sliced cake on plate

The Cake is a Lie: A Discussion on Sweet Treats and Intellectual Property

Article Authored By: Natalie Elizaroff

Intellectual property is a diverse array of ingredients all layered together in a cake that protects a variety of rights. The nuances of IP protection recently bubbled up across the sea in a trademark infringement action over a popular bakery item. Colin vs. Cuthbert is a tale of a supermarket cake war that arose between Marks & Spencer and Aldi over an iconic caterpillar cake. The two cakes at issue are depicted below and this article proceeds to discuss the caterpillar war, important information for bakers, and finally how to protect cake designs.

The Background on the Caterpillar Wars

Marks & Spencer (“M&S”), a British multinational retailer, first introduced “Colin the Caterpillar” to its shelves around 30 years ago, in the autumn of 1990. Since then, several retailers have introduced similar products onto the market (Tesco’s “Curly the Caterpillar”, Co-Op’s “Charlie the Caterpillar”, Asda’s “Clyde the Caterpillar”, and many more).

Although some of the cakes seen above are called “Colin copycaterpillars”, they are all largely distinguishable from each other, in recipe, packaging, and facial details. Additionally, up until early 2021 and the emergence of Aldi’s Cuthbert cake, there had been no known disputes between the various caterpillars.

That all changed in April 2021 when M&S filed a lawsuit against Aldi claiming that Cuthbert the Caterpillar infringed M&S’ trademark for Colin the Caterpillar cake. M&S argued that the similarity between the two products has led to consumer confusion and that by ‘riding on Colin’s coattails’ and utilizing M&S’ well-established brand for caterpillar cakes, Aldi gained an unfair commercial advantage.

This case has since settled in confidentiality and the case dismissed. Leaked details on the agreement suggest that Aldi will be allowed to keep Cuthbert, but with a few design tweaks. This case brought light to the lesser discussed issue of cake design, IP rights, and important tips for bakers to know.

What Bakers and Pastry Chefs Should Know

Colin and Cuthbert involved trademark infringement rights, but those are not the only rights protecting cake designs – and more importantly, iconic characters. Copyrights protect original creations that are affixed to any tangible form of expression, which includes cake creations. Copyright laws enable the creator to stop others from copying their design or to create “derivative” spin-offs of the design.

When an ordinary consumer sees the image of Mickey Mouse, or more recently Mirabel from Encanto, they would naturally think of Walt Disney. A cake made in that likeness would then lead an ordinary consumer to wonder if the cake was authorized by Walt Disney, which in many cases it is not. This goes the same for celebrities and well-known public figures such as Elvis Presley, Madonna, or Joe Biden. There are personality rights statutes in place that protect against the commercial use of a person’s likeness, name, and signature without their permission.

Accordingly, if any kind of profit or commerce is involved, bakers should err on the side of caution when taking commissions that use copyrighted characters or public icons. A suit for copyright infringement is costly with statutory damages running anywhere between $750 and $30,000 per work, as determined by the court. However, the damage amount can be increased up to $150,000 per work if the infringement is found to be intentional. To put it plainly in the world of baking, do not infringe another company’s or individual’s trademark or copyright without their permission unless you want a caterpillar-level lawsuit.

How To Protect Cake Designs

On the other side of the coin, if a baker, chef, or restaurateur wants to protect a cake or pastry design they may do so. Protection may be available for cake and other sweet treats by using one or a combination of copyright, trademark, trade secret and/or design patent laws.

As noted above, copyright protects the creative expression of original works. To qualify for copyright protection, a work must be an original work of authorship fixed in a tangible medium of expression with a minimum level of creativity. That is a liberal standard and the minimum level includes “all pictorial, graphic, and sculptural works…as well as motion pictures and other visual works.” Consequently, cake designs fall squarely under copyright protection, whether in the tangible depiction or a mere drawing. Generally, copyright would only protect the appearance of the cake design itself, as opposed to recipe or other branding aspects.

Trademark protection is the second layer that could protect baked confections. In the instance of cakes in particular, trade dress would be the most appropriate form of protection. Companies use trade dress to protect the visual image the product presents to customers. This protects the product features such as color, size, shape, and graphics. This category of protection is more complicated because product designs themselves, such as the shape of a cake, require an additional showing of “secondary meaning” or proof that consumers associate the product’s shape with a particular source, such as a chef or bakery. Further, no cake designer is currently known for trademarking the design or overall shape of their cake. Despite that, trademark law can provide protection for cake designs and should be utilized to protect popular and distinct products.

Trade secret law is the third layer of protection for bakers. Trade secret law protects private information that a company does not want available to the public. This information can include ideas, such as the idea of a cake design that has not been disclosed, methods, such as the method behind creating a cake design, and recipes. Trade secrets, if properly maintained and protected, can last forever. One of the most infamous examples of a trade secret to date is the elusive Coca-Cola recipe. Accordingly, trade secret protection is great for a baker’s unique recipe or particular frosting flavor.

Finally, design patents are the costly fourth layer that have been used to protect cake designs. Design patents provide strong protection to ornamental designs and have been used by large companies to protect their cake designs. Design patents protect new, original, ornamental designs on “articles of manufacture.” This means that the article must 1) differ from all previous product designs, 2) cannot be considered obvious by others in the field, and 3) must have a “pleasing aesthetic appearance” which must be more than purely functional. Well known companies that hold cake design patents include Cold Stone Creamery, Pillsbury Company, and Quaker Oats Company. To qualify for this level of protection, the design must not only differ from all other product designs but also must not have been obvious to others in the field.

Final Thoughts

The world of IP is a multi-layered cake that has infinite nuances. If you ever have questions, want to protect your delicious designs, and discuss your IP rights, contact an experienced IP attorney.

Finally, if there is ever any doubt – the cake is a lie!

About the Author:

NatalieElizaroff - Headshot

Natalie Elizaroff is a 3L at UIC School of Law, recently renamed from the John Marshall Law School. She is the Candidacy Editor of the Review of Intellectual Property Law, President of the Intellectual Property Law Society, and Treasurer of the Video Game Law Society. Prior to law school, Natalie graduated with a B.S. in Molecular Biology from Loyola University Chicago. Natalie currently works as a Law Clerk with Advitam IP, handling trademark litigation, patents, and other IP-related matters.  

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