Ukrainian IP Office registers works incorporating AI-generated content protected under new sui generis right

The first registered work is a book with a collection of images titled “Easter cards”, where AI-generated images are included. A children’s book and a poetry book, both with AI-generated illustrations, have been registered as well.

In December 2022, Ukrainian Parliament adopted a new copyright law, Law No 2811-IX [see an overview of its main provisions by The IPKat here]. While the main objective of the reform was to implement the EU copyright acquis, the text itself was drafted before June 2022, when Ukraine was granted the status of prospective candidate to join the EU. In practice, the Law includes some digressions from the EU acquis, including in the way Ukraine implemented Art. 17 Directive (EU) 2019/790 [see The IPKat here].

One of the Law’s main “features” is the introduction of a sui generis right for non-original computer-generated subject-matter. The latter is defined as follows:

a subject-matter that differs from existing similar subject-matters and is formed as a result of the functioning of a computer program without the direct participation of an individual in the formation of this subject-matter. Works created by individuals using computer technologies are not considered non-original subject-matters generated by a computer program. (Art. 33(1))

This sui generis right is vested in the authors of the computer program, their heirs, persons to whom the authors or their heirs transferred economic rights to the computer program, or the lawful users of the computer program (Art. 33(2)).

The scope of this sui generis right includes the same economic rights that are granted to works (Art. 12), but does not include moral rights. The sui generis right arises automatically once the subject-matter is generated (Art. 33(5)). The right lasts for 25 years, starting from January 1 following the year of its generation.

Importantly, the sui generis right is only valid if other works and subject-matter that were used in generating this subject-matter were used so lawfully.

Ukrainian legislation foresees a procedure for declarative registration of copyrightable works (Art. 9). This is done by the Ukrainian National Office for Intellectual Property and Innovations (IP Office).

This registration procedure does not cover the sui generis right described above. Yet, it does allow to declaratively register copyright to collective works (such as edited books, encyclopaedias or anthologies). It is under this procedure that the editor of “Easter cards” registered her rights. Unfortunately, no further information can be retrieved from the IP Office’s database as to whether “Easter cards” include original illustrations or only AI-generated images.

As advanced earlier by The IPKat, Art. 33 of the Copyright Law is ambiguous, hence extremely problematic.

First, it does not clearly define who the rightholder is. Instead, it lists both the author and the users of software as eligible rightholders for the sui generis right.

Second, Art. 33 requires that any pre-existing works and subject-matter are used lawfully when generating new non-original subject-matter. This includes any content used to train the software in question. It is unclear how users of generative AI tools would demonstrate such requirement, especially knowing that Ukraine’s text and data mining exception currently only covers uses done for research purposes.

Rather than resolving AI-related issues, it seems that this provision only creates additional legal uncertainty (also in the absence of a declaratory registration procedure).

Moreover, now that Ukraine’s perspective to join the EU has become more realistic, Ukrainian legislation has to be fully aligned with EU acquis (and not just aim at approximating to it as much as reasonable).

To the knowledge of this Kat, the Ukrainian system was originally inspired by the United Kingdom’s approaches to copyright protection for computer-generated works (Section 178 CDPA). While this norm existed when the UK was still an EU Member State, it was not formally designed as a sui generis right. Rather, computer-generated works were included in the list of works potentially eligible for protection.

Currently, no sui generis right for computer-generated works exists in the EU. As such, Ukrainian legislation may raise issues of compatibility in this regard and will have to be amended before Ukraine’s accession to the EU.

Image credits: picture above was generated through DeepAI.