his desired ROM characteristics. Typically, this is conveyed by a truth table, a punched paper tape, a magnetic tape, or an already programmed ROM. The IC maker then alters that part of the microcomputer reticle set which will create the ROM, produces new masks, and makes the programmed microcomputer. Although part of the reticle remains constant and part is changed to meet the customer's request, the two are unified at the mask stage. Since the general purpose microcomputer is unquestionably a statutory machine, the programmed ROM turns that general purpose machine into a nonobvious special purpose machine, 151 The form of the program whether written on tape, on punched cards, or in integrated circuit masks should be irrelevant. No case dealing with software patentability has held that one form of the program (e.g, punched cards) is more or less patentable than any other.152 If a microcomputer with on-board programmed ROM is patentable as hypothesized above, is a bare programmed ROM? Accepting for a moment the above rationale, then if the patent is drafted so that the ROM is to be used with a general purpose microcomputer, the ROM should be patentable. The problem is, as before, convincing the court that the masks (when processed) are the program.153 An interesting question arises if it is assumed that the micro 151 A typical microcomputer has a 1 K of on-board ROM (1024 bits). This means that 21024 1.08 x 10308 different logical configurations (and hence, different machines) are available. Does this alone imply that any configuration would be nonobvious? What if the machine only had a 3-bit (8 possibilities) ROM? No ROM (bare microprocessor)? 152This is unilke copyright. On May 19, 1964, the Register of Copyrights issued Announcement SML-47, Copyright Registration for Computer Programs, reprinted in 11 BULL. COPYRIGHT SOC'Y 362 (1964); 7 Com. ACM 450 (1964). This announcement stated for the first time that the Copyright Office would register programs even though the practice was of doubtful legality. The Copyright Office justified the practice on the grounds that doubtful cases should be resolved in favor of copyrightability where possible. One of the requirements for registration was that "copies deposited for registration [must] consist of or include reproductions in a language intelligible to human beings." Id. A print-out (dump) of the program suffices. 153 It should be generally noted that for ordinary computer programs apparatus patents offer less protection than a corresponding process patent. An apparatus patent only protects against others using the program, or its substantial equivalent, in conjunction with a computer. The idea could be pirated and reformulated in a noninfringing way. A process patent, on the other hand, protects the patentee from others using substantially equivalent processes. The process itself is protected from use regardless of whether an apparatus is used in conjunction to practice the process. Under a new manufacture rationale, the ROM mask would have to be shown a new and nonobvious reorganization of previously known material. The synergy requirement could pose severe problems here. See note 89 supra. However, since the ROM is basically useless unless used with a computer, an apparatus patent of fers substantial protection against copied ROMs. Infringement would partcically be assured. 135 154 computer and ROM masks are patentable. Are other IC masks patentable? Would complex analog circuitry be eligible, or is protection to be afforded only to digital circuitry which can claim some nexus to software? While the ROM example is advanced only to show that IC mask protection might be based on a tie to existing law, the larger issue encompasses all IC masks, both analog and digital. It is clear that smaller masks of both varieties would fail under the novelty and nonobvious requirements, but would this be true of large, complex analog IC masks? It is submitted that there is no good reason to deny protection to all masks, if any protection is to be given at all. In fact, more is invested in complex analog circuit mask development than in the digital counterpart since digital circuitry is by its nature modular, so that whole blocks of circuits, and hence masks, can often be lifted and combined directly.156 Analog circuitry is, in contrast, much more sensitive to layout,157 so in general each circuit must be laid-out anew. Since the manufacturing process for analog and digital circuits is quite similar, the masks are equally "pirateable." Overall, patentability is probably the wrong kind of protection to be given IC masks. First, the statutory categories must either be enlarged or altered to fit gracefully. Second, the novelty and nonobviousness requirements will be extremely difficult for layout engineers to 154 Analog circuits are defined supra note 22. 