Inhale, Inc. v. Starbuzz Tobacco, Inc.
739 F.3d 446
9th Cir.2014Background
- Inhale, Inc. claims copyright in the shape of a hookah water container first published Aug 29, 2008 and registered Apr 21, 2011, with skull-and-crossbones imagery on the exterior at both times.
- Starbuzz allegedly sold identical-shaped containers lacking skull-and-crossbones images, prompting Inhale’s infringement suit shortly after registration.
- The district court granted summary judgment that the container’s shape is not copyrightable, on the ground that the shape is not separable from its utilitarian function.
- The court treated the issue of separability as a matter of law given the undisputed facts that the container is a useful article, and reviewed the separability determination de novo.
- On appeal, the court adopted a Copyright Office interpretation that the distinctive shape does not affect conceptual separability and upheld dismissal and monetary awards.
- The district court’s award of attorneys’ fees to Starbuzz was affirmed, with a portion of the award related to this appeal held to be appropriate for district-court determination.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Is the hookah container shape copyrightable as a useful article? | Inhale asserts separable sculptural features exist. | Shape is not separable from utilitarian function. | Not copyrightable |
| Is concept separability a question of law or fact, and does the shape qualify? | Conceptual separability is a factual question for jury. | Separation is within the court’s purview; no genuine separable features found. | Separation is determined as a legal conclusion; the shape is not conceptually separable |
| Does the distinctive shape affect separability for this container? | Distinctive shape supports separability as art separate from function. | Distinctiveness does not affect separability; shape and art are one and the same. | Distinctiveness does not affect separability; shape not copyrightable |
| Award of attorneys’ fees on the district court and on appeal under 17 U.S.C. § 505? | Fees should be limited to the prevailing party’s attorney costs warranted by statute. | Fees are appropriate where the defense furthers purposes of the Copyright Act. | Affirm district court’s fee award; allowance of appeal fees to be determined by district court |
Key Cases Cited
- Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (U.S. 1991) (ownership of a valid copyright required for infringement)
- Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068 (9th Cir. 2000) (shape not separable from utilitarian features)
- Fabrica Inc. v. El Dorado Corp., 697 F.2d 890 (9th Cir. 1983) (courts assess separability themselves when appropriate)
- Pullman-Standard v. Swint, 456 U.S. 273 (U.S. 1982) (mixed questions of law and fact)
- Mathews v. Chevron Corp., 362 F.3d 1172 (9th Cir. 2004) (mixed questions of law and fact reviewed de novo)
- Jackson v. Axton, 25 F.3d 884 (9th Cir. 1994) (Jackson factors guiding fee determinations under § 505)
- Fantasy, Inc. v. Fogerty, 94 F.3d 553 (9th Cir. 1996) (defense of copyright issues serves the Act’s purposes)
- Fogerty v. Fantasy, Inc., 510 U.S. 517 (U.S. 1994) (fee-shifting incentives align with copyright policy)
- Richlin v. Metro-Goldwyn-Mayer Pictures, Inc., 531 F.3d 962 (9th Cir. 2008) (deferring to Copyright Office interpretations where persuasive)
- Batjac Prod. v. Good-Times Home Video Corp., 160 F.3d 1223 (9th Cir. 1998) (deferring interpretations in internal Copyright Office materials)
- Masquerade Novelty, Inc. v. Unique Indus., 912 F.2d 663 (3d Cir. 1990) (artistic features vs. functional elements in design tests)
- Brandir Int’l, Inc. v. Cascade Pac. Lumber Co., 834 F.2d 1142 (2d Cir. 1987) (design elements, independent of functional influences, considered)
- High Sierra Hikers Ass’n v. Blackwell, 390 F.3d 630 (9th Cir. 2004) (deference to agency interpretations in ambiguous statutory context)