Introduction

Scope of Protection

Exclusion for Protection

Duration and Need for Registration to Avoid Lapse

Notice Requirements

Ownership of Rights

Introduction

The Semiconductor Chip Protection Act 1984 is included in title 17 of the United States Code along with the Copyright Act. It should, however, be realized that the Semiconductor Chip Act is not a mere adjunct to the Copyright Act, but that it creates a wholly new form of intellectual property right that is in many ways a hybrid between patent and copyright protection. It is specifically provided that rights granted under the Semiconductor Chip Protection Act do not "affect any right or remedy held by any person" under the Copyright Act.[153]

The impetus for the Act came from fears that copyright protection might not extend to programs embodied in integrated circuit chips since these were useful items per se. The Copyright Office historically refused to register copyrights for chips or for designs for them. It was, therefore, felt that additional protection was required.

Scope of Protection

The law provides a special form of protection for "mask works fixed in a semiconductor chip product".

A mask work is defined as

The Act specifically provides that for the work to be regarded as being "fixed" it must be embodied in the chip sufficiently permanently to permit the mask work to be perceived or reproduced from the product for a period of more than transitory duration. Chip products as defined in the Act must have two or more layers of metallic insulating or semiconductor material placed on or removed from a piece of semiconductor material in accordance with a predetermined pattern.[155]

Thus, protection is given for the three-dimensional pattern or typography of a semiconductor chip. For protection to exist, the work must be original and not consist simply of designs that are staple, commonplace or familiar in the semiconductor industry or be variations of such designs combined in such a way that considered as a whole, they are not original.

It is specifically stated that protection for mask works does not extend to any "idea, procedure, process, system, method of operation, concept, principle or discovery, regardless of the form in which it is described, explained, illustrated or embodied in the work".[156] The exclusive rights given to the mask work owner do, however, give the owner of the mask work right exclusive rights not only over reproduction of the mask work itself but also over the import or distribution of semiconductor chip products incorporating the work. It is also an infringement to induce or knowingly to cause another to reproduce a protected mask work or to import or distribute a chip embodying that work.[157] It should be noted that only the owner of the mask work or the exclusive licensee of all rights thereunder can bring an infringement action.[158]

Exclusions from Protection

The Act provides certain exclusions from infringements similar to the fair use provisions of the Copyright Act by providing that it is not an infringement of rights in a mask work to reproduce the work solely for the purpose of teaching, analyzing or evaluating the concepts or techniques employed in the mask work or the circuitry of the integrated circuit, logic flow or organization of components used nor is it an infringement to incorporate the results of such an analysis in one's own original mask work.[159] This, therefore, opens the way to the creation of new works by reverse engineering of a protected mask work, but only if the new work is sufficiently "original" to be entitled to protection in its own right. This reflects the traditional copyright approach that protection should be given only to a particular expression of an idea; not to the idea itself.

The Act further provides that the importation and distribution of semiconductors made by the owner of the mask work or with his consent is not an infringement of the new rights, although reproducing such an import would be.[160] Protection is also given to innocent infringers.[161]

Duration and Need for Registration to Avoid Lapse

Protection under the Act is for a period of 10 years from the date on which a mask work is first commercially exploited anywhere in the world or the date on which the work is registered whichever occurs first.[162] Registration must, however, be made within two years of the date on which the work is first commercially exploited anywhere in the world if rights are not to be lost. In any case, registration is required for an action for infringement of rights in the work can be instituted.[163]

Notice Provisions

Although the Act provides for the giving of notice to the public of a claim to protection in the work by placing the words "mask work" the symbol M in a circle or the symbol *M* on a work. However, protection is not lost if no such notice is affixed to the work, although in the absence of such a notice the ability of the owner of the rights in the mask work to obtain redress against an innocent infringer is substantially limited.[164]

Ownership of Rights

The ownership of rights under the new law is not identical with that of the Copyright Act in that initial ownership lies in the creator or where appropriate the employer of the creator. The commissioner of a mask work is not deemed to be the creator as he would be under the Copyright Act if the actual deviser had agreed that the product was made under the work made for hire doctrine. In the case of mask works, it seems that a specific assignment of rights to the commissioner of the work is required.[165]