Plaintiff Inhale, Inc. began selling their hookah pipe shown in Figure 1 below in 2008.

Figure 1

figure1

Their pipe had an image of a skull and crossbones, but was otherwise nearly identical in shape to all other hookah bases. Hookah pipes consist of a base and a stem which connects to the top of the base. The stems in particular can be very ornately decorated (see Figure 2).

figure2

Hookahs have existed for hundreds of years and during this time, their particular shape has been refined and perfected by its users and designers to optimize their function.

Inhale, Inc. applied for and received a copyright on the hookah base with skull and crossbones design in 2011. Shortly after receiving their copyright Inhale, Inc. sued the defendant Starbuzz for copyright infringement for making and selling a hookah pipe with a decorated stem and an identically shaped base but without the skull and crossbones design found on Inhale, Inc.’s hookah base.

The U.S. District Court held in Starbuzz’s favor. Both parties agreed that the hookah base qualified as a “useful article” as defined in 17 U.S.C. 101. In order to qualify for copyright protection, “useful articles” must incorporate “sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the container.” Here, the utilitarian nature of the hookah base—especially obvious when you look at pictures of other hookah pipes and see how similar they all appear—is readily apparent, and Inhale, Inc. was unable to convince the court that its “sculptural features” could be separated from its function.

Inhale, Inc. appealed this decision to the 9th Circuit Court of Appeals in 2013, which affirmed the District Court’s decision in January 2014, stating that “the shape of a container is not independent of the container’s utilitarian function—to hold the contents within its shape—because the shape accomplishes the function.” Inhale, Inc.’s copyright was thus invalidated, allowing Starbuzz to continue marketing its hookah pipes.

Judge Bea of the 9th Circuit concurred in part with the majority’s ruling but asserted that, because 17 U.S.C. 101 was “not ambiguous” about whether suggestiveness was an element of separability, it was “unnecessary to look to the Copyright Office for further guidance.”

The 9th Circuit also affirmed the District Court’s awarding of $111,993 under the Copyright Act’s fee-shifting provision, designed to deter frivolous assertions of infringement which both courts felt Inhale, Inc. had done in pursuing this case. The Court applied the 5 factors outlined in Jackson v. Axton (25 F.3d 884 (1994)) for determining whether a plaintiff had pursued a frivolous action or acted in bad faith— “[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”—and held that the District Court did not abuse its discretion in awarding this amount.

Michael S. Fuller is a patent attorney in Perry Hall, Maryland.  He is a Senior Client Success Consultant for Innography in Austin, TX.