’s website with the heading “SHOP THE PRODUCT.”
The court also determined that Plaintiff had sufficiently pled likelihood of confusion based on the eight factors outlined in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 (9th Cir. 1979), because among other reasons, the parties’ products were not only similar in name and purpose but were direct competitors using similar marketing channels such as beauty and cosmetic influencers and bloggers. The court was unpersuaded by Sims’s arguments that confusion was unlikely because she identified R+F as the source of the “Brow Defining Boost” product; that did not eliminate the possibility that a consumer could believe that R+F and Petunia Products were affiliated.
Unlawful and Unfair Business Practices
Because claims under § 17200 are “substantially congruent to claims under the Lanham Act,” the court denied Sims’s motion to dismiss Plaintiff’s § 17200 claim.
Contributory Infringement and False Advertising
The court granted Sims’s motion to dismiss the contributory infringement and false advertising claims. “To be liable for contributory trademark infringement, a defendant must have (1) ‘intentionally induced’ the primary infringer to infringe, or (2) continued to supply an infringing product to an infringer with knowledge that the infringer is mislabeling the particular product supplied.” Perfect 10, Inc. v. Visa Int’l Serv. Ass’n, 494 F.3d 788, 795 (9th Cir. 2007).
Here, the court agreed with Sims that Plaintiff had not “adequately alleged that Sims intended to induce infringement with her blog post, wrote it with knowledge of the alleged infringement, or exercised any control over any other party’s infringement.” Similarly, the court determined that Plaintiff had not sufficiently pled actual or constructive knowledge of falsity to support a claim for false advertising.