Ting Ji v. Bose Corp.

United States Court of Appeals
For the First Circuit

Nos. 09-2341
09-2342
09-2343

TING JI,

Plaintiff, Appellant/Cross-Appellee,

v.

BOSE CORPORATION,

Defendant/Third-Party Plaintiff,
Appellee/Cross-Appellant/Third-Party Cross-Appellee,

WHITE/PACKERT, INC.,

Defendant/Third-Party Defendant,
Appellee/Third-Party Cross-Appellant.

APPEALS FROM THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS

[Hon. Nathaniel M. Gorton, U.S. District Judge]

Before
Lynch, Chief Judge,
Torruella and Howard, Circuit Judges.

David K. Friedland, with whom Jaime Rich Vining, Lott &
Friedland, P.A., Michael J. Schlesinger, Michael L. Cotzen and
Schlesinger & Cotzen, P.L. were on brief, for appellant/cross-
appellee.
Gregory A. Madera, with whom Amy L. Brosius, Stephen A.
Marshall and Fish & Richardson P.C. were on brief, for Bose
Corporation.
Mark D. Robins, with whom Michael R. Scott and Nixon Peabody
LLP, were on brief, for White/Packert, Inc.
November 23, 2010
 HOWARD, Circuit Judge. These three consolidated appeals

arise out of the improper use of a model's image to package and

promote a home entertainment system. The model, plaintiff Ting Ji

(Ji), although successful at trial as to liability, insists that a

new trial as to damages is necessary to cure the district court's

purported errors in refusing to compel discovery and instructing

the jury. The maker of the entertainment system, defendant Bose

Corporation (Bose), and Ji's photographer, defendant White/Packert,

Inc. (White), contest other rulings of the district court in their

respective cross-appeals.

After careful review, we affirm in all respects.

I. BACKGROUND

In 2004, Ji participated in a photo shoot for which she

was paid $1,000. On the same day, she signed two documents in

connection with the shoot. The first was her modeling agency's

voucher (Voucher) that confirmed her attendance at the shoot and

entitled her to payment. The Voucher included a release assigning

limited use of Ji's photos; among other things, the release

prohibited the use of images for "packages, point of purchase,

[and] displays." The second instrument that Ji signed was White's

adult release (Release), which included a broad release that

assigned the "absolute right and permission to . . . use" Ji's

images "for any purpose whatsoever."

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 Thinking that it had secured a "total buy-out" of Ji's

images based on the Release, White conveyed the images to Bose.

Bose selected one of those images for the packaging of its 3·2·1®

Series II DVD Home Entertainment System (the 321 System) and

related promotional media. The image Bose selected featured the

321 System with Ji partially embracing a male model as they watched

television from a couch. The photo was taken from behind the

couch, exposing the back of Ji's head and little of her face; as a

result, Ji is barely recognizable. Bose placed the image on the

upper right-hand corner of each side of the 321 System's packaging.

After Ji discovered her image while perusing a Best Buy

store, she sued Bose in federal district court in Florida. She

asserted a false endorsement claim under § 43(a) of the Lanham Act,

15 U.S.C. § 1125(a), a right-to-publicity claim under Florida

Statutes § 540.08, and a common-law claim for invasion of privacy.

Bose successfully moved to transfer the case to federal district

court in Massachusetts, where it is based. Ji amended her

complaint to assert an additional claim for unfair trade practices

under Mass. Gen. Laws ch. 93A.1 She also added White as a

defendant. Bose then filed cross-claims against White for breach

of contract, misrepresentation, indemnification, and contribution.

1
The district court issued a posttrial order finding no
violation of Chapter 93A as to either Bose or White. Ji has not
appealed that ruling.

-4-
 During discovery, Ji sought financial information from

Bose, including sales data concerning its 321 System, on the ground

that she needed that information to prove damages under the Lanham

Act. Bose objected because, as a private company, its financial

information, and particularly information concerning its sales, was

sensitive and closely guarded. Bose also argued that discovery

concerning such information should await the district court's

ruling on Bose's pending and potentially dispositive motion for

partial summary judgment on Ji's Lanham Act claim. The district

court agreed and postponed discovery.

The court eventually granted Bose's partial summary

judgment motion and dismissed Ji's Lanham Act claim. Of the

factors that courts have found necessary to prove false endorsement

under the Lanham Act, the district court concluded that Ji could at

best prove two and that six leaned decidedly in Bose's favor. See

Downing v. Abercrombie & Fitch, 265 F.3d 994, 1007-08 (9th Cir.

2001) (listing factors in false endorsement case). Of critical

importance to the district court, Ji did not show, nor could the

court credibly infer, that her identity (or "mark," in trademark

parlance) was familiar to Bose's target audience.

