Scholz v. Goudreau

United States Court of Appeals
For the First Circuit

Nos. 17-1264,
17-1316

DONALD THOMAS SCHOLZ,

Plaintiff/Counterclaim-Defendant, Appellant/Cross-Appellee,

v.

BARRY GOUDREAU,

Defendant/Counterclaim-Plaintiff, Appellee/Cross-Appellant.

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

[Hon. Denise J. Casper, U.S. District Judge]

Before

Torruella, Lynch, and Kayatta,
Circuit Judges.

Susan E. Stenger, with whom Lawrence G. Green, Laura Lee
Mittelman, and Burns & Levinson LLP were on brief, for
appellant/cross-appellee.
Jeffrey S. Baker, with whom Baker and Associates, P.C.,
Daniel P. Tarlow, Copani, Tarlow & Cranney, LLC, David M. Given,
and Phillips, Erlewine, Given & Carlin LLP were on brief, for
appellee/cross appellant.

August 21, 2018
 TORRUELLA, Circuit Judge. Donald Thomas Scholz, a

member of the rock band BOSTON, sued former BOSTON guitarist Barry

Goudreau for various trademark infringement and breach of contract

claims relating to impermissible references that Goudreau had

allegedly made regarding his former association with the band.

Goudreau counterclaimed with his own breach of contract and abuse

of process claims. After the district court granted in part and

denied in part both parties' respective motions for summary

judgment, the extant claims proceeded to trial. The jury found in

favor of the respective defendant on each of the remaining claims.

Scholz and Goudreau now cross-appeal the district court's summary

judgment findings, evidentiary rulings, and denials of the various

motions detailed in this opinion. For the reasons stated below,

we affirm the district court and deny both parties' appeals.

I. Background

A. Factual Background

In 1976, Scholz and Goudreau were members of the rock-

band BOSTON, along with Fran Sheehan, Sib Hashian and Brad Delp.

Goudreau played the guitar in the band's first two albums and

performed with the band from approximately 1976 to 1979. After

Goudreau left BOSTON in 1981, he and the remaining members of the

band executed a settlement agreement (the "Settlement Agreement")

in 1983, pursuant to which Goudreau would receive a one-fifth share

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of the band's royalties for the first two BOSTON albums. The

Settlement Agreement also stated that Goudreau "shall have no

interest, right nor title to the name of 'BOSTON', nor to any

recording royalties, performing rights royalties, performance

income, copyright interests or payments, or financial interest

therein, except as provided herein." The agreement clarified that:

D. The Name "BOSTON": The parties hereto
expressly agree that Goudreau may use the term
"Formerly of Boston" for and in conjunction with any
biographical usage with respect to future
performances, but, except to this extent, Goudreau
shall have no other interest, right or title to the
name "BOSTON." Without limiting the foregoing,
Goudreau may not use the name "BOSTON" for or in
conjunction with any advertisement or promotion.

From 2004 to 2006, Goudreau and Sib Hashian began to

play music informally with Ernie Boch Jr. ("Boch"), an amateur

musician and New England area car mogul. Eventually, the three

started performing together in a band that they later called Ernie

and the Automatics ("EATA"). On February 6, 2009, Boch, Goudreau,

and other members of EATA signed a Confirmatory Recording Artist

Agreement (the "Confirmatory Agreement") in which the signatories

granted Boch the right in perpetuity to use, and authorize others

to use, their names and biographical information for advertising

and promotion of EATA. By signing the agreement, the EATA members

warranted that use of their names and biographical information

would not infringe upon the rights of any third parties.

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 Boch created and managed EATA's website, which described

Goudreau as an "original" member of the band BOSTON. In 2009,

Boch posted on YouTube an EATA "pop-up"1 music video produced by

Boch's friend, Ian Barret, to promote EATA's new album. The "pop-

up" video displayed lines of text that would momentarily appear at

the bottom of the screen overlaying EATA's music video. Some of

the pop-up messages read as follows:

1. "Guitarist Barry Goudreau and drummer 'Sib' Hashian are
'former' original members of the band 'Boston'."

2. "Boston's' first record is the biggest selling debut in
history with 17 million units sold."

3. "The original cover art for 'Boston's' first record was a
head of Boston lettuce, not the guitar spaceship."

4. "Brian met Barry when he joined 'Orion the Hunter', Barry's
first band project after 'Boston.'"

