Birkenstock Sandals Not Copyright Protected Rules German Court

Despite being recently endorsed by Margot Robbie in the Barbie movie, and by Katy Perry amongst other celebrities, Birkenstock sandals are not works of art protected by copyright, according to a superior Court in Germany. Our Intellectual Property team considers this decision concerning copyright and functional items, and the key takeaways for brand owners in the fashion sector.

The Federal Court of Germany (BGH) has recently ruled that Birkenstock sandals are not works of art capable of copyright protection. This is in line with the UK High Court’s recent decision that the WaterRower rowing machine is not a work of artistic craftsmanship and is therefore not protected by copyright. It is, however, an opposite finding to the ruling by the Danish Maritime and Commercial Court last year that the design of GANNI’s Buckle Ballerina shoe is capable of copyright protection. After the CJEU decisions in Cofomel and the Brompton bicycle, it seems that there is still some navigation on what qualifies for copyright. We review this latest case update on copyright protection for fashionable items and consider the impact for brand owners in the fashion sector.

Background

Birkenstock sells both “Madrid” and “Arizona” sandals, as depicted below.

The defendant retailers in the case, sell amongst other shoe products, the below sandals under the name “LEDER SANDALE.”

On discovering the sales of these products, Birkenstock filed Court proceedings in Germany, claiming copyright infringement. The case therefore centred on whether the Birkenstock “Madrid” and “Arizona” models constituted works of applied art, protected by copyright. In the proceedings, Birkenstock sought injunctive relief, as well as damages and orders for recall and destruction of the infringing products.

First Instance and Court of Appeal

The Cologne Regional Court upheld Birkenstock’s claims. The Court of Appeal however dismissed the claims in their entirety. In doing so, the Court of Appeal held that the design of the Birkenstock “Madrid” and “Arizona” models are not works of applied art protected by copyright. This was because the design of those sandals was deemed to be based exclusively on technical and functional considerations.

BGH decision

The BGH upheld the Court of Appeal decision and noted that purely technical creations which use formal design elements are not eligible for copyright protection. Birkenstock, it held, bore the burden of proof to establish that the “Madrid” and “Arizona” models have individual design features which go beyond a technical solution. In copyright infringement proceedings, the plaintiff bears the burden of proof to show the existence of a personal intellectual creation. That burden had not been discharged here.

On the contrary, the Court held that the evidence suggested that the design of the Birkenstock sandals was primarily orientated towards a product that was particularly “healthy” for the foot, but also marketable. An “artistic achievement” in the Birkenstock sandals could not be established. The Court went so far as to state that in undertaking the task of designing a sandal which has a sole and an upper part, Karl Birkenstock stuck to what was already known at the time i.e. his designs remained within the realm of the craftsmanship of a shoemaker or “orthopaedic shoemaker.” It could not be identified that he used the design in a creative manner to reflect his own personality.

Comment

The decision is undoubtedly a setback for Birkenstock and is arguably at odds with the CJEU decision in Cofomel which held that clothing could be protected as a copyright work in the EU. An interesting aspect of the decision is the Court’s discussion about the interplay between copyright and design rights, which we discussed in our recent article. In particular, the German Court emphasised that:

• The protection of designs and models on the one hand and copyright protection on the other pursue fundamentally different objectives and are subject to different regulations.
• The fact that a model has an aesthetic effect does not mean that it is possible to conclude that the model is an intellectual creation reflecting a freedom of decision and the personality of its author and that it therefore fulfils the originality requirement which copyright is based on.
• A design does not enjoy copyright protection if it consists solely of technically necessary or freely selectable or interchangeable but technically conditioned features and if it does not reveal any “artistic achievement”.

With the imminent implementation of the revised Design Directive in the EU on the horizon, it is unlikely to be the final time that the question of whether both rights can apply simultaneously to the same item comes before the EU Courts.

For more information and expert advice, contact a member of our Intellectual Property team.

The content of this article is provided for information purposes only and does not constitute legal or other advice.