Despite this setback, and the specter that her extant

discovery requests would be fruitless, Ji again moved to compel

production of Bose's financial information. This time Ji argued

that she still needed that information in order to prove damages on

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her right-to-publicity claim because Florida law entitled her, if

successful, to a "reasonable royalty." Fla. Stat. § 540.08. The

district court initially denied the motion. On further reflection,

however, the court granted it in part and ordered Bose to produce

information "sufficient for [Ji] to inform the jury of the extent

of [Bose's] use" of her image:

This Court has previously ruled that the "reasonable
royalty" language in Fla. Stat. § 540.08 provides for
recovery of compensatory damages which does not implicate
the net worth of the defendant. Nevertheless, the
plaintiff may reasonably argue that her fair
compensation, should she prove a violation of the
statute, ought to depend, to some degree, upon Bose's
usage of her image.

Bose will, therefore, produce to Ji . . .
information sufficient for her to inform the jury of the
extent of its use of the subject photographs. Such
information includes, to the extent that it is available,
1) the number of unit boxes on which her image appeared,
2) the number of point-of-purchase displays that were
produced in the years in which her image was in use and
3) the number of promotional CD-ROMs that were
distributed in the advertisement of the [321 System].
Bose will not be required to produce sales figures with
respect to its [321 System] unless no other metric, such
as those indicated in the preceding sentence, is
ascertainable.

After the close of discovery, Bose and White moved for

summary judgment on Ji's Florida claims. They asserted, and Ji

agreed, that her Florida claims "hinged on" a question of contract

interpretation: whether the Voucher or the Release controlled

Bose's rights with respect to the images of Ji taken by White.

Bose and White argued that the Release controlled because the

Voucher left essential terms blank and was therefore unenforceable.

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Ji countered that the absence of some terms in the Voucher did not

invalidate it. According to Ji, the Voucher controlled because it

was executed earlier in time. At the very least, Ji argued, the

question was more appropriate for the jury because it involved

competing accounts of the parties' intentions. Viewing both

contracts together, the district court concluded that it was

unclear from the plain language which controlled the dispute.

Because the parties submitted conflicting extrinsic evidence, and

had retained expert witnesses in part to opine on this precise

question, the district court denied summary judgment.

The case proceeded to trial. After four days of argument

and testimony, the jury found that Bose violated Ji's publicity and

privacy rights under Florida law but awarded her only $10,000 (a

fraction of her $2 million demand).2 The jury also found that

White was liable to Bose for the award.

2
The first question on the verdict form asked the jury whether
Bose violated Ji's publicity or privacy rights under Florida law
and required a yes-or-no answer. The jury foreman checked the
"yes" box. The second question asked the jury to enter an amount
of damages proved as a result of Bose's violation of Ji's right to
publicity or its invasion of her privacy or both. The jury foreman
wrote "$10,000."
Based on the verdict form's use of the disjunctive, it is
possible that the jury determined that there was no violation of
Fla. Stat. § 540.08, and awarded damages on Ji's common-law privacy
claim only. Whether this possibility impacts our review of the
measure of damages available under § 540.08 is an issue that the
parties do not address. Because the parties agreed below that both
claims turned on the same question (whether Ji consented to the use
of her images), and because we will never know the exact basis of
the jury's determination, we proceed to address the parties'
dispute anyway.

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 After judgment entered, Bose moved for attorneys' fees on

Ji's unsuccessful false endorsement claim under an express

provision in the Lanham Act, 15 U.S.C. § 1117(a) ("[t]he Court in

exceptional cases may award reasonable attorneys' fees to the

prevailing party"), and as a sanction for "vexatious" litigation

under 28 U.S.C. § 1927 (providing for attorneys' fees in cases

where an attorney "unreasonably and vexatiously . . . multiples the

proceedings in any case"). The district court denied the motion on

the ground that Ji's false endorsement claim, while meritless,

failed to satisfy the high standards under either statute for the

imposition of attorneys' fees.

All parties appealed.

II. DISCUSSION

These appeals raise three main issues.

A. Measure of Damages under Florida Statutes § 540.08

Ji's principal grievance is that the district court

fundamentally misunderstood the measure of damages under § 540.08

as compensatory rather than royalty based. Had the court correctly

understood the law, Ji argues, it should have compelled Bose to

produce sales data (number of units sold, revenues, profits),

rather than mere usage data (number of units on which Ji's image

appeared). Ji contends that without sales data the jury could not

calculate a percentage of sales, and therefore could not determine

a reasonable royalty. Ji also argues that the court's omission of

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her proposed royalty-based damages instruction was erroneous. Even

if the jury had the benefit of sales data, Ji postulates, it still

could not have determined a reasonable royalty because the court's

charge restricted any award to compensatory damages. According to

Ji, these errors require a new trial on damages.3

We disagree. In doing so, we need not prophesy whether

the Florida Supreme Court would characterize damages under § 540.08

as compensatory or something else. Instead, we take each of Ji's

two arguments on their own terms and reject them.

