Case 1:22-cv-01564-BAH Document 17 Filed 02/07/23 Page 1 of 34

IN THE UNITED STATES DISTRICT COURTFOR THE DISTRICT OF WASHINGTON D.C.
STEPHEN THALER, an individual,
Plaintiff,

1:22-CV-01564-BAH

v.
SHIRA PERLMUTTER, in her official
capacity as Register of Copyrights andDirector of the United States Copyright
Office; and THE UNITED STATESCOPYRIGHT OFFICE,
Defendants.

DEFENDANTS’ RESPONSE TO PLAINTIFF’S MOTION FOR SUMMARYJUDGMENT AND CROSS MOTION FOR SUMMARY JUDGMENT

Case 1:22-cv-01564-BAH Document 17 Filed 02/07/23 Page 2 of 34

TABLE OF CONTENTSTABLE OF AUTHORITIES................................................................................................... iii
INTRODUCTION.................................................................................................................... 1I.

RESPONSE TO PLAINTIFF’S STATEMENT OF UNDISPUTED MATERIAL
FACTS ........................................................................................................................ 3
A.

Facts Defendants do not Dispute........................................................................ 3

B.

Facts Defendants Dispute As In Conflict With the Record.................................. 3

II.

STANDARD OF REVIEW .......................................................................................... 4

III.

LEGAL STANDARD .................................................................................................. 5IV.

FACTUAL BACKGROUND ....................................................................................... 7

V.

THE COPYRIGHT OFFICE’S ACTION WAS JUSTIFIED........................................ 10

VI.

A.

Plaintiff Must Show the Office’s Decision was Arbitrary, Capricious, or an
Abuse of Discretion to Prevail on its APA Claim ............................................. 11

B.

The Office Correctly Refused Plaintiff’s Application to Register the Work ....... 131.

The History and Language of the Act Supports the Office’s Conclusionthat Only Human Authorship Qualifies for Copyright Protection ........... 13

2.

Supreme Court Precedent Supports the Office’s Decision...................... 14

3.

Federal Appellate Courts Have Reached the Same Conclusion .............. 16

4.

The Creativity of the Work’s Visual Elements is Irrelevant ................... 18

5.

Plaintiff Cannot Supplement the Administrative Record Regarding theWork’s Creation .................................................................................. 19C.

Neither Common Law Nor the Work-Made-for-Hire Doctrine are a Basis for
Plaintiff to Claim Authorship of the Work........................................................ 20

D.

Plaintiff’s Policy Arguments are Irrelevant and Fail to Demonstrate that the
Office’s Decision was Arbitrary and Capricious............................................... 24

PLAINTIFF’S REQUESTED RELIEF IS OUTSIDE THE SCOPE OF THE APA ....... 26

CONCLUSION ..................................................................................................................... 27ii

Case 1:22-cv-01564-BAH Document 17 Filed 02/07/23 Page 3 of 34

TABLE OF AUTHORITIES
Cases
Anderson v. Liberty Lobby, Inc.,
477 U.S. 242 (1986) ......................................................................................................... 4
Ardmore Consulting Group, Inc. v. Contreras-Sweet,
118 F. Supp. 3d 388 (D.D.C. 2015) ................................................................................... 4
Ashton v. United States Copyright Office,310 F. Supp. 3d 149 (D.D.C. 2018) ................................................................................... 5
Atari Games Corp. v. Oman,
979 F.2d 242 (D.C. Cir. 1992) .................................................................................... 26, 27
Burrow-Giles Lithographic Co. v. Sarony,
111 U.S. 53 (1884) ................................................................................................... passim
Cetacean Cmty. v. Bush,
386 F.3d 1169 (9th Cir. 2004) ......................................................................................... 18
Citizens Telecoms. Co. of Minn., LLC v. FCC,
901 F.3d 991 (8th Cir. 2018) ........................................................................................... 12
Coach, Inc. v. Peters,
386 F. Supp. 2d 495 (S.D.N.Y. 2005) .............................................................................. 26
Community for Creative Non-Violence v. Reid,
490 U.S. 730 (1989) .................................................................................................. 22, 23
Custom Chrome, Inc. v. Ringer,
No. Civ. A. 93-2634(GK), 1995 WL 405690 (D.D.C. June 30, 1995) ............................... 12
Esquire, Inc. v. Ringer,
591 F.2d 796 (D.C. Cir. 1978) ......................................................................................... 12
Family Trust of Mass., Inc. v. United States,
892 F. Supp. 2d 149 (D.D.C. 2012) ................................................................................... 4
Feist Publications v. Rural Telephone Services, Co.,
499 U.S. 340 (1991) ......................................................................................................... 6
Fox Television Station, Inc. v. Filmon X LLC,
150 F. Supp. 3d 1 (D.D.C. 2015) ....................................................................................... 4iii

Case 1:22-cv-01564-BAH Document 17 Filed 02/07/23 Page 4 of 34

Goldstein v. California,
412 U.S. 546 (1973) ............................................................................................ 10, 16, 21
Hagelin v. Fed. Election Comm’n,
411 F.3d 237 (D.C. Cir. 2005) ........................................................................................... 5
Harper & Row, Publrs. v. Nation Enters.,
471 U.S. 539 (1985) ....................................................................................................... 25
Houghton Mifflin Co. v. Stackpole Sons, Inc.,
104 F.2d 306 (2d Cir. 1939) ............................................................................................ 21
Ill. Pub. Telcoms. Ass’n v. FCC,
752 F.3d 1018 (D.C. Cir. 2014) ....................................................................................... 22
Kaiser Found. Hosps. v. Sebelius,
828 F. Supp. 2d 193 (D.D.C. 2011) ................................................................................... 4
Kelley v. Chicago Park Dist.,
635 F.3d 290 (7th Cir. 2011) ................................................................................ 16, 17, 18
Mazer v. Stein,
347 U.S. 201 (1954) ...................................................................................... 10, 16, 20, 25
Motor Vehicle Mfrs. Ass’n of U.S., Inc. v. State Farm Mut. Auto. Ins. Co.,
463 U.S. 29 (1983) ...................................................................................................... 4, 11
Naruto v. Slater,
888 F.3d 418 (9th Cir. 2018) ...................................................................................... 16, 17
Norris Indus. v. Int’l Tel. & Tel. Corp.,
696 F.2d 918 (11th Cir. 1983) ......................................................................................... 12
Nuvio Corp. v. FCC,
473 F.3d 302 (D.C. Cir. 2006) ......................................................................................... 11
OddzOn Prods. v. Oman,
924 F.2d 346 (D.C. Cir. 1991) ......................................................................................... 20
Sw. Airlines Co. v. Saxon,
142 S. Ct. 1783 (2022) .................................................................................................... 24
Thaler v. Vidal,
43 F.4th 1207 (Fed. Cir. 2022) ................................................................................... 16, 24iv

