Inhale v. Starbuzz - Cert Petition

8/11/2019 Inhale v. Starbuzz - Cert Petition

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No _________

___________________________________________

InThe

SupremeCourtoftheUnitedStates

_____________________ _____________________

INHALE, INC.

` Petitioner,

v.

STARBUZZ TOBACCO, INC., and WAEL SALIMELHALAWANI

Respondent(s),

_____________________ _____________________

On Petition For Writ Of Certiorari

To The United States Court Of Appeals

For The Ninth Circuit

_____________________ _____________________

PETITION FOR WRIT OF CERTIORARI

_____________________ _____________________

LOUIS F. TERANSLC Law Group1055 E. Colorado Blvd., Ste. #500Pasadena, CA 91106(818) 484-3217 [email protected]

__________________________________________


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CERTIORARI PRINTING

[email protected]

Fax (805) 995-3881, Phone (805) 801-1881


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QUESTION(s) PRESENTED:

1.

What test should be used to effectively ascertainwhether the artistic aspects of a useful article can beidentified as being conceptually separable from thearticles utilitarian function pursuant 17 U.S.C.101?

2.Is the distinctive shape of a container protectedunder the Copyright Act of 1976?


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PARTIES TO THE PROCEEDING

Petitioner Inhale, Inc. (hereinafterPetitioner) was plaintiff in the district courtproceedings and plaintiff-appellant in the court ofappeals proceedings. Respondents Starbuzz Tobacco,Inc. and Wael Salim Elhalawani (hereinafterRespondents) were defendants in the district courtproceedings and defendants-appellees in the court ofappeals proceedings.

Pursuant to Supreme Court Rule 29.6,Petitioner states that no publicly traded companyowns 10 percent or more of Inhale, Inc.


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TABLE OF CONTENTS

Page

QUESTIONS PRESENTED................................. i

PARTIES TO THE PROCEEDING..................... ii

TABLE OF CONTENTS.. iii

TABLE OF AUTHORITIES................................. vii

OPINIONS BELOW............................................. 1

STATEMENT OF JURISDICTION..................... 1

CONSTITUTIONA AND STATUTORYPROVISIONS INVOLVED.............................. 2

STATEMENT OF THE CASE............................. 3

I. Statutory and Judicial Background. 3

II. Factual Background. 7

III. Proceedings Below 8

REASONS FOR ALLOWANCE OF THEWRIT.................................................................. 14

I. REVIEW IS WARRANTED TORESOLVE THE AMBIGUITY OFCONCEPTUAL SEPARABILITYPURSUANT 17 U.S.C. 101 ......................... 14


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A. The Ambiguity of 17 U.S.C. 101 Ledthe Panel to Adopt an Opinion of the

Administrative Branch Rather ThanExamine the Enactment of Congress... 14

B. The Ambiguity of ConceptualSeparability Has Spawned MultipleTests That Conflict With One

Another 18

1. The Second Circuit reviewedconceptual separability in a trioof cases resulting in conflicting

tests ...... 19

a)Kieselstein-Cord v. Accessories byPerl, Inc. .. 19

b) Carol Barnhart, Inc. v. EconomyCover Corp. . 21

c) Brandir International, Inc. v.Cascade Pacific Lumber Co. 23

2. Ninth Circuits experience withconceptual separability is limitedand conflicts with that ofthe Second Circuit ............ 25

a) Fabrica, Inc. v. El Dorado Corp 25

b)

Ets-Hokin v. Skyy Spirits, Inc 26


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3. The Copyright Offices testdismisses the Second Circuit

tests adopts Esquire v. Ringer.... 26

C. The Ambiguity of ConceptualSeparability Can Be Resolved ByThe Patent / Copyright DichotomyIdentified By This Court In Mazer v.Stein... 29

II. THE PRESENT CASE IS IDEAL FORTHIS COURT TO REVIEW THETHORNY ISSUE OF CONCEPTUALSEPRABILITY . 32

III. REVIEW IS ESSENTIAL SINCE THENINTH CIRCUITS ORDERPRACTICALLY ABOLISHESCONCEPTUAL SEPARABILITY.. 34

CONCLUSION...................................................... 37

APPENDIX

APPENDIX AJuly 9, 2014 Opinion of the United States

Court of Appeals for the NinthCircuit .................................................... App. 1

APPENDIX BJune 18, 2012 Order of the United States

District Court for the Central DistrictOf California ............................... App. 13


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APPENDIX C

June 3, 2014 Order Amending Opinion of theUnited States Court of Appeals for theNinth Circuit and Denying Petition forRehearing App. 24

APPENDIX DOpinion Letter of the Copyright Office

Review Board re: Fanciful OrnamentalBottle Designs 1-9.App. 27

APPENDIX ESchematic of a typical hookah .App. 56

APPENDIX FPhotographs of different hookah water

containers App. 57

APPENDIX GPhotographs of hookah water containers

at issue in the present case .App. 58

APPENDIX HPetitioners Copyright Registration ..App. 59


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TABLE OF AUTHORITIES

CASES: Page

Brandir International, Inc. v. CascadePacific Lumber Co.

834 F.2d 1142 (2d Cir. 1987) 23, 24, 27, 33

Carol Barnhart, Inc. v. Economy CoverCorp. 773 F.2d 411 (2d Cir. 1985) 21, 23, 24

Esquire v. Ringer591 F.2d 796 (D.C. Cir. 1978)..18, 20, 26, 27, 33-35

Ets-Hokin v. Skyy Spirits, Inc.225 F.3d 1068 (9th Cir. 2000)10, 11, 26

Fabrica Inc. v. El Dorado Corp.697 F.2d 890 (9th Cir. 1983). 25

Kieselstein-Cord v. Accessoties by Pearl, Inc.632 F.2d 989 (2d Cir. 1980) 19, 21, 24, 36

Masquerade Novelty, Inc. v. Unique Indus.912 F.2d 663 (3d Cir. 1990) 7, 30, 33

Mazer v. Stein347 U.S. 201 (1954).. 3-5, 16, 26, 29-31

Norris Industries, Inc. v. InternationalTelephone and Telegraph Corp.

696 F.2d 918 (11th Cir. 1983) 18

Peter Pan Fabrics, Inc. v. Martin WeinerCorp. 274 F.2d 487 (2d Cir. 1960). 15

Royalty Designs, Inc. v. Thrifticheck


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Service Corp. 204 F.Supp. 702 (S.D.N.Y. 1962)...16

Scarves by Vera, Inc. v. United Merchants& manufacturers, Inc. 173 F. Supp. 625(S.D.N.Y. 1959). 15

CONSTITUTIONAL AND FEDERAL STATUTES:

U.S. Const., Art., 1.8, cl.8............................ 2, 3, 36

17 U.S.C. section 101............. 2, 5, 6, 8, 9, 12, 14, 15,17-20, 24, 28, 30-34, 37

17 U.S.C. section 102... 2

17 U.S.C. section 505.. 14

SECONDARY SOURCES:

Compendium II of Copyright Office Practices,Ch. 500, 505.03 (1984).. 27

Denicola, Robert C.,Applied Art and Industrial

Design: A Suggested Approach to Copyright inUseful Articles67 Minn.L.Rev. 707, 709-717

(1983).. 23

Lynch, Michael J., Copyright in Utilitarian Objects:

Beneath Metaphysics 16 U. Dayton L. Rev. 647, 647

(1991). 7

H.R. Rep. No. 94-1476 (1976). 5, 6, 15, 24,

35


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CONSTITUTIONAL AND STATUTORYPROVISIONS INVOVLED

U.S. Constitution, Article I, Section 8, Clause 8

The Congress shall have the power topromotethe progress of science and useful arts, by securingfor limited times to authors and inventors theexclusive right to their respective writings anddiscoveries.

Title 17 United States Code, Section 101.

The Copyright Act of 1976 at 17 U.S.C. 101

provides in relevant part that the design of a usefularticle, as defined in this section, shall be considereda pictorial, graphic, or sculptural work only if, andonly to the extent that, such design incorporatespictorial, graphic, or sculptural features that can beidentified separately from, and are capable ofexisting independently of, the utilitarian aspects ofthe article.

Title 17 United States Code, Section 102.

The Copyright Act of 1976 at 17 U.S.C. 102

Provides in relevant part that Copyright protectionsubsists, in accordance with this title, in originalworks of authorship fixed in any tangible medium ofexpression, now known or later developed, fromwhich they can be perceived, reproduced, orotherwise communicated, either directly or with theaid of a machine or device. Works of authorshipinclude the following categories: (5) pictorial,graphic, and sculptural works

_____________________ _____________________


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STATEMENT OF THE CASE

I.

Statutory and Judicial Background

Article I, section 8 of the United StatesConstitution grants Congress the power to promotethe progress of science and useful arts, by securingfor limited times to authors and inventors theexclusive right to their respective writings anddiscoveries.

Pursuant Article I, section 8, Congress enactedthe Patent Act of 1790 which provided protection toany new and useful art, machine, manufacture orcomposition of matter. Similarly, Congress alsoenacted the Copyright Act of 1790 which providedprotection of books, maps, and charts. In 1870, theCopyright Act was extended to protect three-dimensional statutes, statuary, and models ordesigns intended to be perfected and executed as awork of the fine arts. In 1909, the Copyright Actwas amended such that the fine arts category wasbroadened to cover all [w]orks of art; models ordesigns of works of art.

