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

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

Advertising is oftencreated by independent contractors, which has copyright risks when things gosour. Here, the court denies summary judgment on the defendant’s impliedlicense defense, and also rejects its overreaching trademark counterclaimsabout its designer’s use of images on the designer’s social media accounts.

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

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

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

Hilber allegedly used these photographs of Malley’s artwork,as well as the hashtags “#malleys” and “#graphicdesigner,” to advertise herservices 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 thegeneral infringement/ “use in a trademark way” inquiry. Malley’s was unable toidentify anyone who was actually confused or any profit Hilber made from the uses.

Malley’s appealed to Sixth Circuit caselaw holding that continuedunauthorized use of a trademark is enough to establish likelihood of confusion.But those were terminated franchisee cases, where the defendants were providingthe same service as the franchisor. “Hilber is not holding herself out asproviding the same products as Malley’s. She is sharing Malley’s social mediaposts and displaying images of work she created.” Given the unrelatedness of thegoods or services, confusion was highly unlikely. [Courts default to sourceconfusion when they don’t like extended confusion theories, usually withouteven explaining why they aren’t addressing sponsorship/affiliation confusion.] “[N]orational trier of fact could find that Hilber, by displaying Malley’s productsand logos on her social media or personal website, likely caused confusionamong 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, thedefendants used hashtags to create a public impression their products orservices were endorsed by the trademark owner. In those case, the use ofhashtags was likely to cause confusion because the defendants were selling thesame products or services as the trademark owner and wanted to convey anassociation to obtain business. The cases are distinguishable. Hilber is notselling candy or chocolate. She is a graphic designer. She is not unfairlycompeting with Malley’s for consumers looking to buy chocolate by using thehashtag “#malleys.” Hilber has not received any

State dilution claims also failed, even though the trademarkwas “identical.”  Without evidence of “personalgain,” the court wasn’t even willing to accept that Hilber was “using” a juniormark “in commerce,” nor was there evidence of dilution. [How could there be?] “AndMalley’s cannot distinguish Hilber’s posts from the thousands of other socialmedia users that post Malley’s marks.”