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In This Edition

  • Ai | Does a work generated autonomously by a computer fall under the protection of copyright law?
  • iOS | Does a product facilitating third-party research with the Apple Inc.‘s iPhone operating system (‘‘iOS’’) infringe the copyrights in that software, or does it fall under fair use?
  • New, Modernized Assignment System for U.S. Patents and Trademarks "IPAS" available January 15, 2024



Timothy J. Lockhart

The U.S. District Court for the District of Columbia upheld the decision of the U.S. Copyright Office that the author of a copyrighted work must be a human being as opposed to an artificial intelligence (“AI”) system. Thaler v. Perlmutter, ___ F. Supp. 3d ___, 2023 WL 533326, (D.D.C., Aug. 18, 2023). In ruling that a visual work produced by an AI system was not an “original work of authorship” under the Copyright Act, 17 U.S.C. § 101 et seq., the court compared the AI system to a camera, stating that photographs are “copyrightable creations of ‘authors,’ despite issuing from a mechanical device that merely reproduced an image of what is in front of the device, because the photographic result nonetheless ‘represent[ed]’ the ‘original intellectual conceptions of the author’” (citing Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 59 (1884)).

Stephen Thaler, a computer programmer, applied to register the copyright in a visual work titled “A Recent Entrance to Paradise” that he said was produced by an AI system called the “Creativity Machine.” The U.S. Copyright Office denied, and subsequently twice affirmed its denial of, the application on the grounds that the purported “author” of the work was not a human being. In re Second Request for Reconsideration for Refusal to Register A Recent Entrance to Paradise (Correspondence ID 1-3ZPC6C3; SR # 1-7100387071) (February 14, 2022). The Tech Law Letter reported on the Copyright Office’s decisions in the Spring 2022 edition.

Thaler appealed to the district court under the Administrative Procedure Act (“APA”), 5 U.S.C. § 706(2), and each party moved for summary judgment. The court said that “[i]n APA cases such as this one, involving crossmotions for summary judgment, ‘the district judge sits as an appellate tribunal.  The “entire case” on review is a question of law’” (citing American Bioscience, Inc. v. Thompson, 269 F.3d 1077, 1083–84 (D.C. Cir. 2001)) (footnote omitted) (collecting cases)).  Thus, the court said that it would not engage in fact finding but rather would operate as an appellate court resolving legal questions (citing James Madison Ltd. by Hecht v. Ludwig, 82 F.3d 1085, 1096 (D.C. Cir. 1996)) (other citation omitted).

The court said that the only legal question presented was “whether a work generated autonomously by a computer falls under the protection of copyright law upon its creation.” The court added that because the Register of Copyrights had concluded that such a work is not entitled to copyright protection, the court did not need to address Thaler’s arguments as to why any such copyright had vested in him.

The court acknowledged—agreeing with Thaler on this point—that “throughout its long history, copyright law has proven malleable enough to cover works created with or involving technologies developed long after traditional media of writings memorialized on paper” (citing Goldstein v. California, 412 U.S. 546, 561 (1973)) (explaining that the constitutional scope of Congress’s power to “protect the ‘Writings’ of ‘Authors’” is “broad,” such that the term “writings” is not “limited to script or printed material,” but rather encompasses “any physical rendering of the fruits of creative intellectual or aesthetic labor”) (other citation omitted). But the court noted that “[u]nderlying that adaptability . . . has been a consistent understanding that human creativity is the sine qua non at the core of copyrightability, even as that human creativity is channeled through new tools or into new media.”

The court also acknowledged that “we are approaching new frontiers in copyright as artists put AI in their toolbox to be used in the generation of new visual and other artistic works. This “increased attenuation of human creativity from the actual generation of the final work,” the court said, “will prompt challenging questions,” including “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, [and] how copyright might best be used to incentivize creative works involving AI.”

But because Thaler’s copyright application claimed that “A Recent Entrance to Paradise” was “[c]reated autonomously by machine” and that his copyright claim was based only on his “[o]wnership of the machine,” there was nothing in the application record to indicate that Thaler himself had played any role in creating the work. Thus, the court said, on the record that Thaler had generated “from the outset of his application for copyright registration,” the case presented “only the question of whether a work generated autonomously by a computer system is eligible for copyright.” And the court concluded that, in the absence of any human involvement in the creation of such a work, “the clear and straightforward answer is the one given by the Register: No.”

Accordingly, the court upheld the Copyright Office’s denial of Thaler’s application to register the copyright in “A Recent Entrance to Paradise.” [See image below]

A Recent Entrance to Paradise is visual art created entirely by AI




Timothy J. Lockhart

The U.S. Court of Appeals for the Eleventh Circuit found that third-party security research conducted with the iPhone operating-system software (“iOS”) of Apple, Inc. does not infringe the copyrights in that software. Apple v. Corellium, No. 21-12835, 2023 WL 3295671 (11th Cir. May 8, 2023) (per curiam). The court held that the use of iOS by Corellium, Inc. met the test for fair use set forth in the Copyright Act, 17 U.S.C. § 101 et seq.

