Hookah Petition Hits Supreme Court; Looks for Dividing Line Between Art, Utility

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By Tony Dutra

Oct. 7 — A Ninth Circuit panel “threw in the towel” rather than dealing with the “conceptual separability” of the utilitarian and copyrightable aspects of a hookah, according to a cert. petition docketed Oct. 6.

Inhale Inc. of Santee, Calif., registered with the Copyright Office a copyright interest in a three-dimensional sculpture comprising a water container for use with a hookah. It sued Starbuzz Tobacco Inc. of Garden Grove, Calif., alleging that the Chinese hookahs being marketed by Starbuzz infringed its copyright.

The Copyright Act, in 17 U.S.C. §101, grants copyright in three-dimensional sculpture “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.”

The Ninth Circuit affirmed a federal district court ruling that the water container is a useful article whose shape cannot be physically or conceptually separated from its utilitarian function (Inhale, Inc. v. Starbuzz Tobacco, Inc., 739 F.3d 446, 109 U.S.P.Q.2d 1337 (9th Cir. 2014)).

The appeals court ruled that separability was a mixed question of law and fact and that the parties had stipulated to the factual aspect—whether the container was a useful article. To resolve the remaining question of law, the court relied on a 2008 Copyright Office letter stating “that whether an item's shape is distinctive does not affect separability.”

A concurrence objected only to the court's reference to the Copyright Office for 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,” the concurring judge said.

“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.”

According to the cert. petition, “the panel threw in the proverbial towel to avoid analyzing whether the outer shape of Petitioner's hookah water container is conceptually separable from its inner shape.” It claimed a split between the Second and District of Columbia Circuits, and said, “the Copyright Office elected to follow the easier test from the D.C. Circuit that is almost undistinguishable from physical separability.”

The questions presented in the petition are:

1. What test should be used to effectively ascertain whether the artistic aspects of a useful article can be identified as being “conceptually separable” from the article's utilitarian function pursuant 17 U.S.C. §101?

2. Is the distinctive shape of a container protected under the Copyright Act of 1976?

Louis F. Teran of SLC Law Group, Pasadena, Calif., filed the brief. Starbuzz was represented by Natu J. Patel of Irvine, Calif., before the Ninth Circuit. Its response is due Nov. 5.

To contact the reporter on this story: Tony Dutra in Washington at adutra@bna.com

To contact the editor responsible for this story: Tom P. Taylor at ttaylor@bna.com

Full text at http://pub.bna.com/ptcj/140396petition.pdf.