No.

_________
___________________________________________
In The
Supreme Court of the United
States
_____________________ _____________________
INHALE, INC.

` Petitioner,
v.

STARBUZZ TOBACCO, INC., and WAEL SALIM
ELHALAWANI


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. TERAN
SLC Law Group
1055 E. Colorado Blvd., Ste. #500
Pasadena, CA 91106
(818) 484-3217 x200
lteran@slclg.com
__________________________________________




ii

CERTIORARI PRINTING
info@certiorariprinting.com
Fax (805) 995-3881, Phone (805) 801-1881




i

QUESTION(s) PRESENTED:

1. What test should be used to effectively ascertain
whether the artistic aspects of a useful article can be
identified as being conceptually separable from the
articles utilitarian function pursuant 17 U.S.C.
101?

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






























ii

PARTIES TO THE PROCEEDING

Petitioner Inhale, Inc. (hereinafter
Petitioner) was plaintiff in the district court
proceedings and plaintiff-appellant in the court of
appeals proceedings. Respondents Starbuzz Tobacco,
Inc. and Wael Salim Elhalawani (hereinafter
Respondents) were defendants in the district court
proceedings and defendants-appellees in the court of
appeals proceedings.

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






iii

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 STATUTORY
PROVISIONS 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 THE
WRIT.................................................................. 14

I. REVIEW IS WARRANTED TO
RESOLVE THE AMBIGUITY OF
CONCEPTUAL SEPARABILITY
PURSUANT 17 U.S.C. 101 ......................... 14






iv

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... 14

B. The Ambiguity of Conceptual
Separability Has Spawned Multiple
Tests That Conflict With One
Another 18

1. The Second Circuit reviewed
conceptual separability in a trio
of cases resulting in conflicting
tests ...... 19

a) Kieselstein-Cord v. Accessories by
Perl, Inc. .. 19

b) Carol Barnhart, Inc. v. Economy
Cover Corp. . 21

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

2. Ninth Circuits experience with
conceptual separability is limited
and conflicts with that of
the Second Circuit ............ 25

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

b) Ets-Hokin v. Skyy Spirits, Inc 26






v

3. The Copyright Offices test
dismisses the Second Circuit
tests adopts Esquire v. Ringer.... 26

C. The Ambiguity of Conceptual
Separability Can Be Resolved By
The Patent / Copyright Dichotomy
Identified By This Court In Mazer v.
Stein... 29

II. THE PRESENT CASE IS IDEAL FOR
THIS COURT TO REVIEW THE
THORNY ISSUE OF CONCEPTUAL
SEPRABILITY . 32

III. REVIEW IS ESSENTIAL SINCE THE
NINTH CIRCUITS ORDER
PRACTICALLY ABOLISHES
CONCEPTUAL SEPARABILITY.. 34

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


APPENDIX

APPENDIX A
July 9, 2014 Opinion of the United States
Court of Appeals for the Ninth
Circuit .................................................... App. 1

APPENDIX B
June 18, 2012 Order of the United States
District Court for the Central District
Of California ............................... App. 13







vi


APPENDIX C
June 3, 2014 Order Amending Opinion of the
United States Court of Appeals for the
Ninth Circuit and Denying Petition for
Rehearing App. 24

APPENDIX D
Opinion Letter of the Copyright Office
Review Board re: Fanciful Ornamental
Bottle Designs 1-9.App. 27

APPENDIX E
Schematic of a typical hookah .App. 56

APPENDIX F
Photographs of different hookah water
containers App. 57

APPENDIX G
Photographs of hookah water containers
at issue in the present case .App. 58

APPENDIX H
Petitioners Copyright Registration ..App. 59







vii

TABLE OF AUTHORITIES

CASES: Page

Brandir International, Inc. v. Cascade
Pacific Lumber Co.
834 F.2d 1142 (2d Cir. 1987) 23, 24, 27, 33

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

Esquire v. Ringer
591 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. Stein
347 U.S. 201 (1954).. 3-5, 16, 26, 29-31

Norris Industries, Inc. v. International
Telephone and Telegraph Corp.
696 F.2d 918 (11th Cir. 1983) 18

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

Royalty Designs, Inc. v. Thrifticheck




viii

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 in
Useful Articles 67 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




1
PETITION FOR WRIT OF CERTIORARI

Petitioner respectfully petitions for a writ of
certiorari to review a published decision of the
United States Court of Appeals for the Ninth Circuit.


_____________________ ____________________

OPINIONS BELOW

The initial opinion of the United States Court of
Appeals for the Ninth Circuit is reported at Inhale,
Inc. v. Starbuzz Tobacco, Inc., 739 F.3d 446 (9th Cir.
2014). The opinion was first amended on June 3,
2014. The opinion was amended a second time on
July 9, 2014. The final amended opinion is reported
at Inhale, Inc. v. Starbuzz Tobacco, Inc., 755 F.3d
1038 (9th Cir. 2014). The Ninth Circuit affirmed the
June 18, 2012 decision of the United States District
Court for the Central District of California not
reported but reproduced in Appendix B.

_____________________ _____________________

STATEMENT OF JURISDICTION

This Courts jurisdiction is invoked under 28
U.S.C. 1254(1).

The Ninth Circuits amended opinion was
rendered on July 9, 2014 (see Appendix A). The
petition for Panel Rehearing with suggestion for
Rehearing En Banc was denied on June 3, 2014 (see
Appendix C). On June 10, 2014, the Ninth Circuit
granted petitioners Motion to Stay the Issuance of
the Mandate.
_____________________ _____________________




2
CONSTITUTIONAL AND STATUTORY
PROVISIONS INVOVLED

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

The Congress shall have the power topromote
the progress of science and useful arts, by securing
for limited times to authors and inventors the
exclusive right to their respective writings and
discoveries.

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 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.

Title 17 United States Code, Section 102.

The Copyright Act of 1976 at 17 U.S.C. 102
Provides in relevant part that Copyright protection
subsists, in accordance with this title, in original
works of authorship fixed in any tangible medium of
expression, now known or later developed, from
which they can be perceived, reproduced, or
otherwise communicated, either directly or with the
aid of a machine or device. Works of authorship
include the following categories: (5) pictorial,
graphic, and sculptural works

_____________________ _____________________




3
STATEMENT OF THE CASE
I. Statutory and Judicial Background
Article I, section 8 of the United States
Constitution grants Congress the power to promote
the progress of science and useful arts, by securing
for limited times to authors and inventors the
exclusive right to their respective writings and
discoveries.

Pursuant Article I, section 8, Congress enacted
the Patent Act of 1790 which provided protection to
any new and useful art, machine, manufacture or
composition of matter. Similarly, Congress also
enacted the Copyright Act of 1790 which provided
protection of books, maps, and charts. In 1870, the
Copyright Act was extended to protect three-
dimensional statutes, statuary, and models or
designs intended to be perfected and executed as a
work of the fine arts. In 1909, the Copyright Act
was amended such that the fine arts category was
broadened to cover all [w]orks of art; models or
designs of works of art.

In 1954, in the case of Mazer v. Stein, 347 U.S.
201 (1954), this Court addressed the protection for
the design of useful articles pursuant the Copyright
Act. The issue involved copyright protection for
statuettes that were intended for use and used as
bases for table lamps, with electric wiring, sockets,
and lamp shades attached. See Id. at 202.
Petitioner argued that since the statuettes were
incorporated into a table lamp, it was not a work of
the fine arts but, instead, a useful article. Id. at
216. Thus, the petitioner argued that protection, if
any, can only be attained pursuant the Patent Act,
not the Copyright Act. Id.




4
This Court rejected said argument and explained
the difference between patent and copyright
protection as follows:

Unlike a patent, a copyright gives no
exclusive right to the art disclosed;
protection is given only to the expression of
the idea not the idea itself The copyright
protects originality rather than novelty or
invention conferring only the sole right of
multiplying copies. Absent copying there
can be no infringement of copyright. Thus,
respondents may not exclude others from
using statuettes of human figures in table
lamps; they may only prevent use of copies of
their statuettes as such or incorporated in
some other article The dichotomy of
protection for the aesthetics is not beauty
and utility but art for the copyright and the
invention of original and ornamental design
for design patents. See Id. at 217-218.

As such, this Court held as follows:

We find nothing in the copyright statute to
support the argument that the intended use
or use in industry of an article eligible for
copyright bars or invalidates its registration.
We do not read such a limitation into the
copyright law. See Id. at 218.

Thus, Mazer v. Stein established the principle
that a work that is otherwise copyrightable does not
lose protection when it is incorporated as part of a
useful article. However, this Court did not address
the more difficult question of how to determine when
elements of a useful article may be protected by
copyright.




5
Then in 1976, Congress amended the Copyright
Act in accordance with Mazer v. Stein. Section 101 of
the Copyright Act of 1976, 17 U.S.C. 101, states, in
relevant part, as follows:

[T]he 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.

In amending the Copyright Act, the House
Judiciary Committee, in its report (hereinafter
House Report), explained Congresss purpose as
follows:

In adopting this amendatory language, the
Committee is seeking to draw as clear a line
as possible between copyrightable works of
applied art and uncopyrightable works of
industrial design. A two-dimensional
painting, drawing, or graphic work is still
capable of being identified as such when it is
printed on or applied to utilitarian articles
such as textile fabrics, wallpaper, containers,
and the like. The same is true when a
statute or carving is used to embellish an
industrial product or, as in the Mazer case, is
incorporated into a product without losing its
ability to exist independently as a work of
art. On the other hand, although the shape
of an industrial product may be aesthetically
satisfying and valuable, the Committees
intention is not to offer it copyright
protection under the bill. Unless the shape




6
of an automobile, airplane, ladies dress, food
processor, television set, or any other
industrial product contains some element
that, physically or conceptually, can be
identified as separable from the utilitarian
aspects of the article, the design would not
be copyrighted under the bill. The test of
separability and independence from the
utilitarian aspect of the article does not
depend upon the nature of the design that
is, even if the appearance of an article is
determined by aesthetic (as opposed
functional) considerations, only elements, if
any, which can be identified separately from
the useful article as such are copyrightable.
And, even if the three-dimensional design
contains some such element (for example, a
carving on the back of a chair or a floral
relief design on silver flatware), copyright
protection would extend only to that
element, and would not cover the over-all
configuration of the utilitarian article as
such. 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 useful
article that can be identified as separable from the
utilitarian aspect of the article not physically but
only conceptually. This is the origin of the
conceptual separability test in Copyright Law.

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




7
developed multiple interpretations and tests that
conflict with one another. See Masquerade Novelty,
Inc. v. Unique Indus., 912 F.2d 663, 670 (3d Cir.
1990) (Courts have twisted themselves into knots
trying to create a test to effectively ascertain whether
the artistic aspects of a useful article can be
identified separately from and exist independently of
the articles utilitarian function.). See also Michael
J. Lynch, Copyright in Utilitarian Objects: Beneath
Metaphysics, 16 U. Dayton L. Rev. 647, 647 (1991)
(Among the opportunities for metaphysicians
provided by the Copyright Act of 1976, the scheme for
protection of design features of useful articles stands
out.).
II. Factual Background
Petitioner designs, manufactures, and sells
various types of smoking products, including
hookahs. A hookah is a device used to smoke tobacco.
A hookahs design directs tobacco smoke down
through a pipe and into some water, which filters and
cools the tobacco smoke for inhalation. A hookah
typically comprises three distinct sections a bowl, a
body, and a water container. The bowl mounts on top
of 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 a
hookahs design and function. (App.14).

A user places tobacco in the bowl and hot coals on
top of the tobacco, causing the tobacco to smoke. As
the user inhales on the hose, smoke travels from the
bowl down through the body and into the water
inside the water container. The water filters and
cools the smoke. The filtered smoke then bubbles out
of the water and is inhaled by the smoker through
the hose. Hookah water containers are widely




8
available in the market in different sizes and shapes,
as shown in Appendix F. (App.58).

Petitioner registered its hookah water container
with the United States Copyright Office. Petitioners
Copyright Registration No. VA1767997 is for a
sculpture/3-D artwork titled Hookah Water
Container. (App.60). Petitioner sued Respondent
alleging infringement of its copyright registration.
Petitioner alleged infringement based solely on the
shape of the hookah water container. Petitioner
disclaimed copyright protection to any images or
graphics on the container. The parties agreed that
the hookah water container is a useful article. The
hookah water containers at issue are shown in
Appendix G. (App.59).
III. Proceedings Below
On May 4, 2011, Petitioner sued Respondent for
copyright infringement alleging that Respondent sold
hookah water containers that infringe Petitioners
copyrighted design. The sole allegation was that the
shape of respondents hookah water container was an
identical copy of the shape of Petitioners hookah
water container. The parties agreed that the hookah
water container is a useful article that holds water
for a hookah. Additionally, physical separability of
the shape of the hookah water container was not
argued. Thus, the sole issue in this case is related to
infringement pursuant the conceptual separability
test of 17 U.S.C. 101.

