Intellectual Property: Mask Works

Intellectual property (IP) is the general term for diverse categories of intangibles that are subject to ownership (legal title) and other rights under state and federal laws in the US, and most other jurisdictions throughout the world. This series discusses the principal categories of IP protected by US law, the nature and scope of the protection afforded, and related procedural considerations.

This series provides an overview of the principal categories of intellectual property (IP) under US law and related practice considerations. It discusses patents, trademarks, copyrights, mask works, and trade secrets. For each of these categories of IP, the series describes the legal authority governing protection, protected subject matter and the scope of protection, the acquisition and maintenance of rights, and enforcement considerations, including for claims of infringement, misappropriation, and dilution

Mask Works

1. Legal and Regulatory Authority for Mask Works
2. Protected Subject Matter
3. How Mask Work Rights are Secured and Maintained
4. Scope of Mask Work Protection
5. Enforcement

1. Legal and Regulatory Authority for Mask Works

IP protection for mask works is regulated in the US by the Copyright Office under the authority of the federal Semiconductor Chip Protection Act of 1984 (SCPA). The Copyright Office publication Federal Statutory Protection for Mask Works (Circular 100) provides legal and regulatory background information, as well as procedural guidance, on mask work protection.

1. Protected Subject Matter

Mask works are collections of templates (photographic masks) used to create complex electronic circuits on semiconductor chips. The SCPA protects the mask works themselves as well as semiconductor chips in which the mask works are imprinted. Because of this dual protection of expression (the mask work) and a functional device that embodies the expression (the chip), the SCPA adopts elements of both copyright and patent law.

1. How Mask Work Rights are Secured and Maintained

The SCPA provides for registration of mask works in the Copyright Office but, unlike copyrights, registration of mask works is required for protection. Notice of mask work registration (the words “mask work,” the symbol “*M*” or “M” in a circle, and the name of the owner, affixed to the mask work itself and on semiconductor chips made from the mask work) is optional. However, like copyright notice, use of the registration notice is beneficial to discourage infringement and provides evidentiary advantages in litigation.

The owner of a registered mask work can transfer title or grant a security interest in the mask work for value, and documents evidencing such transfers and grants can be recorded in the Copyright Office.

1. Scope of Mask Work Protection

The owner of a registered mask work has the exclusive right to:

• Make copies of the mask work.

• Import and distribute semiconductor chips based on the mask work.

The SCPA provides specific exceptions to the owner’s exclusive rights for:

• Reverse engineering, in order to:

• teach, analyze, or evaluate the concepts or techniques embodied in the mask work or the circuitry, logic flow, or organization of components used in the mask work; and

• create an original mask work based on the results of reverse engineering.

In this context, reverse engineering is the process of designing new circuitry functionally equivalent to an existing chip, but that does not incorporate literal elements of the original.

• The first sale of semiconductor chips. A party purchasing semiconductor chip products made by the mask work owner or by a party authorized by the mask work owner may import or distribute, but not reproduce, the purchased products.

The owner of a registered mask work can individually license its rights on an exclusive or non-exclusive basis.

The duration of mask work protection begins on the date of registration or, if earlier, the date on which the mask work is first used commercially, and continues until the end of the tenth calendar year after that date.

1. Enforcement

An owner of a registered mask work has grounds to bring an infringement action in federal district court against a defendant tha texercises any of the owner’s exclusive rights without permission (other than for reverse engineering). A cause of action is also available for induced infringement, similar to a contributory copyright infringement claim. In

an infringement action the purchaser of semiconductor chip products may have an affirmative defense for innocent infringemen t, if the defendant can show that it imported or distributed the products without notice of the registered mask work.

Judicial remedies that can be awarded for mask work infringement include:

• Injunctive relief (temporary and permanent).

• Actual damages (plaintiff’s lost profits and an accounting of defendant’s profits).

• Statutory damages.

• Attorneys’ fees.

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