5. "Brian, Barry, and Tim would later form 'RTZ' with 'Boston'
lead singer, Brad Delp."

In addition, Boch advertised EATA in magazines, in which he

referred to Goudreau as an original and founding member of BOSTON.

The cellophane wrapping of EATA's 2009 CD album entitled "Low

Expectations" bore a sticker reading: "Featuring Barry Goudreau

. . . former original member[] of the multi-platinum selling band

'BOSTON.'" When EATA held a CD release party on February 7, 2009,

1 As referred to in Boch's testimony and Goudreau's appellate
brief.

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the promotional material read in part: "Barry Goudreau and Sib

Hashian, two former original members of the multi-platinum selling

band BOSTON have reunited."

In addition to EATA's advertisements, Goudreau's musical

performance in "The Best of Boston series" was promoted as

featuring "original founding Boston member Barry Goudreau."

Additionally, promotional materials for Goudreau's shows at the

Cannery Casino Hotel referred to Goudreau as "BOSTON's former

'lead' guitarist and an original 'BOSTON' member." Moreover,

Goudreau was described as "the lead guitarist rock legend from the

band BOSTON" in performances with the James Montgomery Blues Band.

B. Procedural History

On April 17, 2013, Scholz filed suit against Goudreau in

the District of Massachusetts, alleging, as is relevant to this

appeal, federal trademark infringement in violation of 15 U.S.C.

§ 1114(1), breach of contract, and breach of the implied covenant

of good faith and fair dealing. Goudreau filed an answer on

May 24, 2013, and asserted various counterclaims including breach

of contract, breach of implied covenant of good faith and fair

dealing, and abuse of process, all under Massachusetts law.

Goudreau also sought a declaratory judgment that using language

other than "formerly of Boston" does not violate Scholz's trademark

rights. Scholz subsequently filed a first amended complaint

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("FAC") on May 21, 2014, adding claims of contributory trademark

infringement in violation of 15 U.S.C. § 1114(1), and vicarious

trademark infringement in violation of 15 U.S.C. § 1114(1).

On February 17, 2015, Scholz and Goudreau each filed a

motion for summary judgment. As it pertained to Goudreau's motion,

the district court granted summary judgment to Goudreau with

respect to all of Scholz's claims except for those of contributory

and various trademark infringement as they related to Goudreau's

membership in EATA. Notably, the district court found that there

was a genuine issue of material fact regarding whether Goudreau

had the ability to directly control or monitor EATA's promotions

of Goudreau. As to Scholz's motion, the district court granted

Scholz summary judgment on Goudreau's claim for declaratory

judgment, as well as the abuse of process claim, finding that

Scholz did not use the litigation process to obtain an improper

end. But the district court denied Scholz's motion for summary

judgment as to Goudreau's other two counterclaims relevant to this

appeal.

The district court held a jury trial on the remaining

claims in October and November of 2016. Following the fifth day

of the seven-day trial, Scholz filed a motion to amend his FAC to

reinstate his breach of contract claim so as to conform it to the

evidence presented at trial. The district court denied this motion

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the next day. On November 1, 2016, the jury rejected all of the

claims and counterclaims that it was presented. On the verdict

form for Goudreau's breach of contract counterclaim, the jury

answered "NO" to the question of whether Goudreau "perform[ed] his

obligations under the contract, or was excused from performance

because of [Scholz's] conduct."

On November 8, 2016, Scholz again moved to reinstate and

for entry of judgment on his breach of contract claim in light of

the jury's finding that Goudreau had not performed his obligations

under the Settlement Agreement. On December 15, 2016, Goudreau

filed a motion for attorney's fees pursuant to 15 U.S.C. § 1117(a).

On February 16, 2017, the district court denied both motions. Both

parties appealed in the following month.

II. The Appeals

The parties each raise three claims of error they believe

the district court to have made during the course of the underlying

litigation. We address each party's arguments, beginning with

those made by Scholz.

A. Scholz's Appeal

The gravamen of Scholz's claims is that his breach of

contract claim should have survived and prevailed. Specifically,

he contends that the district court erroneously dismissed his

breach of contract claim on summary judgment, improperly denied

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his motions to reinstate this claim, and erred in denying his

motion for entry of judgment on that claim consistent with the

jury's verdict. We discuss each argument in turn.

