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Useful Article Doctrine: Hookah Not Copyrighted

By Eric Misterovich

The 9th Circuit Court of Appeals has ruled that copyright protection does not extend to the shape of a hookah water container. Specifically, two California hookah makers recently found themselves in federal court when Inhale, Inc. believed that the shape of Starbuzz Tobacco, Inc.’s hookah infringed upon its hookah design. This case is a test of the useful article doctrine, which states that the design of a useful article is copyrightable only if it contains sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.

To determine whether a useful article is copyrightable, courts examine the “physical separability” or “conceptual separability” of the purported copyrighted aspects of the useful article. If the alleged copyrighted aspects are physically or conceptually separable from the utilitarian features of the useful article, they may be protected by copyright.┬áIn short, if the shape of a hookah is dictated by its function and not by design choices, it likely is not protectable by copyright law.

And the 9th Circuit found that the shape of Inhale’s hookah was dictated by function. Specifically, it stated:

The shape of a container is not independent of a container’s utilitarian function–to hold the contents within its shape–because the shape accomplishes the function. The district court correctly concluded that the shape of Inhale’s hookah water container is not copyrightable.

Not only did the 9th Circuit reject Inhale’s claim, but it also found that Inhale was liable for Starbuzz’s attorneys’ fees for the filing of a frivolous lawsuit. Consequently, when a useful article is clearly not protected by copyright law, a plaintiff should not file a lawsuit or otherwise face the risk of an award of costs and attorneys’ fees.

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