Humans Only - US Federal Court Rules that AI Cannot Own Copyright in Created Works

This blog has on many occasions discussed the difficult world that IP can be for both AI creations and inventions (e.g. more here, here and here), with the landscape looking more and more 'hostile' towards AI creations and inventorship. This hasn't, however, put a damper on many who will keep trying to push the envelope, and test the limits of IP laws across the world. Such an individual is the prolific inventor, Stephen Thaler, who has been on a crusade to enable AI to own many IP rights, having failed on many occasions along the way. His saga has since continued, with the US Federal Court being the next court to consider AI authorship this month.

The case of Stephen Thaler v Shira Perlmutter, Register of Copyrights an Director of the US Copyright Office concerned a system called "Creativity Machine", which Mr Thaler owns. Creativity Machine has, according to Mr Thaler, generated a piece of visual art of its own accord, which he then sought to register on the system's behalf. This application was rejected by the US Copyright Office for a lack of human authorship (see link above). Mr Thaler did not accept this outcome and appealed the decision, which landed on the desk of Judge Howell. 

Both parties sought summary judgment on the matter, for which Judge Howell handed down their judgment. At its core the matter concerned "whether a work generated entirely by an artificial system absent human involvement should be eligible for copyright".

Judge Howell first noted that, pursuant to the US Copyright Act 1976, copyright protection attaches immediately upon the creation of “original works of authorship fixed in any tangible medium of expression", provided those works meet certain requirements. 

The judge also noted that "copyright law has proven malleable enough to cover works created with or involving technologies developed long after traditional media of writings memorialized on paper", which gives the Act scope to broadly adapt to changing technologies and methods of creation. 

However, despite this adaptability, at its core copyright still requires human creativity, even if that creativity is "channeled through new tools or into new media". The judge determined that "[h]uman involvement in, and ultimate creative control over, the work at issue was key to the conclusion that the new type of work fell within the bounds of copyright" (referring to the decision in Burrow-Giles Lithographic Co. v Sarony). 

To really drive the point home, Judge Howell states that "[c]opyright has never stretched so far, however, as to protect works generated by new forms of technology operating absent any guiding human hand, as plaintiff urges here. Human authorship is a bedrock requirement of copyright". The important point here is that the decision requires that a human guides the creation of a work by AI systems, so an absence of human intervention can lead to the works falling outside of copyright protection. 

As has been mentioned in earlier decisions, this position is corroborated by the text in the Act itself, which notes that copyright attaches to "original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device". The fixation of the work must also be done "by or under the authority of the author". 

While the term 'author' is not defined in the Act, the judge quickly decided that the Act requires a copyrightable work to have an originator with the capacity for intellectual, creative, or artistic labour who specifically is a human. Additionally, "[t]he act of human creation—and how to best encourage human individuals to engage in that creation, and thereby promote science and the useful arts—was thus central to American copyright from its very inception".

The requirement for human authorship has also been followed and kept as copyright laws have evolved, with the Supreme Court consistently ruling that it is a crucial requirement for copyright protection (e.g. in Sarony above, Mazer v Stein and Goldstein v California). 

The courts have also consistently rejected copyright ownership by non-human authors. This has included divine beings (Urantia Found. v Kristen Maaherra), gardens (Kelley v Chicago Park District) and monkeys (Naruto v Slater). 

Judge Howell nevertheless acknowledges that in the future the courts and/or legislatures will have to grapple with "how much human input is necessary to qualify the user of an AI  system as an “author” of a generated work, the scope of the protection obtained over the resultant image, how to assess the originality of AI-generated works where the systems may have been trained on unknown pre-existing works, how copyright might best be used to incentivize creative works involving AI, and more". 

Judge Howell concluded that the US Copyright Office acted properly in denying copyright registration for a work created absent any human involvement. 

The decision is one in a long string which have denied AI authorship and inventorship, and it looks unlikely that this will change bar legislative amendments to existing copyright regimes. The current, admittedly nearly archaic legislative frameworks have not, and frankly could not have, conceived of a world where computers or AI systems could create as they do currently. This leaves legislative action as imperative, lest we want the law to forever lag behind technology. 

Keeping Their AI on the Ball - US Copyright Office Issues Guidance on the Copyright Protection of AI Generated Works

At this point there probably is no one on Earth that has not heard of, or even tested, various AI content generation systems, including ChatGPT, Google Bard and Midjourney. The tools are already impressive and are only slated to get better, so many legislatures and national bodies are (finally!) getting to grips with AI, its implications, and legal issues around the technology. One such aspect is whether AI generated works can, or will be protected by copyright, as the area remains firmly hazy as the law stands, including in the common law. One of the first off the blocks is the US Copyright Office which recently released guidance on the protection of AI generated works. 

