1/21/11 : Bonito Boats notes
-Bonito Boats: No patent filed for the utilitarian or design aspects of the hull or manufacturing process (sprayed-fiberglass mold) by which the finished boats were produced (1976)
-After 6 years of production, a Florida statute prohibited the use of a direct molding process to duplicate unpatented boat hulls, and the sale of them.
-Bonito Boats filed action against Thunder Craft for violation of the Florida statute.
-Conclusion: dismissed by Florida Court of Appeals and the Florida Supreme Court due to confliction with federal patent law via the Supremacy Clause; federal patent law rules higher than state law.
Facts of the case
-No indication on record that a patent application was ever filed for protection of the utilitarian or design aspects of the hull, or the manufacturing process for the Bonito 5VBR (1976)
-Fla.Stat.(section)559.94(1987) statute makes it "unlawful for any person to use the direct molding process to duplicate for the purpose of sale any manufactured vessel hull or component part of a vessel made by another without the written permission of that person... [or] to knowingly sell a vessel hull or component part of a vessel duplicated in violation of subsection (2)." Applicable after July 1, 1983.
-Bonito Boats filed against Thunder Craft, a Tennessee Corporation, for violation of the Florida statute on December 21, 1984. Had Thunder Craft been in Florida, would this have ruled differently?
-A divided Court of Appeals affirmed the dismissal of petitioner's complaint because the statute conflicted with federal patent law, and therefore was invalid.
-A sharply divided Florida Supreme Court agreed with the lower court's dismissive conclusion.
-The Florida statute does not operate to prohibit "unfair competition" in the usual sense, but it does impede the use of an unprotected design idea.
-"[T]he plaintiff has the right not to lose his customers through false representations that those are his wares which in fact are not, but he may not monopolize any design or pattern, however trifling. The defendant, on the other hand, may copy plaintiff's goods slavishly down to the minutest detail: but he may not represent himself as the plaintiff in their sale."
-Today's patent statute offers protection to "[w]hoever invents or discovers any new and useful process, machine, manufacture, or compotinion of matter, or any new and useful improvement thereof." 35U.S.C.9(section)101. Congress extended this protection to "any new, original and ornamental design for an article of manufacture." 35U.S.C.(section)171.
-In the case of Pennock v. Dialogue, 2 Pet. 1,7L.Ed. 327 (1829): the Court concluded that the patent was invalid due to the prior public sale, indication that "if [an inventor] suffers the thing he invented to go into public use, or to be publicly sold for use" "[h]is voluntary act or acquiescence in the public sale and use is an abandonment of his right." Id.,2Pet.,at 23-24.
-After the creation of an idea, and inventor as the choice to keep it secret during the process of patenting, or to submit the invention into public use, nullifying his right to the patent, BUT...
-The applicant whose invention satisfies the requirements of novelty, nonobviousness, and utility, and wjo is willing to reveal to the public the substance of his discovery and "the best mode... of carrying out his invention," 35 U.S.C.(section)112, is granted the "right to exclude others from making, using, or selling the invention throughout the United States," for a period of 17 years. 35 U.S.C(section)154.
-Does this ruling essentially nullify the Florida statute for the direct-mold manufacturing and sale of unpatented boat hulls?
-How can state legislature protect design ideas that patent laws leave unprotected?