Star Financial Services, Inc. v. AASTAR Mortgage Corp.

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 Aastar

Mortgage Corp.
Gary E. Lambert with whom Lambert & Ricci, P.C. was on brief for

Star Financial Services, Inc.

July 16, 1996

STAHL, Circuit Judge. Star Financial Services,
STAHL, Circuit Judge.

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

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

mark infringement and unfair trade practices. A jury agreed

that AASTAR had unlawfully infringed on STAR's service mark

under both federal and Massachusetts law. Nonetheless, it

awarded no damages on the infringement 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 trial, the court permanently enjoined

AASTAR from any future reference to itself as "AASTAR" and

ordered certain additional remedial action. Pursuant to

Mass. Gen. L. ch. 93A 11, the court also awarded fees to

STAR's attorneys. Shortly thereafter, the court found AASTAR

to be in civil contempt for violating the injunction and

awarded attorneys' fees and costs to STAR stemming from the

contempt proceedings.

Both parties appeal. AASTAR contends that the

district court erred in denying its motion for judgment as a

matter of law, denying its request for a trial continuance,

holding AASTAR in civil contempt and awarding attorneys'

fees. STAR appeals the court's reduction in the requested

amount of attorneys' fees. Addressing these contentions in

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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 service mark infringement1 by a

preponderance of the evidence and, thus, the court should

have granted its motion for judgment as a matter of law

pursuant to Fed. R. Civ. P. 50(a) & (b).2 We review the

court's denial of the Rule 50 motion de novo, examining the

evidence in the light most favorable to the nonmovant, STAR.

Golden Rule Ins. Co. v. Atallah, 45 F.3d 512, 516 (1st Cir.

1995). "[W]e may not consider the credibility of witnesses,

resolve conflicts in testimony, or evaluate the weight of the

evidence." Wagenmann v. Adams, 829 F.2d 196, 200 (1st Cir.

1987). Reversal of the denial of the motion is warranted

"only if the facts and inferences 'point so strongly and

1. Although the parties and the district court referred to
this case as a "trademark" infringement case, it is really a
dispute over a "service mark." The difference between the
two, however, is not relevant to our discussion, see Boston

Athletic Ass'n v. Sullivan, 867 F.2d 22, 23 n.1 (1st Cir.

1989), and we will refer to the case as one of "service mark
infringement" while considering both trademark and service
mark cases in our discussion. See id.

2. For the first time on appeal, AASTAR requests a new
trial. Because it did not timely request this relief below
as Fed. R. Civ. P. 59(b) requires, AASTAR may not now obtain
this relief.

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overwhelmingly in favor of the movant' that a reasonable jury

could not have reached a verdict against that party."

Atallah, 45 F.3d at 516 (quoting Acevedo-Diaz v. Aponte, 1

F.3d 62, 66 (1st Cir. 1993)). Thus, we present 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 the secondary market for a lender willing

to offer the mortgage sought. STAR has operated throughout

Massachusetts since its incorporation in 1993.

In January 1994, STAR registered its service mark

(which it had used since the time of its incorporation) with

the Massachusetts Secretary of State. At that time, STAR

also applied for, and eventually received, a federal

registration of the mark. The mark consisted of the word

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

in the upper portion of the letter "R" and the word

"MORTGAGE" in smaller capital letters beneath the word

"STAR."

STAR used the mark in all of its advertising. It

spent about $2,000 per month (of its $5,000 monthly

advertising budget) for advertisements in the Suburban Real

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Estate News ("The Suburban"), a free publication about real

estate issued in several regional editions (e.g., north,

west, south) and distributed throughout 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 1994, AASTAR commenced offering mortgage

originating services in the Massachusetts area. It also

placed advertisements in The Suburban that, like STAR's

advertisements, promised a variety of mortgage programs,

favorable interest rates, low closing costs and timely

approvals. These advertisements typically would include a

"closing cost certificate" to be clipped 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. Its first

advertisement in The Suburban depicted a five-point star

symbol superimposed over the first "A" in "AASTAR." At one

time, AASTAR's business cards also depicted the star symbol

in that same letter, but eventually the symbol was moved to

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

STAR's president, Jay Austin, noticed AASTAR's

advertisement in a May 1994 edition of The Suburban. He then

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

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his registered mark, requesting them to cease business

operations under the "AASTAR" name and advising them to take

various remedial actions. AASTAR did not respond.

