Synthetic brain, public domain?

Our IP experts look at Thaler v Commissioner of Patents [2021]

07.07.2022

This article first appeared in the Intellectual Property Forum journal, published by Intellectual Property Society of Australia and New Zealand. Synthetic brain, public domain? Simon Clark and Iva Gobac, “Current Developments – Europe: United Kingdom: Synthetic brain, public domain?” (2022) 128 Intellectual Property Forum.

Last year, the Court of Appeal of England and Wales decided that an artificial intelligence (“AI”) machine cannot be an inventor, nor can the machine’s owner apply for a patent, in Thaler v Comptroller General of Patents (“Thaler”).[1] At the same time, the Federal Court of Australia handed down a decision that recognised AI inventorship under Australian patent law.[2] This surprising precedent was, however, overturned in April 2022 by the Full Court of the Federal Court, thereby realigning Australian patent policy with other jurisdictions.[3] The owner of the machine in question, Dr Stephen Thaler, has been running a series of legal test cases as part of a project that seeks to gain IP protection for AI-generated works.

Whilst the English and Australian cases were based on two inventions by Thaler’s “DABUS” (Device for the Autonomous Bootstrapping of Unified Sentience) machine, a more recent application was made by Dr Thaler to the United States Copyright Review Board on the basis of a creative work titled A Recent Entrance to Paradise. The work is an image created by Thaler’s “Creativity Machine” and part of a wider series of images representing the near-death experience of a synthetic dying brain, produced through an image-repurposing algorithm.

The US Copyright Review Board rejected Thaler’s application for copyright, in which Thaler claimed that there was no human input into the Creativity Machine’s creative process. The three-person board quoted a long line of US jurisprudence that mandates human authorship for copyright registration. The requirement of connecting the human mind to the creative expression was recently reaffirmed in a report by the US Patent and Trademark Office (“USPTO”) stating that “the vast majority of commenters acknowledged that existing law does not permit a non-human to be an author [and] this should remain the law.”[4] Although this recent decision appears to keep any notion of non-human authorship at bay in the US, it revives the question as to whether, in an era of increasingly intelligent technology, this view remains appropriate.

A UK Perspective

The UK is one of very few jurisdictions to provide for the protection of computer-generated works (“CGW”), having done so decades before the financial and technical accessibility of AI technologies.[5] The UK’s Copyright, Designs and Patents Act 1988 (“CDPA”) provides for a category of “computer-generated works” under s.9(3). “Computer-generated” is defined as a work generated by a computer in circumstances such that there is no human author of the work.[6] It is understood that various computer programs may be used as tools by an individual creating a work, however, s.9(3) CDPA was formulated with a more nebulous concept in mind – when it may be impossible to identify any human involvement in the creation of a work other than the mere activation of a machine.[7] CGW therefore protect works that go beyond the use of computers as technical aids, which is as far as the European Union approach would stretch on this point.[8] Section 9(3) states that an author of a computer-generated literary, dramatic, musical or artistic work “shall be taken to be the person by whom the arrangements necessary for the creation of the work are undertaken” (this same terminology is used in the CDPA’s definition of a “producer” for determining the author of a film).[9] The term of protection for CGW is also shorter than for human-authored works, being 50 years from the end of the year the work is made instead of the usual life of the author plus 70 years.

Section 9(3) provided for the classification of such works, however, it was silent on how the originality requirement under copyright law would be applied to CGW. Suggestions by academics have ranged from asking whether the act by the computer was independent (i.e. not copied) or different from a previous work (i.e. novel) or to ask whether, had the work been created by a human author, it was created through the author’s own intellectual creation.[10] More practically, the inclination might be to attribute the relevant intellectual creation to the person who made the arrangements necessary for the creation of the work. Although this last option may have been an understandable compromise 30 years ago, when the CDPA was legislated, it may be less clear in an age where computer processing becomes so far removed from any human input that the nexus to the human “arranger” dissolves.

Whilst US copyright law does not provide for an equivalent of CGW, it would have been interesting to understand how a UK court would decide on Dr Thaler’s A Recent Entrance to Paradise, for which Dr Thaler did not assert any contribution from a human author. The image created by the Creativity Machine was both new and not copied, and the image, if judged as an image created by a human, clearly possesses a degree of intellectual creation that would ordinarily meet the originality requirement. The challenge with A Recent Entrance to Paradise, however, is that the potential human author intentionally distanced himself from a claim to authorship. Although Thaler’s stance on authorship was underlined by furthering a project specifically aimed at creating awareness around AI-generated work, the problem of identifying a human author may become more prevalent than previously envisaged, simply due to the increased sophistication and autonomy of AI processing.[11]

UK Consultations

Advances in computing power, better algorithms and the availability of data have driven the rapid advancement of AI technologies, and with it, the reconsideration of IP laws and policy surrounding AI-generated work. The currency of this theme is reflected in the UK Government’s consultations on the interface of AI and IP.

