Case Summary: Thaler v Perlmutter
In a decision rendered on August 18, 2023 in the case of Thaler v. Perlmutter (“Thaler”), the U.S. District Court (for the District of Columbia) held that the U.S. Copyright Act requires human authorship and therefore only protects works of human creation.[1]
In Thaler, the Plaintiff, Stephen Thaler used a generative Artificial Intelligence (“AI”) system (the “Creativity Machine”) to autonomously create a piece of artwork entitled “A Recent Entrance to Paradise” (the “Art”). In registering the Art for copyright, Dr. Thaler listed the author as the Creativity Machine and asked for the copyright to be transferred to him as he is the owner of the Creativity Machine.[2] This application was denied by the Copyright Office on the basis of the Copyright Office’s position that human authorship is a prerequisite for valid copyright.[3] Dr. Thaler then sued the Copyright Office and Shira Perlmutter, the Register of Copyrights and Director of the Copyright Office, claiming that the decision by the Copyright Office was in violation of the Administrative Procedure Act.[4]
The District Court agreed with the Copyright Office and found that human involvement is a requirement for copyright protection. While copyright law is “malleable” and has adapted with the times, underlying these changes have been the requirement for human creativity. In the Court’s view, unlike the use of a camera, the Creativity Machine’s Art did not have any human involvement or employ the ultimate creative control of a human. A key point raised by the Court was that the intention of the U.S. Copyright Act is to protect works of human creation. Writing for the Court, U.S. District Justice Beryl Howell opined: “The act of human creation—and how to best encourage human individuals to engage in that creation, and thereby promote science and the useful arts—was thus central to American copyright from its very inception. Non-human actors need no incentivization with the promise of exclusive rights under United States law, and copyright was therefore not designed to reach them.”[5]
Importantly, the Court distinguished the Thaler case from potential future cases where artists may use AI as a tool.[6] This leaves the door open for courts to later determine how much human input is required to qualify for copyright protection.[7]
Implications for Canadian Copyright Law
When speculating on the application of Canadian copyright law to AI works, it is important to draw a distinction between AI-assisted works and AI-generated works. Based on Canadian jurisprudence, it is likely that some type of human skill and judgment is required for a work to attract copyright protection.[8] For purely AI-generated works, much like the U.S., the Canadian Copyright Act in its current form seems unlikely to support an AI machine being listed as a sole author. Similar to the US, while an “author” is not defined in the Canadian Copyright Act, the Canadian Copyright Act makes references to the life and death of authors, giving credence to the idea that an author must be a natural person.[9]
Notwithstanding the foregoing, AI-assisted works may be copyright protectable due to the skill and judgment inputted by the human author. This concept was endorsed in Canada through the registration of “SURYAST” in 2021. In that case, the Canadian Intellectual Property Office (“CIPO”) listed “RAGHAV Artificial Intelligence Painting App” as a co-author to the artistic work.[10] In an interview with the co-author, Ankit Sahni, Mr. Sahni specified that “SURYAST” was created by Mr. Sahni supplying the style and inputs while the AI machine chose the brush strokes and colour palette.[11] Mr. Sahni argued that the AI machine acted as a co-author and not simply as a tool since the AI machine had to choose from the data set fed to it. [12] However, it should be noted that CIPO does not substantively review applications for compliance and therefore the precedential value of the registration is limited.[13] Should the registration ever be challenged, it is unclear how this decision would hold up in Canadian court.
As foreshadowed by the Thaler decision, it remains to be seen how much input from AI machines will be allowed in the generation of copyrightable works. In a parliamentary review of the Canadian Copyright Act, some stakeholders raised similar concerns to those raised by the US District Court in the Thaler decision.[14] These stakeholders stated that copyright law is meant to incentivize humans and focused on the importance of human skill and judgment; copyright protection, therefore, should only be afforded to AI-assisted works where a human has exercised sufficient skill and judgment in the creation of the work.[15] Some other stakeholders, it was noted, suggested that autonomously created AI works should fall into the public domain.[16] In the end, both the Standing Committee on Industry, Science and Technology and Innovation, Science and Economic Development Canada concluded that the Canadian Copyright Act should be amended or other legislation provided in order to provide clarity on the copyrightable nature of AI-generated works.[17]
Compared to the uncertainty in Canada, the US Copyright Office has already started the process of determining the degree of human involvement necessary to find authorship. In this regard, the U.S. Copyright Office published guidance on the topic in March of this year and have either fully or partially rejected cases of AI-assisted artwork that contains more than a de minimis amount of AI-generated content.[18] Through these decisions, the U.S. Copyright Office has consistently held that entering a series of prompts into an AI machine does not make someone an author. [19]
While it is promising that the Canadian government is in talks to modernize the Canadian Copyright Act, the current environment leaves significant ambiguity for artists currently employing AI in their creative processes. As AI continues to develop at a rapid pace, its involvement in our everyday lives only continues to grow. CIPO, the courts, and the Canadian government will need to determine the degree of allowable AI involvement in copyrightable works and provide this guidance to the Canadian public.
Should you have any questions or concerns, please feel free to reach out to a member of Miller Thomson’s Intellectual Property or Artificial Intelligence group.
[1] Stephen Thaler v Shira Perlmutter, 2023 WL 5333236 at 3 (DDC, 2023).
[2] Ibid at 1.
[3] Ibid.
[4] Ibid.
[5] Ibid at 4.
[6] Ibid at 6.
[7] Ibid.
[8] Geophysical Service Incorporated v Encana Corporation, 2016 ABQB 230 at para 88-91; CCH Canadian Ltd. v Law Society of Upper Canada, 2004 SCC 13 at para 16.
[9] Government of Canada, A Consultation on a Modern Copyright Framework for Artificial Intelligence and the Internet of Things, (Ottawa: Innovation, Science and Economic Development Canada, 2021) at section 2.2.
[10] “SURYAST” (Artistic) Ankit Sahni, Can 1188619 (1 December 2021) registered.
[11] Govind Kumar Chaturvedi, “A.I. Paintings: Registrable Copyright? Lessons from Ankit Sahni” (31 March 2023), online (blog): .
[12] Ibid.
[13] Christine Genge & Nora Labbancz, “Protecting and enforcing design rights: Canada” (15 November 2019), online (blog): .
[14] House of Commons, Statutory Review of the Copyright Act, 42-1, (June 2019) online: .
[15] Government of Canada, A Consultation on a Modern Copyright Framework for Artificial Intelligence and the Internet of Things, (Ottawa: Innovation, Science and Economic Development Canada, 2021) at section 2.2.1.
[16] Ibid.
[17] Ibid.
[18] Letter from the Copyright Review Board to Tamara Pester, Esq., (5 September 2023) “Second Request for Reconsideration for Refusal to Register Théâtre D’opéra Spatial SR #1-11743923581; Correspondence ID: 1-5T5320R”; Letter from the Copyright Review Board to Van Lindberg, (21 February 2023) “Zarya of the Dawn (Registration # VAu001480196) Previous Correspondence ID: 1-5GB561K”; U.S. Copyright Office, Library of Congress, “Copyright Registration Guidance: Works Containing Material Generated by Artificial Intelligence” (16 March 2023), online: .
[19] Letter from the Copyright Review Board to Tamara Pester, Esq., (5 September 2023) “Second Request for Reconsideration for Refusal to Register Théâtre D’opéra Spatial SR #1-11743923581.
