The U.S. Court of Appeals for the Ninth Circuit affirmed a summary judgment ruling and an award of attorneys’ fees, finding that a hookah water container used for smoking tobacco was not entitled to copyright protection. Inhale, Inc. v. Starbuzz Tobacco, Inc., Case No. 12-56331 (9th Cir., Jan. 9, 2014) (O’Scannlain, J.) (Bea, J. concurring-in-part).

In 2008, the plaintiff Inhale designed and sold a hookah water container having of sculptural elements and bearing a skull-and-crossbones image on the outside of the container.  In 2011, Inhale received a copyright registration from the U.S. Copyright Office for the hookah, claiming both the three-dimensional sculptural elements as well as the skull-and-crossbones image on the hookah.

After obtaining its copyright registration, Inhale filed suit against Starbuzz claiming that Starbuzz Tobacco was selling hookah containers manufactured in China that were identical in shape to Inhale’s copyright hookah.  The hookah containers sold by Starbuzz did not display the skull-and-crossbones image.  However, when filing its copyright infringement suit, Inhale only asserted exclusive rights in the sculptural shape of the hookah container and not in the accompanying skull-and-crossbones image.  After, the district court granted summary judgment in favor of Starbuzz, finding that the shape of Inhale’s hookah container was not copyrightable because the sculptural shape of the container was “physically and conceptually inseparable” from the utilitarian function of the hookah.  Inhale appealed.

On appeal, the 9th Circuit noted that ownership of a valid copyright is an element of copyright infringement, and therefore, the district court’s grant of summary judgment was appropriate only if the shape of Inhale’s hookah container truly is not copyrightable.  Because both parties had already agreed that Inhale’s hookah is a “useful article” the 9th Circuit found that the shape of the container is only copyrightable if it incorporates structural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the container.

The court rejected Inhale’s arguments that separability is a question of fact that cannot be decided on summary judgment and found that whether the shape of a container is conceptually separable from the useful article is a question of law to be reviewed de novo.  Looking at the Copyright Office’s interpretations in related situations, the court cited a letter from the Copyright Office stating that whether an item’s shape is particularly distinctive does not affect separability when the item is useful.  The court held agreed noting, “[t]he 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” and affirmed the district court’s grant of summary judgment.

Concurring in part, Judge Bea indicated that he concurred with the majority’s opinion except for the court’s deference to the Copyright Office’s interpretations of the Copyright Act.  Citing his concern that looking beyond the Copyright Act was contrary to his “concept of the separation of powers,” Bea indicated that § 101 of the Copyright Act is unambiguous with respect to issues of separability and distinctiveness, and it does not require reliance on further interpretations by the Copyright Office.