156The patent law "doctrine of equivalents" is set forth in § 112 as follows: This passage says two things. First, if the patented item relies in part on a previously known item, the previously known item does not have to be set out in detail itself. Second, no substitution of an equivalent of a combination covered by any claim will shield against an action of infringement. See 7 WALKER ON PATENTS 333 (A. Deller, 2d ed. 1972). The show infringement by equivalence, one must show that the substituted item performs the same function in substantially the same way as the claimed item. Sanitary Refrigerator Co. v. Winters, 280 U.S. 30 (1929). The doctrine is designed to stop "the unscrupulous copyist from making unimportant and insubstantial charges and substitutions in the patent which, though adding nothing, would be enough to take the copied matter outside ... the claim." Grover Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 607 (1950). Obviously, application of the doctrine of equivalents is quite sensitive to the scope and content of the claims. As applied to IC masks, this would prevent insignificant changes such as reshaping the metal contact pads or rounding sharp corners of designs as a means of evading infringement. 15: For example, analog layout must take account of such problems as thermal balancing, metallization resistance, symmetry, and possible misregistration of superimposed masks on the chip, to name a few. Digital circuits generally are unaffected by such problems. meet and for patent examiners to police. Third, the disclosure requirement would require cither a new mode of specification or prose the prolixity of which would set new limits even for patents. Fourth, it would be nearly impossible to draft claims indicating what is claimed and what would infringe the mask. Fifth, since it takes 2 to 5 years to procure the average patent, 15% and the generational time for ICs is on the order of 2 years, the IC would receive protection as it moves into middle age. Finally, a protection period of 17 years seems overly generous-development costs are usually recouped many times by the developer in that period. 2. Copyright 163 The most suitable way to protect against piracy of IC masks is copyright.160 It is often said that copyright protects the form of the expression but not the idea behind it.161 To be eligible for copyright, a work must be original. 162 It need not be new in the patent sense. A copyright gives its holder the exclusive right to reproduce copies of the work, to prepare derivative works, and to distribute copies166 as well as rights to perform and to display168 the work. Copyright protects 167 158175 U.S.P.S. VIII (1973). 159RAM capacity is a convenient benchmark of industry technical progress. IK RAMS were available in 1974, 4K RAMs in 1975, 16K RAMs in mid-1977, and 64K RAMs are being shipped now. See STANDARD AND POOR'S INDUSTRY SURVEY, ELectronics-ElecTRICAL BASIC ANALYSIS, Sept. 7, 1978. A factor of 4 increase in capacity usually implies an advance in process technology. 160Copyright law is codified at 17 U.S.C. §§ 101-810 (1976). It was last revised in 1976. General Revisions of Copyright Law, Pub. L. No. 94-553, 90 Stat. 2541 (1976) [hereinafter cited as 1976 Copyright Act]. 161 See Kalem Co. v. Harper Bros., 222 U.S. 55 (1911); Baker v. Selden, 101 U.S. 99 (1879). 162 In Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884), the Supreme Court endorsed the following definition of an "author" within the meaning of the Constitution: "An author... is he to whom anything owes its origin; originator; maker; one who completes a work of science or literature." Id. at 57-58. 163 See Baker v. Selden, 101 U.S. 99 (1879): "The copyright of a book, if not pirated from other works would be valid without regard to the novelty, or want of novelty, of its subject matter.... That is the province of letters-patent, not of copyright." Id. at 102. See also Wihtol v. Wells, 231 F.2d 550 (7th Cir. 1956); “A copyright protects an original work and is not dependent upon novelty.... [N]othing in the Constitution commands that copyrighted matter be strikingly unique or novel." Id. at 553. 16417 U.S.C. § 106 (1) (1976). 16517 U.S.C. § 106 (2) (1976). 16617 U.S.C. § 106 (3) (1976). 16:17 U.S.C. § 106 (4) (1976). 16817 U.S.C. § 106 (5) (1976). 169 170 against the misappropriation of one's own expressions but does not proscribe the independent creation of an identical work. On the basic principle that one cannot copyright an idea or principle, one cannot copyright any expression which is the minimal expression of an idea.11 or one of a very limited number of possible expressions of an idea.172 Such a copyright would be tantamount to a monopoly on the idea itself. However, "while copyright will not protect ideas or the right to use copyrighted material, it will protect against actual copying of material designed for use when the material inseparably includes the copyrighted expression." The copyrighted work cannot be extremely 173 169[It is plain beyond peradventure that anticipation as such cannot invalidate a copyright. Borrowed the work must indeed not be, for a plagiarist is not himself pro tanto an "author"; but if by some magic a man who had never known it were to compose anew Keats'[s] Ode on a Grecian Urn, he would be an "author," and, if he copyrighted it others might not copy that poem, though they might of course copy Keats'[s]. Sheldon v. Metro-Goldwyn Picture Corp., 81 F.2d 49, 54 (2d Cir. 1936)(L. Hand. Judge). 