V31 #3 Cases of Note — Copyrighting Distinctively Shaped But Useful Objects

by | Jun 28, 2019 | 0 comments

Column Editor:  Bruce Strauch  (The Citadel, Emeritus) 


And we enter the exciting world of competitive hookah manufacturing.

Inhale designs and sells hookah water containers in a distinctive shape with a skull and crossbones on them. 

Googling “Inhale Hookah & Accessories,” you find they are gosh-darn creative.  They even have a “Gangsta” line with hookahs shaped like various firearms. They also have a belly dancer, a mermaid, a dragon warrior, and an Eiffel Tower.  Many screens of hookahs. Sexy vamp. Anubis. Pirate. The octopus for multiple smokers. On and on.

It would seem there was something protectible there.  But not so fast …

Inhale sued Starbuzz for copyright infringement by producing an identical shaped hookah without the skull and crossbones.  The district court handed Starbuzz summary judgment.  Which brought us to the 9th Circuit.

Hookahs contain coals.  Inhalation draws smoke through water at the base, cooling and filtering it before it hits your lungs.

Yours truly certainly thinks the world would nicely survive without these.  But whether we agree or not, the parties agreed that a hookah water container was a “useful article.”

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” container.  17 U.S.C. § 101.

This standard is met by either physical or conceptual separability.  See 1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 2.08[B][3], at 2-99-2-100 (2011).  Inhale did not claim physical separability, so only conceptual was considered.

Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068 (9th Cir. 2000) held that the shape of a vodka bottle could not be separated from its utilitarian features. It determined this as a matter of law and not one of fact for a jury.

Precedent, however, holds that conceptually separating features to be a mixed one of law and fact.  See Pullman-Standard v. Swint, 456 U.S. 273, 289 n.19 (1982).  Here, both parties agreed a hookah is a useful article holding water.  That leaves only the application of the legal standard to the facts.

The vodka bottle in Ets-Hokin did not have a distinctive shape! 

But what follows would indicate it wouldn’t matter if it had been shaped like a pretzel.  Or a donut. Or a unicorn.

The Skyy bottle was blue with gold lettering.  It was attractive. But it was still all bottle.   So the blue and gold were not separable from the bottle’s utilitarian features. 

But what then of distinctive shaped hookahs?

The Copyright Office is negative on distinctive shapes.  “Analogizing the general shape of a useful article to works of modern sculpture” does not make for conceptual separability.  Compendium of Copyright Office Practices II (Compendium II) § 505.03.

Which, if you can follow that, means that an artistic hookah and its utility are one and the same.

Inhale argued that you could peel away the siren, the football, the rugby football and find the filtration system inside.  But the 9th Circuit said nay.

Basketball player, grim reaper, AR-15 were all part of the water filtering system.

It looks to me that if they had been appliqued to the filtering system — i.e., physically separable — they would be protectable.  


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