Publications

Earlier this year, the House of Representatives passed HR2696, the “Vessel Hull Design Protection Act.” The bill is currently before the Senate where passage seems likely.

The generally perceived impetus for the bill arises from the practice of “splashing” or “direct molding.” Splashing is a manufacturing process that uses an existing boat hull as a “plug” from which a mold is made. The mold is then used to produce duplicates of the hull. Various state laws had been enacted to prohibit splashing. These state laws, however, were invalidated by the U.S. Supreme Court in Bonito Boats, Inc. vs. Thunder Craft Boats, Inc., 489 U.S. 141 (1988). In Bonito Boats, a unanimous Supreme Court held a Florida statute prohibiting direct molding duplication of vessel components to be in conflict with federal patent law and, therefore, invalid.

In contrast to the invalidated state laws, the Act is not an anti-direct molding statute per se. Rather, it creates a registration system for providing a term of protection for eligible designs. The Act is based on prior legislation for general industrial design protection, having origins in copyright laws and having some similarities to the Semiconductor Chip Protection Act of 1984 (17 U.S.C. § 901-914). At first glance, the Act appears to be a general scheme for the protection of the “original design of a useful article.” However, the Act expressly limits the definition of “useful article” to vessel hulls and their components. “Vessels” are defined as watercraft of 200 feet or less in length and their hulls, including “the frame or body… including the deck of a vessel…” Any manner in which the design is copied can result in infringement, not merely copying via direct molding. Certain reproductions of the design not in the form of a tangible article (for example in an illustration or picture) are not infringements.

The term of protection commences upon the earlier of the date the design is first made public or the date on which the registration is published. To obtain protection, an application for registration must be made within two years of the earliest date on which the design is made public. Reflecting similar concepts in patent law, the making public of designs includes both the public exhibition of a useful article embodying the design and the sale or offer for sale of such an article. In contrast to patent law, the Act does not contain a general publication bar (i.e., the publication of a drawing of the design does not constitute “making public” the design). Additionally, acts by persons other than the owner of the design, or acts without the owner’s consent, do not constitute making public the design. The term of protection extends until ten years after the publication of the registration.

Similar legislation not limited to “vessel hulls” was defeated due largely to the objections of the automobile insurance industry. Insurers argued that such legislation would give automobile manufacturers an effective monopoly over repair parts for their vehicles, thereby greatly increasing the cost of automobile repairs and insurance. In its present form, the coverage of the Act seems ripe for expansion by simply adding additional categories of products to the definition of “useful article.” It is therefore anticipated that many industries, particularly those that have had little or no success in protecting designs via design patent, copyright, and trademark laws, will seek to add their products to what may become an ever-expanding list.