What’s in a name? Influencer Influence Brand Name Disputes Provide Lessons for the New Year on Clarity of Agreements | Dorsey & Whitney LLP

Many industries were negatively affected by the pandemic in 2020, but one industry that continues to grow is the influencer marketing industry. The influencer marketing model typically involves deals between companies and influencers, where the influencer creates content that promotes the companies’ products for social media posts and blogging sites. Influencers have often built their brands, social media accounts, and blogging sites under their own names, and businesses want to access the loyal fan base drawn to these names. However, as the disputes shared on Instagram this year illustrate, it is not always clear which party the brand, social media accounts or products bearing the influencer name belong to. As the New Year dawns, businesses and influencers can learn about clarity in intellectual property and social media deals when engaging in influencer marketing.

Two weeks ago, famous wedding dress designer Hayley Paige Gutman (known as “Hayley Paige”) posted on Instagram regarding a dispute arising out of an employment contract between her and the marriage house JLM Couture, Inc., her former employer.

JLM recently filed a lawsuit against Hayley Paige in the Southern District of New York City, citing breach of contract, conversion and brand dilution, among other claims.

The complaint alleges that an employment contract between JLM Couture and Hayley Paige provides that Hayley Paige has granted JLM “the exclusive worldwide right and license to use her name ‘Hayley’, ‘Paige’, ‘Hayley Paige Gutman’, ‘Hayley Gutman’, ‘Hayley Paige’ or any derivative thereof (collectively the ‘name of the designer’) in connection with the design, manufacture, marketing and / or sale of bridal wear, bridal accessories and related bridal and wedding items, including and [sic] any goodwill attached thereto for the duration of the Agreement and for a period of two years thereafter ”. The complaint also alleges that Hayley Paige irrevocably sold, assigned and transferred all rights, title and interest to JLM to register her name as a trademark. JLM alleges that Hayley Paige agreed that she would not have the right to use her name during the term of the employment contract or at any time thereafter without JLM’s consent. Based on these provisions, JLM alleges that it has social media accounts bearing the name Hayley Paige.

The main social media account at issue – @misshayleypaige – features a mix of content and personal images related to the bride and the wedding, and has more than one million followers. JLM alleges that the account was created as part of its marketing strategy, and therefore the number of subscribers on the account is a direct result of JLM Couture’s advertising spending. JLM maintains that assisting Hayley Paige in collaborative account maintenance is part of his employment under the employment contract.

The Federal Court for the Southern District of New York granted JLM’s request for a temporary injunction against Hayley Paige, barring the designer from making changes and posts to social media accounts bearing her name, including the accounts @misshayleypaige Instagram, Pinterest and TikTok. The court also ordered Hayley Paige to provide JLM with the login credentials for these social media accounts.

In two videos with over 2 million combined views posted to a separate account, Hayley Paige said she resigned from JLM Couture after a year and a half of legal battle to negotiate a new contract with JLM. Hayley Paige said she had always considered the @misshayleypaige Instagram account to be her own since opening the account, and the employment contract made no mention of social media accounts or their management. Hayley Paige said the @misshayleypaige Instagram account has always been used for her own personal photos, thoughtful quotes and real relationships. Meanwhile, Hayley Paige has noted that she no longer posts or engages on social media accounts bearing her name until the dispute is resolved in court.

While the dispute between Hayley Paige and JLM Couture focuses on the scope of an employment contract and the use of an employee’s name, companies and influencers can also learn from a business dispute involving the using the name of a vegan chef.

Last year the winner of the television competition Cupcake wars and recently vegan chef Chloe Coscarelli (known as “Chef Chloe”) job on Instagram that she won a lawsuit with her business partner, ESquared Hospitality LLC (“ESquared”) in May. Chef Chloe rose to fame after winning the TV contest Cupcake wars, and has since written cookbooks, made other television appearances, made an impact on the vegan food scene and pioneered the concept of a casual, fast-paced vegan restaurant chain named after her – “by Chloe”. Chef Chloe is 100% owner of the California limited liability company Chef Chloe LLC.

As part of his limited liability company, Chef Chloe has filed for arbitration against his business partner ESquared, seeking a judgment declaring that Chef Chloe still owns 50% of the interest in the “by Chloe” restaurants. Chef Chloé also sought a permanent injunction prohibiting her business partner from selling packaged food or beverages using the name “Chloé” or any variation thereof, including the “by Chloé” brand, for projects other than quick and casual vegan restaurants.

The arbitration involved the terms of an operating agreement between Chef Chloe LLC and ESquared. One of the issues raised in the arbitration was whether, under the operating agreement, vegan restaurants had the unlimited right to expand their use of the “by Chloe” brand without obtaining the chef’s consent. Chloe because Chef Chloe LLC was terminated as a member. The arbitrator concluded that the operating agreement did not deprive Chef Chloe of approval rights for future expansion of the use of the mark as one of his penalties for termination as a member. The arbitrator said Chef Chloe must “respect the agreement she made with the company to continue using her first name as the name of the quick and laid back vegan restaurant, but likewise [her business partner] must abide by the terms of the agreement he made with Chef Chloe not to extend the use [of] the brand beyond quick and casual dining without obtaining its prior approval. The arbitrator also awarded a full and undiluted 50% interest in the restaurant chain. Thus, Chef Chloé retains the rights of approval for the use of her name, even if she does not actually own the mark.

Businesses and influencers can also learn from a disagreement arising from control of a blog turned clothing brand of an influencer bearing the influencer name.

Last June, influencer Julia Berolzheimer job on Instagram that she would no longer use the name of the blogging content creation company she started following a disagreement with her business partner. Julia Berolzheimer is a successful influencer known worldwide with 1.4 million Instagram followers. Julia launched her brand, “Gal Meets Glam”, as a personal style blog. The blog was transformed into a content creation business, which then grew into a clothing brand bearing the name of the blog – the Gal Meets Glam collection. Despite the brand’s success, Julia Berolzheimer announced on her Blog that the Gal Meets Glam collection would come to an end. Julia Berolzheimer said the decision to end the Gal Meets Glam collection stemmed “from the long disagreement between how we wanted to build Gal Meets Glam and how our business partner thought it should be managed.” Julia informed her subscribers that her content will now fall under her own name, rather than the name Gal Meets Glam.

These three disputes over individual names used as trademarks involve different types of agreements in various circumstances, but there are general lessons that businesses and influencers can apply when engaging in influencer marketing over the course of time. of the new year.

Agreements arising from partnerships with influencers should clearly delineate social media accounts and blogging sites, rather than expanding intellectual property provisions in general terms to encompass such accounts. Ownership of the social media account (both during the term and after expiration of the agreement), management of the social media account, account name and approval of the content must be specified in the agreement and employment policies, where applicable. This way, the company and the influencer are clear about the roles and expectations surrounding names functioning as brands for the new year and beyond.

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