The plaintiff, a company of the Birkenstock Group, claimed copyright protection for its sandal models "Madrid" and "Arizona" and asserted copyright claims against the defendant, which sells visually similar sandal models. In particular, the uncovered footbed, the shape of the sole and the choice of material were the expression of the author’s own intellectual creation and were therefore based on a large number of creative decisions. At first instance, the Regional Court of Cologne largely upheld the claim; however, this decision was not upheld by the Higher Regional Court of Cologne at second instance. Birkenstock then appealed to the BGH, which in turn upheld the Cologne Higher Regional Court.

The BGH based its decision on the requirements for the copyright protection of works of applied art under EU law. According to established case law of the ECJ, a work protected by copyright requires „the author's own intellectual creation", which is characterized by an individual imprint and reaches a level of aesthetic expression such that – in the view of those receptive to art and reasonably familiar with artistic views – it may be regarded as an „artistic achievement“. It is therefore essential that the required threshold of originality is reached. The mere aesthetic effect of a product is not sufficient, at least not if it is caused solely by the intended purpose. Design protection and copyright protection therefore pursue fundamentally different objectives and are subject to different requirements: While the former is primarily aimed at the visual appearance of a product, copyright protection requires an artistic creation that goes beyond the intended purpose.

In line with ECJ case law, in particular the "Cofemel" decision (ECJ, judgment of September 12, 2019 – C-683/17), the BGH clarifies that the sandal models in question do not enjoy copyright protection. In the present case, only aesthetic and functional aspects were in the foreground – creative decisions were not formative. It was therefore not a work within the meaning of copyright law. For the relevant criterion of the threshold of originality, it is irrelevant whether it is a work of applied art or another type of work.

Whether the criterion of the author's own intellectual creation exists must be demonstrated by the plaintiff in the copyright infringement proceedings. To do so, the company must not only name the work in question, but also the elements that are eligible for potential copyright protection. Specifically, in the case of goods of daily use, it must be shown to what extent the creation is artistically characterized in detail and thus goes beyond the purely functional. Birkenstock did not succeed in this: It lacked a conclusive demonstration of the extent to which the creation of the sandals was based on a free creative decision and was not primarily determined by ergonomic, orthopaedic or market-related considerations.

The BGH was also not convinced on another point: Birkenstock also supported its own argumentation with the so-called bone pattern of the sole. The BGH did not accept this argument – this element had only been introduced subsequently and was therefore not part of the original models. Irrespective of this, it is an element of the recognizability of a trademark, which is more likely to be assigned to the area of design or trademark law, but not an artistic creation in the sense of copyright law.

The decision of the BGH clarifies the fundamental differences between copyright law and design law. While design law is based on the visual appearance of a product and its distinctiveness on the market, copyright law requires the author's own intellectual creation. Not every aesthetically pleasing product is automatically protected by copyright. According to ECJ case law, a product can enjoy both design and copyright protection, but only if the copyright protection requirements are actually met. The BGH thus confirms a clear separation of both areas of protection.

In practice, this means that manufacturers of consumer goods with an aesthetic design are still primarily reliant on design protection and cannot easily make use of copyright protection mechanisms for industrial designs. Companies wishing to defend themselves against imitations of their products should increasingly rely on protection through registered designs, as this is based on the appearance of a product and does not have to overcome the high hurdle of an artistic creation in the sense of copyright law.

Manufacturers are rightly increasingly trying to place their products under copyright protection. Not only does copyright protection – unlike design protection – not require an entry in the register, it is also the more comprehensive property right in terms of time, insofar as it remains in force for up to 70 years after the author’s death. Due to the lack of registration, there is nevertheless a certain degree of uncertainty regarding copyright protection. As companies must demonstrate in detail whether the requirements for copyright protection specified by the Birkenstock ruling are met, it is advisable to record the respective intention and thoughts on the creation of the work during the creation process for later verification purposes. In addition, other intellectual property rights, such as design and trademark law, should be used in order to achieve the most complete protection possible.

The BGH did not consider it necessary to stay the proceedings with regard to the order for reference in the USM Haller case (BGH, order for reference dated 21. December 2023, I ZR 96/22), but the question of the threshold of originality has not yet been conclusively clarified. In particular, the ECJ will have to rule on the question of whether there is a rule-exception relationship between protection under design law and copyright law in the case of works of applied art – namely whether higher requirements are to be placed on the free creative decision of the creator when examining the originality of works of applied art under copyright law.