Copyright law: Ninth Circuit rules ‘distinctive shape’ of hookah not entitled to copyright protection

by John Chapman

The Ninth Circuit Court of Appeals has held that the “distinctive shape” of a hookah water container is not entitled to copyright protection. Inhale, Inc. claimed 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-and-crossbones images on the outside.

Less than a month after registration, Inhale sued Starbuzz Tobacco, Inc. 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.

The parties agreed that Inhale’s hookah water container is a “useful article.” A “useful article” is any article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. The “design” of a “useful article” 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” article. See 17 U.S.C. § 101 (defining “[p]ictorial, graphic, and sculptural works”) and § 102(a)(5) (granting copyright protection to “pictorial, graphic, and sculptural works”). The standard can be satisfied by either physical or conceptual separability. Inhale did not argue that the container’s shape satisfied the requirements of physical separability, and the court of appeals considered only conceptual separability.

After determining that the shape of the water container is not copyrightable, the district court granted summary judgment in favor of Starbuzz. The Ninth Circuit has affirmed. Inhale, Inc. v. Starbuzz Tobacco, Inc., — F.3d —-, 2014 WL 69000 (9th Cir. January 09, 2014).

Inhale argued that conceptual separability should be a question of fact. Although the Ninth Circuit agreed that whether an item is a useful article is a factual question, the court determined that usefulness is distinct from separability. In Ets–Hokin v. Skyy Spirits, Inc., 225 F.3d 1068 (9th Cir.2000), the court had ruled that the shape of a vodka bottle was not separable from its utilitarian features. Rather than treat separability as a question for the jury, the court had conducted its own analysis. See Id. at 1080 (“[T]he district court did not identify any artistic features of the bottle that are separable from its utilitarian ones. We also find none.”); see also Fabrica Inc. v. El Dorado Corp., 697 F.2d 890, 893 (9th Cir. 1983) (“There is no element of the folders that can be separated out and exist independently of their utilitarian aspects.”). Attempting to distinguish that case, Inhale emphasized the “distinctive shape” of its hookah water container. Relying on an interpretation by the Copyright Office, the court rejected the argument and found that distinctiveness of shape does not affect separability.

In an opinion letter and an internal manual, the Copyright Office has determined that whether an item’s shape is distinctive does not affect separability. See 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. That determination was based 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 (Compendium II) § 505.03. Although Inhale’s water container, like a piece of modern sculpture, has a distinctive shape, “[t]he shape of the alleged ‘artistic features’ and of the useful article are one and the same.” Id.

The Ninth Circuit found the Copyright Office’s reasoning persuasive and thus adopted it for this case. The court concluded that “[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.” Thus, the district court had correctly concluded that the shape of Inhale’s hookah water container is not copyrightable.

Intellectual Property Law and Our Law Firm

At Heygood, Orr & Pearson, our attorneys have handled hundreds of commercial litigation cases ranging in value from tens of thousands of dollars to tens of millions. We have successfully represented businesses of all sizes, from small “mom and pop” businesses to some of the largest corporations in the world.

Whether we are representing a huge, multi-national corporation or a small local business, we understand that clients want their legal representation to be not only excellent but cost-effective and efficient. For that reason, we will often offer our clients flexible fee structures such as contingent fees, flat fees, reduced hourly fees with a bonus payment contingent on success and reverse contingent fees.

At Heygood, Orr & Pearson, our attorneys have handled numerous patent matters including prosecuting claims for infringement, as well as for interfered-with patent rights. We have handled claims brought by a large local company for infringement of its rail car patent, claims by a local inventor for infringement of her patent for a childcare product and claims by an Israeli company against a Fortune 500 company for infringement of its wireless technology patent. Our firm has also represented a client suing a large American pharmaceutical company for interfering with its patent rights to liposome technology. Right now, our attorneys are representing an international businessman in a trademark infringement lawsuit relating to the diamond and jewelry business.

Our attorneys are capable of litigating patent infringement claims throughout the country. In addition, firm attorney John “Jay” Pate is licensed to prosecute patents before the U.S. Patent and Trademark Office.

Beyond our specific experience in the field of intellectual property, our ability to prosecute patent infringement action is aided by our extensive trial experience in general. While technical knowledge and familiarity with patent rules is a must for attorneys handling patent infringement claims, there is no substitute for courtroom experience. At Heygood, Orr & Pearson, our seasoned litigators have the experience to take even the most complex patent case and explain it in terms a jury can understand. We have a track record of proven success representing businesses large and small. Several of our trial lawyers are board certified* and many of them have been selected as Super Lawyers in the State of Texas for several consecutive years.* Our firm is AV rated, the highest legal and ethical ranking available from the leasing law firm ranking service, Martindale-Hubbell.

If you or your company is in need of representation in an intellectual property matter, contact us for a free consultation by calling toll-free at 1-877-446-9001, or by completing the free case evaluation form on our firm’s contact page.


Michael Heygood, James Craig Orr, Jr. and Eric Pearson are all Board Certified in Personal Injury Trial Law — Texas Board of Legal Specialization.

** Michael Heygood, James Craig Orr, Jr. and Eric Pearson were selected to the Super Lawyers List, a Thomson Reuters publication, for the years 2003 through 2014.

by John Chapman

John Chapman is a licensed attorney with experience in complex commercial litigation (including securities fraud, RICO, shareholder oppression, and derivative actions) and personal injury litigation.