This article is written by Md. Omar Faruque Munshi, pursuing Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho. The article has been edited by Prashant Baviskar (Associate, LawSikho) and Ruchika Mohapatra (Associate, LawSikho).

Introduction

Earlier computers were seen as a tool programmed to provide output to input data and aiding only the process of human works. But at present, with unprecedented levels of technological development, scientists have been able to create computers programmed with artificial intelligence (AI) with which they are able to perform works like human thought creation. With the inserted data, these AI computers acquire cognitive power (i.e. learn by applying its machine learning software) and produce intellectual works. Now the AI-generated computers are being used to write analytical news, music composition, create paintings, compose literary creations, and many such intellectual works. This gives rise to the debate whether patent or copyright protection can be given to such AI-generated works. Under the Intellectual Property law (IP law) the said protection can be obtained for the “original intellectual work of the author” and the traditional legal notion of “intellectual work” is ascribed with human thinking only. Thus legal complexity arises with regards to the IP claim for those AI-generated works. This article examines the traditional position for IP rights to AI-generated works, the relevance of the claim, commercial necessity, the existing lack in formulating principles or standards granting or denying the IP rights, and possible way out.

Traditional legal position             

Under the traditional legal formulation, copyright exists in the literary, dramatic, musical, or artistic work if they qualify originality of the author, and the traditional notion of “originality” refers broadly to the “creations of the human mind’. Whereas neither of the two major international laws on Intellectual property, the Berne Convention and the TRIPS Agreements, provided the standards for originality requirement, the formulation of this requirement has been largely vested upon the national laws of countries’ themselves based on their own legal system and their economic and social requirements. Under the laws of most of the countries of the European Union, Civil Law Legal System and Common Law Legal system the conception of the term originality is attached with the creation of “author’ intelligence”, in other words to “human mind”, and thus it excludes the copyrightability of the work produced by “artificial intelligence”.  An example of this traditional root can be referred to the recent judgment published by the European Patent Office (hereinafter EPO) in “DABUS Case (filed November 2019, Judgment 27 January 2020)”. This judgment pertains to the patent application for AI invention; however, it is also applicable to copyright as both are granted on the same or similar criteria “the novelty or originality of the work”, and also that the legal issue decided in the case was the same for copyright also. In the “DABUS Case”, an individual filed two patent applications Nos.  EP 18 275163 and EP 18 275174 which were refused by the EPO on the grounds of not fulfilling the requirement of the European Patent Convention (EPC) which required for “human inventor” to be designating the patent right.

In both the said applications, a machine “DABUS” is designated to the invention using its artificial intelligence (AI) for which the applicant claimed the patent right as the owner of the machine. In refusing the patent applications the EPO held that the interpretation of the legal framework of the European patent system requires the inventor must be the “natural person”, and such inference can also be concluded from the internationally applicable legal standard, as well as decisions of various national courts. The designation of an inventor also bears a series of rights and legal consequences which can be exercised by a natural or legal person only. The machine as the inventor for the patent cannot have such legal personality to exercise those rights.

In Japan, the judgment of the Tokyo High Court dated February 19, 1987, in the Election Tip Sheet case (Hanrei Jiho, No. 1225, p. 111 ) expressed the view that only human created works fall within the definition of copyrightability.

The “U.S. Reports: Trade-Mark Cases, 100 U.S. 82 (1879)”  at page 94 stated that “while the word writings may be liberally construed, as it has been, to include original designs for engravings, prints, etc., it is only as original, and is founded in the creative powers of the mind”.  

Article 2(2) of the Copyright law of Germany, 1965 (as amended up to 8 May 1998), defined the protected works for copyright purpose as the work of “personal intellectual creations alone”. Such a definition will also exclude the copyright to AI-generated works for its falling short of the creation of the human mind (i.e. individual’s intellectual creation). 

The necessity for granting IP to AI-generated works

Since launched in the 1950s towards developing AI technology, now the increasing reality is the extensive use of AI in different fields of arts, literature, paintings, music composition, science, health, etc.  We have seen the use of AI-generated Robot Sophia and Hanson in health services during the Covid-19 pandemic. The robotic system AARON (1995) can paint on canvas using the robotic hand by using artificial intelligence. In October 2018, an AI autonomously generated art was produced by Edmond de Belami which was Auctioned for 432.500 USD (The New York Times, Oct. 25, 2018). Earlier in 2016, another AI-generated 3D printed painting titled “The Next Rembrandt ” was presented which was made autonomously by the computer using AI algorithms based on 168,263 paintings of a 17th Century’s great artist Rembrandt. AI-generated music compositions are being used in creating games, videos, cartoons, video learning programs that are intended for commercial use and made with great investment behind those.