Actual customers confused the two mortgage

originating companies. In November 1995, a STAR customer who

had already completed an application walked into the STAR

office with a copy of The Suburban and asked why she was not

offered the rate advertised. Austin 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 completed an application when she presented the

STAR loan originator with AASTAR's $500 coupon. The loan

originator explained that the customer had confused the two

companies, and after conferring with a supervisor, credited

the customer the $500.

Potential customers also confused the two

companies. Austin would call individuals who had placed an

initial call to STAR to inquire into its services; several

times during these follow-up calls, the individual would

indicate that he or she had "already" completed an

application with STAR. When the person's name did not appear

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

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

would be affirmative. Austin would then inquire if it was

with "AASTAR" or "STAR"; at this point the person would

indicate, "oh, it was AASTAR."

C. Discussion

The purpose of trademark laws is to prevent the use

of the same or similar marks in a way that confuses the

public about the actual source of the goods or service.

DeCosta v. Viacom Int'l, Inc., 981 F.2d 602, 605 (1st Cir.

1992), cert. denied, 509 U.S. 923 (1993). Confusion about

source exists when a buyer is likely to purchase one product

in the belief she was buying another and is thus potentially

prevented from obtaining the product she actually wants. Id.

To prevail in an action for trademark (or service

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

uses, and thereby 'owns,' a mark, 2) that the defendant is

using that same or a similar mark, and 3) that the

defendant's use is likely to confuse the public, thereby

harming the plaintiff." Id. at 605. The harm caused by the

confusion may be attributable the defendant's appropriation

of the plaintiff's goodwill (perhaps leading to sales

diversion), or the reduction in the value of the mark by

virtue of the association of the plaintiff with the

defendant's own "bad" name (so-called "reverse confusion").

See id. at 608.

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AASTAR contends that STAR has failed to prove

"likelihood of confusion," an essential element of a

trademark infringement claim under both Massachusetts and

federal law. See Astra Pharmaceutical Prods., Inc. v.

Beckman Instruments, Inc., 718 F.2d 1201, 1205 (1st Cir.

1983); Pignons S.A. de Mecanique de Precision v. Polaroid

Corp., 657 F.2d 482, 486-87 (1st Cir. 1981). We require

evidence of a "substantial" likelihood of confusion -- not a

mere possibility -- and 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 of prospective purchasers; (6)
evidence of actual confusion; (7) the
defendant's intent in adopting the mark;
(8) the strength of the plaintiff's mark.

Astra, 718 F.2d at 1205. None of these factors is

necessarily controlling, but all of them must be considered.

Id.; Pignons S.A., 657 F.2d at 487-92. AASTAR attacks the

evidence as to each factor.

1. Similarity of the marks

A jury plainly could infer from the evidence that

the designations "STAR MORTGAGE" and "AASTAR MORTGAGE"

(including the star symbols) were sufficiently similar such

that prospective purchasers might be confused about the

source of the services desired. While AASTAR emphasizes the

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dissimilarity of some individual features of the

designations, a jury could supportably find that 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 offered the same

services. Thus, this factor indisputably indicates a

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. AASTAR attempts to minimize this evidence by

pointing to the undisputed evidence that it advertised in

many publications in which STAR did not; it asserts that

thus, the parties "did not compete" in those particular

advertising channels. This argument, however, is premised

upon the unsupportable assumption that because some of the

advertising 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., 68 F.3d 542, 546 n.5 (1st Cir.

1995).

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were reached and the relevant consuming public would view

mortgage-originating advertisements in only one source, and

hence, would not be confused.

