inappropriate nature of copyright remedies to infringements involving mass-produced useful articles.304

The Copyright Office supported H.R. 1007. They had been at times uncertain whether masks conveyed “information" or were a mere "mechanical adjunct” to manufacturing ICs. They noted the problems which result from relying on computer program copyright to protect mask designs. The basic issues the Copyright Office felt that Congress should address were: (1) whether mask layout was in fact a creative choice and a means of expression not merely dictated by the chip's function, (2) whether existing protection under patent and copyright law

306

304 Patent remedies include injunction against future infringement (35 U.S.C. § 283 (1976)), assessment of at least a reasonable royalty which may be increased by the court up to treble damages (35 U.S.C. § 284 (1976)), and in eceptional cases, attorney fees (35 U.S.C. § 285 (1976)). Copyright remedies include injunction against future infringement (17 U.S.C. § 502(a)(1976)), impoundment and destruction of infringing articles and equipment used in the manufacture of infringing articles (17 U.S.C. § 503 (1976)), statutory or actual damages and profits (17 U.S.C. § 504 (1976)), attorney fees at the court's discretion (17 U.S.C. § 505 (1976)), and criminal penalties for willful infringement (17 U.S.C. § 506 (1976)).

The fact that different remedies are available under patent and copyright law has not been a substantial barrier to protection of other articles which may be protected under either law (e.g., an object which could either be copyrighted or patented as a design). It is not clear that the mere difference in remedies world lead, as Mr. Finch claimed, to "a reduced rate of information exchange within the U.S. semiconductor industry...." Prepared testimony of J. Finch, National Semiconductor Corporation.

305 Prepared testimony of Jon Baumgarten. General Counsel, Copyright Office, Washington, D.C. The position of the Copyright Office was that IC masks and layouts embodied "original, creative intellectual effort," that the masks and layouts were "tangible representations" of the work of the layout designer, and that the particular layout of a given chip was not determined uniquely by the chip's function and represented the designer's choice. Id.

In fact, masks and reticles are both "information" to humans and "mechanical adjuncts" to the manufacturing process. The author personally has witnessed many designers who could deduce the underlying circuit from an inspection of a mask or mask set alone.

300 The Copyright Office accepts computer programs for copyright. See note 153 supra. Under 37 C.F.R. § 202.20(c)(2) (vii) (1978), the Copyright Office requires a copy of the program "reproduced in a form visually perceptible without the aid of a machine or device, either on paper or in microform...." Id. Even if the program contained in a ROM were protected, it is questionable that the chips themselves are protected as the expression of the underlying protected program. It is the essence of copyright that it protects the form, not the content, of the expression. If any protection is to be given to IC masks and reticles, it would be best to protect all parts of all ICs, not just those which contain a program. See notes 154-58 supra and accompanying text. As Mr. Baumgarten noted, protection only of the ROM portion of the chip would still permit copying of the unprotected remainder. The remainder frequently is the most valuable portion of the chip. Finally, the program copyright owner may not be the same person claiming rights in the mask layout.

was sufficient to protect against mask piracy, (3) whether copyright protection of ICs should be limited in term of protection, scope of exclusive rights, and remedies against infringements, (4) whether H.R. 1007 as drafted was technically accurate, and (5) whether protection, if any, should be limited to those chips originating after the effective date of the amendment.

ივ

307

The representatives 308 of the subcommittee were perplexed by the unexpected split among IC manufacturers. It indeed is surprising that giants in the same industry who are all faced with the specter of formidable foreign competition should divide on the issue of protection of IC mask designs. In view of such lack of unanimity, it is very doubtful that H.R. 1007 will be passed in the near future.309

IV. CONCLUSION

The policy behind protection of IC reticles and masks is simple. As Justice Reed said in Mazer v. Stein,310 "[s]acrificial days devoted to such creative activities deserve rewards commensurate with the services rendered." An IC maker who invests millions in chip development should not be divested of his just rewards by the blatant copying of his effort. It is the labor invested which deserves protection.

It is obvious from the above examination of the possible modes of intellectual property protection that problems abound in each for IC masks and reticles. Yet IC makers need protection now. The need will be even greater in the future as increased chip complexity makes appropriation proportionately more profitable to a pirate.