In 1954, in the case of Mazer v. Stein, 347 U.S.

201 (1954), this Court addressed the protection forthe design of useful articles pursuant the CopyrightAct. The issue involved copyright protection forstatuettes that were intended for use and used asbases for table lamps, with electric wiring, sockets,and lamp shades attached. See Id. at 202.Petitioner argued that since the statuettes wereincorporated into a table lamp, it was not a work ofthe fine arts but, instead, a useful article. Id. at216. Thus, the petitioner argued that protection, ifany, can only be attained pursuant the Patent Act,not the Copyright Act. Id.


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Then in 1976, Congress amended the CopyrightAct in accordance with Mazer v. Stein. Section 101 ofthe Copyright Act of 1976, 17 U.S.C. 101, states, inrelevant part, as follows:

[T]he design of a useful article, as defined inthis section, shall be considered a pictorial,graphic, or sculptural work only if, and onlyto the extent that, such design incorporatespictorial, graphic, or sculptural features thatcan be identified separately from, and arecapable of existing independently of, theutilitarian aspects of the article.

In amending the Copyright Act, the HouseJudiciary Committee, in its report (hereinafterHouse Report), explained Congresss purpose asfollows:

In adopting this amendatory language, theCommittee is seeking to draw as clear a lineas possible between copyrightable works ofapplied art and uncopyrightable works ofindustrial design. A two-dimensionalpainting, drawing, or graphic work is stillcapable of being identified as such when it is

printed on or applied to utilitarian articlessuch as textile fabrics, wallpaper, containers,and the like. The same is true when astatute or carving is used to embellish anindustrial product or, as in the Mazer case, isincorporated into a product without losing itsability to exist independently as a work ofart. On the other hand, although the shapeof an industrial product may be aestheticallysatisfying and valuable, the Committeesintention is not to offer it copyrightprotection under the bill. Unless the shape


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of an automobile, airplane, ladies dress, foodprocessor, television set, or any otherindustrial product contains some elementthat, physically or conceptually, can beidentified as separable from the utilitarianaspects of the article, the design would notbe copyrighted under the bill. The test ofseparability and independence from theutilitarian aspect of the article does notdepend upon the nature of the design thatis, even if the appearance of an article isdetermined by aesthetic (as opposedfunctional) considerations, only elements, ifany, which can be identified separately from

the useful article as such are copyrightable.And, even if the three-dimensional designcontains some such element (for example, acarving on the back of a chair or a floralrelief design on silver flatware), copyrightprotection would extend only to thatelement, and would not cover the over-allconfiguration of the utilitarian article assuch. See H.R. Rep. No. 94-1476 at 55(1976).

Most notable in the House Report is the reference

to copyright protection for an element of a usefularticle that can be identified as separable from theutilitarian aspect of the article not physically butonly conceptually. This is the origin of theconceptual separability test in Copyright Law.

This Court has never addressed the issue ofconceptual separability. Instead, 17 U.S.C. 101has proven to be ambiguous and has causedsubstantial confusion among lower courts and legalscholars on the issue of conceptual separability.Since 1976, courts of appeal in various circuits have


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developed multiple interpretations and tests thatconflict with one another. See Masquerade Novelty,Inc. v. Unique Indus., 912 F.2d 663, 670 (3d Cir.1990) (Courts have twisted themselves into knotstrying to create a test to effectively ascertain whetherthe artistic aspects of a useful article can beidentified separately from and exist independently ofthe articles utilitarian function.). See also MichaelJ. Lynch, Copyright in Utilitarian Objects: BeneathMetaphysics, 16 U. Dayton L. Rev. 647, 647 (1991)(Among the opportunities for metaphysiciansprovided by the Copyright Act of 1976, the scheme forprotection of design features of useful articles standsout.).

II.Factual Background

Petitioner designs, manufactures, and sellsvarious types of smoking products, includinghookahs. A hookah is a device used to smoke tobacco.

A hookahs design directs tobacco smoke downthrough a pipe and into some water, which filters andcools the tobacco smoke for inhalation. A hookahtypically comprises three distinct sections a bowl, abody, and a water container. The bowl mounts on topof the body; the body mounts on top of the water

container. The schematic shown in Appendix E(App.57) was created by the district court to depict ahookahs design and function. (App.14).

A user places tobacco in the bowl and hot coals ontop of the tobacco, causing the tobacco to smoke. Asthe user inhales on the hose, smoke travels from thebowl down through the body and into the waterinside the water container. The water filters andcools the smoke. The filtered smoke then bubbles outof the water and is inhaled by the smoker throughthe hose. Hookah water containers are widely


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available in the market in different sizes and shapes,as shown in Appendix F. (App.58).

Petitioner registered its hookah water containerwith the United States Copyright Office. PetitionersCopyright Registration No. VA1767997 is for asculpture/3-D artwork titled Hookah WaterContainer. (App.60). Petitioner sued Respondentalleging infringement of its copyright registration.Petitioner alleged infringement based solely on theshape of the hookah water container. Petitionerdisclaimed copyright protection to any images orgraphics on the container. The parties agreed thatthe hookah water container is a useful article. The

hookah water containers at issue are shown inAppendix G. (App.59).

III.

Proceedings Below

On May 4, 2011, Petitioner sued Respondent forcopyright infringement alleging that Respondent soldhookah water containers that infringe Petitionerscopyrighted design. The sole allegation was that theshape of respondents hookah water container was anidentical copy of the shape of Petitioners hookahwater container. The parties agreed that the hookah

water container is a useful article that holds waterfor a hookah. Additionally, physical separability ofthe shape of the hookah water container was notargued. Thus, the sole issue in this case is related toinfringement pursuant the conceptual separabilitytest of 17 U.S.C. 101.

Respondent filed a motion for summaryjudgment asserting that Petitioner cannot prevail inthis action because the shape of the hookah watercontainer is not copyrightable. On the other hand,Petitioner argued that the shape of the hookah water


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container is copyrightable because it is conceptuallyseparable from the utilitarian aspects. Petitioneridentified several artistic curves and shapes thatwere formed by the outer surface of the hookah watercontainer. Thus, Petitioner argued that the purposeof the outer surface was to create a distinctive shapeand to convey artistic expression of aesthetics. ThenPetitioner identified the inner surface of the hookahwater container as the functional element thatcreates a void in which the water for the hookah isretained. Petitioner asserted that the outer artisticsurface can be seen conceptually as an outer skinthat was added to or superimposed upon the innerfunctional surface wherein said outer surface is

separate and independent from said inner surface.Accordingly, Petitioner argued that the shape of thehookah water container satisfies the requirements ofconceptual separability.

Petitioner showed that the shape of the outersurface was not influenced by the functional aspect ofthe hookah water container. Petitioner also pointedto other hookah water containers with differentshapes to argue that the shape is not critical to thefunction because all that is functionally required isfor the water container to hold some water through

which the tobacco smoke from the hookah can passand be filtered. Petitioner also showed that theshape in which the water is held is irrelevant and ofno consequence to the functional aspects of thehookah water container. In essence, Petitionerargued that the shape of the hookah water containeris conceptually separable from its utilitarian aspects,thus, copyrightable pursuant 17 U.S.C. 101.

The district court disagreed and grantedsummary judgment against Petitioner. (App.13 -

App.23). In reaching its decision, the district court


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examined an administrative opinion issued by theCopyright Office that had denied copyright protectionto nine fancifully shaped glass bottles. (hereinafterCopyright Office Opinion). (App.27 App.56). TheCopyright Office Opinion found that although thebottles may be novel and aesthetically pleasing, theyare nevertheless created in a way that allows them tofunction asstorage containers Thus, the form ofthe containers does not reflect purely aestheticvisions. (App.48).

After reviewing the Copyright Office Opinion, thedistrict court reviewed the case of Ets-Hokin v. SkyySpirits, Inc., 225 F.3d 1068, 1080 (9th Cir. 2000) in

which the Court of Appeals for the Ninth Circuitfound that a vodka bottle has no special design orother features that could exist independently as awork of art.

Then, the district court held as follows:

[Petitioner] contends the water containersshape can be identified separately from itsutilitarian aspects and thus is copyrightable.In support, [Petitioner] points to otherhookah water containers with different

shapes and argues that the water containersshape is not critical to its function and so,the water containers shape is separate fromits function. The Court rejects thisreasoning [Petitioner] attempts todistinguish its water container from ordinarybottles, arguing that unlike bottles that aredesigned specifically to store or transportliquid, hookah water containers are onlypartially filled and are not used in the sameway. The Court is not persuaded by[Petitioners] argument. These noted


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differences are irrelevant; the fact that[Petitioner] intended its water container toserve as a liquid-holding receptacle for ahookah and not as a museum piece iswhat matters The shape of the watercontainer in this case cannot be physically orconceptually separable from the containerbecause the containers shape and thecontainer are one and the same. It mattersnot that [Petitioners] water container wouldstill be functional if it had a different shape.Nor does it matter that hookah watercontainers exist in all manners of size andshape. The artistic aspects if any of

[Petitioners] water container shape, are notseparable from its utilitarian elements.(App.22).