The evidence, however, supports a finding that STAR

and AASTAR targeted the same classes of prospective

purchasers in the same geographical areas, regardless of the

particular advertising channels employed. This evidence,

combined with the fact that both companies advertised in the

same publication, would allow a jury to view these three

factors (channels of advertising, trade, and classes of

purchasers) in STAR's favor.

AASTAR additionally argues that the trial evidence

established that mortgage-shoppers are highly sophisticated

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

time purchase) and thus, the likelihood of confusion is

minimal. While this argument is not without force, a jury

could find that this evidence did not overwhelm the bulk of

other evidence suggestive of confusion.

6. Actual Confusion

AASTAR concedes that STAR presented evidence that

the companies' names actually confused consumers about the

source of the services sought. AASTAR challenges the weight

of this evidence, however, arguing that it was presented by

"biased" STAR employees. AASTAR also complains that most of

the purportedly confused customers were not identified.

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These arguments, however, properly belong before the fact

finder; our review of the record reveals that a jury

reasonably could have credited the testimony regarding actual

confusion in favor of STAR.4

7. Intent

AASTAR makes much of the fact that there was no

evidence that it adopted its business name in "bad faith,"

i.e., with the intent to take advantage of STAR's goodwill

and promotion efforts. Evidence of bad intent, however,

while potentially probative of likelihood of confusion, is

simply not required in a trademark infringement 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 contends that there was little evidence

regarding the strength of STAR's service mark and that the

evidence that was presented showed that the mark was weak.

4. AASTAR also resurrects its frustrations about
difficulties it experienced in discovery of witnesses and
documents needed by it to attack the weight of the testimony
about confusion. While we agree with the district court that
STAR was less than forthcoming in meeting its discovery
obligations, the court adequately addressed the problem by
precluding STAR from presenting certain witnesses and by
providing an adverse inference instruction about one
customer. In the end, AASTAR's discovery arguments are
irrelevant to the weight a jury could give the evidence
before it (on proper instructions).

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In assessing a mark's strength, the trier of fact considers

evidence of the length of time the mark has been used, its

renown in the plaintiff's field of business, and the

plaintiff's actions to promote the mark. Equine

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

(1st Cir. 1995). The relevant evidence presented here was

that STAR's mark was in use in the relevant market area for

over two years at the time of trial, and that STAR expended

several thousand dollars per month in advertising.

Even assuming that this evidence constitutes small

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

argument before this court that the mark was not very

strong), "the strength of the mark is but one of eight

factors to be considered in analyzing the likelihood of

confusion issue" and sufficient evidence of other factors

will sustain a finding of likelihood of confusion. Id. at

546.

In conclusion, we cannot say that a reasonable jury

could not have reached a verdict for STAR based upon a

consideration of all of the factors. A jury could

supportably find that the marks and services were very

similar, the targeted consumers were the same, and there was

actual confusion as to the source of the mortgage services.

A jury also could have given little relative weight to the

less-supported factors of intent and strength of the mark.

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While the evidence supporting a substantial likelihood of

confusion may not have 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 contends that the court abused its

discretion in refusing to grant its motion to continue the

trial. On the first day of trial, AASTAR filed a motion

entitled "DEFENDANT'S MOTION TO CONTINUE TRIAL OR, IN THE

ALTERNATIVE, MOTION IN LIMINE." In that motion, AASTAR urged

that a continuance was 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 continuance motion also requested the

alternative relief of preclusion of testimony by certain

witnesses and preclusion of testimony by Austin relating to

certain previously unproduced documents. 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 now complains that Austin was "allowed to

testify unrestricted" and attempts to assign error to the

court's refusal to grant the continuance. We are unpersuaded

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for two reasons. First, having received the alternative

relief it requested, AASTAR cannot now complain that the

court did not grant the continuance. Second, while Austin

was allowed to testify about various documents that may have

fallen within the in limine order, the record reveals no

objection by AASTAR on this basis during Austin's testimony.

On the contrary, in response to the trial judge's careful

inquiries, AASTAR indicated that it had no objection to most

of the documents introduced through Austin.5

In sum, we find AASTAR's contention that the court

erred in denying its request for a trial continuance to be

without merit.

