In summary, on the basis of our limited understanding of the relevant technology and subject matter, we believe: (1) that the layout design of semiconductor chips does in fact embody original, creative intellectual effort; (2) that the "photographic masks" and "imprinted design patterns" are tangible representations of the designer's effort; and (3) that the expression of that effort in a particular drawing, layout, mask, and chip design is not strictly determined by the function to be performed by the chip, and represents a choice from among varying alternatives.

Accordingly, we feel that Congress may well conclude that the "photographic masks" and "imprinted patterns" covered by H.R. 1007 are "writings of an author" in the Constitutional sense,' and "original works of authorship" that it may choose to protect under the Copyright Act. However, our expertise in the area of integrated circuit chips and related devices is quite limited, and we have a number of questions we urge this subcommittee to consider before it approves either the principle of copyright protection embodied or the terms of H.R. 1007.

Before proceeding to these questions, it may be helpful to outline the Copyright Office's current registration practices with respect to semiconductor "chips" and related materials, the bases for these practices, and our understanding of the industry's reaction to them. Before doing so, I would remind the subcommittee that the Copyright Office does not "grant" or "deny" copyrights. Under the Act of 1976, if a work is copyrightable subject matter, it is "automatically" copyrighted as soon as it is "created". Although registration has a number of advantages it is not a condition of copyright. If the Copyright Office refuses to register a work, a court may still conclude that it was in fact copyrighted; conversely, our registration of a work-although having evidentiary effect-does not preclude a judicial determination that it is not protected.

Turning to our practices:

First, with respect to schematic diagrams, "mylar sheets", photolithographic "masks" and similar representations-the Copyright Office will generally now register claims to copyright in these works. We consider them to be in the nature of scientific or technical drawings which convey or depict information. (As one goes from the original "paper"-type layout to the masks, questions about registrability have been raised in the Copyright Office; these are due to uncertainty as to whether the masks and like devices do convey information, or merely form a mechanical adjunct to the manufacturing process. However, registration will usually be made.) We understand that proponents of chip protection are hesitant to rely solely on registration of diagrams, sheets, and masks because: (a) the final chip configuration represents an integration of several individual "drawings"; (b) these diagrams, sheets, and masks are not exposed on the market-unauthorized duplication is usually done from the finished chip; and (c) the extent to which copyright in the diagram, sheet, or mask protects against duplication from the chip is uncertain under section 113(b) of the Copyright Act. That section provides:

This title does not afford, to the owner of copyright in a work that portrays a useful article as such, any greater or lesser rights with respect to the making, distribution, or display of the useful article so portrayed than those afforded to such works under the law, whether title 17 or the common law or statutes of a State, in effect on December 31, 1977, as held applicable and construed by a court in an action brought under this title.

As explained in your committee's 1976 report:

The broad language of section 106(1) and of subsection (a) of section 113 raises questions as to the extent of copyright protection for a pictorial, graphic, or sculptural work that portrays, depicts, or represents an image of a useful article

1 “By Art. I, § 8, cl. 8, of the Constitution, the States granted to Congress the power to protect the 'Writings' of 'Authors.' These terms have not been construed in their narrow literal sense but, rather, with the reach necessary to reflect the broad scope of constitutional principles. . . . The term ['author'], in its constitutional sense, has been construed to mean an 'originator', 'he to whom anything owes its origin'. . . . Similarly, although the word 'writings' might be limited to script or printed material, it may be interpreted to include any physical rendering of the fruits of creative intellectual or aesthetic labor." Goldstein v. California, 412 U.S. 546, 561 (1973). 2 Under section 102(a) the new Copyright Act, copyright subsists in fixed "original works of authorship." In discussing this standard, your committee's report noted: "Authors are continually finding new ways of expressing themselves, but it is impossible to foresee the forms that these new expressive methods will take. The bill does not intend either to freeze the scope of copyrightable technology or to allow unlimited expansion into areas completely outside the present congressional intent. Section 102 implies neither that that subject matter is unlimited nor that new forms of expression within that general area of subject matter would necessarily be unprotected. . . . Although the coverage of the present statute is very broad, and would be broadened further by the explicit recognition of all forms of choreography, there are unquestionably other areas of existing subject matter that this bill does not propose to protect but that future Congresses may want to." H.R. Rep. 94-1476, 94th Cong., 2d Sess. (1976) at 51-52.

