The Ownership
of Ideas in Computer Software:
A Contrast Between Trade Secrets, Copyrights, and
Chip-Mask Protections
John W. Snapper
III. Using the Results of Reverse Engineering
Assuming that the informational content of a copyrighted work or mask-registered work has been legally acquired, one may “fix” that information in a “new work.” There are, however, different criteria for when the results are new. The result infringes a copyright if it is “substantially similar” to the original. It infringes a mask registration if it is “substantially identical” to the original. This difference is the focus of the only significant case to date on SCPA policy: Brooktree v A.M.D. (705 F. Supp. 491; 757 F. Supp 1088, 11O1). I will now give an interpretation of this difference, which was both supported and then rejected in Brooktree at various stages of the legal battle.
Copyright policy is that information contained in a copyrighted item may be used by a competitor if it is rewritten and not copied. Remember that (on the doctrine of a merger of idea and expression) certain simple expressions may be expected to appear naturally in a rewritten manuscript. Whether a new version is too close to the original is sometimes hard to determine, and cannot be shown simply on the basis of natural coincidence. One way used by the software industry to assure that a new version is truly rewritten (and that all similarities are coincidental) is to recreate copyrighted software in a “clean room.” The idea is that a team of engineers reverse engineers the copyrighted, meant-for-machine software and puts the contents into some meant-for-humans language. A second team writes new meant-for-machine software based on that meant-for-humans version. If the second team does its work in a “clean room” that is uncontaminated by the original code, it cannot be copying that code. Any similarity between its software and the original is then probably entailed by the nature of the original’s content.
On my interpretation of the SCPA, any mask created by human effort, as opposed to mechanical reproduction, is non-infringing. On this interpretation, all one needs show to establish non-infringement is that the “new” mask was created by human effort following reverse engineering of the original chip. You need not bother with clean rooms. You need not worry about simply repeating the patterns of circuitry. Any human reproduction will result in at least slight alterations in the placement of circuits in the chip. Although such reproduction violates copyright standards, I think it is entirely in keeping with the intent of the SCPA. On this view, you can only achieve “substantial identity” by automated reproduction processes, e.g. by producing a mask directly from photographs of layers taken off a registered chip.
We may explain the difference by an analogy with copies of recorded music. An automated reproduction of a record is made by using a tape recorder. A non-automated reproduction is made by listening to the music, figuring out the score, and then taping a new performance that as closely as possible mimics the original. This violates the “substantial similarity” standard for copyrighted music. I do not think it would violate a “substantial identity” standard. This interpretation is suggested by Brooktree at 705 F. Supp. 494. But the claim gets a less favorable treatment in a JNOV plea by A.M.D. at Brooktree 757 F. Supp. 1092. (For an opposing view, see an article by H. Brown at 41 Syracuse L.R. 985 (1990).)
This difference is essential to our understanding of the cliché that copyrights or mask registrations do not grant ownership of ideas. The copyright law recognizes that protections which prevent the independent expression of ideas would amount to ownership of the idea (Morissey v Procter & Gamble, 379 F. 2nd 675 (1967)). We can reasonably view the whole notion of “substantial similarity” as an attempt to balance the non-ownership of ideas against the right of copyright owners. The SCPA’s tighter criterion for infringement provides a new interpretation of what it would mean to own an idea. In fact, the SCPA criterion for infringement may be viewed as an attack on the copyright version of the familiar cliché (See Kastenmeier at 70 Minnesota L.R. 449)
Go to: The Methods of Discovery in Reverse Engineering
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