The Case of the Caterpillar Cakes: Why Legal Protection for a Shape is So Hard to Come By

A very hungry caterpillar (image via Flickr)

By Prof. Stavroula Karapapa and Dr. Alexandros Antoniou, School of Law, University of Essex

UK retailers Marks and Spencer (M&S) and Aldi have finally called a truce to the trademark-based legal spat pitting their caterpillar cakes, Colin and Cuthbert, against each other. While details of the settlement have not been made public, Aldiโ€™s Cuthbert will not reportedly return in quite the same form. As Aldi tweeted, upon announcing that an agreement had been reached:

Colin the Caterpillar, a roll sponge cake decorated with milk and white chocolate icing and sprinkles, has been an M&S stalwart for more than 30 years. The retailer claims to have sold more than 15 million to date. Since 2011, rival products with similarly alliterative names have appeared: Asdaโ€™s Clyde, Tescoโ€™s Curly, Waitroseโ€™s Cecil, Co-opโ€™s Curious and Cuthbert.

In April 2021, presumably because it was thought that, of all the caterpillar cakes, Cuthbert most closely resembled Colin, M&S launched legal proceedings to protect its intellectual property and get Aldi to remove the product from its shelves. The retailer claimed that the similarity between the two cakes would lead consumers to think that they were of the same standard, thereby allowing Cuthbert to ride on Colinโ€™s coattails.

Companies often seek to protect, as trademarks, certain signs that help them distinguish their products and services from those of their competitors, such as brand names, logos and slogans. Along with patents (which protect innovative technical solutions) and copyright (which protects creative or intellectual works such as books and music), they are a form of intellectual property.

The Colin v Cuthbert dispute hinges specifically on trademarks, because it related to the distinctive characteristics of commercial assets. M&S has held trademarks in the UK in relation to Colinโ€™s name and green packaging since 2009 and 2020 respectively, but these have not been infringed.

The problem for M&S is that its trademark would probably not extend to the underlying idea of a chocolate roll with a smiley face on it. Securing protection for the shape of a product is actually quite difficult in trademark law โ€“ not to mention proving that a competitor has presented his goods as those of somebody else.

The four-finger-shaped KitKat chocolate bar and the shape of the London taxi are two examples of iconic shapes that have not succeeded. One key reason behind this is that the average consumer doesnโ€™t usually make assumptions about the origin of products on the basis of their shape, or that of their packaging, when other graphic or word elements are absent.

Caterpillar cakes have seen decades of children grow up (image via Flickr)

Passing Off

There have been cases in the UK where shapes and packaging have attracted protection under what jurists refer to as the law of passing off. Passing off offers legal protection against harm to what is termed the โ€œgoodwillโ€ of a business. And it can be used to protect unregistered trademarks.

Goodwill here is a legal concept, which refers to a businessโ€™s means of attracting peopleโ€™s custom. It is harmed when a trader suggests โ€“ through misdescription on packaging or parasitic copying of a well-known product โ€“ that their product or service has some association or connection with another trader, when this is not the case.

In 2015, pop-star Rihanna famously won her battle to stop fashion brand Topshop using an unlicensed image of her on a T-shirt. She did so by convincing a judge that customers buying the top would think she had endorsed it. The Court of Appeal ruled that the unauthorised use of her photograph amounted to passing off.

Passing-off claims are notoriously difficult to establish. If someone promotes their bottled drinking water business as โ€œthe De Beers of still waterโ€, they may be infringing the De Beers trademark but it is unlikely that a judge would find that they were passing themselves off as connected to De Beers in any commercial sense.

To win a passing-off claim against Aldi, M&S would have essentially had to prove that Colin had built up such a reputation as a signature product โ€“ in the same way that Rihanna had done as a music artist and style icon โ€“ that customers would be able to recognise it without difficulty. The retailer would also have had to prove that Cuthbert was so similar to Colin that consumers, after opening the packaging, would be misled into thinking that the two were somehow associated.

What is more, the fact that so many supermarket chains now have their own version of a caterpillar cake โ€“ coming in a variety of sizes and decorative features โ€“ would not have helped in establishing that Colin is unique. M&S would have had to prove that in the minds of cake buyers in the UK, the caterpillar has not become a generic shape for cakes.

