The Federal Court of Justice (BGH) has just handed down a significant ruling regarding the level of creativity required for product design—the “USM Haller II” case (I ZR 96/22). It is worth a close look for companies that invest in outstanding product design.

The good news first: under copyright law, utilitarian objects are not “second-class art.”

What did the BGH decide?

Following clarification by the CJEU (case “Mio et al.”), the following is now established:

• There is no rule-exception relationship between design protection and copyright law. Utilitarian objects must not be subject to stricter requirements than “non-utilitarian” art.
• The assessment is purely objective; whether the designer was aware of their artistic freedom is irrelevant.
• Museum exhibitions or design awards can serve as indicators of originality—provided they specifically recognize the creative expression.

Important context: The BGH did not rule that USM Haller is protected. It set aside the appellate judgment because the Higher Regional Court (OLG) of Düsseldorf had applied a standard that was too strict and is now outdated. Whether the furniture system actually clears the hurdle must now be re-examined.

The flip side: The “Birkenstock” case

Just a few months earlier, the BGH had dismissed a lawsuit filed by Birkenstock against a copycat of its “Madrid” and “Arizona” sandal models (I ZR 16/24). Even under the interpretation most favorable to the plaintiff, design awards and inclusion in the MoMA collection were insufficient—because the specific design elements that went beyond mere functionality had not been demonstrated clearly enough.

The combined message of both rulings: Reputation alone offers no protection. What matters is whether, in the event of a dispute, you can provide specific evidence of the creative decisions behind your design.

What does this mean for your IP strategy?

• Cumulative protection: A registered design protects the overall impression against imitation—albeit for a limited time. Copyright additionally protects the “creative DNA” of your product, with a term of protection extending up to 70 years after the creator’s death. Combining both forms of protection is more powerful than either one alone.
• Narrow scope of protection where function dictates form: The more closely the shape is dictated by function, the more copyright protection is effectively limited to (near-)identical copies.
• Documentation is decisive: To prevail in an infringement case, you must be able to precisely demonstrate where artistic freedom went beyond technical necessity—not just during litigation, but from the very start of the design process.