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Trade-Mark Cases,
100 U.S. 82 (1879) ................................................................................................... passim
Urantia Found. v. Kristen Maaherra,
114 F.3d 955 (9th Cir. 1997) ...................................................................................... 16, 17
Varsity Brands, Inc. v. Star Athletica, LLC,
799 F.3d 468 (6th Cir. 2015) ........................................................................................... 12
Yu Zhang v. Heineken N.V.,
No. CV 08-06506, 2010 WL 4457460 (C.D. Cal. May 12, 2010) ........................................ 6
Constitutional Provisions and Statutes
5 U.S.C. § 701 ..................................................................................................................... 10
5 U.S.C. § 704 ..................................................................................................................... 11
5 U.S.C. § 706 .................................................................................................................. 4, 11
17 U.S.C. § 101 ................................................................................................................ 5, 22
17 U.S.C. § 102 ............................................................................................................. passim
17 U.S.C. § 106 ..................................................................................................................... 5
17 U.S.C. § 201 .............................................................................................................. 21, 22
17 U.S.C. § 202 ................................................................................................................... 20
17 U.S.C. § 204 ................................................................................................................... 21
17 U.S.C. § 302 ................................................................................................................... 14
17 U.S.C. § 701 ................................................................................................................... 10
Copyright Act of Mar. 4, 1909 ............................................................................................. 13
U.S. Const. art. I .................................................................................................................. 14
Rules and Regulations
Fed. R. Civ. P. 56 ............................................................................................................... 1, 4
37 C.F.R § 202.5 .............................................................................................................. 9, 10Secondary Sources
CONTU, FINAL REPORT (1978) ............................................................................................ 24
H.R. REP. NO. 94-1476 (1976) ......................................................................................... 13, 14
James Vincent, The scary truth about AI copyright is nobody knows what will happen next,
THE VERGE (Nov. 15, 2022), https://www.theverge.com/23444685/generative-aicopyright-infringement-legal-fair-use-training-data ......................................................... 25v

Case 1:22-cv-01564-BAH Document 17 Filed 02/07/23 Page 6 of 34

Letter from Senators Thom Tillis and Chris Coons to Kathi Vidal, Under Secretary ofCommerce for Intellectual Property and Director of the U.S. Patent and Trademark
Office, and Shira Perlmutter, Register of Copyrights and Director of the U.S. Copyright
Office (Oct. 27, 2022), https://www.copyright.gov/laws/hearings/Letter-to-USPTOUSCO-on-National-Commission-on-AI-1.pdf ................................................................. 26
PATRY ON COPYRIGHT § 3:19 (2010) ..................................................................................... 18
RESTATEMENT (THIRD) OF AGENCY (AM. L. INST. 2006) ..................................................... 23
U.S. COPYRIGHT OFFICE, COMPENDIUM OF U.S. COPYRIGHT PRACTICES(3d. ed. 2021) ................................................................................................... 6, 7, 17, 18viCase 1:22-cv-01564-BAH Document 17 Filed 02/07/23 Page 7 of 34

IN THE UNITED STATES DISTRICT COURTFOR THE DISTRICT OF WASHINGTON D.C.
STEPHEN THALER, an individual,

1:22-CV-01564-BAH

Plaintiff,v.
SHIRA PERLMUTTER, in her official
capacity as Register of Copyrights andDirector of the United States Copyright
Office; and THE UNITED STATESCOPYRIGHT OFFICE,

DEFENDANTS’ RESPONSE
TO PLAINTIFF’S MOTION FOR
SUMMARY JUDGMENT AND CROSSMOTION FOR SUMMARY JUDGMENT

Defendants.
INTRODUCTION
Defendants, Shira Perlmutter, in her official capacity as Register of Copyrights andDirector of the United States Copyright Office, and the United States Copyright Office,(collectively, the Office or Defendants) pursuant to Fed. R. Civ. P. 56, respectfully request that
the Court deny Plaintiff’s, Stephen Thaler, an individual, Motion for Summary Judgment, grant
its Cross Motion for Summary Judgment, and dismiss Plaintiff’s case with prejudice.
This case turns on a single question: Did the Office act reasonably and consistently withthe law when it refused to extend copyright protection to a visual work that Plaintiff represented
was created without any human involvement? The answer is yes.
The work at issue is a two-dimensional artwork entitled “A Recent Entrance to Paradise”(the Work), as shown below:

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In his application, Plaintiff represented that the copyright author was the “Creativity Machine,”
an artificial intelligence (AI) machine which he alleged had “autonomously” created the Work.
Plaintiff also stated that he was the owner of the copyright in the Work because he owned theCreativity Machine or, in the alternative, pursuant to the “work for hire” doctrine.
In rejecting the application, the Office confirmed that copyright protection does notextend to non-human authors. As described herein, the Office’s determination was based on thelanguage of the Copyright Act, Supreme Court precedent, and federal court decisions refusing toextend copyright protection to non-human authorship. The Office cited these authorities when it
rejected the arguments asserted by Plaintiff, and repeatedly explained the basis for its decision in
response to Plaintiff’s requests for reconsideration. The Office also correctly rejected Plaintiff’s
arguments that he is the owner of the Work based on common law or the work made for hire
doctrine. The Office’s refusal to register the Work is supported by the Administrative Record
and was sound, reasoned, and firmly based on the applicable laws. There are no material issuesof fact in dispute, and Defendants are entitled to summary judgment.

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I.

RESPONSE TO PLAINTIFF’S STATEMENT OF UNDISPUTED MATERIAL
FACTS
In response to Plaintiff’s Statement of Undisputed Material Facts, Defendants will

respond to each paragraph as numbered in Plaintiff’s Summary Judgment Brief. See Dkt. 16 at
2-6. Even if accepted as true, Plaintiff’s facts do not preclude summary judgment in favor of
Defendants.
A.

Facts Defendants do not Dispute

For purposes of this Motion only, Defendants do not dispute the following paragraphsfrom Plaintiff’s Statement of Undisputed Material Facts: Paragraphs 2, 3, 4, 7, 8, 9, 10, 11, 12,
13, and 14.
B.

Facts Defendants Dispute As In Conflict With the Record

Plaintiff’s Material Fact No. 1: The first sentence of Paragraph 1 is argumentative anddoes not state a fact at issue in this case. Defendants do not dispute the quoted language in thecitation parenthetical.
Plaintiff’s Material Fact No. 5: Paragraph 5 is argumentative and does not accuratelyreflect the record. Plaintiff’s note on the application stated the Work “was autonomously createdby a computer algorithm running on a machine call the ‘Creativity Machine’. We are seeking toregister this computer-generated work as a work-for-hire to the owner of the Creativity
Machine.” Dkt. 13-2 at US_0000001.
Plaintiff’s Material Fact No. 6: The second sentence of Paragraph 6 is argumentative anddoes not accurately reflect the record. The Office’s August 12, 2019 letter stated “[w]e cannot
register this work,” Dk. 13-4 at US_0000005, therefore there was no “copyright in the Work” to“address.”3Case 1:22-cv-01564-BAH Document 17 Filed 02/07/23 Page 10 of 34

II.