In a consultation that ran from 2 September 2020 to 23 March 2021 (the “2020 consultation”), the UK Government engaged with the same question that faced the US Copyright Review Board. IP rights protect creations of the mind:

But what if the creators are not humans, but machines? Should IP protect their creations? Who would own it? And what rules should apply when machines use the creations of others?[12]

The consultation broadly considered how the legal system could be tailored to align with the UK Government’s objective of being at the forefront of the AI revolution. The Government recognised the challenge in extending IP rights such as patents and copyright to cover AI-originated works. The policy discussion was premised on the basic incentives theory of IP law: IP rights reward people for their inventiveness and creativity, and in turn encourage investment in technology and culture for the public good, so how appropriate would it be for such a framework to be extended to non-human actors? The consultation received various responses from AI users and producers as well as academics and interested members of the public. There was consensus that AI should not own IP rights, but opinions differed as to whether AI-created works should be protected by IP rights at all.

Somewhat contemporaneously, the Court of Appeal of England and Wales answered the question as to whether patents should protect machine creations firmly in the negative. In Thaler, decided six months following the end of the 2020 consultation, the Court of Appeal held:

Machines are not persons. The fact that machines can now create inventions, which is what Dr Thaler says happened in this case, would not mean that machines are inventors within the meaning of the Act. Assuming the machine is the entity which actually created these inventions, it has no right to be mentioned as the inventor.[13]

Whilst the Court’s decision may have clarified the position of patent law on the particular facts of the case, various points raised by the 2020 consultation on copyright law still required elucidation, such as the originality requirement for AI-created works, how to deal with co-creation by humans and AI, and the level of human intervention that should be considered material in AI-generated work.

A particular focus of the 2020 consultation was on CGW, where the Government agreed to further consult the UKIPO and Office for Artificial Intelligence in order to better consider the scope and future of the provision. The results of the 2020 consultation led to a second public consultation on IP and AI that ran from 29 October 2021 to 7 January 2022 (the “2021 consultation”).[14] The 2021 consultation was driven by the UK’s National AI Strategy which seeks to make the UK the best place in the world for research and innovation, and at the forefront of the AI and data revolution. The Government thus considers IP one of the levers available to encourage the development of AI and its use across the UK economy, with the consultation questioning whether and how the IP framework can provide strong incentives to invest in AI.

The 2021 consultation examined areas of potential change to certain aspects of copyright and patent law in the context of AI, one of which was CGW. The 2021 consultation outlined the economic rationale for CGW protection. It recognised that the beneficiaries of CGW protection in copyright law will often not be the developers of AI software itself, but those who input parameters into the software to generate output. Maintaining protection for CGW provides an incentive for private enterprise to invest in their production. At the same time, the UKIPO recognised that in jurisdictions where no protection for CGW is granted, such as the US and EU, there is no significant market failure prohibiting the production of CGW, thus positing “[i]f copyright protection has a minimal impact on increasing the production of works, then there are limited grounds for providing such protection, in light of other costs protections produce”.

In terms of CGW policy options, the consultation suggested three routes for potential change to copyright law:

  • make no legal change to the provision;
  • remove the CGW protection so that copyright protection would be limited to human creations; or
  • replace the current provision with a new alternative with a reduced scope or duration.

This last option would be modelled on existing entrepreneurial rights (for example, sound recordings, films, broadcasts and typographical arrangements) and would limit the protection offered to the AI-generated work. It would remove the requirement for originality, which would resolve some ambiguity in the present law, but would only apply to facsimile copying of the work and not adaptations of it. The consultation paper suggested a significantly shorter term of protection, referring as example to a five-year term. The UKIPO considered this third option as the halfway point between the status quo and the full removal of protection of CGW. The rightholder would be the person who made the necessary arrangements, and they would benefit from all the restricted acts laid out in s.16 CDPA in relation to that fixation of the work, with the ability to license and assign their rights.[15]

The 2021 consultation’s impact assessment summarised the costs and benefits of each approach, highlighting that a shorter (or no) scope of protection would result in wider access to CGW, which could result in increased interest in using CGW and thus increased demand for AI service providers. Equally, the paper acknowledged that it would disincentivise ownership of CGW, which could decrease demand for AI service providers. The consultation also noted that the benefit to human creators would be a potential increase in the value of human works (relative to CGW) if the potential sources of revenue possible through CGW were mitigated. This point might find particular poignancy with the rise in demand of NFTs, which are increasingly generated through AI.