Further, Aldiโ€™s excellent Twitter campaign โ€“ and the widespread publicity the lawsuit has attracted โ€“ will have also contributed to dispersing any consumer confusion.

Lastly, it would have been difficult for M&S to argue that Aldiโ€™s caterpillar cake had damaged or had the potential to damage the goodwill in Colin โ€“ that is, its power to attract and retain buyers of the cake. The market for caterpillar cakes is saturated: there are just so many to choose from.

The agreed settlement between the two parties means there was no court judgement on the facts. The terms of the settlement remain confidential. It is unknown whether liability โ€“ that is, blame โ€“ was admitted by Aldi for the wrong allegedly suffered by M&S.

Rarely does a party in a settlement walk away thinking, I have won. Typically, there is no winner and no loser in a negotiated resolution. This case will nonetheless have seen both M&S and Aldi benefit from the kind of marketing exposure that money cannot readily buy.

This article was first published on The Conversation and is reproduced on the ELR Blog under a Creative Commons Licence. View the original article here.

Licensing System for 3D Printing in China

Source: PxFuel

James Griffin (Associate Professor, University of Exeter), Onyeka Osuji (Professor, University of Essex), and Hing Kai Chan (Professor, Nottingham University Business School China) have developed a digital watermarking technology that enables the tracking and tracing of 3D Printing (3DP) content, from its creation through to its destruction.

A watermark is embedded into creative content; the team’s research made the technology easier to implement and difficult to remove, thus enabling new forms of 3DP works.

The technology was successfully demonstrated operating at a conference in China in 2017 and received widespread and acclaimed international press and television coverage. It has been granted a patent in China in August 2020.  

The research team’s next task, with James Griffin as principal investigator in the impact follow on research, is to develop the technology further for implementation into licensing systems. They will do this with two China-based companies. The AHRC awarded Griffin, Osuji, and Kai Chan ยฃ65,774 for the project.

Professor Osuji’s role is mainly to apply contract law to 3D printed watermarks, provide training sessions concerning contracts and lead the development of the best practice code.  

Attaching the technology to an existing licensing platform will allow for the use of 3DP content in new creative ways, leading to new artistic forms. For example, the technology could be attached to 3DP materials themselves, resolving an ongoing problem in ensuring the quality of materials that are used for printing. This could allow for more complex artistic works; it could even lead to organic works involving 3DP biological material.

The technology would open up new markets, even overcoming existing regulatory hurdles. This is because the technology would enable right holders to guarantee sources of materials and can be used to check if the structure of a 3DP object has changed internally. 

More details about the project can be found here.

Who Killed the Radio Star? How Music Blanket Licensing Distorts the Production of Creative Content in Radio

Photo by Eric Nopanen

According to popular and scholarly belief, video killed the radio star. The golden age of radio, culminating in the 1930s and 1940s, was gone with the rise of television in the 1950s and 1960s.

In their new article, titled โ€˜Who Killed the Radio Star? How Music Blanket Licensing Distorts the Production of Creative Content in Radioโ€™ and published in the American University Law Review, Dr. Eden Sarid, Lecturer in Law at the University of Essex and Prof. Ariel Katz, Associate Professor at the Faculty of Law, University of Toronto, advance the argument that televisionโ€™s role in the โ€œdeathโ€ of the radio star has been more limited than commonly believed.

A major culprit, the authors argue, is the common licensing practice of musical content for broadcasting, or more precisely, the blanket license issued by copyright collective management organizations (CMOs). CMOs offer all-you-can-eat blanket licenses that allow broadcasters to use as many songs from the CMOโ€™s repertoire as they like for a fixed fee.

Thus, by setting a zero marginal price for broadcasting additional songs from the CMOโ€™s repertoire, CMOsโ€™ blanket licensing drives commercial radio stations to dedicate a larger portion of their programming to the broadcasting of recorded songs and to reduce the time and resources spent on producing or procuring other content.

The article then reveals that the analysis of blanket licenses should not be limited to their static effects (i.e., the trade-off between lower transaction costs and supra-competitive pricing), but it should also include the dynamic effect of blanket licensing on the type and quality of content production.

This dynamic effect also poses a challenge for copyright law and policy: while collective licensing may be beneficial to one class of copyright holders, it may hinder the production of other content and harm creators of such content, by depriving them of important opportunities for market and cultural participation.

