IP Law Daily, COPYRIGHT NEWS: High Court declines to decide if hookah container’s shape is copyrightable, (Dec 8, 2014)

By Thomas Long, J.D.

Hookah manufacturer Inhale, Inc., has been denied U.S. Supreme Court review of a decision by the U.S. Court of Appeals in San Francisco, holding that the shape of a water container was not copyrightable because the container did not incorporate sculptural features that were distinct from its utilitarian aspects.

Inhale published a hookah water container design decorated with a skull and crossbones graphic and registered the design with the Copyright Office. The registration was for a “sculpture/3-D artwork” titled “Hookah Water Container.” Inhale disclaimed copyright protection for the skull and crossbones graphic.

Inhale filed suit against competitor Starbuzz Tobacco, Inc., for copyright infringement. Starbuzz allegedly sold hookah water containers that were identical in shape to Inhale’s water container. After determining that the shape of the water container was not copyrightable, the district court granted summary judgment to Starbuzz. A useful article is entitled to copyright protection only if its pictorial, graphic, or sculptural features can be identified separately from—and are capable of existing independently of—the utilitarian purposes of the article. The district court held that the shape of Inhale’s water container was not conceptually separable from its utilitarian features. That decision was affirmed by the Ninth Circuit.

The questions presented by Inhale’s petition for certiorari were: (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 to 17 U.S.C. §101?; and (2) Is the distinctive shape of a container protected under the Copyright Act of 1976?

The petition in Inhale, Inc. v. Starbuzz Tobacco, Inc., Dkt. No. 14-396, was denied December 8, 2014.

Attorneys: Louis F. Teran (SLC Law Group) for Inhale, Inc. Natu J Patel (The Patel Law Firm, PC) for Starbuzz Tobacco, Inc.

Companies: Inhale, Inc.; Starbuzz Tobacco, Inc.

News: Copyright