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. In 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.
The useful article doctrine is codified in the Copyright Act at 17 U.S.C. § 101, which defines a “useful article” as one having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. The statute provides that the design of a useful article is protectable by copyright only to the extent that its pictorial, graphic, or sculptural features can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.
The doctrine reflects a fundamental tension in copyright law between promoting artistic creativity and preventing the monopolization of functional objects through copyright registration. Unlike patent law, which was designed to reward functional innovation through limited monopolies subject to public disclosure requirements, copyright law was designed to protect artistic and literary expression. Allowing copyright to cover the functional shape of everyday objects would effectively grant the copyright owner a patent-like monopoly without requiring the rigorous disclosure and novelty standards that patent law imposes.
Courts struggled for decades to define a consistent test for determining when design features of a useful article are sufficiently separable from the utilitarian aspects to qualify for copyright protection. The Supreme Court resolved the circuit split in Star Athletica, L.L.C. v. Varsity Brands, Inc., 580 U.S. 405 (2017), which articulated a two-part separability test: a feature incorporated into the design of a useful article is eligible for copyright protection if (1) the feature can be perceived as a two- or three-dimensional work of art separate from the useful article, and (2) the feature would qualify as a protectable pictorial, graphic, or sculptural work either on its own or fixed in some other tangible medium of expression if it were imagined separately from the useful article.
The Star Athletica case involved the decorative surface designs on cheerleading uniforms—the Court held that stripes, chevrons, and color blocks on a uniform could be perceived separately from the uniform’s function and would qualify as protectable artwork if imagined on a canvas. By contrast, the cut and shape of the uniform itself—which serves the utilitarian function of clothing the wearer—was not protectable.
The practical implications of the useful article doctrine extend across a wide range of industries. Understanding what copyright can and cannot protect helps businesses make informed decisions about intellectual property strategy:
The Inhale v. Starbuzz decision is also noteworthy for its award of attorney’s fees against the plaintiff. Under 17 U.S.C. § 505, the court may award reasonable attorney’s fees to the prevailing party in a copyright infringement lawsuit. The Supreme Court clarified the standard for fee awards in Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994), and later in Kirtsaeng v. John Wiley & Sons, Inc., 579 U.S. 197 (2016), which held that courts should give substantial weight to the objective unreasonableness of the losing party’s legal positions when deciding whether to award fees.
The lesson from Inhale v. Starbuzz is that filing a copyright infringement lawsuit based on clearly non-copyrightable subject matter—such as the functional shape of a useful article—carries significant financial risk. Before filing any copyright infringement claim, it is essential to have experienced copyright counsel evaluate both the strength of the copyright and the viability of the infringement theory.
Contact the copyright attorneys at Revision Legal for guidance on copyright protection for product designs and other useful articles. We evaluate both the protectability of designs under the Copyright Act and the availability of alternative intellectual property protections through design patents and trade dress to give clients a comprehensive IP protection strategy.
For product designs that do not qualify for copyright protection under the useful article doctrine, design patents and trade dress registration may provide alternative intellectual property protection. A design patent protects the ornamental or aesthetic aspects of a product—the way it looks rather than how it works. Design patents are granted for new, original, and ornamental designs for articles of manufacture and provide 15 years of protection from the date of grant. Unlike copyright, design patent protection does not require separability from functional features; the inquiry is simply whether the claimed design is new and ornamental.
Trade dress protection under the Lanham Act, 15 U.S.C. § 1051 et seq., provides another avenue for protecting product designs that have acquired distinctiveness in the marketplace. Trade dress encompasses the total image and overall appearance of a product, including its shape, packaging, color scheme, and design. To be protectable as trade dress, the design must be non-functional and must have acquired secondary meaning—consumers must associate the design with a specific source rather than seeing it as a generic product shape. Our intellectual property attorneys help clients identify the best combination of copyright, design patent, and trade dress protection for their product designs. Contact us today to discuss your product’s intellectual property protection strategy.
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