By: Brittney Cafero (Rutgers-Camden Law Class of 2015)   In August 2014, Inhale, Inc. (“Inhale”) filed petition for certiorari to the U.S. Supreme Court to address the issue of conceptual separability. The Copyright Act of 1976 protects a useful article — one having both functional and artistic aspects — as long as some element can be identified as either physically or conceptually separable from the utilitarian aspects of the article. Congress has failed to provide guidance on how to determine whether a design element is conceptually separable. This ambiguity has resulted in conflicting tests adopted in the federal circuits. Notably, the Third Circuit expressed that “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 article’s utilitarian function.” In the most recent case addressing conceptual separability, Inhale v. Starbuzz, the Ninth Circuit adopted the opinion of the Copyright Office. In doing so, the court relied on a test which conflicts with the jurisprudence in the Second Circuit. Ultimately, the petitioner in Inhale filed a writ of certiorari to the Supreme Court for clarity to the ambiguity of conceptual separability and the multiple tests developed from it. Last year, in 2014, the Ninth Circuit Court of Appeals found that the shape of a hookah water container was not copyrightable because any distinctive aspects of the shape were not conceptually separable from its utilitarian elements. Specifically, the Court held that “any part of a container that merely accomplishes the containing is not copyrightable.” In 2008, Inhale sold a hookah water container that had sculptural elements and was designed with a skull-and-crossbones image. (See Figure 1.)   A hookah is a water pipe used to smoke tobacco that generally consists of three main parts: a bowl, a body and a water container. (See Figure 2.) A few years later, in April 2011, Inhale registered with the U.S. Copyright Office and received a copyright for the hookah. Specifically, the copyright claimed both the three-dimensional sculptural elements as well as the skull-and-crossbones image on the hookah.                                                Figure 1                                                                      Figure 2 Inhale’s hookah water container.                           Depiction of how the Inhale hookah works. The following month, Inhale sued Starbuzz Tobacco, Inc. (“Starbuzz”) for copyright infringement. The suit was filed in the U.S. District Court for the Central District of California and Inhale claimed infringement of the shape of the water container (the base of the hookah), but not the skill-and-crossbones design.  Starbuzz moved for summary judgment, arguing the shape of the water container could not be copyrighted. The district court granted summary judgment and agreed with Starbuzz, holding broadly that the shape of a useful object cannot be copyrighted, “no matter how aesthetically pleasing that shape may be.” Inhale then appealed to the Ninth Circuit. On appeal, Inhale argued the water container’s shape is not critical to its function because other hookah water containers have different shapes. The issue before the Ninth Circuit was whether the shape of the hookah water container was conceptually separable from its utilitarian features – in other words, whether the water container’s distinctive shape affected separability. This was a mixed question of law and fact for the court, but since both parties agreed the water container was a useful article, the court only determined the appropriate legal standard. To interpret the Copyright Act, the circuit court deferred to the Copyright Office’s determination that an item’s distinctive shape does not affect separability. The court noted that determination was based on a principle that “analogizing the general shape of a useful article to works of modern sculpture” is insufficient for conceptual separability. Therefore, the Ninth Circuit affirmed summary judgment and found Inhale’s hookah water container as not copyrightable because the shape was not capable of being identified separately from or existing independently of the utilitarian aspects of the container. Following the Ninth Circuit’s decision, Inhale petitioned to the U.S. Supreme Court for a writ of certiorari. The petition presented two questions for the Court: (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 article’s utilitarian function pursuant 17 U.S.C. §101?” and (2) “Is the distinctive shape of a container protected under the Copyright Act of 1976?” Despite Inhale’s brief arguing that there was a genuine issue of material fact for trial, the Supreme Court denied certiorari this past December 2014.  Inhale’s brief argued its hookah water container is a “single piece design created by artists as a medium to express their artistry and aesthetic expressions,” and therefore copyright protection was well-founded in fact. Similarly, the Second Circuit in Brandir International, Inc. v. Cascade Pacific Lumber Co. wrestled with conceptual separability for a design element and ultimately affirmed the trial court’s finding. Since the Ninth Circuit refused to address this issue and affirmed summary judgment, it essentially abolished conceptual separability and left artistic designs vulnerable with no copyright protection.