Respondent filed a motion for summary
judgment asserting that Petitioner cannot prevail in
this action because the shape of the hookah water
container is not copyrightable. On the other hand,
Petitioner argued that the shape of the hookah water




9
container is copyrightable because it is conceptually
separable from the utilitarian aspects. Petitioner
identified several artistic curves and shapes that
were formed by the outer surface of the hookah water
container. Thus, Petitioner argued that the purpose
of the outer surface was to create a distinctive shape
and to convey artistic expression of aesthetics. Then
Petitioner identified the inner surface of the hookah
water container as the functional element that
creates a void in which the water for the hookah is
retained. Petitioner asserted that the outer artistic
surface can be seen conceptually as an outer skin
that was added to or superimposed upon the inner
functional surface wherein said outer surface is
separate and independent from said inner surface.
Accordingly, Petitioner argued that the shape of the
hookah water container satisfies the requirements of
conceptual separability.

Petitioner showed that the shape of the outer
surface was not influenced by the functional aspect of
the hookah water container. Petitioner also pointed
to other hookah water containers with different
shapes to argue that the shape is not critical to the
function because all that is functionally required is
for the water container to hold some water through
which the tobacco smoke from the hookah can pass
and be filtered. Petitioner also showed that the
shape in which the water is held is irrelevant and of
no consequence to the functional aspects of the
hookah water container. In essence, Petitioner
argued that the shape of the hookah water container
is conceptually separable from its utilitarian aspects,
thus, copyrightable pursuant 17 U.S.C. 101.

The district court disagreed and granted
summary judgment against Petitioner. (App.13 -
App.23). In reaching its decision, the district court




10
examined an administrative opinion issued by the
Copyright Office that had denied copyright protection
to nine fancifully shaped glass bottles. (hereinafter
Copyright Office Opinion). (App.27 App.56). The
Copyright Office Opinion found that although the
bottles may be novel and aesthetically pleasing, they
are nevertheless created in a way that allows them to
function asstorage containers Thus, the form of
the containers does not reflect purely aesthetic
visions. (App.48).

After reviewing the Copyright Office Opinion, the
district court reviewed the case of Ets-Hokin v. Skyy
Spirits, Inc., 225 F.3d 1068, 1080 (9th Cir. 2000) in
which the Court of Appeals for the Ninth Circuit
found that a vodka bottle has no special design or
other features that could exist independently as a
work of art.

Then, the district court held as follows:

[Petitioner] contends the water containers
shape can be identified separately from its
utilitarian aspects and thus is copyrightable.
In support, [Petitioner] points to other
hookah water containers with different
shapes and argues that the water containers
shape is not critical to its function and so,
the water containers shape is separate from
its function. The Court rejects this
reasoning [Petitioner] attempts to
distinguish its water container from ordinary
bottles, arguing that unlike bottles that are
designed specifically to store or transport
liquid, hookah water containers are only
partially filled and are not used in the same
way. The Court is not persuaded by
[Petitioners] argument. These noted




11
differences are irrelevant; the fact 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 The shape of the water
container in this case cannot be physically or
conceptually separable from the container
because the containers shape and the
container are one and the same. It matters
not that [Petitioners] water container would
still be functional if it had a different shape.
Nor does it matter that hookah water
containers exist in all manners of size and
shape. The artistic aspects if any of
[Petitioners] water container shape, are not
separable from its utilitarian elements.
(App.22).

Petitioner appealed and a panel of the Court of
Appeals for the Ninth Circuit affirmed the district
courts judgment with a published opinion. (App.1
App.12). Like the district court, the panel based its
opinion on Ets-Hokin v. Skyy Spirits, Inc. and on the
Copyright Office Opinion. First the panel stated that
in Ets-Hokin v. Skyy Spirits, Inc., it had found that
the vodka bottle did not have a distinctive shape.
Thus, there were no distinctive elements that could
be separable from the bottles function. The panel
distinguished the present case in that Petitioners
hookah water container, like a piece of modern
sculpture, has a distinctive shape. (App.9). Thus,
the panel found that it had to determine whether
distinctiveness of shape affects separability.
(App.7).

In reaching its holding, the panel acknowledged
that courts have twisted themselves into knots
trying to create a test to effectively ascertain whether




12
the artistic aspects of a useful article can be
identified separately from and exist independently of
the articles utilitarian function. (App.7, fn.3). The
panel also recognized that under an interpretation of
17 U.S.C. 101 by the Second Circuit, the design
process must be examined to determine whether the
design elements can be identified as reflecting the
designers artistic judgment exercised independently
of functional influences. (App.7, fn.3).

In light of the different interpretations and tests
developed by other circuits, the panel found that 17
U.S.C. 101 is sufficiently ambiguous to justify
deference to administrative interpretations. (App.7,
fn.3). Thus, the panel deferred to and adopted the
Copyright Office Opinion. The panel held as follows:

Although [Petitioners] water container, like
a piece of modern sculpture, has a distinctive
shape, the shape of the alleged artistic
features and of the useful article are one and
the same Because the Copyright Offices
reasoning is persuasive, we adopt it for this
case. The shape of a container is not
independent of the containers utilitarian
function to hold the contents within its
shape insofar as the shape accomplishes
that function. (App.9).

In a petition for rehearing, Petitioner re-asserted
its contention that the artistic outer surface is
distinct and conceptually separate from the
functional inner surface of the hookah water
container. Petitioner stated as follows:

In fact, however, [petitioners] water
container does not have one shape but two
different shapes: (1) an internal shape




13
created by the inner surface; and (2) an
external shape created by the outer surface.
Upon close examination, the two shapes are
distinct from one another. The internal
shape creates the void inside the container,
thus, this internal shape has the utilitarian
function of holding the water. The external
shape does not hold any water but merely
contains features intended by the author to
be purely aesthetic in nature...

At the very least, the drooping ring that
is located in the top half of the container best
shows how the internal shape and the
external shape of the container differ

The petition for rehearing was denied and the
panel amended its published opinion to include the
following:

Here, though, [Petitioner] does not argue in
its opening brief that the exterior shape of
the drooping ring is conceptually separable
because the interior shape 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
analyzed separately. Therefore, its
argument in the petition for rehearing, that
the exterior shape of the drooping ring is
uniquely separable, is waived. (App.10).

With this, the panel seems to have missed the
point of Petitioners outer/inner shape contention.
Petitioner pointed to the drooping ring as an example
to show how the shape of the outer surface differs
from the shape of the inner surface. Thus, petitioner
contends that the artistic outer surface is




14
conceptually separable from the functional inner
surface.

Then the panel affirmed the district courts
award of attorneys fees in favor of Respondent
pursuant 17 U.S.C. 505. (App.10 App.11). In
doing so, the panel affirmed the district courts
reliance on Respondents total success on the merits
and the need for deterrence of similarly frivolous
claims against innocent defendants. (App.10). The
panel further granted attorneys fees for the appeal
in favor of Respondent, and even further, the panel
granted attorneys fees for opposing the petition for
rehearing 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 was
passed, it had already been established that
decorations or ornaments, either two- or three-




15
dimensional, that were applied to the surface of a
useful article were copyrightable. See Peter Pan
Fabrics, 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 physical
separability test had been established before 1976
through which artistic elements that could be
physically removed from the useful article and still
exist as a work of art were copyrightable.

However, the Copyright Act of 1976 expanded
the protection of useful articles by establishing the
conceptual separability test. Congress explained
that, pursuant 17 U.S.C. 101, [u]nless the shape of
anindustrial product contains some element that,
physically or conceptually, can be identified as
separable 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 not
provide guidance as to how to determine whether a
design element can be conceptually separable.
Instead, 17 U.S.C. 101 has proven to be ambiguous
as to the conceptual separability test. Said
ambiguity has caused substantial confusion amongst
courts and has spawned numerous tests that are
inconsistent with one another.

In fact, the ambiguity of 17 U.S.C. 101 caused
the panel of the Ninth Circuit in the present case to
defer to and adopt the Copyright Office Opinion.
(App.9). Thus, the panel threw in the proverbial
towel to avoid analyzing whether the outer shape of
Petitioners hookah water container is conceptually
separable from its inner shape. Instead, the panel
adopted the general determination from the
Copyright Office Opinion that the shape of any
container is not separable from the container itself,




16
thus, not copyrightable. (App.9). In other words, due
to the ambiguity of 17 U.S.C. 101, the panel did not
look to the enactment of Congress. Instead, it
adopted the opinion of the administrative branch. As
Judge Bea explained in his concurring opinion:
[t]his misplaces the power of enactment of laws from
the legislative to the administrative branch and is
contrary to [the] concept of the separation of powers.
(App.12).

Even the district courts confusion is evident by
its holding that Petitioners contention of
conceptually separability is irrelevant because the
fact 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 despite
this Courts holding that there is nothing in the
copyright statute to support the argument that the
intended use or use in industry of an article eligible
for copyright bars or invalidates its registration.
See Mazer v. Stein, 347 US 201, 218 (1954).

On the other hand, in the case of Royalty
Designs, Inc. v. Thrifticheck Service Corp., 204
F.Supp. 702 (S.D.N.Y. 1962), a district court held
that plastic molded toy coin banks in the shape of
dogs were copyrightable. The district court held as
follows:

There is no doubt that copyright protection
extends to Royaltys design as productions of
originality and novelty. Royalty does not
claim rights to all toy banks in the form of
Boxer and Cocker Spaniel dogs. Its
copyrights are for the particular novel and
original renditions created and designed by
it, which are legitimate subjects of copyright




17
registrations. Royal by its treatment of the
subjects has contributed something
recognizably its own which is by no means
trivial. See Id. at 704.

Although, this was a district court decision, it
underscores the inconsistent rulings in this area of
law. In other words, a district court in the Second
Circuit found that the shape of a container, a plastic
molded toy coin bank, is copyrightable. But, the
Ninth Circuits published opinion in the present case
denies copyright protection to the shape of any and
all 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 that
its opinion should not be understood to affect the
copyrightability of pictorial, graphic, and sculptural
works that may be affixed to or made part of a
container. (App.26). In other words, after ruling
that copyright protection does not apply to the shape
of a container, the panel affirmed the physical
separability test to protect elements that are affixed
to a container.

Therefore, under the panels holding, Petitioners
hookah water container would be copyrightable if it
was created from two parts. The first part would be
a piece that defines the inner surface which forms
the void in which the water is retained. The second
part would be a sleeve that defines the outer surface
which forms the artistic elements. Thus, the second
part, the sleeve, would be affixed to or made part of
the first part, the container. The panel would find
this configuration copyrightable because it is a two-
part design where the sleeve can be physically
separated from the first part. But for all practical
purposes, this configuration would function and look




18
the same as Petitioners single-piece hookah water
container. Nevertheless, a two-piece design would be
copyrightable whereas a single-piece design is not.
This is a difficult concept to accept since the only
practical difference would be that the two-piece
design is manufactured differently than the single-
piece design. In other words, the panels holding in
the present case, determines the copyrightability of
useful articles by the way it is manufactured. Such
is not consistent with 17 U.S.C. 101.

Accordingly, 17 U.S.C. 101 is sufficiently
ambiguous that both the district court and the panel
of 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 only
courts confused by the ambiguity of 17 U.S.C. 101.
The Court of Appeals for the District of Columbia
Circuit 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 held
that copyright protection is not available for the
overall shape or configuration of a utilitarian article,
no matter how aesthetically pleasing that shape may
be. See Esquire v. Ringer, supra, 591 F.2d at 800.
Thus, in Esquire v. Ringer, copyright protection was
denied to the overall shape of lighting fixtures.

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




19
examined the copyrightability of wire-spoked
automobile wheel covers. Unlike the D.C. Circuit,
the Eleventh Circuit purported to accept the
conceptual separability test but limited protection to
only those conceptually separable elements that
constitute ornamental or superfluous designs a
standard hard to distinguish from physical
separability. 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 conceptual
separability are found in a trio of Second Circuit
opinions each with a lengthy dissent. Despite the
care devoted by the Second Circuit to this issue, its
holdings are inconsistent, primarily due to the
ambiguity 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 held
that decorative belt buckles were copyrightable. In
criticizing the Esquire v. Ringer determination that
conceptual separability was an isolated reference in
the House Report, the Second Circuit found that the
legislative intent as expressed in the House
Report specifically refers to elements that
physically or conceptually, can be identified as
separable from the utilitarian aspects of a useful
article. See Id. at 993.

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




20
in light of its functional elements, the Second Circuit
found the belt buckles copyrightable pursuant the
conceptual separability test because the primary
ornamental aspect of thebuckles is conceptually
separable from their subsidiary utilitarian function.
See Id. at 993.

In dissent, Judge Weinstein cited Esquire v.
Ringer with approval and interpreted 17 U.S.C. 101
as extending protection only to ornamental or
superfluous designs contained within useful articles,
a concept difficult to distinguish from physical
separability. See Id. at 996. Judge Weinstein also
recognized that with this matter, important policies
are at stake:

Should we encourage the artist and increase
the compensation to the creative? Or should
we allow cheap reproductions which will
permit our less affluent to afford beautiful
artifacts?. See Id. at 999.

In his dissent, Judge Weinstein concluded that
the belt buckles were not copyrightable. He
explained his result as follows:

[T]his result enables the commercial pirates
of the marketplace to appropriate for their
own profit, without any cost to themselves,
the works of talented designers who enrich
our lives with their intuition and skill. The
crass are rewarded, the artist who creates
beauty is not. All of us are offended by the
flagrant copying of anothers work. This is
regrettable, but it is not for this court to
twist the law in order to achieve a result
Congress has denied. See Id. at 994.





