The design of a chip begins with a high level idea produced by the customer — what the customer wants the chip to be able to do. This idea then moves towards the placement of transistors on a chip over the course of multiple layers. This is the product of a “floor plan” of sorts. The floor plan is used to determine the specific placement of each transistor that’s etched onto the glass layers of the chip. It is the glass disk that is referred to as a “mask”. A chip will often require eight or more layers of these masks. The series of masks creates the “mask work”, the final product that is protected by the SCPA.
Clear Logic admitted to the similarities between their chips and those produced by Altera, but argued it had simply reverse-engineered Altera’s technology. The reverse engineering defense ultimately failed to persuade the Ninth Circuit.
For more information on the specific terminology used and the contents of the Act itself, you can refer to “What Does it All Mean?” and “How Do You Protect Your Rights?” For a look at some of the history of the Act and its early application to case law, please review “A History of the SCPA.“
The Semiconductor Chip Protection Act, 17 U.S.C. §§ 901-914, was enacted in 1984 to address a gap in intellectual property protection. Integrated circuit designs did not fit comfortably within copyright or patent protection — the functional nature of chip layouts made copyright protection uncertain, and the cost and time involved in patent prosecution made it impractical for the semiconductor industry’s rapid development cycles. Congress created a sui generis protection specifically tailored to mask works.
The SCPA protects “mask works” — the series of stencils used to create the layered structure of an integrated circuit. 17 U.S.C. § 901(a)(2). An owner of a protected mask work has the exclusive right to: (1) reproduce the mask work by optical, electronic, or any other means; (2) import or distribute a semiconductor chip product embodying the mask work; and (3) induce or knowingly cause another person to do either of the above. 17 U.S.C. § 905.
The SCPA provides for civil damages in two forms:
A mask work owner whose rights have been infringed is entitled to recover actual damages suffered as a result of the infringement, plus the infringer’s profits attributable to the infringement that are not taken into account in computing actual damages. 17 U.S.C. § 911(b). In the Altera v. Clear Logic case, Altera recovered over $30 million in actual damages — a figure that reflected the lost business Altera attributed to Clear Logic’s competing chips. The additional $6 million in interest and costs brought the total judgment to over $36 million, an outcome that underscores why mask work protection matters in practice.
In lieu of actual damages and profits, a plaintiff may elect to recover statutory damages of up to $250,000 per mask work infringed. 17 U.S.C. § 911(c). This election must be made before final judgment. Statutory damages are a useful option when actual damages are difficult to quantify, but in large-scale commercial infringement cases like Altera, actual damages will often exceed the statutory cap.
Courts may also award costs and attorney’s fees to the prevailing party in their discretion. 17 U.S.C. § 911(f). Injunctive relief is available to prevent or restrain infringement, including orders compelling the destruction of infringing chips and the tools used to manufacture them. 17 U.S.C. § 910. For a company that has built a product line around an infringing design, an injunction can be existential.
The SCPA explicitly permits reverse engineering for the purpose of teaching, analyzing, or evaluating the mask work. 17 U.S.C. § 906(a). This exception reflects the policy judgment that permitting analysis of existing designs advances the state of the art. However, the exception has limits: a person may not use the concepts learned through reverse engineering to reproduce the original mask work or to create an infringing product by purely copying the protected design. 17 U.S.C. § 906(b).
In Altera v. Clear Logic, Clear Logic argued that its chips were the product of legitimate reverse engineering. The Ninth Circuit rejected this argument because Clear Logic’s chips were not merely inspired by or improved upon Altera’s design — they were functionally identical products created from Altera’s protected bitstream. The line between permissible reverse engineering and SCPA infringement runs through the question of whether the defendant used the protected design as a shortcut to produce a competing product, rather than using it as a starting point for independent innovation.
SCPA protection lasts for ten years from the date of registration or the date of first commercial exploitation, whichever occurs first. 17 U.S.C. § 904. Registration is not required for protection to attach — rights arise upon commercial exploitation or registration, whichever comes first — but registration is required before an infringement lawsuit can be filed. Registration is made with the U.S. Copyright Office by submitting identifying material depicting the mask work and paying the applicable fee.
Mask work protection only extends to works created by U.S. nationals, domiciliaries, or by nationals of countries with reciprocal protection agreements with the United States. This reciprocity requirement reflects the international trade dimensions of the semiconductor industry and has been the subject of bilateral agreements between the U.S. and major chip-producing nations.
If you are a semiconductor company, chip designer, or technology company with questions about SCPA protection, mask work registration, or potential infringement claims, contact Revision Legal at 855-473-8474 or complete the contact form on this page. Our intellectual property attorneys advise on the full spectrum of IP protection strategies for technology companies.
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