Federal Statutory Protection for Mask Works
Table of Contents
INTRODUCTION
The Semiconductor Chip Protection Act (SCPA) of 1984 established a new type
of intellectual property protection for mask works that are fixed in semiconductor
chips. Public Law 98-620. The SCPA, which took effect on November 8, 1984,*
amended title 17 of the United States Code by adding chapter 9. Protection
for mask works is not copyright protection. Therefore, the legal requirements
for copyright protection and mask work protection differ with respect to eligibility,
ownership, term, scope and limitations of rights, remedies, and registration
procedures. This circular provides information for registering claims under
the SCPA.
*Note: While protection was effective from November
8, 1984, the Copyright Office did not begin registration of claims to protection
until January 7, 1985, pursuant to 17 U.S.C., §913(a).
“MASK WORKS” AND “SEMICONDUCTOR CHIPS”
DEFINED
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.
The integrated circuits, better known as semiconductor chips, used
to operate many consumer, medical, commercial, and industrial products and
machinery 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.
PROTECTION OF MASK WORKS
Protection under the Act extends to 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, 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.
(17 U.S.C. §902 (c))
Originality
To be protected under the Act, a mask work must be original. The Report
of the Committee on the Judiciary of the House of Representatives1
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))
1House Report
No. 98-78, 98th Cong. 2d Sess. 4(1984), p. 17.
National Origin
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.
NOTE: Under a special transitional section that expired
in 1995, the Secretary of Commerce could issue temporary orders extending
protection to mask works of foreign nationals, domiciliaries, and sovereign
authorities and to mask works first commercially exploited in a particular
country, provided that 1) the foreign country was making good faith efforts
and reasonable progress toward a treaty with the United States or toward enactment
of legislation protecting U. S. mask works; 2) the country was not engaging
in piracy of mask works; and 3) issuance of the order would promote the purposes
of the Act and interests of international comity. The Secretary issued orders
to the following nineteen countries: Australia, Austria, Belgium, Canada,
Denmark, Finland, France, the Federal Republic of Germany, Greece, Ireland,
Italy, Japan, Luxembourg, the Netherlands, Portugal, Spain, Sweden, Switzerland,
and the United Kingdom. Mask works registered under these orders remain valid
for the full 10-year term of protection if otherwise valid. The Secretary
had the authority to designate the effective date and duration in the order.
The Secretary’s authority terminated on July 1,1995 (Public Law 102-64),
together with all orders issued under that authority.
All countries that are members of the World Trade Organization (WTO) became
eligible for mask work protection on June 1, 1996, under Presidential Proclamation
6780 that was issued on March 23, 1995. In addition, that Proclamation extended
mask work protection to Australia, Canada, Japan, Switzerland, and the Member
States of the European Community as of July 1, 1995.
REGISTRATION OF MASK WORKS
Registration Mandatory to Secure Protection
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.
Note: Retroactivity to July 1, 1983
Protection is available to a mask work first commercially exploited on or
after July 1,1983, and before the effective date of the Act if a claim
in the mask work was registered with the Copyright Office before July 1,1985.
Importance of Certificate of Registration
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.
TERM OF PROTECTION
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).
NOTE: To “commercially exploit” a mask work is defined
in the Act as the distribution to the public for commercial purposes of a
semiconductor chip product embodying the mask work, with the provision that
the term includes an offer to sell or transfer a semiconductor chip product
only when the offer is in writing and occurs after the mask work is fixed
in the semiconductor chip product.
EXCLUSIVE RIGHTS OF AN OWNER: LIMITATIONS AND TRANSFERS
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
Limitations on Rights
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.
NOTE: House Report 98-7812 refers to
the “paper trail” evidencing the extensive effort involved in legitimate
reverse engineering and states that reverse engineering is an affirmative
defense to an infringement claim.
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.
2House Report No. 98-781,98th Cong.,
2d Sess. 4(1984), p. 21.