21
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 Circuit
revisited conceptual separability. The works at issue
were life-sized mannequins of human torsos designed
for use in displaying clothing in stores. The panel
did not agree that copyrightability was dictated by
the primary/subsidiary language in Kieselstein-
Cord v. Accessories by Pearl. Instead, it
distinguished the two cases and enunciated a new
standard for conceptual separability as follows:

What distinguishes those buckles from the
Barnhart forms is that the ornamented
surfaces of the buckles were not in any
respect required by their utilitarian
functions; the artistic and aesthetic features
could thus be conceived of as having been
added to, or superimposed upon, an
otherwise utilitarian article. The unique
artistic design was wholly unnecessary to
performance of the utilitarian function. In
the case of the Barnhart forms, on the other
hand, the features claimed to be aesthetic or
artistic, e.g., the life-sized configuration of
the breasts and the width of the shoulders,
are inextricably intertwined with the
utilitarian feature, the display of clothes.
See Id. at 419.

Thus, the Second Circuit in Carol Barnhart, Inc.
v. Economy Cover Corp., enunciated a new standard
for conceptual separability: the artistic elements
must be wholly unnecessary to the useful articles
utilitarian function.





22
In dissent, Judge Newman outlined his own
approach as follows:

For a design feature to be conceptually
separable from the utilitarian aspects of the
useful article that embodies the design, the
article must stimulate in the mind of the
beholder a concept that is separable from the
concept evoked by its utilitarian function.
See Id. at 422.

Under Judge Newmans test, the beholder is
the ordinary reasonable observer and the requisite
separateness will exist whenever the design creates
in the mind of the ordinary observer two different
concepts that are not inevitably entertained
simultaneously. See Id. In his dissent, Judge
Newman further explained as follows:

I believe we would be more faithful to the
Congressional scheme if we insisted that a
concept, such as that of a work of art, is
separate from the concept of an articles
utilitarian function only when the non-
utilitarian concept can be entertained in the
mind of the ordinary observer without at the
same time contemplating the utilitarian
function. This temporal sense of
separateness permits the designs of some
useful articles to enjoy copyright protection,
as provided by the 1976 Act, but avoids
according protection to every design that can
be appreciated as a work of art, a result
Congress rejected. See Id. at 423.





23
c) Brandir International, Inc. v.
Cascade Pacific Lumber Co.
In Brandir International, Inc. v. Cascade Pacific
Lumber Co., 834 F.2d 1142 (1987). The Second
Circuit took another shot at conceptual separability
in a case involving a bicycle rack that had originally
been created as a work of art, a wire sculpture, but
was later modified to make it work as a bicycle rack.
The Second Circuit found that the bicycle rack was
not copyrightable under the conceptual separability
test. In reaching its decision, the Second Circuit
described Judge Newmans dissent in Carol Barnhart
as illuminating. See Id. at 1144. Nevertheless, the
Second Circuit ruled out Judge Newmans test with
reluctance and created a new test for conceptual
separability based mostly on an article by Professor
Robert C. Denicola, entitled Applied Art and
Industrial Design: A Suggested Approach to
Copyright in Useful Articles, 67 Minn.L.Rev. 707,
709-717 (1983). The Second Circuits newly created
test for conceptual separability is as follows:

[I]f design elements reflect a merger of
aesthetic and functional considerations, the
artistic aspects of a work cannot be said to be
conceptually separable from the utilitarian
elements. Conversely, where design
elements can be identified as reflecting the
designers artistic judgment exercised
independently of functional influences,
conceptual separability exists. See Id. at
1145.

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




24
identified as reflecting the designers artistic
judgment.

In dissent, Judge Winter took issue with the
focus on the design process. He saw no reason why
the bicycle racks copyright status should vary
depending on whether the designer serendipitously
chose the final designduring his initial sculptural
musings or whether the original design had to be
slightly modified to accommodate bicycles, noting
that the statutory language turns on how the artistic
elements of the useful article are perceived, not how
they were developed. See Id. at 1152. Instead, Judge
Winter preferred Judge Newmans mind of the
beholder test in his Carol Barnhart dissent.

Accordingly, after thoughtful analysis of
conceptual separability in three different cases, the
Second Circuit has been unable to create one test
that captures the enactment of Congress in 17 U.S.C.
101. Instead, the Second Circuit developed four
different tests: (1) the primary ornamental versus
subsidiary utilitarian test of Kieselstein-Cord v.
Accessoties by Pearl, Inc.; (2) the artistic elements
must be wholly unnecessary to the useful articles
utilitarian function test of Carol Barnhart, Inc. v.
Economy Cover Corp.; (3) the designers artistic
judgment test of Brandir International, Inc. v.
Cascade Pacific Lumber Co.; and (4) Judge
Newmans mind of the beholder test in his Carol
Barnhart dissent.

The Second Circuit tests are in addition to the
D.C. Circuits dismissal of conceptual separability
as an isolated reference in the House Report. Lets
not forget the Eleventh Circuits ornamental and
superfluous design test that is hard to distinguish
from the physical separability test.




25
2. Ninth Circuits experience with
conceptual separability is limited
and conflicts with that of the
Second 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 advertising
display folders containing carpet samples were not
copyrightable because:

Fabricas folders do not have artistic
features that can be separated from their
utilitarian function. There was no
substantial evidence that the folders existed
for any reason independent of their
utilitarian function as advertising and
marketing tools. See Id. at 894.

Thus, rather than evaluating the separability of
the individual elements of the useful article, the
Ninth 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 denied
copyrightability because the folders did not exist for
any reason other than for serving as advertising and
marketing tools, thus, as useful articles.

The Ninth Circuits reliance on the actual use of
the article rather than the separability of the artistic
elements contained therein is reminiscent of the
district courts holding in the present case that the
fact 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.




26
(App.22). Such approach conflicts with the Second
Circuit decisions and with this Courts decision in
Mazer v. Stein that nothing in the copyright statute
[supports] the argument that the intended use or use
in industry of an article eligible for copyright bars or
invalidates 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 a
vodka bottle was not copyrightable for the following
reason:

The Skyy vodka bottle, although attractive,
has no special design or other feature that
could exist independently as a work of art. It
is essentially a functional bottle without a
distinctive shape. See Id. at 1080.

Thus, the Ninth Circuit determined that the
vodka bottle did not have any artistic elements for
which to conduct a separability analysis. The court
found that the bottle did not have a distinctive
shape. 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 was
adopted by the Ninth Circuit in the present case,
expressly states as follows:




27
[T]he Copyright Offices test for conceptual
separability is enunciated in Esquire v.
Ringer as expressed in Compendium II of
Copyright Office Practices, Ch. 500, 505.03
(1984). (App.31).
The Compendium II explains that conceptual
separability means that the subject features are:
clearly recognizable as a pictorial, graphic,
or sculptural work which can be visualized
on paper, for example, or as a free-standing
sculpture, as another example, independent
of the shape of the useful article, i.e., the
artistic features can be imagined separately
and independently from the useful article
without destroying the basic shape of the
useful article. The artistic features and the
useful article could both exist side by side
and be perceived as fully realized, separate
works one an artistic work and the other a
useful article. (App.39)

As such, the Copyright Offices test is based on
Esquire v. Ringer where the D.C. Circuit dismissed
the conceptual separability test as an isolated
reference in the House Report and held that
copyright protection is not available for the overall
shape or configuration of a utilitarian article, no
matter how aesthetically pleasing that shape may
be. See Esquire v. Ringer, supra, 591 F.2d at 800.

As discussed supra, Esquire v. Ringer was
criticized by the Second Circuit in its trio of cases. In
fact, when addressing the latest Second Circuit
holding for conceptual separability, the designers
artistic judgment test in Brandir International v.




28
Cascade Pacific Lumber, the Copyright Office
acknowledged as follows:

Judging a creators intentis not the type
of judgment the Office normally undertakes
in its examining process. Such judgments
would necessarily rely on interpreting the
specific actions surrounding the creation of a
work; these actions occur outside the
registration process. Any investigation and
questioning of the method and circumstances
of creation lie beyond the administrative
capability of the Office. (App.46 App.47).

Therefore, the Copyright Office acknowledged its
limitations in applying the tests of the Second
Circuit. Thus, rather than adopting a test faithful to
the Congressional scheme, the Copyright Office
elected to follow the easier test from the D.C. Circuit
that is almost undistinguishable from physical
separability.

But, even under the Copyright Offices test,
Petitioners hookah water container was granted
registration as a sculpture/3-D artwork. (App.57).
Nevertheless, the panel in the present case adopted
the Copyright Offices test and invalidated
Petitioners registration. Thus, using the same
Copyright Offices test the Copyright Office granted
protection to Petitioners sculpture/3-D artwork,
whereas the Ninth Circuit denied such protection.

In all, the ambiguity of 17 U.S.C. 101 has
spawned multiple tests for conceptual separability
that conflict with one another and produce
inconsistent holdings.





29
C. The Ambiguity of Conceptual
Separability Can Be Resolved By The
Patent/Copyright Dichotomy
Identified By This Court in Mazer v.
Stein
This Court addressed the copyrightability of
useful articles in Mazer v. Stein, 347 U.S. 201 (1954)
where this Court explained that a patent gives
exclusive rights to an idea whereas a copyright gives
exclusive rights to the expression of the idea. See Id.
at 217.

A suitably imaginative person can bring to mind
a variety of shapes for a lamp base that would
equally fulfill its utilitarian requirements. The
shape can be tall, short, narrow, wide, cubic,
spherical, spiral, and anything in between. Applying
this Courts idea/ expression of the idea concept, the
utilitarian aspect of the lamp base is the idea and
its distinctive shape is the expression of the idea.
Whether designing a bridge, a bicycle, or a belt
buckle, there always seems to be some choice as to
how the item can be shaped or designed without
affecting its utilitarian requirements. Thus, Patent
Law inhibits others from practicing the idea whereas
Copyright Law is narrower in scope and inhibits
others from only copying the expression of the idea.

After all, this Court explained as follows:

The copyright protects originality rather
than novelty or invention conferring only
the sole right of multiplying copies. Absent
copying there can be no infringement of
copyright. Thus, respondents may not
exclude others from using [lamp bases]; they




30
may only prevent use of copies of their [lamp
base]... See Id. at 218.

However, there are cases in which the shape of
an item is so intertwined with its utilitarian aspect
that granting copyright protection would result in a
de facto patent. This concept was discussed by the
Court of Appeals for the Third Circuit as follows:

It may be easy to grant copyright protection
to a statuette used as a lamp base without
impairing the wide availability of lamps.
However, if an artist claimed copyright
protection for his design of the shape of an
automobile, for example, and the shape of
the car made it more aerodynamic, then
allowing protection for the artists design
might limit the availability of cars with this
improvement in aerodynamics. This is so
because it may be difficult to separate the
designs appearance, from its ability to
improve automobile performance. Protecting
the shape via the copyright laws might thus
afford the artist a de facto patent on an
industrial innovation that would otherwise
not satisfy the more rigorous requirements
necessary to obtain a patent, as opposed to a
copyright. See Masquerade Novelty, Inc. v.
Unique Industries, Inc., 912 F.2d 663, 669
(3rd Cir. 1990).

Thus, the Third Circuit provides another
perspective that is consistent with the Congressional
enactment of 17 U.S.C. 101. After all, copyright
protects originality while patent protects novelty or
invention. See Mazer v. Stein, supra, 347 U.S. at
218.





31
Now, consider a case in which the shape of a
lamp base was linked to some functional element of
the lamp whereby a different shape would result in a
lamp without the same functional element. For
example, a shape that enhances the distribution of
light from the lamp. In such a case, allowing
copyright to protect the shape of the lamp base would
not only inhibit others from copying the shape, but it
would also inhibit others from making lamps with
the same functional element. Thus, the shape would
be so intertwined with the utilitarian aspect of the
lamp that a copyright would result in a de facto
patent.

Thus, Petitioner in the present case contends
that with 17 U.S.C. 101, Congress wished to avoid
expanding the copyright protection of useful articles
so much that it overlaps or encroaches on the rights
provided by Patent Law. In other words, Congress
wished to avoid creating a new form of intellectual
property, a hybrid between patent and copyright.

As this Court explained in Mazer v. Stein, the
clear boundary between patents and copyrights is
that patents protect an idea whereas copyrights
protect the expression of the idea. It is the cases in
which the protection of copyrights overlap with that
of patents that poses the most difficult challenges.
With the conceptual separability test, Congress likely
wished to prevent the creation of a third monopoly,
that of a de facto patent.

Therefore, Petitioner contends that the focus in
analyzing conceptual separability should primarily
be on the effect that the shape or artistic element has
on the utilitarian aspect of a useful article. If the
artistic element is so intertwined with the utilitarian
aspects that copyright protection thereof would




32
inhibit others from duplicating the utilitarian aspect,
then the artistic element is not conceptually
separable from the utilitarian aspects.

Accordingly, with conflicting interpretations and
tests, review is warranted to resolve the ambiguity of
conceptual 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 properly
applied by most courts in cases involving physical
separability as this concept has been well-
established since before the enactment of the
Copyright Act of 1976. However, 17 U.S.C. 101
becomes substantially murky in cases where artistic
elements of a useful article cannot be physically
separated. The present case falls within this narrow
spectrum of cases that have twisted [courts] into
knots. Petitioners hookah water container is a
single piece design. Much like a flower vase, a jar, or
most goblets, the hookah water container is a single
glass piece that is molded into shape without any
parts that are added or mechanically attached.
Thus, none of the elements can be physically
detached or separated.

