Clifford Chance

In its recent decision of 22 December 2021 (docket no. 2-06 O 111/21) the Regional Court of Frankfurt am Main (the "Court") dealt with the accumulation of intellectual property ("IP") rights relating to the Rubik's Cube. The famous toy was patented in the seventies and is the subject of various trademarks and contested trademark applications. Now, the Court had to consider the question of whether the colourful cube also enjoys copyright protection. In this article we first outline the underlying case facts and the essential reasons for the Court's ruling before presenting the resulting practical implications.

I. The case

The plaintiff markets the Rubik's Cube. He claims to have become the sole legal successor to Rubik's Brand Ltd. in the context of a corporate transaction. Therefore, as exclusive owner of the underlying IP rights, the plaintiff claims to be entitled to the associated exclusive exploitation rights to the formerly patent-protected Rubik's Cube. The claimant states that in addition to the existing three‑dimensional EU trademarks, which are currently the subject of cancellation proceedings, it was also granted the copyright exploitation rights, which the defendant allegedly infringed by distributing a game named "Magic Cube". The plaintiff asserted claims for injunctive relief, demanding a declaration confirming the existence of claims for damages, information and destruction based on the infringement of the exploitation rights and three-dimensional EU trademarks in respect of the Rubik's Cube. The defendant requested that the action shall be dismissed, stating that the typical characteristics of the Rubik's Cube resulted from its technical function: The characteristic colour design, the rotation of the six faces around their own axis and the grid structure were due to the original purpose of the cube as a visual model for spatial movement. Furthermore, according to the defendant, the Rubik's Cube is based on already existing concepts and has accordingly become "common property".

II. The Court's ruling

The Court dismissed the action as unfounded insofar as it was based on the plaintiff's copyright exploitation rights. The Rubik's Cube did not have the necessary originality to enjoy protection under article 2 section 1 no. 4, section 2 German Copyright Act. The Court stated that the Rubik's Cube, as an educational model for spatial movement, was conceived as a functional object (i.e. utilitarian object) for which certain standards must be met to obtain copyright protection. According to established case law, the function inherent in a functional object must not dictate its aesthetic design. The necessary level of originality is only reached when the composition is no longer owed to technical functionality but is an expression of artistic creativity. The Court considered that the unique visual characteristics of the Rubik's Cube were solely due to its task of representing spatial movement in a way that is easily comprehensible to the human mind. The special feature of the cube compared to earlier cube-shaped 3-D puzzles was its rotation around its own axis. This mechanical attribute, however, was not the result of an artistic creation process, but merely technically conditioned and thus based on considerations of expediency. Finally, the unique game concept lies inside the cube and thus escapes the viewer's gaze, so that it is not the external design but rather the mechanical principle that has an effect on the human mind. Even recognition of the Rubik's Cube in professional circles could not justify its classification as a work of art. The Rubik's Cube has not always been associated with art but has been recognised as such solely because of its special conceptual realisation and after its increasing commercial success. With regard to the claims based on trademark infringement, the proceedings were suspended until the conclusion of the pending cancellation proceedings.

III. Practical implications

With this ruling, the Court confirms the existing case law on copyright protection of functional objects (Federal Court of Justice (BGH) ruling of 12 May 2011 - Spacenet (docket no. I ZR 53/10); BGH ruling of 13 November 2013 - Birthday Train (docket no. I ZR 143/12); ECJ ruling of 11 June 2020 - Brompton Bicycle Ltd/Get2Get (docket no.C-833/18)). For practitioners, this affirms the approach of presenting the aesthetically artistic design features in particular in corresponding procedural constellations and demonstrating that the existing creative leeway was used in a creative manner. However, the plaintiff's line of argument, citing the existence of a broad scope of creative leeway to convince the Court of a creative use of the same, remained unsuccessful and was, on the contrary, assessed by the Court as disadvantageous for the plaintiff. Accordingly, continued protection of – as in the present case – formerly patented functional objects is possible, in particular if the item has special design elements that go beyond technical necessities and are of sufficient design quality. In order to achieve a broadly diversified IP portfolio, companies that develop corresponding products at the interface of technicality and aesthetic design should – as far as compatible with technical requirements – consciously incorporate aesthetic considerations into the product at the earliest possible stage. However, it is doubtful whether accumulation of IP rights can always be achieved this way. After all, design law (article 8 section 1 CDR) and trademark law (article 7 section 1 lit. e) ii EUTMR) also provide for comparable grounds for exclusion, which lead to a refusal of protection for such features that are exclusively defined by a technical function. Finally, the decision shows that the courts will not simply pass an extension of the protection of predominantly technically characterised objects – in this case – via copyright law. Even though German copyright law does not place any exceptional demands on the level of originality, a substantiated argument on the actually given level of originality is still necessary if protection is sought for a functional object.

This article is based on the author's publication in GRUR-Prax (2022, p. 88).