274

"set of nine drawings on Mylar sheets." Intel released the 8755 for sale in March, 1977. On July 27, 1977, Intel sought to deposit with the Register of Copyright two finished 8755 chips as "copies of the published form" of the mylar reticles. The form accompanying the deposit clearly stated that no separate claim of copyright was being asserted in the chips themselves. The Copyright Office rejected the proferred chips on August 31, 1977, on the basis that the mylar drawings had been accepted originally only as technical drawings. The Copyright Office added that it was "the consistent policy of the Copyright Office to reject claims in the actual published chips." Intel protested this action. The Register of Copyright responded on December 2, 1977, indicating that the Copyright Office considered the mylar reticle to be only an instructional material depicting the interrelationship of the layers of the chip. Articles of utility were not permissible as the subject of copyright. That which was reproduced in the chips was not copyrighted in the masks; that which was copyrighted in the masks was not protectable in the chips. On December 21, 1977, Intel filed an action275 in the nature of mandamus to compel the Register of Copyrights to accept the deposit of two chips as published copies of the copyrighted mylar reticle. The case was settled after some interrogatories were filed and depositions taken.

The Copyright Office agreed to place two chips in the file containing the copyrighted reticle but did not accept them on the basis that the chips were the published form of the reticle.276 This case arose under the copyright law in existence prior to the 1976 Copyright Act. Because the new law went into effect on January 1, 1978,28 and because Intel was the only company to attempt copyright registration of optical reticles before that date, both sides agreed to drop the case. Although the Copyright Office agreed to keep the chips, none of the real issues of the case was resolved.279

274 The letter of August 31, 1977, from the Copyright Office to Intel reflects the basic misunderstanding between the two. Intel did not claim any copyright in the chips qua chips, but only in the reticle. This chips were merely the first published form of the reticle.

275 Intel Corp. v. Ringer, Register of Copyrights, No. C-77-2848-RHS (N.D. Cal., filed April 13, 1978).

276Conversation with Roger S. Borovoy, Vice President and General Counsel, Intel Corporation. Conversation with Richard Glasgow, Office of the General Counsel, Copyright Office, Washington, D.C.

27717 U.S.C. § 13 (1970).

27817 U.S.C. § 301(a) (1976).

279Conversation with Michael Cleary of Brylawski and Cleary, Washington, D.C. (Copyright counsel to Intel Corporation).

SUBSEQUENT DEVELOPMENTS

280

Following the Intel case, the Copyright Office planned to hold hearings in early 1979 to consider the copyrightability of IC reticles and masks. However, these plans were abandoned following the introduction by Congressman Edwards of H.R. 1007, which would amend the 1976 Copyright Act as follows:

Be it enacted... That the paragraph beginning "Pictorial, graphic, and sculptural works" in Section 101 of title 17, United States Code, is amended by adding at the end thereof the following new sentence: "Such pictorial, graphic, and sculptural works shall also include the photographic masks used to imprint patterns on integrated circuit chips and include the imprinted patterns themselves even though they are used in connection with the manufacture of, or incorporated in a useful article.

This proposed legislation, a direct outgrowth of the Intel case,2 282 faces the useful articles doctrine directly and in the limited case of IC masks, abrogates the doctrine. The bill covers only the photographic masks used and the resulting patterns on the IC itself, not the optical reticle. This is not a drawback since optical reticles are currently accepted as technical drawings by the Copyright Office.23 In addition, the development of direct electron-beam mask writing will eliminate eventually the need for optical reticles.

The main problem with the bill as drafted is that it does not add any definition to itself. For example, what is to be the legal definition of "integrated circuit chips"?284 Would it include hybrid circuits which

280Conversation with Richard Glasgow, Office of the General Counsel, Copyright Office, Washington, D.C.

281 H.R. 1007, 96th Cong., 1st Sess. (1979) was introduced by Congressman Edwards of California for himself, Congressman McCloskey, and Congressman Mineta, on January 18, 1979. The bill is now pending in the Subcommittee on Courts, Civil Liberties and the Administration of Justice of the Committee on the Judiciary. Conversation with Roberta Haberle, Congressman Edward's office.