in such a way that the utilitarian nature of the article can be seen. To take the example usually cited, would copyright in a drawing or model of an automobile give the artist the exclusive right to make automobiles of the same design? The 1961 Report of the Register of Copyrights stated, on the basis of judicial precedent, that "copyright in a pictorial, graphic, or sculptural work, portraying a useful article as such, does not extend to the manufacture of the useful article itself," and recommended specially that "the distinctions drawn in this area by existing court decisions" not be altered by the statute. The Register's Supplementary Report, at page 48, cited a number of these decisions, and explained the insuperable difficulty of finding "any statutory formulation that would express the distinction satisfactorily." Section 113(b) reflects the Register's conclusion that "the real need is to make clear that there is no intention to change the present law with respect to the scope of protection in a work portraying a useful article as such." [H.R. Rep. 94-1476 (94th Cong., 2d Sess.) at 105] Second, with respect to the configuration of the chips themselves or, in the words of H.R. 1007, "the imprinted patterns. . . on integrated circuit chips"-the Copyright Office will generally refuse registration. This practice (which appears to extend back to the earlier generation of printed circuits) is based essentially on two related factors:

(a) The definition of "pictorial, graphic, or sculptural works" in section 101 of the new Copyright Act. That section now reads:

Pictorial, graphic, and sculptural works" include two-dimensional and threedimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, technical drawings, diagrams, and models. Such works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned; the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of the utilitarian aspects of the arti cle." ("Useful articles" are defined as those having an "intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.)

Your committee's 1976 report explained the underscored language as follows: In adopting this amendatory language [underscored above], the Committee is seeking to draw as clear a line as possible between copyrightable works of applied art and uncopyrighted works of industrial design. A two-dimensional painting, drawing, or graphic work is still capable of being identified as such when it is printed on or applied to utilitarian articles such as textile fabrics, wallpaper, containers, and the like. The same is true when a statute or carving is used to embellish an industrial product or, as in the Mazer case, is incorporated into a product without losing its ability to exist independently as a work of art. On the other hand, although the shape of an industrial product may be aesthetically satisfying and valuable, the Committee's intention is not to offer it copyright protection under the bill. Unless the shape of an automobile, airplane, ladies' dress, food processor, television set, or any other industrial product contains some element that, physically or conceptually, can be identified as separable from the utilitarian aspects of that article, the design would not be copyrighted under the bill. The test of separability and independence from "the utilitarian aspects of the article" does not depend upon the nature of the design-that is, even if the appearance of an article is determined by esthetic (as opposed to functional) considerations, only elements, if any, which can be identified separately from the useful article as such are copyrightable. And, even if the three-dimensional design contains some such element (for example, a carving on the back of a chair or a floral relief design on silver flatware), copyright protection would extend only to that element, and would not cover the over-all configuration of the utilitarian article as such. [H.R. Rep. 94-1476, 94th Cong. 2d Sess. at 55]

(b) Case law. Decisions such as Taylor Instruments Companies v. Fawley-Brost Co., 139 F.2d. 98 (7 Cir. 1943), cert. denied, 321 U.S. 785 (1944) and Brown Instrument Co. v. Warner, 161 F.2d 910, cert. denied, 332 U.S. 801 (1947) raise significant legal (and policy) questions about the copyrightability of elements of mechanical or scientific devices. Both cited cases refused protection to certain calibrated charts used with temperature recording devices. In Brown Instruments, for example, the court said:

The definition is essentially a codification of a Copyright Office regulation under the law in effect before January 1, 1978. See 37 C.F.R. 202.10(c) (1973). That regulation was adopted in 1964, but it represents Copyright Office practice going back to 1909. See Stein v. Mazer, 204 F.2d 472, 477 (4th Cir. 1953), affirmed, Mazer v. Stein, 347 U.S. 201 (1954).

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Both law and policy forbid monopolizing a machine except within the comparatively narrow limits of the patent system. In several patents on recording machines, the necessary printed chart is rightly claimed as one of the operative elements. Since the machines which cooperate with the charts in suit are useless without them, to copyright the charts would in effect continue appellant's monopoly of its machines beyond the time authorized by the patent law. Third, with respect to computer programs "stored" in chips-the Copyright Office will generally register claims to copyright in these works. Under our deposit regulations, 37 C.F.R. 202.20(c)(2) (vii)(1978), a visually perceptible print-out of the program, rather than the chip, must accompany the application. [The merger of "software" and "hardware" in the chip has occasionally raised questions in the Office as to the nature of programs "stored" in these devices, but again registration is usually made.)

Proponents of protection for chip patterns also usually support copyright protection of computer programs; however, they apparently believe that copyright in programs does not offer adequate protection against duplication of computer chips. The reasons for this are not clearly expressed, but appear to be one or more of the following: (a) the chips for which they seek protection include types that do not embody computer programs at the time they are exposed to duplication (for example, "blank" chips sold for customer programming, or not designed to hold program material); (b) unauthorized duplicators of even "programmed" chips may avoid duplication of that part of the chip carrying the program; and (c) the copyright owner in the program may not be the same as the claimant of proprietary rights in the chip pattern design.

