Copyright protection is a relatively cheap and a very long term protection for works of authorship. But unfortunately, copyright protection in the United States generally does not cover the protection of useful items (think furniture, lamps, beverage bottles, now hookahs) unless the protectable work of authorship is either physically or conceptually separable from the useful article. This is not an easy test to meet.

Last month, the Ninth Circuit Court of Appeals affirmed a trial court’s decision that a shape of a hookah (a device for smoking tobacco) was not conceptually separable from the useful article. See Inhale, Inc. v. Starbuzz Tobacco, Inc. et al. So, no copyright protection was available to the plaintiff. Further, the Ninth Circuit affirmed the trial court’s award of attorneys’ fees in the amount of $111,993 to the defendant. The case is even more unique in that the plaintiff procured a copyright for its hookah as a sculptural work of art. The courts emphasized that the skull and crossbones motif that was in the copyright registration was not present in the defendant’s hookah design and that the shape itself wasn’t the subject of the copyright.

This case shows how difficult it is protect useful articles through copyright (and getting it wrong can be financially painful!). There are articles that are debatably described as useful (think jewelry and lawn ornaments) where copyright protection may be the least costly and most effective protection. But most useful articles might be better protected by design patents, which are undergoing their own renaissance of sort. (See our January 22 blog post on design patents.) Stay tuned for more updates on protection of useful designs.