Ryan E. Long // 20 April 2021

Imagine you just purchased a painting from Sotheby’s called Portrait of Edmond Belamy (“Portrait”) for $432,500. Portrait was AI-generated. Your neighbour Jim takes a photo of the painting as you are bringing it inside. Jim puts Portrait on t-shirts for sale online.

What, if anything, can you do, provided you wanted to? What about the software company who owns the AI? Does it matter whether you live in the US or the EU?

The issue is not hypothetical. AI-created paintings, software, and other inventions have grown immensely. While copyright and patent law can protect human-made paintings and software, respectively, AI-generated inventions are not protectable under either regime in the US. In the EU, the answer is largely the same, as we shall see below.

Can AI be an “author” or “inventor”?

1. The European Union

The European Patent Office on 28 January 2020 rejected patent filings by a machine called DABUS on the same grounds that “an inventor designated in the application has to be a human being, and not a machine.” In both applications, “a machine called ‘DABUS,’ which is described as a ‘type of connectionist artificial intelligence,’ is named as the inventor.” As we shall see, decisions regarding copyright and patent ownership in the US follow a similar rationale.

Thereafter, the European Parliament passed a number of resolutions concerning AI throughout 2020. A report “on intellectual property rights for the development of artificial intelligence technologies” from 10 October 2020 is most relevant for the purposes of this article. It recommends that, in apportioning intellectual property rights, “the degree of human intervention” and “autonomy of AI” should be taken into account.

The report goes onto note “the difference between AI-assisted human creations and AI-generated creations, with the latter creating new challenges for IPR [intellectual property rights] protection, such as questions of ownership, inventorship and appropriate renumeration.” The Report recommends that “works autonomously produced by artificial agents and robots might not be eligible for copyright protection, in order to preserve the principle of originality, which is linked to a natural person.”. As such, “ownership rights, if any, should be assigned to natural or legal persons that created the work lawfully.”

On October 20, 2020, the European Parliament adopted the recommendations and refined them via a Resolution. For example, while AI and related technologies “based on computations models an algorithms” and regarded as “mathematical methods” are not patentable,” such models and computer programs may be protected “when they are used as part of an AI system that contributes to producing a further technical effect.” (Emphasis added.)

The Resolution goes on to clarify that “where AI is used only as a tool to assist an author in the process of creation, the current IP framework remains applicable.” (Emphasis added.) In all cases, only a natural person can be listed as the inventor of a copyright or patent in the EU.

That all being said, the 20 October Resolution does not state whether the author needs to delineate in the application which parts of the creation were AI made, and which were created by the author. This approach is how copyrights for compositions by multiple authors are filed in the US – denoting by whom among the authors certain lyrics or musical notes were written. A similar approach could be used for a subsequent Resolution.

2. The United States

Copyright case law has also indicated that AI cannot be an “author” under the Copyright Act. In Naurto v. Slater, the Ninth Circuit Court of Appeals held that an Indonesian monkey named “Naruto” couldn’t own the copyright to his “Monkey Selfies.” The reason: the U.S. Copyright office “will refuse to register a claim if it determines that a human being did not create the work.” (Emphasis added.) The office further states that it will exclude works “produced by machine or mere mechanical process that operates randomly or automatically without any creative input or intervention from a human author.” (Emphasis added.) Consequently, AI-created products are not likely subject to copyright registration.

Similarly, the USPTO, in a April 27, 2020 decision ruled that AI cannot be listed as the “inventor” in a patent application. The application was filed by the Artificial Inventor Project (“AIP”), which is a team of international patent attorneys whose mission is to explore AI patentability. AIP filed a sealed patent application on July 29, 2019, for “Devices and Methods for Attracting Enhanced Attention (“DABUS application”). According to the application, this “creativity machine” is “programmed as a series of neural networks that have been trained with general information in the field of endeavor to independently create the invention.” The inventor on the substitute application was listed as “DABUS (the invention was autonomously generated by artificial intelligence).”

Under relevant federal patent law, an “inventor” is defined as “the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.” However, the USPTO’s decision denying the DABUS application pointed out that federal law consistently refers to inventors as natural persons. One section provides “[w]hoever invents or discovers any new and useful process . . . may obtain a patent therefore”. According to the USPTO, “’[w]hoever’ suggests a natural person.” Other provisions of federal patent law “refers to individuals and uses pronouns specific to natural persons  — ‘himself’ and ‘herself’ – when referring to the ‘individual’ who believes himself or herself to be the original inventor or an original joint inventor or a claimed invention on the application.” The finding of the USPTO is consistent with Federal Circuit case law which has held that an “inventor” must be a natural person.

Like in the E.U., a creation may still be copyrightable or patentable in the U.S. if it was made with the assistance of AI. The question of how much AI involvement renders an otherwise human-made creation a product of AI has yet to be addressed.

How to protect AI creations?

If AI creations are not, for the time being, protectable under either copyright or patent, then how can one protect them? Contractual provisions in licensing agreements are one option. Even if licensed technology isn’t either copyrightable or patentable, contract law can provide a gap filler between contracting parties. However, this doesn’t preclude reverse engineering once the product is released into the market. Another alternative is federal or state trade secret law. Even then, trade secret law doesn’t preclude reverse engineering.

In light of these open questions, the World Intellectual Property Organization (WIPO) held a conference in late 2020 to address ownership of AI created works. One question in WIPO’s Revised Issues Paper: “[i]f a human inventor is required to be named, should AI-generated inventions fall within the public domain or should the law given indications of the way in which the human inventor should be determined?” Likewise, the U.S. Copyright Office held a conference in February of 2020 year titled: “Copyright in the Age of Artificial Intelligence” and, later in the year, the USPTO published a report “Public Views on Artificial Intelligence and Intellectual Property Policy. The USPTO Report confirmed that AI cannot “invent nor author without human invention.”

Given the foregoing, you would not likely be able to enjoin Jim from commercially exploiting Portrait in either the EU or the US. As for the software company that created Portrait via its AI, the answer would, in all likelihood, be the same.