Under what circumstances can copyright protect the shape of a useful article? In Inhale, Inc. v. Starbuzz Tobacco, the Ninth Circuit Court of Appeals faced the question of whether the distinctive shape of a hookah water container affects its copyrightability. The Ninth Circuit ruled that the hookah water container was not protected by copyright, even though it had a distinctive shape.
Inhale Inc. obtained a copyright on a hookah water container depicting a skull-and-crossbones design. Starbuzz Tobacco allegedly sold a hookah water container with the same shape as the copyright registered Inhale hookah container, but without the skull-and-crossbones design. Inhale sued Starbuzz for copyright infringement. The Ninth Circuit concluded that the Copyright Office issued the registration for the skull-and-crossbones design, without considering the shape of the container.
What is a hookah water container?
A ‘hookah’ is a device for smoking tobacco. It contains coals that cause the tobacco to smoke. A user’s inhalation through a tube causes the smoke to travel through water, which cools and filters the smoke, before it reaches the user. The water is held in a container at the base of the hookah.
(Opinion pdf page 3).
Ownership of a Valid Copyright Required
Before the plaintiff can sue an alleged infringer for copyright infringement, the plaintiff must demonstrate that she has a valid copyright. No copyright exists for objects that are not copyrightable. The design of a useful article can be copyrightable, but only under limited circumstances.
Inhale and Starbuzz agreed that Inhale’s hookah water container is a useful article.
A “useful article” is an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. An article that is normally a part of a useful article is considered a “useful article”.
The design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.
To be copyrightable, the features for which the copyright is claimed must be either physically or conceptually separable from the utilitarian features. Since Inhale did not argue that the container’s shape satisfied the physical separability requirements, the Ninth Circuit did not describe the difference between physical and conceptual separability. There’s a reason the Ninth Circuit didn’t go there. Analyzing copyright protection for useful articles is confusing for courts, as well as litigators. Why add to the confusion when the Ninth Circuit didn’t need to address the difference between physical and conceptual separability to decide the case? However, the Ninth Circuit also did not define conceptual separability.
Here’s the definition of conceptual separability from the Compendium of Copyright Office Practices II:
505.03 Separability test: conceptual basis. Conceptual separability means that the pictorial, graphic, or sculptural features, while physically inseparable by ordinary means from the utilitarian item, are nevertheless clearly recognizable as a pictorial, graphic, or sculptural work which can be visualized on paper, for example, or as free-standing sculpture, as another example, independent of the shape of the useful article, i.e., the artistic features can be imagined separately and independently from the useful article without destroying the basic shape of the useful article. The artistic features and the useful article could both exist side by side and be perceived as fully realized, separate works –one an artistic work and the other a useful article. Thus, carving on the back of a chair, or pictorial matter engraved on a glass vase, could be considered for registration. The test of conceptual separability, however, is not met by merely analogizing the general shape of a useful article to works of modern sculpture, since the alleged ‘artistic features’ and the useful article cannot be perceived as having separate, independent existences. The shape of the alleged ‘artistic features’ and of the useful article are one and the same, or differ in minor ways: any differences are de minimis. The mere fact that certain features are nonfunctional or could have been designed differently is irrelevant under the statutory definition of pictorial, graphic, and sculptural works. Thus, the fact that a lighting fixture might resemble abstract sculpture would not transform the lighting fixture into a copyrightable work.
The Ninth Circuit previously ruled in Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068 (9th Cir. 2000), that a vodka bottle’s shape was not separable from its utilitarian features. In that case, the vodka bottle did not have a distinctive shape and was not copyrightable. Inhale argued that the distinctive shape of its hookah water container made it copyrightable.
The Ninth Circuit disagreed with Inhale. The Ninth Circuit relied on analysis from the Copyright Office in ruling that the distinctive shape of Inhale’s hookah water container did not affect its separability and that the container could not be protected by copyright.
In an opinion letter and an internal manual, the Copyright Office has determined that whether an item’s shape is distinctive does not affect separability. That determination was based on the principle that analogizing the general shape of a useful article to works of modern sculpture is insufficient for conceptual separability. Although Inhale’s water container, like a piece of modern sculpture, has a distinctive shape, the shape of the alleged ‘artistic features’ and of the useful article are one and the same.
(Opinion pdf page 7).
Clarifying, the Ninth Circuit stated, “the shape of a container is not independent of the container’s utilitarian function—to hold the contents within its shape—because the shape accomplishes the function.
(Opinion pdf page 8).
Attorneys’ Fees Award
The Ninth Circuit affirmed the district court’s ruling that the shape of Inhale’s hookah water container was not copyrightable. The Ninth Circuit also affirmed the district court’s award of attorneys’ fees to Starbuzz as the prevailing party.
The district court considered the five, non-exclusive factors listed in Jackson v. Axton:  the degree of success obtained;  frivolousness;  motivation;  objective unreasonableness (both in the factual and legal arguments in the case); and  the need in particular circumstances to advance considerations of compensation and deterrence. In ruling that the factors favored an award to Starbuzz, the district court relied on, among other things, Starbuzz’s ‘total success on the merits’ and the need for deterrence of similarly frivolous claims against innocent Defendants.
The district court did not abuse its discretion because the reasons given by the district court in this case are well-founded in the record and are in keeping with the purposes of the Copyright Act. A successful defense furthers the purposes of the Copyright Act just as much as a successful infringement suit does.
(Opinion pdf page 8).
The Ninth Circuit awarded Starbuzz its attorneys’ fees on appeal. Awarding Starbuzz attorneys’ fees on appeal furthered the purpose of the Copyright Act by preventing the defense of the appeal from taking away the district court’s attorneys’ fees award to Starbuzz.
The majority opinion was written by Judge Diarmuid F. O’Scannlain. Judge Susan P. Graber joined in Judge O’Scannlain’s opinion. Judge Carlos T. Bea wrote a separate concurrence.
Judge Bea’s Concurrence
Judge Bea did not think it was necessary to defer to the Copyright Office’s interpretation of the Copyright Act.
The text of 17 U.S.C. § 101 does not suggest that ‘distinctiveness’ is an element of separability. Because the statute is not ambiguous in this respect, it is unnecessary to look to the Copyright Office for further guidance.
Once we start engrafting administrative interpretation to our opinions, there is a tendency to look elsewhere than the text of the enactments of Congress. This misplaces the power of enactment of laws from the legislative to the administrative branch and is contrary to my concept of the separation of powers.
(Opinion pdf page 10).
This case is Inhale, Inc. v. Starbuzz Tobacco, Inc., No. 12-56331, Ninth Circuit Court of Appeals.