Semiconductor Chip Protection Act of 1984

Last updated

Semiconductor Chip Protection Act of 1984
Great Seal of the United States (obverse).svg
Other short titles
  • State Justice Institute Act of 1984
  • Technical Amendments to the Federal Courts Improvement Act of 1982
  • Trademark Clarification Act of 1984
Long titleAn 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.
Acronyms (colloquial)SCPA
NicknamesFederal District Court Organization Act of 1984
Enacted bythe 98th United States Congress
EffectiveNovember 8, 1984
Citations
Public law 98–620
Statutes at Large 98  Stat.   3335 aka 98 Stat. 3347
Codification
Acts amended Trademark Act of 1946
Titles amended
U.S.C. sections created 17 U.S.C. ch. 9 § 901 et seq.
U.S.C. sections amended 15 U.S.C. ch. 22 § 1051 et seq.
Legislative history
  • Introduced in the Houseas H.R. 6163 by Robert Kastenmeier (D-WI) on August 10, 1984
  • Committee consideration by House Judiciary, Senate Judiciary
  • Passed the House on September 24, 1984 (passed voice vote)
  • Passed the Senate on October 3, 1984 (passed voice vote) with amendment
  • House agreed to Senate amendment on October 9, 1984 (363-0)
  • Signed into law by President Ronald Reagan on November 8, 1984

The Semiconductor Chip Protection Act of 1984 (or SCPA) is an act of the US Congress that makes the layouts of integrated circuits legally protected upon registration, and hence illegal to copy without permission. It is an integrated circuit layout design protection law.

Integrated circuit layout representation of an integrated circuit in terms of planar geometric shapes which correspond to the patterns of metal, oxide, or semiconductor layers that make up the components of the integrated circuit

Integrated circuit layout, also known IC layout, IC mask layout, or mask design, is the representation of an integrated circuit in terms of planar geometric shapes which correspond to the patterns of metal, oxide, or semiconductor layers that make up the components of the integrated circuit.

Layout designs (topographies) of integrated circuits are a field in the protection of intellectual property.

Contents

Background

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 U.S. 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 for $10,000 copy a chip design that had cost its original manufacturer upwards of $100,000 to design.

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 [2] and European Community (EC) countries soon followed suit [3] and enacted their own, similar laws protecting the topography of semiconductor chips. [4]

Chip topographies are also protected by TRIPS, an international treaty. [5]

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:

Copyright is a legal right, existing in many countries, that grants the creator of an original work exclusive rights to determine whether, and under what conditions, this original work may be used by others. This is usually only for a limited time. Copyright is one of two types of intellectual property rights, the other is industrial property rights. The exclusive rights are not absolute but limited by limitations and exceptions to copyright law, including fair use. A major limitation on copyright on ideas is that copyright protects only the original expression of ideas, and not the underlying ideas themselves.

Patent set of exclusive rights granted by a sovereign state to an inventor or their assignee so that he has a temporary monopoly

A patent is a form of intellectual property. A patent gives its owner the right to exclude others from making, using, selling, and importing an invention for a limited period of time, usually twenty years. The patent rights are granted in exchange for an enabling public disclosure of the invention. In most countries patent rights fall under civil law and the patent holder needs to sue someone infringing the patent in order to enforce his or her rights. In some industries patents are an essential form of competitive advantage; in others they are irrelevant.

Sui generis is a Latin phrase that means "of its own kind; in a class by itself; unique."

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. [6] 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. [7]

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, [8] 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. [9] 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. [10] Most world chip topography protection laws provide for a reverse engineering privilege.

See also

Related Research Articles

An industrial design right is an intellectual property right that protects the visual design of objects that are not purely utilitarian. An industrial design consists of the creation of a shape, configuration or composition of pattern or color, or combination of pattern and color in three-dimensional form containing aesthetic value. An industrial design can be a two- or three-dimensional pattern used to produce a product, industrial commodity or handicraft.

A sui generis database right is considered to be a property right, comparable to but distinct from copyright, that exists to recognise the investment that is made in compiling a database, even when this does not involve the "creative" aspect that is reflected by copyright.

The copyright law of Canada governs the legally enforceable rights to creative and artistic works under the laws of Canada. Canada passed its first colonial copyright statute in 1832 but was subject to imperial copyright law established by Britain until 1921. Current copyright law was established by the Copyright Act of Canada which was first passed in 1921 and substantially amended in 1988, 1997, and 2012. All powers to legislate copyright law are in the jurisdiction of the Parliament of Canada by virtue of section 91(23) of the Constitution Act, 1867.

Chip art microscopic artwork built into integrated circuits

Chip art, also known as silicon art, chip graffiti or silicon doodling, refers to microscopic artwork built into integrated circuits, also called chips or ICs. Since ICs are printed by photolithography, not constructed a component at a time, there is no additional cost to include features in otherwise unused space on the chip. Designers have used this freedom to put all sorts of artwork on the chips themselves, from designers' simple initials to rather complex drawings. Given the small size of chips, these figures cannot be seen without a microscope. Chip graffiti is sometimes called the hardware version of software easter eggs.

Copyright, Designs and Patents Act 1988

The Copyright, Designs and Patents Act 1988, also known as the CDPA, is an Act of the Parliament of the United Kingdom that received Royal Assent on 15 November 1988. It reformulates almost completely the statutory basis of copyright law in the United Kingdom, which had, until then, been governed by the Copyright Act 1956 (c. 74). It also creates an unregistered design right, and contains a number of modifications to the law of the United Kingdom on Registered Designs and patents.

