USCA1 Opinion

United States Court of Appeals

United States Court of Appeals
For the First Circuit
For the First Circuit
____________________

No. 95-2289

STAR FINANCIAL SERVICES, INC., d/b/a STAR MORTGAGE,

Plaintiff, Appellee,

v.

AASTAR MORTGAGE CORP., a/k/a ASTAR MORTGAGE CORP.,

Defendant, Appellant.
_____________________

No. 96-1323

STAR FINANCIAL SERVICES, INC., d/b/a STAR MORTGAGE

Plaintiff, Appellant,

v.

AASTAR MORTGAGE CORP., a/k/a ASTAR MORTGAGE CORP.

Defendant, Appellee.
____________________

APPEALS FROM THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF MASSACHUSETTS

[Hon. William G. Young, U.S. District Judge]

___________________
____________________

Before

Torruella, Chief Judge,

___________
Stahl and Lynch, Circuit Judges.
______________
____________________

Philip X. Murray with

________________

whom Lorusso & Loud was on brief for Aas

______________

Mortgage Corp.
Gary E. Lambert with whom Lambert & Ricci, P.C. was on brief
_______________
______________________
Star Financial Services, Inc.

____________________

July 16, 1996

____________________

STAHL, Circuit Judge.

STAHL, Circuit Judge.
_____________

Star

Financial

Services,

d/b/a Star Mortgage ("STAR") brought an action against Aastar

Mortgage Corporation ("AASTAR") alleging, inter alia, service

_____ ____

mark infringement and unfair trade practices.

that AASTAR

under both

had unlawfully infringed on

federal and

awarded no damages

agreed

STAR's service mark

Massachusetts law.

on the infringement

A jury

Nonetheless, it

claims.

Based

upon

the finding of infringement, the jury also returned a verdict

in favor of STAR on the unfair practices claim, Mass. Gen. L.

ch. 93A

2 and 11.

Following

AASTAR from

ordered

trial,

any future reference

certain additional

Mass. Gen.

the

L. ch. 93A

11,

court permanently

to itself as

remedial

action.

enjoined

"AASTAR" and

Pursuant

the court also awarded

to

fees to

STAR's attorneys.

to

be in

Shortly thereafter, the court found AASTAR

civil contempt

for violating

awarded attorneys' fees and costs

the

injunction and

to STAR stemming from

the

contempt proceedings.

Both

district

appeal.

AASTAR

contends

that the

court erred in denying its motion for judgment as a

matter of law,

holding

fees.

parties

AASTAR

denying its request for

in civil

STAR appeals the

amount of

contempt

and

a trial continuance,

awarding attorneys'

court's reduction in

attorneys' fees.

Addressing

-22

the requested

these contentions in

turn (providing

facts as necessary), we

affirm the district

court in all respects.

I.
I.
__

Denial of Motion for Judgment As a Matter of Law

Denial of Motion for Judgment As a Matter of Law
________________________________________________

A. Standard of Review
______________________

AASTAR argues that STAR

failed to produce evidence

sufficient

to

establish

preponderance

of the

have

its motion

granted

pursuant

to Fed.

service mark

evidence and,

court's denial of the

Golden Rule Ins. Co. v.

____________________

"[W]e may not

50(a) &

as

(b).2

by

court should

a matter

of law

We review the

Rule 50 motion de novo,

__ ____

evidence in the light most

1995).

thus, the

for judgment

R. Civ. P.

infringement1

examining the

favorable to the nonmovant, STAR.

Atallah, 45 F.3d 512, 516

_______

(1st Cir.

consider the credibility of witnesses,

resolve conflicts in testimony, or evaluate the weight of the

evidence."

1987).

"only if

Wagenmann v.
_________

Reversal

of the

the facts

Adams, 829 F.2d 196, 200

_____

(1st Cir.

denial of the

warranted

and inferences

motion is

'point

so strongly

and

____________________

1.

Although the

this

parties and the district

case as a "trademark" infringement case, it is really a

dispute
two,

over a "service

mark."

however, is not relevant

Athletic Ass'n v.
______________
1989), and

trial.
as

the

difference between the

to our discussion, see Boston

___ ______

Sullivan, 867
________

while considering

mark cases in our discussion.

For

The

F.2d 22, 23

n.1 (1st

Cir.

we will refer to the case as one of "service mark

infringement"

2.

court referred to

first time

Because it

on

both trademark

and service

See id.
___ ___

appeal, AASTAR

requests

did not timely request this

a new

relief below

Fed. R. Civ. P. 59(b) requires, AASTAR may not now obtain

this relief.

-33

overwhelmingly in favor of the movant' that a reasonable jury

could

not

have

Atallah, 45
_______

reached

F.3d at 516

verdict

against

that

(quoting Acevedo-Diaz v.
____________

F.3d 62, 66 (1st Cir. 1993)).

Thus, we present

party."

Aponte, 1
______

the facts in

the light most favorable to STAR as the jury could have found

them.

B. Facts
_________

STAR is in the business

of "mortgage originating";

it receives information from individuals seeking

real estate

mortgage loans, completes applications with that information,

and then searches

to offer the

the secondary market for a

mortgage sought.

STAR

lender willing

has operated throughout

Massachusetts since its incorporation in 1993.

In January

(which

service mark

it had used since the time of its incorporation) with

the Massachusetts

also

1994, STAR registered its

applied

Secretary of

for,

registration of the

and

State.

eventually

mark.