1. Motion to Compel

"Discovery orders ordinarily are reviewed for abuse of

discretion." Cusumano v. Microsoft Corp., 162 F.3d 708, 713 (1st

Cir. 1998). This standard is "not appellant-friendly," and we will

not intervene without a "clear showing of manifest injustice, that

is, where the lower court's discovery order was plainly wrong and

resulted in substantial prejudice to the aggrieved party." Dennis

v. Osram Sylvania, Inc., 549 F.3d 851, 860 (1st Cir. 2008) (quoting

Modern Cont'l/Obayashi v. Occupational Safety & Health Review

Comm'n, 196 F.3d 274, 281 (1st Cir. 1999)) (internal quotation

marks omitted). "A decision may be plainly wrong if it is based on

an incorrect legal standard or a misapplication of the law." In re

Subpoena to Witzel, 531 F.3d 113, 117 (1st Cir. 2008).

3
Notably, Ji does not argue on appeal that the jury's $10,000
damages award was unsupported by the evidence.

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 Section 540.08 of the Florida Statutes provides:

The person whose likeness is used . . . may bring an
action to enjoin such unauthorized publication, printing,
display or other public use, and to recover damages for
any loss of injury sustained by reason thereof, including
an amount which would have been a reasonable royalty, and
punitive or exemplary damages.

Fla. Stat. § 540.08(2). The statute does not define a reasonable

royalty, or suggest what data is necessary to calculate what one

might be in any particular set of facts. No opinion of the Florida

Supreme Court, or of Florida's lower appellate courts, does either.

Ji's argument that sales data are necessary to determine

damages under § 540.08 is based on (1) an unpublished decision of

a Florida federal district court, Jackson v. Grupo Indus. Hotelero,

SA, No. 07-22046, 2009 U.S. Dist. LEXIS 116770 (S.D. Fla. Apr. 29,

2009),4 and (2) an analogy to patent law. Neither shows that the

district court abused its discretion when it ordered Bose to

produce usage data in lieu of sales data.

In Jackson, following a bench trial, the district court

found that the Coco Bongo nightclub violated § 540.08 by

misappropriating the likeness of well-known entertainer Curtis

Jackson (a/k/a "50 Cent") and his mark "G-Unit" (short for

"Guerilla Unit," the nom de guerre of Jackson's hip-hop group).

Id. at *25. As for damages under the statute, the district court

4
Of course, decisions of federal trial courts interpreting
state law are not binding on state courts (or on federal appellate
courts attempting to divine how a state court might rule).

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observed that the "reasonable royalty measure of damages is taken

to mean more than simply a percentage of actual profits. The

measure now, very simply, means the actual value of what has been

appropriated." Id. at *30-31 (emphasis supplied) (quoting

University Computing Co. v. Lykes-Youngstown Corp., 504 F.2d 518,

537 (5th Cir. 1974)). To ascertain what that "value" was, the

district court turned to basic principles of Florida's law of

damages: "The fundamental principle of the law of damages is that

the person injured . . . shall have fair and just compensation

commensurate with the loss sustained in consequence of the

defendant's act which gives rise to the action." Id. at *35-36

(quoting MCI WorldCom Network Servs. v. Mastec, Inc., 995 So. 2d

221, 224 (Fla. 2008)). Framework in place, the district court

determined that a lump-sum payment of $200,000 was a reasonable

royalty for Coco Bongo's misappropriation. Id. at *36.

Ji argues that the district court's $200,000 award in

Jackson was "based on $4,654,846 in sales -- a 4.3% royalty rate."

Not true. Nowhere in its analysis of damages under § 540.08 did

the district court mention, let alone consider, Coco Bongo's sales.

See id. at 35-42. It only did so in calculating damages on

Jackson's successful Lanham Act claim. Id. at 42 ("[Jackson] is

entitled to an award of profits for the infringing use of his

trademark only. Compare 15 U.S.C. 1117, with Section 540.08, Fla.

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Stat.") (first emphasis supplied). Here, unlike in Jackson, Ji's

Lanham Act claim was dismissed on summary judgment.

For similar reasons, Ji's reliance on the court's

statement in Jackson, quoted above, that a reasonable royalty means

"more than simply a percentage of actual profits," is mistaken.

Id. at *30 (quoting University Computing, 504 F.2d at 537).

"Judges expect their pronunciamentos to be read in context." In re

Olympic Mills, 477 F.3d 1, 11 (1st Cir. 2007) (quoting Wisehart v.

Davis, 408 F.3d 321, 326 (7th Cir. 2005)) (internal quotation marks

and alternation omitted). The fallacy in Ji's argument is readily

apparent. If the court in Jackson meant that profits were a

component of a reasonable royalty, then why did it disregard Coco

Bongo's profits (which were in the record) when it determined

damages under § 540.08? Ji offers no reasonable explanation for

this discrepancy.

