Copyright Commentary

• Citation: Vol. 41 No. 4
• Publication year: 2016
• Author: WILLIAM J. O'BRIEN One LLP

Copyright Commentary

WILLIAM J. O'BRIEN One LLP

MONKEYING WITH COPYRIGHT? - APPLYING THE "CREATIVE SPARK" REQUIREMENT TO CREATIONS OF NON-HUMAN "AUTHORS"

IT HAS BEEN SAID (although it is not clear who said it¹) that an infinite number of monkeys, equipped with typewriters, would eventually recreate the entire works of Shakespeare. Assuming this to be true,² the pressing question for intellectual property lawyers is, who would own the copyright? Or, indeed, can there be a copyright absent a human author?³

Surprisingly, the question of copyrights in works created by monkeys is more than merely fodder for moot-court hypotheticals. The question is now at issue in a real lawsuit, which is awaiting oral argument before the Ninth Circuit.⁴ Although that particular case may be destined for a quick demise on a relatedly narrow ground, the issues that it raises about the connection between creativity and copyright eligibility are likely to become more important and more prevalent as the automated creation of images, sounds, and texts expands and proliferates.

The Monkey Selfie

The case before the Ninth Circuit involves a striking image that went viral on the Internet.⁵ Wildlife photographer David Slater traveled to the Indonesian island of Sulawesi to photograph some of its seven different species of macaques.⁶ Slater says that, during his second day with a troupe of the monkeys, he gave them an opportunity to play with his camera.

I put my camera on a tripod with a very wide angle lens, settings configured such as predictive autofocus, motorwind, even a flashgun, to give me a chance of a facial close up if they were to approach again for a play. I duly moved away and bingo, they moved in, fingering the toy, pressing the buttons and fingering the lens. I was then to witness one of the funniest things ever as they grinned, grimaced and bared teeth at themselves in the reflection of the large glassy lens.... They played with the camera until of course some images were inevitably taken! ⁷

While many of the hundreds of resulting images were blurry or capture only jungle floor, several of them are quite arresting.⁸ One "selfie" in particular attracted worldwide attention. According to Dr. Antje Engelhardt, a primatologist who studies Sulawesi's macaques, the monkey in the picture is a male Macaca nigra (or "crested") macaque that she calls Naruto.⁹

Naruto's Self Portrait¹⁰

Slater asserts ownership of the monkey selfies.¹¹ But he quickly lost control of the images amidst a flurry of Internet reproductions. Websites that posted the photos took the position that "no one owned copyright as the monkey was the creator of the photographs."¹² The U.S. Copyright Office not only denied Slater registrations but adopted a formal rule that, "[t]o qualify as a [copyright-eligible] work of 'authorship' a work must be created by a human being."¹³ The Office's Compendium now gives "[a] photograph taken by a monkey" as a specific example of works that "are not copyrightable."¹⁴

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Despite these setbacks to his claim of exclusive rights in the monkey selfies, Slater still had hopes of obtaining some reward for his efforts in the Indonesian jungle. He sold copies of the photos online and published a book including some of them.¹⁵ Even after all he had been through, it must have been a shock for Slater to learn that he was being sued for infringing photographs that were created using his camera and that he considered to be his own property.

PETA's "Next Friend" Lawsuit

In September 2015, People for the Ethical Treatment of Animals - which calls itself "the largest animal rights organization in the world" - filed a copyright infringement suit in the Northern District of California in the name of Naruto against David Slater, his publisher, and a related company.¹⁶ (Originally, PETA and Dr. Engelhardt jointly sued as "Next Friends" acting on behalf of Naruto.¹⁷ Later, Dr. Engelhardt dropped out of the suit.¹⁸)

PETA is no stranger to bringing legally dubious but highly publicized lawsuits on behalf of animals. It previously sued Sea World on behalf of five orcas, alleging that their captivity violated the Thirteenth Amendment's prohibition on involuntary servitude.¹⁹ Unsurprisingly, the suit against Slater evoked mockery from his counsel:

A monkey, an animal-rights organization and a primatologist walk into federal court to sue for infringement of the monkey's claimed copyright. What seems like the setup for a punchline is really happening. ²⁰

According to Slater's counsel, "Monkey see, monkey sue is not good law - at least not in the Ninth Circuit."²¹

