http://ipkitten.blogspot.com/2025/02/guest-post-things-go-belly-up-for-aldi.html
Look-alikes have been the centre of attention lately. This Kat is pleased to host the following guest contribution from Katfriend Lilliana Swainson (student in the Faculty of Law, Bond University) to provide a summary of the recent Australian case on the subject of copycat products, Hampton Holdings IP Pty Ltd v Aldi Foods Pty Ltd [2024] FCA 1452.
Here’s what Lilliana has to say:
“All the hubbub about the Thatchers v Aldi case in the UK this month (see IPKat discussion here and here) seems to have overshadowed Aldi’s intellectual property woes in Australia at the end of last year. Aldi was sued for copyright infringement of an artwork that appeared on the packaging of children’s snacks under the BABY BELLIES, LITTLE BELLIES and MIGHTY BELLIES brands, each aimed at different age groups. The brands (hereafter “Bellies”) were licensed to Every Bite Counts Pty Ltd (“EBC”), including a range of “Puffs” products. Justice Moshinsky of the Federal Court of Australia found that Aldi had crossed the line from borrowing the “look and feel” of the Puffs packaging into taking the actual forms of expression in the design, layout, colours, fonts, and figures.
Background
| Packaging of various BELLIES products |
In 2017 and 2018, EBC engaged a British firm to design packaging for its baby food products, which developed a monster visual identity where each product depicted different ages (i.e. baby, young, and fully-grown) to allude to natural progression. The “bellies” element of the brand name was strategically placed on the belly of the monster. EBC licensed the nine bright and colourful artistic works and used them on various food products including biscuits, puffs and fiddlesticks.
In 2019, Aldi undertook a re-design of its MAMIA range of baby food products. Aldi provided their designers with reference images of Bellies packaging and instructions to use Bellies as their “benchmark,” including guidance that they should “follow the architecture of Baby Bellies.” In this context “follow” was taken to mean resemble just as architecture was taken to refer to “layout or structure of the packaging design.” Aldi decided to develop baby puffs products in 2020 using Bellies as a benchmark. When the designers provided their artworks, the feedback included a note that “ALDI have now had legal come back to them and state this design is too close to the benchmark – no shit!” and a request for further changes which included removing the text from the owl’s belly which Aldi deemed to be “far enough away from the benchmark”. Aldi began selling the baby puff products in 2021.
The Decision
| Packaging of Aldi’s products |
In this copyright infringement dispute, the key question before Justice Moshinsky was whether the Aldi designs had reproduced a substantial part of the artworks licensed by EBC. This form of infringement has two elements: a causal connection between the author’s and alleged infringers’ works, and a sufficient degree of objective similarity.
The evidence clearly demonstrated that Aldi’s designers had access to the Bellies artworks and likely based their designs on the packaging for the corresponding Bellies product. This satisfied the requirement for a causal connection.
As for similarity, Aldi had requested several changes to ensure that the baby puffs packaging was not too similar to the benchmark. However, quoting from the High Court judgment in SW Hart, the judge noted that “such dissimilarities as are apparent may be seen as no more than a deliberate attempt to obscure what has actually taken place, namely, the appropriation of another person’s labour.”
The High Court had acknowledged in IceTV that “there may be some measure of legitimate appropriation” and warned that “the more remote the level of abstraction of the “interest” [which the copyright protects], the greater the risk of protecting the “ideas” of the author rather than their fixed expression.” Therefore, as explained by Lord Hoffmann in Designers Guild, it was important for the Court to focus on the “cumulative effect” of the similarities, rather than dealing with the copied features in a piecemeal fashion.
When comparing the layout and design elements, Justice Moshinsky considered that many elements had been reproduced, including the small, oval-shaped cartoon character, with a large, light-coloured belly; a solid white background; a two-column layout; a rounded, childlike font; text elements of varying sizes, stacked vertically; photographic images of the product and ingredients, in a vertical composition, and number in the upper-right corner indicating the suitable age range.
| Side-by-side comparison of the BELLIES puffs and Aldi’s baby puffs |
Taken cumulatively, these elements involved a degree of creativity or originality and were qualitatively significant. Justice Moshinsky rejected Aldi’s argument that EBC were seeking to protect an idea or the “look and feel” of their products rather than a form of expression.
By contrast, the designs of Aldi’s packaging for the non-puffs products (e.g., fruit and oat bars) did not reproduce the design element of a small, oval-shaped cartoon character, nor the two-column layout. The reproduced elements did not constitute a substantial part and therefore did not amount to copyright infringement.
Aldi’s crossclaim to restrain further threats of copyright was also dismissed. Justice Moshinsky instead awarded additional damages on the basis that Aldi’s actions were described as “flagrant.” For their own commercial advantage, Aldi deliberately developed a design by a trade rival when they “ought reasonably to have known that the making of the relevant articles constituted an infringement of the … Puffs Works.”
Final Thoughts
Benchmark designs can be valuable “cues” to convey information to consumers, especially the idea that a product is the “same but cheaper.” This can be in size, colour and characteristics, to naming or ingredients that are successfully trending with specific target audiences. The copying brand can be confident that their privately labelled brand will perform well with consumer attitudes. However, this case is another example that the tides are turning against copycats who find themselves on the wrong side of a fine line between “close” and “too close.”
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