At that time,

received,

The mark consisted

STAR

federal

of the

word

"STAR" in bold, capital letters with a five-point star symbol

in

the

upper

"MORTGAGE"

in

portion

of

the

smaller

capital

letter

letters

"R"

and

the

word

beneath

the

word

"STAR."

STAR used the mark

spent

about

$2,000

per

in all of its advertising.

month

(of

its

$5,000

It

monthly

advertising budget) for

advertisements in the

Suburban Real
_____________

-44

Estate News
___________

("The Suburban"), a free

____________

estate issued

in

several regional

west,

and

distributed

south)

publication about real

editions

throughout

(e.g.,
____

north,

Massachusetts.

STAR's advertisements in The Suburban typically touted, inter

____________
_____

alia, access to various mortgage programs, favorable interest

____

rates, low closing costs, timely credit approval and low down

payments.

In May

originating

placed

1994,

services in

advertisements

advertisements,

favorable

AASTAR commenced

in

promised

interest

approvals.

the

rates,

variety

low

These advertisements

"closing cost

mortgage

Massachusetts area.

The Suburban
_____________

offering

of

closing

that,

also

like STAR's

mortgage programs,

costs

typically would

certificate" to be clipped

It

and

timely

include a

out, entitling the

bearer to a $500.00 credit toward closing costs.

AASTAR's advertisements contained the business name

"AASTAR MORTGAGE CORP." in bold, capital letters.

advertisement

in

The Suburban
____________

symbol superimposed over the

time, AASTAR's

depicted

a five-point

first "A" in "AASTAR."

business cards also depicted

in that same letter,

Its first

star

At one

the star symbol

but eventually the symbol was

moved to

the third and last "A" in "AASTAR."

STAR's

president,

Jay

Austin,

noticed

advertisement in a May 1994 edition of The Suburban.

____________

AASTAR's

He then

wrote various letters to AASTAR's officers, informing them of

-55

his

registered

operations

mark,

requesting

them

to

cease

business

under the "AASTAR" name and advising them to take

various remedial actions.

Actual

AASTAR did not respond.

customers

confused

the

two

mortgage

originating companies.

In November 1995, a STAR customer who

had

an application

already completed

walked into

office with a copy of The Suburban and asked why

____________

offered the

rate advertised.

Austin

the STAR

she was not

explained that AASTAR,

not

STAR, was advertising that rate.

On another occasion, a

customer who had completed an application at STAR returned to

its office with

AASTAR's closing-cost coupon

and, believing

the advertisement was for STAR's services, asked for the $500

credit.

On yet a different occasion in July 1994, a customer

had almost

STAR loan

completed an

application when she

originator with AASTAR's

originator explained

companies, and

presented the

$500 coupon.

that the customer had

after conferring with

The

loan

confused the two

a supervisor, credited

the customer the $500.

Potential

companies.

Austin

initial call

times

during

customers

also

confused

would call individuals who had

to STAR to

inquire into its

these follow-up

calls,

the

the

two

placed an

services; several

individual would

indicate

that

he

or

application with STAR.

in

she

had

"already"

completed

an

When the person's name did not appear

STAR's records, Austin would call again to inquire if the

-66

person was "sure" the application was with STAR; the response

would

with

be affirmative.

"AASTAR" or

Austin

"STAR";

would then inquire

at this

point

if it was

the person

would

indicate, "oh, it was AASTAR."

C. Discussion
______________

The purpose of trademark laws is to prevent the use

of

the same

public about

DeCosta
_______

or similar

the

in

in a

way that

of

the goods

actual source

v. Viacom Int'l, Inc.,

__________________

1992), cert. denied,

_____ ______

source

marks

981 F.2d 602,

509 U.S. 923

(1993).

confuses the

or

service.

605 (1st Cir.

Confusion

about

exists when a buyer is likely to purchase one product

the belief she was buying another and is thus potentially

prevented from obtaining the product she actually wants.

To prevail

in an action for

Id.
___

trademark (or service

mark) infringement, the plaintiff must establish: "1) that he

uses,

using

and thereby 'owns,' a

that

defendant's

same

or

use is

confusion

of

the

similar

likely

harming the plaintiff."

mark, 2) that

to confuse

Id. at 605.
___

may be attributable

plaintiff's

diversion),

or the

virtue

the

of

defendant's own

mark,

and

3)

that

the public,

The harm

the

thereby

caused by the

the defendant's appropriation

goodwill

(perhaps

reduction in

association

the defendant is

of

the value

the

"bad" name (so-called

See id. at 608.

___ ___

-77

leading

of the

plaintiff

to

sales

mark by

with

the

"reverse confusion").

AASTAR

"likelihood

trademark

federal

of

contends

confusion,"

infringement claim

law.

See
___

STAR

an

has failed

essential

under

to

element

prove

of

both Massachusetts

Astra Pharmaceutical Prods., Inc.

___________________________________

Beckman Instruments, Inc.,

__________________________

1983);

that

718

F.2d 1201,

1205 (1st

Pignons S.A. de Mecanique de Precision

________________________________________

and

v.

Cir.

v. Polaroid
________

Corp.,
_____

657 F.2d

482, 486-87

(1st Cir.

1981).

We require

evidence of a "substantial" likelihood of confusion

mere possibility -- and

-- not a

typically refer to eight factors

in

making the assessment:

(1)

the similarity of the marks; (2) the

similarity

of

the goods

[or services];

(3) the relationship between the parties'

channels of trade;

(4) the

relationship

between the parties' advertising; (5) the

classes
evidence

of
of

prospective purchasers;
actual

confusion; (7)

defendant's intent in adopting

(6)
the

the mark;

(8) the strength of the plaintiff's mark.