The guidance, titled "Copyright Registration Guidance: Works Containing Material Generated by Artificial Intelligence" is brief and to the point, covering most of the issues to give better light on copyright protection on these emerging works.

The guidance initially starts with the basics, noting that for works to be protected by copyright they must have human authorship. The main decision in this regard is Burrow-Giles Lithographic Co. v Sarony where the US Supreme Court confirmed that  an author is “he to whom anything owes its origin; originator; maker; one who completes a work of science or literature”, which specifically can only be a human author. Subsequent decisions have confirmed the position to be the same, with precedent being clearly set in stone since 1886.

The same requirement is extended to the registration of copyright protected works by the Copyright Office, with its Compendium noting this position clearly. Any works created by AI systems are treated as the result of “mechanical reproduction” instead of an author’s “own original mental conception, to which [the author] gave visible form”, so the authorship of AI generated works will depend on the circumstances, e.g., how the AI tool operates and how it was used to create the final work. 

The Copyright Office notes that this includes simply giving the AI system a prompt and it then produces a new work, which is how most of the systems operate currently, as then the "'traditional elements of authorship' are determined and executed by the technology". What users would have to do is exercise ultimate creative control how such systems interpret any given prompts and then generate the material for them to have human authorship. 

Human authorship is possible, however, if a user "select[s] or arrange[s] AI-generated material in a sufficiently creative way that “the resulting work as a whole constitutes an original work of authorship", or if an artist modifies the works created by the AI systems to meet authorship requirements. 

The guidance is a clear sign that legislation is behind the times and legal requirements for authorship would need to be updated to reflect the new paradigm of AI generation of works and their protection in some form. The protection would still have to balance the remuneration of artists whose works are used in the training data and/or source of any derivative works, while encouraging the development of these AI systems and to remunerate them accordingly. This will be a difficult balance to strike, especially since legislatures across the world are woefully behind the development of these technologies.  

Yet Another Rejection - US Copyright Office Rejects Registration of Copyright in AI Created Artwork

How works created by artificial intelligence, or AI, are treated by various jurisdictions has been a hot topic recently, including in this very blog (for example here and here). It seems that, despite a briefly celebrated win in Australia, the technology is seeing setback after setback on whether AI-created works will be covered by IP and this seems more unlikely every day. The US Copyright Office was the latest blow in the battle for IP protection of AI-created works, which leaves the technology in a bit of a bind, however, it featured a familiar individual yet again. 

The US Copyright Office's Review Board recently released a decision on the copyright protection of a work, A Recent Entrance to Paradise, created by an AI program called Creativity Machine, developed by Steven Thaler. While the Creativity Machine was the author of the work, Mr Thaler was listed as the claimant alongside it as its owner. The work was autonomously created by the Creativity Machine, but Mr Thaler wanted to register the work as a work-for-hire to the owner of the program, himself. 

The US Copyright Office initially rejected the registration of the copyright in the work in 2019 as it "lacks the human authorship necessary to support a copyright claim", which Mr Thaler subsequently appealed this decision arguing that the "human authorship requirement is unconstitutional and unsupported by either statute or case law". Despite this, the Copyright Office rejected the registration on the same basis as before and noted that Mr Thaler had not provided any evidence of sufficient creative input or intervention by a human author in the work and that the Copyright Office won't abandon its longstanding interpretation of this matter which is based on precedent from the courts, including the Supreme Court. 

Being ever-persistent, Mr Thaler then yet again appealed, arguing in a familiar fashion that the Office’s human authorship requirement is unconstitutional and unsupported by case law. Mr Thaler also argued that there is a public policy piece to this where the Copyright Office 'should' register copyright in machine-created works because doing so would "further the underlying goals of copyright law, including the constitutional rationale for copyright protection". Mr Thaler also again rejected the Copyright Office's assertions of supporting case law. 

At the beginning of its decision, the Review Board accepted that the works were indeed created by AI without any creative contribution from a human actor. However, the Board noted that copyright only protects "the fruits of intellectual labor that are founded in the creative powers of the [human] mind". Mr Thaler was therefore tasked with either proving that the work was created by a human, which it hadn't been, or somehow convincing the Board to depart from long-established precedent.

The Review Board then moved on to discussing the precedent relevant to the matter at hand. 