Moreover, the article provides a novel explanation for the well-documented phenomenon of the โ€œdeathโ€ of the radio star and re-evaluates some of the existing explanations.

Finally, the authors discuss some alternative models for music licensing that can mitigate the distortion created by blanket licenses.

A copy of the article can be accessed on the Universityโ€™s research repository.

Success at the SLS ‘Make the News’ Competition

On 30 June 2021, the Society of Legal Scholars (SLS) announced that Dr. Eden Sarid, Lecturer in Law at the University of Essex, was one of the winners in its Make the News competition for his project Freeing Our Cultural Treasures from a Copyright Limbo.

The SLS’ competition presents early career researchers with a unique experience to learn more about getting your research noticed by a wider audience. A meeting will now be scheduled for all four of the winners to make their pitches to the judging panel of Catherine Baksi (The Times and The Guardian), Joshua Rozenberg QC (BBC, Law Society Gazette) and Thom Brooks, the SLS President.

In a statement to our Research Blog, Dr. Sarid explained that his project:

โ€˜aims to propose a novel solution to a major copyright challenge, of orphan works. Orphan works are items – such as photos, music, or books – which are subject to copyright, but whose copyright owners cannot be located and therefore permission to use the works cannot be granted. Currently in the UK, a limited licensing scheme results in millions of orphan works remaining unavailable to the public. Based on a theoretical examination of copyright justifications, the project advances a framework that will allow public access to these works.โ€™

Look out for Dr. Sarid making the news in coming weeks and months!

University of Essex Academics Respond to the European Commission Consultation on Digital Cultural Heritage

Photo by Roman Kraft

Professor Stavroula Karapapa, University of Essex, School of Law

Digitisation has enabled access to and availability of cultural heritage to an extent previously unknown and, in addition, it has enhanced preservation and modern research opportunities, e.g. through text mining and data analytics. The availability of and access to cultural materials in digital form can provide significant support to conservation, renovation, research, study and promotion of cultural assets and, in this regard, digital cultural heritage can serve as a resource for education, enjoyment or re-use, including use towards the development of new knowledge. The need for digital transformation has been revealed and become as relevant as ever as a result of the COVID-19 pandemic. Despite its benefits, the digitisation of cultural heritage challenges traditional legal norms, such as copyright law.

Colleagues from the School of Law, in collaboration with staff from the Universityโ€™s Library Services and University Archives, have contributed to a consultation of the European Commission on Digital Cultural Heritage.

In their position paper, they recommend that digitisation should enable preservation of cultural artefacts, including world heritage properties, access to the public, and accessibility by people with special needs and educational institutions.

They also recommend that law and policy should offer further support to cultural institutions towards developing digitisation initiatives (e.g. the legislative framework on orphan works should be revisited in terms of its breadth and parameters of application).

They warn against the creation of digital monopolies (e.g. public domain material should remain in the public domain after digitisation) and urge for the development of legal provisions ensuring the security of computer infrastructure both to safeguard digital culture and avoid the spread of misinformation.

Click below to download a copy of the position paper:

If I could turn back time: the confusion between two TENETs and the role of trade marks

Image from Wikimedia Commons, the free media repository

Dr. Alexandros Antoniou, Lecturer in Media Law, University of Essex

Christopher Nolanโ€™s much-anticipated โ€œmind-bendingโ€ film Tenet was released in the UK in late August 2020 to mixed reviews. Nevertheless, it performed well internationally. This is not, however, surprising for Nolan, whose blockbusters Inception, Dunkirk and The Dark Knight trilogy saw massive box office returns.

โ€œThe story [in Tenet] takes on ideas of time and how we experience it โ€“ interacting a science fiction component with the classic elements of the spy genreโ€, Nolan said. The first trailer of the movie arrived with a simple title logo in which the last two letters, i.e. E and T, were inverted, making an indirect reference to the concept of time inversion which provides a framework for the filmโ€™s plot.

