## Facts

- Bonito Boats, Inc. developed and marketed a fiberglass recreational boat hull design (Model 5VBR) and produced boats by first creating a model and then making molds used for manufacture.
- Bonito did not seek a federal patent covering the hull’s utilitarian or design aspects or the manufacturing process.
- Florida enacted a “plug molding” statute making it unlawful to use a direct molding process to duplicate unpatented boat hulls and forbidding knowing sale of hulls made that way.
- Bonito sued Thunder Craft Boats, Inc., alleging Thunder Craft copied Bonito’s hull using direct molding and sought damages, injunctive relief, and attorney’s fees under the Florida statute.
- Florida courts dismissed/affirmed dismissal on the ground that the statute conflicted with federal patent law.
- The U.S. Supreme Court granted review to address whether such state protection is preempted by federal patent law.

## Issues

1. Whether a state statute prohibiting direct molding (and sale) of unpatented boat hull designs is preempted under the Supremacy Clause because it grants patent-like protection to subject matter left unprotected by federal patent law.
2. Whether the statute conflicts with the federal policy favoring free competition in unpatented ideas and designs.

## Decision

- The Supreme Court unanimously held the Florida plug-molding statute preempted by the Supremacy Clause.
- The Court concluded the statute conflicted with federal patent law by providing patent-like protection for unpatented design and utilitarian concepts.
- The Court reasoned that the federal patent system depends on substantially free trade in publicly known, unpatented ideas, and state laws cannot reallocate those ideas from the public domain into private control.
- The Court distinguished permissible state regulation (e.g., trade secret and classic unfair competition rules aimed at deception) from Florida’s statute, which barred a method of copying without requiring deception or confusion.
- The Court relied on prior decisions holding that states may not use unfair competition law to prevent copying of unpatented articles when that effectively substitutes for patent protection.

## Legal Principles

- Federal patent law preempts state laws that confer patent-like exclusivity on subject matter that does not meet, or has not been subjected to, the federal requirements for patent protection.
- The federal patent scheme reflects a balance between encouraging invention through time-limited exclusivity and preserving free competition in unpatented ideas and designs.
- Once an unpatented design or utilitarian concept is publicly disclosed and marketed without federal patent protection, it generally remains free for public copying and use.
- States may regulate deception-based competition and protect trade secrets and contractual rights, but may not prohibit copying itself in a way that interferes with the federal patent system’s allocation of the public domain.

## Conclusion

The Court invalidated Florida’s anti–direct molding protection for unpatented boat hulls because it conflicted with the federal patent system by removing publicly available design and utilitarian concepts from free competition and granting state-created exclusivity resembling a patent.


Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (1989)