Sorry HAL, You Cannot Be an Author: How Much AI Is Too Much?
12.22.2023
Recently, the U.S. Copyright Office took an unusual step when it requested “additional information” from Kristina Kashtanova about her registered work titled “Zarya of the Dawn.”[1] The Copyright Office learned from a reporter that Kashtanova made statements on her social media that the images in the work were produced using artificial intelligence (AI) and determined that she was not the sole author of the entire work.[2] Although Kashtanova was granted an opportunity to respond, the Copyright Office eventually concluded that while she is “the author of the Work’s text as well as the selection, coordination, and arrangement of the Work’s written and visual elements . . . the images of the Work that were generated by the [AI] technology are not the product of human authorship.”[3]
The United States Constitution provides Congress with the right “[t]o promote the Progress of Science and the useful Arts by securing limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”[4] It is interesting that this founding document contains a reference to “authors,” yet the scope of the term “author” has remained the subject of debate for over 200 years.
The definition of an “author” and the copyrightability of protectable “works of authorship” are dynamic concepts, changing as technology and the world become more nuanced. For example, the invention of the camera raised the question of whether a “photograph” could be copyrightable. Is the “operator” of a mechanical device that captures an image in the “public domain” an “author” of an “original” and “creative” work?
The court in Burrow-Giles Lithographic Co. v. Sarony grappled with that question at the end of the 19th century.[5] In that case, Sarony, a photographer, sued Burrow-Giles Lithographic Co. for its unauthorized reproduction of his photograph of Oscar Wilde as a lithograph.[6] Burrow-Giles argued that a photograph is a reproduction of the exact features of a natural object or person and therefore could not be a writing produced by an author.[7] However, the court unanimously held that the photograph was an original work of art, noting that Congress “properly has declared [literary productions] include all forms of writing, printing, engravings, etchings, etc., by which the ideas in the mind of the author are given visible expression.”[8] The photograph was “the product of [Sarony’s] intellectual invention, of which [Sarony] is the author . . . for which the Constitution intended that Congress should secure to him the exclusive right to use, publish, and sell.”[9] The court further noted that there was “no doubt that [Sarony] had taken all the steps required by the act of Congress to obtain copyright of this photograph.”[10]
Today, it is well established that a photograph can be, and often is, copyrightable. However, as new technologies are developed, the same question resurfaces: whether works created using these technologies can be considered copyrightable works of original authorship. AI is the most recent example of a technological innovation that has generated questions in all areas of intellectual property, including copyrights, and the scope of protections afforded to works generated using this technology. With AI technology, a user can enter text into a prompt, resulting in an output of texts and/or illustrations. However, whether that output is copyrightable is the subject of debate today. Is AI a new “tool” that assists human beings in “creating” original works of authorship?
This article explores the fundamentals of copyrights and then applies those principles and procedures to the issues of “authorship” in relation to works created by AI technology.
Copyrights in General
According to conventional consequentialist intellectual property theory, copyright tolerates a limited proprietary right to creative works of authorship in order to encourage creation of works that ultimately redound to the benefit of the public.[11] Serving the public interest is more than an afterthought; it is the animating force behind granting limited proprietary rights to creative works. The philosophy is that the limited monopoly encourages the creation of new and innovative works, progressing science, learning and creativity for society as a whole.[12] Society is benefited both by the existence of the creative work itself and in its utilization once the monopoly has expired.[13] Therefore, intellectual property rights step in to prevent underproduction of these valuable works.