Apple’s iPhone was one of the world’s first smartphones and continues to be one of the world’s most popular consumer electronic devices. iOS runs the apps that come with iPhones and also runs the phones’ graphical user interface, i.e., their visual display. Apple updates iOS from time to time and registers its copyrights in each successive version with the U.S. Copyright Office. Apple puts each update into an “IPSW” file (essentially a zip file) that it makes available to the public for free, primarily so that authorized third parties can develop and test apps for iPhones.

Corellium created virtualization software called CORSEC that, among other things, simulates on non-Apple hardware an environment that can run the iOS, thereby, as the court said, “enabl[ing] users to create a virtual iPhone.” According to Corellium, the purpose of CORSEC was to “create a good environment for security researchers to do their work.”  Apple became interested in CORSEC and offered to buy Corellium, but after the parties were unable to agree on a price, their negotiations ended.

CORSEC starts with Apple’s IPSW file and then modifies certain components of Apple’s software to make iOS run reliably on non-Apple platforms. The process produces a virtual iPhone running a combination of Apple’s software and Corellium’s software, and that combination gives researchers technical features, including modification and browsing functions, not available from iOS alone.

In 2019 Apple sued Corellium for three counts: (1) direct copyright infringement of iOS (2) direct copyright infringement of Apple’s icons and wallpapers, and (3) contributory copyright infringement of iOS, the icons, and the wallpapers. Corellium moved for summary judgment on all three counts, claiming that its use of iOS and Apple’s icons and wallpapers was “categorically fair use.” Focusing on the first count, the district court ruled in Corellium’s favor, and Apple appealed.

The court of appeals agreed with the district court that Corellium’s actions qualified as fair under the statutory test, which reads: “[T]he fair use of a copyrighted work . . . for purposes such as criticism, comment, news reporting, teaching . . ., scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—

  • the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
  • the nature of the copyrighted work;
  • the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
  • the effect of the use upon the potential market for or value of the copyrighted work.”

17 U.S.C. § 107. 

The court of appeals found that “Corellium’s virtualization software is transformative—it furthers scientific progress by allowing security research into important operating systems,” therefore qualifying as fair use under the first prong of the test. With regard to the second prong, the court said that “iOS is functional operating software that falls outside copyright’s core,” unlike more creative works such as “paintings, movies, and books” (citing Google LLC v. Oracle America, Inc., 593 U.S. ___, 141 S. Ct. 1183, 1202 (2021) (finding that the nature of the copyrighted work weighed in favor of fair use where a computer program’s “new creative expression” was “inherently bound together with uncopyrightable ideas”)).

In ruling for Corellium under the third prong, the court said that “Corellium’s use of iOS wasn’t just tethered to its transformative purpose; it was necessary to achieving that purpose.” And the court pointed out that Apple was on record as agreeing, having admitted, “Full access to iOS is needed for Corellium’s virtualization because if you’re going to run a virtualization environment, realistically you cannot do so without the entire operating system available.”

Likewise, the court also found for Corellium under the fourth prong. “The record shows that Corellium has sold only forty or so units of its product,” the court said although it noted that the product’s price—up to hundreds of thousands of dollars—was a factor in such relatively low sales volume. “Apple, by contrast, has sold over two billion iOS devices.  Even if CORSEC has had some minor effect on Apple’s iOS market, it hasn’t caused substantial economic harm to the iOS market such that it would materially impair Apple’s incentive to innovate.” (citing Suntrust Bank v. Houghton Mifflin Co., 268 F.3d 1257, 1275-76 (11th Cir. 2001) (concluding that “the fourth . . . factor weigh[ed] in favor of” fair use where the evidence suggested there was no “significant[] harm” to the market)). The court said Apple’s related claim that CORSEC harmed Apple’s derivative market for security products was “a somewhat closer question” but ruled that CORSEC was more transformative than derivative and therefore also qualified as fair use in that regard.

Thus, the court agreed with the district court’s finding of fair use with respect to Apple’s first count. “As to counts two and three,” the court said, “we remand for the district court to independently consider those claims in the first instance.”




The U.S. Patent and Trademark Office (“USPTO”) has announced that, as part of its ongoing updates to its online services, the USPTO is reforming the Electronic Patent Assignment System and the Electronic Trademark Assignment System into one cohesive and modernized system: the Intellectual Property Assignment System (“IPAS”). 

According to the USPTO, IPAS is scheduled to be available to customers beginning on January 15, 2024. The USPTO says that the new system will provide “integrated information support by processing all patent and trademark re-assignment requests, in which a patent or trademark holder transfers ownership or changes the owner’s name on [its] pending or granted application or registration.” IPAS will also enhance customer service, the USPTO says, “by enabling USPTO staff to track the status of customer requests, record data, and issue reports from one secure cloud-based system.” 

For information on additional enhancements to the USPTO’s online systems, visit the USPTO’s website improvements page.

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