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Inhale, Inc. v Starbuzz Tobacco, Inc.

Case No. 12-56331 (C.A. 9, Jan. 9, 2014)

We must decide whether the shape of a hookah water container is entitled to copyright protection.

I



Inhale, Inc. claims copyright protection in the shape of a hookah water container that it first published on August 29, 2008 and registered with the United States Copyright Office on April 21, 2011. At both the time of publication and the time of registration, the container included skull-andcrossbones images on the outside.

Less than a month after registration, Inhale sued Starbuzz Tobacco, Inc. and Wael Salim Elhalawani (collectively, “Starbuzz”) for copyright infringement. Inhale claimed that Starbuzz sold hookah water containers that were identical in shape to Inhale’s container. The allegedly infringing containers did not contain skull-and-crossbones images. After determining that the shape of the water container is not copyrightable, the district court granted summary judgment in favor of Starbuzz.

II



Because “ownership of a valid copyright” is an element of copyright infringement, Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991), summary judgment was appropriate if the shape of Inhale’s hookah water container is not copyrightable.

A



The parties agree that Inhale’s hookah water container is a “useful article.” As “the design of a useful article,” the shape of the container is copyrightable “only if, and only to the extent that, [it] incorporates . . . sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the” container. 17 U.S.C. § 101 (defining “[p]ictorial, graphic, and sculptural works”); id. § 102(a)(5) (granting copyright protection to “pictorial, graphic, and sculptural works”).
 

 

Judge(s): Diarmuid F. O’Scannlain
Jurisdiction: U.S. Court of Appeals, Ninth Circuit
Circuit Court Judge(s)
Carlos Bea
Susan Graber
Diarmuid O’Scannlain

 
Trial Court Judge(s)
Otis Wright, II

 
Plaintiff Lawyer(s) Plaintiff Law Firm(s)
Louis Teran SLC Law Group

 
Defendant Lawyer(s) Defendant Law Firm(s)
Natu Patel The Patel Law Firm PC

 

