The First Civil Senate of the Federal Court of Justice, which is responsible for copyright law, among other things, has ruled that, in principle, no higher requirements are to be placed on the copyright protection of works of applied art than on that of works of non-purpose art.
The plaintiff is a self-employed toy designer. The defendant manufactures and sells toys. In 1998 the plaintiff drew designs for the defendant for, among other things, a train made of wood on whose carriages candles and numbers can be attached ("birthday train"). She received a fee of DM 400 for this.
The plaintiff is of the opinion that its designs are works protected by copyright. The agreed remuneration was - at least in view of the great sales success of the birthday train - too low. She is therefore claiming payment of (further) appropriate remuneration from the defendant.
The action was unsuccessful in the lower courts. The Court of Appeal held that the designs produced by the plaintiff were not protected by copyright. According to the established case-law of the Federal Court of Justice, in the case of works of applied art, insofar as they are amenable to design protection, higher requirements are to be placed on the level of design necessary for copyright protection than in the case of works of art without a specific purpose. The plaintiff's designs did not meet these requirements. On appeal by the plaintiff, the Federal Court of Justice set aside the appeal judgment and referred the case back to the Court of Appeal for a new hearing and decision, insofar as the Court of Appeal rejected a claim for payment of (further) reasonable remuneration in relation to acts of exploitation performed after 1 June 2004.
In its earlier case law, the Federal Court of Justice justified the higher requirements for the design level of works of applied art that are eligible for design protection by stating that for such works of applied art, the design right provides a protective right similar in nature to copyright. Since the design eligible for design protection must already stand out from the average design that is not protected, an even greater distance, i.e. a clear superiority of the average design, is required for copyright protection eligibility.
According to the Federal Court of Justice, this case law cannot be upheld in view of the reform of design law in 2004. This reform created an independent industrial property right in the form of design law and eliminated the close relationship to copyright. In particular, protection as a design no longer presupposes a certain level of design, but rather the distinctiveness of the design. Moreover, since design protection and copyright protection are not mutually exclusive but can exist side by side, the fact that a design is amenable to design protection does not justify denying it copyright protection or making it dependent on special conditions. Therefore, according to the Federal Court of Justice, the requirements for copyright protection of works of applied art are basically no different from those for copyright protection of works of non-purposeful fine arts or literary and musical creations. It is therefore sufficient that they reach a level of design which, in the opinion of circles receptive to art and reasonably familiar with art appreciation, justifies speaking of an "artistic" achievement. This also applies to the plaintiff's designs produced in 1998. However, according to the Federal Court of Justice, the plaintiff is not entitled to remuneration insofar as the defendant exploited her designs before the Design Reform Act came into force on 1 June 2004. Until that date, the defendant was entitled to rely on the established case law of the Federal Court of Justice that it would not be held liable for payment of (further) reasonable remuneration due to exploitation of these designs.
The Federal Court of Justice referred the case back to the Court of Appeal, which will have to examine whether the toys designed by the plaintiff meet the lower requirements that are now to be imposed on the level of design of works of applied art.
Judgment of the Federal Court of Justice (BGH) of 13 November 2013 - I ZR 143/12 - Birthday Train
Lower courts:
LG Lübeck - Judgment of 1 December 2010 - 2 O 356/09
OLG Schleswig - Judgment of 22 June 2012 - 6 U 74/10
Source: Press release of the BGH
Goldberg Attorneys at Law 2013
Attorney at Law Michael Ullrich, LL.M. (Information Law)
Specialist lawyer for information technology law
E-mail: info@goldberg.de