The copyright symbol, or copyright sign, ©, is the symbol used in copyright notices for works other than sound recordings. The use of the symbol is described by the Universal Copyright Convention.

In copyright law, related rights are the rights of a creative work not connected with the work's actual author. It is used in opposition to the term "authors' rights". Neighbouring rights is a more literal translation of the original French droits voisins. Both authors' rights and related rights are copyrights in the sense of English or U.S. law.

The Design Piracy Prohibition Act, H.R. 2033, S. 1957, and H.R. 2196, were bills of the same name introduced in the United States Congress that would have amended Title 17 of the United States Code to provide sui generis protection to fashion designs for a period of three years. The Acts would have extend protection to "the appearance as a whole of an article of apparel, including its ornamentation," with "apparel" defined to include "men's, women's, or children's clothing, including undergarments, outerwear, gloves, footwear, and headgear;" "handbags, purses, and tote bags;" belts, and eyeglass frames. In order to receive the three-year term of protection, the designer would be required to register with the U.S. Copyright Office within three months of going public with the design.

The following outline is provided as an overview of and topical guide to intellectual property:

Feist Publications, Inc., v. Rural Telephone Service Co., 499 U.S. 340 (1991), was a decision by the Supreme Court of the United States establishing that information alone without a minimum of original creativity cannot be protected by copyright. In the case appealed, Feist had copied information from Rural's telephone listings to include in its own, after Rural had refused to license the information. Rural sued for copyright infringement. The Court ruled that information contained in Rural's phone directory was not copyrightable and that therefore no infringement existed.

The WIPO Copyright and Performances and Phonograms Treaties Implementation Act, is a part of the Digital Millennium Copyright Act (DMCA), a 1998 U.S. law. It has two major portions, Section 102, which implements the requirements of the WIPO Copyright Treaty, and Section 103, which arguably provides additional protection against the circumvention of copy prevention systems and prohibits the removal of copyright management information.

Under the law of United Kingdom, a copyright is an intangible property right subsisting in certain qualifying subject-matter. Copyright law is governed by the Copyright, Designs and Patents Act 1988, as amended from time to time. As a result of increasing legal integration and harmonisation throughout the European Union a complete picture of the law can only be acquired through recourse to EU jurisprudence, although this is likely to change if the UK leaves the European Union. Controversial new copyright rules which would require commercial online content sharing services such as YouTube to agree licences with and pay a fair fee to the rights holders of material on their sites for online material will be discussed by the European Parliament in September 2018 after MEPs voted in July 2018 to alter the legislative process. On 12th September 2018 new copyright rules were agreed by the European Parliament to help secure the rights of writers and musicians.

Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (1989), is a decision of the United States Supreme Court holding a state anti-plug molding law preempted because it partially duplicated and therefore interfered with the balance Congress had struck by federal patent law. The decision reaffirmed the Supreme Court's earlier decision in Sears, Roebuck & Co. v. Stiffel Co. (1964), which held a state unfair competition law preempted on the same ground.

<i>Stevens v Kabushiki Kaisha Sony Computer Entertainment</i>

Stevens v Kabushiki Kaisha Sony Computer Entertainment, was a decision of the High Court of Australia concerning the "anti-circumvention" provisions of the Copyright Act 1968. The appellant, Stevens, had sold and installed modchips that circumvented the Sony PlayStation's copy protection mechanism. Sony argued that Stevens had knowingly sold or distributed a "circumvention device" which was capable of circumventing a "technological protection measure", contrary to s 116A of the Copyright Act.

Canadian intellectual property law governs the regulation of the exploitation of intellectual property in Canada. Creators of intellectual property gain rights either by statute or by the common law. Intellectual property is governed both by provincial and federal jurisdiction, although most legislation and judicial activity occur at the federal level.

<i>Atari Games Corp. v. Nintendo of America Inc.</i>

Atari Games Corp. v. Nintendo of America Inc., 975 F.2d 832, is a United States Court of Appeals for the Federal Circuit case, in which the court held that Atari Games engaged in copyright infringement by copying Nintendo's lock-out system, the 10NES. The 10NES was designed to prevent Nintendo's video game console, the Nintendo Entertainment System (NES), from accepting unauthorized game cartridges. Atari, after unsuccessful attempts to reverse engineer the lock-out system, obtained an unauthorized copy of the source code from the Copyright Office and used it to create its 10NES replica, the Rabbit. The case involved copyright infringement claims by Nintendo and a defense based on fair use and copyright misuse by Atari.

The Digital Copyright Canada forum was started in Aug 2001 by Russell McOrmond to allow for a public response to that phase of the Canadian copyright revision process. While the forum focuses on digital copyright, related issues of patents, copyright, trademarks (PCT) and other sui generis protections are included.

References

  1. 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.
    Quoted in Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555, ¶ 17 (Fed. Cir. 1992). See also Brooktree, ¶¶ 21-22 (copyright and patent law ineffective).
  2. 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.
  3. 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.
  4. 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
  5. 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.
  6. 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."
  7. 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."
  8. Brooktree, ¶¶ 31-33.
  9. Brooktree, ¶¶ 48-66.
  10. See Explanatory Memorandum, Mathias-Leahy Amendments to S. 1201, 130 Cong. Rec. S12, 91617 (daily ed. Oct. 3, 1984). See also Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555, 1566-67 (Fed. Cir. 1992); Leo J. Raskind, Reverse Engineering, Unfair Competition, and Fair Use, 70 Minn. L. Rev. 385, 406 (1985).

Further reading