Picture This: With Copyright, Everything New is Old Again

EXTRA: Oscar Wilde once famously quipped, “The only duty we owe to history is to rewrite it.” So it is somehow fitting that a historic Supreme Court case involving a photograph of Wilde would become a fulcrum point in the latest legal dustup over the proper historic reading of the Copyright Act. The historic case in question is Burrow-Giles Lithographic Co. v. Sarony, decided in 1884. It features prominently in the lawsuit filed by Dr. Stephen Thaler against the U.S. Copyright Office over the office’s refusal to register a piece of art Thaler claims was “created autonomously” by an AI engine of Thaler’s own design.

In his New York studio in 1882, Napoleon Sarony made an elaborately composed photograph of Wilde, which he titled, “Oscar Wilde, No. 18.” After the photo was published, the Burrow-Giles company reproduced it in a lithograph without permission and Sarony sued the company for copyright infringement.

Copyright protection for photographs, like photography itself, was relatively new at the time. Protection had only explicitly been extended by an amendment to the Copyright Act passed by Congress in 1865, in the wake of the enormous cultural impact of photographs published during the Civil War by Matthew Brady and others.

In its defense, Burrows-Giles argued that the 1865 amendment was unconstitutional because photographs were merely the products of a mechanical process and could not qualify as “writings,” or as the production of an “author,” as those terms were used in the Constitution’s grant of copyright authority to Congress (Article I, Section 8, Clause 8). Therefore, the Sarony photograph was not protected by copyright.

The Supreme Court rejected that argument and awarded Sarony $610 (the equivalent of more than $20,000 today). Writing for a unanimous court, Justice Miller stated, Congress had “properly declared [the Constitution’s use of ‘writings’] to include all forms of writing, printing, engraving, etching, &c., by which the ideas in the mind of the author are given visible expression.”

The Court also accepted the trial court’s conclusion that, “by 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 and disposing the light and shade, suggesting and evoking the desired expression, and from such disposition, arrangement, or representation, made entirely by the plaintiff, he produced the picture in suit.” And that was enough for the purposes of copyright.

The Copyright Office cited Sarony in rejecting Thaler’s application to register the AI-produced “A Recent Entrance to Paradise,” arguing that the Court’s ruling made clear that some degree of human agency was the sine qua non for copyright protection. The critical element was what Sarony, the photographer, did, not what the camera did.

In his complaint, Thaler argues the exact opposite, that the key holding in Burrow-Giles v. Sarony is not the requirement of human authorship but that, in the face of new technological developments, the Copyright Act must be read in light of its Constitutional purpose of encouraging the creation of new works.

The appropriate takeaway from Burrow-Giles…is not that AI-Generated Works cannot be protected, but rather that our courts have a long history of purposive interpretation of the Act considering technological evolution. A photograph is, literally, not a writing, but the Supreme Court took a purposive approach by considering what definition would promote the goals of the Copyright Clause, rather than taking a hyper-literal approach that would have frustrated progress.

In its reply brief, filed last week, the Copyright Office reemphasizes its reliance on Burrow-Giles v. Sarony and dismisses Thaler’s arguments as essentially policy positions better addressed by Congress than by the courts.

I’m not qualified to judge which side has the better of the legal argument. But no one today would seriously dispute that the work of a photographer is the work of a human author deserving copyright protection, even though a device at least one step removed from the hand of the photographer is actually performing the fixation of the image. Even in the case of digital photography, where even more automated processes stand between the photographer and the stored arrangement of pixels, the means of fixation is not considered relevant to the issue of authorship.

Now here we are today, 140 years after Napoleon Sarony positioned his camera and pressed the shutter to capture an image, debating whether a new means of fixation should rewrite that history and render authorship irrelevant.

Oscar Wilde would no doubt appreciate the irony.

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