A recent decision by the German Court denied the worldwide famous shoe company Birkenstock copyright protection in relation to its Arizona and Madrid sandal models in a copyright infringement action against an imitator.
The Birkenstock case – Germany
Birkenstock advanced the case that the disputed shoe models “Madrid” and “Arizona,” which were created by Karl Birkenstock in 1963 (“Madrid”) and 1973 (“Arizona”), as well as the bone-pattern sole used since 1981, are copyrighted works of applied art, which is a category of protected works under the German copyright law which allows protection to works which have a utilitarian purpose but also have sufficient level of originality.
In its judgment dated 20 February 2025, the German Federal Court of Justice found that the design of the Birkenstock models resulted from technical function and Birkenstock failed to show that any creative freedom utilised for the designs went beyond that technical function.
This decision set a high threshold for the protection via copyright of designs which have a technical function and will make it harder for brands to enforce their rights against imitators in Germany if relying on copyright.
Chylak v CCC – Poland
The news for designers in Poland is much more promising, thanks to a recent decision of the Court of Appeal in Poznan, Poland in the case of Chylak v CCC. In this case, a Polish bag designer, Zofia Widmańska -Chylak, was successful in a copyright infringement case against a fashion retailer selling bags imitating one of Chylak’s designs.
The Chylak brand was created in Poland by Zofia Widmańska-Chylak in 2014, and since 2018 her bags have been available on Net-a-Porter and Farfetch, reaching customers all over the world. An art historian by education, Zofia Chylak learned designing skills at large international fashion houses, including Proenza Schouler in New York, and her bags collection carries a range of models, each with its own twist on various classics (https://chylak.com/uk/en/products/bags).
The case goes back to 2021 when Chylak noticed similarities between her own designs and the products offered by CCC. CCC is the market leader in the Polish fast fashion market, offering bags amongst other things.
Chylak sued for copyright infringement and the judgment was issued on 10 October 2022, allowing the claim.
CCC’s appeal was unsuccessful. In the justification of its judgment dated 25 October 2024 (ref I AGa 399/22), the Poznan Court of Appeal stated that CCC’s use of Chylak bag’s features goes beyond the scope of permitted inspiration.
The question central to the appeal was whether the finding of the first instance Court that copyright subsists in Chylak’s bag was correct. CCC claimed that the Chylak bag is a compilation of well-known and commonly used features and solutions in leatherworking, and therefore devoid of originality and creative elements, and at the same time of individuality and uniqueness. The Appeal Court did not agree with CCC, noting that according to Polish copyright law, a copyright protectable work includes a compilation which is using publicly available elements, provided that the selection, sorting and presentation of those elements is original.
The Appeal Court contrasted works of technical character, whose result is predictable and repeatable, with works which result from creative process, and which reflect the author’s own choices and imagination. The Appeal Court dismissed CCC’s arguments that the first instance Court was wrong to rely in its decision on the opinion provided by an independent expert, albeit introduced to the proceedings by Chylak, on the innovative compilation of classic elements in the bag at issue, and found that the opinion, together with the other evidentiary materials, such as printouts from articles in the fashion industry or offers from open internet sales services, confirm that Chylak’s bags are so distinctive and have features that differentiate them from other handbags that the target customers describe handbag models that are not made by Chylak (but are similar to them) as “like Chylak” or “a la Chylak”.
As a result, the Appeal Court prohibited CCC from further infringement, awarded Zofia Chylak damages and obliged CCC to publish information about the judgment on the main CCC website and on the accompanying Facebook page.
The indications are that CCC may take the matter to the Supreme Court. Notwithstanding this, however, the decision of the Appeal Court confirms the first victory by a designer against an imitator before the Polish specialist copyright courts.
In her commentary on the case, Zofia Chylak mentioned the significant financial burden associated with the proceedings, which the damages did not cover in full. The writer notes that Chylak filed her first design applications for some of her bags in 2020 and these cover the EU and the UK. It is not known from the judgement in which model of bag the copyright was found to be infringed and whether it had been protected by a design registration by the time the proceedings were issued, but one should not discount the importance of adequate design protection in the fashion industry to protect the IP in products which may prove successful and likely to be copied. Design protection might assist in relieving the financial burden associated with IP infringement cases, as copyright infringement actions are known to be evidence-heavy and thus expensive.