German Birkenstock Decision Shows the Limits of Copyright Protection for Functional Designs

“Aber ist es Kunst?”

That question—“But is it art?”—was before the German Bundesgerichtshof (“BGH”), or Federal Court of Justice, in a recent proceeding involving the well-known Birkenstock sandal design. Birkenstock Group (“Birkenstock”) had sought relief against three rival sandal makers, asserting that the defendants’ products infringed Birkenstock’s copyright on its sandal design. Exemplary designs at issue are shown below.

The German regional court agreed with Birkenstock, but the higher regional court reversed. Birkenstock appealed to the BGH, which faced the question of whether Birkenstock’s sandals are artistic enough to qualify for copyright protection. In what is being referred to as a landmark decision in German copyright law, the BGH answered Nein.

According to the decision, published on February 20, copyright protection requires “creative freedom . . . used in an artistic way.” Copyright protection is therefore unavailable if the design is dictated by technical requirements or constraints. In other words, “a level of design that is not too low must be required.” When it came to Birkenstock’s sandals, the BGH concluded that there was insufficient artistic expression in the design to separate it from the technical constraints of constructing footwear. The decision paves the way for competitors to offer similar sandals without fear of copyright liability.

The Birkenstock decision illustrates a tension within the design community when it comes to intellectual property protection, particularly in the context of apparel. 

It is well-settled that ornamental aspects of apparel are subject to design patent protection, and design patents have become an important tool in protecting original fashion designs. But design patents are issued for terms that might prove to be too short for designs that go on to achieve great success (e.g., in the U.S., a maximum of 15 years). In some situations, this leaves designers searching for alternative methods to protect their intellectual property.

In the U.S., courts have held that design elements within articles of clothing can be protected by trademark and copyright. For example, in Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., No. 11-3303 (2d Cir. 2012), the Second Circuit held that Louboutin’s red outsoles on the bottoms of shoes was a source identifier subject to trademark protection. And in Star Athletica, LLC v. Varsity Brands, Inc., 580 U.S. 405 (2017), the Supreme Court held that ornamental designs printed on cheerleading uniforms were eligible for copyright protection. Thus, the creator of an original design may seek to use trademark or copyright to extend protection of its designs beyond the term afforded by a design patent.

That seems to be what happened in the Birkenstock case. While Germany, like the U.S., offers design patent protection, the Birkenstock sandal design considered by the BGH is decades old and thus no longer eligible for such protection. Birkenstock attempted to seek longer protection for its iconic design through copyright, but its design was insufficiently artistic to obtain it.

But the BGH, like U.S. courts, did not close the door on copyright protection for articles of clothing—or “everyday articles” generally—altogether. Like in the U.S., the BGH held that design elements of clothing can be subject to copyright protection if they are sufficiently expressive and separable from the functional aspects of the product design. And in the U.S., this separability need only be conceptual, such that the copyrightable element can be “perceived” separately from the useful article. 

Interestingly, the BGH and U.S. courts use similar language when referring to eligibility for copyright protection and design patent protection, barring both types of protection if the design of the article in question is dictated by functional or technical requirements. In other words, if there are design elements within an article of clothing that are independent of the function of the clothing, design patent and copyright protection may both be available. This blurs the line between design patent and copyright protection and may offer several paths toward protection of ornamental designs.

While a design patent expires much sooner than a copyright, a successful design patent applicant may be able to successfully argue that the ornamentality that rendered the design patentable also confers copyright protection given the overlapping legal standards. Further, if the designer succeeds in building a successful brand around its design, trademark protection may attach as well.

This overlap may tempt a designer to forego design patent protection and seek to deter copycats solely through copyright protection. But while saving costs in the near term, this approach raises significant risks of its own. In essence, such a strategy would ask a court to consider as a matter of first impression whether the designer’s work is both artistic enough and conceptually separable from the underlying article to be eligible for copyright protection. Such a process would be far more costly than seeking approval of the Patent Office in the first instance.

Apparel design involves significant creativity, and as designers continue to infuse seemingly functional designs with flairs of artistic expression, effective intellectual property protection becomes more important. Understanding the boundaries between function and ornamentality is a critical aspect of crafting effective design protection strategies.

The Quarles design rights legal team is nationally recognized for its extensive knowledge and practice experience in this complex and important field. For questions about this article or how to incorporate design-related legal rights into your intellectual property portfolio, please contact the author(s) of this post directly or send a message to the team via our Contact page. To subscribe to our mailing list and receive updates that highlight issues currently affect the design rights legal field, click here.