Florida is the Sunshine State, and along with all that sunshine comes an inordinate amount of love for boats. We love boats so much that our lawmakers even tried to create a law protecting the manufacturers of boats from unauthorized copying of their boat hull designs. The U.S. Supreme Court didn’t take kindly to that, and a little thing called the Supremacy Clause of the U.S. Constitution settled the matter. That case was the 1988 case of Bonito Boats v. Thunder Craft Boats, and Justice O’Connor, writing for a unanimous Court, stated that Florida’s law was in essence a competing intellectual property protection scheme to the U.S. Patent and Copyright laws. As such, it failed.
But, the case did open a can of sunshine on the issue, and Congress responded to the concerns of boat manufacturers by including the Vessel Hull Design Protection Act (“VHDPA”) within the Digital Millennium Copyright Act of 1998. As with Florida’s invalidated statute, the VHDPA intended to curb the practice of “splashing” boat hulls. Splashing occurs when a manufacturer takes a finished boat hull and dips it into some mold-making compound to produce a mold of the hull. Imagine filling a pan with modeling compound (such as Play-Doh® brand), sticking your hand into the compound to create an impression, and then filling the void with resin to create a duplicate of your hand – you have just “splashed” your hand.
Although the VHDPA protects designs, it is administered by the U.S. Copyright Office and codified at 17 U.S.C. § 1301, et. al. Boat manufacturers now have a trifecta of protection for the design of hulls: 1) design patent protection under the Patent Act, 2) trade dress protection under the Lanham Act, and 3) “original design” protection under the Copyright Act. (While this article is not intended to weigh the pros and cons of the different protection mechanisms, it is interesting to note the hybrid nature of VHDPA protection.)
Is My Design Eligible?
In order for your boat design to qualify for VHDPA registration, you must seek registration within 2 years of the date the design was first made public. A design is made public “when an existing useful article embodying the design is anywhere publicly exhibited, publicly distributed, or offered for sale or sold to the public by the owner of the design or with the owner’s consent.” 17 U.S.C. § 1310.
The design must also be original, not a staple or commonplace design, and ornamental (i.e. not utilitarian). The issuance of a design patent will also cancel and/or prevent registration under the VHDPA.
How Does it Work?
Assuming your design is eligible, the VHDPA gives protection to “the design of a vessel hull, deck, or combination of a hull and deck, including a plug or mold…” “Hull” is defined as “the exterior frame or body of a vessel, exclusive of the deck, superstructure, masts, sails, yards, rigging, hardware, fixtures, and other attachments,” and a “deck” is defined as “the horizontal surface of a vessel that covers the hull, including exterior cabin and cockpit surfaces…”
In order to receive protection, you must fill out Form D-VH, attach “deposit material” (pictures of your boat), and pay the fee (currently $200).
Once you submit the required material, the Copyright Office will examine the application and determine if the design meets the statutory standards for registration. If so, the design will be registered and published. The publication date will serve as the date of registration.
You are also required to mark the hull and/or deck in some manner to show that it has been registered. The Copyright Office requires the words “Protected Design”, the abbreviation “Prot’d Des.”, a “circle D” symbol similar to the ® for a registered trademark, or the symbol “*D*”. You must also include the year protection commenced and the name of the owner or the generally accepted alternative designation of the owner. The “generally accepted alternative designation of the owner” is interesting in that it requires the owner to record such a designation with the Copyright Office. This is all a fancy way to describe your logo. If your boat company operates under a logo, you can record the logo with the Copyright Office and use that “alternative designation” when marking the boat with the “Protected Design” designation. So, “Kevin Wimberly, *D* 2009” would satisfy the marking requirement as would “[Your logo as recorded at the C0pyright Office’, *D* 2009.”
As of today, only 11 logos/designations have been recorded with the Copyright Office. See them HERE.
What Benefit Does It Give Me?