Petitioner appealed and a panel of the Court ofAppeals for the Ninth Circuit affirmed the districtcourts judgment with a published opinion. (App.1

App.12). Like the district court, the panel based itsopinion on Ets-Hokin v. Skyy Spirits, Inc. and on theCopyright Office Opinion. First the panel stated thatin Ets-Hokin v. Skyy Spirits, Inc., it had found thatthe vodka bottle did not have a distinctive shape.

Thus, there were no distinctive elements that couldbe separable from the bottles function. The paneldistinguished the present case in that Petitionershookah water container, like a piece of modernsculpture, has a distinctive shape. (App.9). Thus,the panel found that it had to determine whetherdistinctiveness of shape affects separability.(App.7).

In reaching its holding, the panel acknowledgedthat courts have twisted themselves into knotstrying to create a test to effectively ascertain whether


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the artistic aspects of a useful article can beidentified separately from and exist independently ofthe articles utilitarian function. (App.7, fn.3). Thepanel also recognized that under an interpretation of17 U.S.C. 101 by the Second Circuit, the designprocess must be examined to determine whether thedesign elements can be identified as reflecting thedesigners artistic judgment exercised independentlyof functional influences. (App.7, fn.3).

In light of the different interpretations and testsdeveloped by other circuits, the panel found that 17U.S.C. 101 is sufficiently ambiguous to justifydeference to administrative interpretations. (App.7,

fn.3). Thus, the panel deferred to and adopted theCopyright Office Opinion. The panel held as follows:

Although [Petitioners] water container, likea piece of modern sculpture, has a distinctiveshape, the shape of the alleged artisticfeatures and of the useful article are one andthe same Because the Copyright Officesreasoning is persuasive, we adopt it for thiscase. The shape of a container is notindependent of the containers utilitarianfunction to hold the contents within its

shape insofar as the shape accomplishesthat function. (App.9).

In a petition for rehearing, Petitioner re-assertedits contention that the artistic outer surface isdistinct and conceptually separate from thefunctional inner surface of the hookah watercontainer. Petitioner stated as follows:

In fact, however, [petitioners] watercontainer does not have one shape but twodifferent shapes: (1) an internal shape


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created by the inner surface; and (2) anexternal shape created by the outer surface.Upon close examination, the two shapes aredistinct from one another. The internalshape creates the void inside the container,thus, this internal shape has the utilitarianfunction of holding the water. The externalshape does not hold any water but merelycontains features intended by the author tobe purely aesthetic in nature...

At the very least, the drooping ring thatis located in the top half of the container bestshows how the internal shape and the

external shape of the container differ

The petition for rehearing was denied and thepanel amended its published opinion to include thefollowing:

Here, though, [Petitioner] does not argue inits opening brief that the exterior shape ofthe drooping ring is conceptually separablebecause the interior shape of the hookahdoes not protrude into the ring. Instead, itstheory is that the hookahs outer skin, from

top to bottom, can be peeled away andanalyzed separately. Therefore, itsargument in the petition for rehearing, thatthe exterior shape of the drooping ring isuniquely separable, is waived. (App.10).

With this, the panel seems to have missed thepoint of Petitioners outer/inner shape contention.Petitioner pointed to the drooping ring as an exampleto show how the shape of the outer surface differsfrom the shape of the inner surface. Thus, petitionercontends that the artistic outer surface is


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conceptually separable from the functional innersurface.

Then the panel affirmed the district courtsaward of attorneys fees in favor of Respondentpursuant 17 U.S.C. 505. (App.10 App.11). Indoing so, the panel affirmed the district courtsreliance on Respondents total success on the meritsand the need for deterrence of similarly frivolousclaims against innocent defendants. (App.10). Thepanel further granted attorneys fees for the appealin favor of Respondent, and even further, the panelgranted attorneys fees for opposing the petition forrehearing in favor of Respondent. (App.11).

_____________________ _____________________

REASONS FOR ALLOWANCE OF THE WRIT

I. REVIEW IS WARRANTED TO RESOLVE

THE AMBIGUITY OF CONCEPTUAL

SEPARABILITY PURSUANT 17 U.S.C. 101

A. The Ambiguity of 17 U.S.C. 101 Led

the Panel to Adopt an Opinion of the

Administrative Branch Rather Than

Examine the Enactment of Congress

By the time the Copyright Act of 1976 waspassed, it had already been established thatdecorations or ornaments, either two- or three-


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dimensional, that were applied to the surface of auseful article were copyrightable. See Peter PanFabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487(2d Cir. 1960). See also Scarves by Vera, Inc. v.United Merchants & manufacturers, Inc., 173 F.Supp. 625 (S.D.N.Y. 1959). In essence, the physicalseparability test had been established before 1976through which artistic elements that could bephysically removed from the useful article and stillexist as a work of art were copyrightable.

However, the Copyright Act of 1976 expandedthe protection of useful articles by establishing theconceptual separability test. Congress explained

that, pursuant 17 U.S.C. 101, [u]nless the shape ofanindustrial product contains some element that,physically or conceptually, can be identified asseparable from the utilitarian aspects of the article,the design would not be copyrightable. See H.R.Rep. No. 94-1476 at 55 (1976). But Congress did notprovide guidance as to how to determine whether adesign element can be conceptually separable.Instead, 17 U.S.C. 101 has proven to be ambiguousas to the conceptual separability test. Saidambiguity has caused substantial confusion amongstcourts and has spawned numerous tests that are

inconsistent with one another.

In fact, the ambiguity of 17 U.S.C. 101 causedthe panel of the Ninth Circuit in the present case todefer to and adopt the Copyright Office Opinion.(App.9). Thus, the panel threw in the proverbialtowel to avoid analyzing whether the outer shape ofPetitioners hookah water container is conceptuallyseparable from its inner shape. Instead, the paneladopted the general determination from theCopyright Office Opinion that the shape of anycontainer is not separable from the container itself,


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thus, not copyrightable. (App.9). In other words, dueto the ambiguity of 17 U.S.C. 101, the panel did notlook to the enactment of Congress. Instead, itadopted the opinion of the administrative branch. AsJudge Bea explained in his concurring opinion:[t]his misplaces the power of enactment of laws fromthe legislative to the administrative branch and iscontrary to [the] concept of the separation of powers.(App.12).

Even the district courts confusion is evident byits holding that Petitioners contention ofconceptually separability is irrelevant because thefact that [Petitioner] intended its water container to

serve as a liquid-holding receptacle for a hookah and not as a museum piece is what matters.(App.22). This was held by the district court despitethis Courts holding that there is nothing in thecopyright statute to support the argument that theintended use or use in industry of an article eligiblefor copyright bars or invalidates its registration.See Mazer v. Stein, 347 US 201, 218 (1954).

On the other hand, in the case of RoyaltyDesigns, Inc. v. Thrifticheck Service Corp., 204F.Supp. 702 (S.D.N.Y. 1962), a district court held

that plastic molded toy coin banks in the shape ofdogs were copyrightable. The district court held asfollows:

There is no doubt that copyright protectionextends to Royaltys design as productions oforiginality and novelty. Royalty does notclaim rights to all toy banks in the form ofBoxer and Cocker Spaniel dogs. Itscopyrights are for the particular novel andoriginal renditions created and designed byit, which are legitimate subjects of copyright


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registrations. Royal by its treatment of thesubjects has contributed somethingrecognizably its own which is by no meanstrivial. See Id. at 704.

Although, this was a district court decision, itunderscores the inconsistent rulings in this area oflaw. In other words, a district court in the SecondCircuit found that the shape of a container, a plasticmolded toy coin bank, is copyrightable. But, theNinth Circuits published opinion in the present casedenies copyright protection to the shape of any andall containers as a matter of law.

Furthermore, despite its assertion that 17 U.S.C.101 is ambiguous (App.7, fn.3), the panel states thatits opinion should not be understood to affect thecopyrightability of pictorial, graphic, and sculpturalworks that may be affixed to or made part of acontainer. (App.26). In other words, after rulingthat copyright protection does not apply to the shapeof a container, the panel affirmed the physicalseparability test to protect elements that are affixedto a container.

Therefore, under the panels holding, Petitioners

hookah water container would be copyrightable if itwas created from two parts. The first part would bea piece that defines the inner surface which formsthe void in which the water is retained. The secondpart would be a sleeve that defines the outer surfacewhich forms the artistic elements. Thus, the secondpart, the sleeve, would be affixed to or made part ofthe first part, the container. The panel would findthis configuration copyrightable because it is a two-part design where the sleeve can be physicallyseparated from the first part. But for all practicalpurposes, this configuration would function and look


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the same as Petitioners single-piece hookah watercontainer. Nevertheless, a two-piece design would becopyrightable whereas a single-piece design is not.This is a difficult concept to accept since the onlypractical difference would be that the two-piecedesign is manufactured differently than the single-piece design. In other words, the panels holding inthe present case, determines the copyrightability ofuseful articles by the way it is manufactured. Suchis not consistent with 17 U.S.C. 101.

Accordingly, 17 U.S.C. 101 is sufficientlyambiguous that both the district court and the panelof the Ninth Circuit were unable to properly apply

Congresss enactment to the facts of this case.

