Rubik’s Cube ruling provides clarity for IP portfolio managers

It is critical for portfolio managers and practitioners to be aware of the strategic value of different rights. Copyright is essential to IP portfolios, but it is not always clear when it should be relied on.

Patented in the 1970s, the Rubik’s Cube is the subject of various trademarks and contested trademark applications. On 22 December 2021, the Regional Court of Frankfurt am Main heard a case related to the accumulation of IP rights surrounding the famous toy (docket no 2-06 O 111/21) and was tasked with deciding whether the colourful cube also enjoys copyright protection.

This case provides invaluable clarity for practitioners and portfolio managers on the murky scope of when to rely on copyright protection.

Background of the case

The plaintiff, who marketed the Rubik’s Cube, claimed to be the sole legal successor to the brand following a corporate transaction. Therefore, the plaintiff asserted, as the exclusive owner of the underlying IP rights, that it was entitled to not only the associated exclusive exploitation rights but also the copyright exploitation rights, the latter of which the defendant allegedly infringed by distributing a game called Magic Cube.

The plaintiff filed claims for injunctive relief, demanded a declaration confirming the existence of claims for damages, information and destruction based on infringement of the exploitation rights and 3D EU trademarks.

The defendant requested that the action be dismissed. It stated that the Rubik’s Cube’s typical characteristics resulted from its technical function; the colour design, rotation of the six faces around their own axis and grid structure were due to the cube’s original purpose as a visual model for spatial movement. Further, according to the defendant, the Rubik's Cube is based on concepts that already existed, and has accordingly become ‘common property’.

The court's ruling

The court did indeed dismissed the action as unfounded, as it was based on the plaintiff's copyright exploitation rights. Under Article 2(1, 4, 2) of the German Copyright Act, the Rubik’s Cube did not possess the necessary originality to enjoy protection. The court stated that the Rubik's Cube – as an educational model for spatial movement – was conceived as a functional (ie, utlitarian) object, for which certain standards must be met in order for copyright protection to apply. According to established case law, a practical object’s function must not dictate its aesthetic design – the necessary level of originality needed to obtain copyright protection can only be reached when an object’s composition is an expression of artistic creativity.

The court asserted that the sole purpose of the Rubik’s Cube’s unique visual characteristics was to represent spatial movement in a comprehensible way. The cube’s special feature (compared to earlier cube-shaped 3D puzzles) was its rotation around its own axis, which was not the result of an artistic creation process but was merely technically conditioned – thus based on considerations of expediency. Finally, the unique game concept is not immediately visually obvious, so rather than the external design, it is the mechanical principle that has an effect on the mind. Even within professional circles, the Rubik’s Cube is not recognised as a work of art and so cannot be justifiably classified as such; any association of the cube with art has been as a result of both its special concept and its increasing commercial success. With regard to the trademark infringement claims, the proceedings were suspended until the conclusion of the pending cancellation proceedings.

Practical implications

As a result of its ruling, the court has confirmed existing case law on copyright protection of functional objects (see 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) and ECJ ruling of 11 June 2020 - Brompton Bicycle Ltd/Get2Get (docket no C-833/18)). From a practitioner’s perspective, the ruling affirms the approach of presenting aesthetically artistic design features and demonstrating that 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 formerly patented functional objects is possible if the item has special design elements that go beyond technical necessity and are of sufficient design quality.

In order to achieve a broadly diversified IP portfolio, companies developing products at this interface of technicality and aesthetic design should aim to consciously incorporate aesthetic considerations into the product as early as possible. However, it is not guaranteed that accumulation of IP rights can always be achieved this way as design law and trademark law can provide comparable grounds for exclusion, which can lead to a refusal of protection for features that are exclusively defined by a technical function.

This decision shows that courts will not simply allow protection rights of predominantly technically characterised objects via copyright law. While German copyright law does not place any exceptional demands on the level of originality, a substantiated argument on the actual level of originality is still necessary if protection is sought for a functional object.