Lead Opinion
Opinion by Judge O’SCANNLAIN; Concurrence by Judge BEA.
ORDER
The opinion filed January 9, 2014, and published at
On slip opinion page 8, after <is not copyrightable.3> and before the beginning of Part III, add the following as a new paragraph:
<In summary, we hold that any part of a container that merely accomplishes the containing is not copyrightable. We do not mean to suggest that, in some other case, no elеments of a container “can be identified separately from, and are capable of existing independently of,” the container. 17 U.S.C. § 101. Here, though, Inhale does not argue in its opening brief that the exterior shape of the drooping ring is conceptually separable because the interior shape of the hookah does not protrude into the ring. Instead, its theory is that the hookah’s “outer skin,” from top to bottom, can be peeled away and analyzed separately. Therefore, its argument in the petition for rehearing, that the exterior shape of the drooping ring is uniquely separable, is waived. See Greenwood v. Fed. Aviation Admin.,
An amended opinion is filed concurrently with this order.
The petition for rehearing and the petition for rehearing en banc аre DENIED. No further petitions for panel rehearing or for rehearing en banc will be entertained. Starbuzz’s request for an award of attorneys’ fees under 17 U.S.C. § 505 is GRANTED. We award attorneys’ fees incurred in responding to the petition for rehearing and rehearing en banc to Star-buzz in an amount to be determined by the district court on remand.
OPINION
We must decide whether the shape of a hookah water container
I
Inhale, Inc. claims copyright protection in the shape of a hookah water container that it first publishеd on August 29, 2008 and registered with the United States Copyright Office on April 21, 2011. At both the time of publication and the time of registration, the container included skull- and-crossbones images on the outside.
Less than a month after registration, Inhale sued Starbuzz Tobacco, Inc. and Wаel Salim Elhalawani (collectively, “Star-buzz”) for copyright infringement. Inhale claimed that Starbuzz sold hookah water containers that were identical in shape to Inhale’s container. The allegedly infringing containers did not contain skull-and-crossbones images. After determining that the shape of the water container is not copyrightable, the district court granted summary judgment in favor of Star-buzz.
II
Because “ownership of a valid copyright” is an element of copyright infringement, Feist Publ’ns, Inc. v. Rural Tel. Serv. Co.,
A
The parties agree that Inhale’s hookah water container is a “useful article.” As “the design of a useful article,” the shape of the container is copyrightable “only if, аnd 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 (defining “[p]ictorial, graphic, and sculptural works”); id. § 102(a)(5) (granting copyright protection to “pictorial, graphic, and sculptural works”).
This statutory standard is satisfied by either physical or conceptual separability. See 1 Melville B. Nimmer & David Nim-mer, Nimmer on Copyright § 2.08[B][3], at 2-99-2-100 (2011). Inhale does not argue that the container’s shape satisfies the requirements of physical separability. Thus, we consider only conceptual separability.
B
Relying on Poe v. Missing Persons,
In Ets-Hokin v. Skyy Spirits, Inc.,
Our precedent suggests that whether a useful article has conceptually separable features is a mixed question of law and fact. See Pullman-Standard v. Swint,
C
Relying in part on Ets-Hokin, the district court ruled that the container’s shape is not conceptually separable from its utilitarian features. In Ets-Hokin, we held that the shape of a vodka “bottle without a distinctive shape” was not conceptually separable. See
When interpreting the Copyright Act, we defer to the Copyright Office’s interpretations in the appropriate circumstances.
In an opinion letter and an internal manual, the Copyright Office has determined that whether an item’s shape is distinctive does not affect separability. See Letter from Nanette Petruzzelli, Assoc. Register, U.S. Copyright Office, to Jeffrey H. Brown, attorney for MSRF, Inс., Re: Fanciful Ornamental Bottle Designs 1-9, Control No. 61-309-9525(S), April 9, 2008. That determination was based on the principle that “analogizing the general shape of a useful article to works of modern sculpture” is insufficient for conceptual separability. Compendium of Copyright Office Practices II (Compendium II) § 505.03. Although Inhale’s water container, like a piece of modern sculpture, has a distinctive shape, “[t]he shape of the alleged ‘artistic features’ and of the useful article are one and the same.” Id.
Because the Copyright Office’s reasoning is persuasive, we adopt it for this case. The shape of a container is not independent of the container’s utilitarian function — to hold the contents within its shape — insofar as the shape accomplishes the function. The district court correctly concluded that the shape of Inhale’s hookah water container is not copyrightable.
In summary, we hold that any part of a container that merely accomplishes the containing is not copyrightable. We do not mean to suggest that, in some other case, no elements of a сontainer “can be identified separately from, and are capable of existing independently of,” the container. 17 U.S.C. § 101. Here, though, Inhale does not argue in its opening brief that the exterior shape of the drooping ring is conceptually separable because the interior shape of the hookah does not protrude into the ring. Instead, its theory is that the hookah’s “outer skin,” from top to bottom, can be peeled away and analyzed separately. Therefore, its argument in the рetition for rehearing, that the exterior shape of the drooping ring is uniquely separable, is waived. See Greenwood v. Fed. Aviation Admin.,
Ill
A
Exercising its discretion under 17 U.S.C. § 505, the district court awarded $111,993 in attorneys’ fees to Starbuzz. The district court considered the five, non-exclusive factors listed in Jackson v. Axton: “[1] the degree of success obtained; [2] frivolousness; [3] motivation; [4] objective unreasonableness (both in the factual and legal arguments in the case); and [5] the need in particular circumstances to advance considerations of compensation and deterrence.”
The district court did not abuse its discretion because “the reasons given by the district court in this case are well-founded in the record and are in keeping with the purposes of the Copyright Act,” Fantasy, Inc. v. Fogerty,
B
Starbuzz also requests attorneys’ fees for this appeal under 17 U.S.C. § 505. Section 505 gives us the same discretion that it gave to the district court. See Disenos Artisticos E Industriales, S.A v. Costco Wholesale Corp.,
IV
For the foregoing reasons, we affirm the district court’s grant of summary judgment and award of attorneys’ fees to Star-buzz. We award attorneys’ fees for this appeal in an amount to be determined by the district court.
AFFIRMED AND REMANDED.
Notes
. A “hookah” is a device for smoking tobacco. It contains coals that cause the tobacco to smoke. A user’s inhalation through a tube causes the smoke to travel through water, which cools and filters the smoke, before it reaсhes the user. The water is held in a container at the base of the hookah.
. "Courts have twisted themselves into knots trying to create a test to effectively ascertain whether the artistic aspects of a useful article can be identified separately from and exist independently of the article’s utilitarian function.” Masquerade Novelty, Inc. v. Unique Indus.,
. That the Copyright Office issued a certificate of registration to Inhale does not contradict this conclusion. Because Inhale's application included skull-and-crossbones images on the container, the certificate of registration does not show that the Copyright Office considers the shape of the container copyrightable.
Concurrence Opinion
concurring in part:
I concur with the majority’s opinion, except for the part of Part II.C which discusses the level of deference owed to the Copyright Office’s interpretations of the Cоpyright Act. The text of 17 U.S.C. § 101 does not suggest that “distinctiveness” is an element of separability. Because the statute is not ambiguous in this respect, it is unnecessary to look to the Copyright Office for further guidance.
Once we start engrafting administrative interpretation to our opinions, there is a tendency to look elsewhere than the text of the enactments of Congress. This misplaces the power of enactment of laws from the legislative to the administrative branch and is contrary to my concept of the separation of powers.