“The Review Board explained that a machine cannot enter into a binding legal contract, such as an employment or a work-made-for-hire agreement, which is required for the work made for hire doctrine to apply.”
In an opinion letter dated February 14, 2022, the Review Board of the United States Copyright Office (Review Board) affirmed a decision of the U.S. Copyright Office (USCO) denying registration of a two-dimensional artwork generated by Creativity Machine, an artificial intelligence (AI) algorithm created by Dr. Stephen Thaler. Established by regulation in 1995, the Review Board is responsible for hearing final administrative appeals following two opportunities for a claimant to appeal copyright registration refusals.
Thaler filed an application to register the computer-generated work, “A Recent Entrance to Paradise,” on November 3, 2018. On the application, Thaler listed Creativity Machine as the author of the work and indicated himself to be the claimant, with a transfer statement explaining he acquired ownership of the work because of his “ownership of the machine.”
Throughout the first and second requests for reconsideration, Thaler presented two arguments in support of his attempt to overturn the denial: (1) the USCO’s human authorship requirement is unconstitutional and unsupported by case law; and (2) the work made for hire doctrine, which recognizes companies as authors, should similarly apply to AI-generated works.
In response to Thaler’s first argument, the majority of the Review Board’s opinion letter was spent examining the historical precedence around the human authorship requirement. The Review Board presented summaries of guidance from the USCO’s Compendium (Third), Supreme Court cases (Burrow-Giles Lithographic Co. v. Sarony, Mazer v. Stein, and Goldstein v. California), lower court cases (Ninth Circuit’s Urantia Found. v. Kristen Maaherra and Naruto v. Slater), the 1978 Final Report of the National Commission on New Technological Uses of Copyrighted Works (CONTU Report), and the 1965 Annual Report of the USCO.
The Review Board rather quickly, within a span of two paragraphs, dismissed Thaler’s second argument as more of a public policy discussion. The Review Board explained that a machine cannot enter into a binding legal contract, such as an employment or a work-made-for-hire agreement, which is required for the work made for hire doctrine to apply.
“The Copyright Office’s refusal letter indicates that Dr. Thaler did not assert that the work involved contributions from a human author,” noted Joshua Simmons of Kirkland and Ellis LLP, “but rather that, like his patent applications, he appears to be testing whether U.S. law would recognize artificial intelligences themselves as authors.”
“As a result, the letter does not resolve the question that is more likely to recur: how much human involvement is required to protect a work created using an artificial intelligence,” explains Simmons. “It is this question for which more guidance would be useful to those working in the field.”
Thaler’s Storied Patent Application History
Thaler’s efforts aren’t limited to the realm of copyright law. DABUS, the AI algorithm created by Thaler, was listed as the inventor on patent applications filed around the world for “a food container based on fractal geometry.” DABUS stands for “device for the autonomous bootstrapping of unified sentience.”
In South Africa, DABUS was granted a patent and became the first AI inventor. DABUS also found success after challenging a rejection by Australia’s patent office and winning (yet still open for appeal by the Australian Commissioner of Patents). However, patent applications in the European Union in 2021 and the United Kingdom in 2020 did not end favorably for DABUS. Similarly, patent applications in the United States were denied by the USPTO and did not face a warm welcome, despite showing some signs of support within the field.
In late 2021, the U.S. District Court for the Eastern District of Virginia issued a decision granting a Motion for Summary Judgment in which Thaler and DABUS failed to overturn the United States Patent and Trademark Office (USPTO) decision.
Out of (Copyright Office) Options
The Review Board clearly laid out its stance for future attempts at registration of works that are generated entirely by a machine. In a footnote, the Review Board cited Eldred v. Ashcroft to explain the heart of the issue involves a policy change: “‘[I]t is generally for Congress,’ not the Board, ‘to decide how best to pursue the Copyright Clause’s objectives.’”
Professor Jane Ginsburg and Luke Ali Budiardjo authored the 2019 article, “Authorship and Machines,” exploring the issue of machine-generated works. The article revisits traditional concepts of authorship, proposing and exploring two basic pillars of authorship: (1) a mental step, or the conception of a work; and (2) a physical step, or the execution of the work. From there, the article identifies the human responsible for the programming and training of software (upstream authors) of a machine and the human requesting the output (downstream authors). The authors note the current technological impracticability for a machine to, on its own, author a work; rather, they identify the possibility of non-collaborating actors generating “authorless” outputs.
As of now, the Opinion Letter from the Review Board serves as the final step of the administrative appeal process for the USCO. As explained in a 2017 blog post from the USCO, “decisions by the Review Board are subject to court challenge under the Administrative Procedure Act.” It remains to be seen whether or not Thaler will pursue a court challenge—but historically, Thaler has not been afraid to do so in the patent realm.
The Review Board is comprised of three members: Shira Perlmutter, Register of Copyrights, Suzanne Wilson, General Counsel and Associate Register of Copyrights, and Kimberley Isbell, Deputy Director of Policy and International Affairs.
Thaler is represented by Ryan Abbott, Esq., of the Los Angeles-based Brown, Neri, Smith & Khan, LLP.
Join the Discussion
6 comments so far.
