Case Review: Thaler v. Perlmutter (2023)

December 11, 2023

A Recent Entrance to Paradise, Creativity Machine (Source: opinion letter)

By Atreya Mathur

In August 2023, the U.S. District Court for the District of Columbia, under the jurisdiction of Judge Beryl A. Howell, rendered a decision in Thaler v. Perlmutter, addressing the refusal by the U.S. Copyright Office (USCO) to register an AI-generated visual work titled “A Recent Entrance to Paradise.” Stephen Thaler, the plaintiff, asserted that the work was autonomously created by an AI algorithm known as the “Creativity Machine.”^[1]

Facts and Background of the Case

The dispute originated in August 2019 when the USCO rejected Thaler’s copyright application,^[2] citing the absence of human authorship—a decision upheld through internal appeals. Thaler subsequently filed a lawsuit under the Administrative Procedure Act,^[3] challenging the USCO’s actions as arbitrary and not in accordance with the law.

Thaler contended that the AI algorithm, operating on the Creativity Machine, was the true author of the work. Despite this, he claimed copyright ownership on the basis of being the machine’s owner. The USCO consistently rejected registration, maintaining that the work lacked the necessary human authorship.

The court proceedings involved cross-motions for summary judgment, with the plaintiff seeking to introduce evidence of his own human involvement in the creative process, a claim that contradicted his earlier assertion of the work’s autonomous creation.

Issues

The central legal issue revolved around whether a work autonomously generated by an AI system could be deemed copyrightable. The court had to determine the validity of the USCO’s refusal based on the lack of human authorship, considering constitutional provisions, statutory history, and established copyright precedents.

Analysis

The court’s analysis delved into the definition of “authors” in copyright law, finding that the term is not explicitly defined in the Copyright Act or the Constitution.^[4] Drawing on dictionary definitions and the constitutional purpose of incentivizing human creativity, the court concluded that copyright protection is reserved for works of human creation.^[5]

Referencing the 1909 Copyright Act and the legislative history of the 1976 Copyright Act, the court established that only a “person” could secure copyright for their work. It invoked Burrow-Giles Lithographic v. Sarony^[6] to underscore the historical recognition of human creativity as fundamental to copyrightability.

The court declined to entertain the plaintiff’s various ownership theories and stressed that the AI-generated image was never eligible for copyright protection.^[7] It acknowledged the complex questions posed by AI but asserted that the case at hand was not as intricate. The court also addressed previous cases involving alleged non-human authors, highlighting decisions regarding spiritual beings, wildflower gardens, and even a “selfie” taken by a monkey in Naruto v. Slater. It distinguished Thaler’s case by noting the absence of any court recognition of copyright in a work originating from a non-human entity.

The court acknowledged the challenges posed by AI in determining human involvement in the creative process and assessing the originality of AI-generated works. Apart from affirming the Copyright Office’s understanding of the Copyright Act, the court recognized lingering uncertainties related to AI authorship and copyright. Judge Howell pointed out that advancements in generative AI will raise complex inquiries, including the level of human involvement required to designate a user of an AI system as an ‘author’ of a created work, the extent of protection granted to the resulting image, methods to evaluate the originality of AI-generated works trained on undisclosed pre-existing content, the optimal use of copyright to encourage creativity involving AI, and other related issues.

However, it emphasized that the instant case did not require a nuanced exploration of these issues.

To note, Thaler’s pursuits extend beyond copyright law into the realm of patent applications. His AI creation, DABUS, was identified as the inventor on patent filings worldwide, specifically for a “food container based on fractal geometry.” DABUS, denoting “device for the autonomous bootstrapping of unified sentience,” achieved a notable milestone by securing a patent in South Africa, marking the first instance of an AI being granted inventor status. Although DABUS faced rejection in the European Union (2021) and the United Kingdom (2020), it successfully challenged and overcame a rejection by Australia’s patent office, pending potential appeal. However, DABUS encountered resistance in the United States, with the USPTO denying patent applications despite some indications of support within the field.