B. The Ambiguity of Conceptual

Separability Has Spawned Multiple

Tests That Conflict With One Another

The courts in the present case were not the onlycourts confused by the ambiguity of 17 U.S.C. 101.The Court of Appeals for the District of ColumbiaCircuit in Esquire v. Ringer, 591 F.2d 796 (D.C. Cir.1978), dismissed the conceptual separability test as

an isolated reference in the House Report and heldthat copyright protection is not available for theoverall shape or configuration of a utilitarian article,no matter how aesthetically pleasing that shape maybe. See Esquire v. Ringer, supra, 591 F.2d at 800.Thus, in Esquire v. Ringer, copyright protection wasdenied to the overall shape of lighting fixtures.

The Court of Appeals for the Eleventh Circuit inNorris Industries, Inc. v. International Telephone andTelegraph Corp., 696 F.2d 918 (11th Cir. 1983)


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examined the copyrightability of wire-spokedautomobile wheel covers. Unlike the D.C. Circuit,the Eleventh Circuit purported to accept theconceptual separability test but limited protection toonly those conceptually separable elements thatconstitute ornamental or superfluous designs astandard hard to distinguish from physicalseparability. See Id. at 923-924.

1. The Second Circuit reviewed

conceptual separability in a trio

of cases resulting in conflicting tests

The most thoughtful analysis of conceptualseparability are found in a trio of Second Circuitopinions each with a lengthy dissent. Despite thecare devoted by the Second Circuit to this issue, itsholdings are inconsistent, primarily due to theambiguity of 17 U.S.C. 101.

a)Kieselstein-Cord v. Accessories by

Perl, Inc.

In Kieselstein-Cord v. Accessoties by Pearl, Inc.,632 F.2d 989 (2d Cir. 1980), the Second Circuit heldthat decorative belt buckles were copyrightable. In

criticizing the Esquire v. Ringer determination thatconceptual separability was an isolated reference inthe House Report, the Second Circuit found that thelegislative intent as expressed in the HouseReport specifically refers to elements thatphysically or conceptually, can be identified asseparable from the utilitarian aspects of a usefularticle. See Id. at 993.

The Second Circuit recognized that the beltbuckles function is to hold up trousers. See Id. But,


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in light of its functional elements, the Second Circuitfound the belt buckles copyrightable pursuant theconceptual separability test because the primaryornamental aspect of thebuckles is conceptuallyseparable from their subsidiaryutilitarian function.See Id. at 993.

In dissent, Judge Weinstein cited Esquire v.Ringer with approval and interpreted 17 U.S.C. 101as extending protection only to ornamental orsuperfluous designs contained within useful articles,a concept difficult to distinguish from physicalseparability. See Id. at 996. Judge Weinstein alsorecognized that with this matter, important policies

are at stake:

Should we encourage the artist and increasethe compensation to the creative? Or shouldwe allow cheap reproductions which willpermit our less affluent to afford beautifulartifacts?. See Id. at 999.

In his dissent, Judge Weinstein concluded thatthe belt buckles were not copyrightable. Heexplained his result as follows:

[T]his result enables the commercial piratesof the marketplace to appropriate for theirown profit, without any cost to themselves,the works of talented designers who enrichour lives with their intuition and skill. Thecrass are rewarded, the artist who createsbeauty is not. All of us are offended by theflagrant copying of anothers work. This isregrettable, but it is not for this court totwist the law in order to achieve a resultCongress has denied. See Id. at 994.


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b) Carol Barnhart, Inc. v. Economy

Cover Corp.

In Carol Barnhart, Inc. v. Economy Cover Corp.,773 F.2d 411 (2d Cir. 1985), the Second Circuitrevisited conceptual separability. The works at issuewere life-sized mannequins of human torsos designedfor use in displaying clothing in stores. The paneldid not agree that copyrightability was dictated bythe primary/subsidiary language in Kieselstein-Cord v. Accessories by Pearl. Instead, itdistinguished the two cases and enunciated a newstandard for conceptual separability as follows:

What distinguishes those buckles from theBarnhart forms is that the ornamentedsurfaces of the buckles were not in anyrespect required by their utilitarianfunctions; the artistic and aesthetic featurescould thus be conceived of as having beenadded to, or superimposed upon, anotherwise utilitarian article. The uniqueartistic design was wholly unnecessary toperformance of the utilitarian function. Inthe case of the Barnhart forms, on the otherhand, the features claimed to be aesthetic or

artistic, e.g., the life-sized configuration ofthe breasts and the width of the shoulders,are inextricably intertwined with theutilitarian feature, the display of clothes.See Id. at 419.

Thus, the Second Circuit in Carol Barnhart, Inc.v. Economy Cover Corp., enunciated a new standardfor conceptual separability: the artistic elementsmust be wholly unnecessary to the useful articlesutilitarian function.


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In dissent, Judge Newman outlined his ownapproach as follows:

For a design feature to be conceptuallyseparable from the utilitarian aspects of theuseful article that embodies the design, thearticle must stimulate in the mind of thebeholdera concept that is separable from theconcept evoked by its utilitarian function.See Id. at 422.

Under Judge Newmans test, the beholder isthe ordinary reasonable observer and the requisiteseparateness will exist whenever the design creates

in the mind of the ordinary observer two differentconcepts that are not inevitably entertainedsimultaneously. See Id. In his dissent, JudgeNewman further explained as follows:

I believe we would be more faithful to theCongressional scheme if we insisted that aconcept, such as that of a work of art, isseparate from the concept of an articlesutilitarian function only when the non-utilitarian concept can be entertained in themind of the ordinary observer without at the

same time contemplating the utilitarianfunction. This temporal sense ofseparateness permits the designs of someuseful articles to enjoy copyright protection,as provided by the 1976 Act, but avoidsaccording protection to every design that canbe appreciated as a work of art, a resultCongress rejected. See Id. at 423.


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c)Brandir International, Inc. v.

Cascade Pacific Lumber Co.

In Brandir International, Inc. v. Cascade PacificLumber Co., 834 F.2d 1142 (1987). The SecondCircuit took another shot at conceptual separabilityin a case involving a bicycle rack that had originallybeen created as a work of art, a wire sculpture, butwas later modified to make it work as a bicycle rack.The Second Circuit found that the bicycle rack wasnot copyrightable under the conceptual separabilitytest. In reaching its decision, the Second Circuitdescribed Judge Newmans dissent in Carol Barnhartas illuminating. See Id. at 1144. Nevertheless, the

Second Circuit ruled out Judge Newmans test withreluctance and created a new test for conceptualseparability based mostly on an article by ProfessorRobert C. Denicola, entitled Applied Art andIndustrial Design: A Suggested Approach toCopyright in Useful Articles, 67 Minn.L.Rev. 707,709-717 (1983). The Second Circuits newly createdtest for conceptual separability is as follows:

[I]f design elements reflect a merger ofaesthetic and functional considerations, theartistic aspects of a work cannot be said to be

conceptually separable from the utilitarianelements. Conversely, where designelements can be identified as reflecting thedesigners artistic judgment exercisedindependently of functional influences,conceptual separability exists. See Id. at1145.

Thus, the Second Circuit looked to the designprocess of the useful article to determine whether theuseful article has some design elements that can be


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identified as reflecting the designers artisticjudgment.

In dissent, Judge Winter took issue with thefocus on the design process. He saw no reason whythe bicycle racks copyright status should varydepending on whether the designer serendipitouslychose the final designduring his initial sculpturalmusings or whether the original design had to beslightly modified to accommodate bicycles, notingthat the statutory language turns on how the artisticelements of the useful article are perceived, not howthey were developed. See Id. at 1152. Instead, JudgeWinter preferred Judge Newmans mind of the

beholder test in his Carol Barnhart dissent.

Accordingly, after thoughtful analysis ofconceptual separability in three different cases, theSecond Circuit has been unable to create one testthat captures the enactment of Congress in 17 U.S.C.101. Instead, the Second Circuit developed fourdifferent tests: (1) the primary ornamental versussubsidiary utilitarian test of Kieselstein-Cord v.

Accessoties by Pearl, Inc.; (2) the artistic elementsmust be wholly unnecessary to the useful articlesutilitarian function test of Carol Barnhart, Inc. v.

Economy Cover Corp.; (3) the designers artisticjudgment test of Brandir International, Inc. v.Cascade Pacific Lumber Co.; and (4) JudgeNewmans mind of the beholder test in his Carol

Barnhart dissent.

The Second Circuit tests are in addition to theD.C. Circuits dismissal of conceptual separabilityas an isolated reference in the House Report. Letsnot forget the Eleventh Circuits ornamental andsuperfluous design test that is hard to distinguishfrom the physical separability test.


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2. Ninth Circuits experience with

conceptual separability is limited

and conflicts with that of theSecond Circuit

a) Fabrica, Inc. v. El Dorado Corp.

In Fabrica Inc. v. El Dorado Corp., 697 F.2d 890(1983), the Ninth Circuit found that advertisingdisplay folders containing carpet samples were notcopyrightable because:

Fabricas folders do not have artisticfeatures that can be separated from theirutilitarian function. There was nosubstantial evidence that the folders existedfor any reason independent of theirutilitarian function as advertising andmarketing tools. See Id. at 894.

