INDUSTRIAL DESIGNS IN GERMANY O
n November 13, 2013, the Federal Court of
(Bundesgerichtshof), overruling well-
established case law, found that the requirements for protecting works of
applied art under
copyright law must be the same as the standards for protecting works of fi ne art. Since works of applied art include industrial designs, this is good news for designers and design right holders. However, given this abrupt turnaround, practitioners may feel disoriented, in particular when it comes to parallel protection under design and copyright law.
The status quo T e question of confl ict or overlap between copyright law and design law has never been the subject of legislation in Germany. Rather, the courts, and especially the Federal Court of Justice, have established that substantive requirements in the sense of degree of originality or degree of aesthetic content for establishing copyright protection for works of applied art must be more stringent than those for works of fi ne art, provided that such a work of applied art was susceptible to design protection.
T is clear distinction—established decades ago and last re-confi rmed some 20 years ago in 1995 (Carline T istle) and some ten years ago in 2004 (Metal Bed)—was justifi ed by the assumption that the subject matter of protection under design law was in principle the same as that protected by
copyright, and both laws would diff er
only gradually in the required level of artistic creation. As designs protected under design law had to be novel and had to show a certain level of originality, copyright law should require a higher degree of creativity or originality (in the sense of “signifi cantly surmounting the originality of the average design”) in order to allow an industrial design—a work of applied art—to be protected under copyright law.
EU design and copyright law harmonisation Design law in Europe consists of EU design legislation
providing for registered and
unregistered Community designs, governed by Council regulation (EC) No. 6/2002 of December 12, 2001 on Community designs (Community Designs
Regulation–CDR) and
national design laws in the 28 member states of the EU, as to a substantial degree harmonised by Directive 98/71/EC of the European parliament and of the Council of October 13, 1998 on the legal protection of designs (Designs Directive).
Pursuant to Article 96(2) CDR, a design protected by a Community design shall also be eligible for protection under the law of
www.worldipreview.com Justice of Germany
copyright of member states as from the date on which the design was created or fi xed in any form. T e extent to which, and the conditions under which, such a protection is conferred, including the level of originality required, are to be determined by each member state. Consequently,
Community design law,
seen from the perspective of the relationship to
other forms of protection, particularly under copyright law, can be described as one of co-existence rather than confl ict. T e Designs Directive contains in Article 17 a provision which is in substance the same as Article 96(2) CDR.
From the angle of copyright law, and in the absence of any substantive harmonisation of copyright law in the EU as regards the level of originality or
artistic creativity required for
protecting works of applied art under copyright law,
the relationship between European or
national design law on the one hand and national copyright law on the other is governed by the copyright laws of each member state. In other words, national laws (and courts interpreting and applying national copyright laws) determine whether works of applied art, including industrial designs, are protected by copyright and whether the standard of originality is the same or diff erent.
The Birthday T In
November 2013 of rain decision
this rather complicated situation from interacting national and
European laws, the Federal Court of Justice was asked to decide whether the designer and author of the ‘birthday train’ created in 1998 and shown on page 22 could claim rights under German copyright law.
T is was important because the designer was interested, in light of signifi cant sales of
the
products, in receiving further compensation from the employer and manufacturer. Such claims are available under German copyright law but not under German or European design law.
Upon the designer’s appeal, the Federal Court annulled the decision of the Schleswig Appeal Court and held that the designer’s work of applied art was, in principle, susceptible to protection under German copyright law. T e court found, fi rst, that the new German design law of 2004, following the standards of the Designs Directive, established an independent IP right and removed any existing close relation to copyright law; protection under design law would no longer be equal to copyright protection.
Second, design law would not require a specifi c degree of
creativity or originality but the focus was on similarity or dissimilarity. T ird,
“INDUSTRIAL
DESIGNS CAN NOW CLAIM COPYRIGHT PROTECTION IF, AS A RESULT OF A SUFFICIENT DEGREE OF CREATIVITY, THE APPEARANCE PRODUCES AN ‘AESTHETIC IMPRESSION’
RESULTING FROM AN ‘ARTISTIC PERFORMANCE’.”
since design and copyright protection would not confl ict but co-exist, including diff erent requirements for establishing protection and diff erent legal eff ects, industrial design could be protected by both laws without requiring higher standards under copyright law than in the case of works of fi ne art, literature or music.
Standards for establishing copyright protection after Birthday T
rain
As a result, the Federal Court of Justice concluded that for the protection of works of applied art under copyright law “a degree of creativity which allows, from the view of a public open to art and suffi ciently skilled in ideas of art, to be called an ‘artistic’ performance” would be required, which is the traditional standard for works of fi ne art and literature. Consequently, diff erences in standards for protecting works of applied and non-applied arts no longer exist under German copyright law.
T is ‘internal’ alignment of copyright law,
covering all kinds of works under the same standard, is a truly ‘national’
solution, not
required under European design law or under current harmonisation of copyright law. Rather, designers and right holders will profi t from an explicit co-existence of parallel schemes of protection. Diff erences between both laws will, of course, continue to exist: while works of
applied and non-applied art require an
“artistic” performance to claim protection under German copyright law, protecting such works under German or European design law requires “novelty” and “individual character”.
World Intellectual Property Review Annual 2014 21
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