An act to amend title 28, United States Code, with respect to the places where court shall be held in certain judicial districts, and for other purposes.
Prior to 1984, it was not necessarily illegal to produce a competing chip with an identical layout. As the legislative history for the SCPA explained, patent and copyright protection for chip layouts, chip topographies, was largely unavailable.[1] This led to considerable complaint by American chip manufacturers—notably, Intel, which, along with the Semiconductor Industry Association (SIA), took the lead in seeking remedial legislation—against what they termed "chip piracy." During the hearings that led to enactment of the SCPA, chip industry representatives asserted that a pirate could copy a chip design for $100,000 in 3 to 5 months that had cost its original manufacturer upwards of $1 million to design.[2]
Enactment of US and other national legislation
In 1984 the United States enacted the Semiconductor Chip Protection Act of 1984 (the SCPA) to protect the topography of semiconductor chips. The SCPA is found in title 17, U.S. Code, sections 901-914 (17 U.S.C. §§ 901-914).
Japan[3] and European Community (EC) countries soon followed suit[4] and enacted their own, similar laws protecting the topography of semiconductor chips.[5]
Chip topographies are also protected by TRIPS, an international treaty.[6]
How the SCPA operates
Sui generis law
Although the U.S. SCPA is codified in title 17 (copyrights), the SCPA is not a copyright or patent law. Rather, it is a sui generis law resembling a utility model law or Gebrauchsmuster. It has some aspects of copyright law, some aspects of patent law, and in some ways, it is completely different from either. From Brooktree, ¶ 23:
The Semiconductor Chip Protection Act of 1984 was an innovative solution to this new problem of technology-based industry. While some copyright principles underlie the law, as do some attributes of patent law, the Act was uniquely adapted to semiconductor mask works, in order to achieve appropriate protection for original designs while meeting the competitive needs of the industry and serving the public interest.
In general, the chip topography laws of other nations are also sui generis laws. Nevertheless, copyright and patent case law illuminate many aspects of the SCPA and its interpretation.
Acquisition of protection by registration
Chip protection is acquired under the SCPA by filing with the US Copyright Office an application for "mask work" registration under the SCPA, together with a filing fee. The application must be accompanied by identifying material, such as pictorial representations of the IC layers so that in the event of infringement litigation, it can be determined what the registration covers. Protection continues for ten years from the date of registration.
Mask works
The SCPA repeatedly refers to "mask works." The term is a relic of the original form of the bill that became the SCPA and was passed in the Senate as an amendment to the Copyright Act. The term mask work is parallel to and consistent with the terminology of the 1976 Copyright Act, which introduced the concept of "literary works," "pictorial works," "audiovisual works," and the like and protected physical embodiments of such works, such as books, paintings, video game cassettes, and the like against unauthorized copying and distribution. The terminology became unnecessary when the House of Representatives insisted on the substitution of a sui generis bill, but the SCPA as enacted still continued its use.[7] The term "mask work" is not limited to actual masks used in chip manufacture but is defined broadly in the SCPA to include the topographic creation embodied in the masks and chips. Moreover, the SCPA protects any physical embodiment of a mask work.[8]
Enforcement
The owner of mask work rights may pursue an alleged infringer ("chip pirate") by bringing an action for mask work infringement in federal district court. The remedies available correspond generally to those of copyright law and patent law.
Functionality unprotected
The SCPA does not protect functional aspects of chip designs, which is reserved to patent law. Although EPROM and other memory chips topographies are protectable under the SCPA, such protection does not extend to the information stored in chips, such as computer programs. Such information is protected, if at all, only by copyright law.
Reverse engineering allowed
The SCPA permits competitive emulation of a chip by means of reverse engineering. The ordinary test for illegal copying (mask work infringement) is the "substantial similarity" test of copyright law,[9] but when the defense of reverse engineering is involved and supported by probative evidence (usually, the so-called paper trail of design and development work), the similarity must be greater.[10] Then, the accused chip topography must be substantially identical (truly copied by rote, so-called slavish copying) rather than just substantially similar for the defendant to be liable for infringement.[11] Most world chip topography protection laws provide for a reverse engineering privilege.
