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MINNESOTA LAW REVIEW

[Vol. 67:707 criteria. The arbitrary divisions inevitably engendered by traditional analysis, however, can only crudely approximate the distinctions pursued in the revision effort.

The Copyright Act of 1976 invites a more discriminating analysis. The standard of separate identity and independent existence encourages a thoughtful appraisal of the character of the claimant's contribution. The exclusion of industrial design from the scope of copyright is best understood as an attempt to bar forms influenced in significant measure by utilitarian concerns. Thus, copyright is reserved to product features and shapes that reflect even in their utilitarian environment the unconstrained aesthetic perspective of the artist. Nothing short of a candid assessment of the nature of the proffered work can successfully implement the prudent, yet fragile, distinction between applied art and industrial design.

In your November 21, 1983 letter, you requested written
comments for inclusion in the hearing record in respect of
the subject bill, H.R. 1028. My comments are attached.
Unfortunately, in view of time constraints, I was unable to
address the issue of retroactivity. I have, however, taken

the liberty of having the bill forwarded to other members
of the Copyright Committee of the Patent, Trademark and
Copyright Section of the D.C. Bar for further comment.

I appreciate the opportunity to place my views in the

Comments of Michael A. Lechter, Partner, Cushman, Darby &
Cushman, for inclusion in the hearing record regarding
H.R. 1028, "Semiconductor Chip Protection Act of 1983,"
before the Committee of the Judiciary Subcommittee on
Patents, Copyrights and Trademarks.

I am

I am Michael A. Lechter, an attorney engaged in the practice of patent, copyright, and trademark law. presently a partner in the firm of Cushman, Darby & Cushman, a law firm specializing in intellectual property law. I have been involved in the organization of, and participated in, numerous professional sessions for the various sections of the Institute of Electrical and Electronics Engineers (IEEE), the IEEE Computer Society, and the Digital Equipment Computer Users Society, on the subject of protecting and exploiting technology; I have authored articles on those subjects for publication in, for example, IEEE COMPUTER, McGraw-Hill Datapro Applications Software Solutions, and Measurements and Control.

I appreciate the opportunity to place these comments regarding the "Semiconductor Chip Protection Act of 1983" in

the record.

A Change in the Law is Needed

The process of developing a circuit layout is the subject of testimony by various witnesses already before the Committee. As is apparent from that testimony, the development of circuit layouts for a semiconductor chip is a relatively complex and expensive procedure, and the chip manufacturer has a legitimate interest in preventing competitors from appropriating its developmental work. When a competitor copies the circuit layout of a chip and can then market an identical chip without having to recoup the costs of developing the circuit layout and production masks, there can be no question that the developing company is placed at a substantial competitive disadvantage.

In general, practicable technology cannot presently prevent competing companies from reconstructing and copying the circuit layout and masks associated with a chip once the chip is placed on the market. Nor are any of the presently available legal protection mechanisms effective to protect the manufacturer's investment in developing the masks used to produce the chip. Notwithstanding the effort and cost of developing a mask, the mask is typically developed by straightforward application of standard engineering principles and generally does not meet the novelty and unobviousness requisites for patentability (35 U.S.C. 102, 103). Similarly, a mask typically does not constitute a work of authorship under the Copyright Act (17 U.S.C. 101 et seq.).

Thus, in order to protect the legitimate interests of the semiconductor industry in protecting investment in development of optimal circuit layouts and production masks and to provide incentive for innovation, it is clear that the present law must be amended.

H.R. 1028 is NOT Appropriate as Presently Written

Any change in the law, however, must be viewed not only from the perspective of protecting the interests of the manufacturer, but also from the perspective of the public interest. It is respectfully submitted that, while a change in the law to protect the legitimate interests of chip manufacturers is not only desirable, but necessary, H.R. 1028 as presently written establishes unduly broad exclusive rights in the manufacturer and should not be passed in its present form. H.R. 1028, rather than promoting innovation could conceivably have a stifling effect by prohibiting manufacture of competing chips using any mask "substantially similar" to the patterns of one of the images of a copyrighted mask work--irrespective of independent development (as opposed to copying) or rights which the public may have acquired in the mask.

H.R. 1028 purports to amend the "Copyright" Act (17 U.S.C.) to cover "semiconductor chip products, mask works, and masks," and provide an exclusive right respecting a mask

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