March 2002

Federal Protection for Vessel Hull Designs: A New Intellectual Property Right Having Nothing to Do with the Internet

by Mike Konczal

The U.S. Supreme Court decision Benito Boats Inc. v. Thundercraft Boats, Inc., 489 US 141 (1989), invalidated a Florida "anti-hull-splashing" statute. The statute had attempted to protect manufacturers from "hull splashing" — the unscrupulous practice of producing knock-offs by using an existing boat as a plug to make a mold used in producing new hulls. The Supreme Court invited Congress to investigate whether the utility and design patents were inadequate to protect vessel hull designs. Congress enacted 17 U.S.C. §1301 in 1998, with a two-year sunset provision.

The statute has become permanent. Vessel hull designs may be registered with the U.S. Copyright Office in a relatively simple and inexpensive procedure. The copyright office examines the application, publishes the design for notice purposes, and issues the registration certificate.

A hull is specifically defined by the act as the frame or body of a vessel, including the deck, but not including the mast, sails, yards, etc. The act does not protect unoriginal designs, designs dictated solely by utilitarian function, or designs made public one year before the registration application. For the purposes of the act, vessel hulls including plugs or molds are protected, but models and drawings of hulls are not.

A design owner may mark his hulls with indicia of registration, such as a capital D with a circle around it. An owner may seek injunctive relief and damages for infringement, including damages of up to $50,000 or $1 per infringing copy, whichever is greater. The design owner may also seek the profits earned from the sale of the unauthorized copies. The act authorizes damages for falsely using design registration indicia ($500 per copy); actions for false indication of registration may be brought by individuals, splitting the bounty with the government 50/50.

Since the courts have not yet had the opportunity to address the design registration statutory scheme, the legal interplay between design registration, copyright registration, and design and utility patents is not entirely clear. One thing that is clear is that design registration is not intended to replace design patents. The design registration statute contains a provision indicating that design registration is invalidated upon issuance of a design patent for the same design. The statutory exclusion of utilitarian designs from the registration statute steers such designs directly into utility patent waters. There is nothing in the statute, however, to prevent a vessel hull plan or model from being registered under copyright laws concurrent with design registration of the hull itself. Hull design protection registered with the copyright office is for a duration of 10 years, from the date of publication of the application or the date the design was first made public, whichever is earlier.

Given the 10-year term of design registration, a relatively simple application process, and mere $75 application fee, it seems fair to say that design registration is something of a home-built design patent. The intellectual property protection is 10 years instead of 14, as with a design patent. The protection is also not as complete as a design patent. Design registration prevents infringers from making direct copies of the protected hull, whereas a design patent provides more protection for the patented article itself, whether it happens to be copied or derived independently. Concurrent copyright protection can be used to prevent unauthorized reproduction of related plans or models.