Thus, rather than evaluating the separability ofthe individual elements of the useful article, theNinth Circuit relied on the actual use of the article.The Ninth Circuit did not adopt any of the Second

Circuit tests. Instead, the Ninth Circuit deniedcopyrightability because the folders did not exist forany reason other than for serving as advertising andmarketing tools, thus, as useful articles.

The Ninth Circuits reliance on the actual use ofthe article rather than the separability of the artisticelements contained therein is reminiscent of thedistrict courts holding in the present case that thefact that [petitioner] intended its water container toserve as a liquid-holding receptacle for a hookah and not as a museum piece is what matters.


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(App.22). Such approach conflicts with the SecondCircuit decisions and with this Courts decision inMazer v. Stein that nothing in the copyright statute[supports] the argument that the intended use or usein industry of an article eligible for copyright bars orinvalidates its registration. See Mazer v. Stein,supra, 347 U.S. at 218.

b) Ets-Hokin v. Skyy Spirits, Inc.

In Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068(2000), the Ninth Circuit found that the shape of avodka bottle was not copyrightable for the followingreason:

The Skyy vodka bottle, although attractive,has no special design or other feature thatcould exist independently as a work of art. Itis essentially a functional bottle without adistinctive shape. See Id. at 1080.

Thus, the Ninth Circuit determined that thevodka bottle did not have any artistic elements forwhich to conduct a separability analysis. The courtfound that the bottle did not have a distinctiveshape. Since there were no distinctive elements,there were no elements that could be separable from

the bottles function.

3. The Copyright Offices test dismisses

the Second Circuit tests and adopts

Esquire v. Ringer

The Copyright Office Opinion, which wasadopted by the Ninth Circuit in the present case,expressly states as follows:


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C. The Ambiguity of Conceptual

Separability Can Be Resolved By The

Patent/Copyright DichotomyIdentified By This Court inMazer v.

Stein

This Court addressed the copyrightability ofuseful articles in Mazer v. Stein, 347 U.S. 201 (1954)where this Court explained that a patent givesexclusive rights to an idea whereas a copyright givesexclusive rights to the expression of the idea. See Id.at 217.

A suitably imaginative person can bring to minda variety of shapes for a lamp base that wouldequally fulfill its utilitarian requirements. Theshape can be tall, short, narrow, wide, cubic,spherical, spiral, and anything in between. Applyingthis Courts idea/ expression of the idea concept, theutilitarian aspect of the lamp base is the idea andits distinctive shape is the expression of the idea.Whether designing a bridge, a bicycle, or a beltbuckle, there always seems to be some choice as tohow the item can be shaped or designed withoutaffecting its utilitarian requirements. Thus, Patent

Law inhibits others from practicing the idea whereasCopyright Law is narrower in scope and inhibitsothers from only copying the expression of the idea.

After all, this Court explained as follows:

The copyright protects originality ratherthan novelty or invention conferring onlythe sole right of multiplying copies. Absentcopying there can be no infringement ofcopyright. Thus, respondents may notexclude others from using [lamp bases]; they


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Now, consider a case in which the shape of alamp base was linked to some functional element ofthe lamp whereby a different shape would result in alamp without the same functional element. Forexample, a shape that enhances the distribution oflight from the lamp. In such a case, allowingcopyright to protect the shape of the lamp base wouldnot only inhibit others from copying the shape, but itwould also inhibit others from making lamps withthe same functional element. Thus, the shape wouldbe so intertwined with the utilitarian aspect of thelamp that a copyright would result in a de factopatent.

Thus, Petitioner in the present case contendsthat with 17 U.S.C. 101, Congress wished to avoidexpanding the copyright protection of useful articlesso much that it overlaps or encroaches on the rightsprovided by Patent Law. In other words, Congresswished to avoid creating a new form of intellectualproperty, a hybrid between patent and copyright.

As this Court explained in Mazer v. Stein, theclear boundary between patents and copyrights isthat patents protect an idea whereas copyrightsprotect the expression of the idea. It is the cases in

which the protection of copyrights overlap with thatof patents that poses the most difficult challenges.With the conceptual separability test, Congress likelywished to prevent the creation of a third monopoly,that of a de facto patent.

Therefore, Petitioner contends that the focus inanalyzing conceptual separability should primarilybe on the effect that the shape or artistic element hason the utilitarian aspect of a useful article. If theartistic element is so intertwined with the utilitarianaspects that copyright protection thereof would


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inhibit others from duplicating the utilitarian aspect,then the artistic element is not conceptuallyseparable from the utilitarian aspects.

Accordingly, with conflicting interpretations andtests, review is warranted to resolve the ambiguity ofconceptual separability pursuant 17 U.S.C. 101.

II. THE PRESENT CASE IS IDEAL FOR

THIS COURT TO REVIEW THE THORNY

ISSUE OF CONCEPTUAL

SEPARABILITY

Undoubtedly, 17 U.S.C. 101 has been properlyapplied by most courts in cases involving physicalseparability as this concept has been well-established since before the enactment of theCopyright Act of 1976. However, 17 U.S.C. 101becomes substantially murky in cases where artisticelements of a useful article cannot be physicallyseparated. The present case falls within this narrowspectrum of cases that have twisted [courts] intoknots. Petitioners hookah water container is asingle piece design. Much like a flower vase, a jar, ormost goblets, the hookah water container is a singleglass piece that is molded into shape without anyparts that are added or mechanically attached.Thus, none of the elements can be physicallydetached or separated.

However, despite the single piece design, hookahwater containers come in a variety of shapes andsizes while still meeting the same functionalrequirement of forming an internal void in whichwater is retained. Furthermore, the shape of most


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hookah water containers are created by artists as amedium to express their artistry and aestheticexpressions.

It has already been established that petitionershookah water container is a useful article and that,like a piece of modern sculpture, [it] has adistinctive shape that is not physically separable.Therefore, this case is representative of thechallenges and ambiguity of 17 U.S.C. 101 as toconceptual separability. This is the ideal case inwhich this Court can effectively evaluate the varioustests of lower courts and legal scholars.

The confusion stemming from 17 U.S.C. 101 isrampant and ranging from conservative, as inEsquire v. Ringer in which conceptual separabilitywas nothing more than an isolated reference in theHouse Report; to liberal, as inBrandir International,Inc. v. Cascade Pacific Lumber Co. in which thedesigners artistic judgment determinescopyrightable design elements. As such, it is wellrecognized that [c]ourts have twisted themselvesinto knots trying to create a test to effectivelyascertain whether the artistic aspects of a usefularticle can be identified separately from and exist

independently of the articles utilitarian function.See Masquerade Novelty, Inc. v. Unique Indus., 912F.2d 663, 670 (3d Cir. 1990).

In fact, the Ninth Circuit in the present casefound that 17 U.S.C. 101 is sufficiently ambiguousto justify deference to the Copyright Officesinterpretation and ignore the interpretations of theSecond Circuit and other circuits. (App.7, fn.3).Thus, the ambiguity of 17 U.S.C. 101 caused theNinth Circuit not to evaluate that text of theenactment of Congress but, instead adopt the opinion


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of the administrative branch. As Judge Beaexplained: [t]his misplaces the power of enactmentof laws from the legislative to the administrativebranch and is contrary to [the] concept of theseparation of powers. (App.12).

Even more, the Copyright Offices interpretationadopts the holding in Esquire v. Ringerthat has beenwidely criticized by other circuits and legal scholars.The Copyright Office dismissed the thoughtfulanalysis of the Second Circuit not because it is notfaithful to the Congressional scheme, but because ofthe Offices own limitations in the examining process.The Copyright Office admittedly found that

application of the Second Circuit test lies beyond theadministrative capability of the Office. (App.47).Nevertheless, the Ninth Circuit in the present caseadopted the Copyright Offices interpretation andignored decades of thoughtful analysis by othercircuits, especially the Second Circuit.

Accordingly, the present case is ideal for thisCourt to review the thorny issue of conceptualseparability and resolve the ambiguity of 17 U.S.C.101.

III.

REVIEW IS ESSENTIAL SINCE THENINTH CIRCUITS ORDER

PRACTICALLY ABOLISHES

CONCEPTUAL SEPARABILITY

Before filing this lawsuit, Petitioner acquired aregistration from the Copyright Office for its hookahwater container. Petitioners Copyright Registrationis for a sculpture/3-D artwork titled Hookah WaterContainer. (App.57). With its registration on hand,


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Petitioner filed this lawsuit against Respondent forcopying the sculpture/3-D aspect of its hookah watercontainer. Despite the Copyright Offices decision togrant Petitioner a registration, the Ninth Circuitinvalidated Petitioners registration and held thatthe shape of any container is not copyrightable as amatter of law.

Petitioners argument for copyright protectionwas well-founded in fact and in many of theinterpretations and tests of conceptual separabilityby other circuits, including the Second Circuit.Nevertheless, the district court and the Ninth Circuit

Appeal Court not only disagreed with Petitioners

arguments of conceptual separability, but theypractically made sure that conceptual separability isnot raised again by other litigants. They practicallypunished Petitioner by ordering it to pay for all ofrespondents attorneys fees. The lower courts foundthat such award of attorneys fees was partly

justified by the need for deterrence of similarlyfrivolous claims against innocent Defendants.(App.10). With a published opinion, the panel sent aresounding message that claims of copyrightinfringement based solely on conceptualseparability are frivolous and must be deterred.

