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Entries in bonito boats inc.v.thunder craft boats inc. (1)

Sunday
May292011

Attention Builders and Designers: Register Your New Designs Now!

The Vessel Hull Design Protection Act protects the design of hulls and decks provided that the designer registers the design with the government within 2 years of the design’s first public display.  The protection is similar to a copyright or patent.  Failure to register the design, or failure to re-register the design after you have made changes to it, could result in a loss of those protections.       

Congress passed The Vessel Hull Design Protection Act in 1998 in response to the Supreme Court’s ruling in Bonito Boats Inc. v. Thunder Craft Boats Inc.  In that case, the Supreme Court held that federal copyright law preempted Florida’s anti-splashing law even though there was no federal statute specifically protecting boat designs.  This decision threatened the vitality of the marine industry.  Who would spend the time and money in developing faster, safer, and more efficient boats if their competitors could just copy the design?  Lobbyists for the marine industry pushed for legislation protecting yacht designs and Congress passed the Hull Design Protection Act.  The Act generally does not protect older designs that have not been registered.  It does, however, protect older models when there has been a “substantial change” in the design. 

What could happen if you don’t register the design?  Consider this hypothetical:

The Pacific Yachts 19 foot outboard tender (the PY19) was the hottest boat on Puget Sound. Yachties and Sport Fisherman alike admired this design for its combination of classic styling and a remarkably dry ride.  Despite hiring a third shift and renting more shop space, Pacific Yachts could not seem to build these boats fast enough.  Two years (and one day) after they first introduced the PY19 Ollie Original, Pacific’s chief designer, walked the aisles at the Miami Boat Show.  At the end of a long row of center-consoled sport fishing boats, Ollie saw a strangely familiar sight, a boat that was an exact copy of his PY19.  Ollie hurriedly walked over to get a closer look.  The signs posted next to the boat introduced the “All New AY19 built to exacting standards by the craftsmen of Atlantic Yachts.”  Furious, Ollie approached a salesperson who quickly directed him to the company president Steve Splashy.  When confronted by Ollie, Steve calmly explained: “yes, we heard about the success of the PY19 so we drove out to Seattle and bought one from a local dealer.  We brought the boat back to our shop on the East Coast, made a mold from the hull and deck, and are now selling an exact copy.”

Ollie’s first call was to the airline to catch the first flight back to Seattle. His next call was to the lawyer Pacific Yachts used on an irregular basis.  By the time Ollie returned to his office, the lawyer had some time to research the law.  He informed Ollie that normally Pacific Yachts’ interest in the design is protected under federal copyright law.  But because they had failed to register the design within two years of the introduction of the PY19, Atlantic Yachts may have been within their rights to copy the design.  The lawyer suggested that in order to protect the brand name from cheap imitations, Ollie should design a new model that is a “substantial revision” from the old model and then register the new design. 

What can Ollie do in this situation? The design is successful and he does not want to do anything to risk that success.  Changes too dramatic could risk the cosmetic or performance characteristics of the boat and ruin its market appeal.  Changes too small, could risk his protection under the VHDPA.  How should Ollie change the design in a way that would preserve its market appeal but at the same time be substantial enough to qualify as a new design?

The Court of Appeals in Florida recently addressed this issue.  In Mavrick Boat Company, Inc. v. American Marine Holdings, Inc., a boat builder made subtle changes to the sheer line of an unprotected design then registered the new design for protection under the VHDPA.  Two other builders splashed the hull and the original builder sought to enforce his rights under the Act.  The court noted the lack of documentation showing what changes were made and the reasons for those changes. They also noted that both the old and the new design were in production at the same time and the builder represented both models to the public as the same boat with the same model number.  The court also noted that the builder made the changes to correct a problem in the original unprotected design and not to improve or build upon the design.  The court found that the changes made by the original builder were not substantial enough so as to create a new design that could be protected under the Act.  The court also said “[T]he correction of an unintended problem does not create a new design, but merely makes the original design what it was always intended to be.”

This case can help designers like Ollie in deciding what changes to make.  Certain changes to an unprotected design will make it more likely that the new design will qualify for protection under the Act.  A good maritime lawyer can advise you on these changes and also guide you through the process of documenting the improvements, ultimately resulting in a protected design that cannot be legally copied. 

Ollie remembers talking to owners who felt that the boat should be able to carry heavier motors such as the newer four-stroke engines.  He found that subtle movements in the lines aft of the centerline would shift the center of balance enough to make this possible.  This would improve the design without changing the looks of the vessel. After consulting with his attorney Ollie made changes to the design and documented those changes according to his attorney’s instructions.  Pacific Yachts built a new plug, and introduced the public to the new “Pacific Yachts 19fs.”  The new model was even more successful than the old one. This time, Ollie rushed right out and registered the new design.