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Click the maroon box above for a formatted PDF of the decision.
that discusses the level of deference owed to the copyright a “hookah” is a device for smoking tobacco. it contains coals that corporation, satisfies the requirements of physical separability. thus, we district courtawarded$111,993in attorneys’feesto starbuzz. questions of law and fact are reviewed de novo; however, the california corporation; wael copyright “courts have twisted themselves into knots trying to create a test to opinion by judge o’scannlain; article, was not copyrightable because it did not incorporate 3 are encouraged to litigate meritorious claims of frivolous claims against innocent defendants.” argued and submitted pictures, inc., 531 f.3d 962, 972–73 (9th cir. 2008); batjac registration does not show that the copyright office considers the shape utilitarianfunction.” masqueradenovelty, inc.v.uniqueindus.,912 f.2d guidance. effectively ascertain whether the artistic aspects of a useful article can be identified separately from and exist independently of the article’s encouraged to litigate them to the same extent that plaintiffs doesnotcontradictthisconclusion. because inhale’sapplicationincluded the container’s shape is not conceptually separable from its circumstances.2 protection to “pictorial, graphic, and sculptural works”). 1 starbuzz tobacco, inc., a nimmer, nimmer on copyright § 2.08[b][3], at 2-99–2-100 iii established, the rule of law is undisputed, and the issue is useful article are one and the same.” id. 560 (9th cir. 1996). a successful defense furthers the the case); and [5] the need in particular circumstances to smoke to travel through water, which cools and filters the smoke, before appeal in an amount to be determined by the district court. distinguish this case from our precedent, however, inhale artisticos e industriales, s.a. v. costco wholesale corp., cir. 1984), inhale argues that conceptual separability is a inhale, inc. claims copyright protection in the shape of a accomplishes the function. the district court correctly concurring in part, judge bea wrote that he concurred plaintiff-appellant, consider only conceptual separability. counsel advancea varietyof meritorious copyright defensesshould be on the merits” and the need for deterrence of “similarly bea, circuit judge, concurring in part: 2008 and registered with the united states copyright office unreasonableness (both in the factual and legal arguments in question. id. at 1241–42. but usefulness is distinct from * of part ii.c which discusses the level of deference owed to andwerecapableof existing independentlyof,thecontainer’s think § 101 is sufficientlyambiguous to justify deference to administrative container1 interpretations. see high sierra hikers ass’n v. blackwell, 390 f.3d 630, discretion that it gave to the district court. see disenos because “ownership of a valid copyright” is an element conceptual separability. see 1 melville b. nimmer & david copyright office’s interpretations in the appropriate of the container copyrightable. of copyright infringement, feist publ’ns, inc. v. rural tel. any artistic features of the bottle that are separable from its we adopt it for this case. the shape of a container is not inhale, inc. v. starbuzz tobacco, inc. 7 was not copyrightable. we assessed separability ourselves. 97 f.3d 377, 382 (9th cir. 1996). we award attorneys’ fees for the central district of california d.c. no. utilitarian features. in ets-hokin, we held that the shape of a c the text of 17 u.s.c. § 101 does not suggest that that the factors favored an award to starbuzz, the district decided that whether an item is a useful article is a factual 638–39 (9th cir. 2004). whether “design elements can be identified as reflecting the designer’s crossbones images on the outside. office has determined that whether an item’s shape is reasons given by the district court in this case are well- the contents within its shape—because the shape in favor of starbuzz. nanette petruzzelli, assoc. register, u.s. copyright office, of enactmentoflaws from the legislative to the administrative infringement suit does. see fogerty v. fantasy, inc., entitled to copyright protection. skull-and-crossbones images on the container, the certificate of appropriate if the shape of inhale’s hookah water container is less than a month after registration, inhale sued starbuzz inhale, inc. v. starbuzz tobacco, inc.4 1230–31 (9th cir. 1998) (deferring to the register’s and fact. see pullman-standard v. swint, 456 u.s. 273, 289 copyright office practices). because chevron deference separability. compendium of copyright office practices ii no. 12-56331 relying in part on ets-hokin, the district court ruled that the district court did not abuse its discretion because “the independently of, the utilitarian aspects of the” container. defendant on the ground that the allegedly infringed work separated out and exist independently of their utilitarian incurred in the defense of this appeal to starbuzz in an amount to be determined by the district court. 510 u.s. 517, 527 (1994) (“[d]efendants who seek to natu j. patel, the patel law firm, p.c., irvine, california, analysis. see id at 1080. (“[t]he district court did not identify inhale, inc. v. starbuzz tobacco, inc.6 argued the causeandfiledthebrieffor defendants-appellees. because the copyright office’s reasoning is persuasive, v. panel held that the shape of a hookah water container was not court relied on, among other things, starbuzz’s “total success “starbuzz”) for copyright infringement. inhale claimed that 94 f.3d at 561(“[w]e conclude that fees are warranted under inhale, inc. v. starbuzz tobacco, inc.10 in an opinion letter and an internal manual, the copyright (2011). inhale does not argue that the container’s shape underlying factual findings are reviewed for clear error.”). 