Bonito Boats v. Thunder Craft (901422128)
From Bill Goodwine's Wiki
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