By James P. Flynn, Epstein Becker Green

In 2015, the Wall Street Journal observed why Birkenstock sandals might be considered cool:

“It’s a taboo thing,” said New York-based stylist Brian Coats, who dresses Jimmy Fallon. “The fact that Birkenstocks are so uncool makes them cool.” The unstylish stereotype tied to Birkenstocks, said Mr. Coats, has made them ripe for the sort of re-contextualization that happens so often in fashion. [Ortved, CAN BIRKENSTOCKS EVER LOOK COOL ON A MAN?, WSJ, 5/14/2015]

An earlier article about the NHL saw no such ambiguity or reverse logic applicable to hockey because “Real Men Wear Skates,” and it seems unlikely that you’ll ever “convince me that hardwood is cooler than ice.” Why? Well because “NBA players dream of getting their next shoe contracts. Not hockey players. They dream of having their names etched on the Stanley Cup, the holy grail of pro sports trophies. Quick, what’s the name of the NBA’s championship trophy? See what I mean?” So hockey and everything associated with it is cool because “[h]ockey players have to combine all that speed and agility on top of managing to stay upright on a large ice cube” to produce “the undisputed best sport on the planet.” THW Archives, 10 Reasons Hockey Is the Greatest Sport on Earth, February 22, 2025. So, we have two different kinds of cool—the “so uncool that they are cool” sandals and a “so cool nobody comes close” sport.

There is a lot of money and opportunity in “cool” because “[c]ool products fill a genuine consumer need,” they “seduce consumer fantasy and imagination,” and they “appeal to the right group,” according to FORBES. Of course, they can exude cool, at least for a while, without having any real inherent value or use, like Pet Rocks or Silly Bandz, or they can be sneakers that do what sneakers do after incorporating the coolest inspirations of all time. And it is just these efforts to exude, and profit off, cool that led Birkenstock to want to copyright aspects of their sandals and a hockey memorabilia dealer to market Stanley Cup-shaped awards filled with melted rink ice from noteworthy games. While we can debate the level of “cool” involved with any of these products, courts in the US and EU have made clear that cool or useful ideas are not necessarily enough to support copyright registration.

Indeed, recent copyright decisions in the United States and Germany have shed light on the boundaries of copyright protection for product designs, particularly when functionality intersects with artistic expression. The United States Court of Appeals for the Third Circuit’s ruling in Grondin v. Fanatics in late 2024 and Germany’s Federal Court of Justice decision in Birkenstock v. Tchibo and Shoe.com more recently provide contending perspectives on what constitutes a copyrightable work.

Let’s first explain the facts of each case briefly. In Grondin v. Fanatics, William Grondin alleged that Fanatics, Inc. infringed upon his copyright for “Slice of the Ice,” a transparent, hollow hockey puck-shaped object partially “filled with melted rink ice from noteworthy games.” In 1998, Grondin received copyright protection for Slice of the Ice, which he described as a “reproduction of the Stanley Cup in Lucite, with a puck-shape cavity containing melted ice.” With licenses from the NHL, Grondin sold Slice of the Ice to NHL franchises who then sold it to fans. Fanatics began selling products that were a simplified version of Slice of the Ice, and included a transparent hockey puck filled with melted rink ice. In May 2022, Grondin sued Fanatics for copyright infringement, claiming that he had a a valid copyright and that the products were substantially similar in that each incorporated (1) the idea of hockey memorabilia being filled with melted rink ice, (2) the process of retrieving rink ice, (3) the idea of providing a certificate of authenticity, (4) the use of a puck-shaped object, (5) the fact that the hockey puck is transparent, (6) the fact that the hockey puck is hollow, and (7) the amount of melted rink ice with which the hockey puck is filled. The Court acknowledged Grondin’s valid copyright registration but emphasized that copyright protection does not extend to functional aspects of a design. The court identified the transparency, hollowness, and inclusion of an air bubble in Grondin’s design as functional features essential for displaying melted rink ice, thus not protected by copyright. Consequently, Grondin’s claim failed due to the lack of substantial similarity between any protected artistic elements of his design and Fanatics’ product.