Astra,
_____

718

F.2d

at

1205.

None

necessarily controlling, but all

Id.;
___

Pignons S.A., 657 F.2d

____________

evidence as to each factor.

of

these

factors

is

of them must be considered.

at 487-92.

AASTAR attacks the

1. Similarity of the marks

___________________________

A jury

the

designations

(including

that

plainly could infer from

"STAR

MORTGAGE"

the star symbols)

prospective

source of the

purchasers

and

the evidence that

"AASTAR

MORTGAGE"

were sufficiently similar such

might

services desired.

-88

be

confused

about the

While AASTAR emphasizes the

dissimilarity

of

some

individual

designations, a

jury could

features

supportably find that

of

the

the total

effect of the two -- including similarity in pronunciation --

was to create a probability of confusion.

2. Similarity of the services

______________________________

AASTAR admits that both companies

services.

Thus,

this

factor

offered the same

indisputably

indicates

likelihood of confusion.

3., 4., 5.
___________

Relationship between the parties'

____________________________________

advertising, the parties' channels of trade, and the classes

_____________________________________________________________

of prospective purchasers.3
_________________________

The parties

both advertised in The Suburban, thus

_____________

providing evidence of overlap in their advertising strategies

and targets.

pointing

AASTAR attempts to

to the

many publications

thus,

the

undisputed evidence

in which

parties "did

advertising channels.

upon the

not

This

STAR did

compete"

that it

not;

by

advertised in

it asserts

in those

argument, however,

unsupportable assumption

advertising

minimize this evidence

that

particular

is premised

that because some

of the

channels differed, distinct classes of consumers

____________________

3.

We

often analyze

these three

factors together,

and we

find it appropriate to do so here.

Equine Technologies, Inc.

_________________________

v. Equitechnology, Inc.,
_____________________

542,

68 F.3d

546 n.5

(1st

Cir.

1995).

-99

were

reached and

the relevant

mortgage-originating

consuming public

advertisements in only

hence, would not be confused.

would view

one source, and

The evidence, however, supports a finding that STAR

and

AASTAR

targeted

purchasers in the same

particular

advertising

the

same

classes

of

prospective

geographical areas, regardless of the

channels employed.

This evidence,

combined with the fact that both companies

advertised in the

same publication,

view these

factors

would allow

(channels

of

a jury

advertising,

to

trade,

and

three

classes of

purchasers) in STAR's favor.

AASTAR additionally argues

established that mortgage-shoppers

and

time

that the trial evidence

are highly

sophisticated

exercise great care in choosing a mortgage (often a one-

purchase)

minimal.

and thus,

the

While this argument

likelihood

of confusion

is not without

is

force, a jury

could find that this

evidence did not overwhelm the

bulk of

other evidence suggestive of confusion.

6. Actual Confusion
____________________

AASTAR

the companies'

concedes that STAR

names actually

source of the services sought.

of this evidence,

purportedly

confused consumers

confused

about the

AASTAR challenges the

however, arguing that it

"biased" STAR employees.

the

presented evidence that

was presented by

AASTAR also complains that

customers

-1010

were

weight

not

most of

identified.

These

arguments,

finder;

our

however, properly

review

of

the

belong before

record

reveals

that

the fact

jury

reasonably could have credited the testimony regarding actual

confusion in favor of STAR.4

7. Intent
__________

AASTAR makes

evidence that it

i.e.,
____

and

much of the

fact that

adopted its business

there was

name in "bad

with the intent

to take advantage

promotion efforts.

Evidence of

no

faith,"

of STAR's goodwill

bad intent,

however,

while potentially

simply

not

probative of likelihood

required

in

trademark

of confusion,

infringement

is

case;

moreover, "a finding of good faith is no answer if likelihood

of

confusion

is

otherwise

established."

President and
______________

Trustees of Colby College v. Colby College-New Hampshire, 508

_________________________
___________________________

F.2d 804, 811-12 (1st Cir. 1975).

8. Strength of the Mark

________________________

AASTAR

regarding the

contends

that

strength of STAR's

evidence that was

there

was

little evidence

service mark and

presented showed that

that the

the mark was

weak.

____________________

4.

AASTAR

difficulties

also

resurrects

it experienced

its

frustrations

in discovery

of witnesses

about
and

documents

needed by it to attack the weight of the testimony

about confusion.
STAR

was

While we agree with the district court that

less than

forthcoming

in

meeting its

obligations, the court

adequately addressed

precluding

STAR

presenting certain

providing

an

customer.
irrelevant to

from
adverse

In the
the

inference

end,

AASTAR's

weight a

jury

discovery

the problem
witnesses

instruction

by

and by

about

one

discovery arguments

are

could give

the

evidence

before it (on proper instructions).

-1111

In assessing a mark's

strength, the trier of

fact considers

evidence of

renown

in

the length of time

the

plaintiff's

plaintiff's

actions

to

the mark has

field

promote

been used, its

of

business,

the

mark.

and

the

Equine
______

Technologies, Inc. v. Equitechnology, Inc., 68 F.3d 542, 547

__________________
_____________________

(1st Cir.

1995).

that STAR's mark

over

The

relevant evidence presented

was in use in the

two years at the time of

here was

relevant market area for

trial, and that STAR expended

several thousand dollars per month in advertising.

