The Copyright Act of 1976 broadly allows for original works “fixed in any tangible medium of expression” to by copyrighted. 17 U.S.C. § 102. Registering the copyright for a creation allows the copyright owner to bring suit – for up to $150,000 in some cases – and use a wide range of other remedies provided in the Copyright Act.
However, the Copyright Act throws the brakes on copyright protection for sculptures and other graphic works. In its definition of “pictorial, graphic, and sculptural works,” the Copyright Act excludes objects it considers to be “useful articles”:
the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work 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.
What’s a “useful article”? Section 101 defines this term as well:
A “useful article” is an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. An article that is normally a part of a useful article is considered a “useful article”.
Is a hookah a useful article? In Inhale Incorporated v. Starbuzz Tobacco, Incorporated, the United States Court of Appeals for the Ninth Circuit said no—but with some caveats. 755 F.3d 1038, (9th Cir. 2014). In that case, both parties agreed that the plaintiff-appellant’s hookah was a useful article. The only question was whether the shape of the container was conceptually separable from its function as a hookah.
The Ninth Circuit held that the hookah’s shape was not independent of its function – to hold water within the shape of the container. As a result, the appeals court affirmed the district court’s decision, finding that the hookah was not copyrightable. The Ninth Circuit broadly stated its holding thusly: “any part of a container that merely accomplishes the containing is not copyrightable.” If some element of the design extended beyond merely holding water—fulfilling the hookah’s functional purpose—the outcome may well have been different.
The Ninth Circuit took great pains to point out that the images applied to the outside of the hookah were copyrightable. The panel even disclaimed that its opinion “should not be understood to affect the copyrightability of” pictorial, graphic, or sculptural works under 17 U.S.C. § 101. It was the design of the hookah itself, rather than the images adorning it, that gave rise to the dispute.
Two other notable things about this opinion: First, the Ninth Circuit affirmed the district court’s award of $111,993 in attorney’s fees to Starbuzz Tobacco under 17 U.S.C. § 505. Then, the Ninth Circuit went on to award Starbuzz with fees incurred in the defense of Inhale’s appeal under the same statute. The amount of fees awarded is not specified in the order. However, in May 2013, United States District Court Judge Otis Wright estimated that the cost of an effective appeal to the Ninth Circuit was a little more than $80,000 (see fn. 5). Ouch.
Second, there’s a point of resistance in Justice Bea’s separate concurrence about the deference the Ninth Circuit owes to the Copyright Office’s interpretation of the Copyright Act. The panel relied on the Compendium of Copyright Office Practices II and an opinion letter from the Copyright Office in guiding their interpretation of 17 U.S.C. § 101. Justice Bea, however, contended that the statute is not ambiguous, and reliance on the Copyright Office’s interpretation of the statute is misplaced.
While the opinion does not require other courts to look to the Copyright Office when interpreting the Copyright Act in the future, Justice Bea’s desire to protect the sovereignty of the federal courts is understandable. While administrative records can be helpful to the courts, especially in resolving ambiguity, one can understand why a judge with lifetime tenure would want to resist being bound by them.