1. Summary Judgment

The Settlement Agreement states that it is "governed by

and construed and enforced in accordance with the laws of the

[Commonwealth] of Massachusetts." Under Massachusetts law, a

claim for breach of contract requires the plaintiff to show the

existence of a valid and binding contract, that the defendant

breached the contract's terms, and that the plaintiff suffered

damages as a result of that breach. Brooks v. AIG SunAmerica Life

Assurance, Co., 480 F.3d 579, 586 (1st Cir. 2007).

The parties agree that the Settlement Agreement was a

valid and binding contract. Scholz asserted that Goudreau breached

that contract in two ways. First, Scholz asserted that the

advertisements and promotions for Goudreau's subsequent musical

performances were "not limited to 'formerly of Boston' but instead

use[d] such terms as 'original founding member' or 'Lead Guitarist

Rock Legend from the Band BOSTON.'" Second, he claimed that any

reference to BOSTON in advertisements or promotions of Goudreau's

performances violated the contract, regardless of whether or not

the advertisement or promotion was limited to the phrase "formerly

of Boston."

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 The district court disposed of this second argument by

pointing out that the Settlement Agreement allowed Goudreau to

reference BOSTON when using the term "'formerly of Boston' for and

in conjunction with any biographical usage with respect to future

performances." Further, the next sentence of the relevant contract

provision -- "[w]ithout limiting the foregoing, Goudreau may not

use the name 'BOSTON' for or in conjunction with any advertisement

or promotion" -- did not annihilate Goudreau's limited right to

use the band name. Scholz does not dispute the district court's

denial of his second claim, and we therefore need not discuss it

further.

Scholz does argue, however, that Goudreau's motion for

summary judgment should have been denied because of the reasonable

inference that Goudreau encouraged others to promote him as an

"original" or "founding" member of BOSTON, in breach of the

contract. For support, Scholz points to the district court's

denial of Goudreau's counterclaim for a declaratory judgment that

Goudreau could promote himself in a manner other than "formerly of

Boston"; Goudreau's admission in his counterclaim that he caused

others to hold him out as an "original member of BOSTON"; and the

EATA Confirmatory Agreement, in which Goudreau gave Boch the right

to use and authorize others to use Goudreau's name and biographical

information. The district court disagreed, finding that Scholz

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failed to show that Goudreau himself, rather than a third party,

breached the contract.

We review the district court's grant of summary judgment

de novo. Ocasio-Hernández v. Fortuño-Burset, 777 F.3d 1, 4 (1st

Cir. 2015). In so reviewing, we must "tak[e] the facts and all

reasonable inferences therefrom in the light most favorable to

[the non-moving party]." Aponte-Rosario v. Acevedo-Vilá, 617 F.3d

1, 6 (1st Cir. 2010).

After a careful review, we discern no error in the

district court's ruling granting summary judgment to Goudreau on

Scholz's breach of contract claim. The district court explained

the details of each offending instance cited by Scholz relaying

the facts underlying each allegation, each of which showed that

Goudreau did not instruct those responsible for the promotions to

use any language other than that which was permitted by the

Settlement Agreement. While Scholz did show that some of

Goudreau's performances were advertised using descriptors not in

conformance with the Settlement Agreement, Scholz did not show

that Goudreau had any role in drafting, approving, or promulgating

such language. Similarly, on appeal, Scholz does not direct us to

any record evidence from which we could find that Goudreau was

responsible -- either directly or indirectly -- for any promotion

or advertisement using language other than "formerly of Boston."

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Accordingly, we do not find any genuine issue of material fact as

to whether Goudreau breached the Settlement Agreement. See Fed.

R. Civ. P. 56(c)(1) ("A party asserting that a fact . . . is

genuinely disputed must support the assertion by . . . citing to

particular parts of materials in the record.").

Scholz makes much of Goudreau's statement in his

counterclaim that he "made sure that all venues, managers, and

other[s] involved referred to [him] . . . using the truthful and

accurate descriptive designations of formerly of BOSTON or as an

original member of BOSTON." But, as we have stated, Scholz pointed

to no specific instance in which Goudreau did, at any point, direct

anyone to bill him as an "original member" of BOSTON. Nor does

Goudreau's counterclaim for declaratory relief, and the district

court's denial thereof, show that Goudreau did diverge from the

language of the contract.

