Following the ECJ’s preliminary ruling on USM Haller and Mio, the Federal Court of Justice (BGH) has referred the case back to the Higher Regional Court of Düsseldorf. In doing so, it has applied the ECJ’s responses to the facts of the case and instructed the Higher Regional Court to make further findings.
The Federal Court of Justice (BGH) has identified three fundamental errors on the part of the Court of Appeal.
No heightened protection requirements for applied art
The Higher Regional Court had deduced from the relationship between design law and copyright law that copyright protection for everyday objects must remain the exception and that, consequently, higher standards of originality must be applied.
The Federal Court of Justice (BGH) rejects this view. There is no normative ‘rule-exception’ relationship between design protection and copyright protection. The same definition of a ‘work’ under EU law applies to works of applied art as to all other types of works.
The fact that everyday objects are, in practice, less likely to be protected by copyright is not due to a higher threshold for protection. Rather, it is because technical, ergonomic, safety-related or industry-standard requirements often limit the scope for free creative decision-making.
Objective, not subjective, assessment
The Higher Regional Court had based its decision primarily on whether the creators of the USM Haller system had consciously made free creative decisions and intended to convey specific design messages.
According to the Federal Court of Justice (BGH), this too constitutes an error of law. What is decisive is not the author’s inner awareness, nor their explicitly stated creative intention. Rather, what is decisive is whether, objectively speaking, free and creative decisions can be identified in the specific design that reflect the author’s personality.
Creativity must therefore be sought and identified in the form of the object itself. Mere ideas, intentions or retrospective explanations which have found no recognisable expression in the design are insufficient.
The evidential value of subsequent recognition
The Higher Regional Court had essentially regarded the inclusion of the USM Haller system in the collections of the Museum of Modern Art in New York and the Neue Sammlung in Munich as irrelevant, because these circumstances had arisen only after the system had been created.
The Federal Court of Justice (BGH) clarifies that such subsequent circumstances may well constitute evidence of the original creativity. However, this is subject to the condition that inclusion in museums or recognition within professional circles is based specifically on the creative expression of the design.
Conversely, there is no relevant indicative effect if an object is included merely because of
The most important part of the decision in practical terms is to be found in the guidance provided for the reopened appeal proceedings. The Federal Court of Justice (BGH) sets out an almost step-by-step examination framework for the Higher Regional Court.
Determination of the subject matter of protection
The Higher Regional Court must first determine precisely what is claimed to be protected by copyright.
The Federal Court of Justice (BGH) did not object to the view that even a modular furniture system can be protected as a sufficiently precise and objectively identifiable subject matter. The USM Haller system consists of a small number of recurring individual elements which are combined according to specific principles and produce a characteristic design expression.
The subject matter of protection need not, therefore, be limited to a single, specifically assembled sideboard or shelving unit. The system, as embodied in various configurations, may also be eligible for protection, provided that its defining features can be determined with sufficient precision.
According to the Higher Regional Court’s findings, the following features are particularly relevant in this regard:
However, these features must not be described merely as an abstract idea. The Higher Regional Court must examine their specific formal design and their specific interaction.
Identification of free and creative decisions
The Higher Regional Court must positively determine which specific features or combinations of features are the expression of free and creative decisions.
It is not sufficient merely to establish that a design was not entirely dictated by technical constraints. The existence of various design options does not automatically imply that the design actually chosen is creative.
The Higher Regional Court must therefore ask, for each element considered to be eligible for protection:
According to the Federal Court of Justice (BGH), two groups of decisions are therefore not considered free and creative:
This second group is significant: mere freedom of choice does not in itself constitute creativity under copyright law.
Distinguishing between technical constraints
In the case of a functional object such as a furniture system, the Higher Regional Court (OLG) must carefully distinguish between technical and creative aspects.
An object is not excluded from copyright protection simply because its development was also guided by technical considerations. Technical considerations preclude protection only to the extent that they dictate the specific form of expression and leave no scope for creative decisions.
This means:
In the case of the USM Haller system, the Higher Regional Court will, in particular, have to examine whether and to what extent the ball-and-tube joints, the visible spatial grid structure, the proportions and the flush recessing of the metal surfaces were technically necessary or based on aesthetic and creative decisions.
The mere assertion that a connecting element fulfils a technical function is not sufficient. Rather, it must be examined whether its specific visible design was technically dictated.
Prior art
The fact that individual forms were already known does not preclude originality.
Even a design that uses only well-known basic geometric shapes can be original if the selection, arrangement, proportioning and combination of these shapes are based on free creative decisions.
The Higher Regional Court must therefore not deny protection merely on the grounds that tubes, spheres, cuboids, grid structures or metal surfaces were already known.
Rather, it must examine whether the specific combination of these elements constitutes an independent creative expression.
However, pre-existing, similar or identical designs may be an indication that
Insofar as the USM Haller system is based on pre-existing designs or sources of inspiration, any potential protection can only extend to those elements that are identifiable as the creators’ own creative achievement.
Variations and derivative designs
The Federal Court of Justice (BGH) adopts the distinction made by the European Court of Justice (ECJ) between variants of one’s own works and designs inspired by third-party works.
If a design is merely a variant of an earlier work by the same author, the creative elements taken from the original work may continue to be protected.
If, on the other hand, the original work and the new design are by different authors, it must be examined whether the new design
Even an inspired or derivative work may itself be protected by copyright, provided it demonstrates its own creative choices.