Rather than address certain legal arguments surrounding the test for originality of CGW where no human author could be identified, the consultation focused on the utility of CGW from a purely economic perspective. Although this may be disappointing for greater philosophical arguments surrounding copyright and originality arguments, it reflects the wider tone of the consultation: how can the UK’s IP legislative framework be harnessed as a tool for increased investment? To this end, the consultation’s approach to CGW suggests that decreasing or removing copyright protection, rather than refining it, may be more appropriate from a government policy perspective.

As such, the United Kingdom Intellectual Property Office (“UKIPO”)’s renewed interest in s.9(3) CDPA has offered little further clarity on the substance of the right and how our legal framework might capture the increasingly autonomous generation of work by AI. This may be underpinned by the conventional incentives’ justification behind the granting of limited monopolies in the form of IP rights. If investment and economic incentives appear to be the bottom line, there may be little practical justification in considering whether purely non-human work should give rise to copyright protection at the expense of limiting the public domain for human creators and consumers.

 –

[1] [2021] EWCA Civ 1374 <https://www.bailii.org/ew/cases/EWCA/ Civ/2021/1374.html>.

[2] Thaler v Commissioner of Patents [2021] FCA 879 <https://www.judgments.fedcourt.gov.au/judgments/Judgments/fca/ single/2021/2021fca0879>.

[3] Australian Government, ‘Federal court decision allows Commissioner’s appeal’, IP Australia (Web Page, 14 April 2022) <https://www.ipaustralia.gov.au/about-us/news-and-community/ news/federal-court-decision-allows-commissioners-appeal>.

[4] USPTO, ‘Public Views on Artificial Intelligence and Intellectual Property Policy’ (Web Page, October 2020) <https://www.uspto.gov/ sites/default/files/documents/USPTO_AI-Report_2020-10-07.pdf> 20.

[5] UK Government, ‘Consultation outcome’, Artificial Intelligence and Intellectual Property call for views (Web Page, 23 March 2021) <https://www.gov.uk/government/consultations/ artificial-intelligence-and-intellectual-property-call-for-views/ artificial-intelligence-call-for-views-copyright-and-related-rights#:~:text=Unlike%20most%20other%20countries%2C%20 the,s9(3)%20CDPA%20>.

[6] Section 178 CDPA.

[7] Copinger & Skone James, On Copyright (Sweet & Maxwell, 18th ed, 2020) 352.

[8] Case C-145/10, Eva-Maria Painer v Standard VerlagsGmbH and Others [1 December 2011] < https://eur-lex.europa.eu/legalcontent/EN/TXT/PDF/?uri=CELEX:62010CJ0145&from=EN>, following the Opinion of Advocate General Trstenjak, Eva-Maria Painer v Standard VerlagsGmbH and Others ECR 2011-00000, 121. “According to the first sentence of Article 6 of Directive 93/98 and of Directive 2006/116, only human creations are therefore protected, which can also include those for which the person employs a technical aid, such as a camera” <https://eur-lex.europa.eu/legalcontent/EN/TXT/?uri=CELEX%3A62010CC0145>.

[9] Section 178 CDPA.

[10] Applying the test in Case C-5/08, Infopaq Int’l A/S v Danske Dagblades Forening (Infopaq) [19 July 2009] ECR I-6569, Lionel Bently, Brad Sherman, Dev Gangjee and Phillip Johnson, Intellectual Property Law (Oxford University Press, 5th ed, 2018) 24.

[11] In 2016, The Next Rembrandt project drove the creation of a visually similar Rembrandt painting created by software that distilled the features of the Dutch master, an AI-written novel made it through the first round of screening for a national literary prize in Japan, and Google’s AI-driven software has successfully produced both news articles and musical soundtracks.

[12] UK Government, ‘Consultation outcome’, Artificial Intelligence and Intellectual Property call for views (Web Page, 23 March 2021) <https://www.gov.uk/government/consultations/artificialintelligence-and-intellectual-property-call-for-views/artificialintelligence-call-for-views-copyright-and-related-rights>.

[13] Thaler v Comptroller General of Patents [2021] EWCA Civ 1374, 55 <https://www.bailii.org/ew/cases/EWCA/Civ/2021/1374.html>.

[14] UK Government, ‘Consultation outcome’, Artificial Intelligence and Intellectual Property call for views” (Web Page, 7 September 2020) <https://www.gov.uk/government/consultations/artificialintelligence-and-intellectual-property-call-for-views>.

[15] Section 16 CDPA states that a copyright owner has the exclusive rights to copy the work; issue copies of the work to the public; rent or lend the work to the public; perform, show or play the work in public; communicate the work to the public; or make an adaptation of the work or do any of the aforementioned acts in relation to the adaptation.

Simon Clark

Author

Iva Gobac

Author

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