The defendants moved for dismissal of the case. District Judge William H. Orrick granted the motion on the ground that "the Copyright Act does not confer standing upon animals like Naruto...."²² In reaching this decision, Judge Orrick primarily relied upon Cetacean Community v. Bush, in which the Ninth Circuit dismissed a suit on behalf of "all of the world's whales, porpoises, and dolphins" for violations of environmental protection statutes.²³ The Ninth Circuit reasoned in Cetacean that, "if Congress and the President intended to take the extraordinary step of authorizing animals as well as people and legal entities to sue, they could, and should, have said so plainly."²⁴ Judge Orrick held that Naruto has no standing because "the Copyright Act does not 'plainly' extend the concept of authorship or statutory standing to animals. To the contrary, there is no mention of animals anywhere in the Act."²⁵ The judge further noted that "[t]he Supreme Court and Ninth Circuit have repeatedly referred to 'persons' or 'human beings' when analyzing authorship under the Act," and he cited the Copyright Office Compendium.²⁶

PETA appealed the dismissal to the Ninth Circuit, arguing that "[n]othing in the Copyright Act limits its application to human authors."²⁷ According to PETA, "[i]t is not necessary - indeed it is antithetical to the purpose of the Copyright Act - to specify who can be an author, as that question is determined by looking at the attributes of the work sought to be protected."²⁸

In response, Slater treated Cetacean as dispositive of PETA's lack of standing and said, "The only pertinent fact in this case is that Naruto is a monkey suing for copyright infringement."²⁹ Slater devoted most of his appeal brief to his request for attorneys' fees from PETA.³⁰ Citing comments on PETA's website, Slater argued that "[a]sserting objectively unreasonable legal positions for the purpose of making 'legal history' indicates an improper motive [and] suggests that PETA saw pursuing this surefire loser of a case for copyright infringement as a means to gain publicity and donations."³¹

If the Ninth Circuit approves the dismissal for lack of standing - as seems likely - the most interesting issues raised by Naruto's case will have to await litigation another day. Such issues include how to apply the "creativity" requirement for copyrights to photographs and how to apply the requirement to works of any kind that result from non-human agency, whether of animals or machines.

Why Are Photographs Copyrightable?

It was not inevitable that copyrights would be recognized in any photographs at all, and certainly not that copyrights would be accorded to many of the photos that routinely receive them today. In 1865, Congress added photographs and negatives to the statutory list of copyright-eligible works.³² But this left open crucial questions. Did Congress intended to protect all photographs or only some? And to what extent, if at all, could copyrights in photographs pass constitutional muster?

The Supreme Court first considered the copyright eligibility of photographs in 1884, in a case involving a photo of the celebrity aesthete, lecturer, and poet Oscar Wilde by an equally flamboyant pioneer of celebrity photography, Napoleon Sarony.³³

Sarony's role in creating celebrity portraits appears to have been more as a director than a camera operator.

Sarony bragged that he knew nothing about the mechanical or chemical aspects of photography. His stock-in-trade, he said, was composition, grace of outline, and suggestive light and shade. He would dress, light, and pose his subject, then turn away and gaze out the window while his assistant Benjamin Richardson exposed the plate. ³⁴

Sarony's photos of Wilde achieved as much notoriety in their day as Naruto's self-portrait did 130 years later. Like Naruto's selfie, the Wilde photos were subject to massive unauthorized reproduction - including in multiple advertisements.³⁵

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Napoleon Sarony's Photo No. 18 of Oscar Wilde³⁶

Sarony successfully sued Burrow-Giles Lithographic Co. for copyright infringement, obtaining a judgment that was affirmed by the Supreme Court.³⁷ Burrow-Giles, however, argued that "a photograph is not a writing nor the production of an author" and that photographs therefore fell outside the Constitution's authorization to Congress "[t]o promote the progress of science and useful arts, by securing, for limited times to authors and inventors, the exclusive right to their respective writings and discoveries."³⁸ According to Burrow-Giles, Sarony's photograph was "the mere mechanical reproduction of the physical features or outlines of some object animate or inanimate, and involves no originality of thought or any novelty in the intellectual operation connected with its visible reproduction in shape of a picture."³⁹

The Supreme Court found that "[t]he constitutional question is not free from difficulty"⁴⁰ The Court concluded that "the Constitution is broad enough to cover an act authorizing copyright of photographs, so far as they are representatives of original intellectual conceptions of the author."⁴¹ It reached this conclusion in the belief that the Founders had understood copyright "as the exclusive right of a man to the production of his own genius or...