For the Higher Regional Court, this means that the history of the USM Haller system’s development must not be examined solely from the perspective of whether there were any models. The decisive factor is which independent creative elements have objectively manifested themselves in the final system.
Protection of individual parts
Not only the furniture system as a whole, but also individual components or combinations of features may be protected.
The prerequisite is that the part in question itself contains elements which constitute an independent expression of free creative decisions and contribute to the originality of the work as a whole.
The Higher Regional Court must therefore, where necessary, examine whether, for example,
the visible tube-and-ball connection, the spatial grid structure, the proportions of the tubes and balls, or the combination of the external metal framework and recessed surfaces constitute creative elements eligible for protection, either on their own or in a specific combination.
By contrast, an isolated technical component is not protected if its shape is determined exclusively by its function.
Museum and professional recognition
The Higher Regional Court must once again take into account the system’s inclusion in significant museum collections and its recognition within specialist circles.
These circumstances are neither a mandatory prerequisite nor conclusive proof of the work’s status as a work of art. However, they may be taken into account as an indication.
The Higher Regional Court must therefore clarify or assess the reason why the system was included in the relevant collections. Only recognition specifically on the basis of the design and its creative expression supports the claim of originality under copyright law.
Aesthetic impact: not to be considered in isolation, but nor to be ignored
The ‘extremely aesthetic overall impression’, which the Higher Regional Court had already established, does not in itself constitute grounds for copyright protection.
However, the Higher Regional Court must not conclude from this that aesthetics are legally insignificant. Aesthetic considerations may form part of the creative process.
It must therefore be examined whether the aesthetic effect
It would be impermissible to answer this question in the negative once again on the grounds that the creators had not expressly documented their aesthetic intentions. What is decisive is the objective design, not a demonstrable subjective artistic intention.
The second half of the ‘guidance on sailing’ concerns the assessment of infringement. In doing so, the Federal Court of Justice (BGH) amends or clarifies its previous case law.
a) First, the elements giving rise to protection must be precisely identified
Before comparing the products with those of the defendant, the Higher Regional Court (OLG) must determine which specific elements give rise to copyright protection for the USM Haller system. Only these elements can be infringed.
In particular, general design concepts, stylistic trends, geometric basic forms, technical knowledge, the established repertoire of forms, and functionally necessary design features remain unprotected and may therefore be freely adopted.
The mere adoption of the idea of a modular furniture system or a visible metal grid would therefore not in itself constitute a copyright infringement.
b) The key factor is the recognisability of creative elements
An infringement occurs if the specifically identified creative elements have been copied without consent and are recognisable in the object in question.
In this context, even the adoption of a quantitatively small part may be sufficient. The prerequisite is that this part itself expresses an independent intellectual creation.
The Higher Regional Court must therefore not merely examine whether the entire USM Haller system has been copied in its entirety. It must also investigate possible adoptions of individual combinations eligible for protection.
c) No comparison of the overall impression within the meaning of design law
The Federal Court of Justice (BGH) expressly departs from its previous case law insofar as that case law required a comparison of the overall impressions of the earlier and the contested subject matter for the purposes of assessing copyright infringement.
Such a comparison of overall impressions is typical of design law. In copyright law, however, the question is:
Are the creative elements that justify the protection of the earlier work recognisable in the contested object?
This does not, however, mean that the overall design of the contested product is irrelevant. It must still be considered as a whole in order to assess whether the elements taken from the earlier work are still recognisable in the new design or whether they ‘fade into the background’ due to other elements.
The difference, therefore, is that it is not a matter of weighing up two abstract overall impressions against one another. Rather, the test is whether the specifically protected elements continue to be recognisable within the overall context of the contested object.
d) Level of creativity and scope of protection
Of particular significance are the comments on the relationship between level of creativity and scope of protection. Here, the Federal Court of Justice (BGH) adds its own comments to those of the European Court of Justice (ECJ), which, from its perspective, certainly give cause for reflection in relation to the ECJ’s guidelines.
The scope of copyright protection must not, in legal terms, be determined by the extent of the creative freedom available or the degree to which the author has exercised it. The same exclusive rights and the same standards for determining infringement apply to works of applied art as to other works.
Nevertheless, the level of creativity is of considerable practical significance: a highly original and expressive element remains recognisable even when significantly altered. An element with only a low degree of originality may be rendered unrecognisable by even minor deviations in the new design. In the case of everyday objects, the technically limited scope for creativity may therefore, in practice, result in a narrow scope of protection.
The Federal Court of Justice (BGH) states, as a practical consequence, that where the level of creativity is low, only an almost identical reproduction may, under certain circumstances, constitute an infringement.
However, when carrying out the specific test of recognisability, the Higher Regional Court (OLG) may and must take into account that weakly pronounced creative features are more easily lost within a different overall design.
Key message of the ‘Sailing Guide’
The Federal Court of Justice (BGH) requires the Higher Regional Court (OLG) to conduct a strictly element-based assessment: it must first objectively identify exactly what constitutes the creative achievement of the USM Haller system, and only then may it examine whether precisely these creative elements have been recognisably incorporated into the defendant’s products. Neither an abstract artistic intention on the part of the creator nor a mere comparison of overall impressions may replace the concrete identification of the design elements that give rise to protection and those that have been adopted.