However, despite the single piece design, hookah
water containers come in a variety of shapes and
sizes while still meeting the same functional
requirement of forming an internal void in which
water is retained. Furthermore, the shape of most




33
hookah water containers are created by artists as a
medium to express their artistry and aesthetic
expressions.

It has already been established that petitioners
hookah water container is a useful article and that,
like a piece of modern sculpture, [it] has a
distinctive shape that is not physically separable.
Therefore, this case is representative of the
challenges and ambiguity of 17 U.S.C. 101 as to
conceptual separability. This is the ideal case in
which this Court can effectively evaluate the various
tests of lower courts and legal scholars.

The confusion stemming from 17 U.S.C. 101 is
rampant and ranging from conservative, as in
Esquire v. Ringer in which conceptual separability
was nothing more than an isolated reference in the
House Report; to liberal, as in Brandir International,
Inc. v. Cascade Pacific Lumber Co. in which the
designers artistic judgment determines
copyrightable design elements. As such, it is well
recognized that [c]ourts have twisted themselves
into knots trying to create a test to effectively
ascertain whether the artistic aspects of a useful
article can be identified separately from and exist
independently of the articles utilitarian function.
See Masquerade Novelty, Inc. v. Unique Indus., 912
F.2d 663, 670 (3d Cir. 1990).

In fact, the Ninth Circuit in the present case
found that 17 U.S.C. 101 is sufficiently ambiguous
to justify deference to the Copyright Offices
interpretation and ignore the interpretations of the
Second Circuit and other circuits. (App.7, fn.3).
Thus, the ambiguity of 17 U.S.C. 101 caused the
Ninth Circuit not to evaluate that text of the
enactment of Congress but, instead adopt the opinion




34
of the administrative branch. As Judge Bea
explained: [t]his misplaces the power of enactment
of laws from the legislative to the administrative
branch and is contrary to [the] concept of the
separation of powers. (App.12).

Even more, the Copyright Offices interpretation
adopts the holding in Esquire v. Ringer that has been
widely criticized by other circuits and legal scholars.
The Copyright Office dismissed the thoughtful
analysis of the Second Circuit not because it is not
faithful to the Congressional scheme, but because of
the Offices own limitations in the examining process.
The Copyright Office admittedly found that
application of the Second Circuit test lies beyond the
administrative capability of the Office. (App.47).
Nevertheless, the Ninth Circuit in the present case
adopted the Copyright Offices interpretation and
ignored decades of thoughtful analysis by other
circuits, especially the Second Circuit.

Accordingly, the present case is ideal for this
Court to review the thorny issue of conceptual
separability and resolve the ambiguity of 17 U.S.C.
101.
III. REVIEW IS ESSENTIAL SINCE THE
NINTH CIRCUITS ORDER
PRACTICALLY ABOLISHES
CONCEPTUAL SEPARABILITY

Before filing this lawsuit, Petitioner acquired a
registration from the Copyright Office for its hookah
water container. Petitioners Copyright Registration
is for a sculpture/3-D artwork titled Hookah Water
Container. (App.57). With its registration on hand,




35
Petitioner filed this lawsuit against Respondent for
copying the sculpture/3-D aspect of its hookah water
container. Despite the Copyright Offices decision to
grant Petitioner a registration, the Ninth Circuit
invalidated Petitioners registration and held that
the shape of any container is not copyrightable as a
matter of law.

Petitioners argument for copyright protection
was well-founded in fact and in many of the
interpretations and tests of conceptual separability
by 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 they
practically made sure that conceptual separability is
not raised again by other litigants. They practically
punished Petitioner by ordering it to pay for all of
respondents attorneys fees. The lower courts found
that such award of attorneys fees was partly
justified by the need for deterrence of similarly
frivolous claims against innocent Defendants.
(App.10). With a published opinion, the panel sent a
resounding message that claims of copyright
infringement based solely on conceptual
separability are frivolous and must be deterred.

With this order, the Ninth Circuit has sent us
back to pre-1976 when physical separability was
the only basis for copyright infringement of useful
articles. In essence, the Ninth Circuits holding in
the present case equates to the Esquire v. Ringer
dismissal of conceptual separability as an isolated
reference in the House Report.

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




36
test that was enacted by Congress pursuant the
Copyright Act of 1976.

Furthermore, [i]mportant policies are obviously
at stake. Should we encourage the artist and
increase the compensation to the creative? Or should
we allow cheap reproductions which will permit our
less 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 United
States Constitution is intended to promote progress
in the arts by granting artists the exclusive right to
their work. Thus, Congress enacted both the patent
act to protect ideas and the copyright act to protect
the expression of ideas. With these, Congress
attempted to protect all intellectual property.
Congress could not have intended to create a gap in
intellectual property law which would permit the
lawful copying of an artists work expressed in the
shape of a useful article. Such gap in intellectual
property law would enable the commercial pirates of
the marketplace to appropriate for their own profit,
without any cost to themselves, the works of talented
designers who enrich our lives with their intuition
and skill. The crass is rewarded, the artist who
creates beauty is not. See Id. at 994. More
important, such gap in intellectual property law flies
in the face of the spirit of Article I, section 8 of the
U.S. Constitution.

This issue is more critical now that in 1976
because we are now blessed with technological
advancements that were not available then. More
specifically, artists now have access to advanced 3-D
printers that can produce artistic useful articles in
minutes. It is widely anticipated that such new
technologies will drastically enhance the artists
ability to blend function with art or aesthetics. Thus,




37
this issue of conceptual separability will only become
more important.

Accordingly, this is the ideal time and the ideal
case for this Court to review the thorny issue of
conceptual separability and resolve the ambiguity of
17 U.S.C. 101.


_____________________ _____________________


CONCLUSION

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


Respectfully submitted,

DATED: August 26, 2014

By:_s/Louis F. Teran___

Louis F. Teran
Attorney for Inhale, Inc.




App. 1

APPENDIX A
FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR 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 AND
AMENDED OPINION

Appeal from the United States District Court
for the Central District of California
Otis D. Wright, II, District Judge, Presiding

Argued and Submitted
November 4, 2013 Pasadena, California

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

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

Opinion by Judge OScannlain;




App. 2

Concurrence by Judge Bea


SUMMARY
1


Copyright

The panel filed an amended opinion affirming the
district courts summary judgment and award of
attorneys fees in favor of the defendant in an action
under the Copyright Act.

The panel held that the shape of a hookah water
container was not entitled to copyright protection.
The panel held that the container, a useful article,
was not copyrightable because it did not incorporate
sculptural 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, the
panel held that whether an items shape is distinctive
does not affect conceptual separability. The panel
also held that the district court did not abuse its
discretion 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 be
determined by the district court.

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


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




App. 3

part of Part II.C that discusses the level of deference
owed to the Copyright Offices interpretations of the
Copyright Office. Judge Bea wrote that because the
statute was not ambiguous, it was unnecessary to
look to the Copyright Office for further guidance.

COUNSEL

Louis F. Teran, SLC Law Group, Pasadena,
California, argued the cause and filed the briefs for
Plaintiff-Appellant.

Natu J. Patel, The Patel Law Firm, P.C., Irvine,
California,
argued the cause and filed the brief for Defendants-
Appellees.


ORDER

The opinion filed June 3, 2014, and published at
F.3d , 2014 WL 2465052, is amended as follows:

On slip opinion page 8, lines 56 of footnote 2,
replace <Under some interpretations of 17 U.S.C.
101, distinctiveness of shape would be relevant. See,
e.g., Brandir> with <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.
Brandir>.

On slip opinion page 9, after <within its
shape>, replace <because the shape accomplishes
the function> with <insofar as the shape
accomplishes the function>.




App. 4


An amended opinion is filed concurrently with
this order.


OPINION

OSCANNLAIN, Circuit Judge:

We must decide whether the shape of a hookah
water container
2
is entitled to copyright protection.

I.

Inhale, Inc. claims copyright protection in the
shape of a hookah water container that it first
published on August 29, 2008 and registered with the
United States Copyright Office on April 21, 2011. At
both the time of publication and the time of
registration, the container included skull-and-
crossbones images on the outside.

Less than a month after registration, Inhale sued
Starbuzz Tobacco, Inc. and Wael Salim Elhalawani
(collectively, Starbuzz) for copyright infringement.
Inhale claimed that Starbuzz sold hookah water
containers that were identical in shape to Inhales


2
A hookah is a device for smoking tobacco. It contains coals
that cause the tobacco to smoke. A users 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.




App. 5

container. The allegedly infringing containers did not
contain skull-and-crossbones images. After
determining that the shape of the water container is
not copyrightable, the district court granted
summary judgment in favor of Starbuzz.

II.

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

A

The parties agree that Inhales hookah water
container is a useful article. As the design of a
useful article, the shape of the container is
copyrightable only if, and only to the extent that, [it]
incorporates . . . sculptural features that can be
identified separately from, and are capable of
existing independently of, the utilitarian aspects of
the 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 either
physical or conceptual separability. See 1 Melville B.
Nimmer & David Nimmer, Nimmer on Copyright
2.08[B][3], at 2-992-100 (2011). Inhale does not
argue that the containers shape satisfies the
requirements of physical separability. Thus, we
consider only conceptual separability.





App. 6

B

Relying on Poe v. Missing Persons, 745 F.2d 1238
(9
th
Cir. 1984), Inhale argues that conceptual
separability is a question of fact. Inhales reliance on
Poe is misplaced. Poe decided that whether an item is
a 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 vodka
bottle was not separable from its utilitarian features.
Rather than treat separability as a question for the
jury, we conducted our own analysis. See id at 1080.
([T]he district court did not identify any artistic
features of the bottle that are separable from its
utilitarian ones. We also find none.). In Fabrica Inc.
v. El Dorado Corp., 697 F.2d 890 (9th Cir. 1983), we
affirmed a district courts directed verdict in favor of
a copyright defendant on the ground that the
allegedly infringed work was not copyrightable. We
assessed separability ourselves. See id. at 893
(There is no element of the folders that can be
separated out and exist independently of their
utilitarian aspects.).

Our precedent suggests that whether a useful
article has conceptually separable features is a mixed
question of law and fact. See Pullman-Standard v.
Swint, 456 U.S. 273, 289 n.19 (1982) (describing
mixed questions of law and fact as those in which
the historical facts are admitted or established, the
rule of law is undisputed, and the issue is whether
the facts satisfy the statutory standard). Because
both parties agree that the hookah water container is
a useful article that holds water within its shape, all
that is left is the application of the legal standard to




App. 7

those facts. Thus, whether the shape of the container
is conceptually separable is a conclusion that we
review de novo. See Mathews v. Chevron Corp., 362
F.3d 1172, 1180 (9th Cir. 2004) (Mixed questions of
law and fact are reviewed de novo; however, the
underlying factual findings are reviewed for clear
error.).

C

Relying in part on Ets-Hokin, the district court
ruled that the containers shape is not conceptually
separable from its utilitarian features. In Ets-Hokin,
we held that the shape of a vodka bottle without a
distinctive shape was not conceptually separable.
See 225 F.3d at 1080. Attempting to distinguish this
case from our precedent, however, Inhale emphasizes
the distinctive shape of its hookah water container.
Therefore, we must determine whether
distinctiveness of shape affects separability.

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


3
Courts have twisted themselves into knots trying to create a
test 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. Brandir Intl,
Inc. v. Cascade Pac. Lumber Co., 834 F.2d 1142, 1145 (2d Cir.




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 an
internal manual, Compendium of Copyright Office
Practices). Because Chevron deference does not apply
to internal agency manuals or opinion letters, we
defer to the Copyright Offices views expressed in
such materials only to the extent that those
interpretations have the power to persuade. See
Christensen v. Harris Cnty., 529 U.S. 576, 587 (2000).

In an opinion letter and an internal manual, the
Copyright Office has determined that whether an
items shape is distinctive does not affect
separability. See Letter from Nanette Petruzzelli,
Assoc. Register, U.S. Copyright Office, to Jeffrey H.
Brown, attorney for MSRF, Inc., Re: Fanciful
Ornamental Bottle Designs 19, Control No. 61-309-
9525(S), April 9, 2008. That determination was based
on the principle that analogizing the general shape
of a useful article to works of modern sculpture is
insufficient for conceptual separability. Compendium
of Copyright Office Practices II (Compendium II)
505.03. Although Inhales water container, like a
piece of modern sculpture, has a distinctive shape,
[t]he shape of the alleged artistic features and of
the 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).




App. 9


Because the Copyright Offices reasoning is
persuasive, we adopt it for this case. The shape of a
container is not independent of the containers
utilitarian functionto hold the contents within its
shape insofar as the shape accomplishes the
function. The district court correctly concluded that
the shape of Inhales hookah water container is not
copyrightable.
4


In summary, we hold that any part of a
container that merely accomplishes the containing is
not copyrightable. We do not mean to suggest that, in
some other case, no elements of a container can be
identified separately from, and are capable of
existing independently of, the container. 17 U.S.C.
101. Here, though, Inhale does not argue in its
opening brief that the exterior shape of the drooping
ring is conceptually separable because the interior
shape 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 analyzed
separately. Therefore, its argument in the petition for
rehearing, that the exterior shape of the drooping
ring is uniquely separable, is waived. See Greenwood
v. Fed. Aviation Admin., 28 F.3d 971, 977 (9
th
Cir.
1994). In addition, we emphasize that Inhale does not


4
That the Copyright Office issued a certificate of registration to
Inhale 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.