Now if by the simple reason of machine produced, these AI-generated works are denied IP rights and open to use by anyone, then what will be an incentive for those who might plan to invest their huge money, labour, and time in producing them? Thus it is in the social and economic interest that IP protection should be given to those works. 

The said necessity for reforming the existing IPR policy has also been expressed in India the Report No. 161, dated 20 July 2021 of the Parliament of India. The report acknowledged the creativity of AI and its increasing influence at present time activities stating that “AI-based programs can produce music, draw paintings, write literature, conceive inventions and automate, speed up and ease day-to-day tasks for humans”. It is expressed that, “the benefits from AI-related innovations, if drawn in an optimal manner, would add USD 957 billion by 2035 to the Indian economy. However, in order to extract benefits from AI, revisiting IPR legislation and implementing a strong IPR framework is desirable”.

Finding the possible way-out for granting IP to AI-generated works

On the above-mentioned necessity of granting IP to AI-generated works, the question then arises to be resolved, to whom the IP right belongs. Certainly, the machine should not be eligible for IP protection whatever the autonomous nature exists or the least interference of human direction is in creating the work using the AI system. There are two ways to arrange IP protection for such machine produced works;

(i) Enact legal provision giving the IP protection for the AI-generated works to the programmer who has programmed the machine to produce such works using AI system; or

(ii) IP protection is given to the user who has planned and invested in such production. In the first case if the programmer is given IP rights for the AI-generated works, then the production will be limited to one who himself programmed the machine for use in the concerned field.

Then for the IP right in each and every item of the work produced by the user through the AI system is to be registered with the programmer or licensed from him. But it is not a commercially viable thing for the user and he will lose encouragement in investing and planning production using AI systems. In the second case, if the IP right on the AI-generated work is to be given to the user of the AI system, then the question remains to be decided as to what extent such IP right can be exercised by him (for example, whether the IP right shall be given over the single item of production; or to all such items that he may produce in the particular field using the AI system; and if so granted then what will be the rights of other user using the same programmed machine, etc.). 

In this respect Section 9(3) of the UK Copyright, Designs, and Patent Act, 1988 is worth referable here which provides that “in the case of a literary, dramatic, musical or artistic work which is computer-generated, the author shall be taken to be the person by whom the arrangements necessary for the creation of the work are undertaken.” This provision although recognized the granting of copyright to the AI-generated works, but the term “author” for the purpose of granting copyright here is also not clear, i.e. whether it is the human user of the AI-system for the work created, or whether is the original programmer of the AI who has programmed the system for such creative works. The same lack of clarity is also found in Section 2(d)(vi) of the Copyright Act, 1957 of India which recognized the human authorship in AI-work providing that, “in relation to any literary, dramatic, musical or artistic work which is computer-generated, the person who causes the work to be created.”

The research by Daria Kim (2020) p.444, para 2), commented this obscurity led by the lack in the determination of some important issues, firstly, comparative to the legal debate towards granting IP rights and legal researches on this issue, seemingly there is “non-existence of technical inquiries on the very source of concerns, the phenomenon of ‘autonomous generation’ of inventions’ by computers”. In the same way taken to the context of the patent law, at the advent of AI system, towards the issue “how the patent law needs to be adjusted” to grant the patent to AI-generated inventions, the policymakers “neither provide an operative technical definition of such inventions, nor clarify how they differ from AI-aided inventions, nor review the technological state of the art.  

Now apart from the said inquiries and related lack of information, here it is worth mentioning that, it has not always been the case that the ownership of copyright is granted to the creator or author himself only. There are some exceptions of circumstances in which the first ownership of copyright is given to another person other than the author himself. For example, Section 17 of the Indian Copyright Act, 1957 made several exceptions wherein the first owner of the copyright is given to a person excluding the author or creator, such as the employer shall be the first owner of the copyright of the work where it is produced upon a contract of employment and under the instruction of the employer. Similarly, provisions are made for providing copyright of any “address or speech” delivered in public to such other person on whose behalf such speech or address is delivered by someone; or to the person who arranges such address or speech to be delivered, or to the person on whose behalf or premises such address or speech is delivered. A similar provision is also found in the Japanese Copyright Act, 2018 (Section 2, Article 15) providing that where a work is commissioned, the employer or the organization (i.e. the juridical person) who had engaged such work to be made and makes public as a work of its own authorship shall be treated as the author for the purpose of copyright. Using this instance of granting copyright other than the author, the IP right in the AI-generated work should not be denied as a machine author (as held in DABUS Case), but to the person who has employed it to create. The copyright in the AI-generated works may be granted to the user who employed the system to produce the innovative work, whereas, the programmer can enjoy the patent of the system. Thus a harmonized balance may be arrived at for the IP right both for the programmer and the user.

