Bonito Boats, Inc. v. Thunder Craft Boats, Inc.

PETITIONER: Bonito Boats, Inc.
RESPONDENT: Thunder Craft Boats, Inc.
LOCATION: Circuit Court of Orange County, Florida

DOCKET NO.: 87-1346
DECIDED BY: Rehnquist Court (1988-1990)
LOWER COURT: Florida Supreme Court

CITATION: 489 US 141 (1989)
ARGUED: Dec 05, 1988
DECIDED: Feb 21, 1989
GRANTED: May 16, 1988

ADVOCATES:
Charles E. Lipsey - For Respondent
Tomas Morgan Russell - For Petitioner

Facts of the case

In 1976, Bonito Boats, Inc. (Bonito), a Florida corporation, developed a design for a fiberglass recreational boat and made a model to produce the finished fiberglass boats for sale. No patent application was ever filed for protection. In 1983, the Florida Legislature enacted a statute making it unlawful to use a direct modeling process to duplicate and sell a vessel or part of a vessel. In 1984, Bonito sued Thunder Craft Boats, Inc. (Thunder Craft), a Tennessee corporation, in the Florida district court for violating the statute. Thunder Craft successfully argued that the Florida statute conflicted with federal patent laws and was therefore invalid under the Supremacy Clause of the Eleventh Amendment. The Florida Court of Appeals and the Florida Supreme Court affirmed the district court’s conclusion that the Florida law interfered with federal patent laws.

Question

Does a state statute, which prohibits the use of the direct molding process of a vessel that does not have patent protection and the sale of the duplicates, conflict with the federal patent law and therefore make it invalid under the Supremacy Clause of the Eleventh Amendment?

Media for Bonito Boats, Inc. v. Thunder Craft Boats, Inc.

Audio Transcription for Oral Argument - December 05, 1988 in Bonito Boats, Inc. v. Thunder Craft Boats, Inc.

Audio Transcription for Opinion Announcement - February 21, 1989 in Bonito Boats, Inc. v. Thunder Craft Boats, Inc.

Sandra Day O'Connor:

The third opinion for announcement by me today is Bonito Boats, Inc. verus Thunder Craft Boats, Inc. number 87-1346 and this case comes to us on certiorari to the Supreme Court of Florida.

In 1976, petitioner Bonito Boats a Florida corporation developed and marketed a boat hull design which enjoyed great commercial success.

The petitioner did not seek federal patent protection for the design or for the utilitarian aspects of the boat hull or for the process by which the boats were produced.

In 1983, after the hull design had been on sale for some six years, the Florida legislator passed a statute making it unlawful to use the direct molding process to duplicate any manufactured boat hull or the component parts of it without permission of the original manufacturer.

Shortly after the enactment of the Florida law, the petitioner brought suit against the Thunder Craft Boats, a Tennessee corporation, for duplicating petitioner's boat hulls in violation of the Florida statute.

The petitioner sought damages, injunctive relief and attorney's fees for the illegal copying.

The Florida trial court dismissed the complaint.

The Florida Court of Appeals and the Supreme Court of Florida affirmed the dismissal finding that the Florida statute impermissibly interfered with the public use of unpatented designs.

We then granted certiorari to resolve a conflict between the judgment of the Florida Courts and a decision of the Court of Appeals for the Federal Circuit holding that a similar California law did not conflict with the federal patent scheme.

In a unanimous opinion filed with the clerk today, we affirm the judgment of the Florida Supreme Court.

The Florida statute creates patent like rights in design and utilitarian concepts which are left unprotected by the federal patent law.

The statute thus, conflicts with the strong federal policy embodied in the patent laws that unpatented items, in general circulation are the tools of creation itself, free for all members of the public to exploit.

The substantial protection against duplication offered by the Florida law could divert inventive effort away from the requirements of patentability established by congress over the last 200 years.

We hold then that the Florida law is pre-empted by the Supremacy Clause of the Federal Constitution.