An interesting article was posted recently at Slate about the limits of copyright protection in 3D shapes and the implications for 3D printing. In the case highlighted by the article, Inhale, Inc. v. Starbuzz Tobacco, Inc., the US 9th Circuit Court of Appeals affirmed the District Court’s denial of a copyright infringment claim on the design of a hookah.
Inhale sued Starbuzz for copyright infringement, claiming that Starbuzz was infringing on the copyrighted shape of the original hookah. But, in a twist that we are likely to see more of if 3-D printing-related litigation starts to spread, it turned out that even if Inhale was right about Starbuzz’s copying, it didn’t matter.
That is because copyright can only protect nonuseful objects. And a big part of any hookah’s design is to provide a useful function—a function the court described as “to hold the contents within its shape.”
The most interesting part in the actual judgment for me was the Court’s tough line on the concept of conceptual separability. Despite finding that the hookah, “like a piece of modern sculpture, has a distinctive shape,” the Court found it was impossible to conceptually separate that distinctive element from the functional element of holding contents. On that basis, the Court found that there could be no copyright protection.
Leaving aside similar issues with utilitarian shapes and trademark and design protections, precedents like this create interesting issues for copyright protection of 3D shapes. While it makes sense for copyright to apply to ornamental and not functional attributes of a work, the IP protection that is aimed at utilitarian shapes, patents, would almost certainly not apply in this case either. And if the distinctive hookah was simply a solid sculpture without function, by the Court’s reasoning it might have qualified for copyright protection. Would a person 3D printing and selling hollowed out versions of the original solid sculpture as hookahs be infringing the author’s copyright?