21 Feb 2022 | IP-Update

Cologne Regional Court affirms the eligibility of sandals for copyright protection

In preliminary injunction proceedings, the Regional Court of Cologne rules in favour of a shoe manufacturer and affirms the eligibility of sandals for copyright protection.

By order of 30 December 2021, the Regional Court of Cologne provisionally decided in preliminary injunction proceedings that a total of four sandal models of a well-known shoe manufacturer enjoy copyright protection and may no longer be offered or marketed by the defendants offering similar shoe models (see order of the Regional Court of Cologne of 30 December 2021, ref. no. 14 O 419/21). 

Decision of the court

The defendants offered the shoe models in dispute in their online shop and put them on the market by sending them to buyers in the Federal Republic of Germany. Through a test purchase in the judicial district of Cologne’s Regional Court, the case finally became pending before this court. 

The court assumed that the four sandal models were works of applied art protected by copyright under Section 2 (1) no. 4 UrhG. In doing so, the Board relied significantly on the "Birthday Train" decision of the Federal Court of Justice of 13 November 2013 (Case No. I ZR 143/12) and assumed that the shoe models each reached a level of design that justified copyright protection. The decision literally states:

"Each of the plaintiff’s shoes, which are to be regarded as articles of daily use, displays a considerable artistic design which rises over and above the form dictated by the function."

In doing so, the court assumed that the designs of the straps or the upper side of the shoe, the sole, the thorn buckle, the profile, the more or less undisguised lateral cut of the sole, the absence of stitching and ornamentation, the lines as well as the respective diverging minimalist shapes were sufficiently individual and artistic.

The injunction court was convinced that the plaintiff was able to credibly demonstrate, taking into account an expert opinion, that the creator had used an existing scope of design in the development that was sufficiently different from the market environment at the time of creation.

Finally, the court concluded that the challenged copies are almost identical reproductions, despite the affixing of different trademarks.

Although a protective letter was filed, the court issued the requested interim injunction without an oral hearing. The requested order for a security deposit was rejected with the argument that the defendant's offer, according to its own statement, is not directed at customers in the Federal Republic of Germany.

Conclusion

The decision breaks with the previous practice according to which fashion creations only enjoy copyright protection in absolute exceptional cases. Although the "Birthday Train" decision of the Federal Court of Justice put an end to the different requirements for copyright protection for works of visual and applied art, it is more than questionable whether shoe models, even if they have a certain degree of fame, actually cross the threshold for copyright protection.

Since these are "only" preliminary injunction proceedings, it cannot be ruled out that the Cologne Higher Regional Court will assess the eligibility for copyright protection differently. If the case goes to the main proceedings, it will probably be the Federal Court of Justice which will ultimately have to have the final say here and explain whether the interpretation of its decision from 2013 – and taking into account the ECJ case law on fashion creations that has since been handed down – really goes as far as the Cologne Regional Court has now assumed.

Author: Silke Freund