The renowned German footwear company BIRKENSTOCK, with a history dating back to 1774, has been fighting for years against the commercialization of footwear that is identical or similar to its own.
However, after taking legal action against three retailers allegedly infringing its intellectual property rights, on February 20, the German Federal Court of Justice (Bundesgerichtshof, BGH) ruled that the footwear in question is not eligible for copyright protection.
This ruling comes after an initial decision favorable to the company, which was later overturned on appeal. The BGH has now upheld this latter decision.
Accordingly, the Court ruled that BIRKENSTOCK shoes lack the requisite artistic originality to qualify for copyright protection. As has long been acknowledged in relation to the brand, the primary function of its footwear is comfort, achieved through the soles, straps, and overall structure that characterize its products. The mere application of design elements serving a technical purpose does not fall within the scope of copyright protection.
This decision represents a significant setback for BIRKENSTOCK, as it appears that the company sought to extend its protection over time through copyright, a strategy that has now been thwarted by the German Court. Will courts in other jurisdictions follow the same approach?
Indeed, the protection of fashion creations under copyright law remains a highly debated issue, with varying degrees of flexibility depending on the jurisdiction, within Europe and internationally. The prevailing legal doctrine holds that fashion primarily serves a utilitarian function and that a design must not only be sufficiently “original and identifiable with precision and objectivity” (Cofemel v. G-Star), as a result of the creator’s intellectual effort (Kipling case), which is the main standard followed by the EU case law, but in other jurisdictions, a more restrictive approach applies (such as in the United States). There, the design must be perceived as a “concept separable” from the object’s utilitarian aspect, allowing for its individual appreciation. Only if this separability is met (together with sufficient originality) can it be considered a “work of art” eligible for copyright protection (Kieselstein-Cord v. Accessories Pearl, Inc.; Mazer v. Stein, 74 S. Ct.; Star Athletica, LLC v. Varsity Brands, Inc.; Longchamp case).
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