Federal Statutory Protection for Mask Works

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Circular
 
100
2 100.0912
Federal Statutory
Protection
for Mask Works
The Semiconductor Chip Protection Act (SCPA ) of 1984 established a new type
of intellectual property protection for mask works that are fixed in semicon-
ductor chips. It did so by amending title 17 of the United States Code, adding
chapter 9. 1
Protection for mask works is not copyright protection. The legal require-
ments for mask work protection differ from those for copyright protection in
terms of eligibility for protection, ownership rights, registration procedures,
term of protection, and remedies for rights violations. This circular provides
information for registering claims under the SCPA .
Definitions
Mask work · The SCPA defines a mask work as a series of related images,
however fixed or encoded (1) that have or represent 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 pat-
tern of the surface of one form of the semiconductor chip product.
Semiconductor chip product · The SCPA defines a semiconductor chip prod-
uct as the final or intermediate form of any product (1) intended to perform
electronic circuitry functions and (2) having two or more layers of metallic,
insulating, or semiconductor material, deposited or otherwise placed on or
etched away or otherwise removed from a piece of semiconductor material in
accordance with a predetermined pattern.
Protection of Mask Works
Protection under the SCPA extends to the three-dimensional images or patterns
formed on or in the layers of metallic, insulating, or semiconductor material
and fixed in a semiconductor chip product, that is, the “topography” of the
“chip.”
Although these images or patterns are purely functional features, they are
nevertheless protected, provided that a mask work is neither dictated by a par-
ticular electronic function nor one of only a few available design choices that
will accomplish that function.
Protection under the SCPA does not extend to any idea, procedure, process,
system, method of operation, concept, principle, or discovery associated with

Federal Statutory Protection for Mask Works · 2
a mask work, regardless of the form in which it is described,
explained, illustrated, or embodied in a mask work (17 U.S.C.
§902 (c)).
Originality
To be protected under the SCPA, a mask work must be original.
In a 1984 report, the Committee on the Judiciary of the House
of Representatives stated that a mask work is “original” if it is
the independent creation of an author who did not copy it.2
The mask work cannot consist solely of designs that are
staple, commonplace, or familiar in the semiconductor
industry, or variations of such designs, combined in a way that,
considered as a whole, are not original. (17 U.S.C. §902 (b))
Eligibility
Any original mask work fixed in a semiconductor chip pro-
duct by or under the authority of the mask work owner is
eligible for protection if it meets one of the following criteria:
1 	On the date the mask work is registered with the Copyright
Office or the date the mask work is first commercially
exploited anywhere in the world (see note below), which-
ever occurs first, the owner of the mask work is
• 	a national or domiciliary of the United States; or
• 	a national, domiciliary, or sovereign authority of a for-
eign nation that is a party with the United States to a
treaty affording protection to mask works; or
• 	a stateless person.
2 The mask work is first commercially exploited in the
United States.
3 	The mask work comes within the scope of a presidential
proclamation extending protection to mask works of
nationals and domiciliaries of a foreign country and to
works first commercially exploited in that country, on the
basis of a finding that mask works protected by the SCPA
are also protected in the particular foreign country, either
under the principle of reciprocity or under the principle
of national treatment.
All countries that are members of the World Trade
Organization became eligible for mask work protection on
June 1, 1996, under Presidential Proclamation 6780, which
was issued on March 23, 1995. In addition, that proclamation
extended mask work protection to Australia, Canada,
Japan, Switzerland, and the member states of the European
Community as of July 1, 1995. For a list of WTO members,
go to www.wto.org.
note: To “commercially exploit” a mask work is defined in the
SCPA as the distribution to the public for commercial purposes
of a semiconductor chip product embodying the mask work,
with the provision that the term includes an offer to sell or
transfer a semiconductor chip product only when the offer is
in writing and occurs after the mask work is fixed in the semi-
conductor chip product.
Term of Protection
Protection for a mask work commences on the date the mask
work is registered with the Copyright Office or the date the
mask work is first commercially exploited anywhere in the
world, whichever occurs first. Protection lasts for 10 years
(terminating at the end of the 10th calendar year after it
began).
Registration of Mask Works
Registration of mask works is mandatory to secure protec-
tion. In addition, a certificate of registration provides certain
benefits.
Requirements
To secure protection of mask works for the entire 10-year term,
owners must register their works with the Copyright Office
within two years of the date on which the mask work is first
commercially exploited. Otherwise, protection under the SCPA
will be lost.
The effective date of registration of a claim to protection
in a mask work will be the date on which an acceptable
application, deposit of identifying material, and appropriate
fee are received in the Copyright Office.
Importance of Registration Certificate
The SCPA further provides that (a) a certificate of registra-
tion for a mask work issued by the Copyright Office consti-
tutes prima facie evidence of the facts stated in the certificate
and that the applicant who was issued the certificate has met
the requirements for protection; and (b) after a certificate has
been issued by the Copyright Office, the owner of the mask
work or the exclusive licensee of all rights in the mask work
may institute a civil action for infringement occurring after
the commencement of protection accorded by the SCPA .

