Jan. 15 —A federal district court did not err in ruling that a water container designed for use as part of a water pipe is a useful article whose shape could not be physically or conceptually separated from the utilitarian function of the container, the U.S. Court of Appeals for the Ninth Circuit ruled Jan. 9 (Inhale, Inc. v. Starbuzz Tobacco, Inc., 2014 BL 6157, 9th Cir., No. 12-56331, 1/9/14).
Affirming an award of summary judgment, the appeals court agreed with the district court that the shape of the water container was not eligible for protection as a creative work under copyright law.
Inhale Inc. of Malibu, Calif., designs and makes smoking devices and accessories. In 2011, Inhale registered with the Copyright Office a copyright interest in a three-dimensional sculpture comprising a water container for use with a hookah, which it had first produced in 2008. In obtaining the registration, Inhale submitted a picture of a water container decorated with skull-and-crossbones images.
Starbuzz Tobacco Inc. of Anaheim, Calif., also produces smoking devices and accessories. For about a year, Inhale supplied hookahs to Starbuzz for retail sale. In 2010, Inhale ended its supplier relationship with Starbuzz, and Starbuzz sought out a Chinese manufacturer for its hookahs.
In 2001, soon after registering its claimed work, Inhale sued Starbuzz, alleging that the Chinese hookahs being marketed by Starbuzz infringed its copyright interest in its registered water container design. In bringing its claim, Inhale disclaimed the skull-and-crossbones motif and asserted exclusive rights only in the shape of the water container.
Judge Otis D. Wright II of the U.S. District Court for the Central District of California granted summary judgment in Starbuzz's favor after finding that the water container was a useful article and could not give rise to exclusive rights under copyright law (119 PTD, 6/21/12).
The district court ruled that the shape of the container could not be protected as a creative work because the shape was physically and conceptually inseparable from the utilitarian function of the water container.
Inhale appealed, arguing that the question of whether the utilitarian aspects of the bottle were conceptually separable from any creative work was a question of fact and not a question of law to be determined by the court at the summary judgment stage.
Judge Diarmuid F. O'Scannlain rejected this argument, ruling that this question was a mixed question of law and fact. In this case, the factual aspect of the question—whether the bottle was a useful article—was resolved by the stipulation of the parties and thus all that remained was a question of law.
To resolve that question of law, the court looked to the Copyright Office. In a 2008 letter, the agency stated, according to the court “that whether an item's shape is distinctive does not affect separability.” Letter from Nanette Petruzzelli, Assoc. Register, U.S. Copyright Office, to Jeffrey H. Brown, attorney for MSRF Inc., Re: Fanciful Ornamental Bottle Designs 1-9, Control No. 61-309-9525(s), April 9, 2008.
Furthermore, the Copyright Office, in reaching the conclusion stated in that letter, had relied on “the principle that 'analogizing the general shape of a useful article to works of modern sculpture' is insufficient for conceptual separability.” Compendium of Copyright Office Practices II, §505.03.
The court adopted the Copyright Office's reasoning and concluded that “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.”
The court thus affirmed that the shape of the container was not eligible for protection as a creative work under copyright law.
The court's opinion was joined by Judge Susan P. Graber
Judge Carlos T. Bea filed a brief separate opinion, concurring in part, but objecting to the court's reference to the Copyright Office for guidance. Bea said:
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.
The court thus affirmed the district court's ruling and remanded the matter.
Inhale was represented by Louis F. Teran of SLC Law Group, Pasadena, Calif. Starbuzz was represented by Natu J. Patel of Irvine, Calif.
Text is available at http://www.bloomberglaw.com/public/document/Inhale_Inc_v_Starbuzz_Tobacco_Inc_et_al_Docket_No_1256331_9th_Cir.
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