Once again, Article 2 of the Berne Convention states that the expression ‘literary and artistic works shall include every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression. The Article thereafter provides a list of a number of modes or forms of such expression of literary and artistic works in which copyrights are available. But the said list is not exhaustive. The national copyrights laws of different countries protect other modes or forms of expression of works in the literary, scientific, and artistic domains. Computer programs are a good example of a type of work not included in the said list but it is protected under the copyright laws of a number of countries as well as under the WIPO Copyright Treaty (WCT) (1996). 

Pioneering legal solution by the China Court to the issue

In a recent China case Shenzhen Tencent v. Shanghai Yingxun, (2019) (hereinafter referred to as “Tencent Case”), the court is found to have made a balance between the traditional legal requirement of copyright protection (i.e. the original creation produced by the labour of human intellect) to the work produced by AI system.

Facts of the Tencent Case

The plaintiff company “Shenzhen Tencent Computer System Co., Ltd.” (hereinafter referred to as “the plaintiff”), is the owner of an “AI writing assistant software” named “Dreamwriter”. The plaintiff in its website on 20 August 2018 published an AI-generated Article titled “Afternoon Comment: Shanghai Stock Index Rose Slightly by 0.11% to 2671.93 points, led by communications operations, oil exploration and other sectors”. The method applied for generating the Article was that the plaintiff used the software Dreamwriter to collect and analyze the text structure of stock market financial Articles. Based on the needs of different types of stockholder readers, the Dreamwriter formed the Article structure according to the plaintiff’s unique expression of wishes. Then it uses the stock market data collected to complete the writing and publish the Article in 2 minutes after receiving the data (that is, 2 minutes after the end of the stock market).

Thereafter, the defendant company, the Shanghai Yingxun (hereinafter referred to as “the defendant”), without the plaintiff’s permission and authorization, reprinted the article on its website on the day it was published. The plaintiff then sued Shanghai Yingxun Company for infringing its copyright and unfair competition.

The decision of the case centred on the issue of whether the said AI-generated Article can be treated as “creation” under copyright law to qualify copyright protection.

In deciding the case, the court did not go against the traditional notion of copyright eligibility, i.e. “the creation of the labour of intellect”, but made a balance between the said traditional notion with the new circumstances of the case. For granting the plaintiff the copyright on the said AI-generated work it based its finding on the reasoning pointed out below: 

• The human arrangement and selection of the data input, trigger conditions setting, as well as the template and corpus style selection by the Dreamwriter development team which were the main intellectual force directly related to the specific expression of said AI-generated Article.
• It is not solely the Dreamwriter’s automatic operation, but the way that the software runs automatically reflects the choice of the plaintiff’s development team.
• From the analysis of the generating process of the said AI-generated Article, its expression was dictated by the individualized arrangements and choices made by the relevant personnel of the plaintiff’s creative team, and thus the work in question involves a certain degree of originality and belonged to the written works protected by China’s Copyright Law.

In relation to AI-generated work for copyrightability, the UK Copyright, Designs and Patent Act, 1988, in Section 9(3) conferred the copyright to the person by whom the arrangements necessary for the creation of the work are undertaken. However, this provision is unclear as to the meaning of “the person” behind the arrangement of the work, whether it be the programmer or the user or the other, for example, organization. This obscurity has already been pointed out above in this paper.   

Present steps by WIPO on developing the IP law for the AI-generated works

The conversation for reforming the current IP legal framework on the scope of extending IP rights to AI-generated works started with the initiative by the Intellectual Property Organization (WIPO). The First WIPO Session of this conversation was held on 27th September 2019 followed by the publication of “the Draft Issues Paper on IP Policy and AI” on 13 December 2019 (the First WIPO Issue Paper on IP Policy and AI). The said publication of the Issue Paper was a part of ongoing consultations towards reaching a principled formulation for IP law on AI-generated works. On May 21, 2020, it published the revised issues paper as part of said ongoing consultation. Thereafter the Second and Third Conversation Sessions were held on July 7-9, 2020, and November 4, 2020. The WIPO Conversation on IP and AI, the Fourth Session is stated to be held in 2021, the actual date is yet to be fixed.