III.
III.

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: In view of the jury's
verdict, the defendant Aastar Mortgage
Corporation, its agents, servants,
employees, and all other persons acting
in concert therewith, are hereby
permanently enjoined from continuing to
do business under the name and style of
Aastar Mortgage Corporation with two A's
before the style, Aastar Mortgage
Corporation with one A before the style,

5. As to the documents that AASTAR did object to (but not on
the grounds of the in limine order), one was precluded on
hearsay grounds, and another was admitted with an adequate
limiting instruction.

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and they shall not in the future . . .
for so long as the plaintiff Star
Financial Services shall possess the
trademark Star Mortgage, either federal
or state, use the letters S-T-A-R in
their name in any combination with any
other word. Further, they shall in no
form or fashion use a logo or depiction
of a five pointed star in relation to any
of those words. Fourth, they shall in no
fashion refer to themselves as formerly
Aastar Mortgage in either of its
capacities. . . .
[I]n addition, Aastar Mortgage shall
take all reasonable efforts to recall,
terminate advertisements with the
infringing marks and logos. . . .

MR. MURRAY [Counsel for AASTAR]:
Your Honor, may I be heard on one other
thing?
. . . .
There are presently several loans and
consumers about to close within the next
week where the paperwork has been
submitted on HUD forms and things like
that. In light of the fact that there's
no damage that's been found that relates
to the plaintiffs in this case relative
to the use of that name, the defendants,
in order to provide no harm to the
consumer, would like to be able to close
those loans with the understanding that
there would be no publication and no
advertising relative to --

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 any consumer
forms. No more forms go out with the
word Aastar starting now. Tomorrow
morning no form, no paper goes out of
that office using Aastar, single or
double A's, using the star or using the
word S T A R.
That's the order of the Court.

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About one week after the injunction issued,

employees at AASTAR sent name-change facsimiles to several

mortgage lenders. These notices displayed the "AASTAR" logo

(containing 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. Over one month later, after it had

moved and argued for attorneys' fees from the underlying

action, STAR filed a motion for civil contempt stemming from

the use of the facsimiles. The court then held an

evidentiary hearing on that motion.

At the hearing, employees of AASTAR (now AACTION)

admitted to transmitting the facsimiles, but professed a

belief that such notices were in compliance with the court's

order, as modified. Specifically, they stated that the

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

explained that "their interpretation" of the injunction was

that the court only ordered them to "do the best that they

could" with respect to pending loans. One witness indicated

that he thought he could "go a little further" than the

court's injunction by informing lenders (that, he said, were

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

name change with the facsimiles. When queried by the court,

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however, all of the witnesses acknowledged that they

understood the court's order -- 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 to comply with the

injunction, but stated that the wording of the order was

clear and unambiguous and that if there were any doubts,

clarification or modification from the court should have been

sought. The court found that AASTAR, "in an effort to

preserve the goodwill to which [it] had no right,"

deliberately disobeyed the order. Having found a "clear and

undoubted disobedience," the court held AASTAR in civil

contempt, and ordered it to pay attorneys' fees to 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. We disagree. As a

preliminary matter, we note that nothing in the record

indicates that AASTAR objected to the breadth of the

injunction, or complained of impossibility of compliance

either before, during or after the contempt proceeding.

AASTAR raises these issues for the first time on appeal in

its effort to avoid the contempt citation, and it does not

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argue that it continues to suffer from the purported

overbreadth. Thus, we will discuss the issues of the breadth

and ability to comply only insofar as they relate to the

civil contempt adjudication.

Next, we agree with the district court that the

injunctive order was not ambiguous. See 11A Charles A.

Wright et al., Federal Practice and Procedure 2960 (1995)

(explaining that, in civil-contempt proceeding, the court

must find that the order was clear and unambiguous). The

court ordered AASTAR to cease all use of the trade name

"AASTAR" or its star logo, to refrain from referring to

itself as "formerly Aastar Mortgage," and to use its best

efforts to recall or cancel advertising with the infringing

mark. In response to AASTAR's inquiry about pending loans

and already-submitted paperwork, the court explained that any

such paperwork was not within its requirement to use best

efforts to recall. The court completed its injunctive order

with the following unequivocal language: "No more forms go

out with the word Aastar starting now. Tomorrow morning no

form, no paper goes out of that office using Aastar." That

directive was clear.

