Key points:

• Protection for the shape of new vessel hull designs for watercraft is available in the United States (US) by way of the Vessel Hull Design Protection Act (VHDP).
• Protection of vessel hull designs via VHDP legislation is separate from the protection offered by US design patents.
• We see some real practical advantages in what protection via the VHDP can provide to Australian and New Zealand maritime designers engaged in activities concerning the US market.
• Whether any type of protection is most appropriate will always be driven by one’s commercial strategy. All options are worth exploring to be sure of the strategy you run with.
• If you are considering how to protect a new design for a watercraft, we recommend making contact with us so that we can help work you through the pros and cons of the protection regimes available.

If you are engaged in work that results in a design of a new vessel hull shape for export to the United States (US), then you might be interested to know that it is possible to protect the shapes of original designs for vessel hulls in the US.

This protection is by way of US legislation, specifically, the Vessel Hull Design Protection Act (VHDP).

Over 500 vessel hull designs have been registered since the VHDP was introduced in 1998. Registrants include some of the biggest names in the industry, such as Sea Ray, Formula, Wellcraft, Four Winns, Grady-White, Crownline, Crestliner, Chaparral, Maverick, Zodiac, and Scout.

If you want to learn more about how the VHDP legislation can be of use to you, please contact us to discuss further.

The bottom line

We outline below some of the key aspects of the VHDP legislation and reasons as to why we believe this legislation could be of benefit to Australian and New Zealand maritime designers who might be engaged in activities that involve the US market.

While protection of hull designs in the US is possible via design patents, pursuing this type of protection can be difficult and expensive in order to meet novelty and non-obvious requirements. Ultimately, it might not be cost effective to pursue the 15 year term of protection that a design patent provides depending on what you want to achieve commercially – as compared to the 10 years that VHDP legislation provides.

There are always pros and cons with any intellectual property (IP) protection regime, but in our view, the VHDP legislation offers Australian and New Zealand maritime designers operating in the US an alternative protection regime option that could, depending on the commercial situation, offer cost efficiencies as compared pursuing design patents.

All in all, this option might not be the right fit for a specific commercial strategy, but it’s certainly worth exploring. For instance, one could rely on protection under the VHDP legislation while waiting for an equivalent design patent to issue (at which time any VHDP protection would be terminated).

What designs are protectable under this legislation?

Under the VHDP legislation, an original design of a “useful article” which makes the article attractive or distinctive in appearance to the purchasing or using public may be protectable by the designer (or assignee).

The VHDP recognises an “original design” if not copied and the result of the designer’s creative endeavor that provides a distinguishable variation (more than merely trivial variations) over prior works of similar articles.

A “useful article” is defined as a vessel hull or deck which in normal use has an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.

What’s a “vessel”, “hull”, “deck”, “plug”, “mold” …

The VHDP recognises a number of features of vessels that can be protectable under the legislation. These include: a hull, a deck, a combination of a hull and deck, a plug, and a mold.

Firstly, a “vessel” is defined as a craft that is designed and capable of:

• independently steering a course on or through water through its own means of propulsion; and
• carrying and transporting one or more passengers.

This definition seems generous in that, in our view, there appears scope to include designs for recreational craft such as kayaks, kiteboards, windsurf boards, foil boards and the like.

A “hull” is defined as the exterior frame or body of a vessel, but specifically not the deck, superstructure, masts, sails, yards, rigging, hardware, fixtures, and other attachments.

A “deck” is the horizontal surface of a vessel that covers the hull, and includes the exterior cabin and cockpit surfaces and exclusive of masts, sails, yards, rigging, hardware, fixtures, and other attachments.

A key purpose of the VHDP was to prevent what is known as ‘splash’ or ‘flop’ molding. As such, the VHDP defines a “plug” as a device or model used to make a “mold”, being a matrix or form, for the purpose of exact duplication.

Accordingly, any Australian or New Zealand designers or manufacturers exporting new designs of water craft for commercial use in the US market should consider whether the VHDP legislation might offer some commercial advantage.  While you might not be interested in protection for enforcement purposes, it does provide a relatively cost-effective way of formally recording your design so that it cannot be protected later by a competitor.

