Influencers: to what extent are they allowed to lawfully portray third-party trademarks in their social media content without authorization?

A recent injunction issued by the Court of Genoa in a proceeding between Philipp Plein and Ferrari provides useful guidelines on the lawful use of third-party trademarks by influencers.

With a decision issued on February 4, 2020 (the “Decision”), the Court of Genoa drew a perimeter around the lawful use of third-party trademarks by influencers and clarified “dos and don’ts” for depicting trademarks that must be kept in mind when posting social media content.

The Decision was issued in the context of an urgent proceeding brought by world-famous car manufacturer Ferrari S.p.A. (“Ferrari”), as the petitioner, against both the well-known German stylist Philipp Plein (“Philipp Plein”) and his Swiss company, Philipp Plein International AG, as the defendants.

Background: Philipp Plein’s social media content and Ferrari’s reaction 

In July 2019, Philipp Plein posted on his Instagram profile two videos portraying (i) shoes designed by the stylist placed on the hood of a Ferrari with the car logo prominently displayed; and (ii) two young women “with skimpy clothes” washing two Ferrari cars, with Philipp Plein shoes again resting on the hoods of the cars. The captions of both videos indicated the sale price of the shoes at Philipp Plein stores, indicating that the videos had a commercial purpose.

Considering that the videos might lead consumers to believe mistakenly that Ferrari had a partnership with Philipp Plein, Ferrari sent a formal cease and desist letter to the latter. In response, Philipp Plein posted a copy of the letter received on his Instagram profile along with the image of a clown and a caption clearly mocking Ferrari: “You guys are blackmailing me – and if I don’t remove it you will do what??? Take my car away….ahahahah […] the CEO of FERRARI Louis C. Camilleri should think twice before he let his lawyer send a letter like this to a valuable costumer who bought 4 brand new Ferrari’s in the last 10 years!!!! […].” Moreover, Philipp Plein posted other statements requesting Ferrari’s CEO offer an “official apology” for this “unprofessional behavior,” and stating that it was “absolutely ridiculous” for a Ferrari fan to receive a letter like the one at-issue.

In response, Ferrari initiated an urgent proceeding before the Court of Genoa demanding that appropriate measures be taken against Philipp Plein.

However, after the urgent proceeding had begun, Philipp Plein posted a new story on his Instagram profile, promoting a pink jumpsuit from his new collection; again, the Ferrari logo was in plain sight.

In an order dated December 12, 2019, the Court of Genoa (in monocratic form) dismissed Ferrari’s demands for an urgent decision because of the lack of the urgency. [1] Ferrari then appealed the judgement and the Court, in overturning the previous judgement, found that urgent measures were needed in order to avert the very real risk that Philipp Plein could behave unlawfully again. 

 The guidelines provided by the Court on the lawful use of third-party trademarks by influencers 

According to the Court, Ferrari’s trademarks are to be considered well-known trademarks and, as such, are eligible for the more extensive protection provided by both Article 20.1.c of the Italian Code of Industrial Property (Legislative Decree No. 30 of February 10, 2005) and Article 9.2.c of the Regulation (EU) 2017/1001 on the European Union Trademark. Indeed, according to Court, these provisions grant the owner of a well-known trademark (like Ferrari) the right to prevent any third party from using the trademark for commercial purposes, even for a purpose other than identifying products and service – and therefore including the purpose of leading consumers to believe that there is a partnership between the two brands, as in the case at stake. Indeed, taking into account the specific way in which Philipp Plein’s products were depicted together with Ferrari cars, [2] the Court deemed that Philipp Plein clearly aimed to lead consumers to believe that there was some form of partnership between his brand and Ferrari. 

As a defensive argument, Philipp Plein stated that he had not used Ferrari’s trademarks for commercial purposes, but only in a descriptive way, to portray his lifestyle. In this regard, the Court states to be “aware that – from the perspective of an influencer like Philipp Plein – the representation of the influencer’s private life is as essential as the ostentatious quality of the consumer goods with which they surround themselves” and that “such ostentation inevitably implies the depiction – and, therefore, the use – of a third party’s signs.” 

As a consequence, the Court affirmed the following principle: the unauthorized use of third-party trademarks by an influencer is lawful to the extent that the images depicting the trademarks are not perceived by the general public as having commercial or promotional purposes, but as scenes that describe the influencer’s real life (or the lives of others). 

Conversely, whenever social media users may not attribute to such images a meaning other than a commercial/promotional one, the unauthorized use of a third party’s trademarks is unlawful. According to the Court, this happens when the trademark is portrayed without authorization: 

a) together with statements or captions that have a clear promotional purpose;

b) in a context mainly intended for commercial communications, such as a website or social media pages – as in the case at stake;

c) in images that per se are aimed at highlighting a product for promotional purposes and not at describing scenes of the influencer’s life or the lives of other people (e.g., “scenes where people eat, rest, walk, party on, talk, etc.”). 

In light of this, the Court found that both examples of challenged social media content fall under (at least) two of the three scenarios above. For instance, “there is no doubt that an image portraying shoes placed on the hood of a car does not describe anyone’s life […], also taking into account that there is no practical reason for placing shoes on the hood of a car.” As a consequence, such images included Ferrari’s trademarks only to take advantage of the prestigious Ferrari brand. 

Therefore, the Decision, as per Ferrari’s demands, (1) prohibited Philip Plein from using Ferrari trademarks and/or Ferrari cars, (2) ordered the immediate removal of the contested posts, and (3) set a penalty of EUR 20,000 for each infringement of the orders under points (1) and (2).

Conclusion 

The Decision highlights how important it is for influencers to pay attention when posting social media content that portrays trademarks. Indeed, it is possible to infringe a third party’s rights to a trademark even in an online context: No one is entitled to lead consumers to believe that there is a partnership between two brands without authorization for the purpose of taking advantage of the prestigious image of one of the brands.

[1] Under the Italian legal system, urgent measures may be ordered only under two conditions: that (i) there is prima facie evidence that the petitioner’s demands are well-grounded (known as “fumus boni iuris”) and (ii) there is an urgent need for a seizure order because the petitioner is suffering damages that could increase pending a full proceeding on the merits (known as “periculum in mora”).   

[2] For instance, in one post, Philipp Plein’s shoes were the same color as the Ferrari car on which they were placed.