Based on the evidence, we conclude that the court

supportably found that AASTAR deliberately and unjustifiably

disobeyed the injunction. AASTAR's employees testified that

they did not intend to violate the injunction, and that they

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transmitted the facsimiles in the belief that that conduct

was in compliance with the order. Such assertions are

unavailing, however, because good faith, or the absence of

willfulness, does not relieve a party from civil contempt in

the face of a clear order. McComb v. Jacksonville Paper Co.,

336 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 will not excuse civil contempt,

impossibility of compliance does constitute a defense. See

Morales-Feliciano, 887 F.2d at 5. Here, however, even

assuming the injunction was overbroad, AASTAR has not shown

how its particular conduct stems from the impossibility of

compliance with the order. Rather, 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, it should have sought relief from

the court. See McComb, 336 U.S. at 192 (stating that "if

there were extenuating circumstances or if the decree was too

burdensome in operation . . . [the contemnors] could have

petitioned the District Court for a modification,

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clarification or construction of the order"). Instead of

seeking help or information from either the court or its

attorney, AASTAR's employees "undertook to make their own

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

their peril." Id.

For the above reasons, we uphold the district

court's adjudication of civil contempt.

IV.
IV.

Attorneys' Fees Award
Attorneys' Fees Award

The district court awarded attorneys' fees to STAR

because of the jury's verdict on the Massachusetts unfair

practices claim. See Mass. Gen. L. ch. 93A, 11. AASTAR

argues that the court erred by awarding attorneys' fees for

two reasons: (1) the court erroneously instructed the jury

that, even if it found no actual damages, it must award a

minimum statutory damage of $25.00, and (2) 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 action
commenced hereunder, that there has been
a violation of [ch. 93A 2], the
petitioner shall, in addition to other

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relief provided for by this section and

irrespective of the amount in
controversy, be awarded reasonable
attorneys' fees and 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 it can be shown
that the . . . unfair method of
competition, act or practice may have the
effect of causing such loss of money or
property.

Id.

The court instructed the jury that a statutory

minimum of $25 must be awarded if it finds that an unfair

practice has occurred under Sections 2 and 11 of Mass. Gen.

L. ch. 93A.6 Accordingly, the jury awarded $25 in damages

on that claim, even though it awarded nothing on the

infringement claims. AASTAR contends that because the jury's

verdict indicates that STAR had not been harmed by AASTAR's

conduct, attorneys' fees are precluded under state law

precedent. We disagree.

We note first that because AASTAR failed to object

to the "statutory damages" instruction, our review of that

issue, if it were necessary for our decision, would be

6. There does not, in fact, appear to be a minimum statutory
damages provision in the statutes at issue in this case. Cf.

Mass. Gen. L. ch. 93A 9(a) (providing, in some cases, for
minimum damages award of $25).

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seriously limited. Putting aside that issue for now, we find

even assuming that the jury had not awarded any damages on

the unfair practices claim, attorneys' fees still would be

warranted in light of the grant of injunctive relief.

Section 11 provides that a prevailing claimant is

entitled to attorneys' fees "in addition to other relief

provided for by this section and irrespective of the amount

in controversy." Mass. Gen. L. ch. 93A, 11. The Supreme

Judicial Court of Massachusetts has interpreted that language

to mean that "relief solely in the form of attorneys' fees

may not be had" but rather, "a plaintiff must be entitled to

relief in some other respect in order to be entitled to an

award of attorneys' fees." Jet Line, 537 N.E.2d at 115.

Accordingly, courts have awarded attorneys' fees not only

when damages were awarded, but also where, as here, the

prevailing plaintiff received injunctive relief only. See

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

Inc., 619 N.E.2d 635, 639 (Mass. Ct. App. 1993), review

denied, 625 N.E.2d 1369 (Mass. 1993); Informix, Inc. v.