STANDARD OF REVIEW
Summary judgment is appropriate where “there is no genuine dispute as to any material

fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a). “Themovant has the burden of showing that there is no genuine issue of fact.” Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 256 (1986). “When evaluating cross-motions for summary
judgement, each motion is reviewed ‘separately on its own merits to determine whether [any] of
the parties deserves judgment as a matter of law.” Fox Television Station, Inc. v. Filmon X LLC,
150 F. Supp. 3d 1, 11 (D.D.C. 2015) (quoting Family Trust of Mass., Inc. v. United States, 892
F. Supp. 2d 149, 154 (D.D.C. 2012)). Review under the Administrative Procedure Act (APA) islimited to a consideration of the administrative record. 5 U.S.C. § 706. And, in the context of an
APA challenge to the denial of an application for copyright registration, the standard of review iswhether the denial was “arbitrary, capricious, an abuse of discretion, or otherwise not inaccordance with law.” Id. Therefore, the Court must “determine whether or not as a matter oflaw the evidence in the administrative record permitted the agency to make the decision it did.”Kaiser Found. Hosps. v. Sebelius, 828 F. Supp. 2d 193, 198 (D.D.C. 2011). “This standard ofreview is ‘narrow,’ and the court applying it ‘is not to substitute its judgment for that of theagency.’” Ardmore Consulting Group, Inc. v. Contreras-Sweet, 118 F. Supp. 3d 388, 393(D.D.C. 2015) (quoting Motor Vehicle Mfrs. Ass’n of U.S., Inc. v. State Farm Mut. Auto. Ins.
Co., 463 U.S. 29, 43 (1983)). The Supreme Court has held that “the agency must examine therelevant data and articulate a satisfactory explanation for its action including a ‘rational
connection between the facts found and the choice made.’” State Farm, 463 U.S. at 43.
“Judicial review in APA cases is ‘[h]ighly deferential’ and ‘presumes the validity of agency
action,’ permitting reversal only when ‘the agency’s decision is not supported by substantial

4

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evidence, or if the agency has made a clear error in judgment.’” Ashton v. United States
Copyright Office, 310 F. Supp. 3d 149, 156-57 (D.D.C. 2018) (quoting Hagelin v. Fed. Election
Comm’n, 411 F.3d 237, 242 (D.C. Cir. 2005)).
III.

LEGAL STANDARDThe Office’s decision to refuse registration of the Work was based on established legal

standards, including the text of the Copyright Act, judicial interpretation of the Act, and the
Office’s own public guidance and practices. The legal inquiry into whether a particular work canbe registered begins with the text of the statute. The Copyright Act of 1976, 17 U.S.C. § 101 etseq., (the Act) grants copyright protection to “original works of authorship fixed in any tangible
medium of expression.” 17 U.S.C. § 102(a). Copyright protection confers certain exclusive
rights, including the rights to copy and distribute the work. Id. § 106. The Act defines
categories of works of authorship in which copyright protection can subsist, including “pictorial,
graphic, and sculptural works,” id. § 102(a), which include “two-dimensional and threedimensional works of fine, graphic, and applied art, photographs, prints and art reproductions,maps, globes, charts, diagrams, models, and technical drawings.” Id. § 101. Defendants do notdispute that the Work—a two-dimensional work of visual art—falls within the categories ofworks of authorship identified in the Act. See id. But that is not the end of the inquiry. Even if
the Work qualifies as a category of work within the scope of the statute, the Act protects only
“original works of authorship” that are fixed in a tangible medium of expression. Id. § 102(a).
Accordingly, the Office will refuse registration for works that are not “original works ofauthorship,”1 not fixed, or are subject to statutory exclusions.2

1 Plaintiff claims that “[i]t is undisputed that the Work constitutes a fixed, visual artworkthat would be protected under the Act had it been created through traditional human labor,” Dkt.
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The Office’s decision also relied on its many years of experience interpreting andapplying copyright law. It collects this understanding of the law and provides standards for
examining and registering works in its Compendium of U.S. Copyright Office Practices (Third
Edition) (Compendium). Updates to the Compendium are typically adopted following a period
for public notice and comment. See U.S. COPYRIGHT OFFICE, COMPENDIUM OF U.S. COPYRIGHT
PRACTICES, Introduction at 7 (3d. ed. 2021) (COMPENDIUM (THIRD)) (referencing welcoming
public input on the Compendium during “formal notice and commenting periods”). The Office
looks to the Compendium when reviewing copyright registration applications, including withregard to the requirements for copyrightability. As other courts have recognized, registration
decisions that have been based on “the Copyright Act, the content of related regulations, and theCompendium . . . can hardly be deemed to be ‘arbitrary and capricious’” and such reasonable
determinations “must be accorded substantial deference.” Yu Zhang v. Heineken N.V., No. CV
08-06506, 2010 WL 4457460, at *6 (C.D. Cal. May 12, 2010) (citation omitted).
The Compendium contains several sections addressing the human authorship
requirement. The Compendium specifies “the Office will refuse to register a claim if it
determines that a human being did not create the work.” COMPENDIUM (THIRD) § 306.
Likewise, the Compendium provides that copyright law only protects “the fruits of intellectual
16 at 7, but the Office did not consider whether other registration requirements, including thatthe work must be “original,” were met. The term “original” means that the work was
independently created by the author, as opposed to copied from other works. See Feist
Publications v. Rural Telephone Services, Co., 499 U.S. 340 (1991). Because Plaintiff provided
minimal information as to how the Work was prepared, the Office is unable to determine
whether the Work meets this standard because, among other potentially relevant facts, the Officedoes not know what preexisting works the Creativity Machine was trained on.
2 The Act excludes copyright protection for “any idea, procedure, process, system,

method of operation, concept, principle, or discovery, regardless of the form in which it isdescribed, explained, illustrated, or embodied in such work.” 17 U.S.C. § 102(b).
6Case 1:22-cv-01564-BAH Document 17 Filed 02/07/23 Page 13 of 34

labor” that “are founded in the creative powers of the [human] mind.” Id. (quoting Trade-Mark
Cases, 100 U.S. 82, 94 (1879)). Similarly, the Compendium points out that “to qualify as a workof ‘authorship’ a work must be created by a human being” and “works that do not satisfy thisrequirement are not copyrightable.” Id. § 313.2. The Compendium provides numerous examples
of works that lack the human authorship requirement necessary for copyrightability including“works produced by nature, animals, or plants.” Id. Most notably, the Compendium specifies
that the Office “will not register works produced by a machine or mere mechanical process that
operates randomly or automatically without any creative input or intervention from a humanauthor.” Id.
IV.

FACTUAL BACKGROUND
Plaintiff applied to register the Work on November 3, 2018. See Dkt. 13-2. When

Plaintiff submitted his application, he included a note for the Office that stated “[p]lease note thisartwork was autonomously created by a computer algorithm running on a machine called the‘Creativity Machine’. We are seeking to register this computer-generated work as a work-forhire to the owner of the Creativity Machine.” Id. at US_0000001. Plaintiff further filled in the“Author” field of the application as “Creativity Machine” and stated that the work created by theauthor was a “2-D artwork, Created [sic] autonomously by machine.” Id. at US_0000002.
Plaintiff also checked a box that the work was a “work made for hire,” claiming ownership wastransferred due to “[o]wnership of the machine.” Id.
On August 12, 2019, the copyright examiner assigned to the application refused
registration. See Dkt. 13-4. The examiner’s decision explained that the Work “lacks the humanauthorship necessary to support a copyright claim” and pointed to Plaintiff’s statement in theapplication that the work was “created autonomously by machine.” Id. at US_0000005 (quoting

7

Case 1:22-cv-01564-BAH Document 17 Filed 02/07/23 Page 14 of 34

Dkt. 13-2 at US_0000002). The decision also pointed to previous Supreme Court opinions
stating that copyright protects only “the fruits of intellectual labor” that “are founded in thecreative powers of the mind” and is limited to “original intellectual conceptions of the author.”
Dkt 13-4 at US_0000005 (quoting Trade-Mark Cases, 100 U.S. at 94; Burrow-Giles
Lithographic Co. v. Sarony, 111 U.S. 53, 58 (1884)).
Plaintiff appealed the initial refusal of registration on September 23, 2019 3. See Dkt. 135. Plaintiff’s request for reconsideration opened by acknowledging that “[i]t is correct that thepresent submission lacks traditional human authorship—it was autonomously generated by anAI.” Id. at US_0000009. 4 Plaintiff’s request for reconsideration was largely based on policy
arguments in support of registration, including the argument that the Office “should register
copyrights for [machine-generated works] because doing so would further the underlying goalsof copyright law, including the constitutional rationale for copyright protection, and because
there is no binding authority that prohibits” registration. Id. at US_0000010; see also id. at
US_0000013 (under heading “Policy Objections,” arguing that the human authorship
requirement “strongly discourages the use and development of creative AI”). Plaintiff also
argued without analysis that because “non-human, artificial persons such as companies canalready be authors” under the work made for hire doctrine, that provided “precedent” forpermitting him to register the Work. Id. at US_0000012. Finally, Plaintiff criticized the Office’s
3 The top of Plaintiff’s first request for reconsideration is dated September 8, 2019, but

the attorney’s signature block has a date of September 23, 2019. Compare Dkt. 13-5 at
US_0000009 with Dkt. 13-5 at US_0000016.

