Birkenstock filed a suit in order to prevent other brands from duplicating its sandal design. Here’s why that doesn’t fly when it comes to clothing.
You might find your well-loved leather Birkenstocks sandals a sight to behold … but are they art?
The answer is no, according to a German court that recently ruled the comfy open-toed sandals are not art. But why would Birkenstock make this claim?
The company claimed the sandals were art in order to protect them under copyright laws and prevent other manufacturers from making knockoffs. The court said the sandals are a design, which is not as protected under German or American law, said Alexandra Roberts, professor of law and media at Northeastern University.
“Works of art need to show a certain amount of individual creativity and individuality,” Roberts explained. “In the U.S., copyright is available … only where the design element is physically or conceptually separable from the utilitarian item.
“If you make an original painting on a shirt, then we’d say the original work of visual art could be copyrightable, because you could take it off the shirt and it would be copyrightable if it were on a can. But copyright doesn’t protect ideas, common patterns, or even logos or designs that aren’t creative enough.”
What this means is functional things like the cut or shape of a garment of clothing generally cannot be protected by copyrights, which are meant to protect unique expressive works like song lyrics or paintings, said Roberts who is a leading authority on intellectual property.
This differs from a trademark, which is protection for source indicators like the Nike swoosh, Roberts said. There is also trade dress, which is trademark protection of elements of packaging or design, like the distinctive shape and design of bottles of Jack Daniels. Meanwhile patents, which come in a few forms, protect novel inventions, like the ingredients in a vaccine.
“For copyright, it doesn’t matter what you say (in your advertising),” Roberts said. “The question is going to be, is your design infringing on somebody else’s design? And have they actually registered copyright? For trademark and trade dress, you don’t need registration to get protection.”
Clothing brands can therefore mimic other designs when it comes to function, but not creativity. For example, Lilly Pulitizer, a clothing brand known for its colorful prints, could copyright the pattern of one of its shift dresses, but not the design itself.
“In fashion in the U.S., we have all these different IP regimes and sometimes protection is available,” Roberts said. “But for most of them, we screen for functionality. We ask these basic questions like ‘Is this a work of art that exists just to be a work of art, or is it something useful?’”
The law also looks at whether a design might put competitors at a disadvantage, Roberts said. For example, luxury designer Christian Louboutin does have trade dress protection for the distinctive red shade it puts on all its shoes, because it’s a mark of the brand and other brands doing this are likely trying to ride off this instead of doing it for aesthetic reasons.
“Consumer confusion is really the domain of trademark law,” Roberts said. “The fundamental question is ‘Does what the other company is selling creating a likelihood of confusion among consumers?’”
This workaround means many brands can get away with creating “dupes” of popular clothing items like Birkenstocks or Chanel bags so long as they don’t sell it with any trademarked content like logos. The clothing brand Quince was recently highlighted for doing this; buyers said they like that it offers affordable versions of designer goods.
This applies to not only clothing, but other items like furniture.
Why is the law like this around trademarks? Roberts said it’s supposed to encourage competition. Imagine if you could only get two-strapped sandals with molded insoles at Birkenstock. The company would rule the market in this area. This is why, she said, the judge ruled against a case where the clothing company Abercrombie tried to assert trade dress protection for rugby shirts.
“That is a whole category of goods and we want to foster competition in that category,” Roberts added. “Trademarks are supposed to be pro-competition. So we try to avoid granting exclusive rights that limit competition in a particular market. We want up and coming businesses to be able to enter the market without all these barriers.”