Authors of works in the literary, scientific and artistic domains enjoy protection for their works in Germany under Section 1 of the German Copyright Act (Urheberrechtsgesetz (UrhG)). Protected works in the literary, scientific and artistic domains include, inter alia
, literary and musical works; photographic and cinematographic works; and artistic works, including works of applied art and drafts of such works (UrhG sec. 2(1) nos. 1-7). However, only the author’s “own intellectual creations” constitute works within the meaning of the UrhG (id. sec. 2(2)).
According to settled case law of the German Federal Court of Justice (Bundesgerichtshof (BGH)), an author’s “own intellectual creation” is a creation of individual character when its degree of creativity is sufficiently high that the relevant public, which is sensitive to art and familiar with concepts of art, perceives the work as an artistic achievement. (See, e.g., BGH, Jan. 27, 1983, Case I ZR 177/80—Brombeer-Muster
Previous State of the Law: Different Standards of Creativity for Works of Art and Works of Applied Art
Previous case law of the BGH held that the barriers for copyright protection of works of pure art such as literary or musical works are very low and require only minimal creativity (the so-called principle of “small change” or “small coin” (“kleine Münze”)), whereas copyright protection of works of applied art, which may also be protected by registered designs, requires that such works significantly exceed the average standard of creativity. The BGH and even the German Federal Constitutional Court (Bundesverfassungsgericht (BVerfG)) justified these different standards for the copyright protection of works of pure art and works of applied art by pointing out that design rights and copyright were essentially identical in nature, except with respect to the degree of creativity required for each. As design rights do not require that the creation exceed the standard of an average (merely “craftsman-like” and ordinary) creation, copyright protection for such applied works would require a significantly higher standard of creativity. (See, e.g., BGH, June 22, 1995, Case I ZR 119/93—Silberdistel
; BVerfG, Jan. 26, 2005, Case 1 BvR 157/02—Laufendes Auge
New State of the Law: Same Standards of Creativity for Works of Art and Works of Applied Art
The subject matter of the BGH’s recent Geburtstagszug
(“Birthday Train”) decision (BGH, Nov. 13, 2013, Case I ZR 143/12) was a wooden toy train with candles and numbers attachable to its wagons. In the decision, the BGH explicitly reversed its previous case law, according to which works of applied art required a significantly higher degree of creativity than just the average. Instead, the Court held that the requirements of copyright protection for applied art are the same as for works of non-utilitarian fine art or literary or musical works. Thus, it would be sufficient if they reach a degree of creativity that—in the view of the relevant public, which is sensitive to art and familiar with concepts of art—justifies the assumption that the work is an artistic achievement. According to the BGH, this change in settled case law is not required by copyright regulations or directives of the European Union but is due to a revision of the German Design Act in 2004, which was necessary to transpose the EU Design Directive (Directive No. 98/71/EC, Oct. 13, 1998) into national German law. German legislation has, according to the BGH, created the design right as an independent new intellectual property right and has eliminated its close relation to copyright. This became evident in the revision of the German Design Act in 2004, which provides that to qualify for protection a design no longer requires “originality” (and thus a certain degree of creativity) but instead requires “individual character” (and thus dissimilarity).
The BGH pointed out that as a result of this change, the previous view of the relationship between design rights and copyright—according to which the design right existed as an identical method of protection to copyright, but with a lower threshold of creativity to satisfy—was no longer valid. Thus, it held that the higher requirements for copyright protection for works of applied art cannot be justified by such a hierarchical relationship.
As the Court particularly noted, under the German Design Act (as amended in order to implement the EU Design Directive into national law), a design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design that has been made available to the public before the date of filing of the application for registration. Since the aforementioned amendments to the German Design Act entered into force, the previous requirements for the protection of a design under German law— originality and a certain degree of creativity—no longer exist. Even the fact that under both Article 6.2 of the Community Design Regulation (Council Regulation (EC) No. 6/2002, Dec. 12, 2001) and Section 2(3) of the German Design Act (as amended by the EU Design Directive) the degree of freedom of the designer in developing the design should be taken into consideration in assessing “individual character” is not decisive. According to the BGH, this only means that taking the degree of creativity into account is not excluded, but it still does not change the fact that the protection of a design does not require any degree of creativity. Instead, it is necessary but also sufficient that the overall impression produced by the design differs from that produced by previously known designs.
The BGH further held that the coexistence of copyrights and design rights—particularly those for unregistered Community Designs, with a term of three years—does not justify requiring a significantly higher degree of creativity than the average in order for copyright protection to be granted for works of applied art. Copyrights and design rights might be similar in their character but still have different conditions for protection and legal consequences. That a creation may be subject to design protection does not justify denying copyright protection or requiring even higher standards for copyright protection for works of applied art. As the BGH further stated, this change in approach by the Court does not make design protection redundant, because a creation that may be subject to design protection because of its differences as compared with previously known designs might still not have the degree of creativity that is required for copyright protection.