App. 10

argue that the imagery on the container is
copyrightable. Our opinion should not be understood
to affect the copyrightability of [p]ictorial, graphic,
and sculptural works, 17 U.S.C. 101, that may be
affixed to or made part of a container.

III.

A

Exercising its discretion under 17 U.S.C. 505,
the district court awarded $111,993 in attorneys fees
to Starbuzz. The district court considered the five,
non-exclusive factors listed in Jackson v. Axton: [1]
the degree of success obtained; [2] frivolousness; [3]
motivation; [4] objective unreasonableness (both in
the factual and legal arguments in the case); and [5]
the need in particular circumstances to advance
considerations of compensation and deterrence. 25
F.3d 884, 890 (9th Cir. 1994) (citation omitted). In
ruling that the factors favored an award to Starbuzz,
the district court relied on, among other things,
Starbuzzs total success on the merits and the need
for deterrence of similarly frivolous claims against
innocent Defendants.

The district court did not abuse its discretion
because the reasons given by the district court in
this case are well-founded in the record and are in
keeping with the purposes of the Copyright Act,
Fantasy, Inc. v. Fogerty, 94 F.3d 553, 560 (9th Cir.
1996). A successful defense furthers the purposes of
the Copyright Act just as much as a successful
infringement suit does. See Fogerty v. Fantasy, Inc.,
510 U.S. 517, 527 (1994) ([D]efendants who seek to
advance a variety of meritorious copyright defenses
should be encouraged to litigate them to the same




App. 11

extent that plaintiffs are encouraged to litigate
meritorious claims of infringement.).

B

Starbuzz also requests attorneys fees for this
appeal under 17 U.S.C. 505. Section 505 gives us
the same discretion that it gave to the district court.
See Disenos Artisticos E Industriales, S.A. v. Costco
Wholesale Corp., 97 F.3d 377, 382 (9th Cir. 1996). We
award attorneys fees incurred in the defense of this
appeal to Starbuzz in an amount to be determined by
the district court. See Fantasy, 94 F.3d at 561([W]e
conclude that fees are warranted under
505 inasmuch as it served the purposes of the
Copyright Act for Fogerty to defend an appeal so that
the district courts fee award would not be taken
away from him.).
IV.

For the foregoing reasons, we affirm the district
courts grant of summary judgment and award of
attorneys fees to Starbuzz. We award attorneys fees
for this appeal in an amount to be determined by the
district court.

AFFIRMED AND REMANDED.



BEA, Circuit Judge, concurring in part:

I concur with the majoritys opinion, except for
the part of Part II.C which discusses the level of
deference owed to the Copyright Offices
interpretations of the Copyright Act. The text of 17
U.S.C. 101 does not suggest that distinctiveness is




App. 12

an element of separability. Because the statute is
not ambiguous in this respect, it is unnecessary to
look to the Copyright Office for further guidance.

Once we start engrafting administrative
interpretation to our opinions, there is a tendency to
look elsewhere than the text of the enactments of
Congress. This misplaces the power of enactment of
laws from the legislative to the administrative
branch and is contrary to my concept of the
separation of powers.







App. 13

APPENDIX B
NOT FOR PUBLICATION
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

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


INHALE, INC.,

Plaintiff,

versus.

STARBUZZ TOBACCO, INC.; et al.,

Defendants,

ORDER GRANTING IN PART DEFENDANTS
MOTION FOR SUMMARY JUDGMENT


Filed June 18, 2012


Before: Otis D. Wright, II, District Judge


I. INTRODUCTION

Pending before the Court is Defendants Motion
for Summary Judgment. (Dkt. No. 40.) The Court has
considered the parties briefs, submitted evidence,
and oral arguments. For the following reasons, the
Court GRANTS IN PART Defendants Motion.





App. 14

II. BACKGROUND

Plaintiff Inhale, Inc. designs, manufactures, and
sells various types of smoking products, including
hookahs. (Compl. 5.) A hookah is a device used to
smoke tobacco, among other things. A hookahs
design directs tobacco smoke down through a pipe
and into a water container, which filters and cools
the tobacco smoke for inhalation. The schematic
below depicts a hookahs design and function.
















A hookah typically comprises three distinct
sectionsa bowl, a body, and a water container. The
bowl mounts on top of the body; the body mounts on
top of the water container. A user places tobacco in
the bowl and hot coals on top of the tobacco, causing
the 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




App. 15

and into the water inside the water container. The
water filters and cools the smoke. The filtered smoke
then bubbles out of the water and is inhaled by the
user through the hose.
On August 29, 2008, Plaintiff published a water
container decorated with a skull and crossbones
graphic. (SUF 1.) On April 21, 2011, Plaintiff
registered its water container with the United States
Copyright Office. (SUF 3.) Plaintiffs copyright
registration is for a sculpture/3-D artwork titled
Hookah Water Container. (Teran Decl. Ex. D.)
On May 4, 2011, Plaintiff sued Defendants for
copyright infringement, alleging Starbuzz sold water
containers, beginning on December 29, 2010, that
infringe Plaintiffs copyrighted design. (SUF 2.)
Plaintiff alleges infringement based solely on the
shape of the water container, and not on the skull
and crossbones graphic. (SUF 6.) For the purposes
of this lawsuit, Plaintiff disclaimed copyright
protection to the skull and crossbones. (Mot. 3; SUF
6.)
Defendants seek summary judgment of
noninfringement. Specifically, Defendants claim that
Plaintiff cannot prevail in this action because the
shape of the water container is not copyrightable. In
the alternative, Defendants seek summary judgment
that Plaintiff is not entitled to attorneys fees or
statutory damages under the Copyright Act, if the
Court finds that the shape of the water container is
entitled to a copyright.

III. LEGAL STANDARD

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




App. 16

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

A genuine issue of material fact must be more
than a scintilla of evidence, or evidence that is
merely 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 the
suit under the governing law. Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 248 (1968). An issue is
genuine 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 of
events differ, courts are required to view the facts
and draw reasonable inferences in the light most
favorable to the nonmoving party. Scott v. Harris,
550 U.S. 372, 378 (2007).
IV. DISCUSSION

A. Copyright infringement

To establish copyright infringement, a plaintiff
must prove (1) ownership of a valid copyright in the
infringed work, and (2) copying of the copyrighted
works original elements. Feist Publns, Inc. v. Rural
Tel. Serv. Co., 499 U.S. 340, 361 (1991). A copyright
registration made within five years of a works first
publication is prima facie evidence of the validity of
the copyright and of the facts stated in the




App. 17

certificate. 17 U.S.C. 410(c).
Plaintiffs copyright registrationfor a
sculpture/3-D artwork titled Hookah Water
Containerwas issued less than five years after the
work was first published. (Teran Decl. Ex. D.) Thus,
this is prima facie evidence that this copyright is
valid. In registering its design, Plaintiff submitted
photographs of a water container with a skull and
crossbones graphic to the Copyright Office. (Compl.
Ex. A.) One such photograph is reproduced below.



















In this litigation, Plaintiff disclaimed copyright
protection to the skull and crossbones graphic. (Mot.
3; SUF 6.) But the effect of the disclaimer is
uncertain. That is, it is unclear whether Plaintiffs
disclaimer affects the copyrights presumption of
validity; or whether the disclaimer is effective




App. 18

without formally declaring so before the United
States Copyright Office.

The parties have neglected to discuss this issue.
Thus, the Court declines to opine on the effect of the
disclaimer. Instead, the Court will assume the
disclaimer is valid.
5

Assuming Plaintiffs disclaimer is effective, only
the shape of the water container remains under the
copyright. Defendants argue that the water
container without the skull and crossbones
graphicis not copyrightable. An accused infringer
can rebut the presumption of validity of a copyright
registration. United Fabrics Intl, Inc. v. C&J Wear,
Inc., 630 F.3d 1255, 1257 (9th Cir. 2011). To rebut
the presumption, the accused infringer must offer
some evidence to dispute the plaintiffs prima facie
case of infringement. Id.

Defendants provide expert testimony that the
water container is a useful article not subject to
copyright protection because its artistic features are
inseparable from its utilitarian features. (Lind Decl.
4.) The Copyright Act protects original works of


5
Assuming Plaintiffs disclaimer is ineffective, the copyright
registration consists of two separable elementsthe skull and
crossbones graphics and the water container itself. Plaintiff
does not allege that Defendants have sold a water container
bearing the skull and crossbones graphic. (See Compl. Ex. C.)
And as discussed below, the shape of the water container is not
copyrightable; copyright protection extends to only the skull and
crossbones graphic. Accordingly, Defendants do not infringe
Plaintiffs copyright if the disclaimer is void.




App. 19

authorship fixed in any tangible medium of
expression. 17 U.S.C. 102. But copyright protection
does not fully extend to works that are useful
articlesarticles having an intrinsic utilitarian
function that is not merely to portray the appearance
of the article or to convey information. 17 U.S.C.
101. A useful article is copyrightable only to the
extent that its pictorial, graphic, or sculptural
features can be identified separately fromand are
capable of existing independently ofthe utilitarian
purposes of the article. Id.; Fabrica, Inc. v. El Dorado
Corp., 697 F.2d 890, 893 (9th Cir. 1983). In other
words, a useful article taken as a whole is not eligible
for 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 a
useful article that holds water for and serves as a
base to an attached hookah. (SUF 8, 10.) Because
only the overall shape of the water container remains
for this analysis, copyright protection for the water
container hinges on whether this shape can be
identified separately from, and is capable of existing
independently of, the utilitarian aspects of the water
container.

Plaintiff contends the water containers shape
can be identified separately from its utilitarian
aspects and thus is copyrightable. (Oppn 1112.) In
support, Plaintiff points to other hookah water
containers with different shapes and argues that the
water containers shape is not critical to its
functionand so, the water containers shape is
separate from its function. (Id.) The Court rejects
this reasoning.





App. 20

The overall shape of a useful article is not
copyrightable no matter how aesthetically pleasing
that shape may be. Esquire, Inc. v. Ringer, 591 F.2d
796, 800 (D.C. Cir. 1978). The Copyright Offices
Compendium II expounds on this concept:
[Separability] is not met by merely
analogizing the general shape of a useful
article to works of modern sculpture, since
the alleged artistic features and the useful
article cannot be perceived as having
separate, independent existences. The shape
of the alleged artistic features and of the
useful article are one and the same . . . . The
mere fact that certain features are non-
functional or could have been designed
differently is irrelevant under the statutory
definition of pictorial, graphic, and
sculptural works. Thus, the fact that a
lighting fixture might resemble abstract
sculpture would not transform the lighting
fixture into a copyrightable work.
Compendium of Copyright Office Practices II
505.03.
In an administrative opinion, the Copyright
Office denied copyright protection to nine fancifully
shaped glass bottles. RE: Fanciful Ornamental Bottle
Designs 1-9, Control No. 61-309-9525(S), April 9,
2008. The Copyright Office opined that although the
bottles may be novel and aesthetically pleasing, they
are nevertheless created in a way that allows them to
function as . . . storage containers . . . . Thus, the
form of the containers does not reflect purely
aesthetic visions; the artistic aspects of the
containers are not separable from the utilitarian
elements. (Id. at 1011.) Photographs of these nine




App. 21

glass bottles are reproduced below.




















Likewise, the Ninth Circuit found that the
famous blue skyy Vodka bottle, although attractive,
has no special design or other features that could
exist 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 water
container from ordinary bottles, arguing that unlike
bottles that are designed specifically to store or
transport liquid, hookah water containers are only
partially filled and are not used in the same way.
(Oppn 4.) The Court is not persuaded by Plaintiffs
argument. These noted differences are irrelevant; the
fact that Plaintiff intended its water container to
serve as a liquid-holding receptacle for a hookah




App. 22

and not as a museum pieceis what matters. See Poe
v. Missing Persons, 745 F.2d 1238, 1242 (9th Cir.
1984) (The evidence presented by both sides at the
hearing . . . shows that [plaintiff] was attempting to
create a work of art which portrayed an article of
clothing.).

The shape of the water container in this case
cannot be physically or conceptually separable from
the container because the containers shape and the
container are one and the same. It matters not that
Plaintiffs water container would still be functional if
it had a different shape. Nor does it matter that
hookah water containers exist in all manners of size
and shape. The artistic aspectsif anyof Plaintiffs
water container shape, are not separable from its
utilitarian elements. Thus, with the skull and
crossbones graphic disclaimed, there is no copyright
protection for the shape of the water container.
Accordingly, Defendants do not infringe Plaintiffs
copyright.

B. Attorneys fees and statutory damages

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

V. CONCLUSION

For the reasons discussed above, Defendants
Motion for Summary Judgment of noninfringement is
GRANTED. Defendants Motion for Summary
Judgment of attorneys fees and statutory damages is
DENIED AS MOOT.