282 Mr. Borovoy of the Intel Corporation was a moving force in the drafting and introduction of the bill. Id.

283 See, e.g., the discussion of the Intel case, notes 272-81 supra and accompanying text.

284 The bill is not even entirely self-consistent. The title of the bill refers to "semiconductor chips" while the text applies to "integrated circuit chips." In comcon parlance the two terms are used interchangeably, yet they represent different concepts. A "semiconductor chip" is a chip made of silicon, germanium, gallium arsenide, or any of a host of other materials delimited by electrical characteristics. An "integrated circuit chip" is a chip in or on which is constructed an "integrated circuit." An "integrated circuit" is not limited to the category of electronic devices. For example, in recent years the new field of integrated optics has emerged. These devics borrow concepts and techniques from semiconductor integrated circuits, yet function without electricity. Evidently, they would be protected as "integrated circuits," but not as "semiconductor chips."

are fabricated of several ICs and other components on a substrate? What if future technology does not use chips?285 There is certainly no reason not to redraft the language to accommodate such future developments.

Another definition problem involves the word "imprint." The patterns which are created on IC chips are not "imprinted." "To imprint" is defined as "to mark by pressure, to impress; stamp; to delineate by pressure." ICs are not made by "stamping" or "marking by pressure." It would be better to use a word which does not connote physical contact. The better choice may be to substitute "to fix," which already has a defined meaning,287 which is flexible enough to include IC masks as well as future technology, and which is closer to physical reality.

259

200

On April 16, 1979, the House subcommittee28 responsible for H.R. 1007 heard testimony and opinions of several major IC manufacturers, and the Copyright Office. It had been anticipated that the semiconductor companies would be uniform in their support of copyright protection of IC mask designs. 291 The IC manufacturers, however, unexpectedly split into opposing camps: two gave support to H.R. 1007 while two voiced opposition to it.203

292

After a background exposition of the structure of the industry and the nature of the problem of protection, the proponents outlined their reasons for supporting the bill.29 Their position was that reverse engi

285IBM, for example, is known to be developing a Josephson junction computer which is anything but a chip. This computer, a 2" x 2" x 2" cube, will contain 128 megabytes of memory, operate at 4° Kelvin, and be about 1,000 times faster than any present computer. It will not be made of a semiconductor material. See Electronic Engineering News, March 20, 1978.

Chip technology is basically a planar semiconductor technology. While it is economically an important technology now, it was nonexistent a little over twenty years ago. It is better to allow flexibility in the language to accomodate new technology. This is especially true when one compares the generational time of electronics to that of legislation.

286OXFORD ENGLISH DICTIONARY (compact ed. 1971).

287 See 17 U.S.C. § 101 (1976).

288 The Subcommittee on Courts, Civil Liberties and the Administration of Justice of the House Committee on the Judiciary. Electronic News, April 23, 1979, at 1, col. 1.

280Industry participants included Intel, Mostek, Fairchild Semiconductor, and

National Semiconductor. Id.

290 The Copyright Office was represented by Jon Baumgarten, General Counsel, Copyright Office, Washington, D.C.

Id.

291ld.

202 Intel and Mostek supported H.R. 1007. Id.

293 Fairchild Semiconductor and National Semiconductor opposed H.R. 1007.

204 The representative of Mostek, Mr. L.J. Sevin, first described the myriad applications of microelectronics and the size and structure of the world market. He described the manufacturing process. Speaking about the layout of the IC,

neering should be permitted, but direct copying proscribed. 205 They emphasized steadily increasing IC development costs and displayed photographs of chips actually copied by Japanese and Russian200 IC manufacturers. One proponent submitted that H.R. 1007 would control copying through the necessity of licensing, 2

207

The opponents countered that the effect of H.R. 1007 would be a reduction of the ability of IC manufacturers in the United States to compete in the world market and an increase in the cost of IC's to consumers.298 Consumers benefitted from competition, hence competition in the form of direct copying should not be proscribed. 20" The op

he said, "[t]his is mostly done by hand, involving much trial-and-error and is one of the most difficult and time consuming parts of the development [of the IC]." Prepared Testimony of L.J. Sevin, Mostek Corporation. He emphasized the trend of increasing development costs in the semiconductor industry, especially in layout. Mr. Sevin outlined the qualities of a competent layout designer:

Layout designers are creative persons and not just draftsmen. They must have some training in electronic circuitry, usually they are electronic technicians. They must have a strong ability to visualize from abstraction and must be able to plan ahead mentally much as a good chess player. The designer must be able to cram 70,000 or more transistors and their intricate rabbit-warren connections into an absolutely minimum area in order to minimize the chip size because that is directly related to cost. Layout design is a skill that has successfully resisted twelve years of attempts at computerization. It requires a level of human ingenuity that will not be computerized for at least another 25 years in my opinion, maybe longer-maybe never! Id.

