Indian Copyright Office Rejects DABUS Authorship Claim, Holds AI System Cannot Be Recognised as Author
Summary
The Registrar of Copyrights rejected an application filed by Dr. Stephen L. Thaler for registration of the work titled “A Recent Entrance to Paradise”, in which DABUS (Device for the Autonomous Bootstrapping of Unified Sentience) was identified as the author. While the Registrar accepted that the AI-generated artwork satisfied the limited threshold of originality under Section 13 of the Copyright Act, 1957, it held that DABUS could not be recognised as the statutory author under Section 2(d)(vi).
Facts of the Case
Dr. Stephen L. Thaler applied under Section 45 of the Copyright Act for registration of the artistic work “A Recent Entrance to Paradise”, stating that it was first published in the USA in 2016 and identifying DABUS as its author.
According to the Applicant, DABUS was an AI system conceived, created and developed by Dr. Thaler. The system comprised interconnected neural networks and autonomously generated the artwork through processes involving training, association formation, perturbation, monitoring, stabilisation and output generation, without real-time human intervention or a text prompt. Dr. Thaler had, however, designed and configured the system and supplied and curated the visual and linguistic inputs.
The Copyright Office raised objections concerning originality, authorship, first owner-ship and the legal status of DABUS. Despite being given an opportunity during the hearing to amend the application and identify Dr. Thaler as the author, the Applicant declined and continued to maintain DABUS as the author.
Issue before the Registrar
The principal questions before the Registrar were:
- Whether the AI-generated artwork satisfied the originality requirement under Section 13 of the Act;
- Who was “the person who causes the work to be created” under Section 2(d)(vi) of the Act;
- Whether Dr. Thaler could claim first ownership under Sections 17-19 of the Act, while DABUS was identified as the author; and
- Whether DABUS could be recorded merely as the technological system through which the work was generated.
Findings of the Registrar
The Registrar first held that the artwork satisfied the threshold of originality under Section 13 of the Act. Applying Eastern Book Company vs. D.B. Modak, the Registrar observed that copyright does not require novelty or inventive ingenuity, but the work must contain at least a minimal degree of non-trivial creativity and must not be copied, commonplace or mechanically predetermined. The fact that technology was indispensable to producing the work did not, by itself, render the output unoriginal.
On authorship, however, the Registrar drew a distinction between the technological mechanism generating the output and the person to whom authorship is legally attributed. Section 2(d)(vi) specifically identifies the author of a computer-generated work as “the person who causes the work to be created”. It does not confer authorship upon the computer or AI system producing the immediate output.
Applying this test to the facts, the Registrar held that Dr. Thaler had conceived and created DABUS, configured its operation, supplied and curated the inputs, provided textual descriptions and initiated the process that resulted in the particular artwork. Accordingly, notwithstanding DABUS’s autonomous generation of the final visual output, Dr. Thaler was the person who caused the work to be created within the meaning of Section 2(d)(vi) of the Act.
The Registrar rejected the distinction sought to be drawn between an “upstream cause” and an “immediate cause”. Autonomy in execution, it was held, is not synonymous with conception of the work.
The Registrar further held that DABUS was neither a natural nor a juristic person recognised by law, and possessed no independent legal capacity to own property, enforce rights, assign copyright or bear legal obligations. Recognising it as an author would effectively create a new category of technological juristic person, which could not be achieved through administrative interpretation.
Held
The Applicant’s claim that DABUS be treated as the author while Dr. Thaler be recognised as owner was held to be inconsistent with Sections 17-19 of the Act. Since the author is ordinarily the first owner under Section 17 of the Act, a different ownership arrangement requires a statutory exception or valid transfer in accordance with Sections 18 and 19 of the Act. DABUS, being incapable of holding or assigning copyright, could not provide the necessary chain of title.
The Registrar clarified that this did not mean that Dr. Thaler could never be the first owner. Rather, on the facts disclosed, the defect was that the application continued to identify DABUS as author and Dr. Thaler as owner, despite the Registrar finding Dr. Thaler to be the statutory author.
The application was therefore rejected, since the Applicant, despite being afforded an opportunity to correct the authorship particu-lars, deliberately maintained its claim of DABUS authorship. The Registrar expressly left open the possibility of a fresh or appropriately formulated request concerning DABUS merely as the technological system used to generate the work, without attributing legal authorship to it.
Conclusion
The decision draws an important distinction between AI-generated expression and AI authorship. An AI-generated work may satisfy the originality requirement under Section 13 of the Act, but the AI system itself cannot presently be treated as the statutory author under Section 2(d)(vi) of the Act. The controlling enquiry remains who, as a legally recognised person, caused the work to be created, with the Registrar holding that legislative intervention, rather than administrative interpretation, would be required to confer authorship or legal personality upon autonomous AI systems.
