Inhale, Inc. v. Starbuzz Tobacco, Inc.

Under “useful articles” doctrine of copyright law, the manufacturer of a hookah is not entitled to copyright protection where sculptural elements of design cannot exist independently, or be separately identified, from utilitarian aspects of design.

Inhale, Inc. (Inhale) registered a design for a hookah with a skull-and-crossbones image in 2011, for a product that they had been making since 2008. They sued Starbuzz Tobacco, Inc. (Starbuzz) for copyright infringement on the grounds that Starbuzz was selling a product identical in shape to Inhale’s, but which did not feature the skull-and-crossbones image. Starbuzz received summary judgment on the district court’s determination that the hookah was not copyrightable, and Inhale appealed. Under the “useful articles” doctrine, the design of an object is only copyrightable if the “‘sculptural features [] can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the’ container.” Applying this doctrine to the conceptual separability of the hookah, the Ninth Circuit held that the distinctiveness of a container’s shape alone does not affect its separability because the shape of a container will necessarily serve the object’s function of containment. As such the hookah, being considered a water container, was held to be not copyrightable. Furthermore, the panel upheld a grant of attorney’s fees for Starbuzz due to Starbuzz’s “total success on the merits” and the desire to deter “similarly frivolous claims against innocent Defendants,” and awarded additional attorney’s fees to Starbuzz for the appeal to be determined on remand. AFFIRMED AND REMANDED.