Even

support

assuming that this evidence constitutes small

for this factor (and, in fact, STAR admitted at oral

argument

before

strong),

"the strength

factors

to

this

court

of

be considered

that the

the mark

in

mark

is

analyzing

was

but one

not

very

of

eight

the likelihood

of

confusion

will

issue"

and sufficient

sustain a finding of

evidence of

other factors

likelihood of confusion.

Id. at
___

546.

In conclusion, we cannot say that a reasonable jury

could

not have

consideration

supportably

reached

of

find

a verdict

all

of

that

the

the

for

STAR based

factors.

marks and

upon

jury

services

were

similar, the targeted consumers were the same, and there

actual confusion as

to the source of

jury also could have

less-supported factors

-1212

could

very

was

the mortgage services.

given little relative

of intent

weight to the

and strength of

the mark.

While

the

evidence supporting

confusion may

not have

a substantial

likelihood of

been overwhelming, it

was adequate;

the court did not err in denying the motion for judgment as a

matter of law, and we will not disturb the jury's verdict.

II.
II.
___

Denial of Trial Continuance

Denial of Trial Continuance
___________________________

AASTAR

discretion

trial.

in refusing to

On the

entitled

contends

that

first day

of trial,

"DEFENDANT'S MOTION

continuance was

court

grant its motion

abused

its

to continue the

AASTAR filed

TO CONTINUE

ALTERNATIVE, MOTION IN LIMINE."

that

the

a motion

TRIAL OR,

IN THE

In that motion, AASTAR urged

warranted

because

STAR failed

to

produce a witness for deposition despite the court's order to

do

so,

and

because

STAR

was

effectively

"stonewalling"

discovery.

AASTAR's

alternative

witnesses and

continuance

relief of

motion

preclusion

requested

of testimony

preclusion of testimony by

certain previously

also

unproduced documents.

by

the

certain

Austin relating to

The record

shows

that the court granted the "alternative relief" -- the motion

in limine -- and

that indeed, the witnesses in

question did

not testify.

AASTAR

testify

now complains that

unrestricted" and

Austin was

attempts to

court's refusal to grant the continuance.

-1313

"allowed to

assign error

to the

We are unpersuaded

for

two reasons.

relief

First, having

it requested,

court did

AASTAR

not grant the

received the

cannot now

continuance.

alternative

complain that

Second,

while Austin

was allowed to testify about various documents that may

fallen

within the

in limine

objection by AASTAR on

On the

contrary, in

order, the

the

record reveals

have

no

this basis during Austin's testimony.

response to

the trial judge's

inquiries, AASTAR indicated that it had no

careful

objection to most

of the documents introduced through Austin.5

In sum, we find

erred

AASTAR's contention that the court

in denying its request

for a trial

without merit.

III.
III.

continuance to be

____

The Civil Contempt Finding

The Civil Contempt Finding
__________________________

After the jury returned its verdict on November 30,

1995,

the

district

court

issued

a permanent

injunction,

reflected in the following exchange:

THE

COURT:

verdict,

the

Corporation,

In view of

defendant Aastar
its

employees, and all

in

concert

the jury's

agents,

servants,

other persons

therewith,

are

permanently

enjoined from

do business

under the name and

the

style,

Corporation with one

acting
hereby

continuing to

Aastar Mortgage Corporation with

before

Mortgage

Aastar

style of
two A's
Mortgage

A before the style,

____________________

5.

As to the documents that AASTAR did object to (but not on

the grounds of
hearsay grounds,

the in

limine order), one

and another

was precluded

was admitted with

on

an adequate

limiting instruction.

-1414

and they shall

not in the

for

as

so

long

the

Financial

Services

trademark

Star Mortgage,

or

state,

use

their

name in

other

word.

form or fashion

future . .
plaintiff

shall

Star

possess

the

either federal

the letters

S-T-A-R

any combination

with any

Further, they shall

use a logo or

in

in no

depiction

of a five pointed star in relation to any

of those words.

Fourth, they shall in no

fashion refer to
Aastar

themselves as

Mortgage

in

formerly

either

of

its

capacities. . . .
[I]n addition, Aastar Mortgage shall
take

all

reasonable efforts

terminate

to recall,

advertisements

with

the

infringing marks and logos. . . .

MR.

MURRAY

Your Honor,

[Counsel

for

may I be heard

AASTAR]:

on one other

thing?
. . . .
There

are

presently

several loans

consumers about to close within

week

where

submitted
that.
no

the

paperwork

on HUD

In light

forms and

and

the next
has

been

things like

of the fact that there's

damage that's been found that relates

to the

plaintiffs in this

to the

use of that name, the defendants,

in

order

to

provide

consumer, would like to

those loans with
there

would be

no

case relative

harm

to

be able to close

the understanding
no

the

publication

advertising relative to --

and

that
no

THE COURT:

Any

forms that are

out

of Aastar's office, either now before HUD

or any lending

institution, they are not

in my requirement of use of best efforts,

they do

not have to recall

forms.

No

word

Aastar

morning
that

more forms
starting

no form,

office

double A's,

using

any consumer

go out

with the

now.

no paper

Tomorrow
goes

Aastar,

using the star or

single

or

using the

word S T A R.
That's the order of the Court.

-1515

out of

About

employees

one

week

at AASTAR sent

mortgage lenders.