Rennell, No. 931265, 1993 WL 818555, at * 5 (Mass. Super.

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

v. Engineering Planning and Management, Inc., 899 F. Supp.

832, 833-34 (D. Mass. 1995); cf. Levy v. Bendetson, 379

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

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fees award where party received no relief under Section 11

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

In support of its position, AASTAR cites the

following language from Jet Line: "A plaintiff suing under

11, however, cannot recover attorneys' fees for merely

identifying an unfair or deceptive act or practice. Under

11, that unfair or deceptive conduct 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. In

Jet Line, the court remanded the attorneys' fees issue

because of a question regarding liability on the underlying

claim; it also appears that, while actual damages may have

been questionable, the plaintiff did not request injunctive

relief. See generally, id.

Moreover, the language in Jet Line is not

necessarily inconsistent with an 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 . . . loss of money or property."

Mass. Gen. L. ch. 93A, 11. Surely a demonstrated risk of

future actual loss constitutes an unquantifiable "adverse

effect" within the meaning of Jet Line. To hold otherwise

would discourage victims of unfair trade practices from

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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 by trial counsel and his associate attorney. In ruling

on the fee application, the court, citing Heller v.

Silverbranch Constr. Corp., 382 N.E.2d 1065, 1071 (Mass.

1978), found that, while STAR's attorneys did not spend an

unreasonable amount of time on the action, "it ought not be

compensated at the rate that the attorneys charge." The

court stated, "[i]t does seem to this Court that a rate of

$175 per hour for the services . . . would overcompensate

[STAR] in view of the . . . relative simplicity . . . of the

matter." The court continued, "[t]herefore, the fair value

of the services to the plaintiff is, 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 the Court"

including:

the approach that the attorney took to
the litigation; the care with which
settlement was evaluated and discussed
with the other side; the prompt and
lawyer-like preparation of the case for
trial, or its alternative; the faithful

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[sic] requirement imposed upon counsel
for full and forthcoming discovery.

In light of these factors, the court observed that

STAR's counsel had been deficient in two respects: first,

after obtaining a very early trial date, counsel departed for

a hunting trip having not delegated the authority to handle

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

counsel took it upon himself to remove a witness from his

proposed witness list despite the court's order to produce

that witness, and then failed, during trial, to be

"faithfully forthcoming with respect to appropriate discovery

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

also opined that even though the conduct of STAR's counsel

was not "unethical," it was "less than what the Court is

entitled to obtain from the attorneys who practice at its

bar." The court concluded that counsel's 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). Our review is plenary to the

extent STAR argues that the court's reasons for the fee

reduction were erroneous as a matter of law. See Lipsett v.

Blanco, 975 F.2d 934, 942 (1st Cir. 1992). To the extent

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STAR challenges the court's determination that the case fits

factually within a legally acceptable reduction theory, we

review for abuse of discretion. See id. at 942 n.7; see also

id. at 937 ("[B]ecause determination of the extent of a

reasonable fee necessarily involves a series of judgment

calls, an appellate court is far more likely to defer to the

trial court in reviewing fee computations than in many other

situations.").

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

award under Massachusetts law, Peckham, 895 F.2d at 830, the

amount awarded should be determined by what the "services

were objectively worth," Heller, 382 N.E.2d at 1071. In

making this calculation, the court may consider a variety of

factors, including: the amount of time expended, the

complexity of the legal and factual issues, the quality of

the attorneys' services, the amount of damages and the

results secured. Peckham, 895 F.2d at 841; Linthicum v.

Archambault, 398 N.E.2d 482, 488 (Mass. 1979). No single

factor is necessarily dispositive of the services' worth.

See Cummings v. National Shawmut Bank, 188 N.E. 489, 492

(Mass. 1934). In the end, the court's 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

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second guessing." Grendel's Den, Inc. v. Larkin, 749 F.2d

945, 950 (1st Cir. 1984).