App. 23


IT IS SO ORDERED.
June 18, 2012


___________________________________
OTIS D. WRIGHT, II
UNITED STATES DISTRICT JUDGE







App. 24

APPENDIX C
FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR 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 AND
AMENDED OPINION

Appeal from the United States District Court
for the Central District of California
Otis D. Wright, II, District Judge, Presiding

Argued and Submitted
November 4, 2013 Pasadena, California

Filed January 9, 2014
Amended June 3, 2014

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

Opinion by Judge OScannlain;
Concurrence by Judge Bea




App. 25

ORDER

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

On slip opinion page 8, after <is not
copyrightable.
4
> and before the beginning of Part III,
add the following as a new paragraph:

< In summary, we hold that any part of a
container that merely accomplishes the containing is
not copyrightable. We do not mean to suggest that, in
some other case, no elements of a container can be
identified separately from, and are capable of
existing independently of, the container. 17 U.S.C.
101. Here, though, Inhale does not argue in its
opening brief that the exterior shape of the drooping
ring is conceptually separable because the interior
shape 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 analyzed
separately. Therefore, its argument in the petition for
rehearing, that the exterior shape of the drooping
ring is uniquely separable, is waived. See Greenwood
v. Fed. Aviation Admin., 28 F.3d 971, 977 (9
th
Cir.
1994). In addition, we emphasize that Inhale does not
argue that the imagery on the container is
copyrightable. Our opinion should not be understood
to affect the copyrightability of [p]ictorial, graphic,
and sculptural works, 17 U.S.C. 101, that may be
affixed to or made part of a container.>.

An amended opinion is filed concurrently with
this order.

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




App. 26

the petition for rehearing en banc. The full court has
been advised of the petition for rehearing en banc,
and no judge has requested a vote on whether to
rehear the matter. Fed. R. App. P. 35.

The petition for rehearing and the petition for
rehearing en banc are DENIED. No further petitions
for panel rehearing or for rehearing en banc will be
entertained. Starbuzzs request for an award of
attorneys fees under 17 U.S.C. 505 is GRANTED.
We award attorneys fees incurred in responding to
the petition for rehearing and rehearing en banc to
Starbuzz in an amount to be determined by the
district court on remand.















App. 27

APPENDIX D

United States Copyright Office
Library of Congress . 101 Independence Avenue
SE . Washington, DC 20559-6000 .
www.copyright.gov


April 9, 2008

Mr. Jeffrey H. Brown
Michael Best & Friedrich
Two Prudential Plaza
180 North Stetson Avenue
Suite 2000
Chicago, IL 60601-6710

RE: FANCIFUL ORNAMENTAL BOTTLE
DESIGNS 1-9
Control No. 61-309-9525 (S)

Dear Mr. Brown:

The Copyright Office Review Board has
considered your second request to review the
Examining Divisions refusal to register the
individual claims in the FANCIFUL ORNAMENTAL
BOTTLE DESIGNS 1-9, submitted on behalf of
MSRF, Inc. We apologize for the delay in getting this
response to you. After reviewing all materials
submitted in support of the claims and carefully
considering your arguments, the Review Board has
determined that all nine of the Bottle Designs cannot
be registered because they are useful articles that
contain no separable and copyrightable authorship.






App. 28

I. ADMINISTRATIVE RECORD

A. Initial submission

On January 8, 2004, you submitted for
registration claims to copyright in nine works
entitled FANCIFUL ORNAMENTAL BOTTLE
DESIGNS, numbered 1-9, on behalf of MSRF, Inc.
The photographic deposits in these works depict
transparent glass bottles apparently containing
individual slices or other pieces of fruits, vegetables,
and herbs. The applications for registration have the
boxes 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 Joy
Burns refused registration for all nine Bottle Designs
on the grounds that they are useful articles that do
not contain authorship which is both separable and
copyrightable. Ms. Burns noted that while pictorial,
graphic, and sculptural works are registrable,
designs of useful articles can be considered as
pictorial, graphic, or sculptural works only if, and to
the extent that, they incorporate such features that
can be separately identified from and have an
independent existence from the useful articles, either
physically or conceptually. Letter from Burns to
Brown of 3/9/2004, at 1.

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




App. 29

perceived as having separate, independent
existences. She further noted that where features are
an integral part of the overall shape or contour of the
useful article, no registration is possible. Finally, Ms.
Burns examined the copyrightability of the features
which may be identifiable as separable, and found
them not copyrightable inasmuch as they did not
contain the requisite amount of creative authorship
within the meaning of the copyright law and settled
case law. See Feist Publications, Inc. v. Rural
Telephone 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 of
Examiner Burns decision. You acknowledge that the
sufficiency of the creative content was to be
measured by the standards enunciated in Feist, but
asserted that the Bottle Designs are original works of
authorship under that standard. You pointed out
that the level of creativity necessary is very slight
and modest. You cited additional authorities and
noted that the threshold of creativity is so minimal
that simple shapes are registrable when selected or
combined in a distinctive manner indicating some
ingenuity, citing Atari Games Corp. v. Oman, 888
F.2d 878, 883 (D. C. Cir. 1989), Concord Fabrics v.
Marcus Brothers Textile Corp., 409 F.2d 1315 (2d
Cir. 1969), and In Design v. Lynch Knitting Mills, 863
F.2d 45 (2d Cir. 1988), inter alia. Letter from Brown
to Chief, Receiving and Processing Division, of
7/6/2004, at 1-2.

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




App. 30

components of the work, and point out some
components that should be considered, not in
isolation, but, rather, in their combination with other
elements. By way of example, you indicate that the
arrangement of letters to spell B-A-T-H and V-I-N-E-
G-A-R, combined with the putative original shapes of
designs #1 and #5, respectively, create copyrightable
3-dimensional sculptures. You enumerate the other
designs and assert that the original, artistic bulges,
twists, and artful cuts of those bottles also create
copyrightable sculptural works. You also assert that
the overall look and feel of the works add up to
copyrightable as a whole. Finally, you assert that the
creativity in the designs at issue exceed those in the
designs found copyrightable by the courts in such
cases as Concord Fabrics and In Design. Letter from
Brown of 7/6/2004, at 2-3.

On September 16, 2004, Attorney Virginia
Giroux responded on behalf of the Examining
Division that, after review in light of the points
raised, the works at issue here still could not be
registered on the basis of lack of sufficient authorship
that is both separable and copyrightable. Ms. Giroux
again explained Congress prohibition on copyright of
designs of useful articles unless the designs contain
independently separable pictorial, graphic, or
sculptural authorship and are capable of existing
independently of the utilitarian aspects of the article
without losing their basic shape. Letter from Giroux
to Brown of 9/16/2004, at 1.

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




App. 31

generally finds conceptually separable features
where sculptural features are recognizable as a work
which can be visualized on paper as a freestanding
sculpture, juxtaposed next to the useful article,
without destroying the shape of the article itself.
Letter from Giroux of 9/16/2004, at 2.

Ms. Giroux noted further that the letters that
spell Bath and Vinegar were not copyrightable,
citing Copyright Office regulations at 37 C.F.R.
202.1, and that as the bottles bulges and curves were
all part of the overall configuration of the bottles
themselves, they were not copyrightable. Letter from
Giroux of 9/16/2004, at 3. Disagreeing with your
assertion that a works look and feel is
copyrightable, she maintained that where a work
produces a certain effect or impression, that effect or
impression does not mean that a work is
copyrightable but that all works must be examined in
terms of their creative content. Id. at 3-5.
Distinguishing the case law you cited, Ms. Giroux
observed that the creative content in the
arrangements of geometric shapes contained in the
works at issue in the cases which you cited was more
substantial than that contained in the Bottle Designs
at issue here.

Finally, Ms. Giroux drew attention to the
legislative history that clarified Congress intent to
exclude from coverage the shape of an industrial
product, even if aesthetically satisfying and valuable,
in the absence of separately identifiable and
independently existing artistic features that are
distinct from the overall configuration of that
industrial product. On that basis, Ms. Giroux again
refused registration for the nine Bottle Designs. Id.





App. 32

C. Second request for reconsideration

On January 13, 2005, you appealed to the Review
Board in a second request for reconsideration. Your
request acknowledges that the copyright law
excludes useful articles from coverage. However, you
assert that the conceptual separability of the
sculptural aspects of these bottles has been given
short shrift. Letter from Brown to Copyright Office
Review Board of 1/13/2005, at 1. You point out that
you are not attempting to register utilitarian aspects
of the Bottle Designs but that you want to register
elements that can clearly be identified as reflecting
the designers artistic judgment exercised
independently of functional influences, asserting
that that is the hallmark of conceptual separability.
Letter from Brown of 1/13/2005, at 1-2. You assert
that the bottles are works of artistic craftsmanship
and [that they] are perceived as such in the
marketplace, being displayed in special stores rather
than in the food section of grocery stores. Id. at 2.

You assert that Kieselstein-Cord v. Accessories by
Pearl, Inc., 632 F.2d 989, 993 (2d Cir. 1980), should
be applicable to these bottle designs; Kieselstein-Cord
is a case in which the court found that, where the
utilitarian function is subsidiary to the primary
ornamental aspect of the work, the ornamental
aspect is conceptually separable and the work is
capable of copyright protection. Letter from Brown of
1/13/2004, at 2.






App. 33

II. DESCRIPTION OF WORKS
6


Design #1 consists of a rectangular bottle with
taped lid. The block capital letters B and A are
symmetrically lined up above T and H and are
placed inside an indented rim around the bottle.
Design #2 is a triangular-shaped bottle tapering at
the top with two, urn-like handles positioned under
the bottle top; the bottle top appears to be wrapped in
cord. The upper portion of Design #3 is a truncated
cone shape separated by a circular mid-section whose
bottom portion is a similarly truncated inverted cone,
indented on the side. The top and neck of this bottle
design are wrapped in cord and tied near the top.
Bottle Design #4 appears to be a somewhat flattened
pear shape (e.g., similar to a Coca-Cola bottle
shape) with a taped closure at the top. Design #5 is a
taller version of Design #1, but the neck is wrapped
in cord, and the cord is knotted at the top. The word
Vinegar embossed on the glass surface of the bottle
is split into its letters in three horizontal rows: V I
N, is symmetrically situated above EG, which is
lined up above Aand R. Design #6 appears to


6
The description of the bottle designs is confined to the bottles
themselves and does not describe their contents, much of which
cannot be distinguished from the photographic deposits
submitted. The assumption that the subject of the claims is the
bottles themselves is derived from the indistinct contents of the
photographs, the titles of the works, and your descriptions and
discussions of them (e.g., The mere fact that the Applicants
works may be used to store fruits, vinegars, or salts should not
render the artwork non-registrable. Letter from Brown of
1/13/2005, at 2).




App. 34

consist of triangular glass sides which have a
truncated triangular bottom topped by a small globe
shape. The short-necked top is wrapped in cord and
knotted. Design #7 is a long necked bottle with a
circular bottom-half that leans at a 45-degree angle
on a slightly flared flat base (for support). The neck is
wrapped in cord. Design #8 is a bottle in the shape of
a lower case letter b. The top portion of the b is
wrapped in cord and knotted vertically at the
beginning of the bs curvature. This bottle is slightly
flared and flat at the bottom for support. Design #9 is
a long-necked narrow bottle, with cord wrapped
around the neck, and with unevenly spaced square
indentations along both sides of the glass, in the
manner of ladder rungs.

The photographic deposits for the nine bottle
designs which you have submitted are reproduced
here.














FANCIFUL FANCIFUL
ORNAMENTAL ORNAMENTAL
BOTTLE DESIGN #1 BOTTLE DESIGN #2





App. 35















FANCIFUL FANCIFUL
ORNAMENTAL ORNAMENTAL
BOTTLE DESIGN #3 BOTTLE DESIGN #4














FANCIFUL FANCIFUL
ORNAMENTAL ORNAMENTAL
BOTTLE DESIGN #5 BOTTLE DESIGN #6







App. 36














FANCIFUL FANCIFUL
ORNAMENTAL ORNAMENTAL
BOTTLE DESIGN #7 BOTTLE DESIGN #8
















FANCIFUL
ORNAMENTAL
BOTTLE DESIGN #9






App. 37

III. DISCUSSION

A. Useful articles and separability

You argue that your client, MSRF, Inc., is seeking
to register the aesthetic, ornamental features that
are conceptually separable from the utilitarian
features of the Bottle Designs and is not seeking to
register any mechanical or utilitarian aspect of the
Bottle Designs. Letter from Brown of 1/13/2005, at
1-2. You further indicate that the design elements for
which your client seeks registration can clearly be
identified as reflecting the designers artistic
judgment exercised independently of functional
influences. Id., at 2. You call this explanation the
hallmark of conceptual separability. Id. In support
of this position, you cite Kieselstein-Cord, 632 F.2d
989 (2d Cir. 1980). We take this opportunity to set
out the Copyright Offices position with respect to
useful articles and separable authorship.

