Hookah Company Inhales Copyright Loss, Exhales Attorney Fees

Last week, the California Court of Appeals for the Ninth Circuit (the Court) affirmed the District Court’s summary judgment for defendant Starbuzz Tobacco, Inc. (Starbuzz), stating that Starbuzz did not violate the copyright protection granted to Inhale, Inc (Inhale) in 2011 for their hookah water container. The case, Inhale, Inc. v. Starbuzz Tobacco, Inc., specifically focused on Inhale’s hookah water container shape, a shape which Starbuzz identically copied and sold.

However, the question to be answered was not as much whether Starbuzz did violate Inhale’s copyright protection, but whether they could violate the copyright. In other words, the Court focused on the validity of the copyright because “’ownership of a valid copyright’ is an element of copyright infringement, [and] summary judgment was appropriate if the shape of Inhale’s hookah water container is not copyrightable.”

To determine whether the shape of the hookah container was copyrightable material, the District and Appeals Courts both examined 17. U.S.C. § 102(a)(5), which covered “granting copyright protection to…pictorial, graphic, and sculptural works”. Appellant Inhale and appellee Starbuzz both agreed that Inhale’s hookah container could be classified as a “useful article,” thus simplifying the issue of copyrightable material to a legal test set forth under the abovementioned United States Code section.

Applied to the issue at hand, the opinion stated:

As the “design of a useful article,” the shape of the container is copyrightable “only if, and 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.

The judges cited Melville and David Nimmer’s, Nimmer on Copyright, to explain that the standard of copyright validity for the shape of a useful article is satisfied if either of two criteria is met: physical separability or conceptual separability.

Inhale ceded the argument on physical separability, understanding that each part of their hookah water container design also had a utilitarian purpose associated with it. The second criterion, conceptual separability, has less obvious and definitive precedent, relying on both. Thus, the Court decided to examine the hookah water container shape’s conceptual separability de novo, meaning without deference to the District Court’s judgment.

Inhale argued that the distinctive shape of their container rendered it conceptually separable from its purpose as a holder of water. However, citing an opinion letter and manual written by the Copyright Office pertaining to modern sculpture, the Court found that, like modern sculpture which has a distinctive shape, the sculptural or artistic features and the utilitarian features of the hookah water container are interchangeable and therefore the same. Thus, Inhale failed to maintain the validity of their copyright and forfeited their claim of copyright infringement.

To add insult to injury, both the District and Appeals Courts ordered plaintiff and appellant, Inhale, to pay Starbuzz’s attorney fees totaling greater than $110,000 dollars for the initial case and an undetermined amount for appellate fees.

Remick Stahl
Law Clerk at