Access practice tools, as well as industry leading news, customizable alerts, dockets, and primary content, including a comprehensive collection of case law, dockets, and regulations. Leverage...
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 email@example.com
To contact the editor responsible for this story: Tom P. Taylor at firstname.lastname@example.org
Full text at http://pub.bna.com/ptcj/140396petition.pdf.
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to email@example.com.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).
This Bloomberg BNA report is available on standing order, which ensures you will all receive the latest edition. This report is updated annually and we will send you the latest edition once it has been published. By signing up for standing order you will never have to worry about the timeliness of the information you need. And, you may discontinue standing orders at any time by contacting us at 1.800.372.1033, option 5, or by sending us an email to firstname.lastname@example.org.
Put me on standing order
Notify me when new releases are available (no standing order will be created)