For example, a reverse engineered chip may have counterpart elements which do roughly the same thing as each element in an original chip, even though the visual patterns of the two chips are different. Most people who favor the proposed Act have said that its principal purpose is to prevent exact copying, and reverse engineering of this kind is acceptable. Such chips, however, could be considered "substantially similar" and therefore the second one could be held to infringe. Moreover, the persons who design such a reverseengineered chip could not use the traditional copyright defense of "independent creation", because they will have examined the original chip. With further study, the Committee hopes to make a recommendation on this aspect of the proposed Act. 0500B Charles P. Baker, Chairman Thomas R. Fitzgerald Maurice M. Klee Eric Petraske John R. Rafter Frank J. Thompson January 3, 1984 15 Silvermine Acres (203) 548-2537 The Honorable Robert W. Kastenmeier Rayburn House Office Building Washington, D.C. 20515 Re: HR 1028: The Proposed Semiconductor Dear Representative Kastenmeier: I agree with your reported opinion that the application of present copyright law to utilitarian objects presents significant problems. In particular, the Senate bill (S 1201) gives to the industry a greater portion of the public domain than they have asked for. I enclose a draft resolution submitted to the Connecticut Patent Law Association on that point. In general, present copyright law does not fit the needs of the industry, since semiconductor chips are designed under severe constraints that limit the ability of a designer to "express" an idea. This argument is developed in the enclosed article that will shortly appear in the Journal of the Patent Office Society. Please circulate this letter and enclosures to interested members of your committee and to the committee staff. If I can assist you with any further explanation, do not hesitate to call me. Very truly yours, Ene W. Oetiastic Eric W. Petraske 1 Enclosure A Draft Resolution Resolutions and Report of the Special Resolution No. 3: The current version of S. 1201 does not carry out the intent of the framers of the bill with respect to the scope of infringement and should be revised. Report and Comment on Resolution No. 3: The knowledge gained in the reverse-engineering process is routinely used to design a new integrated circuit that may be identical to or only remotely resemble the original design that was reverse-engineered. The present version of S. 1201 will effectively suppress the production of identical copies, but the authors of the bill have further testified that their intention was to permit the fabrication of a functionally equivalent chip (in which each and every element of the original circuit has a counterpart that does exactly the same thing) in which the visual patterns are different. In our opinion, this process would clearly result in a "copy" under the present copyright term of art of "substantially similar" that is included in the proposed definition of "mask" in the bill. The reverse-engineering process establishes access and the functionally equivalent chip would not only be "substantially similar", it would have the ultimate degree of "comprehensive non-literal similarity" (using the terminology from Nimmer on Copyright 13.03). The defense of independent creation is not available because the designers of the functionally equivalent chip have carefully studied every feature of the original design, so that the creation cannot be independent. Unless there is a clear direction from Congress that a different criterion should be used for semiconductor chip products, the case law on infringement will cripple the essential process of adapting and improving old designs by producing non-identical reverse-engineered products. The present bill has already made a clear distinction between prior copyright and copyright for semiconductors by establishing in the definitions a new term "embody" that -2 substitutes for "copy" for masks and chip products, so the proposed change is merely additional to an existing distinction. We respectfully suggest that the definition of a right of reverse-engineering in paragraph 119 of the bill have a second paragraph that clearly sets out the dividing line between the permissible production of functionally equivalent chips and infringing production. The suggested version of paragraph 119 is: "Paragraph 119. Scope of exclusive rights: works Right of reverse-engineering with respect to mask (a) In the case of mask works, the exclusive rights provided by section 126 are subject to a right of reverseengineering use under the conditions specified by this section. (b) (i) It is not infringement of the rights of the owner of a copyright to a mask work to reproduce the pattern on one or more masks or in a semiconductor chip product solely for the purpose of teaching, analyzing, or evaluating the contents or techniques embodied in the mask or semiconductor chip product, or the circuit schematic, logic flow, or organization of components utilized therein; (b) (ii) Nor is it infringement of the rights of the owner of a copyright on a copyrighted mask work to perform the acts listed in paragraph 106 (6) A through 106 (6) E provided such acts are performed as part of the design, production or distribution of a semiconductor chip product having one or more derivative masks associated therewith, at least one of which derivative masks embodies said copyrighted mask work, provided that (a) said derivative masks have derivative patterns produced with the aid of the analysis or evaluation specified in paragraph 119 (b) (i) above and (b) no substantial portion of said derivative patterns is substantially identical to a corresponding portion of the pattern of one of the images of said copyright mask work." These changes establish that identical copying ("fragmented literal similarity" - Nimmer 13.03) of even a portion of a mask is an infringement, but that the degree of resemblance required to establish infringement of an original design by a reverse-engineered design (by "comprehensive nonliteral similarity") must be much greater than that required under present case law. COPYRIGHT FOR MACHINES AN OXYMORON* Eric W. Petraske, A.B., Ph.D., J.D.' Accepted for publication by the Journal of the Patent Office Society The viewpoints in this paper are those of the author and not necessarily those of his employer. Patent Attorney, United Technologies J.D. Boston University, 1976 Ph.D. (Physics) University of Minnesota, 1969 |