graphic designer's photos and hashtag using former client's name didn't infringe TM

Hilber v. Malley’s Candies, Inc., 2025 WL 2402329, No. 1:22-CV-02305 (N.D. Ohio Aug. 19, 2025)

Advertising is often created by independent contractors, which has copyright risks when things go sour. Here, the court denies summary judgment on the defendant’s implied license defense, and also rejects its overreaching trademark counterclaims about its designer’s use of images on the designer’s social media accounts.

Malley’s is a chain of candy and confectionary stores in Northeastern Ohio, and Hilber is an independent consulting graphic design artist. Hilber charged Malley’s an hourly rate of $50 per hour to perform the graphic design work for advertising campaigns, with no written agreement. Malley’s purchased a camera for her to use to create photography and artwork for advertising campaigns. Between 2018 and 2021, she invoiced Malley’s for more than $230,000. She provided print-ready files, not the native files, and was the only one to make modifications. The relationship broke down and produced this lawsuit.

Malley’s previous graphic designer independent contractors didn’t think they owned their work for Malley’s. (They were wrong, but that expectation is highly relevant to the implied license.)

The court denied summary judgment on the implied license for continued use/modification. Malley’s also counterclaimed against Hilber’s use of photographs of Malley’s products on her Instagram and Facebook accounts and on her website:

Instagram

Website

Facebook, I think

Hilber allegedly used these photographs of Malley’s artwork, as well as the hashtags “#malleys” and “#graphicdesigner,” to advertise her services as a graphic designer.

The court was unconvinced. Since we’re in the Sixth Circuit, what might be considered nominative fair use elsewhere is just mushed into the general infringement/ “use in a trademark way” inquiry. Malley’s was unable to identify anyone who was actually confused or any profit Hilber made from the uses.

Malley’s appealed to Sixth Circuit caselaw holding that continued unauthorized use of a trademark is enough to establish likelihood of confusion. But those were terminated franchisee cases, where the defendants were providing the same service as the franchisor. “Hilber is not holding herself out as providing the same products as Malley’s. She is sharing Malley’s social media posts and displaying images of work she created.” Given the unrelatedness of the goods or services, confusion was highly unlikely. [Courts default to source confusion when they don’t like extended confusion theories, usually without even explaining why they aren’t addressing sponsorship/affiliation confusion.] “[N]o rational trier of fact could find that Hilber, by displaying Malley’s products and logos on her social media or personal website, likely caused confusion among consumers seeking to purchase Malley’s products.”

Hilber’s use of the hashtags “#malleys” and “#graphicdesign” in Instagram posts was also ok:

 

In the cases Malley’s cites, the defendants used hashtags to create a public impression their products or services were endorsed by the trademark owner. In those case, the use of hashtags was likely to cause confusion because the defendants were selling the same products or services as the trademark owner and wanted to convey an association to obtain business. The cases are distinguishable. Hilber is not selling candy or chocolate. She is a graphic designer. She is not unfairly competing with Malley’s for consumers looking to buy chocolate by using the hashtag “#malleys.” Hilber has not received any

State dilution claims also failed, even though the trademark was “identical.”  Without evidence of “personal gain,” the court wasn’t even willing to accept that Hilber was “using” a junior mark “in commerce,” nor was there evidence of dilution. [How could there be?] “And Malley’s cannot distinguish Hilber’s posts from the thousands of other social media users that post Malley’s marks.”