Ji's analogy to patent law measures of damages suffers a

similar, but much quicker, fate. Whatever the variety of

approaches under patent law, see, e.g., University Computing, 504

F.2d at 536-39, the language of the federal statute is different

and there is no basis to assume that § 540.08 was meant to have the

same meaning.

All in all, it is enough that Ji has failed to submit

reliable indicia that the Florida Supreme Court would consider

sales data as necessary components of a reasonable royalty under §

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540.08. Accordingly, the district court did not abuse its

discretion in compelling Bose to produce usage data instead.

If we had any doubts about this conclusion (we do not),

Ji's failure to show prejudice resulting from the district court's

order would remove them. As discussed, the district court ordered

Bose to tell Ji the "number of unit boxes on which her image

appeared." Bose thereafter told Ji, via a supplemental

interrogatory response, that Ji's image appeared on approximately

206,000 units of the 321 System. Based on that data point, and

record evidence that the 321 System sold for $999 per unit, Ji's

expert witness, Richard Wolfe, an attorney specializing in

entertainment law, was able to extrapolate that Bose's gross

revenues from the 321 System were as high as about $206 million.

Applying a rate of between a half percent and one percent of that

figure, Wolfe testified at trial that in his opinion a reasonable

"usage fee" (which he equated with a "royalty") would be between $1

million and $2 million.5 At closing, Ji's counsel, specifically

5
Because Ji hotly contests this point, we provide excerpts
from Wolfe's trial testimony:

[Ji's Counsel:] [B]ased on your experience with these
different types of usages, can you describe for us the
different types of compensation that you have seen models
receive for these different usages?

[Wolfe:] Sure. And, again, it ranges the gamut, and it
also depends upon the stature of the model and it depends
upon the intended use by the ultimate user. . . . [W]here
the image is going to be used for a commercial purpose .
. . we're typically going to negotiate for a flat fee for

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referencing Wolfe's testimony, argued that the jury should award Ji

a $2 million fee based on a one-percent rate.6

the model's time to take the photos, and that we would
negotiate an ongoing fee, sometimes called a royalty,
which would be commensurate with the uses by the user of
the image. . . .

[Ji's Counsel:] [D]o you have an idea of the numerical
circulation of my client's picture by Bose?

[Wolfe:] Yes.

[Ji's Counsel:] And what is that understanding?

[Wolfe:] That the picture was used on the product
approximately 206,000 times. . . .

[Ji's Counsel:] Based on your experience in negotiating
compensation packages for modeling agencies and their
models, do you have an opinion as to the compensation to
which a model whose image is used on $206 million worth
of merchandise might be entitled?

[Wolfe:] I do.

[Ji's Counsel:] What is that opinion? . . .

[Wolfe:] [B]ased on my experience, I would negotiate for
one-half of one percent to one percent, and if you take
206,000 uses at $999 at the low end of the scale, you're
at approximately $1 million is a reasonable utilization
and a reasonable compensation to the model at the low
end, and at the high end, I would say $2 million at the
one percent.

(Emphasis supplied.)
6
For the same reason, we provide an excerpt from Ji's
counsel's closing argument:

Let me tell you how we believe that you [the jury]
should [determine damages]. We believe that you should
follow the testimony, which was unchallenged, by Mr.
Wolfe, who stated his experience with modeling agencies
and models, and he clearly told you that a reasonable fee

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 Ji argues that although Wolfe was able to extrapolate

maximum potential revenues based on the number of units Bose

packaged, he could not determine actual revenues without knowing

how many of those units Bose sold. This is, of course, true. But

this could not have prejudiced Ji. The number of units Bose sold

would have to be equal to or, more likely, less than the number of

units Bose packaged. Therefore, the usage fee Ji's expert

recommended was the upper end of a range based on what actual

revenues could have been. Actual revenues were probably less, but

Bose (perhaps against its interest) did not object and the jury was

free to agree with Wolfe.

2. Jury Instructions

Ji proposed the following two instructions, and others,

to the district court:

[Proposed Jury Instruction No. 22:] If you find for
the Plaintiff on her claims for violation of right to
publicity, you should award Plaintiff an amount of money
that the preponderance of the evidence shows will fairly

would be a usage fee, and I know it's large, but that is
based on $206 million worth of commercial boxes. He said
usage fees are the way that models like Ms. Ji are
compensated. . . . From Mr. Wolfe, he's basically looked
at the situation, and he said that a fee of one-half to
one percent, one-half to one percent of the unauthorized
use of her image on $206 million worth of merchandise
would be a fair and reasonable fee. She's not a
celebrity, she's not a top model, but Mr. Wolfe said that
someone in a like situation, someone who used -- they
used their image in unauthorized ways, a reasonable usage
fee would be between $1 million and $2 million.

(Emphasis supplied.)

