Ninth Circuit Weighs In On Copyrightability Of Hookah

This new opinion from the Ninth Circuit Court of Appeals on a quirky topic offers some insights on copyright law generally. Inhale, a seller of hookah water containers, sued a competitor, Starbuzz Tobacco, for selling similar-looking containers. Inhale, Inc. v. Starbuzz Tobacco, Inc., 739 F.3d 446 (9th Cir. 2014). For those unfamiliar with hookahs, the Ninth Circuit provided a helpful footnote: "A 'hookah' is a device for smoking tobacco. It contains coals that cause the tobacco to smoke. A user's inhalation through a tube causes the smoke to travel through water, which cools and filters the smoke, before it reaches the user. The water is held in a container at the base of the hookah." Two points from this decision stand out.

First, the district court had granted summary judgment to the defendant on the basis that the hookah water container was not copyrightable under the "useful article" doctrine. As the product at issue was a water container, Inhale conceded it was a useful article. Protection for "the design of a useful article" is available "only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article." 17 U.S.C. §101. Inhale argued that its design was "conceptually separable" and attempted to distinguish prior authority by arguing that its container shape was "distinctive." Both the district court and the Ninth Circuit reviewing de novo rejected these arguments.

In particular, the Ninth Circuit considered the Copyright Office's opinion on the topic. Administrative deference, in which the court will not disturb an agency's interpretation "if the statute is silent or ambiguous" and "the agency's answer is based on a permissible construction of the statute" (See Chevron, U.S.A., Inc. v. Natural Res. Def. Council, Inc., 467 U.S. 837 (1984)), did not apply because the materials were an internal manual and opinion letter. Instead, the proper level of deference was "only to the extent that those interpretations have the 'power to persuade,'" quoting Christensen v. Harris Cnty., 529 U.S. 576 (2000). The Copyright Office's determination that "whether an item's shape...