When the first trailer dropped in December 2019, a bicycle components brand based out of Bellingham in the US state of Washington, also named Tenet, published the following post on Instagram:

View this post on Instagram

๐Ÿฑ/๐Ÿฎ๐Ÿฑ/๐Ÿฎ๐Ÿฌ ๐—จ๐—ฃ๐——๐—”๐—ง๐—˜: ๐—”๐—ฝ๐—ฝ๐—ฎ๐—ฟ๐—ฒ๐—ป๐˜๐—น๐˜† ๐—œ ๐—ป๐—ฒ๐—ฒ๐—ฑ ๐˜๐—ผ ๐—ต๐—ถ๐—ด๐—ต๐—น๐—ถ๐—ด๐—ต๐˜ ๐˜๐—ต๐—ฎ๐˜ ๐˜๐—ต๐—ถ๐˜€ ๐—ฝ๐—ผ๐˜€๐˜ ๐—ถ๐˜€ ๐—ป๐—ฒ๐—ฎ๐—ฟ๐—น๐˜† ๐Ÿฒ ๐—บ๐—ผ๐—ป๐˜๐—ต๐˜€ ๐—ผ๐—น๐—ฑ. ๐—ฆ๐—ถ๐—ป๐—ฐ๐—ฒ ๐—ฝ๐—ผ๐˜€๐˜๐—ถ๐—ป๐—ด ๐˜๐—ต๐—ถ๐˜€ ๐— ๐—ฟ. ๐—ก๐—ผ๐—น๐—ฎ๐—ป ๐—ฎ๐—ป๐—ฑ ๐—ช๐—• ๐—ต๐—ฎ๐˜€ ๐—ฏ๐—ฒ๐—ฒ๐—ป ๐—ถ๐—ป ๐—ฐ๐—ผ๐—ป๐˜๐—ฎ๐—ฐ๐˜ ๐˜„๐—ถ๐˜๐—ต ๐˜‚๐˜€ ๐—ฟ๐—ฒ๐—ด๐—ฎ๐—ฟ๐—ฑ๐—ถ๐—ป๐—ด ๐˜๐—ต๐—ฒ ๐˜€๐—ถ๐˜๐˜‚๐—ฎ๐˜๐—ถ๐—ผ๐—ป. ๐—œ๐—ณ ๐˜†๐—ผ๐˜‚ ๐˜„๐—ผ๐˜‚๐—น๐—ฑ ๐—น๐—ถ๐—ธ๐—ฒ ๐˜๐—ผ ๐—ฟ๐—ฒ๐—ฎ๐—ฑ ๐— ๐—ฟ. ๐—ก๐—ผ๐—น๐—ฎ๐—ปโ€™๐˜€ ๐—ฒ๐—บ๐—ฎ๐—ถ๐—น ๐—ฎ๐˜€ ๐˜„๐—ฒ๐—น๐—น ๐—ฎ๐˜€ ๐—ผ๐˜‚๐—ฟ ๐—ฟ๐—ฒ๐—ฝ๐—น๐˜† ๐—ถ๐—ป ๐˜๐—ต๐—ฒ๐—ถ๐—ฟ ๐—ฒ๐—ป๐˜๐—ถ๐—ฟ๐—ฒ๐˜๐˜† ๐˜„๐—ฒ ๐—ต๐—ฎ๐˜ƒ๐—ฒ ๐—ฝ๐—ผ๐˜€๐˜๐—ฒ๐—ฑ ๐˜๐—ต๐—ฒ๐—บ ๐—ผ๐—ป ๐—ผ๐˜‚๐—ฟ ๐˜„๐—ฒ๐—ฏ๐˜€๐—ถ๐˜๐—ฒ. โ€ข ORIGINAL POST FROM 2019 -> No, despite the striking similarities, we are not making a movie with Christopher Nolan. Maybe it was a coincidence, or maybe Nolan was inspired by our branding; regardless the apparent negligence is frustrating to say the least. Thank you to all the people that have reached out in support of Tenet (the bike brand). When we became aware of this, our biggest fear was that many of our peers who havenโ€™t heard of Tenet (the bike brand, shit this is going to get old quick) might think WE stole the logo from Nolan, when in reality, we launched long before this movie was announced. If you would like to share this post to help spread the word, it would be greatly appreciated. Iโ€™m sure one day weโ€™ll all look back on this and shake our heads in disbelief. #supportriderowned #damntheman

A post shared by TENET COMPONENTS โ„ข๏ธ (@ride_tenet) on

Christopher Nolan was seemingly unaware that a strikingly similar logo was already being used by the bicycle making company. Tenet Bicycles holds a registration for the mark (USPTO, registration number 5581507) since 9 October 2018, i.e. prior to its adoption for the film. However, in trade mark law, this registration only protects them from the use of the word within the biking industry.