Transfer of Rights
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.
For information on the recordation of documents of transfer in the Copyright
Office, see p. 6 of this circular.
MASK WORKS CREATED BY EMPLOYEES OF THE U.S. GOVERNMENT
Federal protection under the Semiconductor Chip Protection Act is not available
for any mask work of the U. S. Government, that is, any mask works created
by U. S. Government employees as part of their official duties.
HOW TO APPLY FOR REGISTRATION OF MASK WORKS
To apply for registration of a mask work, send the following to the Copyright
Office:
- Completed Form MW
- A nonrefundable $75 filing fee, and
- The appropriate identifying material (deposit)
Send the application, fee, and deposit in the same package to:
Department MW
Library of Congress
101 Independence Avenue, S.E.
Washington, D.C. 20540
To obtain Form MW free of charge, download it from the Copyright Office website
at www.copyright.gov. You may photocopy
blank application forms. However, photocopies of Form MW submitted to the
Copyright Office must be clear and legible on a good grade of 8 1/2-inch by
11-inch (preferably blue) paper suitable for automatic feeding through a photocopier.
Forms not meeting these requirements will be returned. You may also call the
Forms and Publications Hotline at (202) 707-9100 and leave a recorded request.
DEPOSIT OF IDENTIFYING MATERIAL
The Act gives the Register of Copyrights broad, general authority to specify
the identifying material to be deposited in connection with the claim for
registration. In recognition of the public representations of a need to preserve
trade secret protection or avoid public disclosure of sensitive information
embodied in various identifying materials, the regulations of the Copyright
Office provide different deposit options, depending upon whether the mask
work has been commercially exploited. The Copyright Office encourages the
fullest disclosure of the mask work within the deposit options established
by the regulation.
For commercially exploited mask works, the identifying material shall
consist of the following:
- Four chips (dies) as first commercially exploited; and
- One full set of visually perceptible reproductions of each layer of the
mask work. The applicant may elect to deposit either plastic color overlays,
composite plots, or photographs of each layer of the mask work.
For mask works that have not been commercially exploited, the identifying
material shall consist of:
- One full set of either plastic color overlays or composite plots of each
layer of the semiconductor chip product.
- Although no chips (dies) need to be sent, the applicant may elect to
deposit four reproductions of the most complete form as fixed in a chip
product.
The visually perceptible materials shall be reproduced at a magnification
sufficient to reveal the basic design of the mask work and shall be at least
20 times the magnification of the actual size. They must be readily storable
in an 8 1/2 x 11-inch format. Titles should be placed on all identifying materials
so that applications and deposit materials can be matched.
REGISTRATION IN MOST COMPLETE FORM
Owners seeking registration of a mask work must generally submit the entire
original mask work in its most complete form as fixed in a semiconductor chip
product. The most complete form means the stage of the manufacturing process
which is closest to completion. Entire impersonalized gate arrays and custom
metallization layers may be registered separately, as an exception to the
general rule.
FULL DISCLOSURE REQUIREMENT FOR REGISTRATION OF LESS
THAN 20 PERCENT OF INTENDED FINAL FORM
Where the mask work in which registration is sought represents less than
20 percent of the area of the intended final form of the chip product, the
deposit must consist of a visually perceptible representation of the work
that reveals the totality of the mask work contribution to a person trained
in the state of the art. The representation may consist of any combination
of plastic color overlay sheets, drawings or plots in composite form, or a
photograph(s) of the entire mask set. If needed, additional explanatory material
may accompany the visually perceptible representation to identify all of the
elements in the mask work contribution.
DEPOSIT FOR TRADE SECRET PROTECTION
Where an applicant makes a claim of trade secret protection or a need to
protect sensitive information, certain material may be withheld from the deposit
of identifying material. Below is an outline of the deposit options.