4 At no point in Plaintiff’s copyright application or his two requests for reconsideration

did he suggest that he had any involvement in or direction of the specific expressive content of
the Work. See generally Dkt. 13-5; Dkt. 13-7. For that reason, there is no evidence in the
Administrative Record that, as Plaintiff now argues, he “provided instructions and directed his
AI to create the Work.” Dkt. 16 at 25.
8Case 1:22-cv-01564-BAH Document 17 Filed 02/07/23 Page 15 of 34

reliance on the Supreme Court’s opinions in the Trade-Mark Cases and Sarony, describing themas “non-binding judicial opinions from the Gilded Age” that did not foreclose protection formachine-generated works. Id. at US_0000015.
The Office denied Plaintiff’s request for reconsideration on March 30, 2020. See Dkt.
13-6. In a letter, the Office of Registration Policy & Practice again explained that the TradeMark Cases and Sarony limited copyright law to protecting only the creations of human authors.
Id. at US_0000019. The Office further noted that Plaintiff explicitly admitted the work was“autonomously generated by an AI” and had “provided no evidence on sufficient creative input
or intervention by a human author in the Work.” Id. Finally, it found the policy arguments were
“insufficient to convince the Office to abandon its longstanding interpretation of the CopyrightAct, Supreme Court, and lower court judicial precedent that a work meets the legal and formal
requirements of copyright protection only if it is created by a human author.” Id. at
US_0000019-20.
Plaintiff appealed 5 this decision to the Copyright Office Review Board, a body thatprovides final review of registration refusals and whose three members are appointed by theRegister of Copyrights and the Office’s General Counsel. See 37 C.F.R. § 202.5(c), (f), (g).
Because Plaintiff did “not assert that the Work was created with contribution from a humanauthor,” the “only issue before the Board” was whether the Office’s refusal to register nonhuman works violated the law. Dkt. 13-8 at US_0000033. After considering the statute andrelevant law, the Board found that the Office correctly interpreted copyright law to require
human authorship. Id.
5 Plaintiff’s May 27, 2020 second request for reconsideration was largely identical to his

previous request, so it is not described further. Compare Dkt. 13-7 with Dkt. 13-5.

9Case 1:22-cv-01564-BAH Document 17 Filed 02/07/23 Page 16 of 34

The Board’s decision rested on several grounds. First, it found that the Supreme Court
had repeatedly interpreted the copyright term “author” as a human whose mind originated awork. See id. at US_0000034 (discussing Sarony, Mazer v. Stein, and Goldstein v. California).
Second, the Board noted that federal appellate courts have refused to extend copyright protection
to non-human authors, including animals and divine spirits. Id. at US_0000034-35. Third, theBoard pointed to the final report by the National Commission on New Technological Uses of
Copyrighted Works, which Congress tasked with considering copyright questions raised bycomputer technology. Id. at US_0000035. That report agreed with the Office’s past and present
view that copyright requires “at least minimal human creative effort.” Id. Fourth, the Board
noted that for almost 40 years the Office’s registration practices required human authorship. Id. 6
Fifth, the Board found the work made for hire doctrine inapplicable because: (1) it does notaffect whether a work is within the scope of copyright; and (2) the Work did not meet thestatutory requirements that the work be prepared either by an “employee” or pursuant to “awritten instrument.” Id. at US_0000036
The Board’s decision to affirm refusal of registration constituted a “final agency action”
by the Office with respect to the issues addressed therein, 37 C.F.R. § 202.5(g), and is subject toreview by a federal district court under the APA. See 17 U.S.C. § 701(e) (“[A]ctions taken by
the Register of Copyrights under this title are subject to the provisions of the Administrative
Procedure Act . . . .”); see also 5 U.S.C. § 704 (“Agency action made reviewable by statute . . .
[is] subject to judicial review.”).
V.

THE COPYRIGHT OFFICE’S ACTION WAS JUSTIFIED

6 The Board also pointed to a recent study by the U.S. Patent and Trademark Office,which found a similar consensus among practitioners. See Dkt. 13-8 at US_0000036.
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Case 1:22-cv-01564-BAH Document 17 Filed 02/07/23 Page 17 of 34

A.

Plaintiff Must Show the Office’s Decision was Arbitrary, Capricious, or an
Abuse of Discretion to Prevail on its APA ClaimAs Plaintiff acknowledges, the Office’s refusal to register the Work is governed by the
APA. See Dkt. 16 at 6. In setting the scope of judicial review, the APA provides that courts may“hold unlawful and set aside agency action, findings, and conclusions found to be . . . arbitrary,capricious, an abuse of discretion, or otherwise not in accordance with law.” 5 U.S.C. § 706. As
discussed above, the Supreme Court has held that “the agency must examine the relevant data
and articulate a satisfactory explanation for its action including a rational connection between thefacts found and the choice made.” State Farm, 463 U.S. at 43 (citation omitted). A “satisfactory
explanation” is one from which “the agency’s [decision] path may reasonably be discerned,” anddoes not require express or detailed analysis of every argument raised. Id. The burden is on theparty challenging an agency’s decision under the APA. See Nuvio Corp. v. FCC, 473 F.3d 302,
305 (D.C. Cir. 2006) (noting that, under the APA, it is “petitioners’ burden” to show that anaction is “arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law”)(quoting 5 U.S.C. § 706(2)(A)).
Plaintiff has failed to meet his burden here. The refusal to register the Work was neither
arbitrary, capricious, nor an abuse of discretion. The Office credited Plaintiff’s representation of
the Work as created “autonomously” by a machine and applied longstanding legal criteria toconclude it must deny Plaintiff’s registration application. The Office considered and rejected thearguments asserted by Plaintiff, and it explained clearly how it applied the law to Plaintiff’s
application. In particular, the Review Board’s February 14, 2022 decision provided asatisfactory explanation and rational basis for the decision to refuse registration of the Work. See
Dkt. 13-8 at US_0000037 (“Because copyright law as codified in the 1976 Act requires humanauthorship, the Work cannot be registered.”).
11