In late 2021, the U.S. District Court for the Eastern District of Virginia upheld the USPTO decision, dismissing Thaler and DABUS’s attempt to overturn it through a Motion for Summary Judgment.Thaler’s pursuits extend beyond copyright law into the realm of patent applications. His AI creation, DABUS, was identified as the inventor on patent filings worldwide, specifically for a “food container based on fractal geometry.”^[8] DABUS, denoting “device for the autonomous bootstrapping of unified sentience,” achieved a notable milestone by securing a patent in South Africa, marking the first instance of an AI being granted inventor status. Although DABUS faced rejection in the European Union (2021) and the United Kingdom (2020), it successfully challenged a rejection by Australia’s patent office, only to have the plug pulled out on it once more. DABUS also encountered resistance in the United States, with the USPTO denying patent applications despite some indications of support within the field. In late 2021, the U.S. District Court for the Eastern District of Virginia upheld the USPTO decision, dismissing Thaler and DABUS’s attempt to overturn it through a Motion for Summary Judgment.

Conclusion

The court ultimately upheld the USCO’s refusal to register the AI-generated work, emphasizing the longstanding principle that copyright law protects only works of human creation. It noted the plaintiff’s intent to appeal and drew parallels with a previous case against the U.S. Patent and Trademark Office. The court suggested that even minimal human involvement could meet the low threshold for copyrightability.

“Undoubtedly, 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. The increased attenuation of human creativity from the actual generation of the final work will prompt challenging questions regarding 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, how copyright might best be used to incentivize creative works involving AI, and more.”^[9]

This case highlights the fascinating intersection of law, technology, and creativity. The court’s decision seems grounded in a longstanding legal tradition that views human authorship as a prerequisite for copyright protection. The emphasis on incentivizing human creativity, as reflected in constitutional principles and historical copyright acts, aligns with the court’s ruling.

However, the increasing prevalence of AI-generated works poses unique challenges that the court acknowledged but didn’t deeply explore in this instance. Future cases may necessitate a more nuanced examination of how to determine human involvement in the creative process and the originality of AI-generated content. The court’s suggestion that a small degree of human contribution could meet the threshold for copyrightability opens an interesting avenue. It acknowledges the evolving nature of creative processes involving AI and leaves room for adaptation in copyright law, however, determining the “extent” of this creativity is challenging.

About the Author

Atreya Mathur is the Director of Legal Research at the Center for Art Law. She was the inaugural Judith Bresler Fellow at the Center (2021-22) and earned her Master of Laws from New York University’s School of Law where she specialized in Competition, Innovation, and Information Laws, with a focus on copyright, intellectual property, and art law.

Sources:

1. Thaler v. Perlmutter, Case 1:22-cv-01564-BAH (D.D.C., Aug. 18, 2023). ↑
2. Copyright Review Board, Second Request for Reconsideration for Refusal to Register A RecentEntrance to Paradise (Correspondence ID 1-3ZPC6C3; SR # 1-7100387071), available at https://www.copyright.gov/rulings-filings/review-board/docs/a-recent-entrance-to-paradise.pdf ↑
3. On Feb. 14, 2022, plaintiff filed an action in the D.C. District Court under the Administrative Procedure Act, 5 U.S.C. 706(2)(APA), claiming that the USCO’s actions were “arbitrary, capricious, an abuse of discretion and not in accordance with the law, unsupported by substantial evidence and in excess of [USCO’s] statutory authority.” ↑
4. Thaler v. Perlmutter, Case 1:22-cv-01564-BAH (D.D.C., Aug. 18, 2023). ↑
5. Id. ↑
6. See Burrow-Giles Lithographic v. Sarony, 111 U.S. 53 (1884). ↑
7. Thaler v. Perlmutter, Case 1:22-cv-01564-BAH (D.D.C., Aug. 18, 2023). ↑
8. See ‘DABUS Described’ available at https://imagination-engines.com/dabus.html and Ryan Abbott, The Artificial Inventor Project, WIPO Magazine (2019), available at https://www.wipo.int/wipo_magazine/en/2019/06/article_0002.html ↑
9. Statement by Judge Beryl A. Howell, Thaler v. Perlmutter, Case 1:22-cv-01564-BAH (D.D.C., Aug. 18, 2023). ↑