In adopting the practices I have described, most notably our exclusion of chip configurations, the Copyright Office believes it is following the language and spirit of the Copyright Act-and particularly the dividing line between artistic works and "industrial design" referred to in your Committee's report. We do not mean to detract from the efforts of chip designers. As I have indicated, we believe that these efforts represent substantial originality, ingenuity, creativity, and investment, and deserve protection against increased and improved techniques of unauthorized duplication. We do, however, have a number of questions pertaining to the accuracy of our assumptions, and the nature and scope of protection. These questions may be divided into five areas. Specifically, we respectfully suggest:

1. The subcommittee should assure itself that-within the constraints of chip purpose and size-the designer's choice of a particular layout, and the representation of the designer's labors in the "photographic masks" and "imprinted patterns", is not dictated by the function to be performed by the chip and does represent a creative choice from among different possibilities. This standard is implicit in our assumption that the works to be protected are the result of "authorship". If this is not the case, there would be a clear danger that the desired protection could go beyond the purpose of copyright in protecting "expression" rather than underlying "idea" and encroach upon the fundamental principle expressed in section 102(b) of the Copyright Act, namely, that "In no case does copyright protection for an original work of authorship 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 such work."

2. The subcommittee should explore the relationships among (a) schematic drawings, mylar sheets, photographic masks, (b) the "patterns" imprinted on the chips, (c) computer programs, if any, stored in the chips, and (d) computer programs used in generating the finished chip or its intermediate stages; and whether protection already available to each of these elements under existing mechanical, process, or design patent law, and copyright offers sufficient protection against chip duplication; or, if they do not, whether any policy considerations underlie this result. 3. The subcommittee should consider whether, in light of existing and anticipated industry structure and technology, copyright protection of the "masks" and "imprinted patterns" should be subject to specific limitations regarding the term of protection, the scope of exclusive rights, or the nature of remedies against infringement. The precedents for limitations adapted for specific purposes to particular works include:

(a) The Sound Recordings Amendment of 1971. When it first extended copyright protection to sound recordings, Congress limited the rights in such works to protection against direct electronic duplication ("dubbing"); it expressly excluded protection against imitation ("sound-alikes") and did not accord a performance right in the sound recording to recording artists or record producers. These limitations demonstrated Congress' intention to provide effective protection and remedies for the industrial problem of record piracy, without altering other legal relationships under copyright between music copyright owners, record producers and broadcast

ers. The new Copyright Act, in section 114, continued these limitations on the reproduction and performance rights usually accorded by copyright.

(b) The Report of the National Commission on New Technological Uses of Copyrighted Works. The 1978 CONTU report recommended that the copyright law be amended "to make it explicit that computer programs, to the extent that they embody an author's original creation, are proper subject matter of copyright". The report accompanied this recommendation with the suggestion that the usual reproduction and adaptation rights of copyright owners be somewhat limited "to assure that rightful possessors of copies of computer programs can use or adapt these copies for their use."

(c) Design legislation. For many years, bills have been introduced in Congress to provide copyright protection for "original ornamental designs of useful articles". H.R. 2706, introduced by Mr. Railsback on March 7, 1979, is the most recent of these proposals. As this subcommittee will recall, a similar proposal appeared as Title II of the Copyright Revision Bill, but, at the urging of your Committee, was reserved for additional Congressional consideration. Each of these design bills would have accorded "copyright"-type protection to industrial designs-that is, protection based upon original creative effort, rather than upon the principles of novelty and invention embodied in the patent laws. However, in response to particular considerations of consumer preference, market structure, and economic impact, the bills also included specific departures from ordinary copyright principles. These departures, or limitations, included a shortened term of protection specifically related to the need for protection; the protection of innocent retailers from liability for infringement; and provision for an administrative cancellation procedure.

(d) Typeface protection. The subcommittee will recall that, during the debates over copyright protection for typeface designs, it was suggested that because of the nature of the typographic industry, and the possible reach of ordinary copyright remedies to those who produced or distributed books or like works set in "infringing" type, typeface protection should be subject to certain limits. These included compulsory licensing of reproduction rights, and a limitation of remedies to those who directly duplicated protected fonts. As with the case of design protection, your Committee deferred the entire matter of typeface protection for more thorough consideration.

Other instances where Congress has concluded that the "usual" attributes of copyright protection should be limited in application to particular works or uses appear in sections 107-118 of the new Copyright Act. Significantly, some earlier discussions of "chip piracy" have suggested that certain forms of "partial" or "reverse" duplication should not be inhibited, in order to assure development of the

art.