Mask Works Commercially Exploited
- Four chips as first commercially exploited, and
- Special “identifying portions” (defined below) for no more
than two of each five layers of the mask work in which trade secrecy is
claimed, and
- Color overlays, plots, or photographs for all other layers
Mask Works Not Commercially Exploited
- Special “identifying portions” (defined below) for any layer
or layers in which trade secrecy is claimed, and
- A single photograph of the top or other visible layers of the mask work
with the sensitive information maintained under a claim of trade secrecy
blocked out, provided the blocked out portions do not exceed the remaining
portions
Identifying Portions
The “identifying portions” shall consist of a printout of the
mask work design data pertaining to each withheld layer, reproduced in microform,
or visually perceptible representations (plastic color overlays, composite
plots, or in the case of commercially exploited mask works, photographs
of the masks) in which portions maintained under a claim of trade secrecy
are blocked out, provided that the portions remaining are greater than the
portions blocked out. For mask works not commercially exploited, sensitive
information may be blocked out from the design data, provided that the portions
remaining are greater than the portions blocked out.
SPECIAL RELIEF
On a case by case basis, the Register of Copyrights may decide to grant special
relief from the deposit requirements. Requests for special relief must be
made in writing and must set forth the specific reasons why the request should
be granted. Also, they should generally propose an alternative form of deposit.
Requests should be addressed to:
Library of Congress
Copyright Office
Chief, Examining Division
101 Independence Avenue, S.E.
Washington, D.C. 20559-6000
FEE
The nonrefundable filing fee for an application for registration of a claim
to protection in a mask work is $75 (check, money order, or bank draft, not
cash) payable to: Register of Copyrights.
SPECIAL HANDLING
Special handling of an application for registration of a claim to protection
in a mask work is granted at the discretion of the Register of Copyrights
in a limited number of cases involving pending or prospective litigation or
contract deadlines. The fee for special handling is $580, in addition to the
$75 filing fee. Payment must be in the form of a certified check, cashier’s
check, or money order.
Requests for special handling may be made in person in the Copyright Office’s
Public Information Office in room LM- 401 in the Library of Congress, James
Madison Memorial Building, located at 101 Independence Avenue, S.E., Washington,
D.C. 20559-6000, or by mail. A special handling form or a letter containing
answers to the following questions is required. Why is there an urgent need
for special handling? If it is because of litigation, is the litigation actual
or prospective? Are you or your client the plaintiff or defendant? What are
the names of the parties and the name of the court where the action is pending
or expected? It is also necessary to certify that the answers to these questions
are correct to the best of your knowledge. Mailed requests and any later correspondence
concerning a special handling application should be sent to:
Library of Congress
Department 100-Special Handling
Washington, D.C. 20540
The outside of the envelope and the letter inside should clearly indicate
that it is a request for special handling. The request must be accompanied
by a completed application, the required deposit material, and the required
fees.
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:
- The words mask work, the symbol *M* or the symbol
,
and
- The name of the owner(s) of the rights in the mask work or an abbreviation
by which the name is recognized or 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.
PUBLIC ACCESS TO IN-PROCESS FILES
In-process files are those which the Copyright Office makes for its own immediate
internal use in connection with pending applications for registration or the
recordation of documents, and which are preliminary to the completion of the
public record.
There is no direct access by the public to in-process files or to any of
the areas where they are kept. Likewise, direct public use of computer terminals
intended to access the automated equivalent of these files is not permitted.
Requests for certain information contained in the in-process files may be
obtained by anyone, following payment of applicable fees, upon request to:
Library of Congress
Copyright Office
Information and Reference Division, LM-453
101 Independence Avenue, S.E.
Washington, D.C. 20559-6000
If a claim is older than 6 months, the Office will do an in-process search
without charge to determine why the certificate has been delayed.
PUBLIC ACCESS TO DOCUMENT RECORDS
Requests for copies of records or deposits should be addressed to:
Library of Congress
Copyright Office
Certifications and Documents Section, LM-402
101 Independence Avenue, S.E.
Washington, D.C. 20559-6000.
