The District Court of Berlin recently ruled on the distinction between new separate works inspired by earlier works and the imitation of earlier works.[1] The case concerned one of the world’s most famous furniture designs, the Eames Aluminium Chair. The plaintiff was the company Vitra based in Germany, which is the owner of the exclusive rights to use and distribute the design of Eames products for Europe and the Middle East.

“A brief case summary”

The defendant had offered for sale on the eBay platform an inferiorly produced chair, which apart from minor deviations contained the essential features of the Eames Aluminium Chair, at a price of 84.44 EUR per piece and sold in a total of 248 of chairs. (By way of comparison, original costs between 2,800.00 and 3,800 EUR per piece depending on the upholstery).

Vitra claimed damages against the defendant according to the “principles of licence analogy”. This means that the amount of damages is measured by the amount of the licence fee that the right owner would normally have received from the infringer for the distribution of the chair. Vitra set here a licence of 500.00 EUR per chair and thus demanded 124,000.00 EUR from the defendant.

“Appropriation Art”? You wish!

The defendant refused payment and invoked free use under the former § 24 German Copy Right Act (“UrhG”) . § 24 UrhG was a provision that allows the use of a copyright work if the use is far removed from the original work and the basic features of the original work fade to such an extent that an independent new work is created.

This basically means nothing other than “Appropriation Art”, i.e. when works by other artists are copied on purpose and with a strategic artistic intention and the copy itself is understood as art. Particularly well-known representatives of Appropriation Art are for example Elaine Sturtevant, Jeff Koons, or Andy Warhol who managed successfully to use an older work as a reference and put it by their interpretation in a modern light with new meaning without appearing as a cheap copycat.

Also in fashion, you have several Balenciaga lines who apparently were “inspired” by DHL, the Obama Campaign Design and the IKEA bag. But also the Balenciaga designer Demna Gvasalia must expose himself to a constant discussion as to whether his designs are crossing the line and are being plain and simple stolen.[2]

However, the defendant in our case had no success with his defence strategy at all; his chair was a far cry from a Warhol or Sturtevant. His chair model had all the essential design features of the Eames Aluminium chair. The minor design differences were only recognisable on closer inspection. In the view of the Court, there was hence no free use within the meaning of § 24 UrhG . Moreover, the Court also expressed doubts about the applicability of the provision, as the European Court of Justice (ECJ) considered this particular provision to be mainly contrary to European law.[3]

So what happened to “free use” according to former § 24 UrhG?

With regard to this last argument, it must be clarified that the ECJ considered the provision to be contrary to European law because it also contains barriers to certain copyrights (such as that of the phonogram producer) which are not provided for under European law.

Based on the DSM Directive, there was recently a comprehensive reform of German copyright law in May 2021, which took this ECJ case law into account and removed § 24 UrhGcompletely. But do not worry, dear Wannabe-Warhols: appropriation art is still possible in Germany – but only as an exception. Prior “free use” is now regulated as an exception in § 23 (1) sentence 2 UrhG: If a work has sufficient “distance” from the original work, the use of the work shall be free of consent and permissible.

Even under the new legal situation, the Regional Court would therefore have ruled in favour of Vitra and would not have recognised a sufficient “distance” between the original and the plagiarism and assumed copyright infringement.

Vitra wins it all

The court also agreed with Vitra’s claimed damage to the licence of 124,000.00 EUR. According to the Court, Vitra had to take into account a high profit margin here as well as a high share of the costs for acquiring the exploitation rights in order to protect the special image of the product as a design classic. A particularly high licence fee, if only to protect the image, was therefore appropriate and in line with the market situation.

It was irrelevant what the infringer would actually have been prepared to pay. It was also irrelevant that the infringer had sold the counterfeits at a particularly low price and not even a particularly large number of them. In the court’s view, all these circumstances did not mitigate Vitra’s damages. Moral of the story: you better think twice before you claim to be an appropriation artist.

[1] District Court of Berlin, Decision dated November 27th 2020 – 15 O 312/18.

[2] https://hypebeast.com/2020/7/balenciaga-accused-appropriation-tra-my-nguyen-fashion-designer-info

https://wwd.com/fashion-news/fashion-features/demna-gvasalia-talks-appropriation-ugly-sneakers-and-the-curse-of-pre-collections-1203001305/

https://www.theguardian.com/fashion/2016/apr/19/dhl-t-shirt-vetements-fashion-paris-catwalk

[3] ECJ, Decision Dated July 29th 2019 – C-476/17 – Pelham.