Zooey Deschanel Photog Loses Suit Against Apple

OAKLAND, Calif. (CN) - Apple does not need to compensate a photographer for its use of an image of actress Zooey Deschanel's band in an iPhone commercial, a federal judge ruled.

Taea Thale sued Apple for copyright infringement in 2011, claiming that the company lacked permission to include her photo of the band She & Him in a nationwide commercial for iPhone 3GS. The band includes Deschanel, an actress who has in the past shilled for Apple.

The commercial aired from April 5, 2010, through April 18, 2010, showing numerous images including an iPhone 3GS, a demonstration of the phone's Shazam application and album cover art for the band. Thale's photo appears in the montage for less than 5 seconds of the 30-second commercial.

Thale conceded that she licensed the photograph to Merge Media for limited use in magazines and posters to promote the band's appearances, but said the license explicitly excluded the right to use the photo to promote other entities or products. The photographer contended that she did not grant a license Apple.

U.S. District Judge Yvonne Gonzalez Rogers agreed with Apple that Thale failed to "proffer sufficient non-speculative evidence to support a causal relationship between the infringement and the profits generated indirectly from such infringement."

Thale "misinterpreted her burden on this motion for summary judgment and her factual support on causation is lacking," according to the ruling.

The judge rejected Thale's attempt to use 9th Circuit precedent from Polar Bear Prods., Inc. v. Timex Corp. to support her notion that she need show only a "nexus" to receive damages for indirect profit.

That argument "has no support in this circuit," Rogers wrote.

"Under the two-step framework under Section 504(b) for indirect profits, Thale must 'first show a causal nexus between the infringement and the gross revenue,'" she added. "If, and only if, she establishes a causal nexus would Apple 'bear[] the burden of apportioning profits that were not the result of infringement."

Though Thale also mistakenly relied on precedent from different circuits, Rogers still addressed those arguments.

Thale cited an 8th Circuit decision in Andreas v. Volkswagen of America Inc. that reinstated a jury's profit award where the infringing use was "the centerpiece of a commercial that essentially showed nothing but the TT coupe."

Rogers noted, however, that "the infringing use in Andreas is not similar to the use here, nor does its holding support an inference that Thale - who has no comparable evidence to the plaintiff in Andreas - has a sufficient basis to claim profits."

"To the extent that Thale argues that it is Apple's burden to prove that is profits were caused by reasons other than the photo, even the Andreas court noted that a defendant's burden of approving apportionment arises after a plaintiff establishes revenue from the sale of the infringing product," Rogers added.

Likewise Thale also cited examples that involved cases where the "copyrighted image was integral to the product itself and more akin to a direct profit case."

The cited authorities "do not support Thale's argument that a mere 'nexus' is sufficient to meet her burden on summary judgment regarding indirect profits," according to the ruling.

Thale also sank in her attempt to show the photo was the centerpiece of the commercial and helped promote Apple's image, with Rogers calling the argument "irrelevant to the issue before the court."

"Even assuming arguendo that these facts are undisputed, they are not material to causation, and in fact, they fail to address causation between the use and revenue altogether," Rogers wrote. "At best, Thale's facts establish that Apple liked the photo, used it, approved of the 'Concert' commercial, and hoped that it would generate sales of iPhones."

Thale had furthermore tried to argue that "the only reasonable conclusion is that the intentional selection and use of the Thale photograph did have an impact in iPhone sales - no other logical conclusion can reasonably be reached." (Emphasis in ruling.)

Rogers ruled, however, that "logical and reasonableness ... do not equate to causation for the purposes of this motion."

The judge set a case-management conference for July 22.

Thale is represented by A. Poppy Goudsmit of Foster Meadows Ballard PC from Detroit. Apple is represented by David Michael Walsh of Morrison & Foerster in Los Angeles.

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