The digital revolution has fundamentally transformed intellectual property (IP) law in recent years, especially with the significant growth and development of Artificial intelligence (AI). Generative AI, which uses machine learning to produce content based on user prompts, exemplifies this change. For instance, ChatGPT, a notable language model, showcases how AI can impact IP through the creation, distribution, and consumption of creative works.
While AI pushes creative boundaries, it also challenges existing copyright frameworks, raising questions about the ownership of AI-generated works, potential infringement risks, and the applicability of fair use exemptions. This legal alert explores these issues within the realms of copyright and patent law.
(A) Copyright
Copyright protects the expression of ideas, granting exclusive rights to the creator of an original work. In Malaysia, the Copyright Act 1987 (CA 1987) governs these rights, ensuring that the author, who is generally the first copyright owner, holds exclusive rights. However, when AI comes into the picture, the question then arises – who is the author of an AI-generated work? Alternatively, should an AI-generated work even be granted copyright?
Whether AI generated work is original?
For a work to be original, according to Section 7(3) of the Copyright Act 1987, sufficient effort must be expended. Recently, the Federal Court held in YKL Engineering Sdn Bhd v Sungei Kahang Palm Oil Sdn Bhd & Anor [2022] 8 CLJ 32 efforts in terms of skills, time and labour must be expended to render the work original. This leads us to the question: whether sufficient skills and labour have been expended in AI-generated work? To resolve this question, it is important for us to determine the degree of human intervention in producing the work.
As illustrated in the Chinese case of Gao Yang v Youku (2017) Jing 73 Min Zhong No. 797, an AI-produced work was deemed original and protected by copyright due to human intervention in the selection of factors such as shooting angle, mode of recording and display format. Similarly, in Shenzhen Tencent v Shanghai Yingxun (2019) Yue 0305 Min Chu No.14010, the work was considered original because the creative team of Tencent used Dreamwriter software, indicating that sufficient skills and effort have been expended. In another recent Chinese case of Li v Liu (2023) Jing 0491 Min Chu No. 11279, the court recognised that although the work was done by AI software, the human who gave the prompts demonstrated sufficient choice and arrangement to be considered the author. These cases illustrate that AI is merely a tool and that a strong degree of human intervention makes the work original.
Whether AI can be regarded as an author of a copyright work?
According to Cummins v Bond [1927] 1 Ch 167, the work was inspired by a spirit and the court held that the writer who put the words in writing and translated the work is the author. In Naruto v Slater, No. 16-15469 (9th Cir. 2018), the monkey who took a selfie was not regarded as an author under the US Copyright Act.
In Malaysia, according to Section 10 of the CA 1987, for a work to qualify for copyright protection, the author must be a ‘qualified person.’ ‘Qualified person’ is defined in Section 3 as a person who is a citizen or permanent resident in Malaysia or a non-human, such as a body corporate established in Malaysia or vested with legal personality under the laws of Malaysia, as illustrated in the High Court cases of Rock Records (M) Sdn Bhd v Audio One Entertainment Sdn Bhd [2005] 1CLJ 200 and MediaCorp News Pte Ltd & 3 Ors v MediaBanc(JB) Sdn Bhd & 4 Ors [2010] 4 MLJ 657. Unfortunately, there are no Malaysian cases illustrating whether a non-human besides a body corporate can be recognised as the author of a copyright work.
Nevertheless, if AI authorship were to be recognised, issues regarding the duration of copyright subsistence and moral rights may arise. According to Section 17(1) of the CA 1987, the duration of copyright is based on the author’s life, which would present problems if AI were considered the author. Regarding moral rights, the High Court case of Aktif Perunding Sdn Bhd v ZNVA & Associates Sdn Bhd [2018] 7 MLJ 692 held that moral rights under the CA 1987 applies only to individual authors, excluding AI authors based on the wordings of Sections 25(4), (5) and (6) of the CA 1987.
(B) Patent
A patent is a grant that confers on the patent holder (usually the inventor) the exclusive right to exploit his invention commercially and to prevent others from using/selling the invention for a period of time. This exclusive right under patent law is a monopoly right. Similar to copyright, an idea per se cannot be patented. It is the invention, which is a new way to do something or a technical solution to a particular issue pursuant to Section 12 of the Patents Act 1983 that is patentable.
Whether AI-generated work can be protected under patent law?
An AI-generated work is generally protected under patent law if it meets the requirements of being novel, industrially applicable and involving an inventive step. There are issues regarding the last requirement, inventive step. According to Section 15 of the Patents Act 1983, there is an inventive step if it is not obvious to a person having ordinary skill in the art. However, what may be non-obvious to a human might be obvious to a skilled person using a similar AI system. This raises questions about the standard for assessing inventive steps in AI-generated work. Therefore, adjustments are necessary to recognise AI-generated work as patentable without compromising the requirement of inventive steps.
Whether AI can be recognised as the inventor of a work?
In Thaler v Comptroller General of Patents Trade Marks and Designs [2021] EWCA Civ 1374, the UK Supreme Court held that an AI cannot be named as an inventor pursuant to Sections 7 and 13 of the UK Patents Act 1977, which require an inventor to be a natural person. The UK Supreme Court’s decision was consistent with that of other jurisdictions such as Australia (Thaler v Commissioner of Patents [2022] HCA Trans 199) and the United States (Thaler v Iancu, et al), where similar applications were rejected by the courts. While the AI inventor DABUS, which stands for “device for the autonomous bootstrapping of unified sentience” failed to procure patents in the European Union, United Kingdom and United States, it was granted its first patent by the South African IP Office (the Companies and Intellectual Property Commission).
In Malaysia, there is no precedent on whether AI can be recognised as an inventor. “Inventor” is also not defined in the Patents Act 1983 nor in the Patents Regulation 1986. However, Section 18 of the Patents Act 1983 stipulates that the right to apply for a patentable invention is vested in the inventor. Regulation 6 of the Patents Regulations 1986 further provides that a patent application shall contain the name and address of the inventors. With all these in mind, it strongly suggests that in Malaysia, an inventor is only confined to a natural person as only a natural person can have an idea, be named and have an address.
Conclusion
In short, it is undeniable that AI is slowly pervading every aspect of our life, but Malaysian legislation is unprepared to address these challenges which would eventually result in legal gaps that can only be rectified retroactively. Legislative amendments are necessary to adapt to technological advancements and ensure clarity in IP law regarding AI-generated content.
23 July 2024
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