Conversely, in Birkenstock v. Tchibo and Shoe.com, Germany’s Federal Court of Justice addressed whether Birkenstock’s sandal designs qualified as “works of applied art” eligible for copyright protection. The court emphasized that for a design to receive copyright protection, it must exhibit a high degree of individual creativity and artistic achievement. In this instance, the court found that the functional aspects of Birkenstock’s sandals, such as their focus on comfort and natural gait and historic “commitment to the art of making orthopedically inspired shoes” limited the scope for artistic expression. Consequently, the sandals were deemed primarily utilitarian products lacking the necessary artistic originality for copyright protection. The Court concluded that the sandals did not exhibit the requisite level of artistic creativity to warrant such protection. It determined that the design elements were primarily dictated by technical and functional considerations rather than artistic expression. Therefore, the sandals were deemed functional products without copyright protection.

Both cases underscore a critical principle in copyright law: the distinction between artistic expression and functional design. In Grondin, the U.S. court recognized the existence of a valid copyright but limited its scope by excluding functional elements from protection. In contrast, the German court in Birkenstock denied copyright protection altogether, citing insufficient artistic merit in the design.

These decisions highlight jurisdictional nuances in assessing copyright eligibility for product designs. While both courts aim to prevent monopolization of functional aspects through copyright, their approaches differ. The U.S. court focused on separating protectable artistic features from functional ones within a copyrighted work, whereas the German court required a higher threshold of artistic creativity for the entire design to qualify for copyright protection. In summary, these rulings illustrate the delicate balance courts must maintain between protecting creative expression and ensuring that copyright law does not encroach upon the domain of functional design, which is more appropriately safeguarded by patent or design laws. Expanding upon the comparative analysis of Grondin v. Fanatics and Birkenstock v. Tchibo and Shoe.com, one can further see how courts in these different jurisdictions have addressed the boundary between copyright protection and functional design by comparing these cases with other notable rulings.

A key principle in U.S. copyright law (as well as Indian copyright law as it turns out) is the conceptual separability test, which determines whether an artistic feature can be identified separately from, and exist independently of, the functional aspects of a product. This principle was central to the Third Circuit’s reasoning in Grondin v. Fanatics, where the court concluded that Grondin’s puck design included functional elements that were not copyrightable. In Star Athletica, L.L.C. v. Varsity Brands, Inc., 580 U.S. 405 (2017), which was the subject of a previous post here, the U.S. Supreme Court ruled that the arrangement of stripes, chevrons, and color blocks on cheerleading uniforms was eligible for copyright protection because these elements were conceptually separable from the uniforms’ functional purpose. The Court reasoned that the designs could exist independently as two-dimensional artwork on another medium, such as a painting or a fabric print. Star Athletica contrasts with Grondin, where the court determined that the transparent, hollow nature of the hockey memorabilia served an essential function—displaying melted rink ice—and could not be separated from that function. In another case of note, Carol Barnhart Inc. v. Economy Cover Corp., 773 F.2d 411 (2d Cir. 1985), the Second Circuit ruled that torso-shaped display mannequins were not copyrightable because their sculpted forms were dictated by their function—displaying clothing. That case aligns with Grondin in rejecting copyright claims over objects whose aesthetic elements are inherently tied to functionality.

This US perspective does not sit in copyright analysis alone, as it also infuses trademark and trade dress analysis in the United States. This is seen in the recent May 2, 2025 Trademark Trial & Appeal Board decision in In re Tinder LLC, Nos. 86608903 and 86680923 (T.T.A.B. May 2, 2025) refusing to register SWIPE LEFT as a trademark for Tinder. There, the TTAB refused to register that mark because that phrase merely “describes a common manner of navigating software” and “a key feature and function of Applicant’s software, because consumers using Applicant’s mobile dating application ‘swipe left’ on pictures of potential romantic partners to indicate rejection or disinterest.” In other words, the phrase does not indicate a source of the app’s origin but rather indicates a step in having the app function consistent with user decision-making. Likewise, in February 2025, the United States Court of Appeals for the Second Circuit noted in Cardinal Motors, Inc. v. H&H Sports Protection USA Inc. that “[t]o plead a claim for trade dress infringement based on product design, a plaintiff must plead that (1) its product design is distinctive, (2) there is a likelihood of confusion between its product design and that of the defendant, and (3) its product design is not functional.” (emphasis added). Perhaps even more telling, the Fourth Circuit, in 2024, had noted in TBL Licensing, LLC v. Katherine Vidal, Director of the United States Patent and Trademark Office, 98 F. 4th 500, __ (4th Cir. 2024), that Timberland could not register features from the design of its popular boot under the Lanham Act as trade dress because US law “bars the registration of product designs that are functional since protection of functionality is reserved for patent law,” providing in a sense an earlier trade dress version of the failed copyright claim Birkenstock would assert in the German case.