Scholz states that the Confirmatory Agreement created a

genuine issue for the jury as to whether Goudreau encouraged and

authorized Boch to use descriptions beyond those which were allowed

by the Settlement Agreement. But Boch testified in his deposition

that Goudreau told him to limit his description to "former member"

of BOSTON. Boch further commented that he added the word

"original" on his own, despite Goudreau's instructions otherwise.

Scholz does not dispute this on appeal, instead arguing that

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Goudreau's failure to stop Boch from promoting Goudreau as

otherwise constitutes a breach. But, given Boch's deposition

testimony that Goudreau did request such limitations on EATA's

promotional material, and Scholz's failure to provide any evidence

that Goudreau did not so request, there was no evidence in the

record from which the district court could have drawn the inference

to which Scholz claims that he was entitled.

Scholz adds that the district court erred as a matter of

law in allowing Goudreau's motion for summary judgment as to his

claim for breach of the implied covenant of good faith and fair

dealing. As an argument that piggybacks completely upon his

arguments pertaining to his breach of contract claim, this too

must fail. Accordingly, as Scholz failed to point to any facts at

the summary judgment stage to raise a genuine issue as to whether

Goudreau breached the Settlement Agreement, we find that the

district court did not err in awarding Goudreau summary judgment

on Scholz's breach of contract claim or his claim for breach of

the implied covenant of good faith and fair dealing. See Anderson

v. Liberty Lobby, Inc., 477 U.S. 242, 249-50 (1986).

2. Motions to Reinstate

Scholz twice moved to amend his FAC, pursuant to Fed. R.

Civ. P. 15(b)(2), to reinstate his breach of contract claim.

Scholz now claims that the district court's denial of these motions

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was in error. We review both denials for abuse of discretion.

See Campana v. Eller, 755 F.2d 212, 215 (1st Cir. 1985).

Scholz filed his first motion to amend on October 30,

2016, claiming that Goudreau impliedly consented to reinstating

Scholz's breach of contract claim. "When an issue not raised by

the pleadings is tried by the parties' express or implied consent,

it must be treated in all respects as if raised in the pleadings.

A party may move -- at any time, even after judgment -- to amend

and to raise an unpleaded issue." Fed. R. Civ. P. 15(b)(2).

"Consent to the trial of an issue may be implied if, during trial,

a party acquiesces in the introduction of evidence which is

relevant only to that issue." DCPB, Inc. v. City of Lebanon, 957

F.2d 913, 917 (1st Cir. 1992) (emphasis added) (citing Campana,

755 F.2d at 215). One manner of acquiescing may be by failing to

object to the introduction of such evidence. See id.

As he did before the district court, Scholz again

advances the argument that Goudreau impliedly consented to

litigating Scholz's breach of contract claim by failing to object

to his counsel's questions to Goudreau and Boch about whether

Goudreau granted Boch actual authority -- as opposed to whether

Boch had the apparent authority -- to handle the advertising and

promotion of EATA. Scholz says that these questions, and his

counsel's related questions about whether Goudreau granted Boch

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authority by signing the EATA Confirmatory Agreement were relevant

only to a breach of contract claim, and were irrelevant to Scholz's

claims for contributory or vicarious trademark infringement.

We disagree. We do not find that counsel's questions,

and the evidence adduced therefrom, were relevant only to a

potential breach of contract claim such that Goudreau could have

known that a breach of contract claim was permeating the jury

trial. See Rodríguez v. Doral Mortg. Corp., 57 F.3d 1168, 1172

(1st Cir. 1995) ("The truth-seeking function of our adversarial

system of justice is disserved when the boundaries of a suit remain

ill-defined . . . ."); Cole v. Layrite Prods. Co., 439 F.2d 958,

961 (9th Cir. 1971). Nor do we find that the questions were

irrelevant to Scholz's vicarious trademark infringement claims.

First, the record reflects that Scholz's counsel did not

make clear his intent to draw a meaningful distinction between the

legal concepts of "actual" and "apparent" authority at trial. In

fact, he did not even use the words "actual" or "apparent"

authority during his examinations of Goudreau and Boch. Cf. Sony

Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 435

n.17 (1984) (noting that "the lines between direct infringement,

contributory infringement, and vicarious liability are not clearly

drawn," and that an infringer may include "one who authorizes the

use of a copyrighted work without actual authority from the

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copyright owner" (quoting Universal City Studios, Inc. v. Sony

Corp of Am., 480 F. Supp. 429, 457-58 (C.D. Cal. 1979))). Second,

even if the intent of the counsel's line of questioning was clear,

"[a]pparent . . . authority results from conduct by the principal

which causes a third person reasonably to believe that a particular

person . . . has authority to enter into negotiations or to make

representations as his agent." Linkage Corp. v. Trs. of Bos.