At the same time, it is also in the interest of society for information, ideas and commerce to flow freely, creating an inevitable tension between new and incumbent disseminators of copyrighted works.[14] Copyright should promote learning, not inhibit it. To balance the competing interests between authors and the general public, and to satisfy the bargain for proprietary rights, copyright’s exclusive rights are not absolute and have certain limitations. The Supreme Court has acknowledged that “the administration of copyright law is an exercise in managing the tradeoff.”[15] The limits on the enumerated statutory rights – like fair use, first sale/exhaustion, and compulsory licenses – help “ensure . . . ideas and information [are not] freighted with claims of proprietary right.”[16]
The Relationship Between Copyrights and New Technologies
From the early days of the printing press, copyright policy has been inextricably intertwined with technology, and yet law and policy have had trouble keeping pace with new, unforeseen technologies.[17] To avoid the problems of continual adjustments and the risk of obsolescence, policymakers and legislators have attempted to “future-proof” copyright laws, drafting them to be adaptable to new, currently unknown technologies.[18] For example, the Copyright Act’s original language of “map, chart, book or books” has been expanded to include “original works of authorship fixed in any tangible medium of expression,” theoretically encompassing any possible work made by any existing or future technology.[19]
However, as Douglas Adams once wrote, “A common mistake that people make when trying to design something completely foolproof is to underestimate the ingenuity of complete fools.”[20] Indeed, it is impossible for Congress to make the laws future-proof, as its policymakers can only imagine future technologies based on the technology that exists at the time.[21] Instead, courts are often called upon to consider society’s interests in the free flow of information, as real world applications raise issues that could never be contemplated.[22]
For example, the Supreme Court, in Burrow-Giles, specifically rejected the argument that the photograph in question was created by a machine, holding that photographs are copyrightable so long as they are “representatives of original intellectual conceptions of the author.”[23] However, the court also cautioned that when the photograph is “merely a mechanical process” and contains no “novelty, invention, or originality,” then no copyright protection exists.[24]
Later, in Feist Publications, Inc. v. Rural Telephone Service Co., Inc., the court clarified that copyright protection requires more than a “de minimis quantum of creativity.”[25] To be sufficiently “creative,” the work must “possess[] at least some minimal degree of creativity.”[26] In other words, the level of creative authorship necessary to satisfy the “creativity” requirement is “extremely low,” but no copyright exists for works where “the creative spark is utterly lacking or so trivial as to be virtually nonexistent.”[27]
Suffice it to say, there will always be technologies and new developments that are unforeseen. The question then becomes how do “authors,” the courts, policymakers and legislators fit the proverbial “round peg” into the “square hole” of existing laws and regulations? And that appears to be where we find ourselves with AI technology. Can a work generated using AI technology qualify as an “original work of authorship”?
Looking to examples of nascent technologies might provide guidance. Even in cases where a work meets the extremely low standard for creativity, courts typically ask whether the work is also an “original work of authorship.”[28] The focus in such cases is on the word “original,” which according to copyright doctrine simply requires that “the work was independently created by the author” and that the work was not copied from other sources.[29]
One “other source” contemplated is when the work was not created by a human. For example, the Ninth Circuit denied copyright protection of a photograph taken by a monkey of himself on the basis that monkeys (as all animals other than humans) lack standing to sue under the Copyright Act.[30] In another case, the Ninth Circuit agreed with the Copyright Office that “creations of divine beings” were not copyrightable because they do not possess the “requisite ingredient of human creativity.”[31] But that court also noted that the work in question was copyrightable, as it included “human selection and arrangement of revelations” and this met the low threshold for creativity and originality.[32]
Similarly, it is not the amount of time or effort that goes into the creation of the work. Courts have consistently rejected the “sweat of the brow” as a basis for granting copyright protection.[33] Instead, they have focused on whether the work, standing on its own, can satisfy minimum standards of originality and creativity.[34]
So what does this mean for AI? Surely, an AI program is not human, but neither is any other tool used by authors, including technological tools. Is the AI program more akin to the monkey taking a selfie or is it more like the camera, which can be guided by creative choices to make a copyrightable work attributed to the user? How much “control” over the AI’s output must a person have in order to qualify as an “author” using AI?
The Copyright Office’s Decision Regarding “Zarya of the Dawn”
As noted above, the Copyright Office recently grappled with these questions when reviewing the registration issued for Kashtanova’s work “Zarya of the Dawn,” ultimately deciding to cancel the registration and issue a new registration limiting the claim to exclude the images created using the AI program Midjourney. Midjourney creates images from textual descriptions or “prompts.”[35] The technology then breaks down the words and phrases into individual tokens, which is then compared to its training data to generate an image.
In her response, Kashtanova provided details on how she “guided” the structure and content of the images, as well as the amount of time it took her to obtain and edit numerous images.[36] Specifically, Kashtanova talked about how each image was “created, developed, refined, and relocated.”[37] The images were not some random design but, in Kashtanova’s opinion, carefully crafted by guiding the Midjourney AI to create the exact image she intended. In addition, Kashtanova had personally modified some of the images using picture-editing software. If the original images were not copyrightable, surely the modified ones were.