Interestingly, European courts often impose a higher standard of artistic creativity before granting copyright protection to industrial designs. This was evident in the German Federal Court of Justice’s decision in Birkenstock v. Tchibo and Shoe.com, where the court rejected copyright protection for Birkenstock’s sandal design on the grounds that it lacked sufficient artistic merit. For another example, Cofemel v. G-Star Raw case (C-683/17) before the Court of Justice of the European Union (CJEU) reinforced the principle that copyright protection in the EU requires an original creation reflecting the author’s free and creative choices. In this case, the CJEU ruled that clothing designs could be copyrighted if they displayed originality beyond their functional purpose. This decision suggests that Birkenstock might have prevailed under a different interpretation of originality, but the German court imposed a stricter standard. This German standard dates back to earlier cases, such as Mag Instrument Inc., v. Eduscho GmbH & Co. KG, 7 May 1998 (Bundesgerichtshof, Case I ZR 142/97) and Firma Mag Instrument Inc., v. Firma Ampercell Vertriebsgesellschaft fűr elektronische Erzeugnisse mbh, 29 September 2000 (Landgericht Köln, case 81 O 117/99), where German courts ruled that the shape of a Maglite flashlight was not eligible for copyright protection because it was primarily dictated by technical function rather than artistic design, as Lidgard discusses (at 15-16, before going on 16-18 to discuss protections achieved for the Maglite under Swedish law). These earlier German cases closely parallel Birkenstock v. Tchibo and Shoe.com, as both involved product designs that were deemed insufficiently artistic for copyright protection.

So that leaves us with a few key takeaways from comparing these two approaches and the cases that flow from them:

  1. Functionality vs. Artistic Expression: U.S. courts tend to assess whether a product’s artistic elements can be conceptually separated from its function (Star Athletica), while European courts often (but not always as we can see in Sweden) apply a higher threshold for originality (Cofemel).
  2. Higher Artistic Standard in Europe: The German court’s denial of copyright in Birkenstock aligns with prior European rulings such as Maglite, which rejected protection for utilitarian design.
  3. Diverging Outcomes in Industrial Design Cases: While Varsity Brands in Star Athletica succeeded in securing copyright for cheerleading uniform designs, Birkenstock was denied protection, demonstrating the different copyright philosophies between the U.S. and Germany. The contrasting decisions in Grondin v. Fanatics and Birkenstock v. Tchibo illustrate broader legal debates on the copyrightability of industrial designs. While the U.S. courts apply the conceptual separability test to distinguish protectable artistic elements from functionality, German and EU courts demand a higher degree of originality for product designs to qualify for copyright protection.

These differing approaches reflect fundamental differences in how copyright law interacts with design and functionality across jurisdictions. Of course, some believe that the dichotomy is a false one:

“Birkenstocks are an amazing piece of applied art,” University of Technology Sydney honorary research fellow Emily Brayshaw told the Washington Post. “Their unique design is grounded in the principles that were very much in discussion in German design schools and movements of the mid-20th century…. Even deciding that function must come first and aesthetics must come second is still an aesthetic decision.” [Cascone, No, Birkenstocks Are Not Works of Art, Rules German Court, ArtNet, Feb. 21, 2025]

Others do see the distinction as remaining relevant, and note that the “Birkenstock case puts the creative/technical distinction to the test….None of this is to say that Birkenstock sandals can’t have copyrightable elements. … However, given Birkenstock’s historical affinity for function over fashion, the present case raises a question of what those copyrightable elements might be.” The German court ultimately found little to protect.

So, we learned a little law, learned that Birkenstocks are not protected by German copyright law, and learned that melted ice (otherwise known as “water”) is not copyrightable in the US. But, back to where we started. Birkenstocks may be cool and “undeniably iconic,” and they are debating on TikTok (at least for now, given the latest extension) the very question “Are Birkenstocks Still Cool In 2025?” As for hockey, “it’s a rogue sport that …will always be cool ….” Enough said.