[Guest post] Germany: The House of Birkenstock – rise and fall under copyright law?

Hopefully not standing
on sweaty 🤢 Birkenstocks 

The IPKat has received and is pleased to host the following guest contribution by Katfriend Henning Hartwig (Bardehle Pagenberg) on the ‘House of Birkenstock’ and the various IP rights they tried over time, including trade dress law, design law, and copyright law, with mixed results overall. Most recent developments seem to warrant a closer look. Henning's post is based on a longer article recently published by the Journal of Intellectual Property Law & Practice. Here’s what Henning writes:

Germany: The House of Birkenstock – rise and fall under copyright law?

by Henning Hartwig

I.

The House of Birkenstock, established in Germany in 1774, has become a fashion icon, not least thanks to support from ageless influencers like Kate Moss and Gwyneth Paltrow. Thus, it does not come as a surprise that Birkenstock, on its way to fame and the New York Stock Exchange (NYSE), tried a variety of different IP rights in court, most prominently German trade dress law.

However, on 16 November 2017, the Cologne District Court dismissed claims brought by Birkenstock based on the ‘Arizona’ model shown below:

According to the Court, Birkenstock had tolerated third-party products for several years, leading to a significant dilution of the ‘competitive individuality’ of the ‘Arizona’ model, which is mandatory for finding an imitation.

The same was true for the ‘Madrid’ model shown below:

Other German courts did not seem to share this opinion as discussed just recently. However, overall, it seems that Birkenstock moved away from bringing claims, under German trade dress law, based on the ‘Arizona’ and ‘Madrid’ model.

II.

Overall, 423 Community designs are currently registered on behalf of Birkenstock IP GmbH, including variants of the ‘Arizona’ model (already introduced in 1977) and the ‘Madrid’ model (introduced even in 1963). Interestingly, while the EUIPO only recently confirmed invalidation of one of these variants, some German courts found presence of individual character or infringement – either because the defendant, surprisingly, did not challenge validity (in case of a variant of the ‘Madrid’ model) or because the variant allegedly showed sufficient differences over the ‘Arizona’ model, as observed with some critical remarks, only recently.

In this context, when looking into their U.S. design patents (being examined on the merits prior to registration, different from EU design law), it is interesting to note that Birkenstock appears to follow a similar portfolio strategy. For instance, on 7 May 2024, USD 1025555 was issued as shown below:

Obviously, and astounding, the overall impression produced by Fig. 2.1 corresponds to the overall impression produced by the ‘Arizona’ model shown above – with the only exception that the colour of the footbed/sole (black instead of light brown) and the material of the straps (plastic instead of leather) differ. It appears doubtful given a broad degree of freedom (in view of a variety of forms, as recently observed elsewhere that these differences would be ‘significant’ enough to render the design valid, according to EU design law and practice.

III.

The mixed results obtained based on German trade dress and design law seem to be explanation enough that Birkenstock, beginning in the year 2020, started proceeding against third party products based on claims under German copyright law as reported in detail.

To the best of the author’s knowledge, the Cologne District Court was the first German infringement court which was called to decide whether copyright subsists in the shape of the ‘Arizona’ model and other Birkenstock sandal models and, if so, whether the scope of protection of the assumed work would be infringed by the various accused products. Interestingly, with the first decision finding subsistence and infringement with respect to the ‘Arizona’ model, many other decisions issued by the same Civil Chamber of the Cologne District Court, with respect to the ‘Arizona’ model but also other Birkenstock models, followed, culminating in three decisions issued on 11 May 2023, in proceedings on the merits, with respect to the ‘Madrid’, ‘Arizona’, ‘Boston’, and ‘Gizeh’ model.

However, only on January 26, 2024, as briefly reported, the Cologne Appeal Court found lack of subsistence in copyright. In that respect, the court, inter alia, found that, as with any object of daily use, the freedom of the designer of the sandals at issue was limited by the intended use. A sandal would consist of a sole and at least one strap (shaft) to keep the sole on the foot; in that respect, ‘Arizona’ and ‘Madrid’ did not show any special features. Rather, particularly, the strap construction of ‘Madrid’ was similar to those of the previously known wooden footbed sandals, corresponding to the idea of a functional health sandal and the popular image of a health sandal at the time. ‘Arizona’, according to the court, was a further development of the ‘Madrid’ sandal and did not stand out from designs of the time as shown by expert opinion, with the arrangement of the strap following the anatomical function in relation to toe mobility and rolling, according to expert opinion.

Given that the Cologne Appeal Court allowed appeal for leave to appeal to the German Federal Supreme Court, it will be interesting to see whether these findings will stand the test of time, also in view of the two pending CJEU referrals (C-580/23 and C-795/23) [IPKat here and here].

However, final guidance on whether the various Birkenstock models can claim subsistence in copyright will not come down before 2025. This is true because, first, the German Federal Supreme Court suspended proceedings in ‘USM Haller’ (C-795-23) in view of ‘Mio’ (C-580/23), allowing the CJEU to hopefully combine both referrals for providing one, coherent set of legal answers to the various questions at stake. Secondly, once the two CJEU proceedings are concluded and once ‘USM Haller’ returned to the German Federal Supreme Court, that court will also be in the position to decide on the ‘Birkenstock’ proceedings remanded by the Cologne Appeal Court. That said, lastly, it is unlikely that the Supreme Court will hear the ‘Birkenstock’ case before having decided ‘USM Haller’.