A pending trademark infringement lawsuit that facilities on an eyebrow “boosting” gel may have some critical implications for influencers and different well-known endorsers. In an order this month, a California federal decide held that a celebration enlisted to endorse a product could also be accountable for trademark infringement for selling a product with an allegedly infringing identify. That is what Judge Cormac Carney of the U.S. District Court for the Central District of California said in an August 6 order granting partially – and denying partially – the movement to dismiss that model-slash-beauty/wellness determine Molly Sims filed in response to the case waged towards her and Rodan & Fields over their advertising of a product known as “Brow Defining Boost.”
In the trademark infringement and dilution criticism that it filed in April, Petunia Products (“Petunia”) alleged that in July 2020, Rodan & Fields launched its “Brow Defining Boost” eyebrow gel product, which Petunia claims infringes the “Brow Boost” trademark that it has been “extensively, solely, and repeatedly” utilizing in reference to its Billion Dollar Brows forehead primer and conditioner for almost 20 years. As a results of such use, Petunia claims that “shoppers have come to acknowledge and determine the BROW BOOST TRADEMARK” with its model, and thus, “precise and/or potential shoppers are/had been prone to be confused and/or truly deceived by the defendants’ unauthorized exploitation” of the mark.
To make issues worse, Petunia asserted in its criticism that Rodan & Fields enlisted Sims to endorse the “Brow Defining Boost” product, together with by “running a blog about and selling the infringing [Rodan & Fields] product” on her web site. With such promotion in thoughts, Petunia named Sims in its criticism, asserting that like Rodan & Fields, she can be on the hook for direct and contributory trademark infringement, in addition to trademark dilution, unfair competitors, and false promoting.
Sims sought to flee the swimsuit by the use of a movement to dismiss in July, during which she argued, as summarized by Judge Carney, that “legal responsibility for trademark infringement shouldn’t cowl third events, like her, that writer sponsored blogs a few product with out confirming that the product doesn’t violate trademark rights.” Among different issues, Sims additionally asserted that Southern California-based Petunia didn’t sufficiently present that buyers are prone to be confused in regards to the supply of Rodan & Fields’ product because of her weblog publish, or that she used the “Brow Boost” mark in commerce when she revealed a weblog publish in regards to the product, and that if a courtroom finds in any other case, “legit commentary” is prone to be stifled.
In essentially the most hanging a part of his August 6 order, Judge Carney refused to dismiss Petunia’s direct trademark infringement and unfair competitors claims; he tossed out the contributory trademark infringement and Cal. Bus. & Prof. Code § 17500 claims, however gave Petunia the chance to amend its criticism in reference to the latter causes of motion, thereby, leaving room for Petunia to attempt to plausibly allege these claims for a second time.
Direct Trademark Infringement
Keeping the direct trademark infringement declare in place, Judge Carney held that Petunia did, in reality, set up that: (1) Sims “used [its] trademark in commerce,” and that (2) “her use was prone to confuse prospects as to the supply of the product.”
Addressing the primary level, the courtroom said that regardless of Sims’ declare that Petunia didn’t sufficiently plead that she used the Brow Boost mark in commerce, it may be “fairly inferred” from the plaintiff’s allegations and from Sims’ weblog publish, itself – which included a hyperlink to buy the “Brow Defining Boost” product – that Sims’ use of the mark “was in reference to the commercial of a product.” Given that Sims’ weblog publish is kind of clearly “a paid commercial,” Judge Carney held that “she thus crossed from protected client commentary” – corresponding to the usage of one other’s mark in a publish that’s “crucial of [that party’s] enterprise” and that doesn’t instantly hyperlink to any business websites – “to business use.”
As for the important thing chance of confusion ingredient, the courtroom once more sided with Petunia, pointing to the similarity between the identify of the “Brow Defining Boost” product and the “Brow Boost” trademark, and past that, stating that in her sponsored weblog publish, Sims “promoted a product which competes with the plaintiff’s product, sounds just like the plaintiff’s product, and is marketed by means of related channels as these utilized by the plaintiff.” In regards to Sims’ argument that there’s little chance of confusion as a result of she explicitly recognized Rodan & Fields (and never Petunia) because the supply of the “Brow Defining Boost” product, the courtroom was not persuaded, holding that “figuring out Rodan & Fields because the supply doesn’t essentially imply a client is not going to infer an affiliation between Rodan & Fields and the plaintiff.”
Still but, the courtroom shut down Sims’ argument towards the potential for confusion on the premise that she “ignores the chance of reverse confusion, which ‘happens when shoppers coping with the senior mark holder consider that they’re doing enterprise with the junior one.’” In truth, Carney asserts that by “attributing ‘Brow Defining Boost’ to Rodan & Fields within the weblog publish,” Sims may very well be “enhanc[ing], fairly than eliminat[ing] the chance that future prospects of the plaintiff may mistakenly consider they’re coping with Rodan & Fields.”
And with that in thoughts, the courtroom refused to toss out the direct trademark infringement declare. Petunia has 14 days to amend its criticism to bulk up its contributory trademark infringement and Cal. Bus. & Prof. Code § 17500 claims.
While it “could also be too early to inform whether or not including influencers as defendants in trademark lawsuits will develop into the norm,” Buchalter attorneys Matthew Seror and Michael Worth state that such a possible shift “may carry with it numerous implications for each influencers and types.” For one factor, it could name on influencers “to carry out extra due diligence on the merchandise or manufacturers they’re agreeing to endorse,” and should require them “to insist on sturdy indemnity provisions of their sponsorship agreements” if they don’t seem to be doing so already. Finally, it could even encourage extra subtle influencers and/or their administration “to discover whether or not one of these legal responsibility could also be topic to – and coated by – enterprise insurance coverage.”
In any occasion, Seror and Worth assert that the speedy development of the influencer advertising sphere – spending on which is anticipated to surpass $3 billion this yr, in keeping with eMarketer – and the adoption of this type of advertising by manufacturers “opens up the potential for authorized obstacles for manufacturers and influencers,” alike.
The case is Petunia Products, Inc. v. Rodan & Fields, et. al., 8:21-cv-00630 (C.D. Cal.)