Bonito Boats v. Thunder Craft (901422128)

Read for 1/21/11

Reading Notes

• Bonito Boats developed a hull design for a fiberglass recreational boat
• No patent application filed
• Filed action in Florida Circuit Court
  • Alleged Thunder Craft Boats has violated a statute by reverse engineering the hull and knowingly selling the hull duplicated in this manner
• Trial court dismissed on the grounds that statute conflicted with federal patent law
  • Upheld by Florida Appeals and Supreme Courts
• State law must yield when it clashed with the federal balance between public right and private monopoly
  • Florida statute offered patent-like protection for unprotected ideas
• This right is granted to patent holder but not part of state protection
• Federal Constitution does not deprive States of adopting rules in fields that Congress has left free
  • Law of unfair competition
  • State trade secret law

• Florida Supreme Court came to a contrary conclusion from the Federal Circuit Appeals Court on a California law
  • Affirmed judgment of FSC
• Dissenting FSC judges said it only prohibited one form of copying an unpatented item

• Cited Sears and Compco as relevant to this case
  • Sears determined (this brief upholds) that states cannot offer patent-like protection for creations which would be unprotected under federal law
• Kewanee Court
  • Trade secret protection did not conflict
  • Determined that states can regulate IP which may or may not be patentable as long as it is not inconsistent with federal law
• USSC reaffirms reasoning of Sears and Compco
  • Florida statute substantially impedes public use of unprotected design
• Unfair competition protects consumers
  • Ergo is not applicable in this situation
• USSC found reasoning in Interpart Corp. v. Italia defective

Reasoning

• Bonito released its design to the public and is therefore viewed as unpatentable
  • Florida statute allows Bonito to assert a property right in the idea, conflicting with federal law
• Statute conflicts even though it only limits one method of reproduction
• Competitive reality of reverse engineering may act as a spur to create patentable inventions
• Statute provides a negative precedent for future laws which may substantially threaten the patent system's ability to promote progress in the useful arts
  • Could allow states to offer protection to special-interest industries to keep them in-state
• Florida law "blurs [the] clear federal demarcation between public and private property
• States are not free to offer protection to ideas which Congress has determined belong to the public
  • States can promote originality and creativity in their own domains
• Statute offers protection beyond unfair competition or trade secret

History

• Patent Clause is a balance between innovation and monopolization
• Patent Act of 1790 was first
  • Created "Commissioners for the promotion of Useful Arts"
  • Thomas Jefferson driving force
• Patent law prevents the removal of existing knowledge from public use
  • Secrecy or legal monopoly
• Requirements
  • Novelty
  • utility
  • Nonobviousness
• Patents protect for 17 years