2 distinctiveness of shape would be relevant. see, e.g., brandir int’l, inc. founded in the record and are in keeping with the purposes of text of the enactments of congress. this misplaces the power those “in which the historical facts are admitted or concurrence by judge bea dorado corp., 697 f.2d 890 (9th cir. 1983), we affirmed a office’s interpretations of the copyright office. judge bea after determining that the shape of the water container is not containers did not contain skull-and-crossbones images. that the copyright office issued a certificate of registration to inhale tobacco, inc. and wael salim elhalawani (collectively, discretion in awarding attorneys’ fees to the defendant under once we start engrafting administrative interpretation to utilitarian aspects. adopting the reasoning of the copyright it reaches the user. the water is held in a container at the base of the the shape of the container is conceptually separable is a for publication corp., 362 f.3d 1172, 1180 (9th cir. 2004) (“mixed 2000), we ruled that the shape of a vodka bottle was not inhale, inc. v. starbuzz tobacco, inc.8 application of the legal standard to those facts. thus, whether this summary constitutes no part of the opinion of the court. it has purposes of the copyright act just as much as a successful a interpretation in an internal manual, compendium of the extent that, [it] incorporates . . . sculptural features that salim elhalawani, an individual b and award of attorneys’ fees in favor of the defendant, the we defer to the copyright office’s views expressed in such to jeffrey h. brown, attorney for msrf, inc., re: fanciful we must decide whether the shape of a hookah water distinctive does not affect conceptual separability. infringement.”). for the foregoing reasons, we affirm the district court’s hookah. for the ninth circuit fee award would not be taken away from him.”). look to the copyright office for further guidance. been prepared by court staff for the convenience of the reader. and carlos t. bea, circuit judges. affirmed and remanded. question of fact. inhale’s reliance on poe is misplaced. poe unnecessary to look to the copyright office for further with the majority’s opinion, except for the part of part ii.c opinion affirming the district court’s grant of summary judgment the copyright act,” fantasy, inc. v. fogerty, 94 f.3d 553, a shape to inhale’s container. the allegedly infringing can be identified separately from, and are capable of existing iv the ‘power to persuade.’” see christensen v. harris cnty., 663, 670 (3d cir. 1990). under some interpretations of 17 u.s.c. § 101, (compendium ii) § 505.03. although inhale’s water i concur with the majority’s opinion, except for the part starbuzz sold hookah water containers that were identical in b louis f. teran, slc law group, pasadena, california, both parties agree that the hookah water container is a useful conclusion that we review de novo. see mathews v. chevron inhale, inc. v. starbuzz tobacco, inc. 3 serv. co., 499 u.s. 340, 361 (1991), summary judgment was our precedent suggests that whether a useful article has november 4, 2013—pasadena, california defendants-appellees. listed in jackson v. axton: “[1] the degree of success under 17 u.s.c. § 505. section 505 gives us the same obtained; [2] frivolousness; [3] motivation; [4] objective “distinctiveness” is an element of separability. because the separability. when interpreting the copyright act, we defer to the united states court of appeals is entitled to copyright protection. branch and is contrary to my concept of the separation of this statutory standard is satisfied by either physical or container. therefore, we must determine whether conceptually separable features is a mixed question of law summary* office, the panel held that whether an item’s shape is vodka “bottle without a distinctive shape” was not separable from its utilitarian features. rather than treat inhale, inc. v. starbuzz tobacco, inc.2 v. cascade pac. lumber co., 834 f.2d 1142, 1145 (2d cir. 1987) (asking wrote that because the statute was not ambiguous, it was starbuzz. we award attorneys’ fees for this appeal in an article that holds water within its shape, all that is left is the sculptural features that could be identified separately from, inhale, inc., a california argued the cause and filed the briefs for plaintiff-appellant. § 505 inasmuch as it served the purposes of the copyright the panel also held that the district court did not abuse its the district court considered the five, non-exclusive factors i not copyrightable. cause the tobacco to smoke. a user’s inhalation through a tube causes the see id. at 893 (“there is no element of the folders that can be residing in california, amount to be determined by the district court. see fantasy, prods. inc. v. goodtimes home video corp., 160 f.3d 1223, o’scannlain, circuit judge: distinctiveness of shape affects separability. 17 u.s.c. § 101 (defining “[p]ictorial, graphic, and in ets-hokin v. skyy spirits, inc., 225 f.3d 1068 (9th cir. a “useful article.” as “the design of a useful article,” the statute is not ambiguous in this respect, it is unnecessary to n.19 (1982) (describing mixed questions of law and fact as is not copyrightable.3 separability as a question for the jury, we conducted our own 2:11-cv-03838- exercising its discretion under 17 u.s.c. § 505, the filed january 9, 2014 concluded that the shape of inhale’s hookah water container hookah water container that it first published on august 29, april 9, 2008. that determination was based on the principle our opinions, there is a tendency to look elsewhere than the district court’s directed verdict in favor of a copyright starbuzz also requests attorneys’ fees for this appeal before: diarmuid f. o’scannlain, susan p. graber, works of modern sculpture” is insufficient for conceptual shape, “[t]he shape of the alleged ‘artistic features’ and of the materials “only to the extent that those interpretations have does not apply to internal agency manuals or opinion letters, otis d. wright, ii, district judge, presiding powers. the parties agree that inhale’s hookah water container is utilitarian ones. we also find none.”). in fabrica inc. v. el that “analogizing the general shape of a useful article to distinctive does not affect separability. see letter from the panel held that the hookah water container, a useful copyrightable, the district court granted summary judgment 529 u.s. 576, 587 (2000). on april 21, 2011. at both the time of publication and the opinion inhale, inc. v. starbuzz tobacco, inc. 9 aspects.”). 25 f.3d 884, 890 (9th cir. 1994) (citation omitted). in ruling whether the facts satisfy the statutory standard”). because the copyright office’s interpretations of the copyright act. relying on poe v. missing persons, 745 f.2d 1238 (9th 17 u.s.c. § 505. the panel awarded attorneys’ fees for the see richlin v. metro-goldwyn-mayer time of registration, the container included skull-and- advance considerations of compensation and deterrence.” container, like a piece of modern sculpture, has a distinctive inhale, inc. v. starbuzz tobacco, inc. 5 grant of summary judgment and award of attorneys’ fees to ornamentalbottle designs1–9,controlno.61-309-9525(s), conceptuallyseparable. see 225 f.3d at 1080. attempting to ii appeal from the united states district court independent of the container’s utilitarian function—to hold odw-ffm shape of the container is copyrightable “only if, and only to emphasizes the distinctive shape of its hookah water act for fogerty to defend an appeal so that the district court’s artistic judgment exercised independently of functional influences”). we sculptural works”); id. § 102(a)(5) (granting copyright


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