What protection is needed? First, whatever protection is given should take effect immedaitely upon the fixing of the reticle but should be limited in duration. The IC market is fast moving, and what is most valuable to the manufacturer who would introduce a new chip is "lead

307 See, e.g., notes 284-87 supra and accompanying text. In particular, the Copyright Office noted the possible difference in interpretation of "semiconductor chips" and "integrated circuit chips." Further, "imprinted patterns" could be interpreted to mean "surface appearance" or "sub-surface configurations." Prepared Testimony of Jon Baumgarten, General Counsel, Copyright Office, Washington, D.C.

308 The hearings were attended by Representatives Mincta and Edwards of California and Representative Kastenmeier of Wisconsin. Electronic News, April 23, 1979, at 1, col. 1.

309 According to Representative Edwards, "We've certainly not come far enough in the hearing to even come close to a definitive answer." Id. This opinion is shared by some in the Copyright Office. Conversation with Richard Glasgow, Office of the General Counsel, Copyright Office, Washington, D.C. 310347 U.S. 201 (1954).

311ld. at 219.

time" over competitors.3 312 On the other hand, electronic technology changes quite rapidly. The duration of a "generation" in electronics is on the order of two years. Protection for this period or perhaps a bit longer would be appropriate. Patent protection lasts 17 years, 313 copyright lasts for 75 years from the year of first publication, or 100 years from the year of creation, whichever expires first.314 These figures are certainly on the generous side. The opposing public interest in fostering competition dictates that the period of protection be as short as reasonably will insure an incentive for the IC makers to invest in research and development. A limited period of protection will put the masks in the public domain earlier. This can be advantageous especially for newcomers to the IC industry who may have little capital,315 and who must depend on "second-sourcing" of other manufacturer's circuits for their initial success.

Second, the protection given to IC makers should protect innovators, or improvers, but not copiers. No liability should result if an IC maker microphotographs his competitor's chip, "reverse engineers" the chip back to the original circuit, then lays out the circuit anew. This is different from bare copying-the labor invested is substantial, and the newly laid-out chip will be optimized for the improver's process. The policy of providing the best product at the lowest cost would allow improvements such as this. However, extremely minor improvements or facial differences calculated to insulate from liability should not be allowed.

Third, protection given to IC makers certainly should borrow from current patent and copyright tenets that not only must there be a minimally sufficient intellectual effort displayed in the mask, but also that no protection should be given if only a few ways of laying out the mask exist. The former would exclude most small circuits and larger circuits now in the public domain. The latter would protect against monopoly of an idea, and leave room for improvement by "designing around” protected designs.

Finally, in view of the relative rates of change of IC technology

312CONTU Meeting No. 19, supra note 28, at 40.

31335 U.S.C. § 154 (1976).

31417 U.S.C. § 302(c) (1976). This section requires that the work be an anonymous work, a pseudonymous work, or a work made for hire. Most integrated circuits are "made for hire" and would fall under this section.

315Capital investment to start an IC facility can be quite substantial-on the order of $5 to $10 million. In the 1980s as electron-beam lithography and X-ray projection become common, costs may rise substantially. See MacKintosh, A Prognosis of the Intercontinental LSI Battle, DIGEST OF TECHNICAL PAPERS, IEEE Solid State Circuits Conference, San Francisco, California, February 15, 1978.

and of the copyright law, protection should be flexible enough to cover not only present technologies, but future technologies as well. H.R. 1007 falls far short of this mark.316 Protection should not be cast in terms of specific methods, products, or processes but instead should address the crux of the issue: protection of complex technical designs which represent a creative choice from among alternatives not dictated by the end function of the object in which they are embodied.