17017 U.S.C. § 102(b)(1976) states: "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." such work." This is a codification of the existing Copyright Office regulation which disallows as unregistrable: "ideas, plans, methods, systems, or devices, as distinguished from the particular manner in which they are expressed or described in a writing." 37 C.F.R. § 202.1(b)(1978). See also Whist Club v. Foster, 42 F.2d 782 (S.D.N.Y. 1929) (laws or rules governing game, as distinguished from their expression, not copyrightable). 171Crume v. Pac. Mut. Life Ins. Co., 140 F.2d 182 (7th Cir. 1944): plaintiff recognizes defendant's right to the use of the plan or method taught by plaintiff, but denies to the defendant the right to use the words necessary to effect such use. . . . [W]here the use can be effected only in such manner, there can be no infringement even though the plan or method be copied. Id. at 184. See Sampson & Murdock Co. v. Seaver-Radford Co., 140 F.539 (1st Cir. 1905) (city directory) See also Annot., 26 A.L.R. 585 (1923). 172 Morrissey v. Procter & Gamble Co., 379 F.2d 675 (1st Cir. 1967) (game rules): When the uncopyrightable subject matter is very narrow, so that "the topic necessarily requires,"... if not only one form of expression, at best only a limited number, to permit copyrighting would mean that a party or parties, by copyrighting a mere handful of forms, could exhaust all possibilities of future use of the substance. . . . We cannot recognize copyright as a game of chess in which the public can be checkmated. Id. at 678-79. See Continental Cas. Co. v. Beardsley, 253 F.2d 702 (2d Cir. 1958); Dorsey v. Old Surety Life Ins. Co., 98 F.2d 872 (10th Cir. 1938). See also Annot., 119 A.L.R. 1250 (1939). 173 Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738 (9th Cir. 1971) (jewel encrusted pin in the shape of a bee). 174 Note, Copyright Protection for Computer Programs Under the 1976 Copyright Act, 52 Ind. L.J. 503, 513 (1977). See Continental Cas. Co. v. Beardsley, 253 F.2d 702 (2d Cir. 1958). simple and obvious,175 and must be "found in the creative power of the mind." There is, however, no requirement that the material to be copyrighted have any widely known or uniform meaning.177 What are the possibilities of copyright of IC masks? Initially, it must be determined that the optical reticle or masks themselves are copyrightable subject matter. Section 10217 of the 1976 Copyright Act lists the requirements and categories of copyrightable material. First, the material must be an "original work of authorship." Second, it must be "fixed in any tangible medium of expression." "A work is 'fixed' 175 See, e.g., Tate Co. v. Jiffy Enterprises, Inc., 16 F.R.D. 571 (E.D.Pa. 1954) (instructions "apply hook to wall" held uncopyrightable). 176 Trade-Mark Cases, 100 U.S. 82, 94 (1879). "The writings which are to be protected are the fruits of intellectual labor...." Id. 177 In Reiss v. Nat'l Quotation Bureau, 276 F.717 (S.D.N.Y. 1921), Learned Hand upheld the copyright on the "Simplix Pocket Blank Code," a list of about 6,000 five-letter words each of which had no recognized meaning, but was capable of being pronounced. The code was to be used by those needing a private code; the users would assign their own meanings to each word. "I can see no reason why words should not be [constitutional "writings"] because they communicate nothing. They may have their uses for all that, aesthetic or practical, and they may be the production of high ingenuity, or even genius." Id. at 719. It is interesting to note the change in Judge Hand's conception of the scope of "writings" of section 4 of the 1909 Copyright Law. 17 U.S.C. § 4 (1970). Compare Reiss ("The [Copyright] act must therefore be understood as meaning to cover all those compositions which, under the Constitution, can be copyrighted at all." 216 F. at 718.) with Capitol Records, Inc. v. Mercury Recording Corp., 221 F.2d 657 (2d Cir. 1955). See also Hartfield v. Peterson, 91 F.2d998 (2d Cir. 1937 ) (code book) ("[T]he compilation is the sum total of the words and phrases as arranged by the author and... the copyright is valid because of the originality of the combination." Id. at 1000.); American Code Co., Inc. v. Bensinger, 282 F.829 (2d Cir. 1922). Courts have also upheld tables and indices of nonalphabetic symbols. See, e.g., Guthrie v. Curlett, 36 F.2d 694 (2d Cir. 1929); Edwards & Deutsch Lithographing Co. v. Boorman, 15 F.2d 35 (7th Cir. 1926). 17817 U.S.C. § 102(a)(1976) states: Copyright protection subsists... in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Works of authorship include the following categories: (1) literary works; (2) musical works, including any accompanying works; (3) dramatic works, including any accompanying music; (5) pictorial, graphic, and sculptural works; (6) motion pictures, and other audiovisual works; and 179" 'Original' in reference to a copyrighted work means that the particular work 'owes its origin' to the 'author'." Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99, 102 (2d Cir. 1951). See also Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884); Wihtol v. Wells, 231 F.2d 550 (7th Cir. 1956). "Independent creation" is the key. 1 M. NIMMER, COPYRIGHT § 2.01[A] (rev. ed. 1978). |