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 and adequately compensate Plaintiff for the damages she
has sustained by virtue of Bose's appropriation and
exploitation of Plaintiff's image without her express
consent. If you find that the Plaintiff has been injured
by Bose in violation of her rights under Florida Statute
§ 540.08, she is entitled to receive damages from Bose
which may include a reasonable royalty.

[Proposed Jury Instruction No. 23:] A "royalty" can
be established several different ways. One method of
establishing a royalty is by the total amount of the
[sic] Bose's profits resulting from its exploitation of
Plaintiff's image.

At the charge conference, the district court stated that

it would deliver the substance of proposed instruction 22 but not

23:

I will give the substance of 22. However, Bose's
objections have been noted, and the instructions will
certainly be consistent with this Court's prior rulings.
On No. 23, I am not going to give that. We'll tell the
jury about what compensatory damages are but not how to
calculate them.

Ji's counsel did not object.

The next day, the district court instructed the jury on

damages as follows:

If you find that [Ji] has proved her claim of a
violation of her right to publicity, you may award her
damages for any injury suffered as a result of that
violation. That means that you must determine how much
the plaintiff would have been paid for the uses to which
Bose eventually put her image, which is referred to in
the law as "compensatory damages."

The object of compensatory damages is to award the
plaintiff the equivalent in money to any losses that she
suffered. That requires you to consider all of the
evidence and determine what would have been a fair value
for the way that Bose eventually used the plaintiff's
photographs.

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At sidebar, before the case was sent to the jury, Ji's counsel

objected to neither the district court's instruction as delivered

nor its omission of proposed instruction 23.

Bose argues that Ji's failures to object result in

waiver, or, alternatively, forfeiture of her instructional

challenge.

The failure to object promptly and properly to an

instruction generally forfeits an appellant's right to object on

appeal. See, e.g., Astro-Med, Inc. v. Nihon Kohden Am., Inc., 591

F.3d 1, 20 (1st Cir. 2009) ("Defendants did not object to the

instruction and they therefore forfeited their right to object on

appeal."); see also Fed. R. Civ. P. 51(c)(1) ("A party who objects

to an instruction or the failure to give an instruction must do so

on the record, stating distinctly the matter objected to and the

grounds for the objection."); Fed. R. Civ. P. 51(c)(2)(B) (a party

must “object[ ] promptly after learning that the instruction or

request will be, or has been, given or refused”). "Our

interpretation of Rule 51 is quite strict." Astro-Med, 591 F.3d at

20 (quoting Connelly v. Hyundai Motor Co., 351 F.3d 535, 544 (1st

Cir. 2003)) (internal quotation marks omitted). "There is good

reason for this strictness. We enforce our object-or-forfeit rules

to compel litigants to afford the trial court an opportunity to

cure [a] defective instruction and to prevent the litigants from

ensuring a new trial in the event of an adverse verdict [or

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diminutive damages award] by covertly relying on the error." Id.

(second alteration supplied) (quoting Flynn v. AK Peters, Ltd., 377

F.3d 13, 25 (1st Cir. 2004)) (internal quotation marks omitted).

Forfeited objections may be reviewed for plain error only. Id.

Ji counters with a single argument. She urges us to

recognize, as some circuits have done, a judge-created exception to

Rule 51: that a party need not object when doing so would have

been "futile and unavailing." See, e.g., Gulliford v. Pierce

County, 136 F.3d 1345, 1348 (9th Cir. 1998) ("Where the district

court is aware of the party's concerns with an instruction, and

further objection would be unavailing, we will not require a futile

formal objection."). According to Ji, an objection would have been

pointless because the district court was well aware of her position

on damages in light of earlier motion practice.

We have in the past rejected similar attempts to excuse

a party's failure to object. See, e.g., Elliott v. S.D. Warren

Co., 134 F.3d 1, 6 (1st Cir. 1998) ("[W]e have held that strict

compliance with Rule 51 is mandatory and that a failure of

compliance will not be excused merely because the defaulting party

brought the same matter to the trial judge's attention more

specifically at some other time."); Monomoy Fisheries, Inc. v.

Bruno & Stillman Yacht Co., 625 F.2d 1034, 1036-37 (1st Cir. 1980)

(rejecting party's request to overlook its failure to object on the

ground that "an objection following the charge was unnecessary

-18-
because its position on the issue of mitigation had previously been

clearly made known to the court and it was evident that a further

objection would have been unavailing"). We did so, most recently,

in Gray v. Genlyte Group, Inc., 289 F.3d 128, 134 (1st Cir.), reh'g

denied, 306 F.3d 1151 (1st Cir. 2002) (denying rehearing en banc

despite urging to recognize a futility exception to Rule 51).

