News & Insights

Case of interest where marketing influencer may be liable for direct trademark infringement and unfair business practices claims

Jan 7, 2023

So, you thought being a marketing influencer was an avant-garde and risk-free career until you were sued for direct infringement, contributory infringement, false advertising and unlawful and unfair business practices for helping to promote a product. Petunia Products, Inc. (PPI), a cosmetics company, owned the BROWBOOST® trademark for an eyebrow product. Rodan & Fields, LLC (R&F) released a similar product called “Brow Defining Boost” and used the BROWBOOST® trademark on its packaging and in its social media marketing. R&F engaged Molly Sims, a model, to promote their eyebrow product on her blog. This practice is known as influencer marketing and the blog posting is considered a sponsored blog. Sims used the hashtag #BROWBOOST when marketing the product. In Petunia Products, Inc. v. Rodan & Fields, LLC and Molly Sims, 8:21-CV-00630, 2021 WL 6286486 (C.D. Cal April 5, 2021), PPI sued defendants for federal trademark infringements, contributory infringement, false advertising, and unlawful and unfair business practices under the California Business & Professions Code.

Sims moved to have the case against her dismissed. The U.S. District Court for the Central District of California found the defendants’ use of BROWBOOST®: (i) caused confusion, mistake and deception in that consumers are likely to believe defendants are associated with PPI’s product; (ii) constituted unfair competition and designation of origin; and (iii) diluted the distinctive qualities of the trademark lessening the capacity of BROWBOOST® to identify and distinguish PPI’s product in the marketplace. The Court held that Sims, as an influencer, is “presumed to have the power to affect the purchase of others” and can be sued for trademark infringement even though the trademark was supplied to her by R&F. The court dismissed the contributory infringement and false advertising claims against Sims but denied the motion to dismiss the direct infringement and unfair business practices claims

While the parties involved in this case recently settled (7/2022), the case boosted the brows of third-party influencers in response to their potential liability for marketing products and emphasizes the importance of conducting due diligence before agreeing to endorse products on social media platforms.

No information in this communication is intended to constitute specific legal advice. For specific legal advice, please contact an attorney, and if you have any such questions or would like more information about this issue, please contact William “Pat” Huttenbach at 713.752.8616, or email at phuttenbach@craincaton.com.

ANNOUNCEMENT – Also, I am currently looking for a Banking Litigation Associate with five or more years of litigation experience. (See Banking Litigation Associate). If you know of an attorney interested in joining my team and working directly with me, please have them contact me directly or send their resume, in strict confidence, to employment@craincaton.com.

Thanks,

Pat

Petunia Products, INC.