Generative AI and Copyright in Australia

Generative AI technology has proliferated and received significant media attention, especially since the release of ChatGPT in November 2022. The link between AI and intellectual property is fundamental, as intellectual property laws protect AI-generated works, raising questions about whether current intellectual property laws can accommodate AI-generated works concerning ownership and infringement of intellectual property rights.

The outputs generated by AI tools, such as ChatGPT and Stable Diffusion, typically fall into the categories of works protected by the Copyright Act 1968 (Cth). However, works must meet specific criteria to be afforded protection by the Copyright Act. The concept of authorship is at the centre of Copyright protection, which is impossible to meet for AI-generated works due to the absence of a human author.

The Copyright Act requires works to be original for them to be protected. Originality necessitates the exertion of independent intellectual effort, with a degree of human expression of free and creative choice implied in this requirement. Although it does not preclude AI-generated works from meeting the originality threshold, it is challenging to do so since merely inputting prompts into an AI tool is unlikely to be a sufficient exertion of intellectual effort.

Australian courts have previously held that copyright does not protect database compilations, such as the Whitepages and Yellowpages, which result from software processes with minimal human input beyond software creation, lacking clear authorship or originality in their creation. However, this does not exclude software-generated works from being protected by copyright. Still, such protection depends on the level of human input in creating the software-generated work.

Copyright owners have filed several lawsuits in the US, claiming that using their works to train AI models infringes their intellectual property rights. The fair dealings exceptions under the Copyright Act allow for specific uses of protected works that will not be considered an infringement of the copyright in such works. However, the fair dealings exceptions do not currently extend to using works for machine learning.

The Attorney-General’s department commenced a review of Australia’s copyright enforcement regime under the Copyright Act in November 2022. As part of the public consultation process, companies such as Google, Meta, X, and Amazon made submissions calling for expanding Australia’s fair dealings exception to allow for AI data mining for machine learning purposes. The outcome of the Attorney-General’s review is yet to be released.

Dr Stephen Thaler submitted an Australian Patent Application No. 2019363177 for ‘Food container and devices and methods for attracting enhanced attention’ in 2019. He designated his AI system, ‘DABUS,’ as the inventor of the application. However, the Commissioner of Patents Delegate rejected the application for failing to meet the formality requirements outlined in the Patent Regulations 1991 (Cth). According to the regulations, it was not possible to identify a person who could be granted a patent on the application.

Dr Thaler disputed the decision and appealed to the Federal Court of Australia. A single judge of the Federal Court of Australia agreed with Dr Thaler and made a trailblazing decision that received worldwide media attention. In his ruling, the judge stated that the term ‘inventor’ was not defined in the Act or Regulations and that nothing explicitly prohibited an AI from being listed as an inventor in the application.

The Commissioner of Patents challenged Justice Beach’s decision, and the Full Court of the Federal Court of Australia, consisting of an enlarged bench of five judges, overturned the decision. The Full Court held unanimously that an ‘inventor’ must be a ‘natural person’ based on the historical importance of the human inventor’s role in patent applications, the scheme of the Act and Regulations, and the natural meaning of section 15(1) of the Act.

Dr Thaler then sought special leave to appeal that decision to the High Court of Australia, Australia’s superior Court.

The Full Federal Court decided in the case of Commissioner of Patents v Thaler [2022] FCAFC 62 (Thaler 2022), which overturned Justice Beach’s ruling in Thaler v Commissioner of Patents (2021) 160 IPR 72 (Thaler 2021) made a year prior. Justice Beach had previously ruled that an artificial intelligence (AI) system or device could be considered an ‘inventor’ under the Patents Act 1990 (Cth) (Patents Act). Still, the Full Federal Court held that only a natural person can be an inventor under the Patents Act.

This judgment by the Federal Court is consistent with the current position taken by patent offices in the United Kingdom, the United States, New Zealand, and Europe. The ruling also raises important policy questions around AI and inventorship, mainly whether there is any possibility of granting patents in cases considering an AI-built invention as having a human inventor (in this instance, there was no claim for a human inventor).

Dr Thaler applied for special leave to appeal the decision to the High Court of Australia, the Superior Court in Australia. To have the appeal heard, Dr Thaler had to convince fewer judges to grant ‘special leave.’ Most special leave applications are decided based on written submissions filed by the parties.

Dr Thaler’s application was heard in person by three judges – Justices Gordon, Edelman, and Gleeson. During the hearing, Dr Thaler informed the Court that the case had been run in the Federal Court due to particular facts, including that Dr Thaler was not the inventor of the alleged invention, the subject of the application.

The High Court could only consider whether the Commissioner was correct to reject the application solely because it listed a non-natural person as the inventor. The Court could not consider the factual question of whether or not DABUS was the inventor (or co-inventor) of the application. It would have to proceed because DABUS was the inventor, as the courts below had done.

Justice Gordon (speaking for the Court) rejected the special leave application, stating that this case ‘was not the appropriate vehicle to consider the question of principle sought to be agitated’ by Dr Thaler because the Court could not grapple with the factual question of whether or not DABUS was the inventor of the application.

The High Court may address this issue if an ‘appropriate vehicle’ is presented to the Court. It remains to be seen whether the Australian Government will make any changes to the Act or Regulations.






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