Model faces TM infringement suit over ‘brows’ blog
Actress and model Molly Sims will face trademark infringement and consumer confusion claims in a lawsuit over a sponsored blog post about an eyebrow product.
The original complaint, filed with the US District Court for the Central District of California, says that Sims committed trademark infringement and falsely advertised Rodan and Fields’ “Brow Defining Boost” product in a blog post.
The action was bought by Petunia Products, the owner of the “Brow Boost” trademark which is used in connection with its “Billion Dollar Brows” product. Petunia claims that Rodan & Fields product infringes its mark and argues Sims is liable for promoting the infringing product.
Sims moved to dismiss the action, disputing Petunia’s claims of direct infringement, contributory infringement, false advertising and unlawful and unfair business practices.
District Judge Cormac Carney granted Sims’ motion to dismiss the contributory infringement claims and false advertisement claims but denied her motions to dismiss the business practice and likelihood of confusion claims, in an order handed down on Friday, August 6.
Petunia will have 14 days to amend its dismissed claims.
Motion breakdown
Sims argued against the direct infringement claims, saying that Petunia had not provided sufficient evidence that she had used the infringing trademark in commerce. Carney disagreed, claiming that it is “reasonably inferred” from Petunia’s complaint that the blog post was paid advertisement.
As part of the motion to dismiss the direct infringement claim, Sims disputed Petunia’s likelihood of confusion case, relying on precedent in Tiffany v eBay, to demonstrate that Petunia had not sufficiently pled that the blog post is likely to confuse customers. However, the court said her reliance on the case was “misplaced”, saying that, in that specific case, eBay had used the Tiffany trademark to describe products on its website.
“Sims is not trying to advertise or resell Plaintiff’s product, in which case she might have a legitimate need to use the trademark. Rather, she advertised Rodan and Field’s competing product,” Carney explained.
However, the contributory infringement claim was dropped as Sims claimed that she had no knowledge of the alleged infringement of the product she was advertising. Also, Petunia failed to convince the court that Sims had received a cease and desist letter so the false advertising claim was also dropped.
Finally, Sims moved to dismiss the unlawful and unfair business claim, relying on the same argument for the direct infringement claims. Because the court did not dismiss the direct infringement claims, it refused to drop the business claim.
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