Many brands value social media influencers as an authentic and relatively inexpensive way to market their goods and services to the public. A recent lawsuit involving influencer marketing, and the precedent it may set, may give both brands and influencers reason to look more closely at the terms of their relationships.
Petunia Products, Inc. v. Rodan + Fields, LLC et al.
In April of 2021, Petunia Products, Inc., (“Petunia”) which does business under the Billion Dollar Brows brand of cosmetics, sued Rodan + Fields, LLC (“Rodan”), alleging a number of causes of action surrounding Rodan’s “Brow Defining Boost” product (the “BDB Product”), which Petunia alleges infringes its registered BROW BOOST trademark. In addition to Rodan, Petunia alleged that model, actress, and cosmetics and fashion influencer Molly Sims, who ran a sponsored post on her blog about the BDB Product, was directly and contributorily liable for the infringement of the BROW BOOST mark.
Sims moved to dismiss the claims against her, arguing that her blog post was not a commercial use of the BROW BOOST trademark, and that Petunia had failed to show that the post was likely to confuse consumers as to the source of the BDB Product. In particular, Sims claimed that holding her blog post actionable as commercial use would stifle “legitimate commentary” in violation of her First Amendment rights.
While the Court dismissed several ancillary claims against Sims, it was not persuaded to dismiss the direct trademark infringement claim. First, the Court found that Sims’s blog post was not merely “legitimate commentary” but commercial, as it opens with the disclaimer “Thanks to Rodan + Fields for sponsoring this post. All thoughts and opinions are my own.” Sims’s post also contained a link to Rodan’s product site for the BDB Product so that readers could “learn more about how to purchase” the product. The Court also found that, despite Sims’s disclaimer identifying Rodan as the sponsor of the post, Petunia had sufficiently pled that there was a likelihood of confusion among readers as to the source of the BDB Product, as consumers might infer a connection between Rodan and Petunia. According to the public docket, Sims remains in the case as a defendant as of this writing.
Takeaways for Brands and Influencers
While the Petunia case has not yet been decided on the merits, the Court’s refusal to dismiss Sims from the case based on her blog post raises some important issues for consideration. By now, brands and influencers are likely aware of their obligation to clearly indicate when a post is sponsored to comply with Federal Trade Commission rules, as Sims did here. However, as the Court’s decision in the Petunia case shows, even a clearly identified sponsored post may open up the influencer to liability for infringement that the brand also faces.
When a brand and influencer are negotiating the terms of their relationship, consideration should be given to an indemnity clause as to any infringement claims arising out of sponsored posts. Brands should be aware that the cost of influencer campaigns may increase, whether in additional fees to offset a lack of indemnity or the potential cost of indemnification in a given case. To the extent they are in a position to do so, influencers (and their counsel) should request indemnity clauses in their agreements with brands and should consider investigating the products and services they are being asked to promote to avoid potential infringement issues. Investigation is of particular importance for lower-level influencers, who may lack the bargaining power to insist upon an indemnity clause in their agreement with a given brand. Whether you are a brand or an influencer, a clear understanding of the parties’ rights and responsibilities in a sponsored relationship is crucial.
Whether you are a brand engaged in influencer marketing, or an influencer who wants to make sure you are protected, do not hesitate to contact us if we can be of any assistance.