Many are aware that copyright law protects original works of authorship like books, paintings, movies, sculptures, and more. Interestingly enough, something very similar to copyright law also protects computer chips (or more accurately, the etchings placed on or in computer chips that make them work). In 1984, Congress enacted the Semiconductor Chip Protection Act (“SCPA”) which created a new type of intellectual property right. See 17 USC §900. The new IP right was available for semiconductor chip manufacturers and covered what are commonly called “mask works.” The statutory protection framework under the SCPA looks similar to the copyright framework used to protect original works of authorship. For example, the US Copyright Office is tasked with administering the rights under the SCPA and a new IP symbol was created for use by semiconductor chip manufacturers — the symbol *M* (asterisks, not parentheses marks) or an M inside a circle).

What are “Mask Works”?

At a very basic level, for a computer chip to work, a design must be etched or embedded into the chip or onto its surface. Many times, the etchings have layers of etchings creating a three-dimensional design. The etchings are filled with metallic or other electricity conducting materials. These etchings will look like sophisticated versions of drawings for an electric circuit but on a very tiny scale. These etchings are called “mask works” because of the manner in which they are created. The process of etching the chips — called photolithography — is light sensitive. Thus, during the etching, a “mask” is used to block or permit light to reach various portions of the etching surface.

Thus, the SCPA defines a “mask work” as:

“a series of related images, however fixed or encoded (1) having or representing the predetermined three-dimensional pattern of metallic, insulating, or semiconductor material present or removed from the layers of a semiconductor chip product; and (2) in which series the relation of the images to one another is that each image has the pattern of the surface of one form of the semiconductor chip product”

Why Was a New IP Protection Statute Needed in 1984?

In 1984, the problem for semiconductor chip manufacturers was that neither copyright law nor patent law allowed protection for mask works. Copyright law ONLY protects an original work of authorship IF the work is non-functional. But the etching designs on computer chips ARE functional. They allow and direct the electrical current which enables the computer to function in a designed and predetermined manner. Patent law also did not protect mask works since mask works did not meet the legal definition for patentability. Thus, a new IP protection framework was needed.

How are Mask Works Legally Protected?

As with copyrights, for a mask work to be legally protected, the owner of the mask work must apply with the Copyright Office for registration. Once a mask work is registered, then the owner is legally entitled to the exclusive right to reproduce the mask work and the exclusive right to import computer chips containing the mask work. On the flipside, the owner of a registered mask work has the legal right to prevent others from copying the original mask and can sue in federal court against any person or business who infringes against the mask work or who induces another to commit infringement.

If you have questions about protecting your trademarks, copyrights, mask works or other intellectual property, contact the IP litigation lawyers at Revision Legal at 231-714-0100.

Registration Process and Requirements Under the SCPA

To obtain mask work protection, the owner must register the mask work with the US Copyright Office within two years of the date the mask work is first commercially exploited anywhere in the world. This two-year window is strictly enforced — unlike copyright, where registration can occur at any time (though timely registration provides greater remedies), mask work protection is forfeited if registration is not completed within the statutory period.

The registration application requires a deposit of identifying material, typically a set of drawings or photographs of each layer of the mask work. The Copyright Office reviews the application for compliance with formal requirements. Once registered, the mask work protection lasts for a term of ten years — significantly shorter than the copyright term for original works of authorship. After ten years, the mask work enters the public domain and may be freely copied.

The two-year deadline and the notice requirement are practical traps for companies that develop semiconductor products. Companies must track the date of first commercial exploitation — which can include distribution, sale, or even a limited commercial offering — and ensure that registration applications are filed well before the two-year window closes.

Reverse Engineering and the Semiconductor Industry

One of the most distinctive features of the SCPA is its explicit allowance of reverse engineering for the purpose of teaching, analyzing, or evaluating the concepts or techniques embodied in the mask work. This is sometimes called the “reverse engineering defense.” A competitor may legally reverse-engineer a registered mask work to understand how it works and then use that knowledge to create an original mask work of its own. What the competitor cannot do is simply copy the registered mask work without going through the reverse engineering process.

This provision reflects a policy choice Congress made in 1984: that the semiconductor industry benefits from a degree of open technological exchange and that preventing reverse engineering entirely would stifle innovation. The practical effect is that SCPA protection primarily prevents direct copying — what the industry sometimes calls “chip piracy” — rather than preventing competitors from improving upon or creating alternatives to a protected design.

Innocent Purchaser Limitation on Damages

The SCPA includes an innocent purchaser limitation that restricts the remedies available against a person who innocently purchases infringing semiconductor chips without notice of the mask work registration. An innocent purchaser who buys chips not knowing they contain an infringing mask work is entitled to continue distributing inventory already on hand. The mask work owner’s remedy in this situation is limited to a reasonable royalty on the infringing chips sold by the innocent purchaser after the owner provides notice of the infringement — rather than the full range of damages otherwise available against a knowing infringer.

This innocent purchaser limitation makes proper marking of semiconductor chip products particularly important. The SCPA’s mask work symbol — the letter M in a circle or asterisks on either side of an M — placed on chip products and their packaging serves as constructive notice of registration. Consistent use of the mask work symbol prevents potential infringers from claiming innocent purchaser status and ensures that the full range of statutory remedies remains available.

Relationship to Patent Protection for Semiconductor Technology

SCPA mask work protection and patent protection serve different and complementary functions in protecting semiconductor intellectual property. Patents protect the inventive concepts embodied in semiconductor technology — novel circuit architectures, new methods of fabrication, innovative device structures. Mask work protection under the SCPA protects the specific topographical expression of those concepts as implemented in a particular chip design.

A semiconductor company developing a new chip architecture may simultaneously seek utility patents on the novel technical aspects of the design and register the resulting mask work with the Copyright Office. The patent provides 20-year protection against others practicing the patented invention regardless of how they express it. The mask work registration provides 10-year protection against direct copying of the specific topographic implementation. Together, these protections provide layered IP coverage for the company’s investment in chip design.

Contact the IP litigation lawyers at Revision Legal at 231-714-0100 to discuss protecting your semiconductor chip designs and other technology intellectual property.