Paragraph 306 of the US Copyright Compendium sets out that "the Office will refuse to register a claim if it determines that a human being did not create the work".  As such, human authorship is a prerequisite to copyright protection in the US. 

Similarly, 17 USC 102(a) affords copyright protection to "original works of authorship", and, while the phrase is very broad in its definition, it still requires human authorship. This has been supported by US Supreme Court decisions in Burrow-Giles Lithographic Co. v Sarony and Mazer v Stein where the Supreme Court required human authorship for copyright protection. In addition to the highest court in the US, the lower courts have also followed these decisions. 

Although the courts haven't directly decided on AI authorship in relation to copyright just yet, Mr Thaler has featured in a recent decision in the case of Thaler v Hirshfeld (the very same individual as in this decision) where the court decided that, under the Patent Act, an ‘inventor’ must be a natural person and cannot be an AI. 

The Board also discussed a recent report by the USPTO who discussed IP issues around AI. In this report, the USPTO noted that "existing law does not permit a non-human to be an author [and] this should remain the law". 

The Board also briefly touched on Mr Thaler's secondary argument, which was that AI can be an author under the law because the work-made-for-hire doctrine allows for non-human, artificial persons such as companies to be authors. The Board rejected this argument since the work was not made for hire. This was due to the requirement for such a work to be prepared by e.g. an employee or one or more parties who agree that the work is one for hire. No such agreement was in place between Mr Thaler and the Creativity Machine. Even outside of this, the doctrine merely addresses ownership and not copright protection, so human authorship is, yet again, required. 

The Board, therefore, rejected the appeal and refused to register the work. 

The decision by the Board is by no means surprising, as the status of AI-created works seems to be more and more established as the years go by as a no-go. While copyright protection could be possible in some jurisdictions, as discussed in the above blog articles in more detail, it seems highly unlikely to be possible in the US without legislative intervention. As AI develops the law will have to address this and potentially grant AI-creation some level of protection, however, this will take some time to come true. 

Words Hurt - Disparaging Trademarks and Free Speech Collide

Freedom of speech or expression has often been a sore point of contention for those wishing to protect a full freedom of expression (i.e. no restrictions on speech whatsoever) and those who want to limit it within a certain space to ensure a more harmonious society (i.e. the prevention of hate speech, for example, but allowing for a broad freedom of expression nonetheless) - although the former surely does not prevent a harmonious society as a concept itself. With that in mind, intellectual property is no exception, after all, most ways of expression yourself and/or marking your goods to distinguish them often tread the line of good taste and offense in order to further their respective goals. Especially with trademarks there are certain limitations on what you can use as a registered trademark, but does a limitation on your use of said marks prohibit your effective freedom of speech?

This issue was largely brought to light in the recent Washington Redskins trademark litigation, where the offensiveness of a trademark potentially disparaging native Americans was a heavy point of contention, and the Redskins were subsequently stripped of their trademark (although the loss of their mark is not as straightforward as that) due to the disparaging nature of the mark. However, the Redskins never brought a claim under the First Amendment of the US Constitution.

The matter of free speech was brought into the limelight regarding the refusal to register a trademark after a US Court of Appeals decision in Re: Simon Shiao Tam where the Court affirmed a prior decision to refuse the mark "THE SLANTS" due to its offensiveness against people of Asian descent. The mark related to the name of a rock band called The Slants, fronted by Mr. Tam (including several other members of Asian descent as well). The Court also promptly concluded that there was no impairment of Mr. Tam's First Amendment rights, following the precedent set in Re: Robert L. McGinley some 30 years ago, where the United States Court of Customs and Patent Appeals saw that "...the PTO's refusal to register... [a] mark does not affect his right to use it. No conduct is proscribed, and no tangible form of expression is suppressed. Consequently, [the mark's holder's] First Amendment rights would not be abridged by the refusal to register his mark". Arguably, prima facie at least, a refusal of registration does not prevent the use of a mark, but it does, however, prevent its effective protection under trademark law and can cause issues for the proper monetization of a mark in other commercial endeavors should the holder's venture become more successful than its own field allows it. Albeit this does not affect the use or 'expression' in the mark, but mainly the commercial aspects surrounding the mark.

