Birkenstock loses copyright battle in Germany

The German shoe manufacturer, Birkenstock, whose name has become synonymous with their fashionable cork-soled sandals, have recently had their claim for copyright infringement struck down by the German Federal Court of Justice (‘BGH’). Birkenstock initiated proceedings in 2023, aiming to enforce copyright in their ‘Madrid’ and ‘Arizona’ sandal models. Birkenstock’s proceedings sought to enforce their intellectual property rights against Tchibo, Bestseller and Wortmann Group who allegedly sold sandals that imitated the aforementioned Birkenstock models. Birkenstock averred that these supposed copycats were infringing and that they were entitled to an array of remedies, including injunctive relief, destruction of the defendants’ stock and extensive damages.

Birkenstock’s claim for copyright, rather than design protection, hinges on the greater protection afforded by copyright in that it is an automatic right that lasts up to 70 years after the author’s death. On the other hand, however, registered design protection under the EU will only protect goods for a maximum of 25 years and, as Karl Birkenstock designed the sandals in the 1960s and 70s, this time would have now expired. Birkenstock appear to have sought later Registered Community Designs which were invalidated in 2024 as a result of their own earlier products. Being able to enforce copyright in Birkenstock’s sandals would enable the company to enforce their rights against alleged imitators for many years to come.

Birkenstock’s claim was initially successful, with the Cologne District Court ruling that the sandals were eligible for copyright protection. However, on appeal to the Higher Regional Court, this decision was reversed, and Birkenstock’s copyright claim was rejected. As a result, proceedings were then brought to the BGH. Birkenstock were attempting to rely on section 2(1)(4) of the German Copyright Act, which provides that: ‘artistic works, including works of architecture and of applied art… are protected by copyright insofar as they are the author’s own intellectual creations.’

In a defeat for Birkenstock, the BGH sided with the appeal court and ruled that Birkenstock’s sandals were not ‘works of art’ and were thus incapable of being protected by copyright. In the judgment, the BGH referred to previous CJEU judgments whereby the author’s personality must be reflected in the invention (Cofemel – C-683/17) for copyright to apply. This rationale means that copyright is reserved for works that are clearly illustrative of artistic and creative choices made by the author as opposed to technical or functional means. The BGH stated that if an invention is made in such a way for a technical or functional manner, then this will not suffice for copyright protection. The burden was placed on Birkenstock to prove that their sandals fell into the former category of creative and artistic ingenuity, rather than being a consequence of technical parameters.

Unfortunately, for Birkenstock, they were unable to convince the BGH. Their sandals were deemed to be geared towards functionality, with the aesthetic or creative aspect being a secondary thought and that they were not designed in an artistic way. The BGH stated that Birkenstock’s sandals were ‘everyday objects’ and consequently, fell out of the remit of copyright protection. The manufacturer, Karl Birkenstock, when creating the sandals had remained within the confines of the ‘orthopaedic shoemaker’. In essence, Karl had not reinvented the wheel and as a result, no copyright protection could be afforded.

This decision comes as an additional blow for Birkenstock’s intellectual property, with their trade mark for their sole design pattern being declared invalid for lack of distinctiveness in 2023. Birkenstock have referred to the decision as a “missed opportunity for copyright protection in Germany” and demonstrates the high threshold that the German courts have placed on companies hoping to prove that their products are protected by copyright. The CJEU’s approach appears to converge with the outcome of the recent case of WaterRower v Liking [2024] EWHC 2086, where the UK’s High Court (IPEC) ruled that the WaterRower machine was ineligible for copyright protection as it was not a work of artistic craftmanship (although it did consider the answer might have been different in the EU). What the Birkenstock decision illustrates is that there is a distinction between functional design and artistic creation, demonstrating that just because an invention has an aesthetic purpose, it does not mean that it will automatically qualify for copyright protection.