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Further, contrary to Plaintiff’s assertion, see Dkt. 16 at 15-16, the Court should give
substantial deference to the Office’s judgment regarding copyrightability in recognition of the
Office’s extensive expertise. See Esquire, Inc. v. Ringer, 591 F.2d 796, 801–02 (D.C. Cir. 1978)(giving “considerable weight” to the Register’s refusal determination); Custom Chrome, Inc. v.
Ringer, No. Civ. A. 93-2634(GK), 1995 WL 405690, at *4 (D.D.C. June 30, 1995) (according“great weight” to the Register’s registration decision). Plaintiff alleges that the Office’s decision
is not entitled to deference because the human authorship requirement is not based on a formal
regulation. See Dkt. 16 at 15-16. However, the Office was created to oversee copyrightregistration and “has been concerned with the distinction between copyrightable andnoncopyrightable works of art since the Copyright Act of 1870 characterized copyrightablesubject matter as works of fine art.” Norris Indus. v. Int’l Tel. & Tel. Corp., 696 F.2d 918, 922(11th Cir. 1983). For this reason, courts credit the Office’s expertise in interpreting the Act,
particularly in the context of registration. See, e.g., Esquire, Inc., 591 F.2d at 801; Varsity
Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468, 480 (6th Cir. 2015) (“the Copyright Office’s
expertise in identifying and thinking about the difference between art and function surpasses
ours”), aff’d on other grounds 580 U.S. 405 (2017).
Plaintiff’s disagreement with the Office’s conclusion does not establish an abuse of
discretion, nor does it indicate that the Office acted arbitrarily or capriciously. See, e.g., Citizens
Telecoms. Co. of Minn., LLC v. FCC, 901 F.3d 991, 1010 (8th Cir. 2018) (noting that aplaintiff’s “disagreement is no basis for finding” a federal agency’s interpretation to be “arbitrary
and capricious”). The Office’s conclusion that copyright law does not protect non-humancreators was a sound and reasoned interpretation of the applicable law.

12

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B.

The Office Correctly Refused Plaintiff’s Application to Register the Work
1.

The History and Language of the Act Supports the Office’s
Conclusion that Only Human Authorship Qualifies for CopyrightProtection

Contrary to Plaintiff’s argument, there is no support in the Act for his assertion thatcopyright extends to works created solely by machines. For example, Plaintiff is mistaken that
because the statutory phrase “works of authorship” is undefined, the Act permits AI-generated
works to be registered. See Dkt. 16 at 7-9. Rather, the human authorship requirement is alongstanding requirement of copyright law. The 1909 Copyright Act explicitly provided that
only a “person” could “secure copyright for his work.” Act of Mar. 4, 1909, c. 320, §§ 9, 10, 35
Stat. 1075, 1077. In enacting the 1976 Act, Congress did not intend to change the standards for
copyright authorship. See H.R. REP. NO. 94-1476, at 51 (1976) (noting that Congress intended toincorporate the “original work of authorship” standard under the 1909 Act).
Plaintiff misconstrues other provisions of the Act when citing them in support of his
position. See Dkt. 16 at 7-9. He claims that the Act “explicitly accommodates non-humanauthors” by allowing copyright registration for anonymous works, pseudonymous works, orworks made for hire. Id. at 8 n.3, n.4. The opposite is true; the Act assumes that authors are
human. But Congress created “special provisions” to address those circumstances where awork’s term cannot be computed by using an author’s life because the human author is not
identified. See H.R. REP. NO. 94-1476, at 137. For anonymous and pseudonymous works, 7 the
Act addresses these types of works by providing a fixed length of protection. See 17 U.S.C.
§ 302(a)–(c). However, if the author’s identity is revealed in the registration record before the
7 Plaintiff’s arguments regarding works made for hire are addressed separately below in

Section V.C.

13

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term expires, the copyright term is measured from the human author’s death. Id. Nothing about
Congress’s treatment of the term of protection for anonymous and pseudonymous works
supports Plaintiff’s argument that Congress intended the Act to protect non-human creations.
2.

Supreme Court Precedent Supports the Office’s Decision

The Office was correct to rely on the Supreme Court’s decision in Burrow-Giles
Lithographic Co. v. Sarony, which held that photographs could be protected because they
contained sufficient human creativity to qualify as “works of authorship.” Dkt. 13-8 at
US_0000034. The case arose after Congress had amended the relevant copyright statute toinclude photographs, and the defendant had infringed a copyright in a photograph of Oscar
Wilde. See Sarony, 111 U.S. at 54–55. The defendant challenged the constitutionality of thelaw, arguing that Congress may only protect the “writings” of “authors,” under U.S. Const. art. I,§ 8, cl. 8, and that photographs were ineligible because “a photograph is not a writing nor the
production of an author” because they are created by the camera. Id. at 56 (defendant argued
that photographs were merely “reproduction on paper of the exact features of some natural object
or of some person”). The Supreme Court disagreed, finding that the term “writings” in the
Copyright Clause broadly means “the literary productions of those authors,” and “Congress very
properly has declared these to include all forms of writing, printing, engraving, etching, etc., bywhich the ideas in the mind of the author are given visible expression.” Id. at 58.
The Court held that photographs were copyrightable creation of “authors” because theyreflected creative choices by humans. Id. at 57–59. The then-copyright statute protected thecreation of “authors” and the Court construed an “author” as “he to whom anything owes its
origin; originator; maker; one who completes a work of science or literature” and found thatphotographs were protected by copyright as “representatives of original intellectual conceptions

14

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of [an] author.” Id. In its opinion, the Court emphasized the photographer had a “mental
conception” of the photograph, given form by decisions such as “posing the said Oscar Wilde in
front of the camera, selecting and arranging the costume, draperies, and other various accessories
in said photograph, arranging the subject so as to present graceful outlines, arranging anddisposing the light and shade, suggesting and evoking the desired expression, and from suchdisposition, arrangement, or representation” creating the image. Id. at 60. 8 Human creativity
was essential: had the photograph been a “mere mechanical reproduction” that “involve[d] nooriginality of thought or any novelty in the intellectual operation,” then “copyright [would offer]no protection.” Id. at 59.
Contrary to Plaintiff’s argument, nothing in Sarony requires registration of the Work at
issue in this case. Unlike the Work here, which Plaintiff claims was created “autonomously,”
Dkt. 13-2 at US_0000001, the human photographer in Sarony made creative choices such as how
he arranged the subject and altered the lighting of the scene. See 111 U.S. at 60. The Court’s
ruling in Sarony was not based on a free-flowing policy exercise untethered from the statute as
Plaintiff’s desired result would demand in this case. Rather, copyright law at the time “name[d]photographs among other things for which the author, inventor, or designer may obtain
copyright.” Id. at 55; contra Dkt. 16 at 13 (suggesting that Sarony construed statutory text that“preceded the invention of photography”). As the Court in Sarony noted, absent humanauthorship, the photograph would not be entitled to copyright protection. See 111 U.S. at 60.

8 This echoed the Court’s decision five years earlier in Trade-Mark Cases, which notedthat “the writings which are to be protected [under the Copyright Clause] are the fruits ofintellectual labor, embodied in the form of books, prints, engravings and the like.” 100 U.S. at
94.
15

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The Supreme Court’s later cases have similarly articulated a nexus between humanexpression and copyright. In Mazer v. Stein, the Court cited Sarony for the proposition that awork “must be original, that is, the author’s tangible expression of his ideas.” 347 U.S. 201, 214(1954). And in Goldstein v. California, the Court again cited Sarony for the proposition that“[w]hile an ‘author’ may be viewed as an individual who writes an original composition, theterm in its constitutional sense, has been construed to mean an ‘originator,’ ‘he to whomanything owes its origin.’” 412 U.S. 546, 561 (1973).
3.