4. The subcommittee should consider the technical accuracy of certain terms employed in H.R. 1007. We note that the title of the bill refers to "semiconductor chips", while its text identifies "integrated circuit chips", and we understand that these different terms may have varying connotations. The bill's reference to "imprinted patterns . . . incorporated in a useful article" also suggests clarification as to whether protection is to be limited to the "surface appearance" of the chips (as implied in the use of the term "chip topography" in earlier discussions of this subject), or extends to the sub-surface configurations of finished chips.

5. Finally, we believe that the Committee should consider expressly limiting the amendment, at least in terms of the "imprinted patterns", to those chips created after its effective date. This has been a common part of amendments bringing new subject matter or rights (such as sound recordings, musical compositions, performance rights in dramas, and photographs) under the copyright law. In considering this question, the committee will want to explore not only its effect on existing chips, but also the expected "useful life" of these chips, the impact upon uses of chips (and earlier forms of printed circuitry) made before the effective date, and general copyright policy against "recapturing" works from the public domain.

The issues I have discussed today involve the application of traditional principles of copyright law to works-indeed to industries and markets-whose technology is still very new. But the sophistication and newness of the subject matter should not conceal the familiarity of the basic issue: whether existing law is adequate to offer

CONTU specifically recommended that the statute be amended to provide, in part: "it is not an infringement for the rightful possessor of a copy of a computer program to make or authorize the making of another copy or adaptation of that computer program provided: (1) that such a new copy or adaptation is created as an essential step in the utilization of the computer program in conjunction with a machine and that it is used in no other manner, or (2) that such new copy or adaptation is for archival purposes only and that all archival copies are destroyed in the event that continued possession of the computer program should cease to be rightful."

protection against rapidly developing technologies of unauthorized reproduction, or should be amended to do so.

Essentially, your Committee has dealt with this kind of issue twice in recent years, with differing results: affirmatively, when in the face of growing record and tape piracy, Congress enacted the Sound Recording Amendment of 1971, and, negatively, when Congress declined, in 1975, to amend the bill for general revision of the copyright law to protect original designs of typeface against photofont duplication. In both of these cases, the growth of reprographic technology-tape and high-speed duplicators on the one hand, and photoreproduction processes for typeface on the other-forced industries which long relied upon the technical difficulty of reproducing their works for practical protection to turn to copyright and Congress for relief. Thank you for the opportunity to appear before you today; on behalf of the Copyright Office, we will be pleased to answer any questions you may have.

Mr. KASTENMEIER. We are pleased to greet Congressman Norm Mineta, cosponsor of the bill, along with Don Edwards and Pete McCloskey. We are very pleased to have Norm be able to stop by on this important question.

Before I entertain questions of Mr. Baumgarten, I'd be pleased to yield to Norm Mineta if he cares to make any further statements or opening statement.

Mr. MINETA. Thank you very much, Mr. Chairman. I apologize for being late. I had been notified it was a 2:30 hearing rather than 2 o'clock and I apologize for being late.

Mr. KASTENMEIER. Actually, you need not apologize. Originally they were scheduled for 2:30. We were not able to reach everybody to tell them that we were trying to reschedule them for 2 o'clock. We did that as we wanted to be able to accomplish today's activities before it got too late. So, you are not, in that sense, late at all. Mr. MINETA. Mr. Chairman, I would like to submit for the record and ask that the text of my statement be included in the record. Mr. KASTENMEIER. Without objection.

Mr. MINETA. I would like to thank you very, very much for taking the time to hold these very important hearings here in Santa Clara Valley, in what I think we consider to be the national home of the semiconductor industry; and to Congressman Edwards for taking the initiative in introducing this bill. I think it's important, not only for this area, but I think as far as this technology, it is new, and yet it's the kind of technology that has to be protected at the infant stage rather than to let something drag on too long and then try to come up with other kinds of remedial measures when the damage has already been done. So, I would hope, and I know that you will consider all the testimony that is given here today, Mr. Chairman.

Again, I would like to thank you very, very much.

[The written text of Mr. Mineta's statement follows:]

OPENING REMARKS BY HON. NORMAN Y. MINETA, A REPRESENTATIVE IN CONGRESS FROM THE STate of CalifoRNIA

Thank you, Mr. Chairman, Congressman Edwards, for inviting me to these important hearings on H.R. 1007, and offering me this opportunity to explain my strong support for H.R. 1007.

H.R. 1007 is short, simple and direct-it is but ten lines long. Perhaps the brevity of H.R. 1007 is misleading, for this measure is an essential step toward solving one of the semiconductor industry's most serious problems: Chip pirating.

One of the loudest complaints we in government have heard in recent months has been that government is unable to carry out simple tasks in a timely and competent manner. The need for copyright protection for semiconductor chips, or integrated circuits, is critical. Yet this important protection has escaped the creators of semiconductor chips because of a technical classification dispute within government.