Univ., 425 Mass. 1, 16 (1997) (alteration in original) (internal

quotation marks and citation omitted). Thus, Scholz's counsel's

questions about whether Goudreau gave Boch the right to promote

EATA, inasmuch as they were relevant to whether third persons

reasonably believed that Boch had Goudreau's permission to use

Goudreau's affiliation with BOSTON in EATA's promotions (i.e.

whether Boch had "apparent authority"), were not exclusively

relevant to Boch's "actual authority." See id.; cf. Binkley Co.

v. E. Tank, Inc., 831 F.2d 333, 338 (1st Cir. 1987) (finding that

a seller's agent had apparent authority to execute a provision for

termination of a contract in light of the agent's actual authority

to negotiate prices and times of delivery). Accordingly, we cannot

conclude that Goudreau consented to the reinstatement of Scholz's

breach of contract claim by acquiescing to the line of questions

regarding the promotion of EATA. See DCPB, Inc. v. City of Lebanon,

supra.

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 Finally, we need only look to the district court's

memorandum accompanying its summary judgment order to illustrate

that the questions asked by Scholz's counsel were relevant to the

claims already presented to the jury. When discussing Scholz's

contributory trademark infringement claim, the district court

found there to be a genuine issue of material fact as to whether

Goudreau had "sufficient ability to direct and control the

promotions of EATA." Whether Goudreau gave Boch the authority to

use his name and biographical information in these promotions, or

alternatively whether Boch used this information without

Goudreau's permission, weighs directly on this question. The

district court further stated in its memorandum that the ultimate

question for the jury on Scholz's vicarious liability claim was

whether it was reasonable to infer from Goudreau's actions that

Boch or Tom Baggott, a promoter for EATA, acted with Goudreau's

authority. Questions pertaining to Goudreau's interactions with

Boch were also relevant to this issue.

Because these questions were relevant to issues already

before the jury, we find that they did not provide Goudreau

adequate notice that a breach of contract claim was being

litigated. See DCPB, 957 F.2d at 917 ("The introduction of

evidence directly relevant to a pleaded issue cannot be the basis

for a founded claim that the opposing party should have realized

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that a new issue was infiltrating the case."); see also Grand Light

& Supply Co. v. Honeywell, Inc., 771 F.2d 672, 680 (2d Cir. 1985)

("The purpose of Rule 15(b) is . . . not to extend the pleadings

to introduce issues inferentially suggested . . . ." (quoting

Browning Debenture Holders' Committee v. DASA Corp., 560 F.2d 1078,

1086 (2d Cir. 1977))). And, we would think it unjust to allow

Scholz to reinstate his breach of contract claim without sufficient

notice. Cf. In re Fustolo, No. 17-1984, 2018 WL 3424797, at *9

(1st Cir. 2018) (finding that plaintiff's failure to object to a

line of questioning "pertinent to other claims already presented"

could not "be construed to imply consent"). Thus, we conclude

that the district court did not abuse its discretion when it denied

Scholz's first motion to amend his FAC after the fifth day of

trial.

Scholz's second motion to amend his FAC by reinstating

his claim was tucked into Scholz's post-jury-verdict motion for

entry of judgment on his breach of contract claim consistent with

the jury's findings. In his motion for entry of judgment, Scholz

did not point to any additional evidence, aside from the jury's

finding that Goudreau failed to perform his obligations under the

1983 Settlement Agreement, from which the district court could

have found Goudreau's express or implied consent to litigate

Scholz's breach of contract claim. As explained in our discussion

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below, this jury finding does not change the calculus, and we are

therefore led to the same result as to the second motion to amend.

3. Motion for Entry of Judgment

Scholz avers that the jury's verdict for Goudreau's

breach of contract counterclaim, in which the jury found that

Goudreau did not "perform his obligations under the contract" and

was not excused from performance by Scholz's conduct, is the

functional equivalent of a jury finding that Goudreau breached the

Settlement Agreement. Therefore, Scholz says, the district court

erred in denying his motion for entry of judgment on his breach of

contract claim consistent with this finding.