Federal Statutory Protection for Mask Works · 3
Exclusive Rights of Owner:
Limitations and Transfers
During the term of protection, the owner of a mask work has
the following exclusive rights:
1 	to reproduce the mask work by optical, electronic, or any
other means;
2 to import or distribute a semiconductor chip product in
which the mask work is embodied; and
3 	to induce or knowingly to cause another person to do any
of the acts described in number 1 and number 2 above.
Limitations on Rights: Reverse Engineering and First Sale
The SCPA permits reverse engineering of a mask work solely
for the purposes of teaching, analyzing, or evaluating the
concepts or techniques embodied in the mask work or in the
circuitry, logic flow, or organization of components used in
the mask work.3 The person who performs legitimate reverse
engineering can incorporate the results in an original mask
work that is made to be distributed.
Purchasers also obtain a right arising from the first sale of
semiconductor chips. The SCPA specifies that purchasers of
semiconductor chip products have the right to use and resell
them freely but not to reproduce them without the permission
of the owner of the mask work embodied in the semicon-
ductor chip product.
Transfer of Rights
The SCPA allows the owner of the exclusive rights to trans-
fer all of them or to license all or fewer than all the rights.
A transfer or license must be in writing and signed by the
owner of the rights or by a duly authorized agent of the
owner. The SCPA also provides that the exclusive rights in
a mask work can be transferred by operation of law or by
terms of a will or that the rights may pass as personal prop-
erty under the applicable state law of intestate succession.
For information on the recordation of documents of
transfer in the Copyright Office, see “Recordation” below.
Works by U.S. Government Employees
Federal protection under the SCPA is not available for any
mask work of the U.S. government, that is, any mask works
created by U.S. government employees as part of their offi-
cial duties.
Registration Procedure
Applications to register mask works require three elements:
a completed Form MW , available at www.copyright.gov/
forms/formmwi.pdf; a nonrefundable filing fee; and a deposit
of identifying material. You can type the required details
into fill-in Form MW on your computer and print out a
completed form, or you can print out a blank form and fill
it in by hand. All forms submitted to the Copyright Office
must be clear and legible and suitable for automatic feeding
through a photocopier. Forms not meeting this requirement
will be returned. If you cannot access Form MW online, call
(202) 707-9100 or 1-877-476-0778 (toll free) to request a
copy by postal mail.
note: Copyright Office fees are subject to change. For current
fees, check the Copyright Office website at www.copyright.gov,
write the Copyright Office, or call (202) 707-3000.
Send the application, fee, and deposit in the same package to:
Library of Congress
Copyright Office– MW
101 Independence Avenue SE
Washington, DC 20559
Deposit of Identifying Material
The SCPA gives the Register of Copyrights broad, general
authority to specify the identifying material to be deposited
in connection with the claim for registration. In recognition
of the need to preserve trade secrets or avoid public disclo-
sure of sensitive information embodied in various identify-
ing materials, the regulations of the Copyright Office provide
different deposit options, depending upon whether the mask
work has been commercially exploited. The Copyright Office
encourages the fullest disclosure of the mask work within the
deposit options established by the regulation.
For commercially exploited mask works, the identifying
material should consist of the following:
1 	four chips (dies) as first commercially exploited; and
2 one full set of visually perceptible reproductions of
each layer of the mask work. The applicant may elect to
deposit either plastic color overlays, composite plots, or
photographs of each layer of the mask work.
For mask works that have not been commercially
exploited, the identifying material should consist of:

Federal Statutory Protection for Mask Works · 4
1 	one full set of either plastic color overlays or composite
plots of each layer of the semiconductor chip product;
and
2 although no chips (dies) need to be sent, the applicant
may elect to deposit four reproductions of the most com-
plete form as fixed in a chip product.
The visually perceptible materials should be reproduced
at a magnification sufficient to reveal the basic circuitry
design of the mask work and should be at least 20 times the
magnification of the actual size. Large visually perceptible
materials are acceptable if they can be folded or cut into a
roughly 8½" × 11" format and are storable in a 12" × 15" enve-
lope. Titles should be placed on all identifying materials so
that applications and deposit materials can be matched.
Registration in Most Complete Form
Owners seeking registration of a mask work must generally
submit the entire original mask work in its most complete
form as fixed in a semiconductor chip product. The most
complete form means the stage of the manufacturing pro-
cess that is closest to completion. Entire impersonalized gate
arrays and custom metallization layers may be registered
separately, as an exception to the general rule.
Registration of Less Than 20 Percent
of Intended Final Form
Where the mask work in which registration is sought rep-
resents less than 20 percent of the area of the intended final
form of the chip product, the deposit must consist of a visu-
ally perceptible representation of the work that reveals the
totality of the mask work contribution to a person trained
in the state of the art. The representation may consist of any
combination of plastic color overlay sheets, drawings or plots
in composite form, or a photograph(s) of the entire mask set.
If needed, additional explanatory material may accompany
the visually perceptible representation to identify all the ele-
ments in the mask work contribution.
Deposit for Trade Secret Protection
Where an applicant makes a claim of trade-secret protection
or of a need to protect sensitive information, certain mate-
rial may be withheld from the deposit of identifying material.
Below is an outline of the deposit options.
Mask Works Commercially Exploited
1 	Four chips as first commercially exploited; and
2 special “identifying portions” (defined below) for no more
than two of each five layers of the mask work in which
trade secrecy is claimed; and
3 	color overlays, plots, or photographs for all other layers.
Mask Works Not Commercially Exploited
1 	Special “identifying portions” (defined below) for any
layer or layers in which trade secrecy is claimed; and
2 a single photograph of the top or other visible layers of
the mask work with the sensitive information maintained
under a claim of trade secrecy blocked out, provided the
blocked out portions do not exceed the remaining portions.
Identifying Portions
The “identifying portions” should consist of a printout of
the mask work design data pertaining to each withheld layer,
reproduced in microform, or visually perceptible representa-
tions (plastic color overlays, composite plots, or, in the case
of commercially exploited mask works, photographs of the
masks) in which portions maintained under a claim of trade
secrecy are blocked out, provided that the portions remain-
ing are greater than the portions blocked out. For mask
works not commercially exploited, sensitive information may
be blocked out from the design data, provided that the por-
tions remaining are greater than the portions blocked out.
Special Relief
On a case-by-case basis, the Register of Copyrights may
decide to grant special relief from the deposit requirements.
Requests for special relief must be made in writing and
must set forth the specific reasons why the request should
be granted. Also, they should propose an alternative form of
deposit. Requests should be addressed to:
Library of Congress
Copyright Office-RPO
Registration Program Office
101 Independence Avenue SE
Washington, DC 20559
Special Handling
Special handling of an application for registration of a claim
to protection in a mask work is granted at the discretion

Federal Statutory Protection for Mask Works · 5
of the Register of Copyrights in a limited number of cases
involving pending or prospective litigation or contract dead-
lines. There is a fee for special handling, in addition to the
filing fee. For details, see Circular 10, Special Handling, avail-
able on the Copyright Office’s website at www.copyright.gov.
Notice
The owner of a mask work protected under the SCPA may
affix a notice of ownership to mask works, masks, and
semiconductor chip products embodying the mask work in
a manner and location that gives reasonable notice of the
claim to protection.
The SCPA requires the form of the notice to be:
1 	the words mask work, the symbol * M * or the symbol μ;
and
2 the name of the owner(s) of the rights in the mask work
or an abbreviation by which the name is recognized or
generally known.
Affixation of such a notice is optional and is not a condi-
tion of protection, but the notice does constitute prima facie
evidence of notice of protection. The Register of Copyrights
prescribes by regulation, as examples, specific methods of
affixation and positions of the notice (see 37 C.F.R. §211.6).
Access to Copyright Office Records and
Documents
The Copyright Office maintains records and indexes to
deposits, registrations, recordations, and other items
related to copyright registration. The records and indexes
are open to public inspection and can be copied. To assist
with searches to locate material, the Office provides various
fee-based services. Alternatively, patrons can search certain
records independently. Copyright Office records of registra-
tions and recordations from January 1, 1978, forward are
available for searching on the Copyright Office website at
www.copyright.gov. For details, see Circular 6, Obtaining
Access to and Copies of Copyright Office Records and Deposits,
available on the Office’s website.
Recordation
Any transfer of ownership or other document pertaining to
a mask work can be recorded in the Copyright Office if the
document filed for recordation is accompanied by the appro-
priate fee and meets the certain requirements. For details, see
Circular 12, Recordations of Transfers and Other Documents,
available on the Office’s website.
Notes
1 	Although protection was effective from November 8, 1984, the Copy-
right Office did not begin registration of claims to protection until
January 7,1985, pursuant to 17 U.S.C. § 913 (a).
2 	H. R. Rep. No. 781, 98th Cong. 2d Sess. 4 (1984).
3 	H. R. Rep. No. 781 refers to the “paper trail” evidencing the extensive
effort involved in legitimate reverse engineering and states that reverse
engineering is an affirmative defense to an infringement claim.
For Further Information
By Internet
Circulars, announcements, regulations, copyright applications,
and other related materials are available from the Copyright
Office website at www.copyright.gov.
By Telephone
For general information about copyright, call the Copyright
Public Information Office at (202) 707-3000 or 1-877-476-
0778 (toll free). Staff members are on duty from 8:30 am to
5:oo pm, eastern time, Monday through Friday, except federal
holidays. Recorded information is available 24 hours a day.
To request paper application forms or circulars by postal
mail, call (202) 707-9100 or 1-877-476-0778 and leave a
recorded message.
By Regular Mail
Write to:
Library of Congress
Copyright Office– COPUBS
Publications Section
101 Independence Avenue SE
Washington, DC 20559

U.S. Copyright Office 	· 	Library of Congress 	· 	101 Independence Avenue, SE 	· 	Washington, DC 20559 	· 	www.copyright.gov
Federal Statutory Protection for Mask Works · 6
circular 100 reviewed: 09 ⁄ 2012 Printed on recycled paper 	u.s. government printing office: 2012-xxx-xxx ⁄ xx,xxx