The Cliché – The Ownership of Ideas in Computing Software - The Research Center on Computing & Society

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The Ownership of Ideas in Computer Software:
A Contrast Between Trade Secrets, Copyrights, and Chip-Mask Protections

John W. Snapper

It is a cliché that federally mandated, intellectual property rights (e.g. patents and copyrights) do not confer ownership over ideas. Rather, they protect certain uses, applications, or expressions of ideas. It is also a cliché that trade secrecy does (in some contexts) amount to actual ownership of ideas. I argue that the cliché presents a false picture. The present argument emphasizes a version of the cliché found in the new Semiconductor Chip Protection Act (17 U.S.C. ##901 – 914 (1984)). A comparison of this law to copyright and trade secrecy law suggests that our intellectual property policies provide for greater and lesser amounts of ownership of ideas. There is minimal ownership of ideas under the SCPA registration, more under copyright registration, and more yet under trade secrecy protection. This is not the clichéd picture that draws a line between copyright and trade secrecy.

Ideas (as opposed to their applications or expressions) are owned to the extent that protections create obstacles to their discovery, to new research based on them, and to their dissemination. The present paper considers whether their are obstacles to reverse engineering of protected software and semiconductor chips. At issue is the methods that can be used to reverse engineer and the availability of those ideas for further research and development. The SCPA registration is fairly open to most methods: copyright is somewhat restrictive; and trade secrecy is very restrictive.

I. The Cliché

The SCPA protects chip masks (something like stencils for circuit or logic designs) that are (photographically) produced in computer chips. A mask registered under the SCPA may not be mechanically reproduced for use or for sale without permission of the owner. That SCPA rights do not protect ideas is asserted in section #902(c):

In no case does protection under this chapter for a mask work extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.

Substituting the phrase “original work of authorship” for “mask work,” exactly the same language appears in the 1976 Copyright Act (17 USCA #103b). These are pretty sentiments, but we should be puzzled by what, if anything, they mean. The common reader must wonder what ownership of an “idea” might be, how it differs from ownership of a chip mask, or why the lawmakers were so worried about a confusion of these two forms of ownership that they had to include the above paragraph in the statute.

The sentiments are given meaning in how they limit the rights that owners of chip masks may have under the SCPA. I interpret section #906, titled “Limitations on exclusive rights: reverse engineering; first sale,” as explaining the difference between owning a chip mask and owning the ideas that are embodied in it. In particular, #906a notes that it is permissible to do the following without infringing the rights of an owner of a chip:

(l) …reproduce the mask work solely for the purpose of teaching, analyzing, or evaluating the concepts or techniques embodied in the mask work or the circuitry, logic flow, or organization of components…; or (2)… incorporate the results [of that analysis] in an original masked work…

The language of #906 is also inspired by the Copyright Law, although there are significant differences. Most obviously, the SCPA has a fairly short discussion of the limitation of mask ownership, and the copyright law has a lengthy discussion, covering the whole range of copyrighted items from books to films to software, etc. The similarity to the Copyright Law is easiest to see in the opening general statement of limits on copyrights, #107, which states that it is “fair use” to make copies for “purposes such as criticism, comment, news reporting, teaching.... scholarship, or research.” It is the differences, however, between the limits on copyright and mask protections, as discussed below, which will lead to my conclusion that there is “more ownership of ideas” in copyright than in mask ownership.

In reading section #906 of the SCPA as an explanation of the bar on the ownership of ideas, I suggest that to prevent the teaching, analysis, or evaluation of a concept would be to own an idea. Although the statute does not explicitly say that #906 is an explication of #902, this is the natural reading of the statute, in parallel with the usual reading of the copyright law. The following argument further develops and justifies this view that the “ownership of ideas” amounts to restrictions on teaching, analysis, and evaluation of those ideas.

Although the limits on protections explain what it means to bar ownership of ideas, we must note that the presence in the statute of this explanation permits avoidance of the issue in the case law. Most judges, presented with a relevant copyright case, for instance, will naturally discuss it in the more precise terms of “fair use” than in terms of the rather vacuous remark that copyright does not protect ideas. The existence of the sections in the intellectual property statutes that explain what it means to bar ownership of ideas provides an opportunity to avoid discussion of what it means to own an idea. This is certainly a good thing for jurisprudence, but rather a bother for those who like to read philosophical discussions on the ownership of ideas. In fact, it makes much of the following discussions appear moot for legal purposes.

One area where there has been lengthy discussion of the difference between copyright ownership and idea ownership concerns the “merger of idea and expression” in copyright law. This happens when there are so few alternative ways to express an idea that a copyright would interfere with the opportunity for non-infringing statements of the ideas. If that happens, all copyright claims are invalid. In Apple v Franklin (714 F.2nd. 1240 (1983)), for instance, the court noted that if there are few ways to rewrite the Apple BIOS programs that are compatible with Apple’s hardware, then the Apple programs are uncopyrightable. Again, there is an intuitive connection between this insistence on the need for non-infringing statements of any idea and the note that copyright or mask ownership cannot interfere with the aims of analysis and education: both ensure appropriate dissemination of the ideas contained in copyrighted material. In contrast to the SCPA and Copyright Law, the Uniform Trade Secrets Act (now endorsed, with some variations, by most states) says (#1.3) that:

“trade secret” means information…

Whereas, the SCPA permits any activity done for the purpose of analyzing the contents of a mask, the UTSA forbids “improper means to acquire knowledge.” Whereas the SCPA permits all activities for the purpose of teaching the contents of a mask, the UTSA forbids “disclosure ... of a trade secret.” Trade secrecy often prevents exactly what the SCPA endorses. It is these differences that lead most commentators to conclude that trade secrecy is a form of protection for ideas per se. (Similarly attitudes are found throughout that mishmash of legal traditions that are grouped together under the “trade secrecy” rubric.)

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