Contrary to Scholz's assertion, the jury verdict on

Goudreau's counterclaim does not equate to a finding that Scholz

proved his claim of breach of contract. See Acumed LLC v. Advanced

Surgical Servs., 561 F.3d 199, 219 (3d Cir. 2009) ("[T]he jury's

verdict against appellant on its breach of contract counterclaim

does not prove the contrapositive."). Although the jury did find

that Goudreau did not "perform his obligations under the contract,"

Scholz's claim for breach of contract required that Scholz show

more than this. See Brooks, 480 F.3d at 586 (noting that a breach

of contract claim requires a showing of the existence of a valid

and binding contract, that the defendant breached the contract's

terms, and that the plaintiff suffered damages as a result of that

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breach). The evidence presented at trial did not compel the jury

to conclude that Scholz suffered damages as a result of Goudreau's

failure to perform his contractual obligations. Thus, the jury's

finding does not satisfy the third element of a breach of contract

claim. And, because of this, the district court correctly denied

Scholz's second motion to amend his FAC to reinstate a breach of

contract claim and Scholz's request that the district court enter

judgment in his favor.

At best, Scholz's true ask is that the court alter or

amend the judgment pursuant to Fed. R. Civ. P. 59(e). But, the

cases that Scholz cites all stand for the proposition that the

district court should rarely overturn a jury's verdict.2 We don't

disagree with the principle announced in those cases, though they

are inapposite to this case -- where there was no jury verdict on

Scholz's breach of contract claim. Further, a "motion [to alter

or amend a judgment] must establish either clear error of law or

point to newly discovered evidence of sufficient consequence to

make a difference." Franchina v. City of Providence, 881 F.3d 32,

56 (1st Cir. 2018) (quotation omitted). Scholz fails to establish

2 See Velázquez v. Figueroa-Gómez, 996 F.2d 425, 427 (1st Cir.
1993) ("[A] jury's verdict on the facts should only be overturned
in the most compelling circumstances."); see also Robinson v. Watts
Detective Agency, Inc., 685 F.2d 729, 742 (1st Cir. 1982); Cardiaq
Valve Techs. V. Neovasc, Inc., 2016 U.S. Dist. LEXIS 150686, *32
(D. Mass. 2016).

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a clear error of law or point to any sufficiently consequential

newly discovered evidence.

For these reasons, we find no abuse of discretion.

B. Goudreau's Appeal

Having disposed of Scholz's arguments, we turn to the

claims of error that Goudreau presents for our review. But be

forewarned: his arguments fare no better.

1. Abuse of Process

Goudreau first alleges that the district court erred by

entering summary judgment in Scholz's favor on Goudreau's abuse of

process claim, asserting that there were genuine issues of material

fact as to Scholz's motives for bringing the underlying litigation.

Goudreau claims that the totality of the circumstances show that

Scholz's true motives were to "litigate Goudreau into submission"

in order to obtain all royalty and copyright rights to BOSTON's

first two albums and to obtain discovery from Goudreau and others

to be used in other litigation.

To establish a claim of abuse of process under

Massachusetts law, a plaintiff must show that: 1) process was used;

2) for an ulterior or illegitimate purpose; 3) resulting in damage

to the plaintiff. Psy-Ed Corp. v. Klein, 459 Mass. 697, 713 (2011)

(citing Millennium Equity Holdings, LLC v. Mahlowitz, 456 Mass.

627, 636 (2010)). Process is abusive when it is used "to obtain

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a collateral advantage, not properly involved in the proceeding

itself, such as the surrender of property or the payment of money,

by the use of the process as a threat or a club." Cohen v. Hurley,

20 Mass. App. Ct. 439, 442 (1985) (quoting W. Page Keeton et al.,

Prosser and Keeton on the Law of Torts § 121, at 898 (5th ed.

1984)). Furthermore, an abuse of process claim is meant to address

claims brought "outside the interests properly pursued in the

proceeding." Broadway Mgmt. Servs. Ltd. v. Cullinet Software,

Inc., 652 F. Supp. 1501, 1503 (D. Mass. 1987). The bad intentions

of a defendant are irrelevant if that defendant "has done nothing

more than carry out the process to its authorized conclusion."

