Aldi Loses Make-Up Look-Like Copyright Case

Look-alike products are big business

Look-alike products are big business. The British Brands Group – which may not be totally impartial in the matter! – has described lookalike products as products which ‘distinctive features of a brand’s packaging are hijacked in order to trick shoppers into buying something they believe to be that brand, made by the brand manufacturer or sharing the reputation of that brand’. There is no doubt that some discount stores and others sometimes seem to sail very close to the wind in copying the packaging and get-up of premium products for the packaging and get-up of cheaper substitutes.

The Aldi case concerned two designs relating to make-up powder – both the product packaging and a stamped imprint on the power itself (for pictures of the products, see paragraph 4 and 44 of the Court’s judgment here). The case had four aspects:

• Originality
  In relation to a literary work or a drawing design, the requirement of originality in copyright law is fairly minimal. We are not talking Shakespeare or Picasso here. The requirement really means little more than the claimant must not himself have copied another’s work. Here, the Judge rejected Aldi’s argument that the designs were no more than generic art deco-style patterns. In his view neither of the two designs had been slavishly copied from previous designs.
• Fixation
  Copyright does not subsist in an idea as such but only in the form in which an idea is expressed. Aldi sought to rely on a previous case where the Court of Appeal ruled that the facial makeup of the musician, Adam Ant, was not protected by copyright as there was no medium in which it was fixed. Aldi also argued that no copyright could subsist in the stamped imprint as it was too ephemeral and would disappear as the product was used. The Judge disagreed. He pointed out that on that basis no copyright could subsist in a design for a bespoke wedding cake (soon to be eaten) or a sand sculpture (soon to be washed away by the tide). He did not think that was right.
• Copying
  There is a breach of copyright if a person copies the whole or a substantial part of a work. What amounts to a ‘substantial part’ is looked at in terms of both the quantity and quality of what has been copied. Here, the Judge compared Islestarr’s and Aldi’s designs and noted the similarities and differences. He concluded that the similarities were not commonplace, unoriginal or just general ideas. As Aldi had admitted that when their designs were created, their designers were aware of Islestarr’s designs, it was up to Aldi to convince the Judge that the similarities had not resulted from copying. It failed to do this.
• Flagrancy
  In a last roll of the dice, Aldi argued that the issue of the flagrancy and exactly what their employees had been aware of when designing Aldi’s products was absolutely key to the whole claim, and it was therefore necessary for the case to go to a full trial with witnesses giving live evidence in Court. The Judge simply did not agree.

A claim for infringement of a registered trade mark

In most look-alike product claims, the weapon of choice is usually a claim for infringement of a registered trade mark or a claim for passing off – i.e. a claim that the defendant has falsely represented that its goods or services are those of the claimant. The Aldi case is a useful reminder of how effective a breach of copyright claim can be in the right circumstances.