Ninth Circuit Harshes Hookah Company’s Copyright Buzz

What’s protected by copyright law?  Most of us tend to think of literature/books, music, movies, photographs, graphic art, and other more common “works of authorship” under the Copyright Act.  But it isn’t just the obvious things that come within copyright protection.  For instance, if you are an architect or builder, your original building plans or the unique design elements of the buildings themselves are likely subject to copyright protection.  The Copyright Act even specifically lists your next great pantomime or “mime” as a type of “original work of authorship” (although, I think “man in box” might already be taken) that can be protected by copyright law.

Some things, however, are just not protectable in copyright.  An opinion of the Ninth Circuit Court of Appeals that was released last week shines a light on the concept of copyright protection for so-called “useful articles.”  The case focused on the similarly shaped hookah water containers of two cleverly named companies; Inhale, Inc. and Starbuzz “Tobacco,” Inc. (quote marks are mine).

Before we get into the legal news, it’s worth explaining for the uninitiated, just what exactly is a hookah water container.  After all, “tobacco” smoking devices (there are those quotes again!) are not a frequent topic on the KP blog.  A hookah is a waterpipe, which can be used to smoke flavored tobacco products or other less legal (in Oregon anyway) plant material.  Before the smoke from the tobacco is inhaled, it passes through a water container in the base of the hookah, which cools and adds moisture to the smoke before reaching the smoker.  This vase-like container is the subject of the copyright infringement case mentioned above.

So why did the Ninth Circuit determine that Inhale’s water container was a “useful article” and not protectable in copyright?  In 2008, Inhale registered a copyright for a “Hookah Water Container” claiming that the type of work protected was “visual material” and a “sculpture/3-D artwork.”  The Copyright Office determined that, based on the application, the hookah water container was copyrightable and approved the registration.  In 2011, Inhale filed a copyright infringement suit against Starbuzz after Starbuzz began producing and selling a product that was almost identical in shape, but not in its decorative design.  Inhale’s container sported a stylized skull and crossbones design, while Starbuzz’s container came in various design options such as Ed Hardy artwork or mosaic tile designs.

The Ninth Circuit accepted the party’s concessions on appeal that the water container was properly considered a “useful article.”  A “useful article” is a work that has “an intrinsic utilitarian function.”  To be protected by copyright law, a useful article must have separately identifiable, artistic aspects that exist independently of the article’s utilitarian function.  Inhale argued that its hookah water container had a unique shape and that the shape was separately identifiable from the usefulness of the water container.  Therefore, Inhale posited, its registered copyright included the shape of the water container, and Starbuzz’s use of that shape was grounds for copyright infringement.

In reviewing Inhale’s infringement claims, the Ninth Circuit held that the unique shape of Inhale’s hookah water container was not sufficient to separate the container from its utilitarian function—so the container was not protectable in copyright.  In a previous ruling related to the copyrightability of the shape of a vodka bottle, the Court had appeared to leave open the possibility that a distinctly shaped useful article, such as a vodka bottle or hookah water container, may be sufficient to transform a useful article into a copyrightable work.  The Court’s opinion in Inhale, Inc. v. Starbuzz Tobacco, Inc. has “buzzkilled” that idea.

Bottom line: even though you haven’t completed your great American novel/mime, you may have intellectual property rights in some strange places.  It is definitely worth checking with an intellectual property attorney to conduct an I.P. audit or assist you in evaluating ways to protect your copyrights . . . before your dreams go up in smoke.