commonplace, insignificantly different from staple or commonplace]." (emphasis and bracketed material added) Thus, it is respectfully submitted that the alternative bill prepared by the Copyright Office pursuant to Congressional request is conceptually sound and by far more appropriate than H.R. 1028. Summary In summary, it is clear that the present law is inadequate to protect legitimate interests of semiconductor chip manufacturers against actual copying of their masks and mask works and co-opting of their developmental efforts. However, H.R. 1028 would create exclusive rights which do not merely protect against copying, but rather effectively create a patent-like monopoly on optimized chips without any requisite that the chip be new or unobvious. Moreover, since novelty is not a prerequisite for obtaining copyright protection and actual copying is not requisite for infringement under the Act, the essentially functional nature of the mask and mask work makes the spectre of plural concurrent or successive monopolies a reality under H.R. 1028. H.R. 1028 should therefore not be passed in its present form, but rather should be amended, at a minimum, to make novelty a prerequisite for protection and to limit the scope of the protection to instances of actual copying. Alternatively, the Semiconductor Chip Design Protection Act, prepared by the Copyright Office, should be pursued. Michael A Lechter Michael A. Lechter, Partner MAL:slk 11/30/83 As I have feared, my illness has permitted me to keep up with only teaching and other daily commitments. I have, however, given thought to your letter of October 24 and if it would be helpful (and not disrespectful) I would offer my "bottom-line" views on the questions you ask with a few supplementary comments. Perhaps in the future, at a time when it still would be helpful to the subcommittee, I can amplify these views. (1) I think that there should be some form of statutory protection for mask works and semiconductor chip products." I do not, however, think the basic approach of H.R. 1028 is sound because it attempts to fit protection for mask works generally within the principles of traditional copyright law. I am particularly concerned about the possibility of a "use right" creeping into the copyright law. (2) I do not favor any retroactive protection for mask works. My concern may be mostly from a policy perspective but from a constitutional one as well. It is the same concern that caused me to be opposed to private law 92-60 approved December 15, 1961, pertaining to the works of Mary Baker Eddy. Public domain works should stay there. (The interim extension laws are more complicated and indeed did not raise questions of retroactivity, but I might still point out that I once argued on behalf of the Museum of Modern Art that the interim extension laws were unconstitutional as applied to the film "The Birth of a Nation.") page two, Hon., Robert W. Kastenmeier (3) I would support incorporation of protection of designs of semiconductor chips as part of the long pending design bill such as H. R. 2985. I would, however, be opposed to limiting the scope of such a bill to chips. Indeed, there has been a tendency to look to the design bill as a home for a variety of works through the years before we got involved in chips. In my view, this shows that the design bill, which gives much shorter and much more limited protection than copyrights (as well as patents), would fulfill an enormous "leveling" need. In other words, it would avoid some of the extensions of copyright law that are arguably going on these days and yet would give short-term and effective protection to people who at the present time do not happen to be raising their voices as loudly as chip manufacturers. I hope you will permit a personal observation. I have for a long time been under the impression that you do not share this view of mine, as to the desirability of a design bill, although you have not stated so publicly. My own suggestion is that the design question be confronted full-face so that its value for society can be assessed on its merits. My own suspicion is that mask works and a good deal of other material coming down the pike will fit quite gracefully into the bill, perhaps with modification. As you know, the modifications of the bill have been legion through the years. I kind of think of it as having undergone an unofficial "make up" in the hands of such people as Barbara Ringer, Giles Rich, Pat Federico and a host of others. I think it would be counterproductive to utilize the structure only for one particular industry. think it makes sense to evaluate fully whether the compromises and delicate balance effected by the design bill should not be available to all designs of useful articles. Best personal wishes. I AL: sg Sincerely yours, Clan Fartman Alan Latman November 16, 1983 The Honorable Robert W. Kastenmeier Chairman, Subcommittee on Courts, Civil Liberties and the Administration of Justice Committee on the Judiciary Dear Representative Kastenmeier: Thank you for the opportunity to comment on H.R. 1028; I'm sorry that ft has taken me so long to compose a reply. This is partly because, as you no doubt aprreciate more thoroughly than I do, this legislation raises a number of quite difficult questions. I think that the fundamental difficulty arises out of the fact that masks for semiconductors so thoroughly destroy the distinction between what we might call works of expression and works of