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Influencers Risk Trademark Suits After Judge Rejects Dismissal

Aug. 12, 2021, 9:04 AM

A rare court order looping celebrity endorser Molly Sims into a trademark infringement lawsuit might spur similar suits against influencers in the future, as they become an increasingly bigger source of advertisements, trademark attorneys say.

A California federal court refused to dismiss Sims, a model and actor, from a trademark infringement lawsuit alleging she caused consumer confusion about an eyebrow product. The court said her sponsored blog post for a Rodan and Fields LLC product constituted commercial use, putting her on the hook for possible infringement.

Companies more often focus only on the competitor selling the allegedly infringing product. Claims against influencers promoting infringing products could be a new way to bolster plaintiffs’ legal strategies, attorneys said.

“I would certainly expect it to start happening more often, given the way in which advertising is starting to be done,” Rebecca Tushnet, a copyright law professor of Harvard University, said. “Influencers are rising in popularity as a method to reach consumers.”

Sims’ sponsored blog post promoted the Rodan and Fields “Brow Defining Boost” product, which Petunia Products Inc. said infringed on its “Brow Boost” mark.

Tushnet said just posting the sponsored blog is sufficient at this stage of litigation.

The court may later find that Sims didn’t infringe on Petunia’s mark, but it allowed the direct infringement claims against Sims to move forward.

Strategy to Consider

While Petunia naming Sims was unusual,others might use this strategy more often because influencers are easy targets and can add to plaintiffs’ strategy, said Gary A. Hecker, an intellectual property attorney at Munck Wilson Mandala.

Influencers might be TikTok creators or YouTube vloggers who would want out of a lawsuit quickly, which might pit them against the company that paid them for the post and create a negative environment between the parties, Hecker said.

“It’s strategically something to consider,” Hecker said. “Why not bring in that party if that party is out there infringing and thick as thieves with the defendant?”

Others said brands pursuing “scorched earth” tactics would name influencers to ensure that the influencer’s infringement stops as quickly as possible, trademark attorney Joshua Gerben of Gerben Perrott LLC said. He added that it works to the enforcer’s advantage if the brand can knock off the influencer’s infringement.

Brands might be cautious, though, in taking that approach if they want to work with that influencer in the future or are going after someone with a high profile whose fans could lash out at the brand, said Dyan Finguerra-DuCharme, a trademark attorney at Pryor Cashman LLP.

While targeting influencers is effective in stopping infringement, it’s an aggressive strategy, she said.

“There are a lot of brand owners who carry very large sticks and sometimes scorched earth approaches to the enforcement of their rights,” Finguerra-DuCharme said. “I wouldn’t be surprised if there’s more cases like this. They’re going to be few because it is just so aggressive.”

‘Troubling’ Precedent

Advertising agencies have contracts that state companies are on the hook for the content that is put in the ads. Similar standards are still evolving for influencers.

“That took awhile to evolve,” Tushnet said, referring to advertising agency contracts. “Maybe, ultimately, you get an influencer standard contract, but it’s not there yet.”

Influencers should be cognizant of possible trademark infringement lawsuits when making sponsorship deals with brands, Finguerra-DuCharme said. Indemnification contracts can protect them, but the lawsuit threat will remain.

It’s possible that Sims will ultimately be found to not have infringed on Petunia’s mark, though if the case settles at this point it could create a “troubling precedent,” said Alexandra J. Roberts, a professor who teaches trademark law at the University of New Hampshire Franklin Pierce School of Law in Concord, N.H.

Roberts said she hoped other courts would continue to place the liability of trademark infringement only on the owner of a product, because the Sims lawsuit could open up lesser-known influencers to trademark infringement suits.

Multilevel marketing companies like Rodan and Fields also have less well-known people selling their products, who potentially could be liable in that case as well and might not have indemnification contracts, Roberts said.

“If you start letting companies go after those kinds of micro-influencers,” she said, “to open them up to liability for using the company’s own trademark is massively problematic to me.”

To contact the reporter on this story: Samantha Handler in Washington at shandler@bloombergindustry.com

To contact the editors responsible for this story: Renee Schoof at rschoof@bloombergindustry.com; Keith Perine at kperine@bloomberglaw.com