Dear Doc:
Some things are protected by trademarks. Some by copyrights. Some by “trade dress”. Others by design patents. Some by utility patents. And others by trade secrets. How do you lawyers decide which is which, and can it be more than one?
Signed,
Confused Again
Dear CA:
Yes…this can be confusing, and often the stakes are very high as companies try to prevent their products from being copied by competitors. Is a Cabbage Patch Kid® doll a useful article or a “soft sculpture”? Is the design of a running shoe sole just functional tread meant to prevent slip-sliding away, or is it a unique indicator of origin like the “Swoosh” or three parallel stripes or a gigantic “NB”?
In a recent case in Germany, a court was asked to determine whether the famous Birkenstock sandal, so beloved of hippies and hipsters worldwide, is a copyrightable work and not just a functional and comfortable piece of footwear.
According to the Birkenstock company’s website, the brand dates back to 1774. The founder, Johannes Birkenstock, and his brother “lived the simple life of rural craftsmen, hand-making shoes from start to finish.” Some time later, the Birkenstocks began making shoes that complemented the natural structure of the foot. By the 1920s, Konrad Birkenstock marketed the sandals specifically for their orthopedic purposes. A few decades after that, Karl Birkenstock began producing a product “where the structure and construction was visible and integral to the design, which is a perfect reflection of Brutalism.” Emily Brayshaw, a historian of fashion at the University of Technology in Sydney, calls Birkenstocks “an amazing piece of applied art.” Brayshaw also said, “Even deciding that function must come first and aesthetics must come second is still an aesthetic decision.”
“The shoe is influenced by Brutalist architecture. This can be seen very clearly in individual elements of the shoe,” said Konstantin Wegner, a lawyer for Birkenstock. “We are therefore absolutely convinced that the shoe is an iconic design.”
The judge in the matter [use your browser’s translate feature] was not so convinced, stating: “[p]urely technical creation using formal design elements is not eligible for copyright protection” and “[r]ather, for copyright protection, a level of design must be achieved that reveals individuality.” Birkenstock calls the court’s decision “a missed opportunity for copyright protection in Germany,” according to the Washington Post. The shoe company added that it will “continue to take tough action against copycats who think they can make money from other people’s creative ideas and inventions.”
As Jared Goldstein, a lawyer specializing in footwear and the co-author of the website “Sneaker Law,” said, “The court found that while Birkenstock’s sandals are undeniably iconic, their design is largely driven by ergonomic and orthopedic needs, not creative expression.”
Do you have a product you think ought to be protected by some kind of proprietary rights? Call the lawyers and LW&H. They can help you navigate the many forms of intellectual property protection, both in the United States and abroad.
Until next month,
The “Doc”
— Lawrence A. Husick, Esq.