Chip art - Prior to the Semiconductor Chip Protection Act, the presence of chip art (non-functional images) was used to establish that a chip was a rote copy, not reverse engineered.
References
^The Senate Report on the bill (S.Rep. No. 425, 98th Cong., 2d Sess. (1984)) stated:
In the semiconductor industry, innovation is indispensable; research breakthroughs are essential to the life and health of the industry. But research and innovation in the design of semiconductor chips are threatened by the inadequacies of existing legal protection against piracy and unauthorized copying. This problem, which is so critical to this essential sector of the American economy, is addressed by the Semiconductor Chip Protection Act of 1984.... [The bill] would prohibit "chip piracy"--the unauthorized copying and distribution of semiconductor chip products copied from the original creators of such works.
^Page 35, HEARINGS BEFORE THE SUBCOMMITTEE ON COURTS, CIVIL LIBERTIES, AND THE ADMINISTRATION OF JUSTICE. "COPYRIGHT PROTECTION FOR SEMICONDUCTOR CHIPS"(PDF). Retrieved August 24, 2021.{{cite web}}: CS1 maint: multiple names: authors list (link) CS1 maint: numeric names: authors list (link)
^Japan was the first country to enact its own version of the SCPA, the Japanese "Act Concerning the Circuit Layout of a Semiconductor Integrated Circuit" of 1985.
^In 1986 the EC promulgated a directive requiring its members to adopt national legislation for the protection of semiconductor topographies. Council Directive 1987/54/EEC of 16 Dec. 1986 on the Legal Protection of Topographies of Semiconductor Products, art. 1(1)(b), 1987 O.J. (L 24) 36.
^The UK enacted the Copyright, Designs and Patents Act, 1988, c. 48, § 213, after it initially took the position that its copyright law fully protected chip topographies. See British Leyland Motor Corp. v. Armstrong Patents Co.
Criticisms of inadequacy of the UK copyright approach as perceived by the US chip industry are summarized in Further chip rights developments, Micro Law, IEEE Micro, Aug. 1985, pp. 91-92.
Australia passed the Circuit Layouts Act of 1989 as a sui generis form of chip protection. Korea passed the Act Concerning the Layout-Design of Semiconductor Integrated Circuits
^On Jan. 1, 1995, the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) (Annex 1C to the World Trade Organization (WTO) Agreement), went into force. Part II, section 6 of TRIPs protects semiconductor chip products and was the basis for Presidential Proclamation No. 6780, March 23, 1995, under SCPA § 902(a)(2), extending protection to all present and future WTO members.
^See generally Thomas Hoeren, Francesca Guadagno, and Sacha Wunsch-Vincent, Breakthrough Technologies – Semiconductors, Innovation and Intellectual Property, WIPO Econ. Rsch. Working Paper No. 27 (Nov. 2015), p. 28 (discussing introduction of term "mask work"). Hoeren discusses, id. n.143, the insistence of Copyright Office General Counsel Dorothy Schrader that the copyright version of the SCPA must have a "work" to be protected, in accordance with the concept of the 1976 Copyright Act. The proponents of chip protection responded, Hoeren recounts: "She wants a 'work'? OK, she can have a 'mask work' if that will satisfy her." So that 'work' went into the next draft of the Senate bill. The mask work concept had nothing to do with sui generis. It was an attempt to assimilate the chip protection sought to the copyright pattern of literary works, pictorial works, musical works,
etc. But once in the Senate bill it stayed in and was carried over to the subsequent House bill."
^The SCPA, [(17 U.S.C. § 901(a)(2))], defines a mask work as "a series of related images, however fixed or encoded, 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 in which the relation of the images to one another is such that each image has the pattern of the surface of one form of the semiconductor chip product."
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