The use of artificial intelligence (AI) to create works of art and inventions raises interesting legal challenges to the protection of intellectual property (IP). The plain language of the Copyright Act and Patent Act present obstacles to inventors and artists who may use or be AI systems. Recent actions by the U.S. Copyright Office (USCO) and the United States Patent and Trademark Office (PTO) show that Congress will need to act to protect IP that is not substantially created or conceived by humans.

What You Need to Know:

• AI is computer technology that can simulate human intelligence.
• In September 2022, the USCO issued a registration for a graphic novel that was created with the assistance of AI.
• One month later, the USCO changed its position and notified the author that it might cancel the registration.
• This follows on a recent Federal Circuit decision affirming the denial of a patent application that named an AI system as the inventor.

​AI is generally described as the use of computer technology to simulate human intelligence. For example, AI can make decisions based on data analysis and pattern recognition, learn from past experiences to optimize processes, and generate images from speech or text. This alert focuses on the USCO’s recent stance on using AI to create works of art and the implications for the protection of creative works generated, at least in part, by AI.

On September 15, 2022, the USCO seemingly issued the first copyright registration for a work created with the assistance of AI, a graphic novel titled, Zarya of the Dawn. But just one month later, the USCO notified the author, Kristina Kashtanova, that it might cancel the registration if she could not demonstrate substantial human involvement in the creation of the graphic novel. The USCO’s position begs the question, how much human involvement is enough for an author to receive a copyright registration for a work in which AI played some role in its creation?

Not surprisingly, the Copyright Act does not answer this question. While the Copyright Act provides that “original works for authorship” may be protected, the statute does not define the term “author.” Notably, federal courts have held that an author must be a human. See Naruto v. Slater, 888 F.3d 418, 420 (9th Cir. 2018) (“we conclude that this monkey—and all animals, since they are not human—lacks standing under the Copyright Act”). In keeping with the Naruto decision, in 2019, the USCO denied the application filed by Dr. Stephen Thaler to register a work of art that “was autonomously created by a computer algorithm running on a machine,” called “A Recent Entrance to Paradise,” because it lacked “the human authorship necessary to support a copyright claim.” In 2022, the USCO denied the second of two requests filed by Dr. Thaler to reconsider his application. Thus, it should be expected that the USCO will not register works that are created without any human involvement.

Also, it is noteworthy that the Dr. Thaler mentioned above filed two patent applications that were rejected by the PTO because they named an AI system called Device for the Autonomous Bootstrapping of Unified Sentience (DABUS) as the “inventor.” Importantly, the Patent Act defines the term “inventor” to mean “the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.” 35 U.S.C. §  100(f). This summer, the Federal Circuit ruled against Dr. Thaler and held that inventors must be human beings. The Court of Appeals for the Federal Circuit based its decision on the plain language of the Patent Act and did not see the need to make “an abstract inquiry into the nature of the invention or the rights, if any, of AI systems.” Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022). See also Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980) (“abstract ideas,” the laws of nature, and physical phenomena are not patentable).

The case of Zarya of the Dawn not only highlights the distinction between works of authorship that are entirely generated by AI and those in which AI played some role, but creates the slippery slope of allowing the USCO to decide the threshold amount of human involvement needed to obtain copyright protection. The same issues may arise in the patent context, even though the PTO and Federal Circuit have already determined that an inventor must be a human. For example, would the PTO reject a patent application where two of the three named inventors were humans and the other was an AI system? One potential consequence of the PTO rejecting patent applications that name AI as inventors is that AI-created innovations are likely to remain as trade secrets, since the “owner” of a trade secret can be a “person or entity.” 18 U.S.C. § 1839(4).  

It is undeniable that AI is evolving quickly and will find its way into more and more aspects of our lives in the coming years, especially when AI is used in the generation of art, music, movies, software, and other creative fields. The debate sparked by the USCO’s handling of Zarya of the Dawn will undoubtedly require the laws pertaining to the protection of IP involving the use of AI to be revised in the years to come. In addition, authors who use AI should be prepared to document and demonstrate to the USCO their own involvement in the creative process, as well as how they used AI to assist in that process.