| Bonito Boats, Inc. v. Thunder Craft Boats, Inc. | ||||||
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Supreme Court of the United States |
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| Argued December 5, 1988 Decided February 21, 1989 |
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| Full case name | Bonito Boats, Inc. v. Thunder Craft Boats, Inc. | |||||
| Citations | 489 U.S. 141 (more) 109 S.Ct. 971; 103 L.Ed.2d 118 |
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| Prior history | Certiorari to the Supreme Court of Florida | |||||
| Holding | ||||||
| The Florida statute is preempted by the Supremacy Clause, because it partially duplicated and therefore interfered with federal patent law. | ||||||
| Court membership | ||||||
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| Case opinions | ||||||
| Majority | O'Connor, joined by unanimous court | |||||
Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (1989), is a decision of the United States Supreme Court holding a state anti-plug molding law preempted because it partially duplicated and therefore interfered with federal patent law. The decision reaffirmed the Supreme Court’s earlier decision in Sears, Roebuck & Co. v. Stiffel Co.,[1] which held a state unfair competition law preempted on the same ground.
The Supreme Court opinion (by Justice O’Connor) explained the ruling in these terms:
Taken together, the novelty and nonobviousness requirements [of the patent statute] express a congressional determination that the purposes behind the Patent Clause are best served by free competition and exploitation of that which is either already available to the public, or that which may be readily discerned from publicly available material.
Thus our past decisions have made clear that state regulation of intellectual property must yield to the extent that it clashes with the balance struck by Congress in our patent laws. The tension between the desire to freely exploit the full potential of our inventive resources and the need to create an incentive to deploy those resources is constant. Where it is clear how the patent laws strike that balance in a particular circumstance, that is not a judgment the States may second-guess.
[W]e believe that the Sears Court correctly concluded that the States may not offer patent-like protection to intellectual creations which would otherwise remain unprotected as a matter of federal law.
Appending the conclusionary label "unscrupulous" to such competitive behavior [i.e., copying] merely endorses a policy judgment which the patent laws do not leave the States free to make. Where an item in general circulation is unprotected by patent, reproduction of a functional attribute is legitimate competitive activity.
[T]he federal standards for patentability, at a minimum, express the congressional determination that patent-like protection is unwarranted as to certain classes of intellectual property. The States are simply not free in this regard to offer equivalent protections to ideas which Congress has determined should belong to all.
Like the interpretation of Illinois unfair competition law in Sears, the Florida statute represents a break with the tradition of peaceful coexistence between state market regulation and federal patent policy. The Florida law substantially restricts the public's ability to exploit an unpatented design in general circulation, raising the specter of state-created monopolies in a host of useful shapes and processes for which patent protection has been denied or is otherwise unobtainable. It thus enters a field of regulation which the patent laws have reserved to Congress. The patent statute's careful balance between public right and private monopoly to promote certain creative activity is a scheme of federal regulation so pervasive as to make reasonable the inference that Congress left no room for the States to supplement it.
One commentator, Professor Rice, maintains that Bonito Boats must be understood to prevent states from passing laws against such “rights” as that of fair use and reverse engineering. He argues:
Bonito Boats stilled any remaining doubts. It is inconceivable, in the wake of Bonito Boats, that the Court would sustain trade secret law which was recast to make reverse engineering unlawful. [2]
Congress subsequently enacted the Vessel Hull Design Protection Act (VHDPA) [3] as part of the Digital Millennium Copyright Act, providing copyright-like or sui generis protection to boat hull designs, under a registration system something like that of the Semiconductor Chip Protection Act (SCPA). Since the VHDPA is a federal statute, it is not subject to preemption by the patent law or other federal statutory law, but it is possible that constitutional problems might exist under the patent clause of the Constitution.[4]
The VHDPA was too late for Bonito Boats, however. According to the U.S. Coast Guard,[5] Bonito Boats went out of business July 19, 1991.