The core aim in registering a trade mark is to acquire a monopoly right over a sign that distinguishes a traderโ€™s goods or services from those of others. But, that sign gives in principle protection in the class or classes of goods and services for which it is registered (there are 45 classes under the NICE classification system). For instance, the name Lloyds is used in various classes: a bank, a pharmacy chain and an insurance market, but only one bank, one pharmacy chain, etc. can register the mark Lloyds. Special rules apply, however, to very strong and vulnerably famous marks, which are afforded in trade mark law stronger protection against use by third parties, even on dissimilar goods or services and even if no confusion will arise on the part of the average consumer.

In the case at issue, there was understandably a real concern that people unfamiliar with the Washington-based brand, which launched in June 2018, would think that the recently established company attempted to ride on the coat-tails of the logo used to promote the forthcoming film of a reputable director in order to benefit from its prestige and power of attraction. Being minded to mitigate the risk of confusion, the founder of Tenet Bicycles, Tyler Deschaine, said in a public statement:

I donโ€™t have any issue with them using the word Tenet, there are thousands of trademarks for that word across dozens of industries. My issue is with the stabilization, but that is neither here nor there. Iโ€™ve spoken with lawyers and despite the validity of my concerns; Iโ€™ve been advised not to pursue it. Even sending a letter could potentially open myself up to a pre-emptive lawsuit from Warner Brothers. These sorts of things can get dragged on for years and the legal fees can go well into the hundreds of thousands of dollars. Weโ€™re a tiny component company that is taking baby steps to carve out a place for ourselves in the industry. We in no way want to get raked through the coals of litigation. That would end poorly for us. Also, weโ€™ve got more important things to focus on, like developing new product and creating rad content. I want to make it clear that I never thought of this scenario as a get rich quick scheme. At the end of the day, I just want to avoid potential damages to my brandโ€™s reputation and I suppose this article will help clear the air.

After the publication of this statement, Warner Bros., the production company behind Nolanโ€™s film, reached out to the bike parts manufacturer, with the following response by the director:

Dear Tyler,

Warners just showed me the logo for your company, so I wanted to reach out directly and reassure you that our logo was arrived at without reference to yours. I know this because I designed ours myself, evolving it over the last six years, driven by a fascination with the symmetries of a word which is central to my story and its themes. I thought Iโ€™d done something unique โ€“ but clearly, you were driven by the same creative impulse. I guess lightning can strike twice, and obviously I understand that you would not want anyone thinking that you had been inspired by our movieโ€™s title treatment โ€“ feel free to quote me in shooting such misunderstandings down. I love our logo so I hope you wonโ€™t feel this is necessary, but if you like, I can stop using it since it seems you went public with yours first.

Yours respectfully.

Chris Nolan

This story is a useful reminder that not all trade mark disputes have to result in bitterly fought litigation. Both Deschaine and Nolan took this matter as a simple coincidence, though Tenet Bicycles did ask Warner Bros. to refrain from using the partially inverted logo with the same font for Nolanโ€™s film. The producers followed up by slightly amending the filmโ€™s logo in its latest trailer, which premiered with a plain title card instead. This mutually acceptable outcome represents an amicable compromise and reasonable settlement of the issue, which led to positive publicity for both sides involved, the bicycle company and the film producers.

Another key take-away message is that brands must learn to carefully pick their battles. Warner Bros. producers could have been left with a PR nightmare on their hands, had they attempted to โ€˜disciplineโ€™ a small company. Resorting to legal correspondence with a threatening tone or aggressive point-scoring enforcement practices that frustrate lawyers and the public might not always be the best way forward. Instead, it is wise to determine on a case-by-case basis how best to address potentially infringing activities. The type of business being written to, the precise nature of the alleged infringement as well as the risk of future litigation and the management of commercial risks to the business itself should be carefully considered. The legal and public relations teams of brands need to work together in assessing whether to pursue cases of infringement, and if so, in what way. The balance between brand protection through robust legal enforcement and the risk of adverse publicity is a delicate one.

This piece first appeared on INFORRM, the International Forum for Responsible Media Blog, and is reproduced here with permission and thanks.