Lessons from Birkenstock sandals case can put brand owners on sure footing

The ruling brings an end to a prolonged legal battle that began in May 2023: Birkenstock aimed to prevent competitors from selling imitation products. The ruling aligns with the Federal Court of Justice's case law regarding the application of copyright protection to everyday objects: a significant issue, as brand owners can obtain considerably longer duration of copyright protection – 70 years after the creator's death – compared to the copyright protection available for designs under design law – a maximum of 25 years from registration.

The case is also an example of how brand owners might consider a portfolio of different intellectual property (IP) rights for protecting iconic business assets.

Background

Birkenstock argued that its designs should be recognised as "copyrighted works of applied art”. The company sought to stop German and Danish retailers, Tchibo, Bestseller and Wortmann Group, from selling shoes that were very similar to Birkenstock sandals, claiming these imitations violated copyright law.

The court's decision

The Federal Court of Justice, confirming the decision of the appeal court in Cologne, denied copyright protection for the sandal models Madrid, Arizona, Boston and Gizeh. The court found that the appeal court rightly held that copyright protection presupposes that creative freedom exists and has been used in a manner which is artistic. The court stated that "technical requirements, regulations, or other constraints determine the design" of Birkenstock sandals, but that for copyright protection, a certain level of originality, creativity and individuality must be achieved. The court concluded that Birkenstock's designs were "purely artisanal and use formal design elements", which is not eligible for copyright protection.

Implications of the ruling

This decision is a setback for Birkenstock, which had hoped to use copyright law to protect its products from imitation. This has been done successfully for shoes in the past, in the 2024 GANNI buckle ballerina shoe case, for example. Other decisions in the past had also granted copyright protection to works of applied art.

Birkenstock expressed its disappointment, calling the ruling "a missed opportunity for copyright protection in Germany". While it is understandable that this is Birkenstock’s position, the judgment seems to have struck the right balance between far-reaching copyright protection and the freedom of others to trade. Despite this, the company remains committed to protecting its brand and continues to pursue similar legal action in other countries, including France, the Netherlands, Denmark, and Switzerland.

The ruling underscores the challenges faced by companies seeking to protect their designs under copyright law. Being iconic is not the same as being art. While Birkenstock's sandals are undoubtedly iconic, the court's decision highlights the stringent requirements for copyright protection.

The court also touched on various other interesting topics that it ultimately did not have to decide upon, such as whether the intent of the creator plays a role for the qualification of art, or whether something can become copyright-eligible art years after its creation due to changes in perception. Birkenstock sandals had been considered unfashionable for a long time before they became fashion icons.

A different approach

Irrespective of the legal question of whether the Birkenstock sandals merit copyright protection, the greater objective of Birkenstock is something that many brand owners face: how to protect against “copies” or “dupes”.

The proliferation of dupe products can dilute the market presence and perceived value of the original brand, leading to potential financial losses and reputational damage. Birkenstock’s best option might have been to try for copyright protection, but in many other cases, protection might be more appropriately pursued under design law, the law of passing off, or sometimes trade mark law.

Passing off is a common law tort, available in jurisdictions like Ireland and the UK, designed to protect the goodwill and reputation of businesses from being misrepresented by others. Germany and other EU countries have a similar instrument under unfair competition law. Where dupe products are concerned, passing off occurs when a business misleads consumers into believing that their dupe products are associated with or endorsed by another brand. This misrepresentation can cause significant damage to the original brand's reputation and financial standing.

To establish a case of passing off, three elements must be proven: goodwill, misrepresentation, and damage. Goodwill refers to the positive reputation and customer loyalty a brand has built over time. Misrepresentation involves the deceptive act of making consumers believe that the dupe product is connected to the original brand. Finally, damage must be shown, indicating that the original brand has suffered or is likely to suffer harm due to the misrepresentation. Therefore, establishing passing off can also be quite a challenge.

Brands will thus often need to utilise a comprehensive portfolio of different IP rights to protect their designs. While Birkenstock's rights had expired, registered rights provide the quickest and easiest means of taking down infringing products online. Trade marks are a possibility for some aspects of distinctive designs but registered designs remain one of the most useful rights for apparel brands, for their 25 year duration, and obtaining appropriate registrations at an early stage of the design process is essential.”

It remains to be seen whether Birkenstock will switch up its strategy in the face of this denial of copyright protection. However, the case shows in any event that the best IP strategy is one that is not based on one single element or single category alone. Birkenstock knows this and is also very active in trying, for example, to obtain trade mark protection for its iconic bone-patterned sole.

Co-written by Emily Swithenbank of Pinsent Masons.