Peter never was a man of consistency

What makes the decision in Re Simon Shiao Tam interesting are the remarks made by Justice Moore, although not dissenting, after the majority's decision to reject the mark (after which the Court of Appeals issued an Order for an en banc hearing to decide the issue). In her Honor's mind: "...it is unquestionably true that trademarks are protected speech under Supreme Court commercial speech jurisprudence" and that "...the government has conceded that “[t]rademarks are a form of commercial speech.”. Because a trademark identifies the source of a product or service for users, it is protected commercial speech". This writer will wholly admit that his knowledge of US trademark law is not as extensive as he'd hope to be, but the argument presented here seems a tad flimsy. The use of a mark in commerce, on the face of it, is not expressing a point or a view, but merely the distinction of a product or service from other similar ones. The more 'offensive' a mark does not correlate to a higher form of expression necessarily, even if it's to utilize or bring to light racial issues. Yet, the US courts will know more of the substantive side of things, so this writer will not address any other jurisprudential issues here, and awaits the en banc decision in Re Tam with interest.

Are there any freedom of expressions issues in the UK in relation to the same subject matter? Under the Trade Marks Act 1994 a mark can be refused registration if it is "...contrary to public policy or to accepted principles of morality". This would, arguably, cover any racial slurs or other content deemed offensive in the public's view (such as the name The Slants, potentially). Also, under the Public Order Act 1986 speech inciting racial hatred is not allowed, although the freedom of expression is sacrosanct under the Human Rights Act 1998. Arguably freedom of expression is narrower than the one protected by our cousins across the pond, and would not allow for the use of negative language even in trademarks, provided the mark is against public morality (and negative racial connotations, even if hidden behind good intentions, would probably be). This view was firmly illustrated by the UK Intellectual Property Office's decision in Basic Trademark SA's Trade Mark Application, where a mark was refused under the Trade Marks Act's morality provision, and was seen to not infringe Article 10 of the European Convention on Human Rights (and therefore, the Human Rights Act above). The case does, however, highlight the need to balance both interests: "...[the] right to freedom of expression must always be taken into account without discrimination under s3(3)(a) [of the Trade Marks Act] and any real doubt as to the applicability of the objection must be resolved by upholding the right to freedom of expression, hence acceptability for registration". The UK does have more questions in terms of freedom of expression and registered trademarks, but the balancing of both interests does take it into account even in this area of law.

All-in-all the line between the protection of a legitimate freedom of speech (or a more open freedom, such as in the US) and the curbing of possible moral outrage is a fine one, and both interests should be balanced in an assessment of the registrability of a mark. Nevertheless, it is hard to draw a strict comparison with EU and US rights due to their big differences, but both jurisdictions do see a clear need for the allowance of expression even in the world of trademarks. This writer for one, as said above, awaits the en banc decision of the US Court of Appeals in the Tam case, and it will be interesting to see whether trademarks are a true form of expression under US law, and therefore protected by the First Amendment.

Source: World Trademark Review

The US Supreme Court: Human DNA cannot be Patented

The long road of litigation has finally come to an end at the Supreme Court regarding the patentability of human genes. The Court was unanimous in its decision in the case (with Justice Scalia concurring in part but still agreeing with the decision), which came to a slightly surprising outcome, at least to this writer. The discussion on the possible outcome of the case based on the oral arguments a month or so ago on this blog can be found here.

The subject of patent desires

For those who haven't been fully introduced to the facts of the case, the Association of Molecular Pathology v Myriad Genetics dealt with patents relating to certain genomes; BRCA1 and BRCA2. These genes were patented by Myriad Genetics some 15 years ago, and they specifically relate to the identification of a potential heightened risk of getting breast or ovarian cancer for women. Analysis of the genes is used to identify potential mutations in those genes, causing the increased risk, and the only way to identify that potential mutation was controlled by Myriad. The Association of Molecular Pathology and others subsequently challenged the patentability of human genes.

The argument on the Association's part hinged on 35 USC § 101 which defines what subject matter can or cannot be patented. The Supreme Court's standing on what is excluded under section 101 was well stated in the case of Mayo Collaborative Services v Prometheus Labratories: "...laws of nature, natural phenomena, and abstract ideas". Whether the isolated genes could be seen as something that is not a natural phenomenon, they could be patented. A similar decision to the US Court of Appeals position prior to the Supreme Court have was handed down in Australia  (pending appeal to the Full Federal Court this Autumn), where the isolation of a human gene has been seen as a unnatural phenomenon, due to the isolation creating an artificial state of affairs. Myriad's contention to the appeal remained in that the locating and isolation of the gene (separating it from its natural state) from the human cell was enough to make that particular gene something which does not exist in nature by itself, attaining patentability.

