Considerations for Businesses Seeking to Protect AI-Created Content

Over the past two decades, artificial intelligence (“AI”) has slowly crept into our day-to-day lives, allowing companies to streamline certain aspects of their business while cutting labor costs. However, businesses that use AI-created works of authorship or inventions should be aware that those works may not be afforded the same rights and protections under intellectual property law as works created by employees or human beings. Below are some considerations for businesses that seek to protect content created in whole or in part by AI.

Copyright Considerations

The first consideration for many businesses is whether AI-generated art, musical compositions or authorship may be copyrighted. Although this particular issue has not been tackled by courts, the now famous “Monkey Selfies” case may provide some guidance for businesses. In Naruto v. Slater, 888 F.3d 418 (9th Cir. 2018), a monkey living in Indonesia picked up an unattended camera belonging to wildlife photographer David Slater and snapped several pictures of himself. Mr. Slater discovered the photographs on his camera and subsequently published a book identifying himself as the copyright owner of the photographs. People for the Ethical Treatment of Animals (PETA) filed a complaint for copyright infringement against Mr. Slater and others asserting that the monkey—and not Mr. Slater—owned the copyright to the photographs. The Ninth Circuit disagreed, finding that the Copyright Act only protects the copyrights of “persons” or “individuals,” and therefore the monkey did not have standing to pursue claims against Mr. Slater for copyright infringement. The court went on to note that if Congress intended for an animal to have the standing to sue for its alleged copyrights, Congress could modify the language of the Copyright Act to expressly include animals within the definition of parties that may file copyright infringement claims.

At first blush, the Monkey Selfie case may not seem to have any relation to AI-generated materials that may be copyrighted because what does a monkey’s selfie have to do with AI? The Ninth Circuit’s decision evaluated who may sue to enforce a copyright and concluded that only “persons” or “individuals” may do so. Because AI is neither a person nor an individual, it is possible a court could find that it does not have standing to assert a copyright infringement claim.

But what about copyrightable works that are created by a human with the assistance of AI? In September of 2022, the U.S. Copyright Office issued its first registration for a comic book named Zarya of the Dawn which was developed with the assistance of AI-generated images. The artist declared in her application to the Copyright Office that she used AI-generated artwork to create the images used in the comic book, but she designed each page’s layout and made determinations regarding the arrangement of the book’s components. Thus, although solely AI-created works may not be afforded protection under the Copyright Act, individuals that use AI to create and modify new works of authorship may be able to register those jointly-created works.

Protecting Patents

The Patent Act generally allows an inventor to file an application to the United States Patent and Trademark Office (USPTO) to protect an invention created by the inventor. Traditionally, inventors were presumed to be human beings, but AI has become increasingly involved in the creation of new inventions. In a recent case from the Federal Circuit Court of Appeals, the court was asked to decide whether artificial intelligence be listed as the inventor on a patent application. The court ultimately concluded that artificial intelligence cannot be listed as an inventor on a patent application because the Patent Act defines “inventor” as limited to human beings. In Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022), Mr. Thaler submitted patent applications for two inventions generated by AI and submitted sworn statements on behalf of the AI attesting to the AI’s inventions. The USPTO denied the applications concluding that the applications lacked a valid inventor and were thus incomplete. On appeal, the Federal Circuit concluded that the Patent Act expressly requires “inventors” that seek to patent their inventions to be individuals, thus AI cannot be an “inventor” under the Patent Act.

The Thaler decision precludes businesses from applying for patents based upon inventions created solely by AI, but what about businesses that use AI to assist in the creation of new inventions so that the inventors are both human individuals and AI? The Thaler court expressly refused to decide this issue, stating that it was not confronted with “the question of whether inventions made by human beings with the assistance of AI are eligible for patent protection.” Thaler v. Vidal, 43 F.4th at 1213.

In the wake of the court’s decision in Thaler, last month the USPTO released a Request for Comments on Artificial Intelligence and Inventorship asking for comments regarding whether the current state of the law provides patent protection for inventions that are created by both human beings and AI. The USPTO has also requested that stakeholders submit comments to 11 questions exploring the contours of AI’s impact on inventions. Once public comments have been received, we expect the USPTO to provide some proposed rules regarding applications and approval of AI-assisted inventions.

Thinking About Trademark

What about trademarks? Although courts have not addressed whether AI may submit an application for a trademark, the Lanham Act that generally governs trademark registration in the United States requires a registrant to be a “person” that makes a good faith showing that the trademark is being or will be used. Like the Federal Court’s holding in Thaler, a court may preclude AI from becoming the registered owner of a particular trademark. Likewise, a court may also conclude that AI may not have the standing to pursue a claim for trademark infringement because it is not a registrant or applicant of a trademark similar to the Ninth Circuit’s holding in Naruto. These issues are far less likely to arise in the context of trademarks but certainly worth noting to avoid when submitting trademark applications.

Final Considerations

AI-generated materials can be extremely helpful for businesses but should be used with a bit of caution. One interesting and notable caveat to the use of AI-generated art by using a text-to-image program is whether an AI-generated mark can open a business up to potential liability for infringement. For example, if an AI program inadvertently pulls an image from a competitor’s website and slightly modifies the mark, could that infringe upon an existing trademark? Even assuming a company does not intend to patent or copyright the AI-created mark and simply use it as a trademark, that also may require a business to conduct some due diligence to ensure it is not infringing upon an existing mark.

As the courts continue to evaluate these changes to the law, TALG will provide you with updates regarding changes to intellectual property law.