AnonMarch 1, 2022 09:24 am
“because (making reasonabe assumptions regarding the underlying facts) Thaler runs the Creativity Machine, and established its starting presumptions.”
That is not enough under copyright law.
“ According to Feist, these are acts of creativity, and are protectable by Copyright, even if the pure machine contributions are not.”
You misread Feist.
“The “Taking” issue arises from the inserted image in the letter from the Registrar, which was in no way relevant to the decision of the Registrar refusing registration.”
Such is not a taking. Infringement(?) is also not likely, given Sovereign Immunity.
“ The registrar also makes many registered works hard to access copies of. ”
Non sequitur. Anyone who understands the system plainly sees that everything is in fact published. My point carries.
As tot he following, your plain error is put in my emphasis:
“As for fair use, there was no “criticism, comment, news reporting, teaching, scholarship, [or] research” regarding the work _itself_ and rather it was about Thaler and the Creativity Machine”
“slavishly copied the subject image,”
Your attempt to inject emotional language does you naught.
“ Mere purient interest in distributing the image with supposed impunity from the copyright police, to somehow stick it to Thaler.”
Your emotions are noted – but again, this does you naught.
“Mr. Anon, please refrain from ad hominem attacks. This is a civil forum, not the twitterverse or metabook. There is no dishwasher soap to sell, and the Russians now have bigger fish to fry.”
There is a difference between “civility” and faux manners and using words that ought to be a bit sharp. My hope that you were not an attorney was not ad hominem, by the way. It was a valid observation that you are not engaging the legal terms here properly.
As to selling soap or Russians, I have no idea what point YOU think that you are making with such terms. Can you clarify?
Steven M HoffbergFebruary 25, 2022 02:03 pm
The work should be copyrightable by Thaler as author because (making reasonabe assumptions regarding the underlying facts) Thaler runs the Creativity Machine, and established its starting presumptions. Thaler selected the output. According to Feist, these are acts of creativity, and are protectable by Copyright, even if the pure machine contributions are not.
The “Taking” issue arises from the inserted image in the letter from the Registrar, which was in no way relevant to the decision of the Registrar refusing registration. For purposes of the decision, the Work could have been a pure white bitmap. The Registrar does not incude a copy of every work in the correspondence refusing or accepting registration. The registrar also makes many registered works hard to access copies of. Why was it published here?
As for fair use, there was no “criticism, comment, news reporting, teaching, scholarship, [or] research” regarding the work _itself_ and rather it was about Thaler and the Creativity Machine. But, instead of using an image of Thaler, or an image of the Machine, the Copyright office, and the minions who editorialized the registration decision, slavishly copied the subject image, which was itself irrelevant to the debate. To wit, in Mr. Graves piece, did he ever even mention any characteristic the image itself? Did he ever opine whether, if generated by a person, it would be copyrightable? Did he ever opine whether the standard of creativity for copyright should now be elevated over the non-creativity available from machines? No. Mere purient interest in distributing the image with supposed impunity from the copyright police, to somehow stick it to Thaler.
Fair use does not arise simply because the Work is related to an issue under discussion, rather the fair use arises because the Work itself is subject to “criticism, comment, news reporting, teaching, scholarship, [or] research”. However, this issue has been divorced from the Work.
Mr. Anon, please refrain from ad hominem attacks. This is a civil forum, not the twitterverse or metabook. There is no dishwasher soap to sell, and the Russians now have bigger fish to fry.
AnonFebruary 25, 2022 10:22 am
Not only cannot I agree with you, you seem unaware of the legal aspects of copyright law and how the Copyright Office works (ALL items submitted to the Copyright Office are in effect published).
As to work copyrightable to Thaler directly, how do you suggest that would work (and you need to take as a given that Thaler has been adamant that he is NOT the direct author.
As to “there may be a taking claim here” – please flesh that out. A taking of what? by whom?
As to “I see no fair use,” you really do show a lack of legal understanding. I will let you try to figure out why a news source reporting on a news item is one of the surest ways to evidence Fair Use.
I certainly hope that you are NOT an attorney (and equally hope that you try to not be so dogmatic when it comes to legal views that you have – without basis).
Steven M HoffbergFebruary 24, 2022 01:08 pm
An interesting point is that the US Copyright Office published a copy of the work that was sought to be protected, resulting in the antithesis of copyright (unabashed publication for no legitimate governmental purpose) , even though the actual work had no bearing on the result of the case. My assessment is that, even though the work is not registrable as a work made for hire with the Creativity Machine as an employee of Thaler, the work is nevertheless copyrightable to Thaler. Therefore, it appears that there may be a “taking” claim here. This post includes a copy of the image at issue–WHY? I infer only because the image is valuable. I see no fair use.
AnonFebruary 23, 2022 08:42 pm
Had not heard of this effort by Thaler, but from a quick read, it appears to have been a pretty feeble attempt, with no ‘lessons learned’ from the other ventures (either directly in the US Sovereign, or other foreign sovereigns).
Pro SayFebruary 23, 2022 06:00 pm
Don’t look now . . . but R2-D2, C-3PO, Robby the Robot, Johnny-5, and yes . . . The Iron Giant as well . . . have announced a copyright freedom convoy to D.C.
All robots — and those who want to be — are invited to join them.