Inhale, Inc. v. Starbuzz Tobacco, Inc.

Ninth Circuit issues amended opinion affirming denial of plaintiff broadcasting companies’ motion for preliminary injunction against Dish Network over Dish Network’s network television recording product, finding that plaintiffs were not likely to succeed on their direct and indirect copyright infringement claims and breach of contract claims against Dish.

In this case, the Ninth Circuit considered whether the shape of plaintiff’s hookah water container was entitled to copyright protection. The court held that it was not, as plaintiff only sought to copyright the shape of the container, a “useful article” with features that could not be separated from its function.

A hookah is a water pipe typically used to smoke flavored tobacco. The water container forms the base of the hookah. The plaintiff, a seller of hookahs, claimed copyright protection in the particular water container shape that it registered with the Copyright Office. Plaintiff sued defendants, rival hookah sellers, claiming that they were selling a hookah with a water container that infringed on plaintiff’s copyright. Plaintiff’s hookah included skull-and-crossbones images, whereas defendants’ did not.

The district court granted summary judgment in favor of the defendants, finding that the shape of the water container is not copyrightable, and awarded attorneys’ fees. The Ninth Circuit affirmed both the summary judgment and the award of fees.

At the outset, the court noted the parties’ agreement that the plaintiff’s hookah water container is a “useful article” and that the item’s shape would only be copyrightable under the Copyright Act “if [it] incorporates . . . sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the” container.

Plaintiff argued that the shape of its water container was conceptually separable because it was distinct. The court disagreed. Finding it persuasive, the appellate court adopted the determination by the Copyright Office that the distinctiveness of an item’s shape does not affect separability. Although plaintiff’s water container has a distinctive shape, the court concluded that because the shape of the hookah water container was not independent from the container’s utilitarian function—to hold water within the container—the district court properly found that the shape was not copyrightable.

The panel further affirmed the district court’s award of attorneys’ fees to the defendants based on the defendants’ total success on the merits and the frivolousness of plaintiff’s claim and also awarded the defendants its fees for the appeal.