With this order, the Ninth Circuit has sent usback to pre-1976 when physical separability wasthe only basis for copyright infringement of usefularticles. In essence, the Ninth Circuits holding inthe present case equates to the Esquire v. Ringerdismissal of conceptual separability as an isolatedreference in the House Report.

Thus, this Courts review of this case is essentialto salvage the integrity of the conceptual separability


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test that was enacted by Congress pursuant theCopyright Act of 1976.

Furthermore, [i]mportant policies are obviouslyat stake. Should we encourage the artist andincrease the compensation to the creative? Or shouldwe allow cheap reproductions which will permit ourless affluent to afford beautiful artifacts? See

Kieselstein-Cord v. Accessories by Pearl, Inc., supra,632 F.2d at 999. Article I, section 8 of the UnitedStates Constitution is intended to promote progressin the arts by granting artists the exclusive right totheir work. Thus, Congress enacted both the patentact to protect ideas and the copyright act to protect

the expression of ideas. With these, Congressattempted to protect all intellectual property.Congress could not have intended to create a gap inintellectual property law which would permit thelawful copying of an artists work expressed in theshape of a useful article. Such gap in intellectualproperty law would enable the commercial pirates ofthe marketplace to appropriate for their own profit,without any cost to themselves, the works of talenteddesigners who enrich our lives with their intuitionand skill. The crass is rewarded, the artist whocreates beauty is not. See Id. at 994. More

important, such gap in intellectual property law fliesin the face of the spirit of Article I, section 8 of theU.S. Constitution.

This issue is more critical now that in 1976because we are now blessed with technologicaladvancements that were not available then. Morespecifically, artists now have access to advanced 3-Dprinters that can produce artistic useful articles inminutes. It is widely anticipated that such newtechnologies will drastically enhance the artistsability to blend function with art or aesthetics. Thus,


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this issue of conceptual separability will only becomemore important.

Accordingly, this is the ideal time and the idealcase for this Court to review the thorny issue ofconceptual separability and resolve the ambiguity of17 U.S.C. 101.

_____________________ _____________________

CONCLUSION

For the foregoing reasons, petitioner Inhale, Inc.respectfully requests that this Court grant itsPetition for Writ of Certiorari.

Respectfully submitted,

DATED: August 26, 2014

By:_s/Louis F. Teran___

Louis F. Teran

Attorney for Inhale, Inc.


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App. 1

APPENDIX AFOR PUBLICATION

UNITED STATES COURT OF APPEALSFOR THE NINTH CIRCUIT

No. 12-56331

D.C. No. 2:11-cv-03838-ODW-FFM

INHALE, INC.,

Plaintiff - Appellant,

versus.

STARBUZZ TOBACCO, INC.; et al.,

Defendants - Appellees,

ORDER ANDAMENDED OPINION

Appeal from the United States District Courtfor the Central District of California

Otis D. Wright, II, District Judge, Presiding

Argued and SubmittedNovember 4, 2013 Pasadena, California

Filed January 9, 2014Amended June 3, 2014Amended July 9, 2014

Before: Diarmuid F. OScannlain, Susan P. Graber,and Carlos T. Bea, Circuit Judges.

Opinion by Judge OScannlain;


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Concurrence by Judge Bea

SUMMARY1

Copyright

The panel filed an amended opinion affirming thedistrict courts summary judgment and award ofattorneys fees in favor of the defendant in an actionunder the Copyright Act.

The panel held that the shape of a hookah watercontainer was not entitled to copyright protection.The panel held that the container, a useful article,was not copyrightable because it did not incorporatesculptural features that could be identified separ-ately from, and were capable of existing inde-pendently of, the containers utilitarian aspects.

Adopting the reasoning of the Copyright Office, thepanel held that whether an items shape is distinctivedoes not affect conceptual separability. The panelalso held that the district court did not abuse itsdiscretion in awarding attorneys fees to the defen-dant under 17 U.S.C. 505. The panel awarded

attorneys fees for the appeal in an amount to bedetermined by the district court.

Concurring in part, Judge Bea wrote that heconcurred with the majoritys opinion, except for the

1This summary constitutes no part of the opinion of the court.It has been prepared by court staff for the convenience of the

reader.


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container. The allegedly infringing containers did notcontain skull-and-crossbones images. After

determining that the shape of the water container isnot copyrightable, the district court grantedsummary judgment in favor of Starbuzz.

II.

Because ownership of a valid copyright is anelement of copyright infringement, Feist Publns, Inc.v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991),summary judgment was appropriate if the shape ofInhales hookah water container is not copyrightable.

A

The parties agree that Inhales hookah watercontainer is a useful article. As the design of auseful article, the shape of the container iscopyrightable only if, and only to the extent that, [it]incorporates . . . sculptural features that can beidentified separately from, and are capable ofexisting independently of, the utilitarian aspects ofthe container. 17 U.S.C. 101 (defining [p]ictorial,graphic, and sculptural works); id. 102(a)(5)(granting copyright protection to pictorial, graphic,and sculptural works).

This statutory standard is satisfied by eitherphysical or conceptual separability. See1 Melville B.Nimmer & David Nimmer, Nimmer on Copyright 2.08[B][3], at 2-992-100 (2011). Inhale does notargue that the containers shape satisfies therequirements of physical separability. Thus, weconsider only conceptual separability.


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B

Relying onPoe v. Missing Persons, 745 F.2d 1238(9th Cir. 1984), Inhale argues that conceptualseparability is a question of fact. Inhales reliance on

Poeis misplaced.Poe decided that whether an item isa useful article is a factual question. Id. at 124142.

But usefulness is distinct from separability.

In Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068(9th Cir. 2000), we ruled that the shape of a vodkabottle was not separable from its utilitarian features.Rather than treat separability as a question for the

jury, we conducted our own analysis. See idat 1080.

([T]he district court did not identify any artisticfeatures of the bottle that are separable from itsutilitarian ones. We also find none.). In Fabrica Inc.v. El Dorado Corp., 697 F.2d 890 (9th Cir. 1983), weaffirmed a district courts directed verdict in favor ofa copyright defendant on the ground that theallegedly infringed work was not copyrightable. Weassessed separability ourselves. See id. at 893(There is no element of the folders that can beseparated out and exist independently of theirutilitarian aspects.).

Our precedent suggests that whether a usefularticle has conceptually separable features is a mixedquestion of law and fact. See Pullman-Standard v.Swint, 456 U.S. 273, 289 n.19 (1982) (describingmixed questions of law and fact as those in whichthe historical facts are admitted or established, therule of law is undisputed, and the issue is whetherthe facts satisfy the statutory standard). Becauseboth parties agree that the hookah water container isa useful article that holds water within its shape, allthat is left is the application of the legal standard to


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those facts. Thus, whether the shape of the containeris conceptually separable is a conclusion that we

review de novo. See Mathews v. Chevron Corp., 362F.3d 1172, 1180 (9th Cir. 2004) (Mixed questions oflaw and fact are reviewed de novo; however, theunderlying factual findings are reviewed for clearerror.).

C

Relying in part on Ets-Hokin, the district courtruled that the containers shape is not conceptuallyseparable from its utilitarian features. In Ets-Hokin,we held that the shape of a vodka bottle without a

distinctive shape was not conceptually separable.See225 F.3d at 1080. Attempting to distinguish thiscase from our precedent, however, Inhale emphasizesthe distinctive shape of its hookah water container.Therefore, we must determine whetherdistinctiveness of shape affects separability.

When interpreting the Copyright Act, we defer tothe Copyright Offices interpretations in theappropriate circumstances.3 See Richlin v. Metro-

3Courts have twisted themselves into knots trying to create atest to effectively ascertain whether the artistic aspects of a

useful article can be identified separately from and exist

independently of the articles utilitarian function. Masquerade

Novelty, Inc. v. Unique Indus., 912 F.2d 663, 670 (3d Cir. 1990).

Under some interpretations of 17 U.S.C. 101, distinctiveness

of shape, alone, would be relevant if not the product of

industrial design, thereby requiring the trier of fact to examine

not only the object but also the design process. BrandirIntl,

Inc. v. Cascade Pac. Lumber Co., 834 F.2d 1142, 1145 (2d Cir.


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App. 8

Goldwyn-Mayer Pictures, Inc., 531 F.3d 962, 97273(9th Cir. 2008); Batjac Prods. Inc. v. GoodTimes

Home Video Corp., 160 F.3d 1223, 123031 (9th Cir.1998) (deferring to the Registers interpretation in aninternal manual, Compendium of Copyright Office

Practices). Because Chevrondeference does not applyto internal agency manuals or opinion letters, wedefer to the Copyright Offices views expressed insuch materials only to the extent that thoseinterpretations have the power to persuade. SeeChristensen v. Harris Cnty., 529 U.S. 576, 587 (2000).

In an opinion letter and an internal manual, theCopyright Office has determined that whether an

items shape is distinctive does not affectseparability. See Letter from Nanette Petruzzelli,

Assoc. Register, U.S. Copyright Office, to Jeffrey H.Brown, attorney for MSRF, Inc., Re: FancifulOrnamental Bottle Designs 19, Control No. 61-309-9525(S), April 9, 2008. That determination was basedon the principle that analogizing the general shapeof a useful article to works of modern sculpture isinsufficient for conceptual separability. Compendiumof Copyright Office Practices II (Compendium II) 505.03. Although Inhales water container, like apiece of modern sculpture, has a distinctive shape,[t]he shape of the alleged artistic features and ofthe useful article are one and the same. Id.

