In this article, Roland Weede delves into a leading decision of Germany's highest civil court, the Federal Court of Justice (BGH), involving the popular shoe brand Birkenstock.
The iconic Birkenstock sandal – once an emblem of Hippies, who wore them to protest the impracticability and aesthetic conformism of modern fashion design – later an emblem of hipsters, who followed the trend once they had become fashionable: Over several decades, Birkenstock sandals fluctuated between being a niche product and a sought-after lifestyle accessory. The most recent item on this product's résumé is being the subject of a leading decision of Germany's highest civil court, the Federal Court of Justice (BGH). The decision realigns the relationship between art, especially sculptural art, and product design.
The question
Works of art, on the one hand, are protected by copyright, affording the author long-term protection as well as (at least in Germany) additional legal protection for his monetary interests. This includes the possibility to demand an adjustment of the agreed remuneration, if the extent to which the work is being used turns out to be out of proportion in relation to the remuneration. Its focus is on the protection of the author's ability to obtain financial compensation for personal artistic expression, if this expression finds the interest of other people.
Registered designs, on the other hand, have a maximum duration of 25 years. The rules around licensing of designs are long-established and do not focus on distinguishing types of use of the design. In contrast to copyright law, there is no assumption that the designer needs any additional legal protection than the general rules of contract law, when dealing with potential licensees, or when transferring ownership of the design completely. The focus of design protection is on the commercial protection of investing time and creativity into the development of novel shapes, which can help to define products aesthetically.
This does not mean that copyright and design protection are exclusionary, so that a work can only be either protected as a work of art or as a design. Both can apply, with a different focus of protection and different formal requirements.
The problem becomes interesting if one considers the very low bar for copyright protection, e.g. of written works or music: Any written text that consists of more than a few words in a row, any melody that is more than just a chord, a scale or a handful of notes strung together, enjoys copyright protection. If the threshold for copyright protection of the exterior design of commercial goods was comparably low, the person or company taking the commercial risk for marketing a product would always have to expect the person responsible for the design to claim additional remuneration, if the product turns out to be more successful than was expected before. This was the exact constellation of the seminal case "Geburtstagszug" (birthday train), decided by the German Federal Court (BGH) in 2013.
Case-law background
Up until "Geburtstagszug", German copyright practice (like that of several other member states of the European Union) had a different threshold for deciding on the copyright-worthiness of "applied art" in contrast to "non-utilitarian art" (zweckfreie Kunst), with the former requiring a higher level of aesthetic value in order to be protected under copyright regulations. This was supposed to avoid the problem of a limitless expansion of copyright protection encroaching on the territory of industrial designs.
In "Geburtstagszug", the BGH had decided that such differentiation was not compatible with European developments of design and copyright law, and expressly declared this distinction for no longer applicable, opening up the question of which role remained for design protection, and to what extent claims for additional remuneration by designers based on copyright law were to be expected. The Upper District Court of Schleswig, who the case was referred to after the BGH had given its verdict, indicated the direction for the future: The BGH had explained that personal artistic expression can only exist where aesthetic feature are not dictated by technical and/or functional requirements of the product. The Upper District Court denied the claims for one of the two works in question, stating that there were no personal aesthetic decisions of the designer involved, that were not simply an answer to a functional requirement.
Considering that functional requirements normally play an important role for utilitarian objects of applied art, and much less of a role, if any, for works of non-utilitarian art, the end result is still a higher bar for applied art to be recognized as a work of art at all. Later decisions of other courts of first instance pointed in the same direction.
The recent decision and its impact
Considering this background, the most recent decision of the BGH, "Birkenstock", was expected to give clarity on whether the BGH approved of this interpretation of "birthday train" or wanted to lower the bar for copyright protection once and for all.
The court clearly decided for the first alternative, confirming recent decisions issued by lower courts after "birthday train".
While the court accepts that the threshold for copyright protection is not higher for applied art as such, it stresses that it is still the most important requirement for any copyrighted work that it expresses the personality of the author by being an embodiment of free creative decisions. Where the shape of an object is the result of technical considerations, technical rules and other necessities, it does not have the originality required to be considered a work of art in the sense of copyright. This is even true if the author had to select one of several possible implementations, as long as each of these possibilities is defined by functional considerations.
The court acknowledges that this means that works of applied art, being at least partly defined by their practical application, will, in practice, have to satisfy a higher level of originality to be recognized as art. The court still considers this the better result, as it retains a unified definition of a work of art. However, the court acknowledges that decisions which are currently pending at the ECJ, both dealing with furniture by USM Haller (C-580/23, C-795/23) have raised this question again (among others), so a future revision might be necessary.
Practical implications
For clients involved in industries where creative shaping of products is an important part of marketing, this does not change the recommendation to make use of the fast and simple availability of design protection wherever possible. Relying on copyright protection is not a safe and winning strategy.
Still, the relationship between copyright and design protection remains a very fluid and exciting part of European legal development. It remains to be seen in which direction the ECJ will steer future developments with the upcoming UM Haller decision. HLK will keep you updated.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.