As a general proposition, copyright protection
does not extend to a useful article, defined as an
article having an intrinsic utilitarian function that is
not merely to portray the appearance of the article or
to convey information. 17 U.S.C. 101. However,
works of artistic craftsmanship, which may be useful
articles themselves or incorporated into a useful
article, can receive protection as pictorial, graphic or
sculptural works pursuant to 17 U.S.C. 102(a)(5).
This protection is limited, though, in that it extends
only insofar as their form but not their mechanical
or utilitarian aspects are concerned. Id. 101. As
you correctly note in your second request for
reconsideration, the design of the useful article will
be protected only if, and only to the extent that, such
design incorporates pictorial, graphic, or sculptural




App. 38

features that can be identified separately from, and
are capable of existing independently of, the
utilitarian aspects of the article. Id; Letter from
Brown of 1/13/2005, at 1. In stating that this
separability can be physical or conceptual, Congress
has explained that:

[A]lthough the shape of an industrial product
may be aesthetically satisfying and valuable,
the Committees intention is not to offer it
copyright protection under the bill. Unless
the shape of an . . . industrial product
contains some element that, physically or
conceptually, can be identified as separable
from the utilitarian aspects of that article,
the design would not be copyrighted under
the bill. The test of separability and
independence from the utilitarian aspects of
the article does not depend upon the nature
of the design that is, even if the
appearance of an article is determined by
esthetic (as opposed to functional)
considerations, only elements, if any, which
can be identified separately from the useful
article as such are copyrightable. And, even
if the three-dimensional design contains
some such element (for example, a carving on
the back of a chair or a floral relief design on
silver flatware), copyright protection would
extend only to that element, and would not
cover the over-all configuration of the
utilitarian article as such.

H.R. Rep. No. 94-1476, at 55 (1976).

Physical separability means that the subject
pictorial, graphic or sculptural features must be able




App. 39

to be separated from the useful article by ordinary
means. Compendium II, Ch. 500, 505.03 - 505.04
(1984). Conceptual separability means that the
subject features are clearly recognizable as a
pictorial, graphic, or sculptural work which can be
visualized on paper, for example, or as a free-
standing sculpture, as another example, independent
of the shape of the useful article, i.e., the artistic
features can be imagined separately and
independently from the useful article without
destroying the basic shape of the useful article. The
artistic features and the useful article could both
exist side by side and be perceived as fully realized,
separate works one an artistic work and the other a
useful article. Compendium II, Ch. 500, 505.03.
For example, while a carving on the back of a chair
cannot readily be physically separated from the
chair, it can easily be conceptually separated because
one could imagine the carving existing as a drawing.
The chair, meanwhile, would still remain a useful
article having retained its basic shape, even absent
the carving. The carving would therefore qualify as
conceptually separable.

1. Case law

As explained in Esquire, Inc. v. Ringer, 591 F.2d
796, 800 (D.C. Cir. 1978), cert. denied, 440 U.S. 908
(1979), copyright protection is not available for the
overall shape or configuration of a utilitarian article,
no matter how aesthetically pleasing that shape may
be. In that case, the Office had refused to register an
outdoor lighting fixture which arguably contained
non-functional, purely aesthetic features. The court
upheld the Offices refusal, noting that Congress has
repeatedly rejected proposed legislation that would
make copyright protection available for consumer or




App. 40

industrial products. Id.
7
Similarly in Norris
Industries, Inc. v. International Telephone &
Telegraph Corp., 696 F.2d 918, 924 (11
th
Cir. 1983),
cert. denied, 464 U.S. 818 (1983), the court held that
a wire-spoked wheel cover was not entitled to
copyright protection because it was a useful article
used to protect lugnuts, brakes, wheels and axles
from damage and corrosion, and it did not contain
any sculptural design features that could be
identified apart from the wheel cover itself. You
argue, however, that conceptual separability exists
whenever the utilitarian function of a useful article is
subsidiary to the primary ornamental aspect of the
work. Letter from Brown of 1/13/2005, at 2, citing
Kieselstein-Cord, at 993.

As we have just stated, the Copyright Office
follows the articulation of conceptual separability set
forth in Esquire and as it is explained in
Compendium II, Ch. 500, 505.03. The Offices test
was confirmed in an action against the Copyright
Office in Custom Chrome, Inc. v. Ringer, 35
U.S.P.Q.2d 1714 (D.D.C. 1995). Custom Chrome was
an action brought under the Administrative
Procedure Act [APA], 5 U.S.C. 701-706, based on
an assertion that the Copyright Offices action
refusing registration for twenty-three motorcycle


7
Although Esquire was decided under the 1909 version of the
Copyright Act, its reasoning is, nevertheless, applicable to cases
arising under the 1976 Act. [T]he 1976 Act and its legislative
history can be taken as an expression of congressional
understanding of the scope of protection for utilitarian articles
under the old regulations. 591 F.2d at 803.




App. 41

parts was arbitrary and not in accord with the law.
At *1. The District Court for the District of Columbia
held that the Offices determination, under the
Offices separability test found in Compendium II,
that the motorcycle parts did not contain separable
features was reasonable and consistent with the
copyright statute and with declared legislative
intent. At *12. Because Custom Chrome was an APA
action, the Court did not determine which of the
several separability tests available from legal
scholars and from case law is the correct one. The
Court simply stated that ... so long as the Copyright
Office has offered a reasonable construction of the
copyright statute, its judgment must be affirmed
even if this Court were to accept Custom Chromes
assertions that the duality test would support its
copyright claims. At *15. We point to Custom
Chrome to emphasize that Compendium IIs
separability test, centering on the general shape of
the useful article, is consistent with later cases
decided under the present law and the legislative
history, Custom Chrome at *16, in denying
protection to the shape of an industrial product even
though it may be aesthetically pleasing.

Further, Compendium II states that the shape or
configuration of supposedly artistic features cannot
be considered to provide the requisite separability
merely because the features are nonfunctional. Id. at
Ch. 500, 505.03. While an authors artistic
judgment may, indeed, influence design elements,
those elements must themselves also meet the
requirements of separability and originality. Your
argument that the works in question here are
perceived as works of artistic craftsmanship in the
marketplace and are routinely displayed as art does
not carry the day; as we have explained, unusual or




App. 42

aesthetically pleasing objects are eligible for
copyright protection only to the extent that they
exhibit features which meet the Offices separability
tests, those tests founded on statutory provisions and
on the legislative history of the 1976 Copyright Act
[1976 Act].

2. Separable features are not present
under any of the separability test

As we have discussed, above, the Copyright
Office is guided by Esquire with respect to the shape
of useful articles. Relying on explicit statements in
legislative history, the Esquire court held that,
despite an aesthetically pleasing, novel or unique
shape, the overall design or configuration of a
utilitarian object may not be copyrighted unless it is
capable of existing as a work of art independent of
the utilitarian article into which [it is] incorporated.
Id. at 803-04. You have admitted that the nine
works in question here are, indeed, useful articles
but you have also taken the position that the articles,
glass bottles, exhibit ornamental features that are
conceptually separable from the utilitarian features
of the Bottle Designs. Letter from Brown of
1/13/2005, at 1. In further arguing for the separable
features, you state that the design elements of the
works for which registration is sought can clearly be
identified as reflecting the designers artistic
judgment exercised independently of functional
influences. Id., at 2. In arguing for separability, you
have implied that separability would be found under
the test proffered by Professor Denicola. We apply
below the Offices Compendium II test, the Denicola
test, and the principle found in Kieselstein-Cord, as
we analyze the possibly separable features of these
nine glass bottles.




App. 43


a. Compendium II

Under this test, we seek elements in the useful
articles, i.e., in the glass bottles, that can be clearly
recognizable as a pictorial, graphic, or sculptural
work which can be visualized on paper, i.e., the
artistic features can be imagined separately and
independently from the useful article without
destroying the basic shape of the useful article.
Compendium II, Ch. 500, 505.03 The only elements
associated with the bottles in question that could
possibly be eligible for copyright registration would
be those that adorn or embellish these functional
articles. Of these, we can identify only two minimal
elements: the capital letters B-A-T-H on design # 1;
the capital letters V-I-N-E-G-A-R on design # 5; any
printed label on the side[s] of a bottle listing the
contents of the bottle as on design # 6.
8
Although
these features may fairly be said to be conceptually
separable from the bottle in the Compendiums


8
Any printed label or cord or straw-like ribbon tied around, or
adhering to, the various bottles may be said to be physically
separable from the bottles themselves. However, such physically
separable elements, although associated with the bottles,
represent only de minimis listings of content of the bottles or
pre-existing cords or ribbon which are not themselves the
original authorship of your client, MSRF, Inc. Such pre-existing
elements might be considered part of the overall bottle design
but, given the nine glass bottle contours lack of separable
portions or identifiable features, such few, uncopyrightable pre-
existing factors do not raise the level of authorship in these
bottle designs.




App. 44

principle, they can be imagined as separate features
without mentally destroying the overall bottles
shape and configuration such features do not
represent individually copyrightable elements. See
below for our analysis of copyrightability. The bottle
designs in the shapes of rectangles, modified
triangles, two cone-like shapes divided in the middle
of the bottle by a circular shape, a modified pear-
shape, bottles consisting of a flat-bottomed circle
with an elongated neck, bottles in the shape of the
small-letter b, and a saw-toothed or ladder-step-
shaped bottle, all do not reflect conceptually
separable features because the shapes of the bottles
are just that the overall configuration of the useful
articles. And, in the terms of the legislative history of
the copyright law as well as of Compendium II, the
bottle shapes represent the shape[s] of an industrial
product [which] may be aesthetically satisfying and
valuable, H.R. Rep. No. 94-1476, at 55, but which
shape Congress did not intend to protect under the
current copyright law. Even aesthetically pleasing
shapes and configurations are not the subject of
copyright: independence from the utilitarian aspect
of the article does not depend upon the nature of the
design... Id.

Again, separable elements incorporated into a
useful article can warrant copyright protection in and
of themselves provided they embody a sufficient
amount of creativity. With respect to these nine glass
bottles, the supposedly artistic shapes, viewed in
their entirety, the original, artistic bulges, twists,
and ornamental cuts, [Letter from Brown of
7/6/2004, at 2], are clearly parts of the bottles which,
by definition, cannot be separable, and any
symbolism they might possess would not bear upon
their copyrightability. Compendium II, Ch. 500,




App. 45

503.02(a) (Copyrightability depends upon the
presence of creative expression in a work, and not
upon . . . symbolic value.). The Office can consider
only those sculptural elements actually expressed in
the three-dimensional design, not the symbolic value
they may have to certain viewers. Any separability
analysis of the work in question here as that analysis
is made under Compendium II necessarily arrives at
the point where registration must be refused. Under
the conceptual separability test, there are no
segments or portions of the glass bottles in question
which can be separated out from the overall shape or
configuration of the individual bottle and
simultaneously stand beside the useful article as
independent works of art without conceptually
destroying the basic shape of the useful article.

b. Denicola test

We have noted that your January 13, 2005,
second request for reconsideration refers to the nine
bottle designs reflecting the designers artistic
judgment exercised independently of functional
influences. Letter from Brown of 1/13/2005, at 2.
Although you have not explicitly stated so, this is, in
terms of copyright, a reference to Professor Denicolas
separability test for useful articles. Having found
these nine bottle designs wanting in separable
features under Compendium IIs test, we now turn to
the alternative separability tests to which you have
alluded to argue for separability. One such test is
Professor Denicolas test as adopted by the Brandir
court. Brandir International, Inc. v. Cascade Pacific
Lumber Co., 834 F.2d 1142 (2d Cir. 1987).

Judging a creators intent, given the factual
circumstances of creation, and determining whether




App. 46

design elements in a particular work reflect the
designers artistic judgment exercised independently
of functional influences, Brandir, 834 F.2d at 1145,
is not the type of judgment the Office normally
undertakes in its examining process. Such judgments
would necessarily rely on interpreting the specific
actions surrounding the creation of a work; these
actions occur outside the registration process. Any
investigation and questioning of the method and
circumstances of creation lie beyond the
administrative capability of the Office. See, e.g.,
Compendium II, Ch. 100, 108.05. Thus, the Office
uses as its tests for separability those adopted in
Esquire and found in Compendium II, above , in
carrying out its mandate at 17 U.S.C. 410(a) to
examine works submitted for registration under the
copyright law. However, judicial acceptance of
separability tests other than those found in
Compendium II leads us to analyze the nine glass
bottle works in question here under certain of those
alternative tests to which you have alluded in order
to determine as objectively as possible whether the
nine glass bottle designs do, indeed, lack any
separable features which might be subject to
copyright registration.

You have cited in your first request for
reconsideration [Letter from Brown of 7/6/2004, at 2]
a number of features of the nine glass bottles at issue
here which represent distinctive, original sculptural
depiction, capable of being identified apart from the
utilitarian aspects of the bottles. Id. These
distinctive features are: bulges, twists, cuts, and
their overall arrangement. Id., at 3. Such features
are part and parcel of the shape of the bottles; in
other words, the twists, the angles at which the glass
bottles are set, the indentations along the side of the




App. 47

bottle, the shaping of the bottle into identifiable
letters of the alphabet all these features are
descriptions of the overall shape and configuration of
the bottles and, as such, cannot be separated out
from the bottles which, in their essence, are useful.
Under the principle of the Denicola test, the listed
aspects of the bottles are integral to the glass bottles
themselves subsumed within the glass bottles and
thus part of something that has utilitarian purpose:
the bottles are containers for the storing or holding of
things. The nine designs of the bottle designs are
part of an object that essentially serves a purpose.