1987) (asking whether design elements can be identified as

reflecting the designers artistic judgment exercised

independently of functional influences). We think 101 is

sufficiently ambiguous to justify deference to administrative

interpretations. See High Sierra Hikers Assn v. Blackwell, 390

F.3d 630, 63839 (9th Cir. 2004).


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App. 9

Because the Copyright Offices reasoning is

persuasive, we adopt it for this case. The shape of acontainer is not independent of the containersutilitarian functionto hold the contents within itsshape insofar as the shape accomplishes thefunction. The district court correctly concluded thatthe shape of Inhales hookah water container is notcopyrightable.4

In summary, we hold that any part of acontainer that merely accomplishes the containing isnot copyrightable. We do not mean to suggest that, insome other case, no elements of a container can be

identified separately from, and are capable ofexisting independently of, the container. 17 U.S.C. 101. Here, though, Inhale does not argue in itsopening brief that the exterior shape of the droopingring is conceptually separable because the interiorshape of the hookah does not protrude into the ring.Instead, its theory is that the hookahs outer skin,from top to bottom, can be peeled away and analyzedseparately. Therefore, its argument in the petition forrehearing, that the exterior shape of the droopingring is uniquely separable, is waived. See Greenwoodv. Fed. Aviation Admin., 28 F.3d 971, 977 (9th Cir.1994). In addition, we emphasize that Inhale does not

4That the Copyright Office issued a certificate of registration toInhale does not contradict this conclusion. Because Inhales

application included skull-and-crossbones images on the

container, the certificate of registration does not show that the

Copyright Office considers the shape of the container

copyrightable.


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an element of separability. Because the statute isnot ambiguous in this respect, it is unnecessary to

look to the Copyright Office for further guidance.

Once we start engrafting administrativeinterpretation to our opinions, there is a tendency tolook elsewhere than the text of the enactments ofCongress. This misplaces the power of enactment oflaws from the legislative to the administrativebranch and is contrary to my concept of theseparation of powers.


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APPENDIX BNOT FOR PUBLICATION

UNITED STATES DISTRICT COURTCENTRAL DISTRICT OF CALIFORNIA

No. 2:11-cv-03838-ODW-FFM

INHALE, INC.,

Plaintiff,

versus.

STARBUZZ TOBACCO, INC.; et al.,

Defendants,

ORDER GRANTING IN PART DEFENDANTSMOTION FOR SUMMARY JUDGMENT

Filed June 18, 2012

Before: Otis D. Wright, II, District Judge

I. INTRODUCTION

Pending before the Court is Defendants Motionfor Summary Judgment. (Dkt. No. 40.) The Court hasconsidered the parties briefs, submitted evidence,and oral arguments. For the following reasons, theCourt GRANTS IN PARTDefendants Motion.


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App. 14

II. BACKGROUND

Plaintiff Inhale, Inc. designs, manufactures, andsells various types of smoking products, includinghookahs. (Compl. 5.) A hookah is a device used tosmoke tobacco, among other things. A hookahsdesign directs tobacco smoke down through a pipeand into a water container, which filters and coolsthe tobacco smoke for inhalation. The schematicbelow depicts a hookahs design and function.

A hookah typically comprises three distinctsectionsa bowl, a body, and a water container. Thebowl mounts on top of the body; the body mounts ontop of the water container. A user places tobacco inthe bowl and hot coals on top of the tobacco, causingthe tobacco to smoke. As the user inhales on the hose,smoke travels from the bowl down through the body

Charcoal

Bowl

Plate

Gasket

Hose

Water Container

Windguard

Body

Valve

Water


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App. 15

and into the water inside the water container. Thewater filters and cools the smoke. The filtered smoke

then bubbles out of the water and is inhaled by theuser through the hose.

On August 29, 2008, Plaintiff published a watercontainer decorated with a skull and crossbonesgraphic. (SUF 1.) On April 21, 2011, Plaintiffregistered its water container with the United StatesCopyright Office. (SUF 3.) Plaintiffs copyrightregistration is for a sculpture/3-D artwork titledHookah Water Container. (Teran Decl. Ex. D.)

On May 4, 2011, Plaintiff sued Defendants for

copyright infringement, alleging Starbuzz sold watercontainers, beginning on December 29, 2010, thatinfringe Plaintiffs copyrighted design. (SUF 2.)Plaintiff alleges infringement based solely on theshape of the water container, and not on the skulland crossbones graphic. (SUF 6.) For the purposesof this lawsuit, Plaintiff disclaimed copyrightprotection to the skull and crossbones. (Mot. 3; SUF 6.)

Defendants seek summary judgment ofnoninfringement. Specifically, Defendants claim that

Plaintiff cannot prevail in this action because theshape of the water container is not copyrightable. Inthe alternative, Defendants seek summary judgmentthat Plaintiff is not entitled to attorneys fees orstatutory damages under the Copyright Act, if theCourt finds that the shape of the water container isentitled to a copyright.

III. LEGAL STANDARD

Summary judgment should be granted if thereare no genuine issues of material fact and the moving


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party is entitled to judgment as a matter of law. Fed.R. Civ. P. 56(c). The moving party bears the initial

burden of establishing the absence of a genuine issueof material fact. Celotex Corp. v. Catrett, 477 U.S.317, 32324 (1986). Once the moving party has metits burden, the nonmoving party must go beyond thepleadings and identify specific facts that show agenuine issue for trial. Id.

A genuine issue of material fact must be morethan a scintilla of evidence, or evidence that ismerely colorable or not significantly probative.

Addisu v. Fred Meyer, 198 F.3d 1130, 1134 (9th Cir.2000). A disputed fact is material where the

resolution of that fact might affect the outcome of thesuit under the governing law. Anderson v. LibertyLobby, Inc., 477 U.S. 242, 248 (1968). An issue isgenuine if the evidence is sufficient for a reasonable

jury to return a verdict for the nonmoving party. Id.Where the moving and nonmoving parties versions ofevents differ, courts are required to view the factsand draw reasonable inferences in the light mostfavorable to the nonmoving party. Scott v. Harris,550 U.S. 372, 378 (2007).

IV. DISCUSSION

A. Copyright infringement

To establish copyright infringement, a plaintiffmust prove (1) ownership of a valid copyright in theinfringed work, and (2) copying of the copyrightedworks original elements. Feist Publns, Inc. v. RuralTel. Serv. Co., 499 U.S. 340, 361 (1991). A copyrightregistration made within five years of a works firstpublication is prima facie evidence of the validity ofthe copyright and of the facts stated in the


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certificate. 17 U.S.C. 410(c).

Plaintiffs copyright registrationfor asculpture/3-D artwork titled Hookah WaterContainerwas issued less than five years after thework was first published. (Teran Decl. Ex. D.) Thus,this is prima facie evidence that this copyright isvalid. In registering its design, Plaintiff submittedphotographs of a water container with a skull andcrossbones graphic to the Copyright Office. (Compl.Ex. A.) One such photograph is reproduced below.

In this litigation, Plaintiff disclaimed copyrightprotection to the skull and crossbones graphic. (Mot.3; SUF 6.) But the effect of the disclaimer isuncertain. That is, it is unclear whether Plaintiffsdisclaimer affects the copyrights presumption ofvalidity; or whether the disclaimer is effective


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authorship fixed in any tangible medium ofexpression. 17 U.S.C. 102. But copyright protection

does not fully extend to works that are usefularticlesarticles having an intrinsic utilitarianfunction that is not merely to portray the appearanceof the article or to convey information. 17 U.S.C. 101. A useful article is copyrightable only to theextent that its pictorial, graphic, or sculpturalfeatures can be identified separately fromand arecapable of existing independently ofthe utilitarianpurposes of the article. Id.; Fabrica, Inc. v. El DoradoCorp., 697 F.2d 890, 893 (9th Cir. 1983). In otherwords, a useful article taken as a whole is not eligiblefor copyright protection, but its individual design

elements may be. Chosun Intl v. Chrisha Creations,Ltd., 413 F.3d 324, 328 (2d Cir. 2005).

The parties agree that the water container is auseful article that holds water for and serves as abase to an attached hookah. (SUF 8, 10.) Becauseonly the overall shape of the water container remainsfor this analysis, copyright protection for the watercontainer hinges on whether this shape can beidentified separately from, and is capable of existingindependently of, the utilitarian aspects of the watercontainer.

Plaintiff contends the water containers shapecan be identified separately from its utilitarianaspects and thus is copyrightable. (Oppn 1112.) Insupport, Plaintiff points to other hookah watercontainers with different shapes and argues that thewater containers shape is not critical to itsfunctionand so, the water containers shape isseparate from its function. (Id.) The Court rejectsthis reasoning.