In light of our precedent, our review of this claim is

for plain error. Torres-Rivera v. O'Neill-Cancel, 406 F.3d 43, 50

(1st Cir. 2005). "To obtain relief under this standard, the party

claiming error must show (1) an error, (2) that is plain (i.e.,

obvious and clear under current law) (3) that is likely to alter

the outcome, and (4) that is sufficiently fundamental to threaten

the fairness or integrity or public reputation of the judicial

process.” Id. (quoting Connelly, 351 F.3d at 545) (internal

quotation marks omitted). "The requirement that the error is

likely to alter the outcome is particularly important in this

context because '[a]n erroneous jury instruction necessitates a new

trial only if the error could have affected the result of the

jury's deliberations.'" Colon-Millin, 455 F.3d at 41 (quoting

Allen v. Chance Mfg. Co., 873 F.2d 465, 469 (1st Cir. 1989)).

We need not linger on Ji's failure to satisfy these

elements. The district court's decision to omit Ji's proposed

instruction 23 -- that a royalty can constitute a percentage of

sales -- was not plain error for the same reasons that its decision

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to order Bose to produce usage data in lieu of sales data was not

an abuse of discretion. See supra Part II.A.1. Even if the

omission were plain error (it was not), Ji has not shown that it

likely altered the jury's damages award. As discussed, Ji's

testifying expert, Wolfe, extrapolated Bose's revenues and opined

that a reasonable usage fee in this case could be as high as $2

million based on a one-percent rate. See supra Part II.A.1. The

damages instruction that the district court delivered -- charging

the jury "to consider all of the evidence and determine what would

have been a fair value for the way that Bose eventually used the

plaintiff's photographs" -- compelled the jury to consider, rather

than disregard, Wolfe's testimony. In this light, we struggle to

see the probability that an additional instruction that royalties

are sometimes calculated on the basis of sales would have resulted

in a higher damages award.7

7
Rule 51 was amended in 2003, subsequent to our opinion in
Gray, 289 F.3d 128, to provide that "[a] party may assign as error
. . . a failure to give an instruction, if that party properly
requested it and -- unless the court rejected the request in a
definitive ruling on the record -- also properly objected." Fed.
R. Civ. P. 51(d)(1)(B) (emphasis supplied). But Ji neither relies
on nor even references the amended rule. Faigin v. Kelly, 184 F.3d
67, 87 (1st Cir. 1999) ("When put to his mettle, it is the
appellant's burden to establish that he has preserved such a claim
of [instructional] error."); see United States v. Zannino, 895 F.2d
1, 17 (1st Cir. 1990) ("[A] litigant has an obligation to spell out
its arguments squarely and distinctly, or else forever hold its
peace") (quoting Rivera-Gomez v. de Castro, 843 F.2d 631, 635 (1st
Cir. 1988)) (internal quotation marks omitted).
Even if we were to consider Ji's challenge preserved under
Rule 51(d)(1)(B) and thus subject to de novo review, the challenge
would nevertheless fail. It is hornbook law that a properly

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 We also think Ji's proposed instruction 22, supra,

undermines her general critique that the district court

misunderstood damages under § 540.08 as compensatory in nature.

Proposed instruction 22 specifically requested an instruction on

compensatory damages ("you should award Plaintiff an amount of

money that . . . will fairly and adequately compensate Plaintiff

for the damages she has sustained") and was substantially similar

to the instruction that the district court delivered.

In sum, Ji has not shown that the district court's order

partially granting her motion to compel constituted an abuse of

discretion. Nor has she shown that the district court's omission

of her proposed instruction constituted plain error or that it

likely altered the damages award. A new trial on damages is

therefore unwarranted.

B. Challenge to Summary Judgment Denial

In their cross-appeals, Bose and White argue that trial

on Ji's right-to-publicity and privacy claims should never have

taken place in the first instance. They argue that the district

court should have granted their motions for summary judgment on

preserved objection to the failure to give a requested jury
instruction "constitutes reversible error only if it was
prejudicial in light of the entire record." United States v.
Buttrick, 432 F.3d 373, 376 (1st Cir. 2005). Here, as explained
above, the omission of Ji's royalty instruction did not prejudice
her in light of Wolfe's extensive testimony about an appropriate
usage fee and the district court's charge that the jury must
consider that evidence in assessing damages.

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what they contend was a pure legal issue: whether the Voucher or

the Release controlled. If the Voucher was unenforceable, as they

claim, then the Release controlled and through it Ji relinquished

all rights to her images.

We do not reach the merits of their argument because

neither Bose nor White properly preserved it in a motion for

judgment as a matter of law.8

Generally, the denial of a motion for summary judgment is

not reviewable after a full trial and final judgment on the merits.

See, e.g., Eastern Mt. Platform Tennis, Inc. v. Sherwin-Williams

Co., 40 F.3d 492, 500 (1st Cir. 1994); Lama v. Borras, 16 F.3d 473,

477 n.5 (1st Cir. 1994) (declining to address the defendants'

challenge because their "attack on the denial of summary judgment

has been overtaken by subsequent events, namely, a full-dress trial

and an adverse jury verdict."). "The rationale for this rule has

been based on the procedural fact that a denial of a motion for

summary judgment 'is merely a judge's determination that genuine

issues of material fact exist. It is not a judgment, and does not

foreclose trial on issues on which summary judgment was sought.'"

