Image courtesy of Flickr user IBM Research
The Semiconductor Chip Protection Act of 1984 (SCPA) protects mask works, the layered, three-dimensional patterns that make up an integrated circuit, by giving their owners the exclusive right to reproduce them and to import or distribute chips that embody them. Protection lasts ten years, is lost if the owner does not apply to register with the U.S. Copyright Office within two years of first commercial exploitation, and expressly allows competitors to reverse engineer a chip to create their own original design. The Act, codified at 17 U.S.C. §§ 901-914, sits somewhere between copyright and patent law.
This article explains what the SCPA covers, how protection begins and ends, where reverse engineering fits, and what the Federal Circuit’s decision in Brooktree Corp. v. Advanced Micro Devices, Inc. still teaches chip designers. For a shorter introduction to the terminology, see our overview of mask works and semiconductor chip copyright protection.
Why Congress Created a Separate Law for Chips
Chip layouts fit awkwardly into traditional intellectual property categories. Copyright protects expressive works rather than functional designs, and patents require novelty and nonobviousness that many layout improvements cannot meet. Yet copying the layout of a finished chip can take far less effort than designing one from scratch. Congress responded with a stand-alone regime in chapter 9 of Title 17 that borrows copyright’s focus on copying while shortening the term and building in a privilege for legitimate reverse engineering.
When the Federal Circuit reviewed that history in Brooktree, it explained that the SCPA incorporates the copyright principle of substantial similarity even though the statute does not use the word “copy” to describe infringement.
What the SCPA Protects
Section 901 defines a mask work as “a series of related images, however fixed or encoded,” that represents the predetermined three-dimensional pattern of metallic, insulating, or semiconductor material present or removed from the layers of a semiconductor chip product. A semiconductor chip product is the final or intermediate form of a product with two or more such layers that is intended to perform electronic circuitry functions.
Not every layout qualifies. Under § 902:
- The mask work must be original.
- Designs that are staple, commonplace, or familiar in the semiconductor industry, or variations of them combined in a way that is not original as a whole, are not protected.
- Protection never extends to any idea, procedure, process, system, method of operation, concept, principle, or discovery embodied in the work.
- The owner must satisfy eligibility rules, such as being a U.S. national or domiciliary or first commercially exploiting the mask work in the United States.
Exclusive Rights of the Mask Work Owner
Section 905 gives the owner three exclusive rights: to reproduce the mask work by optical, electronic, or any other means; to import or distribute a semiconductor chip product in which the mask work is embodied; and to induce or knowingly cause another person to do either of those things.
How Long Protection Lasts and How to Register
Protection begins on the earlier of the date the mask work is registered or the date it is first commercially exploited anywhere in the world, and it ends ten years later (17 U.S.C. § 904). Each term runs to the end of the calendar year in which it would otherwise expire. To “commercially exploit” a mask work means to distribute a chip embodying it to the public for commercial purposes, which includes a written offer to sell or transfer the chip once the mask work is fixed in it.
Registration is where many companies lose their rights. Owners apply to the Register of Copyrights, and protection terminates if an application is not filed within two years after first commercial exploitation anywhere in the world (§ 908(a)). A certificate of registration is prima facie evidence of the facts stated in it (§ 908(f)). The owner, or an exclusive licensee of all rights, generally cannot bring an infringement action until a registration has been issued, or refused with notice served on the Register of Copyrights (§ 910).
Mask Work Notice
Owners may mark chips with the words “mask work,” the symbol *M*, or the letter M in a circle, together with the owner’s name or a recognized abbreviation. Notice is not a condition of protection, but affixing it is prima facie evidence of notice of protection (§ 909).
Reverse Engineering and Other Limits on Mask Work Rights
The SCPA’s most distinctive feature is its reverse engineering privilege. Section 906(a) permits anyone to reproduce a mask work solely to teach, analyze, or evaluate the concepts or techniques embodied in it, and to incorporate the results of that analysis into an original mask work made to be distributed. A competitor may take a chip apart, study it, and create a different layout that performs the same function.
Two other limits come up often in commercial disputes:
- First sale: the owner of a particular lawfully made chip may import, distribute, or otherwise dispose of or use that chip without the mask work owner’s permission, but may not reproduce the mask work (§ 906(b)).
- Innocent purchasers: a buyer who acquires infringing chips without notice of protection is not liable for importing or distributing them before receiving notice, and afterward owes only a reasonable royalty on each unit purchased before notice (§ 907).
Lessons From Brooktree v. AMD
In Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555 (Fed. Cir. 1992), Brooktree sued AMD over chips used in color video displays, asserting both mask work registrations and patents. AMD argued that its SRAM core cell was the product of legitimate reverse engineering, pointing to a paper trail of roughly two and a half years of design work costing more than three million dollars.
The Federal Circuit affirmed the jury’s verdict for Brooktree. Its reasoning offers three takeaways:
- Copying part of a chip can be enough. The jury was properly instructed that substantial similarity may exist when an important part of the mask work is copied, even if the percentage of the entire chip copied is relatively small.
- A paper trail is evidence, not a safe harbor. The court described design documentation as evidence of independent effort but “not conclusive or incontrovertible proof” of originality or the absence of copying. A reasonable jury could conclude that AMD’s records reflected failed attempts, followed by copying once it understood Brooktree’s design.
- These are fact questions. Originality and copying are heavily fact-dependent issues for the jury, which makes contemporaneous, accurate design records valuable to both sides.
How the SCPA Relates to Patents and Trade Secrets
The SCPA does not displace other protection. Section 912(a) provides that nothing in chapter 9 affects rights or remedies under the other chapters of the Copyright Act or under the Patent Act, and Brooktree itself decided patent claims alongside the mask work claims. State laws that provide rights equivalent to those under the SCPA, however, are preempted (§ 912(c)).
In practice, chip companies layer their protection: patents for novel circuits and methods, mask work registration for the physical layout, and trade secret protection for process know-how, design files, and unreleased products. Because the SCPA expressly permits reverse engineering, information that can be learned by studying a released chip is a poor candidate for secrecy after launch. Our article on trade secrets, patents, and keeping secrets discusses how to choose between disclosure and confidentiality.
Remedies for Mask Work Infringement
Under § 911, courts may grant temporary restraining orders and preliminary and permanent injunctions against infringement. A prevailing owner may recover actual damages and the infringer’s profits attributable to the infringement or, alternatively, elect statutory damages of up to $250,000 as the court considers just. The court may also, in its discretion, award full costs, including reasonable attorneys’ fees, to the prevailing party.
Protecting Your Chip Designs
Mask work rights are relatively straightforward to secure, but they are easy to forfeit through a missed registration deadline or poor recordkeeping. Companies that design or source integrated circuits should calendar the two-year registration window from first commercial exploitation, keep dated design records that could support or rebut a reverse engineering defense, and use written agreements that allocate mask work ownership among foundries, contractors, and customers.
If you design, manufacture, or license semiconductor products, the manufacturing industry attorneys at Revision Legal can help you register mask works, structure licenses, and enforce your rights. Contact us through the form on this page or call (855) 473-8474.