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The overall shape of a useful article is notcopyrightable no matter how aesthetically pleasing

that shape may be. Esquire, Inc. v. Ringer, 591 F.2d796, 800 (D.C. Cir. 1978). The Copyright OfficesCompendium IIexpounds on this concept:

[Separability] is not met by merelyanalogizing the general shape of a usefularticle to works of modern sculpture, sincethe alleged artistic features and the usefularticle cannot be perceived as havingseparate, independent existences. The shapeof the alleged artistic features and of theuseful article are one and the same . . . . The

mere fact that certain features are non-functional or could have been designeddifferently is irrelevant under the statutorydefinition of pictorial, graphic, andsculptural works. Thus, the fact that alighting fixture might resemble abstractsculpture would not transform the lightingfixture into a copyrightable work.

Compendium of Copyright Office Practices II 505.03.

In an administrative opinion, the CopyrightOffice denied copyright protection to nine fancifullyshaped glass bottles. RE: Fanciful Ornamental Bottle

Designs 1-9, Control No. 61-309-9525(S), April 9,2008. The Copyright Office opined that although thebottles may be novel and aesthetically pleasing, theyare nevertheless created in a way that allows them tofunction as . . . storage containers . . . . Thus, theform of the containers does not reflect purelyaesthetic visions; the artistic aspects of thecontainers are not separable from the utilitarianelements. (Id. at 1011.) Photographs of these nine


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glass bottles are reproduced below.

Likewise, the Ninth Circuit found that thefamous blue skyy Vodka bottle, although attractive,has no special design or other features that couldexist independently as a work of art. Ets-Hokin v.Skyy Spirits, Inc., 225 F.3d 1068, 1080 (9th Cir.2000).

Plaintiff attempts to distinguish its watercontainer from ordinary bottles, arguing that unlikebottles that are designed specifically to store ortransport liquid, hookah water containers are onlypartially filled and are not used in the same way.(Oppn 4.) The Court is not persuaded by Plaintiffsargument. These noted differences are irrelevant; thefact that Plaintiff intended its water container toserve as a liquid-holding receptacle for a hookah


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and not as a museum pieceis what matters. See Poev. Missing Persons, 745 F.2d 1238, 1242 (9th Cir.

1984) (The evidence presented by both sides at thehearing . . . shows that [plaintiff] was attempting tocreate a work of art which portrayed an article ofclothing.).

The shape of the water container in this casecannot be physically or conceptually separable fromthe container because the containers shape and thecontainer are one and the same. It matters not thatPlaintiffs water container would still be functional ifit had a different shape. Nor does it matter thathookah water containers exist in all manners of size

and shape. The artistic aspectsif anyof Plaintiffswater container shape, are not separable from itsutilitarian elements. Thus, with the skull andcrossbones graphic disclaimed, there is no copyrightprotection for the shape of the water container.

Accordingly, Defendants do not infringe Plaintiffscopyright.

B.Attorneys fees and statutory damages

Since the Court finds no infringement,Defendants Motion concerning attorneys fees andstatutory damages is DENIED AS MOOT.

V. CONCLUSION

For the reasons discussed above, DefendantsMotion for Summary Judgment of noninfringement isGRANTED. Defendants Motion for SummaryJudgment of attorneys fees and statutory damages isDENIED AS MOOT.


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ORDER

The opinion filed January 9, 2014, and publishedat 739 F.3d 446, is amended as follows:

On slip opinion page 8, after and before the beginning of Part III,add the following as a new paragraph:

.

An amended opinion is filed concurrently withthis order.

With this amendment, the panel has votedunanimously to deny the petition for rehearing and


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the petition for rehearing en banc. The full court hasbeen advised of the petition for rehearing en banc,

and no judge has requested a vote on whether torehear the matter. Fed. R. App. P. 35.

The petition for rehearing and the petition forrehearing en banc are DENIED. No further petitionsfor panel rehearing or for rehearing en banc will beentertained. Starbuzzs request for an award ofattorneys fees under 17 U.S.C. 505 is GRANTED.We award attorneys fees incurred in responding tothe petition for rehearing and rehearing en banc toStarbuzz in an amount to be determined by thedistrict court on remand.


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APPENDIX D

United States Copyright OfficeLibrary of Congress . 101 Independence AvenueSE . Washington, DC 20559-6000 .www.copyright.gov

April 9, 2008

Mr. Jeffrey H. BrownMichael Best & FriedrichTwo Prudential Plaza

180 North Stetson AvenueSuite 2000Chicago, IL 60601-6710

RE: FANCIFUL ORNAMENTAL BOTTLEDESIGNS 1-9

Control No. 61-309-9525 (S)

Dear Mr. Brown:

The Copyright Office Review Board hasconsidered your second request to review the

Examining Divisions refusal to register theindividual claims in the FANCIFUL ORNAMENTALBOTTLE DESIGNS 1-9, submitted on behalf ofMSRF, Inc. We apologize for the delay in getting thisresponse to you. After reviewing all materialssubmitted in support of the claims and carefullyconsidering your arguments, the Review Board hasdetermined that all nine of the Bottle Designs cannotbe registered because they are useful articles thatcontain no separable and copyrightable authorship.


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I. ADMINISTRATIVE RECORD

A.

Initial submission

On January 8, 2004, you submitted forregistration claims to copyright in nine worksentitled FANCIFUL ORNAMENTAL BOTTLEDESIGNS, numbered 1-9, on behalf of MSRF, Inc.The photographic deposits in these works depicttransparent glass bottles apparently containingindividual slices or other pieces of fruits, vegetables,and herbs. The applications for registration have theboxes checked at space 2 to indicate that 3-Dimensional sculpture describes the nature of

authorship in these works.

On March 9, 2004, Visual Arts Examiner JoyBurns refused registration for all nine Bottle Designson the grounds that they are useful articles that donot contain authorship which is both separable andcopyrightable. Ms. Burns noted that while pictorial,graphic, and sculptural works are registrable,designs of useful articles can be considered aspictorial, graphic, or sculptural works only if, and tothe extent that, they incorporate such features thatcan be separately identified from and have anindependent existence from the useful articles, eitherphysically or conceptually. Letter from Burns toBrown of 3/9/2004, at 1.

Ms. Burns then set forth Compendium ofCopyright Office Practices II [Compendium II]requirements for conceptually separable authorship,and clarified that separability is not met byanalogizing the general shape of a useful article to awork of modern sculpture. In such cases, the allegedartistic features and the useful article cannot be


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perceived as having separate, independentexistences. She further noted that where features are

an integral part of the overall shape or contour of theuseful article, no registration is possible. Finally, Ms.Burns examined the copyrightability of the featureswhich may be identifiable as separable, and foundthem not copyrightable inasmuch as they did notcontain the requisite amount of creative authorshipwithin the meaning of the copyright law and settledcase law. See Feist Publications, Inc. v. RuralTelephone Service Company, 499 U.S. 340 (1991).Letter from Burns of 3/9/2004, at 2.

B.

First request for reconsideration and

Office response

On July 6, 2004, you requested reconsideration ofExaminer Burns decision. You acknowledge that thesufficiency of the creative content was to bemeasured by the standards enunciated in Feist, butasserted that the Bottle Designs are original works ofauthorship under that standard. You pointed outthat the level of creativity necessary is very slightand modest. You cited additional authorities andnoted that the threshold of creativity is so minimalthat simple shapes are registrable when selected orcombined in a distinctive manner indicating someingenuity, citing Atari Games Corp. v. Oman, 888F.2d 878, 883 (D. C. Cir. 1989), Concord Fabrics v.Marcus Brothers Textile Corp., 409 F.2d 1315 (2dCir. 1969), and In Design v. Lynch Knitting Mills, 863F.2d 45 (2d Cir. 1988), inter alia. Letter from Brownto Chief, Receiving and Processing Division, of7/6/2004, at 1-2.

You suggested that Ms. Burns decision may haverested on an undue focus on dissecting the


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components of the work, and point out somecomponents that should be considered, not in

isolation, but, rather, in their combination with otherelements. By way of example, you indicate that thearrangement of letters to spell B-A-T-H and V-I-N-E-G-A-R, combined with the putative original shapes ofdesigns #1 and #5, respectively, create copyrightable3-dimensional sculptures. You enumerate the otherdesigns and assert that the original, artistic bulges,twists, and artful cuts of those bottles also createcopyrightable sculptural works. You also assert thatthe overall look and feel of the works add up tocopyrightable as a whole. Finally, you assert that thecreativity in the designs at issue exceed those in the

designs found copyrightable by the courts in suchcases as Concord Fabricsand In Design. Letter fromBrown of 7/6/2004, at 2-3.

On September 16, 2004, Attorney VirginiaGiroux responded on behalf of the ExaminingDivision that, after review in light of the pointsraised, the works at issue here still could not beregistered on the basis of lack of sufficient authorshipthat is both separable and copyrightable. Ms. Girouxagain explained Congress prohibition on copyright ofdesigns of useful articles unless the designs containindependently separable pictorial, graphic, orsculptural authorship and are capable of existingindependently of the utilitarian aspects of the articlewithout losing their basic shape. Letter from Girouxto Brown of 9/16/2004, at 1.

Ms. Giroux noted that the Copyright Offices testfor conceptual separability is enunciated in Esquirev. Ringer, 591 F.2d 796 (D.C.Cir. 1978) as expressedin Compendium II of Copyright Office Practices, Ch.500, 505.03 (1984). She noted that this test

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