Sherwin-Williams, 40 F.3d at 500 (quoting Glaros v. H.H. Robertson

Co., 797 F.2d 1564, 1573 (Fed. Cir. 1986)). Thus, in order to

8
For the identical reason, we do not reach the merits of
White's separate claim that the district court erred in denying
White summary judgment on Bose's claims against it for breach of
contract, misrepresentation, indemnification, and contribution.

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preserve its challenge for appeal, a disappointed party must

restate its objection in a motion for judgment as a matter of law

("JMOL"). See id. at 497; see also Fed. R. Civ. P. 50. If that

too is unsuccessful, then the propriety of the district court's

denial of JMOL is reviewable on appeal from final judgment.

Sherwin-Williams, 40 F.3d at 497.

We have not recognized an exception to this rule, as some

circuits have done, when a party's challenge is based on a

circumscribed legal error, as opposed to an error concerning the

existence of fact issues.9 Instead, our rule is that even legal

errors cannot be reviewed unless the challenging party restates its

objection in a motion for JMOL. See, e.g., Rivera-Torres v. Ortiz

Velez, 341 F.3d 86, 92-93 (1st Cir. 2003) (declining to review a

party's challenge to the district court's denial of its motion for

summary judgment based on a purported legal error concerning

qualified immunity when that party failed to move for JMOL); Mauser

v. Raytheon Co. Pension Plan for Salaried Employees, 239 F.3d 51,

9
At least two other circuits have excused explicitly the
failure to move for JMOL and have reviewed the challenge anyway if
it was based on a purported legal error. See Chemetall GMBH v. ZR
Energy, Inc., 320 F.3d 714, 720 (7th Cir. 2003); accord Ruyle v.
Continental Oil Co., 44 F.3d 837, 841 (10th Cir. 1994). While this
split may be resolved by the Supreme Court, see Ortiz v. Jordan,
316 Fed. App'x 449 (6th Cir. 2009), cert. granted, 130 S. Ct. 2371
(U.S. Apr. 26, 2010) (No. 09-737), we are bound by our precedents
until the Supreme Court says otherwise. United States v. Holloway,
499 F.3d 114, 118 (1st Cir. 2007) ("it is axiomatic that new panels
are bound by prior panel decisions in the absence of supervening
authority").

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55 (1st Cir. 2001) (declining to review a party's challenge to the

district court's denial of its motion for summary judgment based on

a purported legal error concerning ERISA liability when that party

failed to move for JMOL).

Here, at the close of Ji's case, Bose moved for JMOL on

the grounds that Ji failed to present sufficient evidence (1) to

establish a violation of Chapter 93A, and (2) that she did not

consent to Bose's use of her image (an element of both her right-

to-publicity and privacy claims). White moved on the former ground

only. Following the verdict, Bose orally renewed its motion for

JMOL "with regard to liability."10 White did the same. But at no

point did either Bose or White restate their challenge that the

Voucher was unenforceable as a matter of law. Accordingly, we deem

that challenge waived.11

10
Although seemingly broad, the word "liability" as used in
Bose's renewed motion for JMOL cannot encompass the challenge that
the Voucher was unenforceable because that ground was not
articulated in its earlier motion for JMOL. Correa v. Hosp. San
Francisco, 69 F.3d 1184, 1196 (1st Cir. 1995) ("The movant cannot
use [a renewed motion for JMOL] as a vehicle to introduce a legal
theory not distinctly articulated in its close-of-the-evidence
motion for [JMOL].").
11
We realize that the Supreme Court may address this issue in
Ortiz. See supra note 9. We wish to add, therefore, that Bose's
and White's challenge to summary judgment denial would be
unreviewable even if it were not waived. Although Bose and White
contend that their challenge presents a discrete legal issue, a
fair reading of the record reveals that Bose and White sought
resolution of conflicting factual inferences from competing
contracts and deposition testimony surrounding their creation.
This is evident in (1) the district court's rescript, which found
that the parties' proffered evidence made it "abundantly clear"

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 C. Attorneys' Fees

Bose argues that the district court should have granted

its motion for attorneys' fees. According to Bose, Ji's Lanham Act

claim was fabricated, entirely groundless, and nothing more than a

ruse "to gain access to Bose's sensitive financial data in the hope

of forcing an exorbitant settlement." Bose contends that the

district court failed to give sufficient weight to these factors

and therefore abused its discretion by denying Bose's motion.

We review the denial of a motion for attorneys' fees for

manifest abuse of discretion. Boston's Children First v. City of

Boston, 395 F.3d 10, 13 (1st Cir. 2005). In doing so, we "confine

our review to whether the district court has made a mistake of law

or incorrectly weighed (or failed to weigh) a factor in its

decision." Richardson v. Miller, 279 F.3d 1, 3 (1st Cir. 2002).

