The designer's toolbox has rapidly expanded to include generative AI models capable of efficiently outputting creative business assets, including logos, product images and web copy, at a rate and volume that has never before been seen. The convenience of these tools may come at a cost given the uncertainty surrounding the availability of copyright protection over AI-generated works.
What We Know: Canada's Originality Requirement
Copyright protects original works. In Canada, originality requires the exercise of an author's "skill and judgement," which goes beyond a purely mechanical exercise. Creativity per se is not a requirement, and the courts' interpretation of "originality" suggests that a work may be copyright-protected only if the author is a natural person, i.e. human.
Consequently, an AI model cannot be identified as an author for the purposes of copyright protection, and if generative AI users do not expend intellectual effort during the AI-generation process, the resulting work may not be copyrightable.
Beyond this, the question of copyright protection in AI-generated works has not been conclusively answered, whether through legislation or before the Courts. However, the Canadian government recently launched public consultations on generative AI and its implications for copyright holders (Canadians have until December 4th, 2023 to make submissions). Previous consultations in 2021 did not result in specific guidance or position on AI-generated works and authorship.
Filling in the Gaps: Insight From American Copyright
Recent developments in American copyright law may provide some guidance. Like Canada, copyright protection in the United States subsists in original works of authorship. The United States Copyright Office (USCO) has asserted that it will only register copyright in works created by human beings.<1> More recently in Thaler v Perlmutter, the US District Court affirmed that while copyright law is designed to be malleable enough to adapt to technological advances, works created "absent any guiding human hand" are not copyrightable.2
In a recent guidance document, USCO states that it will consider whether AI contributions in a work are the result of a "mechanical reproduction" or instead of an author's "own original mental conception, to which [the author] gave visible form."3 The USCO will look to whether a human has selected or arranged the AI-generated material in a sufficiently creative way such that "the resulting work as a whole constitutes an original work of authorship", or alternatively, whether an author has modified the AI-generated to such a degree that the modifications meet the standard for copyright protection.4
Further, applicants must disclaim the AI-generated aspects of their work if it contains more than a de minimis amount of AI-generated material.5 The scope of copyright protection will only extend to elements that are human-authored.6 In a September 2023 USCO decision, the visual edits made by a human author of an image initially generated by Midjourney were found to be sufficient to attract copyright protection, however since the applicant did not disclaim those aspects of the image attributable to AI, the USCO refused to register copyright in the image.
Protecting Your Creative Assets: Key Takeaways for Businesses
Given the above, how should businesses position themselves vis-à-vis generative AI to leverage its benefits without compromising their IP rights in the resulting works? The use of generative AI models should be carefully tailored in accordance with three key considerations.
First, designers, illustrators and copywriters – and businesses who use their services for creative assets – should turn to generative AI as an exploratory tool rather than as a substitute for human creation. Generative AI tools should be used to test ideas, create preliminary drafts, or tweak human-authored content. Human creativity should remain at the center of processes leading to final work products, and the human creative process should be properly documented. At a minimum, creative choices and decisions made by humans should aim to arrange or modify AI-generated works.
Second, businesses should consider using commercial terms in agreements to supplement copyright protection if there is concern that AI-generated output might not be protectable via copyright. Such terms could include contractual obligations that limit the use of generative AI technologies or the incorporation of AI-generated materials. Where such technologies or materials are used or incorporated, it must be adequately documented. Development agreements should also provide for AI-specific representations and warranties guaranteeing that final work products substantially result from human authorship as well as indemnification provisions that address concerns of infringement with AI-generated or -assisted work products. Contractual measures such as these can provide added comfort for businesses looking to secure their rights in AI-generated works.
Third, businesses should pay closer attention to the availability of trademarks as a means for protecting their rights in AI-generated works. In Canada, trademarks protect various aspects of a brand, including business names, product or service names, logos and slogans. Importantly, there is no human-authorship criterion under trademarks law. AI-generated marketing materials may therefore receive trademark protection despite the uncertainty surrounding their status in copyright law.
These uncertainties call for a cautious and considered approach to using generative AI in the creative process. Solutions tailored to the specific circumstances of a business will become increasingly important. Fasken's Intellectual Property team is available to assist in achieving optimal protection for your rights in AI-generated works.
Footnotes
1 United States Copyright Office, "Copyrightable Authorship: What Can Be Registered" (January 28, 2021) at 7.
2 Ibid at 8.
3 United States Copyright Office, "Copyright Registration Guidance: Works Containing Material Generated by Artificial Intelligence" (March 16, 2023) at 16191-16192.
4 Ibid at 16192.
5 Ibid at 16193.
6 Ibid.
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