Birkenstock’s sandals are not sufficiently artistic to enjoy copyright protection

Birkenstock has tried to protect and enforce its iconic sandal design using almost all intellectual property rights available. Their trade marks for the sole pattern design were cancelled because they lacked distinctiveness (General Court, case T-365/20 and T-579/14). Registered Community Designs were declared invalid because of prior art (e.g. R1002/2023-3 and R2499/2022-3) or, for older models, expired. In a recent decision, the German Supreme Court denied copyright protection for two Birkenstock sandal designs.

Birkenstock has been selling the following sandal models called ‘Madrid’ and ‘Arizona’:

Karl Birkenstock, a descendant of the founder of the company, developed the ‘Madrid’ model in 1963 and the ‘Arizona’ model in 1973. Since copyright is not freely transferrable under German law, he granted exclusive rights of use to the company Birkenstock.

The defendant offered the following sandals for sale online:

Birkenstock sued the defendant for copyright infringement. The District Court of Cologne upheld the action. Upon appeal, the Higher Regional Court of Cologne dismissed all claims. Birkenstock appealed to the German Supreme Court.

The German Supreme Court’s decision

The German Supreme Court dismissed the appeal.

According to Sec. 2(1) no. 4,(2) German Copyright Act, artistic works, including works of architecture and applied art, are protected by copyright, provided they are the author’s own intellectual creation.

The judges referred to the consistent case law of the Court of Justice of the EU (‘CJEU’) to define the term ‘work’. It requires that (1) the subject matter is original in the sense that it is the author’s own intellectual creation and that (2) it is the expression of the author’s own intellectual creation.

In order to be ‘original’, the subject matter must reflect the personality of its author as an expression of their free and creative choices. The subject matter may not be dictated by technical considerations, rules or other constraints which have left no room for creative freedom. The mere fact that the author had some choice in shaping the subject matter is not in itself sufficient for qualifying the subject matter as a ‘work’.

As to the second condition, it requires a subject matter that is identifiable with sufficient precision and objectivity.

The judges also recalled that designs do not necessarily qualify for copyright protection. Design and copyright protection pursue different objectives and are subject to distinct rules. However, they are not mutually exclusive. An aesthetic effect of a design is not sufficient to constitute an intellectual creation reflecting the freedom of choice and personality of its author.

The judges also cited the Court’s own case law, which held that a personal intellectual creation is a creation of individual character, whose aesthetic content reaches such a degree that, in the opinion of circles receptive to art and somewhat familiar with artistic views, it can be described as an artistic achievement. The aesthetic effect of the design can only justify copyright protection insofar as it is based on an artistic achievement and expresses it. The mere exploitation of creative freedom or the exchange of one technical feature for another is not sufficient to create an original artistic work.

While it is not necessary that the creation clearly exceeds the average design, the threshold for copyright protection may not be set too low. A purely technical creation using formal design elements cannot enjoy copyright protection.

The Court considered the term ‘artistic’ as used in its jurisprudence to be in line with the CJEU’s case law. The term does not establish a qualitative threshold for copyright protection but rather refers to the creative decision-making process.

Unlike for design protection, a mere distance from the prior art is not sufficient to qualify for copyright protection. Likewise, aesthetic appeal is not a relevant criterion for differentiating designs from copyright.

Even though the same standard applies to works of applied art and works of non-functional art, in the case of objects of utility that have design features dictated by their purpose of use, the scope for artistic design is usually limited.

Finally, the judges recalled that the burden of proof that the models ‘Madrid’ and ‘Arizona’ are a personal intellectual creation lies with the plaintiff. Birkenstock was required to present the work and specify the design elements from which the protectability is derived.

On that basis, the Court confirmed the finding of the Higher Regional Court that neither Birkenstock model enjoys copyright protection.

The lower court held that it could not be established that the sandals were originals in the sense of being their author’s own intellectual creation. Although none of the sandal’s characteristic features were technically required to be designed in a specific way, Karl Birkenstock adhered to the already known designs and remained within the realm of an (orthopaedic) shoemaker’s craftsmanship. It was not evident that Karl Birkenstock had utilized the existing design freedom in a creative manner reflecting his personality. To the contrary, the designs of the sandals appears to have been primarily aimed at achieving a particularly ‘healthy’ but also marketable product for the foot.

The Court mentioned its reference for a preliminary ruling in USM Haller (IPKat here) in which it asked the CJEU, inter alia, whether circumstances that occurred after the creation of the work, such as the work’s presentation in art exhibitions or museums or its recognition in professional circles, can be considered in the assessment of originality. The judges nevertheless upheld the Higher Regional Court’s finding that the display of the sandals in museums and exhibitions as well as the award of design prizes did not allow the conclusion that the sandal designs were the result of an artistic expression.

For these reasons, the Court dismissed the appeal.

Comment

The CJEU establishes the general principles but the national courts have to put flesh to the bones. With the decision discussed above, the German Supreme Court set a high bar for copyright protection of designs in the field of applied art. Copyright is reserved for works that are truly original and reflect the author’s personal creative input. As a consequence, design protection is more important than ever to protect works of applied art that may not qualify for copyright protection.