The BGH conceded that particularly with respect to the long term of copyright protection—under German law, copyright expires 70 years after the creator’s death—it is necessary to require a degree of creativity that is not too low. However, the Court held that because the design right is not a substantially identical base layer of copyright, the application of different standards of creativity for non-utilitarian works and works of applied art is not justified. The BGH even denied any risk that by applying the same standards, the boundaries within which similar creations may be used would be too narrow. The Court particularly argued that the aesthetic effect of a creation may establish copyright protection only to the extent that it is the result of an artistic work and does not only serve a functional purpose. According to the Court, where works of applied art, which require functional elements, are concerned, the degree of creative freedom of the creator is always limited. Thus, it is always necessary to question whether such works of applied art are artistically designed beyond the form predetermined by their function. The BGH also noted that a low degree of creativity may be sufficient for copyright protection but also establishes a narrow scope of protection for the respective work.
As a result, the BGH remitted the case to the Higher Regional Court of Schleswig in order to determine whether the “birthday train” was protected as a work of applied art under the same low standards that apply to non-utilitarian works of pure art.
Consequences for Filing Trademarks, Namely Three-Dimensional Trademarks and Designs?
The BGH’s decision makes it much easier for manufacturers of design products to defend their products against counterfeits on the basis of copyrights, particularly if design rights have not been registered or just expired. But this certainly does not mean that manufacturers can save money by not registering designs or even trademarks. Not only are the terms of protection for copyrights, designs and trademarks different, but, even more important, the subject matter of copyright, design or even trademark protection and the scope of the respective protections are different.
As the BGH repeatedly emphasized in its “Birthday Train” judgment, there are significant differences between design rights and copyrights owing to the amendment of the German Copyright Act in 2004. Only works of applied art that have at least a minimum degree of creativity (beyond the creativity required for the intended purpose of use) are subject to copyright protection, while design protection does not require any creativity. Instead, the design must be new and have individual character, that is, an overall impression that differs from that produced by previously known designs. Designers or manufacturers should therefore register their new designs always keeping in mind that a design can be the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colors, shape, texture and/or materials of the product itself and/or its ornamentation. One should also keep in mind that “product” means any industrial or handicraft item, including, inter alia, parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces, excluding computer programs (but including, for example, user interfaces of computer software or even icons of apps for mobile devices). As a result, many items may be subject to design protection but may not have the minimum degree of creativity required for copyright protection.
Also, under case law of the European Court of Justice (ECJ), and under German national law, a trademark may consist of the shape of goods or their packaging, provided it is capable of distinguishing the goods or services of one undertaking from those of other undertakings. (See, e.g., Procter & Gamble v. OHIM
, Joined Cases C-473/01 and C-474/01 (ECJ Apr. 29, 2004); OHIM v. Erpo Möbelwerk
, Case C-64/02, para. 42 (ECJ Oct. 21, 2004).) That distinctive character must be assessed, first, by reference to the products or services in respect of which registration has been applied for and, second, by reference to the perception of the relevant public. (Procter & Gamble v. OHIM, para. 33; Storck v. OHIM
, Case C-24/05, para. 23 (ECJ Oct. 22, 2006).) According to equally consistent case law, the criteria for assessing the distinctive character of a three-dimensional mark consisting of the appearance of the product itself are no different from those applicable to other categories of trademark. Nonetheless, for the purpose of applying those criteria, the average consumer’s perception is not necessarily the same in the case of a three-dimensional mark consisting of the appearance of the product itself as it is in the case of a word or figurative mark consisting of a sign that is independent of the appearance of the products it denotes. Average consumers are not in the habit of making assumptions as to the origin of products on the basis of their shapes or the shapes of their packaging in the absence of any graphic or word element, and it may therefore prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark. (Mag Instrument Inc. v. OHIM
, Case C-136/02, para. 30 (ECJ Oct. 7, 2004); Storck v. OHIM
, paras. 24, 25).)
These examples show that the subject matter of copyright protection is different from the subject matter of design protection and entirely different from the subject matter of trademark protection. The shape, form or other characteristics of the visual appearance of a product or its packaging may not have a certain degree of creativity and thus be excluded from copyright protection. The overall impression the visual appearance produces on the informed user may still differ from the overall impression produced on such a user by any other visual appearance of a product or its packaging that has been made available to the public before, which could therefore be subject to design protection. As noted above, the BGH itself observed that granting copyright protection does not make design protection unnecessary, because a creation that may be subject to design protection because of its differences as compared with previously known designs might still not have the degree of creativity that is required for copyright protection. On the other hand, a design might not be new, and therefore excluded from design protection, but still be inherently distinctive or have acquired distinctive character through use. In this case, it can be subject to trademark protection.
Assessing whether the characteristics of the visual appearance of a product or its packaging qualify for or even require a design or trademark registration has not been rendered unnecessary by the BGH’s decision in the “Birthday Train” case. On the contrary: manufacturers should always seek broad protection for their products by filing design and trademark registrations, whichever may be suitable.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
© 2014 International Trademark Association