(containing

These

after

the

injunction

name-change facsimiles

issued,

to several

notices displayed the "AASTAR" logo

a star symbol in

the third "A")

in large, bold

letters at the top of the page, and thereafter stated, "WE'VE

CHANGED

OUR NAME;

WE

ARE NOW

KNOWN

AS: AACTION

MORTGAGE

CORP.; PLEASE CORRECT YOUR RECORDS." STAR's

counsel

immediately notified AASTAR's counsel about

the notices, and

AASTAR ceased using them.

moved

and argued

action,

the

use

for

Over one month later, after it had

attorneys' fees

from the

underlying

STAR filed a motion for civil contempt stemming from

of

the

facsimiles.

The

court

then

held

an

evidentiary hearing on that motion.

At the

admitted

to

transmitting the

belief that such

order,

as

hearing, employees of AASTAR

facsimiles,

but

(now AACTION)

professed a

notices were in compliance with the court's

modified.

Specifically,

they

stated that

the

notices were sent only to lenders with loans in progress, and

explained that "their interpretation"

that

the court only

ordered them to "do

could" with respect to pending

that

he

thought he

of the injunction

loans.

could "go

court's injunction by informing

the best that they

One witness indicated

little further"

change with the facsimiles.

than the

lenders (that, he said, were

processing loans that were "out of AASTAR's control")

name

was

of the

When queried by the court,

-1616

however,

all

of

the

witnesses

understood the court's order

acknowledged

that

they

-- specifically, "no paper goes

out of that office using Aastar" -- and that the notices fell

within that language.

In explaining

its ruling on the

motion, the court

acknowledged AASTAR's substantial efforts

injunction,

clear and

but stated

unambiguous

that the

and that

to comply with the

wording of

if there

the

order was

were any

doubts,

clarification or modification from the court should have been

sought.

The

preserve

the

court

found that

goodwill

to

AASTAR,

which

deliberately disobeyed the order.

undoubted

disobedience,"

contempt, and ordered it

the

[it]

"in an

had

effort

no

to

right,"

Having found a "clear and

court held

AASTAR

to pay attorneys' fees to

in

civil

STAR (in

the amount of $750) as well as costs associated with bringing

the contempt proceeding.

On appeal, AASTAR contends that the civil

contempt

finding was "unfair" because the injunction was overly broad,

ambiguous, and impossible to comply with.

preliminary

indicates

injunction,

matter,

that

we

AASTAR

note

of

either

before,

AASTAR

raises these issues for

its

during

effort to avoid the

that nothing

objected

or complained

or

We disagree.

to

the

in

breadth

impossibility

after

of

the contempt

the first time

contempt citation, and

-1717

the

As a

record

of

the

compliance

proceeding.

on appeal in

it does not

argue

that

it

overbreadth.

and

continues

to

suffer

from

the

purported

Thus, we will discuss the issues of the breadth

ability to

comply only

insofar as

they relate

to the

civil contempt adjudication.

Next,

injunctive

Wright et

we agree

order was

with the

not

district court

ambiguous.

See
___

in

the order

was clear and

court

AASTAR to

cease all

ordered

its

star logo,

to

use

the

court

unambiguous).

of the

refrain from

A.

2960 (1995)

civil-contempt proceeding,

must find that

"AASTAR" or

11A Charles

al., Federal Practice and Procedure

_______________________________

(explaining that,

that the

The

trade name

referring

to

itself as

efforts to

mark.

"formerly Aastar

Mortgage," and

recall or cancel advertising

In response to

to use

its best

with the infringing

AASTAR's inquiry about

pending loans

and already-submitted paperwork, the court explained that any

such paperwork

was not

efforts to recall.
_________________

with the

within its

The court completed

following unequivocal

out with the word

requirement to use

form, no paper goes out

its injunctive order

language: "No more

Aastar starting now.

best
____

Tomorrow

forms go

morning no

of that office using Aastar."

That

directive was clear.

Based on

the evidence, we conclude

supportably found that AASTAR deliberately

disobeyed the injunction.

that the court

and unjustifiably

AASTAR's employees testified

that

they

did not intend to violate the injunction, and that they

-1818

transmitted the

was

in

facsimiles in

compliance with

unavailing, however,

the

the belief that

order.

because good

that conduct

Such assertions

faith, or the

are

absence of

willfulness, does not relieve a party from civil contempt

in

the face of a clear order.

336

McComb v. Jacksonville Paper Co.,

______
______________________

U.S. 187, 191 (1949) (explaining that "[a]n act does not

cease

to be

a violation

of a

law and

of a

decree merely

because it may have been done innocently"); Morales-Feliciano

_________________

v. Parole Bd. of P.R., 887 F.2d 1, 5

___________________

(1st Cir. 1989), cert.

_____

denied, 494 U.S. 1046 (1990).

______

While

good faith

impossibility of

how its

887

F.2d

at

5.

Here,

with the

order.

stems from the

Rather,

defense.

however,

injunction was overbroad, AASTAR

particular conduct

compliance

civil contempt,

compliance does constitute a

Morales-Feliciano,
_________________

assuming the

will not excuse

See
___

even

has not shown

impossibility of

the evidence

plainly

shows that

AASTAR's employees voluntarily

chose to transmit

the offending facsimiles.

As

the district

court

correctly

admonished,

if

AASTAR was confused about the scope of the order or felt that

it

was unable to comply,

the court.

See McComb,
___ ______

it should have

336 U.S.

sought relief from

at 192 (stating

that "if

there were extenuating circumstances or if the decree was too

burdensome in

petitioned

operation . .

the

District

. [the

contemnors] could

Court

for

-1919

have

modification,

clarification

seeking

attorney,

or construction

help or

of the

information from

AASTAR's employees

order").

either

"undertook

Instead of

the court

to make

or its

their own

determination of what the decree meant" and thereby "acted at

their peril."

