Thale v. Apple Inc.

To recover "indirect profits" for copyright infringement claims in the Ninth Circuit, one must proffer some evidence linking the profits generated by the infringer to the actual act of infringement.

Opinion (Rogers): Taea Thale ("Thale") is a professional photographer who took a promotional photo for the band "She & Him." Thale registered her copyright for the photo on April 15, 2010. Thale granted a limited licence to Merge Media, Ltd. for the promotion of "She & Him" on posters and billboards. In May 2010, Apple Inc. ("Apple") began airing a commercial for the iPhone 3GS which included Thale's photo along with other "She & Him" related media. Thale filed suit against Apple for infringement and sought an award in the amount of actual damages and for any profits Apple gained from the infringement. Apple filed a motion for partial summary judgment on the issue of establishing a nexus between the infringement and Apple's profits. 9th Circuit precedent under Mackie v. Rieser, 296 F.3d 909 (9th Cir. 2002) requires a plaintiff who seeks to recover "indirect profits" to provide some evidence that the infringement at least partially generated the profits reaped by the infringer. Because the photo was only one part of one commercial for a product which already had wide market recognition, Apple argued that Thale could not show any connection between the use of photo and the iPhone 3GS's sales numbers. Thale argued in response that she was required to show how Apple's profits increased because of the infringement, only that there was a nexus between the infringement and the profitability of the product. Thale therefore reasoned that, because the photo was "the centerpiece" of the commercial, a jury could reasonably sales of iPhone 3GS's were somewhat linked to the use of the photo. The Court held that non-speculative evidence of an actual correlation between the infringement and profits reaped was required. The Court therefore ruled that, because Thale had not entered evidence supporting any more than a speculative nexus between the infringement and iPhone 3 profitability, Thale had failed to state a claim upon which the relief of profit disgorgement could granted. The Court GRANTED Apple's motion for partial summary judgement.