Ninth Circuit: The Shape of a Hookah Can’t Be Copyrighted

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O'SCANNLAIN, Circuit Judge:

    We must decide whether the shape of a hookah water container is entitled to copyright protection.

That is (minus the footnote explaining what a "hookah" is) the first paragraph of today's decision by the U.S. Court of Appeals for the Ninth Circuit in a case that will have important ramifications for … well, mostly people who sell hookahsSee Inhale, Inc. v. Starbuzz Tobacco, Inc., No. 12-56331 (9th Cir. Jan. 9, 2014) (also being considered for inclusion in the Comical Case Names list).

MOB-bk-481x600Inhale sells hookahs in a variety of more or less distinctive shapes, ranging from the "genie bottle" shape that I associated with them to skull shapes and even this AK-47 shape, which probably appeals to those whose game plan is to be in prison by age 22 at the latest. The opinion doesn't say which shape was involved here, probably because it didn't matter. (It does say that the relevant hookah had a skull-and-crossbones on it, but as you can see from the website that doesn't narrow it down sufficiently.)

Inhale sued Starbuzz—and let me be clear that I have no reason to believe that either company intends its hookahs to be used with anything but legal substances—for allegedly copying the shape of one of its hookahs. But the district court held that under the circumstances the shape could not be copyrighted. The Ninth Circuit affirmed.

The reason is that if something is a "useful article"—and everyone agreed that a hookah is "useful"—then its design can be copyrighted only if it incorporates artistic features that are independent from its "utilitarian aspects." 17 U.S.C. §§ 101, 102(a)(5). For example, a protected design feature of a bottle would have to be something other than the fact that it is shaped in a way that holds vodka. Now, it would seem to me that there are lots of ways a bottle could be distinctive that really have nothing to do with its function of holding a liquid. I bet some are occurring to you right now, too. And in a footnote, the court concedes that "under some interpretations" of section 101, "distinctiveness of shape would be relevant."

But it punts on that issue, saying that the statute is ambiguous enough that it will defer (a little) to the Copyright Office's views on it, and the Copyright Office has said, apparently, that whether an item's shape is distinctive is irrelevant. I think this only applies to containers, partly because the Copyright Office's decision was in a matter called In re Fanciful Ornamental Bottle Designs 1-9, which in addition to being a fun name obviously involved containers. That's the holding of the case, anyway. Although Starbuzz's hookah is identical in shape, there appears to be nothing Inhale can do about that—unless the Supreme Court is willing to take a hookah case. You never know.