The underlined issues in the said consultation papers of WIPO manifest that there are lots of questions to be resolved relating to the formulation of legal principles and policy for granting IP rights to AI-generated works. Some of these issues as quoted in the WIPO the revised issues paper dated May 21, 2020, are mentioned below.

IP issues on patents to AI-generated works

• Do AI-generated inventions require patent protection or a similar incentive system at all? 
• Should the law require that a human being be named as the inventor or should the law permit an AI application to be named as the inventor?
• If a human inventor is required to be named, should AI-generated inventions fall within the public domain or should the law give indications of the way in which the human inventor should be determined? 
• If an AI application is permitted to be an inventor should the AI application be considered a sole inventor or should joint inventorship with a human be required?

IP issues on copyright and related rights to AI-generated work

• Do AI-generated works require copyright or a similar incentive system at all?
• Should copyright be attributed to original AI-generated literary and artistic works or should a human creator be required?
• If copyright can be attributed to AI-generated works, can the AI-generated works be considered original?
• If copyright can be attributed to AI-generated works in whom should the copyright vest? Should consideration be given according to a legal personality to an AI application where it creates original works autonomously so that the copyright would vest in the personality and the personality could be governed and sold in a manner similar to a corporation? How would this interrelate with moral rights?
• If copyright can be attributed to AI-generated works, should related rights extend to sound recordings, broadcasts, and performances?
• If a human creator is required, who are the different parties involved in creating an AI-assisted work and how should the creator be determined?
• Should a separate sui generis system of protection (for example, one offering a reduced term of protection and other limitations, or one treating AI-generated works as performances) be envisaged for original AI-generated literary and artistic works?
• In the event copyright cannot be attributed to AI-generated works or that the works are protected by a sui generis system of protection, will this incentivize concealment of the involvement of AI? Should there be a system to prevent such behaviour? How could such behaviour be detected? Should each work have a log of acts of the creative process leading to a protectable work and transparently identify the acts of each participant?

Conclusion

For the modern necessity, the use of AI-generated works is an increasing reality in different fields. The ongoing initiative at both the national and international levels is expected to find the principled formulation for IP to AI-generated works very soon. This Article reflects that the complexity in finding the legal solution of the issue can be simplified with the legal interpretive approach adopted by the China court in the decision of Tencent Case (2019) reconciling the traditional notion for IP protection of the work “produced on the labour of human intellect” with the AI produced work. These AI works cannot be seen as the autonomous AI system, rather the output or expression as dictated by the individualized arrangements and choices of relevant personnel of the creative team behind the work. Thus, certainly, the originality of the work for IP protection cannot be denied. Further that, this article referred to the fact that under the existing law also it is not always the case that the copyright is issued only to the author or creator of the work himself, rather the law provided for exceptions granting copyright to the person behind the work created, the person who has employed the creator or made arrangement for the work to be produced, for example, Section 17 of the Indian Copyright Act, 1957; and Article 15 of Section 2 of Japanese Copyright Act, 2018.   

References

1. World Intellectual Property Organization (WIPO) (2016), “Understanding Copyright and Related Rights”, page. 3, stating that “copyright legislation is part of the wider body of law known as intellectual property (IP) which refers broadly to the creations of the human mind.”
2. https://www.loc.gov/item/usrep100082/
3. https://rajyasabha.nic.in/rsnew/Committee_site/Committee_File/ReportFile/13/141/161_2021_7_15.pdf
4. https://doi.org/10.1093/grurint/ikaa061
5. Tencent v. Yingxun Tech 深圳市腾讯计算机系统有限公司与上海盈讯科技有限公司著作权权属、侵权纠纷、商业贿赂不正当竞争纠纷一审民事判决书 – China Laws Portal – CJO (china justice observer.com) 
6. https://www.wipo.int/edocs/mdocs/mdocs/en/wipo_ip_ai_2_ge_20/wipo_ip_ai_2_ge_20_1_rev.pdf

---

Students of Lawsikho courses regularly produce writing assignments and work on practical exercises as a part of their coursework and develop themselves in real-life practical skills.

LawSikho has created a telegram group for exchanging legal knowledge, referrals, and various opportunities. You can click on this link and join:

https://t.me/joinchat/J_0YrBa4IBSHdpuTfQO_sA

Follow us on Instagram and subscribe to our YouTube channel for more amazing legal content.