STAR first attacks the court's initial reduction

from the requested $35,153.25 to $27,000. STAR contends that

this reduction resulted from "mathematical error" because the

court erroneously assumed that counsel charged $175/hr. for

all of his work, when in fact, most of it was charged at

$150/hr. (while the associate attorney's work was charged at

the rate of $125/hr.). STAR asserts that because only 10.75

hours were charged at $175/hr., the court should have

deducted only about $260 (representing the approximate

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

rather than the $8,153.25 that it did.

Upon careful review of the record, we are

unpersuaded by STAR's assertion of "mathematical error."

STAR's position assumes that the court, when declining to

award at the $175/hr. rate for trial 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 hours of work by trial
counsel (some hours at the $150/hr. rate, others at the
$175/hr. rate), and about 82 hours of work by associate
counsel (at a $125/hr. rate), for a total of approximately
246 hours. Simple division of the awarded amount ($27,000)
by the hours expended (246) reveals that the court did not
find even a $150/hr. rate reasonable for this case, not to
mention the $175/hr. rate. Thus, STAR's argument that the

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Moreover, when STAR clearly laid out this precise

argument to the district court in the form of a motion to

amend or make additional findings under Fed. R. Civ. P.

52(b), the court considered and denied 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 that counsel had in fact expended the claimed

amount of time on the case, the simplicity of the case

rendered the fees excessive and warranted a reduction for

over-lawyering. Thus, we affirm the court's initial

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

STAR also contends that the court erred in its

additional fees reduction, from $27,000 to $18,000. STAR

argues that the articulated reasons for that reduction are

insupportable as a matter of law and on the facts of this

case. In particular, STAR asserts that when its counsel

informed the court of his planned hunting trip, the court

stated that it would "respect" those plans. STAR contends

that it was error to then "punish" counsel for taking his

vacation and being unavailable to handle any developments in

court erroneously based its award on its belief that the
higher rate was excessive does not support its implied
conclusion that the court must have found the $150/hr. rate
to be reasonable. Rather, it appears that the court found
both rates excessive, and adjusted the amount accordingly.
STAR has not argued that the court erred in its apparent
finding that even the $150/hr. rate was excessive or that the
court otherwise erred in calculating the lodestar.

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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 testimony

favorable to AASTAR in any event. STAR argues 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 attorneys' fees

award from $27,000 to $18,000 because it found that STAR's

counsel had not fulfilled his obligations in trial

preparation, negotiation and discovery. These

considerations, including "the stunting of time necessary for

discussion of settlement," plainly reflect upon the "quality

of work performed," one of the factors to be considered in

calculating the fee award. See Heller, 382 N.E.2d at 629.

We have no difficulty finding that an attorney's competence

extends to her compliance with obligations to the court,

which may ultimately affect the value of services to her

client. Thus, the court did not err in citing these reasons

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

8. We find most unpersuasive STAR's additional assertion
that, had counsel not taken his planned vacation, he would
have "necessarily" spent more time preparing the case which,
in turn, would have resulted in additional attorneys' fees.

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We also uphold the district court's determination

that the facts of this case merit the reduction.9 As to

STAR's assertion that the court first "respected" counsel's

vacation plans but then "punished" him for it, we note that

the court respected counsel's plans only insofar as they

affected the trial date; in no manner did the court indicate

that counsel was otherwise excused from his trial obligations

while he was on the hunt. With regard to counsel's failure

to produce a witness, in defiance of the court's order, we

think that whether or not the witness ultimately would have

helped AASTAR is irrelevant to counsel's initial discovery

obligation. Finally, we reject STAR's assertion that the

court penalized counsel for not settling the case; rather,

the court found that counsel's deficiencies in performance

hindered the opportunity for settlement, thus negatively

reflecting upon his services. We cannot say that 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 amount
prayed for," which was $2,588.24, and AASTAR has not opposed
the amount of that request. Thus, we will not disturb the
costs award to STAR in the amount of $2,588.24.

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Conclusion
Conclusion

For the foregoing reasons, we affirm the fee award

and judgment of the district court.

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