Id.
___

For

the

above

reasons, we

court's adjudication of civil contempt.

IV.
IV.
___

uphold

the

district

Attorneys' Fees Award

Attorneys' Fees Award
_____________________

The district court awarded attorneys' fees to

because

of the

jury's verdict

practices claim.

argues that

two reasons:

that, even if

minimum

See Mass.
___

on the

(1) the

11.

damage

actual damages, it

of

AASTAR

attorneys' fees for

court erroneously instructed

it found no

statutory

Massachusetts unfair

Gen. L. ch. 93A,

the court erred by awarding

STAR

$25.00, and

(2)

the jury

must award

because

no

damages were "actually" found, recovery of attorneys' fees is

precluded.

STAR contends that the court erred awarding less

than the amount it requested.

A.
__

Propriety of Attorneys' Fees Award

__________________________________

STAR prevailed on its

unfair practices claim under

Mass. Gen. L. ch. 93A,

2 and 11.

Section

11 provides, in

part:

If

the

court

finds

in

any

commenced hereunder, that there

a

violation

petitioner

of
shall,

[ch.

93A

action
has been

2],

the

in addition to other
_____________________

-2020

relief provided for by this section

____________________________________
irrespective

of

controversy,
attorneys'

the

be
fees

amount

awarded
and

and
in

reasonable

costs incurred

in

said action.

Mass.

Gen. L.

ch.

93A,

11

(emphasis added).

Another

provision in that section states:

[The complainant], if he has not suffered

any loss of money or property, may obtain
. . .

an injunction if

that

the

it can be

unfair

shown

method

of

competition, act or practice may have the

effect of causing such

loss of money

or

property.

Id.
___

The

minimum of

court

instructed the

$25 must be

awarded if it

practice has occurred under

jury

that a

statutory

finds that

an unfair

Sections 2 and 11 of

Mass. Gen.

L.

ch. 93A.6

on

that

Accordingly,

claim,

even

infringement claims.

the jury awarded

though

it

awarded

$25 in damages

nothing

the

AASTAR contends that because the jury's

verdict indicates that STAR had

not been harmed by

conduct,

precluded

attorneys'

precedent.

on

fees

are

under

AASTAR's

state

law

We disagree.

We note first that

to the

"statutory damages"

issue,

if it

were

because AASTAR failed to object

instruction, our review

necessary

for

our decision,

of that

would

be

____________________

6.

There does not, in fact, appear to be a minimum statutory

damages provision in the statutes at issue in this case.

Mass. Gen. L. ch.

93A

9(a) (providing, in some

minimum damages award of $25).

Cf.
___

cases, for

-2121

seriously limited.

even

Putting aside that issue for now, we find

assuming that the jury

the unfair

practices claim,

had not awarded

any damages on

attorneys' fees still

would be

warranted in light of the grant of injunctive relief.

Section 11 provides that

entitled

to attorneys'

fees

a prevailing claimant

"in addition

to other

is

relief

provided

in

for by this section

controversy."

and irrespective of the amount

Mass. Gen. L. ch.

93A,

11.

The Supreme

Judicial Court of Massachusetts has interpreted that language

to

mean that "relief solely

may not be had" but rather,

relief in

award

Accordingly,

when

damages were

prevailing

fees."

courts have

in order to be

Jet Line,
________

awarded attorneys'

awarded,

but also

where,

plaintiff received injunctive

619 N.E.2d

635,

639 (Mass.

Ct.

entitled to an

537 N.E.2d

Jillian's Billiard Club of Am., Inc. v.

_______________________________________

Inc.,
____

of attorneys' fees

"a plaintiff must be entitled to

some other respect

of attorneys'

in the form

at 115.

fees not

only

as here,

relief only.

the

See
___

Beloff Billiards,
_________________

App. 1993),

review
______

denied,
______

625

N.E.2d 1369

Rennell, No. 931265,

_______

(Mass.

1993 WL

1993);

818555, at *

Informix, Inc.
______________

5 (Mass.

v.

Super.

Ct., Sept. 27, 1993); see also Advanced Sys. Consultants Ltd.
___ ____ ______________________________

v. Engineering Planning and Management, Inc., 899

___________________________________________

832,

833-34 (D.

Mass.

1995); cf.
___

Levy
____

F. Supp.

v. Bendetson,
_________

379

N.E.2d 1121, 1126 (Mass. Ct. App. 1978) (reversing attorneys'

-2222

fees award where

party received no

relief under Section

11

"either by way of damages or injunction or otherwise").

In

support

following language

11,

however,

identifying an

11, that

of

its

position,

AASTAR

from Jet Line: "A plaintiff

_________

cannot

recover attorneys'

unfair or deceptive

unfair or

fees

cites

suing under

for merely

act or practice.

deceptive conduct

the

Under

must have had some

___________________

adverse effect upon the plaintiff, even if it is not

_____________________________________________________________

quantifiable in dollars."
_________________________

537 N.E.2d

at

115

(emphasis

added).

Given the

context of Jet Line, however,

________

we find it

inappropriate to interpret that language as AASTAR seeks.

Jet Line,
_________

the

because of

a question regarding liability

_________

claim; it

court

also appears that,

been questionable, the

relief.

remanded the

attorneys'

fees

In

issue

on the underlying

while actual damages

plaintiff did not request

may have

injunctive

See generally, id.

___ _________ ___

Moreover,

the

language

necessarily inconsistent with an

in

Jet
Line
__________

is

not

award of attorneys' fees to

a plaintiff that receives injunctive relief only.