Federal Appellate Courts Have Reached the Same Conclusion

Plaintiff is not the first to attempt to extend copyright protection to non-humans. In
earlier cases, including Urantia Found. v. Kristen Maaherra, Naruto v. Slater, and Kelley v.
Chicago Park Dist., appellate courts have rebuffed would-be non-human authors. 9 And theBoard’s decision explained its reliance on these cases. See Dkt. 13-8 at US_0000034–35(explaining that “lower courts have repeatedly rejected attempts to extend copyright protection to
non-human creations” and citing relevant cases); Urantia Found. v. Kristen Maaherra, 114 F.3d
955, 957–59 (9th Cir. 1997) (holding that “some element of human creativity must have occurredin order for the Book to be copyrightable” because “it is not creations of divine beings that the
copyright laws were intended to protect”); Naruto v. Slater, 888 F.3d 418, 426 (9th Cir. 2018)(reasoning that a monkey cannot register a copyright in photos it captures with a camera because
the Act refers to an author’s “children,” “widow,” “grandchildren,” and “widower,” — terms that“all imply humanity and necessarily exclude animals”) (decided on other grounds); Kelley v.

9 Courts examining this question under United States patent law have reached a similar

conclusion. The Federal Circuit recently rejected an attempt by Plaintiff to patent an invention
by a machine. See Thaler v. Vidal, 43 F.4th 1207, 1210 (Fed. Cir. 2022) (“there is no ambiguity:
the Patent Act requires that inventors must be natural persons; that is, human beings”).
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Chicago Park Dist., 635 F.3d 290, 304 (7th Cir. 2011) (observing that “authorship is an entirely
human endeavor”) (internal citations omitted).10
Plaintiff’s attempt to re-write the holdings of these cases is unpersuasive. See Dkt. 16 at
19. Urantia Found. is not a case limited to works “authored in part by a spirit.” Rather, the“threshold issue” of that case was whether a work “claimed to embody the words of celestial
beings rather than human beings, is copyrightable at all.” Urantia Found., 114 F.3d at 958(emphasis added). Addressing the argument that copyright requires “the requisite ingredient of
human creativity,” the court held that “in this case some element of human creativity must haveoccurred in order for the Book to be copyrightable.” Id. While Plaintiff suggests that the“worldly” nature of the Creativity Machine is sufficient for copyright protection, Dkt. 16 at 19,
the record in this case lacks evidence that Work was the result of “human” creativity, Dkt. 13-8
at US_0000033.
Similarly, Naruto is not merely an “animal art” case. Dkt. 16 at 19. In that case, theNinth Circuit considered a complaint alleging that a monkey was “the author and owner of”
photographs and had a right to sue under the Copyright Act. Naruto, 888 F.3d at 426. As
Plaintiff concedes, the court answered in the negative because “animals other than humans”
cannot sue under the Act. Id. at 426. The court also noted that “if Congress and the President
intended to take the extraordinary step of authorizing animals” to sue, the statute would need tostate so clearly. Id. at 425 (quoting Cetacean Cmty. v. Bush, 386 F.3d 1169, 1179 (9th Cir.

10 These judicial decisions are reflected in the Office’s guidance in its Compendium,

which requires that copyrighted works be created by a human and provides examples of
unregistrable works such as “a photograph taken by a monkey” and “an application for a songnaming the Holy Spirit as the author.” COMPENDIUM (THIRD) § 313.2. Similarly, theCompendium incorporates the holdings in cases such as Trade-Mark Cases and Sarony, which
require human authorship as a condition for copyright protection. See, e.g., id. §§ 306, 313.2.
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2004)). Copyright protection for works created entirely by machines would be even more
extraordinary.
Finally, Plaintiff’s Motion omits Kelley, a case cited by the Office. See Dkt. 13-8 at
US_0000035. In Kelley, the Seventh Circuit held that a “living garden” was not copyrightable,in part, because “works owing their form to the forces of nature cannot be copyrighted.” 635
F.3d at 304. The Seventh Circuit cited the Office and explained that because “authorship is anentirely human endeavor,” “[a]uthors of copyrightable works must be human.” Id. at 304 (citing
COMPENDIUM (SECOND) §§ 202.02(b), 503.03(a) and PATRY ON COPYRIGHT § 3:19 (2010)).
Even though the garden in Kelley was the product of some human involvement, it was “not thekind of authorship required for copyright.” 635 F.3d at 304. Rather, the constituent elements ofthe garden “originate[d] in nature, not in the mind of the [human] gardener.” Id. The same istrue here—the Work’s visual elements are not the product of human endeavor but were instead“autonomously created by a computer algorithm.” Dkt. 13-2 at US_0000001.
4.

The Creativity of the Work’s Visual Elements is Irrelevant

Plaintiff accurately states that the scope of “works” covered by the Act reflects adeliberate choice by Congress regarding the scope of copyrightable material, including whatworks are “work[s] of authorship,” 17 U.S.C. § 102(a). Dkt. 16 at 7-9. However, Plaintiff’s
claim that the Work is “adequately creative” because it “contains visual elements in a novel
way” misses the point. Id. at 9. The question of the category of the Work or its creativity is not
the inquiry on which the Office based its refusal decision. See Dkt. 13-8. Section 102 protects“original works of authorship fixed in any tangible medium of expression.” 17 U.S.C. § 102(a).
Creativity and originality are required, but not sufficient for protection; it is only the creativity
and originality of “authors”—humans—that are eligible for copyright. In this case, the18Case 1:22-cv-01564-BAH Document 17 Filed 02/07/23 Page 25 of 34

arrangement of visual elements in the Work is not determinative. Rather, the Work’s defect isthat its “author” is not human and, therefore, it cannot be a “work of authorship” under § 102(a).
5.

Plaintiff Cannot Supplement the Administrative Record Regarding
the Work’s Creation

The Court should not credit Plaintiff’s statement, made for the first time in his Motion,that he “provided instructions and directed his AI to create the Work,” that “the AI is entirely
controlled by Dr. Thaler,” or that “the AI only operates at Dr. Thaler’s direction.” Dkt. 16 at 25–
26. These unsubstantiated allegations were not part of the Administrative Record before the
Copyright Office.11 The Office was entitled to rely on Plaintiff’s contemporaneous statements
and “accept[] as a threshold matter Thaler’s representation that the Work was autonomously
created by artificial intelligence without any creative contribution from a human actor.” Dkt. 138 at US_0000032. In any event, even if Plaintiff “created an AI that he directed to create
artwork,” Dkt. 16 at 1, that does not mean that he directed the specific contents of any work,
which is what copyright protection requires.

11 Plaintiff is incorrect in stating that the Office “could have informed him that he should

list himself as the author of the Work.” Dkt. 16 at 25. The Office refused the Work because
Plaintiff did not “author” any part of the Work. As he made clear, the Work was created“autonomously by machine.” Dkt. 16 at 3 (quoting Dkt. 13-2 at US_0000001). The
application’s defect was substantive, not clerical.
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C.