Tel: (202) 707-6787
Copying of certain completed records and indexes relating to a registration
of a recorded document or identifying material deposited in connection with
a completed registration may be done in the Certifications and Documents Section.
Since some of the materials are not stored at the Copyright Office, it is
advisable to consult with the Certifications and Documents Section to determine
the length of time necessary to reproduce the required materials.
Requests for searches of the catalogs and indexes of the Copyright Office
should be addressed to:
Library of Congress
Copyright Office
Reference and Bibliography Section, LM-450
101 Independence Avenue, S.E.
Washington, D.C. 20559-6000
Tel: (202) 707-6850
Copyright Office records from January 1, 1978, forward are available for
searching on the Copyright Office website at www.copyright.gov
RECORDATION
Any transfer of ownership or other document pertaining to a mask work may
be recorded in the Copyright Office if the document filed for recordation
is accompanied by the appropriate fee and meets the following requirements:
- The document must bear the actual signature or signatures of the person
or persons who executed (signed) the document. Or, if a photocopy of the
original signed document is submitted, it must be accompanied by a sworn
or official certification. The certification must state that the attached
reproduction is a true copy of the original signed document.
- The certification must be:
- A sworn certification signed by at least one of the parties to the
signed document or by an authorized representative of that person and
must contain a notarization or a statement made under penalty of perjury.
EXAMPLE: “l certify under penalty of perjury under the laws of
the United States of America that the foregoing is a true copy of the
original document,” or
- An official certification. An “official certification”
is a certification, by the appropriate Government official, that the
original of the document is on file in a public office and that the
reproduction is a true copy of the original.
- The document must be complete by its own terms, that is, a document that
contains a reference to any schedule, appendix, exhibit, addendum, or other
material as being attached or made a part of it, is generally recordable
only if the attachment is submitted for recordation with the document.
- The document must be legible and capable of being reproduced on microfilm.
The fee for recordation of documents pertaining to mask works shall be computed
as follows:
- For a document covering no more than one title, $80;*
- For additional titles: each group of 10 or fewer, $20.*
NOTE: Copyright Office fees are subject to change. For current fees, please
check the Copyright Office website at www.copyright.gov, write
the Copyright Office, or call (202) 707-3000.
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DOCUMENTS WILL BE RETURNED UNRECORDED IF:
- The document submitted is not capable of being reproduced legibly;
- The document is incomplete by its own terms;
- The document is marked as an Exhibit;
- The complete recordation fee is not submitted;
- It is unclear whether the document is to be recorded;
- The document is submitted to this Office in error.
Upon receipt of the acceptable document and fee, the Copyright Office will
record the document and return it with a certificate of recordation.
Please send documents to be recorded to:
Library of Congress
Copyright Office
Documents Recordation Section, LM-462
101 Independence Avenue, S.E.
Washington, D.C. 20559-6000
FOR FURTHER INFORMATION
-
Information via the Internet: Circulars, announcements, regulations,
other related materials, and all copyright application forms are available
on the Copyright Office homepage at www.copyright.gov.
- Information by telephone: For general information about copyright,
call the Copyright Public Information Office at (202) 707-3000.
The TTY number is (202) 707-6737. Information specialists are on
duty from 8:30 a.m. to 5:00 p.m., eastern time, Monday through Friday,
except federal holidays. Recorded information is available 24 hours a
day. Or, if you know which application forms and circulars you want, request
them from the Forms and Publications Hotline at (202) 707-9100 24
hours a day. Leave a recorded message.
- Information by regular mail:
Library of Congress
Copyright Office
Publications Section, LM-455
101 Independence Avenue, S.E.
Washington, D.C. 20559-6000
Rev: December 2004
This electronic version has been altered slightly from the original printed
text for presentation on the World Wide Web. For a copy of the original
circular, consult the PDF
version or write to Copyright Office, 101 Independence Avenue S.E., Washington,
D.C. 20559-6000.