According to Mr. Sevin, a 16K RAM which cost Mostek $3 million to develop can be copied in Japan in three months for $50,000.

An interesting question arises if one assumes that it is possible to computerize the layout of an IC. To be sure, many programs now exist which can layout a circuit completely. It is usually possible for a human to improve on the computer's design. This situation is much like that which now exists for computer chess programs. A good computer chess program can now beat all novice and intermediate players, as well as some more advanced players. If an IC maker were to develop his computer chip design program to the point where it no longer relied upon human supplementation, would the resulting chip layouts have the requisite "originality"? Would they be "founded in the creative power of the mind," and be "the fruits of intellectual labor"? Trade-Mark Cases, 100 U.S. 82, 84 (1879). This query is merely another formulation of a fundamental, though unanswered, question: What intellectual property protection, if any, should be accorded the products of that which is termed loosely "artificial intelligence"?

295Id.

296 The Japanese company was Toshiba; the Russian copier was not identified. Prepared Testimony of A.S. Grove, Intel Corporation.

297ld.

298 Prepared Testimony of J. Finch, National Semiconductor Corporation. In general, the cost of ICs has dropped consistently and dramatically since their introduction. Copying of masks, however, has become a problem only recently.

209 While it may be true that consumers benefit from competition, Mr. Finch failed to answer the argument that sanctioning piracy would lead to fewer new ICs because developers would not be able to compete economically with mask pirates.

ponents noted that H.R. 1007 would work a basic change in the law, resulting for the first time in the protection of useful articles. Further, the 1976 Copyright Act and accompanying legislative history rejected such protection. The opponents drew an analogy between an IC and the end product of a numerically controlled machine tool.300 Other asserted problems were the lack of extraterritorial effect of the copyright laws, 301 the lack of any guidance as to what constitutes "fair use" of a protected utilitarian object, the fact that any new chip design would be protected regardless of its novelty and nonobviousness,303 and the

300This analogy is weak. If, for example, the lamp base statuettes in Mazer v. Stein, 347 U.S. 201 (1954), had been manufactured by a computer-controlled machine tool, they would still be copyrightable in their design. Copyright does not depend on the means of fabrication. The fact that a human being uses the intermediate step of a computer program to control the tool rather than his hands is irrelevant. It is the character of the end product, not the intervening process, that is important.

301 This is a weak argument. It assumes that no other nations have or will have an interest in protecting the work product of their semiconductor companies. Moreover, problems of reciprocity of protection should be solved by treaty, not statute. Such problems alone should not be a barrier to protection. The argument of relative disadvantage in the world market could be used to attack many other areas of the law, e.g., environmental legislation and shipping regulation. The goals, however, are still sound.

302 There is no reason that lack of judicial gloss on "fair use" of such objects should be a significant obstacle to protection. Section 107 of the 1976 Copyright Act allows "fair use" of a copyrighted work for purposes of scholarship or research, among others. 17 U.S.C. § 107 (1976). “Section 107 is intended to restate the present judicial doctrine of fair use, not to change, narrow, or enlarge it in any way." House Copyright Report, supra note 187, at 66. Section 107 enumerates four factors to be considered in determining whether a use of a work is a "fair use." These factors include the purpose and character of the use, the nature of the copyrighted work, the amount and substantiality of the portion used in relation to the copyrighted work as a whole, and the effect of the use on the potential market for or the value of the copyrighted work. Applied to ICs, it appears that these factors leave ample room for legitimate reverse engineering, but proscribe direct copying for sale. Direct copying for reverse engineering purposes, however, would probably not infringe.

Assuming, arguendo, the underlying circuit is not otherwise protected, a competing IC maker could market legally a circuit which is a direct replacement of the developer's IC as long as it was not a direct copy of the developer's IC. Such marketing would have no legal effect on the potential market for or the value of the developer's IC within the meaning of the copyright law. As long as the competing IC maker copies the developer's IC only to learn the principles of its operation or for other research purposes, no infringement should result. Bare ideas are not protected under copyright. The competing IC maker would not have had the kind of adverse effect on the market for or the value of the IC that is protectable under the law.

303 This criticism is totally inappropriate. Copyright protection has never been based on standards of novelty and nonobviousness, but on originality. See notes 161-77 supra and accompanying text.