Unfortunately, the Copyright Office was not convinced by any of these arguments. With respect to the images from the Midjourney AI, the Copyright Office believed that the “trial-and-error” process used by Kashtanova did not display enough control over the image generated to qualify as an “original work of authorship” because the prompt text “does not dictate a specific result” and there is “no guarantee that a particular prompt will generate any particular visual output.”[38] The Copyright Office compared Kashtanova’s contribution as being the same as “a client who hires an artist to create an image with general directions as to its contents.”[39]
With respect to the images further edited by Kashtanova, the Copyright Office was somewhat mixed in its assessment. For some images, the Copyright Office believed that the changes were “too minor and imperceptible” to supply the necessary creativity to copyright protection. For others, the Copyright Office could not determine what, if any, of Kashtanova’s edits contributed to the “expression” of the image, as opposed to the “idea” behind it, and whether the images were manually altered or a composite of multiple images. However, the Copyright Office also left the “copyrightability” door open for the use of digital manipulation software like Adobe Photoshop,® commenting that those edits could provide sufficient human authorship.[40]
So How Much Is Enough?
We once again return to the question of how much creativity is enough? How much creative input does a user of AI software need to transform the software from an “artificial author” into a tool for a human author, rather than simply a generator of content? As noted above, the Copyright Office did not wish to grant protection when, in its view, the AI software created “randomly generated images” based on the prompts. However, like the AI software, a user learns with each result and can modify the prompts to form the ultimate image created. Could there be creativity even in this “trial and error” process?
And ultimately, who decides how much is enough? In Bleistein v. Donaldson Lithographing Co., the Supreme Court cautioned that “[i]t would be a dangerous undertaking for persons trained only in the law to constitute themselves final judges of the worth of pictorial illustrations . . . .”[41] The Copyright Office’s copyright specialists have a limited role in reviewing any copyright application.[42] The role of the copyright specialist is to examine the submitted materials and determine (1) whether the work constitutes copyrightable subject matter and (2) whether the other legal and formal requirements for registration have been met.[43] The validity of the copyright is not part of the examination process.[44] By that thinking, shouldn’t we simply allow the work to be registered and allow a federal district court, on a full record, to decide these nuanced facts and issues? For example, in Cadence Industries Corp. v. Ringer, the court explained that “where an application is fair upon its face, the office cannot refuse to perform the ‘ministerial duty’ of registration ‘imposed upon [it] by the law.’”[45]
Going beyond this limited review would seem to exceed the Copyright Act’s mandate and adds another layer to copyrightability, unfairly placing the determination of copyrightability solely in the discretion of a single copyright specialist to “examine” the degree of “creativity” necessary to warrant copyright protection. That is not the authority that has been delegated to the Copyright Office and infuses more power to a specialist than a federal court judge. A more detailed analysis of copyrightability is (or at least should be) left for the courts to address in the context of a full record and an opportunity for the copyright holder to be fully heard.
Conclusion
Technology, and the “encouragement” facilitated by the limited monopoly for the useful arts, has been the inevitable result of the incentives borne by this clause. Is AI the inevitable progress of science contemplated by the founders when they placed the copyright clause in the Constitution? Only time will tell, but the authors suspect AI will go the way of the camera and be embraced as a “tool” for “human beings” to use in both creative and innovative ways.
Mike Oropallo is a partner with Barclay Damon. He is the former chair of the IP Section and is the chair of Barclay Damon’s trademark, copyright and IP transactions practice area. He has over three decades of first-chair jury trial experience, and has tried patent, trademark and copyright cases to verdict. He regularly counsels his clients on a wide variety of intellectual property issues, including protection, enforcement, licensing and M&A issues.
Sara M. Dorchak is counsel at Barclay Damon and has over 10 years of experience working closely with domestic and international clients to assist them in all stages of trademark and copyright prosecution and enforcement. Her clients span industries such as fashion, entertainment, cannabis, construction, jewelry, household items, books, education and downloadable and non-downloadable software. In addition to her legal practice, Dorchak is an adjunct professor at St. John’s University School of Law, where she teaches a course on trademark drafting and prosecution.
This article originally appeared in Bright Ideas, the publication of the Intellectual Property Law Section. NYSBA.ORG/IPS.
[1] See U.S. Copyright Office, Letter re: Zarya of the Dawn (Registration # VAu001480196) (Feb. 21, 2023), https://copyright.gov/docs/zarya-of-the-dawn.pdf (“Decision”). See also 37 C.F.R. § 201.7(c)(4) (if the Copyright Office becomes aware of “information essential to registration” the Office may correspond with the claimant “to clarify”).
[2] See id. 14.
[3] See id. 1.
[4] U.S. Constitution art, 1, § 8, cl. 8.
[5] Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884).
[6] Id. at 54–55.
[7] Id. at 56.
[8] Id. at 58 (emphasis added).
[9] Id. at 60.
[10] Id. at 55.
