Citation. Specht v. Netscape Communs. Corp., 306 F.3d 17, 48 U.C.C. Rep. Serv. 2d (Callaghan) 761 (2d Cir. N.Y. Oct. 1, 2002)
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Brief Fact Summary.
Thunder Craft Boats, Inc. (Defendant) argued that Florida’s law prohibiting the duplication of unpatented boat hulls violated federal patent laws.
Synopsis of Rule of Law.
A state may not prohibit the duplication of unpatentable or unpatented articles.
Facts.
Florida enacted a law prohibiting the duplication of molded boat hulls. Bonito Boats, Inc. (Bonito) (Plaintiff), which had designed a specific type of boat hull mold and used it commercially, brought an action against Thunder Craft Boats, Inc. (Defendant). Plaintiff claimed that Defendant had copied the design of its hull. The design was not patented.
Issue.
May a state prohibit the duplication of unpatentable or unpatented articles?
Held.
(O’Connor, J.) No. A state may not prohibit the duplication of unpatentable or unpatented articles. Federal patent law presents a very careful balance between healthy competition and rewarding innovation. A person who meets the requirements of novelty, usefulness, and nonobviousness will be rewarded with a temporary monopoly; all other utilitarian articles may be used by the public. In order to determine what is protected, federal patent-law laws must also describe what is not protected. The balance struck in patent laws requires that all nonpatented, publicly known designs be freely traded. If states were free to grant de facto monopolies to unpatented or unpatentable articles, the balance struck in federal patent laws would be upset. In this case, the Florida law is a good example. Bonito (Plaintiff) did not apply for a patent. And so, federal patent law would allow any competitor to use its design. The Florida law prevents this. Consequently, the Florida law acts to upset the fine balance created in patent law. The law must fail since it is inconsistent with federal law.
Discussion.
This case should not be taken to mean that there is no place for state laws in the law of intellectual property. State unfair competition laws have coexisted with federal law for quite some time in this area, with not much evidence of incompatibility. In this case, the Court indicated it was not inclined to strike down state trade secret or unfair competition laws.
What’s a headnote.