Foils look cool and shapely – could these be protected?

Good question – foiling is a new technology and its looking like it’s going to be a significant part of marine recreation and sport in the future.

It’s not clear, but, potentially, in our view, the componentry used for foiling (eg. foil mast, front and rear wings) could be argued as constituting an exterior frame or body of a vessel’s hull given that the lower portion of the “frame” is underwater when the vessel is in ‘foiling’ mode. The board itself could also be included as being part of the hull when the vessel is in ‘displacement’ mode.

We therefore see some scope for argument which could provide foil designers with a potentially cost-effective means for protecting their designs in what is becoming a competitive market in the US (and indeed, globally).

Exclusive rights

VHDP legislation grants an owner of an original vessel design the following exclusive rights:

• to make, have made, or import, for sale or for use in trade, any useful article embodying that design; and
• to sell or distribute for sale or for use in trade any useful article embodying that design.

As we outlined above, a “useful article” also includes hull and deck plugs and molds. We see this as a practical advantage of VHDP legislation in that Australian and New Zealand manufacturers of vessel hulls being exported to the US for sale can be sure that the related tooling is protected under the scope of VHDP legislation. As noted above, protection under the VHDP legislation provides an avenue of recourse if a competitor were to acquire your new design by ‘splashing’, ‘direct moulding’, or ‘flop moulding’.

Term of protection

The period of protection provided by VHDP legislation is 10 years from the date the design is published by the US Copyright Office, or the date the design was first made public – which ever was earlier.

We note that protection by the US design patent system is 15 years. Whether these terms of protection have benefit to you one way or the other will ultimately depend on your commercial objectives with your design in the US.

We are happy to help you work through the pros and cons of this issue to help you make the right decision for you.

Application requirements

We can act for you before the US Copyright Office in pursuing and securing protection under the VHDP Act – this keeps costs down significantly as we don’t need to engage a local advocate or agent in the US (usually a US attorney).

The basic requirements for registration of a new vessel design under the VHDP legislation are that:

• an application must be made with the US Copyright Office within two years of the design being made public.
• the design must not have already received design patent protection. However, we note that protection under the VHDP legislation could serve as an interimmeasure while protection by a design patent is being pursued.

For a design to be considered for registration, an application must include the following:

1. An application form– which can be found here.

We will make sure that this form contains what it needs to.

2. Representations showing the vessel design– The representations must consist of drawings (eg. 3D CAD drawings) and/or photographs of the vessel design. Representations should be clear and complete (using different views/perspectives, hull cross sections, lines plans etc) so that the appearance of the design is adequately shown.

We can work with you in preparing this content so that it shows the key aspects of your design that are new in sufficient clarity.

3. The requisite fees– The basic application fee for each design covers up to three pages of content showing the design. For more than three pages of material, there is an additional charge.

For a simple design, three pages of content may be fine. However, we note that more pages may be necessary in order to clearly demonstrate the appearance of your design.

We will work with you to assess what is appropriate so that your design attracts the strongest possible protection for your commercial objectives in the US.

Once the application is filed it will be reviewed and considered for progressing to registration.

Notice will be provided if any issues are raised that concern registration.

Design Notice

When a design protected under the VHDP legislation is publicly exhibited, publicly distributed, or offered for sale or sold to the public, a design notice should appear on the vessel in question, eg. “PROTECTED DESIGN XYZ Technologies 2023“

Summary

We see some real practical advantages in what protection under the VHDP legislation has the potential to provide to Australian and New Zealand maritime designers engaged in activities that concern the US market.

Of course, whether this type of protection is most appropriate will always be driven by one’s commercial strategy.

As such, if you are considering options for protecting a new design for a watercraft that will be the subject of commercialisation activity in the US, we recommend making contact with us so that we can help work you through the pros and cons of the various protection regimes available.

Please contact us if you want to discuss this in more detail.