[11] See, e.g., Mazer v. Stein, 347 U.S. 201, 219 (1954) (commenting “[t]he economic philosophy… is the conviction that encouragement of individual effort by personal gain is the best way to advance public welfare through the talents of authors and inventors in ‘Science and useful Arts’”); Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 558 (1985) (“[b]y establishing a marketable right to the use of one’s expression, copyright supplies the economic incentive to create and disseminate ideas”).
[12] See U.S. Const. art. I, § 8, cl. 8.
[13] See Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 429 (1984) (noting the intent of the limited monopoly is to “motivate the creative activity of authors and inventors by the provision of a special reward, and to allow the public access to the products of their genius after the limited period of exclusive control has expired”).
[14] Id. at 429 (highlighting the “difficult balance between the interests of authors and inventors in the control and exploitation of their writings and discoveries on the one hand, and society’s competing interest in the free flow of ideas, information, and commerce on the other hand”).
[15] MGM Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 928 (2005); see also Sony Corp., 464 U.S. at 442 (noting there must be a “balance between a copyright holder’s . . . protection of the statutory monopoly, and the rights of others freely to engage in substantially unrelated areas of commerce”).
[16] Harper & Row, 471 U.S. at 589–90 (Brennan, J., dissenting); Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 575 (“one must not put manacles upon science”) (quoting Carey v. Kearsley, 4 Esp. 168, 170, 170 Eng. Rep. 679, 681 (K. B. 1803)); Yang v. Mic Network Inc. Nos. 20-4097-cv(L), 20-4201-cv (XAP), 2022 U.S. App. LEXIS 8195 (2d Cir. Mar. 29, 2022) (affirming the lower court’s decision that partial reproduction of a picture on a newspaper cover page, for an article criticizing the cover page story was fair use). But see Mazer v. Stein, 347 U.S. 201, 219 (1954) (“The economic philosophy . . . is the conviction that encouragement of individual effort by personal gain is the best way to advance public welfare”); Yochai Benkler, Free as the Air to Common Use: First Amendment Constraints on Enclosure of the Public Domain, 74 N.Y.U. L. Rev. 354, 397 (1999) (“If you want producers to produce information that everyone values, create property rights in all uses that anyone might value.”),
[17] S. Rep. No. 105-190, at 2 (1998) (“Copyright laws have struggled through the years to keep pace with emerging technology.”). See also Paul Goldstein, Copyright’s Highway: From Gutenberg to the Celestial Jukebox 24-25 (rev. ed., Stanford Univ. Press 2003); Jessica Litman, Digital Copyright (2d ed. 2006); Jane C. Ginsburg, Copyright and Control Over New Technologies of Dissemination, 101 Colum. L. Rev. 1613, 1613 (2001).
[18] See Peter S. Menell, In Search of Copyright’s Lost Ark: Interpreting the Right To Distribute in the Internet Age, 59 J. Copyright Soc’y U.S.A. 1, 56 (2011) (noting that Congress, when drafting the 1976 Copyright Act, sought to protect against the danger of confining the scope of copyright on present technology).
[19] See Sony Corp., 464 U.S. at 460-61 (Blackmun, J. dissenting) (citing 17 U.S.C. § 102(a) (1976)).
[20] Douglas Adams, Mostly Harmless (1993).
[21] See B.A. Grenberg, Rethinking Technology Neutrality, 100 Minn. L. Rev. 1495, 1527 (2015) (“like a “nineteenth-century farmer who imagines a sharper plow but is unable to foresee the combustion engine”); Menell, supra n. 18, at 55–56, n. 234 (noting that when the Digital Millennium Copyright Act (DMCA) was drafted in 1998, peer-to-peer sharing technology was not even contemplated).
[22] See, e.g., Am. Broadcasting Cos., Inc. v. Aereo, Inc., 134 S. Ct. 2498 (2014) (internet retransmission); MGM Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (2005) (peer-to-peer file sharing); N.Y. Times Co. v. Tasini, 533 U.S. 483 (2001) (electronic reproductions); Lotus Dev. Corp. v. Borland Int’l, Inc., 516 U.S. 233 (1996) (software); Sony Corp., 464 U.S. 417 (home video recorders); Williams & Wilkins Co. v. United States, 420 U.S. 376 (1975) (photocopying); Teleprompter Corp. v. Columbia Broad. Sys., Inc., 415 U.S. 394 (1974) (cable retransmission); Fortnightly Corp. v. United Artists Television, 392 U.S. 390 (1968) (same); Mazer v. Stein, 347 U.S. 201 (1954) (applied art); Buck v. Jewell-La Salle Realty Co., 283 U.S. 191 (1931) (radio); Kalem Co. v. Harper Bros., 222 U.S. 55 (1911) (motion picture version of novel Ben Hur); White-Smith Music Publ’g Co. v. Apollo Co., 209 U.S. 1 (1908) (player piano rolls); Burrow-Giles, 111 U.S. 53 (photographs).
