Design Protection for Boat Hulls: A New Form of Intellectual Property Protection

December 2003

I have received a lot of questions about the Digital Millennium Copyright Act, but perhaps the least known provision of that Act is the Vessel Hull Design Protection Act. You might think that an attorney practicing in Billings, Montana wouldn't get any inquiries about intellectual property protection for a boat design, but I have. The Vessel Hull Design Protection Act provides special design protection for the shape of a boat hull. You've heard of the ® designating a federally registered trademark, and the © designating copyright - well, now there's a "D" in a circle (my computer won't even let me do that). The "D" in a circle is the symbol used to denote protection under the Vessel Hull Design Protection Act (hereinafter, the "Act").

The Act was passed in 1998 in direct response to a 1989 U.S. Supreme Court decision striking a Florida statute that was intended to protect the design of boat hulls. The Supreme Court based its decision on federal preemption generally, and Congress responded by enacting federal protection for boat hulls. According to the legislative history, the Act is grounded in the Copyright and Patent Clause of the U.S. Constitution, even though it technically affords neither copyright nor patent protection.

Under the Act, a "vessel" is defined as a craft both "designed and capable of independently steering a course on or through water through its own means of propulsion," and capable of carrying at least one passenger. A "hull" is defined as "the frame or body of a vessel, including the deck of a vessel, exclusive of masts, sails, yards, and rigging." The Act protects any original design, even if the design is dictated solely by its utilitarian function. Thus, protection under the Act represents an amalgam of patent law, which protects function, and copyright law, which protects form.

As compared to other types of intellectual property protection, protection under the Act is limited. It extends only for ten years from the date the boat enters the public arena - as compared to patent law, where protection lasts for 20 years from the date of filing, copyright law, where protection lasts for the life of the author plus 70 years, and trademark law, where protection can last as long as the trademark is being used in interstate commerce. A design notice must be placed on the boat "so…as to give reasonable notice of design protection while the [boat] is passing through its normal channels of commerce." In other words, the notice has to be noticeable.

The notice must consist of the words "Protected Design," the abbreviation "Prot'd Des.," the letter "D" in a circle, or the symbol "*D*." As with a copyright notice, the design notice must also include the year of the date on which protection for the design commenced (i.e., when the boat was first made public or the date on which the registration issues, whichever is first), and the name of the owner. In order to recover for infringement, the design must be registered with the U.S. Copyright Office within two years after the date on which the boat is first publicly exhibited, publicly distributed, offered for sale, or sold.

The same test that is applied to determine infringement in the copyright context - "substantial similarity" - is applied under the Act. Although there is no equivalent to the "fair use" defense under copyright law, there is an express statutory defense for innocent acts. If infringement is found, a court can award actual damages plus $50,000 or, as an alternative remedy, the infringer's profits. Injunctive relief, seizure and forfeiture are also available remedies. The statute of limitations under the Act is three years.

Ownership is always an interesting issue in intellectual property cases, and the Act addresses this issue expressly. It says that the designer owns the design rights, unless the design was created within the regular scope of the designer's employment, in which case the employer owns the design rights. This latter provision regarding employer ownership of design rights is similar to the "work for hire" doctrine under copyright law. The Act applies only to designs that were made on or after October 28, 1998.


Amicable photo of Toni

Antoinette M. Tease, P.L.L.C.