Although available in various designs and colors, the shape of a hookah’s water container is not copyrightable, according to a federal appeals court.
In a case between two suppliers of hookahs, or water pipes, the U.S. Court of Appeals for the Ninth Circuit disputed the claim of San Diego’s Inhale Inc. that competitor Starbuzz Tobacco of Anaheim, Calif., had infringed on its 2011 copyright. The panel held that the sculptural features of a hookah’s water container, a “useful article” under the U.S. Copyright Act, are not entitled to copyright protection. The Ninth Circuit also upheld $111,993 in attorney fees to Starbuzz.
“The decision is a great victory for Starbuzz Tobacco that was unfairly accused of copyright infringement,” said Natu Patel of The Patel Law Firm in Laguna Hills, Calif. “I am very happy that the Ninth Circuit not only affirmed the district court’s ruling, but also awarded additional attorneys’ fees for the frivolous appeal.”
Louis Teran, founding partner of SLC Law Group in Pasadena, who represents Inhale, did not return a call for comment.
Inhale, according to its suit, had previously supplied custom hookahs to Starbuzz, including the product at issue. Inhale’s copyright applied to a container bearing a skull-and-crossbones image on the outside, but it sued over the shape, not the design, of Starbuzz’s allegedly infringing containers.
The Ninth Circuit cited its own 2000 decision in Ets-Hokin v. Skyy Spirits, which concluded that the distinct shape of a Skyy Vodka bottle was inseparable from its use and therefore not copyrightable.
“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,” Justice Diarmuid O’Scannlain wrote. “The district court correctly concluded the shape of Inhale’s hookah water container is not copyrightable.”
Thursday’s ruling upheld a summary judgment grant by U.S. District Judge Otis Wright on June 18, 2012. On Jan. 19, 2012, U.S. District Judge Stephen Wilson granted summary judgment to Starbuzz in a separate case in which Inhale alleged copyright infringement over an “interlocking mechanism” in hookahs.
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