Delhi High Court Permits Amendment of Passing Off Suit to Incorporate Infringe-ment Claim Following Subsequent Trademark Registration
Summary
In M/s KRBL Limited v. M/s J.R. Rice India Pvt. Ltd. & Anr., CS(COMM) 701/2016, the Delhi High Court allowed the Plaintiff’s application under Order VI Rule 17 CPC to amend its plaint to incorporate a claim for trademark infringement after the Plaintiff acquired rights in the registered ‘INDIA GATE’ trademark during the pendency of the suit, following which the mark was registered in the Plaintiff’s favour and declared a well-known trademark. The Court held that such amendment did not alter the basic nature or character of the suit, as the claims of passing off and infringement arose from substantially the same set of facts. The Court emphasised that subsequent events can be taken into account to ensure complete adjudication and avoid multiplicity of proceed-ings. While allowing the amendment despite the delay, the Court imposed costs of ₹50,000/- on the Plaintiff.
Facts of the Case
KRBL Limited instituted the suit seeking, inter alia, a permanent injunction restraining the Defendants from using the impugned ‘ROYAL GATE’ trademark/label incorporating the ‘INDIA GATE’ device, or any deceptively similar mark, on the ground of passing off. At the time of institution of the suit, the Plaintiff’s ‘INDIA GATE’ mark was not registered in its favour and, consequently, the suit was predicated on the common law remedy of passing off.
During the pendency of the proceedings, the Plaintiff acquired rights in the registered ‘INDIA GATE’ trademark from Mr. Ram Pratap under an Assignment Deed dated 06.08.2019. The mark was subsequently registered in the Plaintiff’s favour, and the ‘INDIA GATE’ mark was also included in the list of well-known trademarks under the Trade Marks Act, 1999. The Plaintiff accordingly sought to amend the plaint to place these subsequent developments on record and incorporate a consequential claim for infringe-ment.
The Defendants opposed the amendment, contending that it would change the entire complexion of the suit, which had originally been confined to passing off. They also argued that the application was filed after a substantial delay and after the suit had proceeded to trial.
Issue before the Court
Whether a Plaintiff, whose trademark was unregistered at the time of institution of a passing off suit but subsequently becomes registered during the pendency of the proceedings, can amend the plaint to incorporate a claim for trademark infringement, particularly after commencement of trial and after a considerable delay.
Findings of the Court
The Court observed that the power to permit amendment of pleadings under Order VI Rule 17 CPC is wide and is intended to enable the Court to determine the real controversy between the parties. While amendments should not be permitted where they fundamentally alter the nature and character of the original proceedings or cause irremediable prejudice to the opposite party, a liberal approach is warranted where the amendment is necessary for complete adjudication and would avoid multiplicity of litigation.
Relying upon Rajesh Kumar Aggarwal v. K.K. Modi, Pravesh Narula Trading as M/s Capital Enterprises v. Raj Kumar Jain Trading as M/s Bholaram Puranmall & Anr., and other authorities, the Court reiterated that subsequent events occurring during the pendency of a suit may be taken into consideration, particularly where they give rise to a consequential or alternative relief arising from the same factual foundation. The Court noted that in a passing off action, the subsequent registration of the very trademark forming the subject matter of the suit does not introduce an entirely new dispute.
The Court specifically relied upon the principle that the causes of action for passing-off and infringement are founded on substantially similar facts, and that permitting an amendment to introduce an infringement claim following registration of the mark does not change the basic structure of the suit. Refusing such an amendment would instead compel the Plaintiff to institute a separate infringement action, resulting in unnecessary multiplicity of proceedings.
The Court also considered the fact that the amendment application had been filed after commencement of trial. It reiterated that the power to permit amendment is not completely restricted after commencement of trial, provided the requirements governing amendm-ent are satisfied. In particular, the Court emphasised that amendments which are bona fide, legitimate, necessary for determining the real controversy and which do not cause irremediable prejudice should ordinarily be allowed, rather than being rejected on a hyper-technical approach.
Applying these principles, the Court held that the proposed amendment did not change the nature or character of the suit, since the INDIA GATE mark was already the subject matter of the original proceedings and the amendment merely sought to incorporate the legal consequences flowing from its subsequent registration. The Court further held that allowing the amendment was necessary in the interests of justice and to avoid multiplicity of proceedings.
Held
The Delhi High Court allowed the Plaintiff’s application under Order VI Rule 17 CPC and took the amended plaint on record. The amendment was permitted to incorporate the subsequent registration and well-known status of the ‘INDIA GATE’ mark and the consequential claim for infringement.
However, considering the unexplained delay in filing the amendment application, the Court imposed costs of ₹50,000/-, payable to the Delhi High Court Advocates Welfare Trust within two weeks. The Court also permitted the Defendants to file their written statement to the amended plaint and permitted the parties to file additional evidence confined to the amend-ments.
Conclusion
The decision reinforces the principle that subsequent registration of a trademark during the pendency of a passing off action can be incorporated into the existing proceedings by way of amendment, where the underlying factual foundation remains substantially the same. The judgment highlights the Court’s preference for a liberal and justice-oriented approach to amendments, particularly where refusal would compel the Plaintiff to institute parallel proceedings.
The decision is particularly relevant to trademark proprietors who institute passing off proceedings before registration of their marks and subsequently obtain registration during the pendency of the suit. It indicates that subsequent statutory rights may, subject to the principles governing amendment, including the absence of irremediable prejudice, be brought on record in the existing proceedings rather than requiring a fresh infringement action.
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