Section 11

provides for injunctive relief where the unfair practice "may

have the effect of causing .

Mass. Gen. L.

ch. 93A,

11.

. . loss of money or property."

Surely a

demonstrated risk of

future actual

effect"

loss

constitutes an

within the meaning of

would discourage

victims

of

unquantifiable

Jet Line.
________

unfair

trade

"adverse

To hold otherwise

practices

from

-2323

seeking legal redress

until after

actual loss

of money

or

property occurred, even where

the victim demonstrates a risk

of such loss.

B.
__

The Amount of the Award

_______________________

The court

awarded only $18,000 of STAR's requested

$35,153.25 in attorneys' fees, representing some 240 hours of

work

on

by trial counsel and his associate attorney.

the

fee

application,

the

Silverbranch Constr. Corp.,

___________________________

1978), found that,

at the

382 N.E.2d

while STAR's attorneys

unreasonable amount of time

compensated

court,

citing

1065,

In ruling

Heller
______

1071

rate that

the attorneys

court stated,

"[i]t does seem to

$175 per hour

for the

charge."

this Court that

services . .

(Mass.

did not spend

on the action, "it ought

. would

v.

an

not be

The

a rate of

overcompensate

[STAR]

in view of the . . . relative simplicity . . . of the

matter."

The court continued, "[t]herefore,

of the services

to the plaintiff is,

the fair value

in this case, not

the

$35,000 . . . sought by the plaintiffs, but $27,000."

The court

then reduced the award

by an additional

$9,000 to $18,000, explaining that it had considered "factors

that

are implicit

in the

duty of

attorneys to

including:

the

approach that

the

litigation;

settlement
with

the

was

the attorney
the

care

side;

the

lawyer-like preparation of
trial, or its

with

evaluated and

other

which

discussed
prompt

and

the case

for

alternative; the

-2424

took to

faithful

the Court"

[sic]

requirement

imposed upon

counsel

for full and forthcoming discovery.

In light of these

STAR's

counsel had been

factors, the court observed that

deficient in two

respects:

first,

after obtaining a very early trial date, counsel departed for

a hunting trip having

case

not delegated the authority

to handle

preparation or settlement; second, on the eve of trial,

counsel took it

upon himself

to remove a

witness from

his

proposed witness

that

witness,

list despite

and

then

the court's order

failed,

during

to produce

trial,

to

be

"faithfully forthcoming with respect to appropriate discovery

of the witness," also despite a clear court order.

also

was

opined that even

not "unethical,"

entitled to obtain

bar."

The

court

though the conduct

it was

from the

"less than

attorneys who

concluded

that

The court

of STAR's counsel

what the

Court is

practice at

counsel's

its

deficiencies

"stunted the time necessary for discussion of settlement" and

found "very questionable" counsel's unavailability to discuss

settlement

at

all times

prior

to

trial, given

that

the

dispute was essentially over damages.

Massachusetts

law

controls

the

attorneys'

fees

question

here.

Peckham v.
_______

Continental Casualty Ins., 895

__________________________

F.2d 830, 841 (1st Cir. 1990).

extent

STAR

argues that

reduction were erroneous as

Blanco,
______

975 F.2d 934,

the

Our review is plenary to the

court's reasons

a matter of law.

942 (1st Cir.

-2525

1992).

for

the fee

See Lipsett v.
___ _______

To the extent

STAR challenges the court's

determination that the case fits

factually

acceptable reduction

within a legally

review for abuse of discretion.

id.
___

at

937 ("[B]ecause

reasonable

fee

See id. at 942 n.7; see also

___ ___
___ ____

determination

necessarily

of the

involves a

calls, an appellate court is far more

trial court in

theory, we

extent

series

of a

of judgment

likely to defer to the

reviewing fee computations than in many other

situations.").

While there is no "pat formula" for computing a fee

award under Massachusetts law, Peckham, 895

_______

amount

were

awarded should

be determined

objectively worth,"

Heller, 382
______

F.2d at 830, the

by what

the "services

N.E.2d at

1071.

In

making this calculation, the court may consider a variety

factors,

including:

complexity of

the

services,

results secured.

factor

See
___

is necessarily

1934).

of

time

the

amount of

F.2d at

482, 488

dispositive of

the end,

the

damages

the

the

quality of

and

841; Linthicum
_________

(Mass. 1979).

National Shawmut Bank,

______________________

In

expended,

factual issues, the

Peckham, 895
_______

398 N.E.2d

Cummings v.
________

(Mass.

amount

the legal and

attorneys'

Archambault,
___________

the

of

the

v.

No single

services' worth.

188 N.E.

court's

489, 492

calculation

is

"largely discretionary," Linthicum, 398 N.E.2d at 488, and an

_________

appellate court should "defer to any thoughtful rationale and

decision developed by a trial court and . . . avoid extensive

-2626

second guessing."

Grendel's Den, Inc.

___________________

v. Larkin, 749
______

F.2d

945, 950 (1st Cir. 1984).

STAR

first attacks

the court's

from the requested $35,153.25 to $27,000.

initial reduction

STAR contends that

this reduction resulted from "mathematical error" because the

court erroneously

all
___

of his

assumed that counsel charged

work, when in

fact, most

$150/hr. (while the associate

the

rate of $125/hr.).

hours

were

deducted

charged

only

was charged at

attorney's work was charged at

STAR asserts that because only 10.75

at

about

of it

$175/hr. for

$175/hr.,

$260

the

court

(representing

the

should

have

approximate

difference between 10.75 billed at $175/hr. and at $150/hr.),

rather than the $8,153.25 that it did.