A registered vessel hull or deck design is protected for 10 years from the earlier of the date of registration or the date the design is first made public. 17 U.S.C. § 1304. The protection gives the registrant the exclusive right to make, have made, import, sell, and/or distribute any useful article embodying the registered design.
If someone does infringe the design, assuming the design was properly marked upon receiving a registration, the registrant may recover actual damages, the infringer’s profits, attorney’s fees, and an injunction requiring the infringer to cease infringing and to destroy any molds and devices used to create infringing hulls. Note that if the registrant did NOT mark the vessel in accordance with 17 U.S.C. § 1306, the recovery of damages will only accrue from the time the registrant put the alleged infringer on notice, such as via a cease and desist letter which asserts the registration.
Why Are You Writing About It in 2009?
Good question. Late last year (October 16, 2008 to be precise), the Vessel Hull Design Protection Amendments of 2008 were approved and signed into law by President Bush. These amendments closed a loophole by which some manufacturers took advantage of loose definitions in the original VHDPA. Prior to the Amendments, the definition of “hull” included the deck, which meant that a manufacturer could splash the hull of a competitor’s boat and simply change the features of the deck and not infringe under the VHDPA. As shown above, the VHDPA now differentiates between the hull and the deck of a vessel, and both are protected individually or in combination.
Is the VHDPA For Me?
It could be. That depends on your specific circumstances, and you should consult an attorney to help you make that determination. The general concensus is that registrations under the Vessel Hull Design Protection Act are fewer than anticipated. This may be because of the aforementioned loophole. Given that the loophole was only recently closed, it may take some time for manufacturers to begin registering their designs again. The most recent design on the Copyright Office’s website is from October 8, 2008. You can view the entire library of registered vessel designs HERE.
The reason there are so few registrations is due to the fact that the design being registered must be built completely from scratch — the raw plug photos and drawings must be submitted. You cannot use any existing hull to make your plug – even in part – if you plan to develop a design that qualifies for the VHDPA.
Building a new hull completely from scratch is a very expensive endeavor. Most “new” models in the industry today are at least partially built by using an existing hull. This would mean the hull or deck is no longer eligible for VHDPA.
And that is why there are so few “original” hull designs being registered.
This is as it should be. The purpose of the VHDPA was to prevent someone from using an existing design and benefiting from the work of others. It would be unfair to say that all previously existing designs were retroactively protected, and if someone used their own previously existing design as a basis, they could effectively prevent others from doing likewise.
You might say “Well, they designed it!”, but boat builders have been drawing off the work of others for millennia. The VHDPA doesn’t prevent people from drawing off the work of others, only from stealing a new design without doing any additional work.
Right now I’m doing an essay about Copyright Infringement via the Internet (internet piracy). And in one section I’ll be talking about the DMCA and what it does. The one thing I DEFINATELY don’t understand is why is the VHDPA under the DMCA if it not a form of digital medium? I could understand if the drafts for the design were made via computer, but it still seems a bit out of place. But if it’s not a digital medium, like a song or a movie, shouldn’t it just be in its own category all together?
I wouldn’t put too much weight on the title of the Act. While I haven’t exhaustively researched the legislative history, it is likely that the VHDPA just happened to get the support it needed as the other portions of the DMCA were coming together, so the VHDPA was just slipped in. Don’t forget that the DMCA had five different titles. Title V was the VHDPA. Title IV was for miscellaneous items, some which are “non-digital,” such as adjusting the salary of the Register of Copyrights.
Here are some resources re. the legislative history:
Best listing of DMCA legislative history that I’ve found: http://www.hrrc.org/index.php?id=20&subid=3
2003 Copyright Office report on the VHDPA (i.e. 5-years later): http://www.copyright.gov/reports/vhdpa-report.pdf
Early (1997) VHDPA debate: http://www.copyright.gov/docs/hr2696.html
THOMAS site for DMCA: http://thomas.loc.gov/cgi-bin/bdquery/z?d105:HR02281:@@@L&summ2=m&