Semiconductor chips are found in almost any type of electronic these days, fulfilling a huge area of uses to the designer and consumer alike. Considering how widely used these products are today, one might reasonably assume that anybody can make them and duplicate already created processes in designing their own products. However, working under this mindset can quickly lead to a designer finding herself on the wrong side of the law. 

In late 1984 the Semiconductor Chip Protection Act (“SCPA”, also known as 17 USC §§901-914) came into force, offering protective mechanisms to innovators (“mask work owners” in the Act) of original semiconductor chip products. The Act forms a piece of the United States Copyright Act, although it stands alone as its own chapter and has certain requirements setting it apart from the rest of US copyright law.

The Act covers everything from what “mask work” is and who “owners” are, to what products are afforded protected under the Act, how to register a product with the Copyright Office, limitations on the rights of the owner, and the legal ramifications when someone tries to copy another owner’s work without permission. This post will focus on the first half of the Act, looking at protections offered to owners and limitations that may exist. Part II will discuss the legal ramifications of breaching an owner’s rights.

Section 901 (Chapter 9, Section 1) of the Act provides definitions, explaining what is meant by terms such as a “semiconductor chip product,” “owner,” and “innocent purchaser.”

Section 902 outlines the subject matter of the Act. This section of the Act specifies when the product is able to receive protection: either the date on which it is registered under section 908, or when it is first “commercially exploited anywhere in the world,” whichever of these came first. This section also details who the owner must be for the protection to be available. For example, the owner must be either a US national or someone living in the US, or is connected to a foreign nation with whom the US has a treaty relationship that extends protection for semiconductor chips. The third option is that the owner be a stateless person (no nationality to any country). There are also special powers awarded to the US President under this section, allowing them to extend protection to an individual from a nation where a treaty between the two countries is not yet in place. Finally, this section stipulates that only original works can obtain protection under the Act.

Section 903 provides that the owner of the mask work (semiconductor chip) is the one who holds the protection. The protection can be transferred to or shared with others through the sale of the product or license. Any mask works created by the US government are not granted protection under the Act.

In additional sections the Act goes on to provide that the protection is offered for a period of 10 years. The Act also explains the extent of the rights that ownership carries as well as the limits placed on ownership. For example, reverse engineering, the act of taking something apart to be able to learn about it and make it better, is deemed acceptable under the Act. Innocent purchasers of products with protected semiconductor chips are another limitation placed on ownership under the Act.

Finally, the Act explains how one may go about giving notice to the rest of the world that Federal law protects the semiconductor chip found in the product. This can be done using words, or symbols such as “*M*” or “Ⓜ” (‘M’ in a circle). The name or a well-known abbreviation of the owner of the work should also be located on the product.

For more information about the SCPA, contact Revision Legal’s Copyright attorneys through the form on this page or call 855-473-8474.

What Qualifies as a Protected Mask Work

Section 901(a)(2) of the SCPA defines a “mask work” as a series of related images, however fixed or encoded, 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 in which the relation of the images to one another is such that each image has the pattern of the surface of one form of the semiconductor chip product. This definition captures the layered circuit topology that is the functional core of a chip’s design — the specific arrangement of transistors, resistors, capacitors, and their connecting pathways that gives the chip its functionality.

Not every chip layout qualifies for protection. Section 902(b) expressly excludes mask works that are not original, and excludes designs that consist of commonplace, unoriginal structures or that are dictated solely by function. This originality requirement parallels the standard in copyright law but has a critical functional limitation: elements of a chip design that are necessary to achieve compatibility with existing standards or that represent the only practical way to implement a particular function may not qualify as original expression. The SCPA protects the specific creative choices embodied in a chip layout, not the underlying electronic concepts themselves.

The Relationship Between the SCPA and General Copyright Law

The SCPA is codified as Chapter 9 of the Copyright Act, 17 U.S.C. §§ 901–914, but it functions as a distinct and self-contained regime with several important differences from general copyright law. Understanding these differences matters for practitioners advising chip designers on their protection strategy:

• Shorter protection term. Copyright protection for most works lasts for the life of the author plus 70 years. SCPA protection lasts only 10 years from the date of registration or first commercial exploitation, whichever is earlier. This shorter term reflects the rapid pace of technological change in semiconductor design — a chip layout that is commercially relevant today may be technologically obsolete within a decade.
• Express reverse engineering exception. As discussed in Part II of this series, the SCPA explicitly permits competitors to reverse engineer a protected chip for purposes of analysis and to create original improvements. Copyright law has no comparable express exception, although courts have implied a reverse engineering right in certain software contexts under fair use principles.
• Innocent purchaser defense. The SCPA’s innocent purchaser defense, 17 U.S.C. § 907, limits damages for purchasers who acquire infringing chips without knowledge of the infringement. No comparable defense exists under general copyright law, where innocent infringement reduces but does not eliminate statutory damages.

Who Owns a Mask Work?

Section 903 of the SCPA governs ownership of mask works and largely parallels the work-for-hire doctrine in the Copyright Act. A mask work created by an employee within the scope of employment belongs to the employer. A mask work created by an independent contractor belongs to the contractor unless there is a written agreement providing otherwise. This distinction is significant in the chip design industry, where it is common for companies to engage independent engineers or small design firms to create chip layouts under contract. Without a written assignment or work-for-hire agreement, the contracting company may discover it does not own the mask work it paid to have created.

Joint ownership is also possible under the SCPA. Where two or more parties contribute to the creation of a mask work, they are co-owners, and each co-owner may independently exploit the mask work without the consent of the other — subject to an obligation to account for profits. Joint ownership arrangements in chip design are less common than in software or literary works, but they arise in collaborative R&D projects and joint ventures. The terms of any joint development agreement should expressly address mask work ownership to avoid disputes.

International SCPA Equivalents

The SCPA was enacted partly in response to international pressure to create a legal framework for chip protection that other countries could recognize and reciprocate. The WIPO Treaty on Intellectual Property in Respect of Integrated Circuits (Washington Treaty, 1989) created an international framework for semiconductor chip protection, although the treaty has not entered into force because it has not been ratified by enough member states. Nevertheless, many major semiconductor-producing nations have enacted domestic legislation consistent with the treaty framework: Japan, the EU member states, South Korea, and Taiwan all have chip protection laws that offer protections broadly equivalent to the SCPA for works of domestic origin.

U.S. chip designers exporting their products or licensing their designs to manufacturers in foreign jurisdictions should verify the scope of protection available in each target market. While reciprocal protections are generally available in countries with which the United States has TRIPS-compliant trade agreements, the registration requirements, terms of protection, and available remedies vary by jurisdiction. A company that registers its mask works with the U.S. Copyright Office but fails to take equivalent steps in target foreign markets may find its international protection weaker than anticipated.

If you design semiconductor chips or license chip layouts and need guidance on SCPA protection, registration, or enforcement, Revision Legal’s intellectual property attorneys can help. Contact us through the form on this page or call 855-473-8474.