Upon

unpersuaded

STAR's

award

by

careful

STAR's

position assumes

at the

review

of

the

assertion of

that the

$175/hr. rate

record,

"mathematical

court, when

for trial

we

are

error."

declining to

counsel, necessarily

intended

instead to award for his work at the $150/hr. rate.

We find, however, that the numbers simply do not support this

underlying assumption.7

____________________

7.

STAR's request for some $35,000

in fees, which the court

found excessive, reflected about 164

counsel

(some

$175/hr.

rate), and

counsel (at
246 hours.
by
find

hours at

the

about

$150/hr. rate,
82 hours

a $125/hr. rate),
Simple

hours of work by

of

others

work by

trial
at the

associate

for a total

of approximately

division of the awarded

amount ($27,000)

the hours expended (246)

reveals that the

court did not

even a $150/hr. rate

reasonable for this

case, not to

mention the $175/hr.

rate.

Thus,

-2727

STAR's argument that

the

Moreover, when STAR

argument

amend

to the

or make

52(b), the

clearly laid out this

district court in

additional

the form of

findings under

court considered and denied

precise

a motion to

Fed.

R. Civ.

P.

the motion, stating:

"The findings are fully adequate under both state and federal

law."

A fair conclusion from the record is that although the

court found

amount

rendered

that counsel

of time

on

the fees

over-lawyering.

had in

the case,

the

excessive and

Thus,

we

fact expended the

simplicity of

warranted a

affirm

the

claimed

the

case

reduction for

court's

initial

reduction from $35,000 to $27,000.

STAR

additional

also contends

fees reduction,

argues that

informed

In

erred in

to $18,000.

reasons for that

matter of law

particular, STAR

the court of

the court

from $27,000

the articulated

insupportable as a

case.

that

his planned

stated that

it would "respect"

that it was

error to

vacation and being unavailable

facts of

when

those plans.

this

its counsel

hunting trip,

then "punish" counsel

STAR

reduction are

and on the

asserts that

its

the court

STAR contends

for taking

his

to handle any developments in

____________________

court erroneously

based

higher

excessive

rate

was

its award

conclusion that the court

to

be reasonable.

Rather,

on its

does not

belief that

support

its

implied

must have found the $150/hr.

it appears that

the

rate

the court found

both

rates excessive, and

adjusted the

STAR

has not

the court

argued that

amount accordingly.

erred in

its apparent

finding that even the $150/hr. rate was excessive or that the
court otherwise erred in calculating the lodestar.

-2828

the

case.8

STAR argues that no reduction should result from

its

deletion of a witness because it ultimately produced the

witness (albeit on

the last

day of trial)

and because

the

court opined that the witness would not have given

favorable to AASTAR in

any event.

STAR argues

testimony

finally that

"stunting the time necessary for discussion of settlement" is

an

impermissible factor

to be

considered in

an attorneys'

fees award.

The

district

court

reduced the

award from $27,000

to $18,000 because

counsel

fulfilled

had

preparation,

not

negotiation

his

and

attorneys'

it found that

obligations

discovery.

in

fees

STAR's

trial

These

considerations, including "the stunting of time necessary for

discussion of settlement," plainly

of

work performed," one of

calculating

We have

the fee award.

reflect upon the "quality

the factors to

See Heller, 382

___ ______

no difficulty finding that

be considered in

N.E.2d at 629.

an attorney's competence

extends

which

to her

may

client.

compliance

with obligations

ultimately affect

the value

Thus, the court did not err

to the

court,

of services

to her

in citing these reasons

in determining the "objective worth" of counsel's services.

____________________

8.

We

find

that, had

most unpersuasive

counsel not taken

have "necessarily" spent more

STAR's

additional assertion

his planned vacation,

he would

time preparing the case which,

in turn, would have resulted in additional attorneys' fees.

-2929

We also uphold

that the

facts of

STAR's assertion

this case

court respected

affected

determination

merit the reduction.9

that the court

vacation plans but then

the

the district court's

to

first "respected" counsel's

"punished" him for it, we

counsel's

As

plans only

note that

insofar as

they

the trial date; in no manner did the court indicate

that counsel was otherwise excused from his trial obligations

while

to

he was on the hunt.

produce a witness, in

think that whether or

With regard to counsel's failure

defiance of the

court's order, we

not the witness ultimately

would have

helped

AASTAR is

obligation.

Finally,

court penalized

the court

hindered

irrelevant to counsel's

counsel for

found that

the

we reject

initial discovery

STAR's assertion

not settling the

counsel's deficiencies

opportunity
___________

for settlement,

reflecting upon his services.

that the

case; rather,

in performance

thus

We cannot say that

negatively

the court

abused its broad discretion in making these determinations.

Therefore,

we

affirm

the

district

court's

attorneys' fees award in all respects.10

IV.
IV.
___

____________________

9.

While STAR argues that the reasons for

the fee reduction

were

erroneous, it

does not

argue that

the degree

of the

reduction was unreasonable.

10.

The court ordered

AASTAR to

pay costs

"in the

prayed for," which was $2,588.24, and AASTAR has

the

amount of that request.

Thus, we

Conclusion
Conclusion
__________

not opposed

will not disturb the

costs award to STAR in the amount of $2,588.24.

-3030

amount

For the foregoing reasons,

and judgment of the district court.

we affirm the fee award

______

-3131