utility. The paradigmatic case for copyright law is I suppose, the novel, - and the paradigmatic case for patent law is the machine. The mask work, a physical embodiment of abstract mathematical and logical relationships, like the computer program, is an instance of a phenomena which tests the boundaries of what intuitively appeared, at one point, to be distinct categories. The I would like to begin by briefly returning to first principles. copyright and patent acts have, generally, the same objective; to protect and encourage capital investment in information, so long as that information has been embodied in a useful end product. Although there have been some rather trivial exceptions to this principle, the copyright law has generally extended protection to any marketable information product. It might, in my view, have been more convenient and conceptually clearer, if the copyright statute had recognized a distinction between aest shetic works and fact works, but no such distinction was explicit in the statute (though one can argue it is implicit in the interpretation of the standards). If, then, it is appropriate to protect telephone books, and tables of random numbers, I can see no reason to deny protection to masks for producing semiconductor chips. A mask for a semiconductor chip is conceptually very similar to, say, a map, or a set of architectural plans. Both maps and architectural plans have, of course, posed difficulty in the past, and I can see why the drafters of the bill (and, no doubt, the chip-industry) wish to have the benefit of clear definitions which will leave little room for judicial misinterpretation. And yet the possibility for error can never be eliminated; it can only be broken into smaller pieces. All of this is merely prelude to a question (which may prove rhetorical); why not simply amend the definition of "Pictorial, graphic, and sculptural works" to make it clear (though it may be true already) that the act is intended to apply to circuit diagrams, even The Honorable Robert W. Kastenmeier Page two November 16, 1983 if the circuit diagrams are in a form which allows their more direct transformation into the final product than has been true for circuit diagrams drawn with ink on paper? The courts have, it seems to me, exhibited enough animosity toward misappropriators in the past to allow us to be confident that they will interpret the statute to forbid the direct copying of mask works or masks. The only reason for objecting to such a solution that occurs to me is that the authors of the bill wish more extensive protection than would be available by such a clarifying amendment. Since copyright in plans has not been thought to prevent the creation of the object of the plans (that is, while one may have a copyright in the architect's plan, copyright does not forbid building the structure, since the building is not regarded as a "copy" of the plan), such an amendment would not prohibit making the chip from a mask, though it would prohibit making other masks or mask works. And this, at last, leads me to observe that my commentary on this act must be fundamentally flawed since it is not clear to me exactly what the problem is. If the evil at which the amendments are aimed is the reproduction of masks the..selves, and their subsequent utilization, then copyright law provides an appropriate framework for a solution. If, on the other hand, the behavior which is targeted is merely the use of masks, or the circuitry itself, to reveal the architecture of the chip, then I wonder whether such prohibitions are consistent with copyright protection. But at this point, perhaps I should merely catalog my comments about the bill, and hope that the previous remarks can provide a context for the more pointed observations to follow. 1. - I am confused by the definitons section. First of all, I don't understand the purpose of distinction between masks and mask works; is the distinction (which might be essential for engineers) equally essential for purposes of the copyright law? Also, I am puzzled by Subparagraph (3) under the definition of "semiconductor chip product"; it looks as if it is an effort to justify the bill under the commerce clause, as well as the patent and copyright clause, of the Constitution. I guess I object, and not simply because my sense of aesthetics is offended. Since the chip products are only indirectly protected by the bill, why is it necessary to bring chips within either of the enabling provisions? In order for the act to be valid, it seems that all that is necessary is that mask works and masks be within the class of constitutional "writings," and the previously mentioned (3) is merely confusing. And if protection is to be afforded a non-writing, then the Copyright Act is the wrong vehicle for providing protection. - 2. I am troubled by Sec. 4, which contains the language intended to amend Section 1016. It introduces a new verb "to embody" — which I assume is intended to mean something different from "to reproduce... in copies." Similarly, the insertion in Subparagraph (C) of "to use" as the operative verb simply compounds the confusion. As you know, the scope of the copyright law's protection has long been the source of argument. I have long told my students that mere "use" is not an infringement, the use must be of the forbidden variety before infringement occurs. I suspect that the ambiguity created by the introduction of new verbs to describe the forbidden act - to |