Bitlaw

Mask Works & Copyright

Executive summary:

Executive Summary Under the Semiconductor Chip Protection Act, protection is now available for mask works fixed in semiconductor chip products. Although this Act is administered by the Copyright Office, Mask Work protection differs in some significant ways from standard copyright protection. This discussion of mask works in BitLaw is divided into these six sections:

Definition of Mask Work:

Mask Works are defined in the Act as: a series of related images, however fixed or encoded (1) having or representing the predetermined three-dimensional pattern of metallic, insulating, or semiconductor material present or removed from the layers of a semiconductor chip product; and (2) in which series the relation of the images to one another is that each image has the pattern of the surface of one form of the semiconductor chip product.

Similarly, integrated circuits are defined in the Act as: the final or intermediate form of any product (1) having two or more layers of metallic, insulating, or semiconductor material, deposited or otherwise placed on or etched away or otherwise removed from a piece of semiconductor material in accordance with a predetermined pattern; and (2) intended to perform electronic circuitry functions.

Requirements for Protection:

The Copyright Act provides legal protection for the three-dimensional images or patterns formed on or in the layers of metallic, insulating, or semiconductor material and fixed in a semiconductor chip product, i.e., the "topography" of the "chip." Although these images or patterns are purely functional features, in contrast with copyright law, they are nevertheless protected, provided that the particular mask work is neither dictated by a particular electronic function nor is one of only a few available design choices that will accomplish that function.

Protection under the Act does not extend to any idea or concept associated with a mask work. Just as ideas are not protected by copyright, no protection is available for any procedure, process, system, method of operation, concept, principle or discovery associated with a mask work, regardless of the form in which it is described, explained, illustrated, or embodied in a mask work.

To be protected under the Act, a mask work must be original. The Report of the Committee on the Judiciary of the House of Representatives provides that a mask work is "original" if it is the independent creation of an author who did not copy it. The mask work may not consist solely of designs that are staple, commonplace or familiar in the semiconductor industry, or variations of such designs, combined in a way that, considered as a whole, are not original. (17 U.S.C. 902 (b))

National Origin Requirement:

Any original mask work fixed in a semiconductor chip product by or under the authority of the mask work owner is eligible for protection if:

  1. On the date the mask work is registered with the Copyright Office or the date the mask work is first commercially exploited anywhere in the world, whichever occurs first, the owner of the mask work is:
    • a national or domiciliary of the United States; or
    • a national, domiciliary or sovereign authority of a foreign nation that is a party with the United States to a treaty affording protection to mask works; or
    • a stateless person; or
  2. The mask work is first commercially exploited in the United States; or
  3. The mask work comes within the scope of a Presidential proclamation extending protection to mask works of nationals and domiciliaries of a foreign country and to works first commercially exploited in that country, on the basis of a finding that mask works protected by the Semiconductor Chip Protection Act are also protected in the particular foreign country, either under the principle of reciprocity or under the principle of national treatment.

Registration of Mask Works:

In order to secure protection, owners of mask works must apply for registration of their claims with the Copyright Office. Moreover, owners of mask works must register their works within 2 years after the date on which the mask work is first commercially exploited, or the opportunity to secure protection under the Act will be lost.

The effective date of registration of a claim to protection in a mask work will be the date on which an acceptable application, deposit of identifying material, and appropriate fee are received in the Copyright Office. The Act further provides that a certificate of registration for a mask work issued by the Copyright Office constitutes prima facie evidence of the facts stated in the certificate and that the applicant issued the certificate has met the requirements for protection. After a certificate has been issued by the Copyright Office, the owner of the mask work or the exclusive licensee of all rights in the mask work may institute a civil action for infringement occurring after the commencement of protection accorded by the Act.

Rights Provided and Term:

During the term of protection, the owner of a mask work has the following exclusive rights:

  1. To reproduce the mask work by optical, electronic, or any other means;
  2. To import or distribute a semiconductor chip product in which the mask work is embodied;
  3. To induce or knowingly to cause another person to do any of the acts described in number 1 and number 2.

The Act permits reverse engineering of a mask work solely for the purposes of teaching, analyzing, or evaluating the concepts or techniques embodied in the mask work or in the circuitry, logic flow, or organization of components used in the mask work. The person who performs legitimate reverse engineering may incorporate the results in an original mask work which is made to be distributed.

Purchasers also obtain a right arising from the first sale of semiconductor chips. The Act specifies that purchasers of semiconductor chip products have the right to use and resell them freely but not to reproduce them without the permission of the owner of the mask work embodied in the semiconductor chip product.

The Act allows the owner of the exclusive rights to transfer all of them or to license all or fewer than all the rights. A transfer or license must be in writing and signed by the owner of the rights or by a duly authorized agent of the owner. The Act also provides that the exclusive rights in a mask work may be transferred by operation of law or by terms of a will; or, the rights may pass as personal property under the applicable state law of intestate succession.

Protection for a mask work begins on the date the mask work is registered with the Copyright Office, or the date the mask work is first commercially exploited anywhere in the world, whichever occurs first. Protection lasts for 10 years (terminating at the end of the tenth calendar year after it began).

Notice:

The owner of a mask work protected under the Semiconductor Chip Protection Act may affix a notice of ownership to mask works, to masks, and to semiconductor chip products embodying the mask work in a manner and location which gives reasonable notice of the claim to protection.

The Act requires the form of the notice to be:

  1. The words mask work, the symbol *M* or the symbol (M in a circle); and
  2. The name of the owner(s) of the rights in the mask work or an abbreviation by which the name is recognized or is generally known.

Affixation of such a notice is optional and is not a condition of protection but the notice does constitute prima facie evidence of notice of protection. The Register of Copyrights shall prescribe by regulation, as examples, specific methods of affixation and positions of the notice.