Written By: Gabriella Fortugno, Charlotte Tyhurst and Delaney Helmke
Introduction
For Canadian creators, understanding the differences between copyright and industrial design protection is crucial to making informed decisions about their intellectual property (IP). These protections each serve different purposes and protect different types of IP.
A recent case from the German Federal Court of Justice involving the popular Birkenstock™ sandal highlights the importance of the differences between copyright and industrial design protection. In the Birkenstock™ case, the creators of the sandal sought an injunction to prevent competitors from selling sandals with a nearly identical design, arguing that they infringed copyright. However, the German Court ruled that the sandals did not meet the eligibility requirements for copyright under German law, rather, they merely constituted functional products with design elements.
This article will explore how this situation would be treated in Canada, as well as best practices that Canadian creators can adopt moving forward.
Copyright Versus Design Protection
1) What Does it Protect?
In Canada, copyright protection extends to original works of art, literature, music, and other forms of creative expression. The purpose of copyright law is to protect the rights of creators by granting them exclusive control over their original works.
Industrial designs protect only the unique appearance of a finished article such as shape, configuration, patterns, and/or ornamentation. For example, famous industrial designs in Canada include Bombardier’s Ski-Doo, Lululemon’s sweaters, and Bauer’s hockey sticks.
2) Term of Protection
In Canada, the term of copyright protection lasts for the duration of author’s life plus a period of 70 years. The term of an industrial design registration is 15 years.
3) How Do You Get Protection?
To benefit from copyright protection, copyright exists upon creation of the work and does not require registration. An industrial design requires an application that must be examined for novelty by the Canadian Intellectual Property Office.
Canada’s Approach to the Birkenstock™ Case
If the Birkenstock™ case were brought before a Canadian court, the question would be whether the sandal qualifies as an “artistic work” under section 5(1) of the Copyright Act. The court would assess whether the design reflects original skill and judgement, rather than being dictated purely by a utilitarian function.
The Canadian courts have interpreted the meaning of the word “original” to mean “more than a mere copy of another work” and that the creation of the work requires some degree of exercise of skill and judgment (CCH Canadian Ltd. v. Law Society of Upper Canada, the Supreme Court of Canada). As such, in this case, the court would consider whether the design’s shape, form, and/or style contains creative choices that go beyond what is necessary for mere comfort or wearability (i.e., its utilitarian function), to evaluate the differences between artistic expression and practical purpose.
Given that Canadian courts have been cautious in granting copyright to “useful” objects, it is likely that a Canadian court would follow suit with the German Court in finding that Birkenstock™ sandals would not acquire copyright protection. As such, a Canadian designer or creator would likely have greater success in obtaining a design registration when the object has a useful or utilitarian function.
Takeaways
The German Birkenstock™ case is an example of the distinction between copyright and industrial designs. Creators should consider the design and the object itself when determining the best type of protection.
If you have questions about protecting your products’ creative features, contact one of our experts today to discuss the ins and outs of copyright and industrial design protection!