The Supreme Court found against Myriad Genetics, and in a unanimous decision seems to have put this issue to bed with a firm stance. What was key in the Court's argument should be highlighted in itself to better appreciate why human genes, in this instance, couldn't be patented:

"It is undisputed that Myriad did not create or alter any of the genetic information encoded in the BRCA1 and BRCA2 genes. The location and order of the nucleotides existed in nature before Myriad found them.  Nor did Myriad create or alter the genetic structure of DNA."

In locating and isolating the genes Myriad hadn't created anything new, or altered the existing genes in any way. The mere process of taking those genes out of the cell, although it did alter the physical space where the genes resided, didn't in itself change those genes enough for them to be patentable. Should Myriad have altered the genes some way in their structure for example, the genes could have potentially been a patentable subject matter. If simply looked at within the cell, after being located, the genes themselves would exist as exactly the same as the ones isolated from the cell. The Court did leave cDNA patentable, as it is an artificially created from RNA and therefor doesn't exist naturally.

So what does this mean in practice? Myriad Genetic's patents were both roughly 15 years old, with the patent term in the US being 20 years. With the patents being close to their terms' end, their financial value in them is probably very minimal. The appeal can largely be understood as one of principle, setting a precedent preventing future patenting of human genes by companies. As said, the decision doesn't outright prevent the patenting of genes, so should sufficient changes be made to the genes rendering them something that doesn't appear in nature, they potentially could be patented. Whether the decision will affect other jurisdictions such as Australia will remain to be seen, as US precedent is not binding on Australian courts. It would be incomprehensible that the case would not have any weight, so this writer will await the Australian decision with excitement.

Can human genes be patented? The US Supreme Court starts its deliberation

Patents relating to medicine or medical treatments often don't come without controversy. Should we allow the patenting of essential medicines or treatments, which if provided cheap enough could save countless lives, or ease the suffering of many? What about the monetary interests of parties who've sunk millions into research and development, should we prevent them from recouping that investment? One of the more interesting, and possibly more important decisions in patents was put forth to the US Supreme Court on the 15th of April, when oral arguments for the case were heard.

Not the genes you were thinking of

The case of Association of Molecular Pathology v Myriad Genetics put forward the question of whether human genes could be patented, more specifically, genes relating to the increased risk of both ovarian and breast cancer in women in mutated. Myriad Genetics sought to patent the genes after their discovery, which was subsequently contested. 

This presents an incredible dilemma where monetary interests clash with what is intrinsically a part of you; your own genes. Should the investment of billions of dollars go to waste, or should companies be allowed to patent something which is present in humans without any outside interference? Also would the patentability of genes hinder future cures or therapies related to those genes to prevent ovarian or breast cancer? At the end of the day the act of balancing interests is a tough one. If billions of dollars spent on research and development can be made useless due to gene patents being unpatentable, companies will have less incentive to go about this research, or might even cause serious financial harm to them. On the other side is companies having monopoly rights to something arguably occurring naturally; your genes. Should any legal entity have the exclusive rights to parts of the human genome? There are two ways of looking at this question: as a lawyer, I can say it is very possible that companies could patent genes, but as a human being, I’d want that type of information to be accessible to anyone, not under the supervision of a company.


Experts have stated that such patents have "...faded in importance" and that the law suit "...will be much more ideological than it will be practical". This is probably because there is very little use for an isolated gene or its analysis. The average consumer will never need the genes in question analyzed, and the few researchers that will use them probably will come few and far between. In addition the patents in question will expire in a few years, effectively rendering the nullification of the patents through litigation nothing but a matter of principle for the Association of Molecular Pathology. Precedent will surely prevent the future patenting of human genes, should the Supreme Court decide so, but the real monetary interests of companies lie in medicines, not genetics.

(Source)

What the court has to decide is whether an isolated gene would be patentable as an isolated item, being sufficiently different from the genes found in your individual cells, or that they are purely a product of nature. The New York Times indicated that a fifth of the 20,000 genes found in the human body are patented, clearly showing that this has been an accepted practice for a while in the US. The US Government presented the courts with a statement expressing their opinion that human genes should not be patentable, showing support for the idea that they are indeed a natural occurrence, or the very least a subject matter that should not be covered under patents.

Indeed this case will present the Justices an interesting subject matter to tackle, and I for one will be waiting for their judgment with excitement. What seems to be the more probable outcome is the allowance of the patents, as decisions in both the UK and Australia (subject to further appeal) have been decided to favor the patenting of genes. What the US Supreme Court decides will undoubtedly influence later decisions in other jurisdictions, giving the case still the clout it deserves.