We review de novo the legal question of the meaning of "exceptional

cases" under the Lanham Act. Visible Sys. Corp. v. Unisys Corp.,

551 F.3d 65, 81 (1st Cir. 2008). For present purposes, we assume

without deciding that Bose is a "prevailing party" under the Lanham

that "there is a genuine issue of material fact which must be
resolved by a jury," and (2) the parties' appellate briefs, which
refer extensively to conflicting deposition and trial testimony as
evidence of the parties' intentions. See Chesapeake Paper Prods.
Co. v. Stone & Webster Eng'g Corp., 51 F.3d 1229, 1235-36 (4th Cir.
1995) (refusing to review summary judgment denial based on
ambiguity in competing contract documentation). Because we agree
with the district court that fact issues precluded summary
judgment, Bose's and White's challenge falls under the general
prohibition against reviewing summary judgment denials after a full
trial and final judgment on the merits.

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Act. 15 U.S.C. § 1117(a) (providing for attorneys' fees to "the

prevailing party").

The Lanham Act provides for attorneys' fees only in

"exceptional cases." Id. We have yet to construe this criterion

in the context of a prevailing defendant. Cf. Tamko Roofing Prod.,

Inc. v. Ideal Roofing, Co., 282 F.3d 23, 31 (1st Cir. 2002)

(construing criterion in context of prevailing plaintiff, and

holding that "[i]n exceptional cases, attorneys' fees may be

appropriate in circumstances where the acts of infringement were

malicious, fraudulent, deliberate, or willful" or "when equitable

considerations justify such awards") (quoting S. Rep. 93-1400, at

5, 6 (1974)) (internal quotation marks omitted). And we need not

do so today: here, both parties agree that the standard applied by

the district court -- requiring "something less than . . . bad

faith," such as a "plaintiff's use of groundless arguments, failure

to cite controlling law and generally oppressive nature of the

case" -- was correct. For purposes of this appeal, we assume

without deciding that this is true.

Under this standard, the district court's decision to

deny attorneys' fees under § 1117(a) was well within the bounds of

its discretion. Although Ji's Lanham Act claim was defeated on

summary judgment, her claim was not entirely unfounded. As the

district court observed, Ji met her summary judgment burden of

showing both similarity of likeness and similarity of marketing

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channels, two of the factors used to assess the likelihood of

consumer confusion under the Lanham Act.12

Ji's motion practice concerning her routine discovery

requests similarly fails to satisfy the Lanham Act's exceptionality

criterion. There is nothing particularly oppressive about

attempting to discover financial information in connection with an

intellectual property dispute. Although Ji initially sought that

information vis-a-vis her Lanham Act claim, once that claim was

dismissed she requested it again in order to prove damages under §

540.08. On that theory, the district court ultimately compelled

Bose to produce some of the information Ji requested, and she used

that information at trial. See supra Part II.A.1. We see no

evidence in the record that Ji sought or employed that information

for some ulterior purpose.

The inaccuracies in Ji's verified complaint, much touted

by Bose as evidence of perfidiousness, are unfortunate -- even

sloppy -- but they do not rise to the level of improper conduct

12
At oral argument, Bose's counsel asserted that the district
court improperly considered the ultimate success of Ji's other
claims in determining whether to award attorneys' fees on Ji's
unsuccessful Lanham Act claim. We do not read the district court's
rescript quite that way, but in any event we do not reach the
matter because Bose did not raise this argument in its briefs.
Piazza v. Aponte Roque, 909 F.2d 35, 37 (1st Cir. 1990) ("[A] court
of appeals will not consider an issue raised for the first time at
oral argument.").

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necessary to show that this case is exceptional. Many of the

examples Bose provides are jejune; others merely aggrandize Ji's

status in immaterial ways. This, without more, is not enough.

The district court also properly rejected Bose's request

for fees under § 1927. In Jensen v. Philips Screw Co., we held

that the plain language of § 1927 sanctions unreasonable

multiplication, and not commencement, of proceedings: "Congress's

use of the verb 'multipl[y]' in the text of the statute clearly

contemplates that, to be sanctionable thereunder, conduct must have

an effect on an already initiated proceeding. . . . [A] lawyer

cannot violate section 1927 in the course of commencing an action."

546 F.3d 59, 65 (1st Cir. 2008). For this reason, we refused to

sanction an attorney under § 1927 for failing "to vet [his client]

or investigate the bona fides of his claim." Jensen, 546 F.3d at

65. Here, because Bose's argument is based solely on the failure

of Ji's counsel to vet the representations in her verified

complaint, fees under § 1927 are foreclosed.

III. CONCLUSION

For these reasons, the judgment of the district court is

affirmed. The parties shall bear their own costs.

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