The recent case of Inhale v. Starbuzz Tobacco, Inc. held that the shape of a water container to be used in a hookah device is not afforded protection under the Copyright Act.  Inhale made a water container that had a specific design on it – a skull and crossbones, in 2008 and registered it with the US Copyright Office in 2011.

Inhale then sued Starbuzz for copyright infringement when they released their own water container, however, Inhale did not sue for any particular design, such as Starbuzz using a skull and crossbones, rather it claimed that Starbuzz was infringing based purely on the shape of the water container.

Section 101 of the Copyright Act states that copyright protection does not extend to works that are useful articles—articles “having an intrinsic utilitarian function that is not merely to portray the appearance of  the article or to convey information.”  Judge Otis Wright further clarified this by writing that a useful article can only acquire copyright protection if its design features can be identified separately from, and can exist independently of, the functional purpose of the article – meaning only the individual design elements of a useful object can be copyright protected.

Judge Wright ruled that in this case, the design properties of Inhale’s water container could not be “physically or conceptually separable from the container because the container’s shape and the container are one and the same.”  Judge Wright also took into account inhale’s purpose in creating the water container, namely that it was to be used as a water container for a hookah “not a museum piece.”  That is, the primary purpose of the water container is function, not design, so it should not be afforded copyright protection.

This case is fairly straight forward; there is nothing to truly distinguish the water container’s design from its functionality, so it should not be afforded copyright protection.  It is interesting to note, however, that Judge Wright states that “the overall shape of a useful article is not copyrightable no matter how aesthetically pleasing that shape may be.”  This is rather broad and goes against his previous statement that a structure could be copyrightable if the design features can be separate and independent from the structure and functionality of the object.


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