Bonito Boats, Inc. v. Thunder Craft Boats, Inc.
489 U.S. 141 (1989)
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Rule of Law:
A state law that offers patent-like protection to unpatented utilitarian or design ideas that are in the public domain is preempted by federal patent law. States may not prohibit the copying of an unpatented article by restricting a particular method of reverse engineering.
Facts:
- In 1976, Bonito Boats, Inc. (Bonito) developed and began marketing a hull design for a fiberglass recreational boat, the Bonito Boat Model 5VBR.
- The design of the boat hull required substantial effort and investment by Bonito.
- Bonito never filed an application for a federal patent to protect the utilitarian or design aspects of the hull.
- The Bonito 5VBR boat was sold to the public for over six years, creating a broad interstate market and making its design publicly known.
- In 1983, the Florida Legislature enacted a statute making it unlawful for any person to use a 'direct molding process' to duplicate a vessel hull for the purpose of sale without written permission from the original manufacturer.
- Thunder Craft Boats, Inc. (Thunder Craft) used the direct molding process to duplicate Bonito's 5VBR hull and sold the resulting copies.
Procedural Posture:
- Bonito Boats, Inc. sued Thunder Craft Boats, Inc. in the Circuit Court of Orange County, Florida (a state trial court), alleging a violation of a Florida statute prohibiting direct molding.
- Thunder Craft filed a motion to dismiss, arguing the Florida statute was preempted by federal patent law under the Supremacy Clause.
- The trial court granted Thunder Craft's motion to dismiss.
- Bonito appealed to the Florida Fifth District Court of Appeal (an intermediate appellate court), which affirmed the trial court's dismissal.
- Bonito then appealed to the Florida Supreme Court (the state's highest court), which also affirmed the dismissal, holding that the state statute impermissibly interfered with the federal patent system.
- The U.S. Supreme Court granted certiorari to resolve a conflict between the Florida Supreme Court's decision and a decision from the U.S. Court of Appeals for the Federal Circuit.
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Issue:
Does a state law that prohibits the use of a direct molding process to duplicate an unpatented boat hull, which has been publicly available, conflict with federal patent law and is therefore preempted under the Supremacy Clause?
Opinions:
Majority - Justice O’Connor
Yes, the Florida statute is preempted by federal patent law. The federal patent system establishes a careful balance between incentivizing innovation through limited monopolies and ensuring free competition in ideas that are in the public domain. An unpatented article, like one with an expired patent, is in the public domain and may be copied by anyone. The Florida law impermissibly grants patent-like protection by prohibiting the most efficient method of copying a publicly available boat hull design, thereby restricting public access to an idea that federal law has left unprotected. Unlike permissible state laws protecting against consumer confusion (unfair competition) or breach of trust (trade secrets), this statute's sole purpose is to reward inventors with a monopoly, which directly conflicts with the goals and comprehensive scheme of federal patent law.
Analysis:
This decision reaffirms and clarifies the preemption doctrine established in Sears and Compco, confirming that states cannot create their own patent-like monopolies for unpatented articles. The ruling distinguishes permissible state intellectual property laws, such as trade secret and unfair competition laws aimed at preventing consumer confusion, from impermissible laws that directly restrict competition in the copying of publicly disclosed designs. By striking down the Florida statute, the Court solidified the principle that reverse engineering of unpatented products is a legitimate and federally protected form of competition that states cannot prohibit, reinforcing the supremacy of the federal patent scheme in determining what is and is not protected from imitation.
