Inhale, Inc. v. Starbuzz Tobacco

The design of a useful article is copyrightable only to the extent that it incorporates sculptural features that can be identified separately from, and are capable of existing independently of utilitarian aspects of the container.

Opinion (O'Scannlain): Plaintiff Inhale, Inc. claimed copyright protection in the shape of a hookah water container that it registered with the US Copyright Office. The container included a skull-and-crossbones image on the outside. Shortly after registration, Plaintiff sued defendant, Starbuzz Tobacco, Inc., for copyright infringement claiming that the water containers were the exact same shape. Defendant's water container did not include skull-and-crossbone images. Determining that the shape of a water container is not copyrightable, the district court granted summary judgment in favor of defendant. Ownership of a valid copyright is an element of copyright infringement, so summary judgment is appropriate if the shape of Plaintiff's hookah water container is not copyrightable. The parties agree that plaintiff's hookah water container is a "useful article." The design of a useful article is copyrightable only to the extent that it incorporates sculptural features that can be identified separately from, and are capable of existing independently of, utilitarian aspects of the container. On appeal, plaintiff argued that conceptual separability is a question of fact, but the court disagreed, finding that usefulness is distinct from separability. Precedent suggested that whether a useful article has conceptually separable features is a mixed question of law and fact. Because the parties did not dispute the facts, the court reviewed the legal conclusions made by the district court de novo. The district court ruled that the container's shape is not conceptually separable from its utilitarian features. Plaintiff argued that the distinctiveness of the shape affected its separability. The court defers to the Copyright Office's findings in appropriate circumstances when interpreting the Copyright Act. The Copyright Office determined that an item's shape's distinctiveness does not affect separability because the general shape of a useful article to works of modern sculpture is insufficient for conceptual separability. Finding that to be sound reasoning, the court AFFIRMED summary judgment for defendant because, while plaintiff's container had a distinctive shape, the shape of the alleged artistic features and of the useful article were one and the same.