Tag Archives: separability

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C. (Robert Wagner on G+)

In an opinion issued yesterday, the Ninth Circuit confirmed, in Inhale, Inc. v. Starbuzz Tobacco, Inc. (Case No. 12-56331), that when a useful article has distinctive, artist features, those features are not copyrightable if they are not separable from the utilitarian aspects of the article.

Background

Inhale registered with the Copyright Office its design for a uniquely shaped hookah (a device used for smoking tobacco). Starbuzz sold identically shaped hookahs (shown in the picture to the right and as alleged in the complaint). Inhale then sued Starbuzz for copyright infringement. The District Court granted summary judgment in favor of Starbuzz, holding that the shape of a hookah is not copyrightable.

The Ninth Circuit Affirms

Designs of a useful article are 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. 17 U.S.C. § 101. The parties agreed that the hookahs were useful articles, so the question was whether the design was physically or conceptually separable from its utilitarian aspect. Inhale argued conceptual separability.

The Ninth Circuit first considered whether separability was a question of law or fact. It concluded under its precedent that it was a mixed question, and, therefore, it could decide the issue de novo.

Inhale argued that the distinctiveness of the shape of the hookah made its conceptually separable from its utilitarian aspects. The Ninth Circuit acknowledged that the law is muddled with respect to how courts should determine the separability of the artistic and utilitarian aspects of a useful article, so it deferred to the Copyright Office’s interpretations of the relevant standards.

The Copyright Office has determined that the distinctiveness of an article’s shape does not affect its separability. The Ninth Circuit found its reasoning persuasive and adopted it—“[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.”

Therefore, the Ninth Circuit affirmed the District Court’s grant of summary judgment because it correctly concluded that the shape was not copyrightable.