Of all present modes of protection, copyright is the obvious choice. Copyright protects the form, but not the content, of the idea. For IC makers, form is exactly what needs protection; ideas should not be protected. Copyright takes effect immediately upon fixing; there is no need to wait for cumbersome approaval or certification proceedings. Copyright also will yield, if no alternative in circuit layout exists, to admit a perfect, but unavoidable, copy. Moreover, should an IC maker happen to make a perfect copy innocently, there would be no liability. The major barrier to copyrightability presently is the "useful articles" doctrine.317 This doctrine could be relaxed for specific cases such as ICs.318 Copyright requires no detailed disclosure since the mask "describes. itself." The protection granted under copyright is far too long, but could be shortened to reflect more accurately the duration of needed protection. Finally, and most important from a practical standpoint, a copyright is statistically far more likely to be validated in court than is, say, a patent.319

316 See, e.g., notes 280-86, 307 supra.

317This barrier exists if one insists on considering IC masks as "pictorial, graphic, or sculptural works." An IC mask set viewed as an "audiovisual work" would not fall under the useful articles doctrine, which as now codified, only applies to "pictorial, graphic, or sculptural works." Nor would such categorization be a detriment wince IC mask sets are valuable primarily as a set, not as individual masks.

318One should think twice about this. Printed circuit boards are manufactured by a photo-process similar to that used in the manufacture of ICs and also require an enormous development effort. In fact, one could view the aluminum metallization pattern on ICs, which connects the various components, as a miniature printed circuit. Should printed circuits be included too? Would this turn the copyright laws into industrial design protection laws? If so, then should the problem be reconsidered in toto from a global perspective rather than on a point-by-point basis?

...

310In the Supreme Court, one stands about a 14% chance of having a patent validated, judging from patent cases tried there between 1881 and 1945. Kenyon, Patent Law: Why Challenge the Courts View of Invention?, 35 A.B.A.J. 480 (1949). In the Courts of Appeal, chances improves to about 60%. Silverman, The Copyright Halo: A Comparison of Judicial Standards for Copyrights and Patents, 23 U. Pitt. L. Rev. 137, 144 (1961). For copyrights, the odds improve to around 80% in the courts. Id.

APPENDIX 4.-TEXT OF BILLS

A.

98TH CONGRESS

2D SESSION

H. R. 5525

To amend title 17, United States Code, to protect mask works of semiconductor chips against unauthorized duplication, and for other purposes.

IN THE HOUSE OF REPRESENTATIVES

APRIL 26, 1984

Mr. EDWARDS of California (for himself, Mr. RODINO, Mr. MINETA, Mr. KASTENMEIER, Mr. AUCOIN, Mr. BADHAM, Mr. BERMAN, Mr. BOEHLERT, Mr. Bosco, Mrs. BOXER, Mr. BROOKS, Mr. BROWN of California, Mr. CHANDLER, Mr. CHAPPIE, Mr. CLINGER, Mr. CONYERS, Mr. DEWINE, Mr. ERLENBORN, Mr. FAZIO, MS. FIEDLER, Mr. FISH, Mr. FRANK, Mr. GEKAS, Mr. GLICKMAN, Mr. HAWKINS, Mr. HYDE, Mr. JEFFORDS, Mrs. JOHNSON, Mr. KINDNESS, Mr. LAFALCE, Mr. LANTOS, Mr. LEHMAN of Florida, Mr. LEVINE of California, Mr. LoWERY of California, Mr. LUJAN, Mr. MCCAIN, Mr. MCCOLLUM, Mr. MARTINEZ, Mr. MAZZOLI, Mr. MOORHEAD, Mr. MORRISON of Connecticut, Mr. MRAZEK, Mr. MURPHY, Mr. NELSON of Florida, Mr. OLIN, Mr. OWENS, Mr. PANETTA, Mr. PRITCHARD, Mr. REID, Mr. RICHARDSON, Mr. RITTER, Mr. RUDD, Mr. SAWYER, Mrs. SCHNEIDER, Mrs. SCHROEDER, Mr. SENSENBRENNER, Mr. ROBERT F. SMITH, Mr. STARK, Mr. SYNAR, Mr. TORRES, Mr. WAXMAN, Mr. WYDEN, and Mr. ZSCHAU) introduced the following bill; which was referred to the Committee on the Judiciary

A BILL

To amend title 17, United States Code, to protect mask works of semiconductor chips against unauthorized duplication, and for other purposes.

1 Be it enacted by the Senate and House of Representa2 tives of the United States of America in Congress assembled,

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