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No wake zone: VHDPA makes no splash 20 years later

By Benjamin Patton

The anniversary came – and went – unnoticed. It has now been 20 years since Congress enacted 17 U.S.C. § 1301, otherwise referred to as the Vessel Hull Design Protection Act (VHDPA). During that time, there have been a grand total of 538 registrations granted by the Copyright Office under the VHDPA. That’s an average of 27 registrations per year.  Compare this to the number of patent applications granted each year (which is well over 70,000 since 1998) and the VHDPA registrations are just a drop in the proverbial boat-building bucket.

But this doesn’t tell the whole story. The most recent VHDPA application for registration was filed on February 27, 2013. That’s a stunning six years since the last registration! The boating business is a multi-billion-dollar industry and as technology improves, so do all aspects of boating, including the design and manufacturing of boat hulls. One would imagine the marine industry to be a thriving IP market full of innovation and a desire for companies to protect their original hull designs under a law specifically tailored to fit their needs. However, this is far from reality and leaves one pondering the reasons for the seeming abandonment of the VHDPA.

The history of the VHDPA is sparse. Congress signed the VHDPA into law on October 28, 1998 following concern regarding the Supreme Court’s decision in Bonito Boats. Lobbying efforts from powerhouses in the boating industry, including the National Marine Manufacturers Association (NMMA), forced Congress to act due to the relative ease in which manufacturers could “splash” boat hulls. “Hull splashing” is a method of copying a particular boat hull design through a molding process.  Essentially, if one has access to a boat hull, they can directly copy it for a fraction of the price and time it took the original manufacturer to design and produce the hull.

The early years of the Act saw a healthy dosage of registrations. The first and only case brought under the act was Maverick Boat Co. v. AM. Marine Holdings, Inc. decided by the Court of Appeals for the 11th Circuit in 2005. In that case, the Court found that American Holdings and Blazer Boats did not infringe Maverick’s boat hull design, even though the hulls were substantially similar, because the decks of the vessels were different.

In order to remedy the Court’s decision and clarify the language of the Act, the VHDPA was amended in 2008.  Specifically, the updated definitions made clear that infringement occurs from copying either the “hull, deck or combination of a hull and deck, including a plug or mold.” After this amendment, registrations under the VHDPA began to slow down and gradually fade into the horizon. 

These astonishing numbers beg the question: why has the boating industry failed to take advantage of this unique, “sui generis form of intellectual property” protection?As anyone in the IP industry might suspect, the answer is not black-and-white.  Below are a few possible reasons why the VHDPA has failed to gain traction. 

Boat manufacturers are seeking protection through design or utility patents

The first thing that comes to mind is that boat builders are protecting their original designs through other means, such as utility and design patents. Instead of spending money to register under the VHDPA, boat hull designers have decided to go directly through the patent process.  Given that a patent grant effectively eliminates the term of protection under the VHDPA, this path may make the most sense for companies who can afford the filing fees and costs for a patent attorney.Additionally, by seeking patent protection instead of a registration under the VHDPA, an owner would have more robust protection backed by years of case law and precedent to assist in enforcing the patent. Regardless, given the relatively low cost involved in filing for protection under the VHDPA as opposed to a patent, a boat manufacturer could apply for protection under the VHDPA and subsequently file for patent protection to cover all bases. If boat builders are now turning to patents for protection, then the law is no longer serving its original intent and the VHDPA is a failure.

Boat builders don’t think the law will actually protect them

The second reason why boat builders may have abandoned the VHDPA is they don’t believe the law adequately protects their designs. As previously mentioned, the one and only case under VHDPA did not turn out well for the plaintiff. The defendants seemingly got away with infringement and the Court found that the plaintiff did not properly register their design. On top of that, the plaintiff drowned in additional fees and costs. Given the harsh ruling of the case, it may have frightened boat builders from bringing enforcement actions or registering their designs under the VHDPA. Even though Congress amended the Act to resolve the ambiguous language, boat builders likely still viewed the Act as a failure and over time turned away from it. 

However, this uneasiness should not persist. The Maverick Boat case was not an ideal test case for an infringement action under the VHDPA. It was full of poor management and administrative decisions by the plaintiff and the plain language of the Act was not in line with the initial intent of the statute. There are hundreds of patent infringement suits filed each year by plaintiffs with shaky cases, but this does not dissuade others from taking action to protect or enforce their IP rights. One weak case should not deter boat builders from taking advantage of the VHDPA.

Boat manufacturers don’t want to test the waters

This is a similar problem across all industries and is not unique to the boating industry.  Companies are hesitant to spend money to protect their IP, especially given an uncertain outcome. The boat building industry is no different. Many in the industry think it’s too easy for others to get away with infringement by only modifying a few features of a design. Thus, there’s no incentive to register under the Act. 

Nevertheless, registering one’s design(s) under the Act will, at a minimum, protect against exact copying by preventing someone from “splashing” their hull or deck. Like all areas of IP, people will inevitably cut corners by copying others’ designs. This is why it is important to have a k knowledgeable IP attorney to ensure you’re receiving the best protection possible. Boat designers and manufactures should remain vigilant and do everything within their means to protect their IP including utilizing the VHDPA.

Boat builders are unfamiliar with the law

Given there have been no registrations in the past six years, it is likely many boat builders may not even know about the VHDPA. With advancements in technology, people are able to pick up boat building as a hobby and turn it into a very profitable business. As is often the case for startup-like businesses, there are often bigger fish to fry than IP protection. 

Brand reputation is the name of the game in the boating industry. Yet, one way to boost a company’s brand recognition is to differentiate from competitors through innovation. A boat builder should always consult with a patent attorney when they come up with an original design to ensure protection from their competitors.

The real answer to the downfall of the VHDPA is very complex and likely involves a combination of the above factors as well as other economic and business considerations.  Moving forward, it will be interesting to see if any boat builders decide to register designs or bring infringement actions under the Act. The lack of success of the VHDPA might lead some to believe that sui generis protection in other industries, such as fashion and clothing design, might also be a disappointment. Whatever the case, boat builders, including industry leaders and up-and-comers, need to be aware of their IP rights and protect their designs.

Benjamin Patton, Esq. is an associate at Shook, Hardy & Bacon. He advises clients on numerous aspects of intellectual property in a variety of industries. When he’s not serving his clients, Benjamin enjoys boating, as well as fishing the in-shore and offshore waters of the United States and the Bahamas.

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