Copyright Office Denies Application for AI "AUTHOR"

Timothy J. Lockhart

The three-person Review Board of the U.S. Copyright Office (Board), headed by Register of Copyrights Shira Perlmutter, recently denied an application to register the copyright claimed in a visual work created by artificial intelligence (AI). 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 visual work in question, titled “A Recent Entrance to Paradise” (Work), appears below.

On November 3, 2018, Steven Thaler filed an application to register a copyright claim in the Work. Thaler identified the author of the Work as the “Creativity Machine” and stated that he had acquired the copyright in the Work by virtue of being the owner of the machine. Thaler included in the application a note stating that the Work “was autonomously created by a computer algorithm running on a machine.”

In an August 12, 2019, letter, a Copyright Office registration specialist refused registration, finding that the Work “lacks the human authorship necessary to support a copyright claim.” Thaler subsequently requested that the Copyright Office reconsider its refusal, arguing that “the human authorship requirement is unconstitutional and unsupported by either statute or case law.” After reviewing the Work in light of the points raised in Thaler’s request, the Copyright Office concluded that because Thaler had “provided no evidence on sufficient creative input or intervention by a human author,” the Work “lacked the required human authorship necessary to sustain a claim in copyright.” The Copyright Office also stated that it would not “abandon its longstanding interpretation of the Copyright Act, Supreme Court, and lower court judicial precedent that a work meets the legal and formal requirements of copyright protection only if it is created by a human author.”

Thaler then filed a second request for reconsideration, repeating his prior arguments and also arguing that as a matter of public policy the Copyright Office “should” register copyrights in machine-generated works because doing so would “further the underlying goals of copyright law, including the constitutional rationale for copyright protection.” Thaler asserted that “there is no binding authority that prohibits copyright for [computer-generated works],” that copyright law already allows non-human entities [such as corporations] to be authors under the work made for hire doctrine, and that ultimately that the Copyright Office “is currently relying upon non-binding judicial opinions from the Gilded Age to answer the question of whether [computer-generated works] can be protected.”

In response, the Board stated that the Copyright Act affords protection only to “original works of authorship” that are fixed in a tangible medium of expression. 17 U.S.C. § 102(a). The Board noted that although Congress has not defined what the phrase “original works of authorship” means and that the phrase is “very board,” its scope is “not unlimited.” Thus, the Board said, “[c]ourts interpreting the Copyright Act, including the Supreme Court, have uniformly limited copyright protection to creations of human authors” (citing Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 58 (1884) (a copyright is “the exclusive right of a man to the production of his own genius or intellect”); Mazer v. Stein, 347 U.S. 201, 214 (1954) (a copyrightable work “must be original, that is, the author’s tangible expression of his ideas”); Goldstein v. California, 412 U.S. 546, 561 (1973) (“[w]hile an ‘author’ may be viewed as an individual who writes an original composition, the term, in its constitutional sense, has been construed to mean an ‘originator,’ ‘he to whom anything owes its origin’”) (citation omitted)). The Board said that the Copyright Office “is compelled to follow Supreme Court precedent, which makes human authorship an essential element of copyright protection.”

The Board also noted that the Compendium of U.S. Copyright Office Practices, the practice manual for the Copyright Office, has long mandated human authorship for registration. Citing the second and third editions of the Compendium, the Board noted the following works that had been held not entitled to copyright protection: materials produced solely by nature, by plants, or by animals; automated computer translations; derivative sound recordings made by purely mechanical processes; machine-produced expression in visual arts works, such as linoleum flooring; and hypertext markup language if created by a website-design program. The Board said that although no Compendium section explicitly addresses AI, Copyright Office “policy and practice makes human authorship a prerequisite for copyright protection.”

For those reasons the Board affirmed, as the Copyright Office’s “final agency action in this matter,” the first and second refusals of the Copyright Office to register a copyright in the Work. Despite the Board’s decision, however, it is possible that, as suggested by the Copyright Office’s first refusal of Thaler’s application and a recent report from the U.S. Patent and Trademark Office on intellectual property issues raised by AI (a report that the Board cited), a work produced by AI that had sufficient creative input or intervention by a human author could quality for copyright protection under U.S. law. That issue may be taken up in a future copyright case.

Federal Circuit Trumps USPTO’S Denial of TRUMP TOO SMALL

Timothy J. Lockhart

As published in the INTA Bulletin on April 20, 2022

The U.S. Court of Appeals for the Federal Circuit overturned the denial by the Trademark Trial and Appeal Board (TTAB) of Steve Elster’s application to register the mark TRUMP TOO SMALL for various types of shirts. In re Elster, 2022 WL 552146 (Fed. Cir. Feb. 24, 2022) (precedential).

The TTAB had affirmed the examining attorney’s refusal to register the mark under serial number 87749230 on the ground that, in violation of 15 U.S.C. Section 1052(c), it included the surname of a living individual, former President Donald J. Trump, without his consent. The TTAB found it unnecessary to address the examining attorney’s refusal on the additional ground that the mark falsely suggested a connection with Mr. Trump in violation of 15 U.S.C. Section 1052(a).

The court noted that “Elster’s mark is speech by a private party in a context in which controversial speech is part-and-parcel of the traditional trademark function, as the Supreme Court decisions in [Matal v. Tam, 582 U.S. ___, 137 S. Ct. 1744 (2017)] and [Iancu v. Brunetti, 588 U.S. ___, 139 S. Ct. 2294 (2019)] attest.” In Tam and Brunetti, the U.S. Supreme Court ruled that the anti-disparagement and anti-obscenity provisions, respectively, of 15 U.S.C. Section 1052(a) violate the First Amendment guarantee of free speech. The court said that the “First Amendment interests [in the Elster case] are undoubtedly substantial” and that “the right to criticize public men” is “[o]ne of the prerogatives of American citizenship” (citation omitted).

The court held that “there can be no plausible claim that President Trump enjoys a right of privacy protecting him from criticism in the absence of actual malice—the publication of false information ‘with knowledge of its falsity or in reckless disregard of the truth’” (citation omitted). The court also held that “[n]o plausible claim could be or has been made that the disputed mark suggests that President Trump has endorsed Elster’s product.”

In concluding its analysis, the court held that the U.S. Patent and Trademark Office’s “refusal to register Elster’s mark cannot be sustained because the government does not have a privacy or publicity interest in restricting speech critical of government officials or public figures in the trademark context—at least absent actual malice, which is not alleged here.” Because Elster raised only an as-applied challenge to 15 U.S.C. Section 1052(c), the court did not decide whether that statute is constitutionally overbroad. The court did note, however, that the statute “raises concerns regarding overbreadth,” which suggests that a future appeal of a relevant TTAB decision could well take up that issue.

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