Neither Common Law Nor the Work-Made-for-Hire Doctrine are a Basis for
Plaintiff to Claim Authorship of the Work

Plaintiff is also incorrect that common law or the work made for hire doctrine permits
him to claim a copyright interest in the Work. 12 See Dkt. 16 at 20-26. As explained above,
copyright does not protect the creations of non-human authors therefore there is no interest to beclaimed. No copyright in the Work exists and therefore Plaintiff’s common law property andwork made for hire arguments do not alter the Office’s conclusion. However, for completeness,
Defendants will address each argument.
As an initial matter, Plaintiff’s reliance on common law regarding property ownership is
irrelevant because they involve physical rather than intangible property. 13 See Dkt. 16 at 21-24.
It is a fundamental principle of intellectual property, confirmed in the Act, that ownership of amaterial object is distinct from ownership of intangible rights embodied in that object. See 17
U.S.C. § 202 (“Ownership of a copyright, or of any of the exclusive rights under a copyright, isdistinct from ownership of any material object in which the work is embodied. Transfer ofownership of any material object, including the copy or phonorecord in which the work is first

12 At the outset, the Court should reject Plaintiff’s invocation of common law property

principles as a basis for overturning the Office’s decision. Plaintiff did not cite these cases
during the registration process, so the Office’s decision did not have the opportunity to consider
them. See OddzOn Prods. v. Oman, 924 F.2d 346, 350 (D.C. Cir. 1991) (because copyrightregistration argument “was not raised in the application proceedings, that question is not
appropriately before us for review”).
13 Plaintiff relies heavily on a proclamation from the King of Ireland in the 6 th Century

and state court cases establishing physical property principles. See Dkt. 16 at 21-22. Given that
Plaintiff has described the Supreme Court’s decisions in Sarony and Mazer as “non-binding
judicial opinions from the Gilded Age,” Dkt. 13-7 at US_0000029, decisions by state courts andforeign monarchs should be afforded no greater weight. See also Dkt. 16 at 15 (criticizing the
Office for “relying on gilded age discussions of quasi-metaphysical creative sparks and dicta”).

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fixed, does not of itself convey any rights in the copyrighted work embodied in the object.”).14
Plaintiff’s invitation to apply physical property doctrines such as accession and first possession
to copyright would contravene the statutory scheme and upend the foundations of copyrightlaw. 15Moreover, Plaintiff’s common law argument fails because it is foreclosed by the text andstructure of the Act. Plaintiff suggests that because the Act references “operation of law,” that
language permits common law principles to determine what material is protected by copyright.
Dkt. 16 at 20. But “operation of law” is only mentioned as relevant for transfers of an existing
copyright—not for whether a copyright exists in the first place. See 17 U.S.C. § 201(d)(“ownership of a copyright may be transferred in whole or in part by any means of conveyanceor by operation of law”); id. § 204(a) (copyright transfers must be in writing unless transfer is“by operation of law”). Section 102(a), the subject matter of copyright, and § 201(a), which
provides that copyright “vests initially in the author or authors of the work,” do not reference“operations of law.” And, because Congress deliberately used “operations of law” elsewhere in
the Act, its omission in the Act’s discussion of the subject matter of copyright and initial creation
14 Plaintiff’s citation to Houghton Mifflin Co. v. Stackpole Sons, Inc. is inapposite. See

Dkt. 16 at 23-24. In Houghton Mifflin Co., the parties disagreed whether Adolf Hitler’s Mein
Kampf was protected by copyright, with an alleged infringer arguing that the plaintiff lacked
standing due to defects in a “carefully drawn document intended to transfer all American rights
to publish and sell this work.” 104 F.2d 306, 310 (2d Cir. 1939). The court held only that “if ananalogy is to be drawn between literary property and ordinary chattels,” the fact that the
publisher owned the manuscript provided circumstantial evidence the copyright had beentransferred as well. Id. at 311 (emphasis added). Unlike here, there was no dispute concerning
human authorship.
15 Moreover, to the extent that state property law conflicts with the Act, it is preemptedby the Supremacy Clause. See Goldstein, 412 U.S. at 561 (looking at “federal copyright law” todetermine whether the state law at issue “st[ood] as an obstacle to the accomplishment andexecution of the full purposes and objectives of Congress”).

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should be treated as intentional and foreclose property common law determining those issues.
See, e.g., Ill. Pub. Telcoms. Ass’n v. FCC, 752 F.3d 1018, 1023 (D.C. Cir. 2014) (“we will notread into the statute a mandatory provision that Congress declined to supply”).
Plaintiff’s argument that he is the owner of the Work because it is a work made for hirealso fails. See Dkt. 16 at 24-26. The Act sets clear guidance regarding works made for hire. It
states that “the employer or other person for whom the work was prepared is considered theauthor for purposes of this title . . . .” 17 U.S.C. § 201(b) (emphasis added). The Act defines a“work made for hire” as either (1) a work “prepared by an employee within the scope of his or
her employment” or (2) a qualifying work “specially ordered or commissioned” by one or moreparties, “if the parties expressly agree in a written instrument signed by them that the work shallbe considered a work made for hire.” Id. § 101 (definition of “work made for hire”) (emphasis
added). 16 Congress’s use of personal pronouns to refer to the employee’s relationship with theemployer indicates that Congress intended such employees to be human, not machines.17 The“Creativity Machine” is not a person, is not Plaintiff’s employee, and is not Plaintiff’s agent.
The work made for hire doctrine does not apply here.
Further, Plaintiff cannot avoid this statutory language by appealing to the Supreme
Court’s decision in Community for Creative Non-Violence (CCNV) v. Reid, 490 U.S. 730 (1989).
See Dkt. 16 at 26. Plaintiff recites the factors the Court considered but ignores that the Court’s

16 Plaintiff does not claim that the Work satisfies the terms of the second clause in thework made for hire definition (relating to “specially ordered or commissioned” works).
Therefore, any argument that the Work was specially ordered or commissioned has been waived.
17 Plaintiff’s argument that computers can be employees for copyright purposes is

extraordinary and could have broad implications for employment and tax law. The Court should
not construe the term “employee” in a way that would disrupt other established areas of law,such as including inanimate machines in the definition of “employee.”
22

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treatment of the work made for hire doctrine assumed that the employee in question is a human.
See CCNV, 490 U.S. at 751-52. The factors the Court provided in CCNV for evaluating whether
an agent is an employee include “the provision of employee benefits” and “the tax treatment of
the hired party.” Id. A machine cannot satisfy these elements: it neither receives benefits nor
pays taxes.
Moreover, CCNV’s importation of the common-law agency doctrine into the Act’s“employee” determination required a human. In CCNV, the Court explained that Congress“intended to describe the conventional master-servant relationship as understood by commonlaw agency doctrine” in referencing employees. CCNV, 490 U.S. at 739–40.18 And it is clearthat agents must be human: “agency” describes “the fiduciary relationship that arises when one
person (a ‘principal’) manifests assent to another person (an ‘agent’) that the agent shall act on
the principal’s behalf and subject to the principal’s control, and the agent manifests assent orotherwise consents so to act.” RESTATEMENT (THIRD) OF AGENCY § 1.01 (emphasis added).
Because the Creativity Machine cannot be an agent, it correspondingly cannot be an employee
under the work made for hire doctrine. 19

18 The Restatement of Agency no longer uses the “master-servant” terminology; in its

place it uses the phrase “respondeat superior.” RESTATEMENT (THIRD) OF AGENCY § 2.04 (AM.
L. INST. 2006).
19 Plaintiff’s semantic argument that he is the Creativity Machine’s employer under the

Act because he “make[s] use of,” i.e., “employs” the machine, Dkt. 16 at 25–26, is unjustifiable
under the statute. Further, this reasoning would allow any human author’s inanimate tool toqualify as an employee—including a pencil, piano, or camera—as one can “make use of” those
implements when creating a work.

23

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D.