[23] Burrow-Giles, 111 U.S. at 58.
[24] Id. at 59.
[25] Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 363 (1991).
[26] Id. at 345 (noting “[o]riginality does not signify novelty”).
[27] Id. (“even a slight amount will suffice”).
[28] See, e.g., Burrow-Giles, 111 U.S. at 57–59 (emphasis added); Urantia Found. v. Kristen Maaherra, 114 F.3d 955, 957–59 (9th Cir. 1997); Gerlach-Barklow Co. v. Morris & Bendien, Inc., 23 F.2d 159, 161 (2d Cir. 1927) (noting that “a copy of something in the public domain will not, if it be merely a copy, support a copyright”).
[29] Feist Publ’ns, 499 U.S. at 345; L. Batlin & Son, Inc. v. Snyder, 536 F.2d 486, 490 (2d Cir. 1976), cert. denied, 429 U.S. 857 (1976) (“Originality means that the work owes its creation to the author and this in turn means that the work must not consist of actual copyright”).
[30] Naruto v. Slater, 888 F.3d 418, 425–26 (9th Cir. 2018).
[31] Urantia, 114 F.3d at 958 (emphasis added).
[32] Id. at 958–59 (emphasis added).
[33] Feist Publ’ns, 499 U.S. at 352-53; see also Bridgeman Art Library v. Corel Corp., 36 F. Supp. 2d 191, 196–97 (S.D.N.Y. 1999); Hearn v. Meyer, 664 F.Supp. 832 (S.D.N.Y. 1987) (holding that reproductions of public domain original works of art were not copyrightable despite the great effort expended to create the reproductions); L. Batlin, 536 F.2d at 489–90 (noting that “the requirement of originality [cannot] be satisfied simply by the demonstration of ‘physical skill’ or ‘special training’ . . . . A considerably higher degree of skill is required, true artistic skill, to make the reproduction copyrightable.”).
[34] See Feist Publ’ns, 499 U.S. at 364 (“copyright rewards originality, not effort”); U.S. Copyright Office, Compendium of U.S. Copyright Office Practices § 310.7 (3d ed. 2021) (“Compendium”) (the “Copyright Office . . . will not consider the amount of time, effort, or expense required to create the work”).
[35] See Decision, at 7; Midjourney, Prompts, https://docs.midjourney.com/docs/prompts; “Midjourney,” Wikipedia, https://en.wikipedia.org/wiki/Midjourney (last updated March 14, 2023).
[36] See id. at 20–26.
[37] See id. at 23.
[38] See id. at 9–10 (commenting that a user of the software is not the “mastermind” behind the images because there is a “significant distance between what a user may direct Midjourney to create and the visual material Midjourney actually produces”).
[39] See id.
[40] See id. at 12 (noting “to the extent that Ms. Kashtanova made substantive edits . . . those edits could provide human authorship and would not be excluded from the new registration certificate”).
[41] Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251–52 (1903) (emphasis added) (noting that both the works of geniuses and works appealing to a less educated audience may be easily overlooked for copyright protection if judges were to decide what is a work of art).
[42] See 17 U.S.C. § 410(a); Compendium, § 206 (“[T]he specialist will . . . determine whether the work constitutes copyrightable subject matter and if the applicant has met the other legal and formal requirements.”).
[43] See Compendium § 602.4(B).
[44] Donald v. Uarco Business Forms, 478 F.2d 764, 765, n.1 (8th Cir. 1973) (noting that “a copyright certificate will be issued through a registration procedure in which the validity of the copyright is not examined”); Midway Mfg. Co. v. Bandai-America, Inc., 546 F. Supp. 125, 143–44 (D.N.J. 1982) (“[U]nlike a patent claim, a claim to copyright is not examined for basic validity before a certificate is issued”) (quoting H.R. Rep. No. 94-1476).
[45] Cadence Industries Corp. v. Ringer, 450 F. Supp. 59, 65–66 (S.D.N.Y. 1978) (citing Bouve v. Twentieth Century-Fox Film Corp., 122 F.2d 51, 56 (1941)); see also 17 U.S.C. § 1313.