Under the Denicola test, copyrightability
ultimately should depend on the extent to which the
work reflects artistic expression uninhibited by
functional considerations. Robert C. Denicola,
Applied Art and Industrial Design: A Suggested
Approach to Copyright in Useful Articles, 67 Minn.
L. Rev. 741 (1983). Under this guideline, the nine
glass bottle designs are, in their entireties, objects for
storing, holding, or conserving other objects and any
aesthetic characteristics of the bottles do not negate
the usefulness and facility for storage. Thus, the nine
bottle designs fail the Denicola test because, in
Professor Denicolas words, the bottle designs are not
comparable to the statuettes used in the lamps in the
Mazer case: .... the Mazer statuettes remain
copyrightable despite their use as lamp bases,
because their form is not responsive to utilitarian
demands. Id. at 742-743, citing Mazer v. Stein, 347
U.S. 201 (1945). Although the bottle designs may be
novel and aesthetically pleasing, they are
nevertheless created in a way that allows them to
function as holders or storage containers, meeting
the utilitarian and functional demand of such storage
no matter the material or objects within the




App. 48

containers. Thus, the form of the containers does not
reflect purely aesthetic visions [id. at 743] because
the containers possess the necessary elements
[container and top] to constitute a useful container.
In Brandirs words, if design elements reflect a
merger of aesthetic and functional considerations,
the artistic aspects of a work cannot be said to be
conceptually separable from the utilitarian
elements. 834 F.2d at 1145. Such is the case with
the nine glass bottle designs.

c. Kieselstein principle

You have also cited Kieselstein-Cord v.
Accessories by Pearl, 632 F.2d 989 (2d Cir. 1980) for
your position that the nine glass bottle designs at
issue here are art and are considered as art by those
who acquire them. The Copyright Act provides for
protection as such. Letter from Brown of 1/13/2005,
at 2. The belt buckles at issue in Kieselstein do not
provide your client a foundation for registration.
Kieselstein involved two sculptured belt buckles
which the court described as being on a razors edge
of copyright law. Id. at 990. The Copyright Office
had registered the two belt buckles on the basis that
their sculptural features constituted separable
artistic authorship. While the court did analogize the
belt buckles to jewelry, as you have cited [Letter from
Brown of 1/13/2005, at 2], the court also explicitly
applied the separability test for useful articles. In
upholding the Copyright Offices registration of the
two belt buckles, the court concluded: [w]e see in
appellants belt buckles conceptually separable
sculptural elements... Id. at 993. The belt buckles




App. 49

contained conceptually separable ornamentation that
was not part of the general contours of the buckle
itself.
9
While the nine glass bottle designs at issue
here may be aesthetically pleasing, they are still
functional, and all of the purported design elements
to which you cite are inextricable parts/aspects of the
overall shape and contour of the bottles themselves.
We do not, moreover, consider Kieselstein precedent
for the Board's categorizing the bottles at issue here
as art for the table to a degree that negates the
bottles usefulness. The Copyright Office does not
deny that the nine bottles may be subjectively viewed
by some as decorative art, especially when the bottles
are filled with vinegar, fruits, vegetables, or salts
and are sold, as filled, in specialty stores and in gift
or housewares departments with other decorative
items and works of artistic craftsmanship. Letter
from Brown of 1/13/2005, at 2. The Office cannot,
however, ignore the fact that the nine glass bottles at
issue here are subject to the laws separability
consideration. As such, any registration for the bottle
designs must be premised on the copyrightability of
separable features within the bottle designs and the
Office finds no features which are both separable and
copyrightable. We analyze the separable features,
below, for copyrightability.





9
Please note that although the Office determined that the belt
buckles embodied sufficient creativity in order to sustain
registrations, the court expressly declined to address the issue
of originality in its opinion. Kieselstein-Cord, 632 F.2d at 991.




App. 50

B. The standard for creativity

Separable elements incorporated into a useful
article can warrant copyright protection in and of
themselves provided that they embody a sufficient
amount of creativity. Compendium II, Ch. 500,
503.02(a) (Copyrightability depends upon the
presence of creative expression in a work, and not
upon . . . symbolic value.)

An artistic feature which may be separable from
a utilitarian object does not necessarily mean that it
will merit copyright protection, either in itself or in
combination with the useful article as an
arrangement. All copyrightable works, be they
sculptures, engravings or otherwise, must qualify as
original works of authorship. 17 U.S.C. 102(a).
The term original consists of two components:
independent creation and sufficient creativity. Feist
Publications, Inc. v. Rural Telephone Service Co.,499
U.S. 340, 345 (1991). First, the work must have been
independently created by the author, i.e., not copied
from another work. The Office accepts at face value
the assertion on the application for registration that
your client, MSRF, Inc., independently created these
glass bottle designs. Therefore, the first component of
the term original is not at issue here. Second, the
work must possess sufficient creativity. In
determining whether a work embodies a sufficient
amount of creativity to sustain a copyright claim, the
Board adheres to the standard set forth in Feist,
where the Supreme Court held that only a modicum
of creativity is necessary.

The Court stated that the requisite level of
creativity is extremely low; even a slight amount
will suffice. Feist, 499 U.S. at 345. However, the




App. 51

Court also ruled that some works (such as the work
at issue in that case) fail to meet the standard. The
Court observed that [a]s a constitutional matter,
copyright protects only those constituent elements of
a work that possess more than a de minimis
quantum of creativity, id. at 363, and that there can
be no copyright in a work in which the creative
spark is utterly lacking or so trivial as to be virtually
nonexistent. Id. at 359; see also 37 C.F.R. 202.10(a)
(In order to be acceptable as a pictorial, graphic, or
sculptural work, the work must embody some
creative authorship in its delineation or form.); 1 M.
Nimmer & D. Nimmer, Nimmer on Copyright
2.01(B) (2002) ([T]here remains a narrow area where
admittedly independent efforts are deemed too trivial
or insignificant to support a copyright.)

Even prior to Feist, the Copyright Office
recognized the modest, but existent, requisite level of
creativity necessary to sustain a copyright claim.
Compendium II states, Works that lack even a
certain minimum amount of original authorship are
not copyrightable. Compendium II, Ch. 200,
202.02(a). With respect to pictorial, graphic and
sculptural works, Compendium II states that a
certain minimal amount of original creative
authorship is essential for registration in Class VA or
in any other class. Id. Ch. 500, 503.02(a). In
implementing this threshold, this Office, as well as
courts, has consistently found that standard designs
and geometric shapes are not sufficiently creative in
themselves to support a copyright claim. Id.
([R]egistration cannot be based upon the simplicity




App. 52

of standard ornamentation . . ..).
10


Of course, some combinations of common or
standard design elements contain sufficient
creativity with respect to how they are combined or
arranged to support a copyright. See Feist, 499 U.S.
at 358 (the Copyright Act implies that some ways
[of compiling or arranging uncopyrightable material]
will trigger copyright, but that others will not;
determination of copyright rests on creativity of
coordination or arrangement). However, merely
combining non-protectible elements does not
automatically establish creativity where the
combination or arrangement itself is simplistic or
trivial. For example, the Eighth Circuit upheld the
Registers refusal to register a simple logo consisting
of four angled lines which formed an arrow and the
word Arrows in cursive script below the arrow.
John Muller & Co. v. New York Arrows Soccer Team,
Inc., 802 F.2d 989 (8
th
Cir. 1986). See also Satava v.
Lowry, 323 F.3d 805, 811 (9
th
Cir. 2003) (It is true, of
course, that a combination of unprotectible elements
may qualify for copyright protection. But it is not
true that any combination of unprotectible elements
automatically qualifies for copyright protection. Our
case law suggests, and we hold today, that a


10
See also, id. Ch. 200, 202.02(j) (Familiar symbols or
designs . . . or coloring, are not copyrightable.); id. Ch. 500,
503.03(b) (No registration is possible where the work consists
solely of elements which are incapable of supporting a copyright
claim.); 37 C.F.R. 202.1(a) ([F]amiliar symbols or designs
are not subject to copyright and applications for registration of
such works cannot be entertained.).




App. 53

combination of unprotectible elements is eligible for
copyright protection only if those elements are
numerous enough and their selection and
arrangement original enough that their combination
constitutes an original work of authorship.)
(emphasis in original) (citations omitted)

After again examining the nine bottle designs at
issue here and in light of the above-described legal
framework, the Board has determined that the
bottles themselves are intrinsically useful articles
that contain only a very few separable features.
These separable features, however, are not
copyrightable in themselves. As we have enumerated
these features, above, they include printed labels
listing contents of the bottles; an individual word on
a bottle where the letters of the word are inscribed on
the surface of the glass bottle; foil-type material
wrapped around the top or opening of the bottle; cord
or straw-like material wrapped around the opening of
the bottle.

We note your argument that the bottle designs at
issue here should be considered in their entirety, i.e.,
the overall arrangement, size, and shape of each of
the bottles. Letter from Brown of 7/6/2004, at 3. As
we have explained, the bottles themselves as far as
their size, shape, contours, and lines are useful
articles and, as such, are not the subject of copyright.
The few modifications to the bottles which may be
said to be separable a few letters inscribed into the
glass of a bottle, a label attached to a bottle, foil-type
material or cord-type material or string wrapped
around the upper portion of a bottle these simple
elements are not numerous enough nor do they in
themselves represent sufficient copyrightable
authorship to result in a work capable of sustaining




App. 54

copyright registration.
11
As we cited Satava, above,
we again state that works based on public domain
elements may be copyrightable if there is some
distinguishable aspect in their selection,
arrangement or modification that reflects choice and
authorial discretion and that is not so obvious or
minor that the creative spark is utterly lacking or so
trivial as to be nonexistent. Feist, at 359. These nine
bottle designs, each depicted with one or two public
domain elements [NB: MSRF is not the author of the
vinegar or the other elements within the bottles] and
sometimes containing a label, a cap covering, or cord,
or sometimes reflecting one word etched into the
bottles surface [see the Offices regulations at 37
C.F.R. 202.1(a), material not subject to copyright:
words and short phrases such as names, titles, and
slogans; mere variations of typographic
ornamentation, lettering, or coloring; mere listing of
ingredients or contents], are insufficient for
registration as they are considered, each in its
totality as an arrangement of very few elements. The
Office will register a design incorporated into a


11
As we have stated above, we are assuming that the contents
of the bottles are not the authorship of the claimant here. And,
if we were to consider the contents of the bottles as part of the
overall authorship, the contents are merely one or two common
kitchen and cooking liquids and foodstuffs which have been
placed in each bottle. The choice of so few elements placed
within a glass container does not rise to the level of
copyrightable discretion in the attempt to create a protectible
sculptural work. The Board is prevented from registering by the
utility of the containers which are pictured in the deposit copies
as filled with very few common food elements.




App. 55

useful article when the design itself embodies
sufficient creativity, but not all ornamentation of a
useful article is sufficiently creative to warrant
copyright protection either in itself or as part of a
larger arrangement of elements connected or related
to a useful article.

Moreover, the fact that a particular design
element is not necessary to the functionality of a
useful article does not make it automatically
copyrightable. That design element must also be
independently separable from the functional
component without destroying either the element or
the component itself, and must on its own accord
embody a sufficient amount of creativity.

For the reasons stated above, the Copyright
Office Review Board affirms the refusal to register
the nine ornamental bottle designs. This decision
constitutes final agency action in this matter.

Sincerely,

/s/ Nanette Petruzzelli
Associate Register, Registration and
Recordation Program for the
Review Board United States
Copyright Office






App. 56

APPENDIX E





















The above schematic was created by the
District Court to depict a hookahs design and
function. This schematic was first introduced by the
District Court on June 18, 2012 in its Order granting
summary judgment in favor of Respondent (D.C.
Docket No. 54). Said Order is reproduced in
Appendix B above.







Charcoal
Bowl
Plate
Gasket
Hose
Water Container
Windguard
Body
Valve
Water




App. 57

APPENDIX F




























These photographs were first introduced by
Petitioner on April 30, 2010 in its Opposition to
Respondents Motion for Summary Judgment (D.C.
Docket Item No. 48). These photographs show the
availability of hookah water containers in different
sizes and shapes.






App. 58

APPENDIX G



















Petitioners container - Respondents container


These photographs were first introduced by
Petitioner in its Complaint that initiated this
lawsuit. (D.C. Docket Item No. 1). These
photographs show the hookah water containers at
issue in this case.












App. 59

APPENDIX H

Certificate of Registration

This Certificate issued under the seal of the
Copyright Office in accordance with title 17, United
States Code, attests that registration has been made
for the work identified below. The information on
this certificate has been made a part of the Copyright
Office records.

[SIGNATURE]
Acting Register of Copyrights,
United States of America

Registration Number
VA 1-767-997
Effective date of registration:
April 21, 2011

TITLE
Title of Work: Hookah Water Container

COMPLETION/PUBLICATION
Year of Completion: 2008
Date of 1st Publication: August 29, 2008
Nation of 1st Publication: United States

AUTHOR
Author: Inhale, Inc.
Author Created: sculpture/3-D artwork
Work made for hire: Yes
Citizen of: United States
Domiciled in: United States







App. 60

COPYRIGHT CLAIMANT
Copyright Claimant: Inhale, Inc.
8616 Cuyamaca St.,
Santee, CA, 92071,
United States

RIGHTS AND PERMISSION
Organization Name: Strategic Legal Counseling
Name: Louis F. Teran
Email: lteran@strategiclegalcounseling.com
Telephone: 818-484-3217 200
Address: 1055 East Colorado Blvd
Suite #500
Pasadena, CA 91106
United States

CERTIFICATION
Name: Louis F. Teran
Date: April 21, 2011