Joe Duffy & Colin the Caterpillar – What do they have in common?

First, an explainer for those of you not in Ireland. Joe Duffy is a radio host on Ireland’s most listened to radio station, the State Broadcaster, Radio Telefis Eireann (RTE). His show is called ‘Liveline’ and is a show where (generally) the wronged, downtrodden, unfortunate or misfortunate people of Ireland call to air their grievances and/or dirty laundry. As the imaging for the show says “Talk to Joe”. And Ireland does, daily.

So, what do Joe and Colin the Caterpillar have in common? The Court of Common Opinion. You see, I have, on more than one occasion, told a prospective client that they would be better talking to Joe Duffy than talking to me. Because sometimes being legally in the right isn’t enough. And sometimes, being legally in the wrong can be ok too….depending on how that wrong is portrayed.

Enter Aldi, and Cutherbert the Caterpillar. If you’ve been on the internet in the last week and haven’t seen a picture of a caterpillar cake, then I don’t want to know what you’ve been up to on the internet (hey, what you crazy kids do in your own time is a matter for you). It. Is. Everywhere. I myself was all over it. I hastily dashed to M & S to buy a Colin the Caterpillar Cake, and (I’m not making this up) when I was paying for it, the lady at the tills said to me “I hope you’re not going to buy one of those Aldi ones now!”. “No No" I laughed "the original and best for me” I said as I walked away….on my way to Aldi. Alas, that’s where my Cutherbert v. Colin adventure ended. There are no Cuthbert cakes for sale in Aldi in the Republic of Ireland. My wonderful blog post and video, thwarted before it ever began. I did by a Curly the Caterpillar cake from Tesco though, see:

In any event, before I had even got back with my Colin and Curly the internet was awash with news articles and reports reporting (mostly wrongly) on the legal action being taken by Marks and Spencer against Aldi for copyright and/or trademark infringement. My Linkedin feed was overrun by the critters. I’m connected with mostly IP nerds (like me) and this was like a IP explosion. Companies and colleagues I’d never seen blog before couldn’t type fast enough to get their blog posts out.

BUT WAIT.

What did the post you saw say? What was it about? The law?

OR was it about Aldi’s tweets about the whole event? Because while the initial commentary on my timeline was about the law, very quickly the narrative changed. The story morphed form being about whether Aldi was guilty of intellectual property infringement to whether M & S were somehow guilty of being no craic at all at all. To be fair to the Aldi social media team, they were on fire. Take a look at some of the tweets here:

And there was LOTS more (like, lots). One popular marketing company I follow, Rise at Seven provided this sentiment analysis of the internet talk. So, what we have here is an allegation that Aldi infringed M & S’s legal rights, and a bounce for sentiment for Aldi and a drop for M & S.

What’s really interesting about this from a Trade Mark Attorney’s perspective is the commercial and reputational issues that have to be considered before threatening or issuing proceedings for intellectual property infringement. Because, Aldi have, I think possibly now worked  themselves into a position where this case will settle on the basis purely of their social media strategy. The last tweet was this:

As far as this lawyer (albeit with a diploma in digital marketing) is concerned, this is no longer about the law. This is about reputation and reputation management. This is about whether M & S can realistically refuse to let Aldi sell Cuthbert the Caterpillar for charity and instead continue to sue them. Well, their social media manager seems to think they can...

I’m not a reputational crisis manager, but notwithstanding that tweet, my gut feeling is no, they can’t. And I can’t help put wonder if Aldi have taken a leaf out of Brewdog’s playbook. It wasn’t that long ago that Aldi were facing accusations of infringing on Brewdog’s rights. Instead of Brewdog suing (though they have had that Plan B ready to go, I suspect), they tackled the issue through their social media in a tongue in cheek sort of way, and it resulted in Aldi stocking an official Brewdog Aldi Beer.

So, what’s the moral of this story? If someone threatens to sue you should you just call Joe Duffy and/or get on your social media and get all sassy?

Hardly.

But it does show that law and litigation don’t exist in a vacuum and that more than just ‘winning’ and ‘losing’ and ‘right’ and ‘wrong’ have to be factors in any question to do with brand and portfolio management. Some rights owners have a zero tolerance policy for any potential infringement (even when it’s for charities or kid’s shows). Some take a more pragmatic approach, and some try to thread the line by writing funny and amusing cease and desist letters (which, however, are still cease and desist letters). And the Aldi strategy could potentially be high disk. Historically and by way of analogy aggravated damages could be awarded in defamation cases where it was clear that the publisher knew something was defamatory, but published it anyway because they knew it would shift lots of papers, for example. If the Aldi strategy doesn’t work and M & S don’t back down, and Aldi loses, how will their social media campaign be considered by the judge in awarding damages. Indeed, can or could it be considered? Could you see M & S saying that there should be aggravated damages because instead of stopping the infringement, Aldi sought to capitalise on it? Maybe.

What about this line of logic. If there was a likelihood of confusion before, now, because of the high profile social media activity, nobody could confuse Colin and Cuthbert in the future. So, stopping selling the cake now doesn’t stop the proceedings against them, which is for historic infringement anyway. They might as well keep selling Cuthbert, because if they were in the wrong before, nothing they do now changes that, but what they do now could tilt the scales in favour of them going forward. It’s an interesting line of thought/argument.

So, it’s going to be very interesting to see how this one pans out.

While you’re here…..You might as well learn some law too.

I call it the ‘Lidl/Aldi Defence’ and it has the same mythical standing in my mind as “If the glove doesn’t fit you must acquit” or “the Chewbacca Defence” (from southpark). Aldi and Lidl are no stranger to legal proceedings against them for what most people would call their ‘look-a-like’ products. And the defence to these claims (Whether in passing off or trademark) has, at its most basic level, been very very simple. If the trademark isn’t identical to the ‘brand name’ product, then the issue comes down to a ‘likelihood of confusion’. And the very simple defence to most of these claims (said he paraphrasing hundred page complex legal judgments) is “Nobody is confused, because if you’re shopping in Lidl/Aldi/Other Discount Retailer then you know you’re not getting the brand name product”. It’s actually quite beautiful. There’s no confusion, because the reason people come to the discount supermarket is actually to buy the look-a-like or taste-a-like products. And that means the lawyers have to start looking at more complex (and difficult to prove) cases and causes of action. For example, there is a concept of ‘brand dilution’ which is commonly cited, where you sort of say “Ok, nobody is going to think they are buying a Colin cake, but our Colin's reputation is at risk because of this copy cat". I've seen some colleagues talk about how this case (if it proceeds) could turn on a question of whether you would know the cake was a Colin or a Cuthbert when it's OUT of its packaging. So, the argument goes, you're at a kids party and they have a caterpillar cake, which you think is Colin. You eat it, don't think it tastes great, and go 'Well, M & S have really let their standards slip, I shall never darken their doorway again' BUT ACTUALLY it was never Colin.

So, this is the kind of case that trademark lawyers REALLY want to go to trial, because it's a really interesting case (from what we know about it so far). However, I'm going to stick my (caterpillar) neck on the line here and say that this won't end up in Court. Thankfully for M & S because it doesn't seem to be looking for injunctive relief (i.e. to stop Aldi selling Cuthbert immediately) by the time it would come on for hearing, this whole thing will be a distant memory in our social media consciousness.

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