Plaintiff’s Policy Arguments are Irrelevant and Fail to Demonstrate that the
Office’s Decision was Arbitrary and Capricious

Much of Plaintiff’s Motion is devoted to policy arguments in favor of copyrightprotection for AI created works. But policy arguments do not demonstrate that the Office’s
decision was arbitrary and capricious under current law. Rather, these arguments simply showthat Plaintiff disagrees with the Office’s decision.20 As the Federal Circuit stated in response tothese same policy arguments raised in Thaler v. Vidal, “Thaler’s policy arguments are
speculative and lack a basis in the text of the Patent Act and in the record. In any event, the text
before us is unambiguous, and we may not ‘elevate vague invocations of statutory purpose over
the words Congress chose.’” 43 F.4th at 1213 (quoting Sw. Airlines Co. v. Saxon, 142 S. Ct.
1783, 1792-93 (2022)).
Here, Plaintiff’s policy arguments do not support his claim that Defendants violated the
APA. Instead, Plaintiff’s arguments merely state his own view that the human-authorship
requirement “frustrates the purpose of the [Copyright] Act which is to promote the disseminationand creation of work.” Dkt. 16 at 1. And Plaintiff made similar arguments to the Office during
the registration process. See Dkt. 13-5; Dkt. 13-7. Plaintiff claimed that because copyrightserves as “a financial incentive to generate expressive works,” copyright for machine-generated
works would provide economic incentives for developing “creative AIs” capable of generating
20 For example, Plaintiff criticizes the Office’s reference to the National Commission on

New Technological Uses of Copyrighted Works (“CONTU”) Report by claiming that the Office“ignores that CONTU did not seriously consider the possibility of AI-Generated Works as they
were considered ‘too speculative’ at the time.” Dkt. 16 at 21 (citation omitted). But the Officerelied on the CONTU Report to support its understanding that “the existing judicial constructionof ‘original work[s] of Authorship’ . . . require[s] human authorship.” Dkt. 13-8 at US_0000035(citing CONTU, FINAL REPORT at 1 (1978) (emphasis added)). While Plaintiff disagrees, as apolicy matter, with what the law should be, the CONTU Report itself observes that Congress
would be responsible for any change to the copyright laws. CONTU, FINAL REPORT at 44–46.
24

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new expressive material. Dkt. 13-7 at US_0000024–25; see also id. at US_0000024 (arguingthat “[b]oth the U.S. Constitution and principles of good public policy require that the Officepermit ‘AI-generated works’ or ‘computer-generated works’ (CGWs) to receive copyrightprotection”).
Regardless of Plaintiff’s own views, the Constitutional purpose of copyright is toincentivize humans to create expressive works. “[T]he Framers intended copyright itself to be
the engine of free expression,” by “suppl[ying] the economic incentive to create and disseminate
ideas.” Harper & Row, Publrs. v. Nation Enters., 471 U.S. 539, 558 (1985). Unlike humans,
machines do not have rights of free expression, and do not need economic incentives to createand disseminate expressive content. Cf. Dkt. 13-7 at US_0000025 (Plaintiff’s admission that“machines do not have legal personality”). For this reason, the Supreme Court has describedcopyright as “advanc[ing] public welfare,” by rewarding “[s]acrificial days devoted to suchcreative activities.” Mazer, 347 U.S. at 219. But machines built to generate works
autonomously—like the Creativity Machine—do not “sacrifice” time. A machine functions as
designed without motivation or reward. 21
In any event, this is not the forum to resolve Plaintiff’s policy arguments. The rapid
development of AI technology, particularly systems capable of generating expressive material,
raises many questions about its interplay with copyright law. See, e.g., James Vincent, The scary
truth about AI copyright is nobody knows what will happen next, THE VERGE (Nov. 15, 2022),
https://www.theverge.com/23444685/generative-ai-copyright-infringement-legal-fair-use21 As the Office’s decision noted, the Supreme Court’s construction of the Copyright

Clause suggested that the Constitution itself limits copyright protection to only creations of“authors,” i.e., humans. See Dkt. 13-8 at US_0000034 n.6 (citing Sarony, 111 U.S. at 56(describing beneficiaries of the Constitution’s intellectual property clause as “authors,” who are,along with inventors, one of “two classes” of “persons”)).
25Case 1:22-cv-01564-BAH Document 17 Filed 02/07/23 Page 32 of 34

training-data (discussing the “key questions from which the topic’s many uncertainties unfold”).
The Office will be addressing these issues in the coming year. Among other things, it ispreparing registration guidance for works generated by using AI, planning public events todiscuss emerging issues, and taking steps to issue a notice of inquiry on complex questions
involving copyright and AI. 22 The Office’s AI initiatives will consider the broader policyquestions surrounding AI, and Plaintiff is welcome to participate in that work. But the Court
here is limited to applying the law as it exists now, not as Plaintiff might wish it to be. Plaintiff’s
policy arguments cannot be the basis for finding the Office’s decision arbitrary or capricious orcontrary to law.
VI.

PLAINTIFF’S REQUESTED RELIEF IS OUTSIDE THE SCOPE OF THE APA
Plaintiff’s Proposed Order requests that the Court order Defendants to “register the

Copyright in the artwork entitled ‘A Recent Entrance to Paradise,’ as applied for by Stephen
Thaler.” Dkt. 16-1. Such relief, however, is outside the scope of the APA. See Coach, Inc. v.
Peters, 386 F. Supp. 2d 495, 498 (S.D.N.Y. 2005) (“plaintiffs have citied no authority, and the
Court is aware of none, that would allow this Court, on a review under the APA, to order [theCopyright Office] to register the works.”) (citing Atari Games Corp. v. Oman, 979 F.2d 242, 247(D.C. Cir. 1992) (remanding to “the district court with instructions to again return the matter ofAtari’s application to the Register for renewed consideration”)).

22 This is an area of congressional interest as well.

Congress recently solicited the
Office’s input on forming a national commission on AI. See Letter from Senators Thom Tillis
and Chris Coons to Kathi Vidal, Under Secretary of Commerce for Intellectual Property andDirector of the U.S. Patent and Trademark Office, and Shira Perlmutter, Register of Copyrights
and Director of the U.S. Copyright Office (Oct. 27, 2022),
https://www.copyright.gov/laws/hearings/Letter-to-USPTO-USCO-on-National-Commission-onAI-1.pdf.
26

Case 1:22-cv-01564-BAH Document 17 Filed 02/07/23 Page 33 of 34

As detailed above, the refusal to register the Work, the agency action at issue, is adiscretionary act and was lawfully done, in accordance with the Office’s policies and procedures.
And, even if the Court were to find that the Office abused its discretion, which it did not, theremedy would not be an order compelling registration, but rather “renewed consideration” of the
copyrightability of the Work. Atari Games Corp., 979 F.2d at 247.
CONCLUSION
The Administrative Record shows that the Office’s refusal to register the Work wassoundly and rationally based on settled law, and not arbitrary or capricious, an abuse of
discretion, or otherwise not in accordance with law. For the reasons stated above, Defendants
respectfully request that the Court deny Plaintiff’s Motion for Summary Judgment and grant
Defendants’ Cross-Motion for Summary Judgment.
Respectfully submitted,
BRIAN M. BOYNTON
Principal Deputy Assistant Attorney General
GARY L. HAUSKEN
Director
Of Counsel:
SCOTT BOLDEN
Deputy Director/s/ Jenna Munnelly
JENNA MUNNELLY
Trial Attorney
Civil Division
U.S. Dept. of Justice
Washington, DC 20530
Tel: (202) 616-1061
E-mail: jenna.e.munnelly@usdoj.gov
Counsel for Defendants

SUZANNE V. WILSON
General Counsel andAssociate Register of Copyrights
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Case 1:22-cv-01564-BAH Document 17 Filed 02/07/23 Page 34 of 34

MARK T. GRAY
Assistant General Counsel
JOHN R. RILEY
Assistant General Counsel
HEATHER L. WALTERS
Attorney
U.S. COPYRIGHT OFFICE
Dated: February 7, 2023

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