Builders seek better design protection - Soundings Online

Builders seek better design protection

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They say the anti-copying law should be amended to stop hull-design theft

They say the anti-copying law should be amended to stop hull-design theft

Boatbuilders are asking Congress to tweak a federal law in hopes that it finally will give them real protection against another builder copying their hull when they produce an original design.

Yet even as amendments to the 1998 Vessel Hull Design Protection Act were being introduced in the Senate in September, not everyone in the industry thought the anti-copying law could be fixed to give companies the protection they seek against hull-design theft.

Design theft has been part of the industry since its inception — sometimes a remarkably blatant part. Veteran designer Agosto “Kiko” Villalon tells of an unscrupulous builder selling copies of one of Villalon’s designs just 15 days after it was introduced. Adding insult to injury, the copier taped his own logo onto one of Villalon’s boats, took a photo of it, and represented it as one of his own in a flier. “He was in the next boat show selling our boat,” says Villalon, who is from Cape Coral, Fla.

The first test of the design protection law — Maverick Boat Company v. American Marine Holdings (Pro-Line) and Blazer Boats — was a loss for Maverick, which alleged Pro-Line and Blazer violated the act by copying the hull design of its 22-foot Pathfinder bay boat, according to the court decision. In a July 27 decision, three 11th Circuit appellate judges agreed with a lower court that the Pro-Line 22 and Blazer 2220 weren’t infringing copies.

Though expert testimony quoted in the appellate decision suggests the design of the Pro-Line and Blazer hulls may have been copied from a Maverick hull, the justices said Maverick missed the two-year deadline for registering its bay boat hull under the act, so registration of the original hull was invalid. Then, when it registered a revised version of that hull with a corrected sheer line, the registration again was invalid because the new hull wasn’t much different from the original. Under the act, a hull must be “substantially” different from any existing design to be registered with the Patent and Trademark Office.

The proposed changes to the act probably wouldn’t have changed these key findings of the justices, but National Marine Manufacturers Association regulatory counsel Cindy Squires says the case uncovered some problems with the law. First, the lower-court decision bundled hull and deck together and said that even if Maverick’s hull had been properly registered, Pro-Line and Blazer had made so many changes to the deck that their designs were clearly distinguishable from Maverick’s and would not have constituted infringement. Squires says one proposed amendment would make clear that, though the act protects a boat’s hull, deck, plug and mold, it protects each separately. With this change, major design changes in the deck won’t offset substantial similarity in the hulls or vice versa.

Squires says the report accompanying the legislation also will give judges guidance in how to decide whether two designs are substantially similar or when one is distinguishably different from another. She says judges will be able to judge the similarity of two designs using familiar copyright standards: subjective feel, expert testimony about a design, and what an ordinary, reasonable person would consider similar.

She says that in time a body of anti-copying case law for boats will evolve, providing more specific guidance for judging similarities in design. But the years of litigation needed to develop that case law is exactly what worries Villalon.

“This is a terrible law. It will only benefit lawyers,” says Villalon.

A boat designer with 43 years in the industry, Villalon testified as an expert witness for defendants Pro-Line and Blazer in the Maverick case. He says one reason he chose to help them was because he doesn’t think the hull design protection act is a good law. He says it is too vague.

The Vessel Hull Design Protection Act describes an original design as “The result of the designer’s creative endeavor that provides a distinguishable variation over prior work pertaining to similar articles which is more than merely trivial and has not been copied from another source.” Villalon says phrases like “distinguishable variation,” “similar article” and “merely trivial” are indefinable except through years of litigation. “The simpler [and clearer] the law, the better it will be,” he says.

Villalon advocates for a law “with teeth,” an anti-splashing law that prohibits an infringer from making a mold from another boatbuilder’s hull — usually the first step in copying a hull design.

The problem with an anti-splashing law is that the U.S. Supreme Court struck down as unconstitutional Florida’s anti-splashing law — considered the best enacted up to that time — in Bonita Boats v. Thunder Craft Boats in 1989. Villalon says the industry needs to work on formulating a constitutional anti-splashing law that says, “It’s illegal to start any new part of any new boat using another boat’s plug unless that plug belongs to you.” Simple, clear, without a lot of legalese.

Nonetheless, Squires believes the current law, if amended, can protect original designs. Plus, it passes constitutional muster. “I think it is a critical intellectual property statute for our industry,” she says, and one case in seven years filed under the act doesn’t suggest that it is creating a legal quagmire. A builder who registers an original hull under the act protects it for 10 years — versus 120 years under copyright law for works made for hire — and can register the design at a modest cost, Squires says.