Law School Case Brief
Bonito Boats v. Thunder Craft Boats - 489 U.S. 141, 109 S. Ct. 971 (1989)
The States may not offer patent-like protection to intellectual creations which would otherwise remain unprotected as a matter of federal law. Both the novelty and the nonobviousness requirements of federal patent law are grounded in the notion that concepts within the public grasp, or those so obvious that they readily could be, are the tools of creation available to all. They provide the baseline of free competition upon which the patent system's incentive to creative effort depends. A state law that substantially interferes with the enjoyment of an unpatented utilitarian or design conception which has been freely disclosed by its author to the public at large impermissibly contravenes the ultimate goal of public disclosure and use which is the centerpiece of federal patent policy.
Petitioner Bonito Boats, Inc. ("Bonito") developed and marketed a fiberglass boat hull. No patent application was filed to protect the utilitarian or design aspects of the hull. The hull was successful and an interstate market developed for the hull's trade. Six years after the hull had been made publicly available, Fla. Stat. § 559.94 (1987) was enacted, which prohibited the use of a direct molding process to duplicate unpatented boat hulls and prohibited the knowing sale of such duplicated hulls. Thereafter, Bonito filed a lawsuit against respondent Thunder Craft Boats, Inc. ("Thunder Craft") in Florida state court, alleging that Thunder Craft violated § 559.94 by using the direct molding process to duplicate Bonito's hull and by knowingly selling those duplicates. Bonito sought damages, injunctive relief, and an award of attorney's fees under § 559.94. The trial court granted Thunder Craft's motion to dismiss the complaint on the ground that § 559.94 conflicted with federal patent law and was therefore invalid under the Supremacy Clause of the Federal Constitution. Bonito appealed, and the court of appeals affirmed. On further appeal, the Supreme Court of Florida affirmed, agreeing with the lower courts' conclusion that § 559.94 impermissibly interfered with the scheme established by the federal patent laws. Bonito was granted a writ of certiorari.
Could States offer protection to an idea similar to patent-like protection when federal law did not protect that idea?
The Supreme Court of the United States affirmed the state supreme court's judgment. The Court held that by offering patent-like protection for ideas deemed unprotected under the federal scheme, the statute conflicted with the federal policy favoring free competition in ideas which did not merit patent protection. As a result, the statute was preempted by the Eleventh Amendment's Supremacy Clause. State regulation of intellectual property must yield to the extent that it clashes with the federal patent statute's balance between public right and private monopoly designed to promote certain creative activity. Section 559.94 did not prohibit "unfair competition" in the usual sense of that term, but rather was aimed at promoting inventive effort by preventing the efficient exploitation of the design and utilitarian conceptions embodied in the product itself. It endowed the original boat manufacturer with rights against the world, similar in scope and operation to the rights accorded the federal patentee. The statute operated to allow Bonito to assert a substantial property right in a design idea that had already been available to the public for over six years.
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