Inhale, Inc. v. Starbuzz Tobacco, Inc.
755 F.3d 1038
9th Cir.2014Background
- Inhale sought copyright protection for the shape of a hookah water container published in 2008 and registered in 2011, the container bearing skull-and-crossbones imagery.
- Starbuzz sold containers allegedly infringing the shape; the infringing designs lacked skull-and-crossbones images.
- The district court granted summary judgment that the container’s shape is not copyrightable, concluding the container is a useful article with noncopyrightable shape.
- Inhale contended the shape is conceptually (or physically) separable from its utilitarian function, warranting copyright protection.
- The court applied 17 U.S.C. § 101/102(a)(5) to determine separability and adopted a deference framework toward the Copyright Office on the question of distinctiveness.
- The court awarded Starbuzz attorneys’ fees under 17 U.S.C. § 505 and affirmed remand for fee determination; Starbuzz’s fees on appeal were also awarded.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Is the hookah container’s shape copyrightable | Inhale argues separability makes shape protectable | Starbuzz argues shape is not separable from utilitarian function | Not copyrightable; shape not separable |
| Does concept of separability govern copyrightability of a useful article’s shape | Contends separability should be determined as a fact-based inquiry | Maintains separability can be decided through law-and-fact analysis and de novo review | Conceptual separability is a legal conclusion reviewed de novo |
| What role does distinctiveness of shape play in separability | Distinctive exterior shape could be separable | Distinctiveness does not affect separability; shape and function intertwine | Distinctiveness is not a separability factor; shape not independently copyrightable |
| What deference to the Copyright Office applies to interpreting §101 | Seeks authoritative guidance on interpretive questions | Deference to Office interpretations is appropriate | Adopted Office’s reasoning on non-independence of shape; defer to persuasive interpretations |
| Are attorneys’ fees warranted under §505 for this appeal | Starbuzz seeks fees incurred on appeal | Fees justified by purposes of the Act for defense of meritless claims | Fees awarded for both district court and appeal proceedings; remand to district court for amount |
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 in vodka bottle case)
- Fabrica Inc. v. El Dorado Corp., 697 F.2d 890 (9th Cir. 1988) (district court’s directed verdict for non-copyrightability based on inseparability)
- Poe v. Missing Persons, 745 F.2d 1238 (9th Cir. 1984) (usefulness is a factual question; separability is not)
- Greenwood v. Fed. Aviation Admin., 28 F.3d 971 (9th Cir. 1994) (petition for rehearing waivers due to failure to raise issue on initial brief)
- Jackson v. Axton, 25 F.3d 884 (9th Cir. 1994) (factors for §505 attorneys’ fees analysis)