Cohen, 20 Mass. App. Ct. at 442.

After reviewing the record, we find no error in the

district court's holding.3 Goudreau posits that Scholz's

"ulterior" motives were to, using litigation, extract his royalty

streams from the first two BOSTON albums. However, Scholz's

directly stated in his FAC his motive to obtain all royalty rights

to, and copyrights in, BOSTON's first two albums. When a plaintiff

3 Goudreau's argument that Scholz abused the litigation process
by making meritless demands for contract rescission is, as
Goudreau's counsel conceded at oral argument, a claim better suited
as a malicious prosecution claim. See Beecy v. Pucciarelli, 387
Mass. 589 (1982) (finding malicious prosecution when a party brings
a suit with no probable cause and acts with improper motive or
malice). Evidence from the record supports this observation. But,
Goudreau raised no such claim in the district court.

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directly states his purpose in his complaint, "even a pure spite

motive" does not establish that there was an abuse of process if

the process is used "only to accomplish the result for which it

was created." Vigeant v. United States, 245 F. App'x 23, 25 (1st

Cir. 2007) (quoting Keeton et al., supra, at 897). And,

"traditionally, discovery activities have not provided grounds for

abuse of process actions in Massachusetts," as the "curtailing

[of] discovery activities[] would be inconsistent with the spirit

of Mass. R. Civ. P. 26(b)(1)." The Alphas Co., Inc. v. Kilduff,

72 Mass. App. Ct. 104, 115-16 (2008); see also Jones v. Brockton

Public Markets, Inc., 369 Mass. 387, 389-90 (1975) (limiting abuse

of process claims to writs of attachment, instituting a civil

action, and the bringing of criminal charges).

Accordingly, the district court did not err in granting

Scholz's summary judgment motion as to Goudreau's abuse of process

claim.

2. Attorney's Fees

Goudreau next argues that "the district court erred as

a matter of law in denying his motion for costs and attorney's

fees pursuant to 15 U.S.C. § 1117(a)." "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) (citing Foster v. Mydas

-22-
Assoc., Inc., 943 F.2d 139, 143 (1st Cir. 1991)). Absent legal

errors, "[w]e review the [district] court's determination

regarding the reasonableness of the prevailing party's attorney's

fee request for 'manifest abuse of discretion.'" Flynn v. AK

Peters, Ltd., 377 F.3d 13, 26 (1st Cir. 2004) (citing Poy v.

Boutselis, 352 F.3d 479, 488 (1st Cir. 2003)).

The Lanham Act allows for an award of attorney's fees to

the prevailing party in a trademark violation case only "in

exceptional cases." 15 U.S.C. § 1117(a). We have not yet

considered what makes a case "exceptional" under the Lanham Act in

the context of a prevailing defendant.4 See Ji v. Bose Corp., 626

F.3d 116, 129 (1st Cir. 2010). But under the Patent Act -- which

contains nearly identical language, see 35 U.S.C. § 285 ("The court

in exceptional cases may award reasonable attorney fees to the

prevailing party.") -- "an 'exceptional' case is one that stands

out from others with respect to the substantive strength of a

party's litigating position . . . or the unreasonable manner in

4 We have construed the criteria for an award of attorney's fees
under the Lanham Act, in the context of a prevailing plaintiff, to
be infringements that were "malicious, fraudulent, deliberate, or
willful," or "when equitable considerations justify such awards."
See Tamko Roofing Prod., Inc. v. Ideal Roofing, Co., 282 F.3d 23,
31 (1st Cir. 2002) (internal quotation marks omitted).

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which the case was litigated." Octane Fitness, LLC v. ICON Health

& Fitness, Inc., 134 S. Ct. 1749, 1755-56 (2014).5

The Supreme Court has left it to the district courts to

"determine whether a case is 'exceptional' in the case-by-case

exercise of their discretion, considering the totality of the

circumstances." Id. at 1756. However, in a footnote in Octane

Fitness, the Supreme Court listed factors used in another similar

provision of the Copyright Act to guide that discretion. Id. at

1756 n.6. This "'nonexclusive' list of 'factors[]' includ[es]

'frivolousness, motivation, objective unreasonableness . . . and

the need in particular circumstances to advance considerations of

compensation and deterrence.'" Id. (quoting Fogerty v. Fantasy,

Inc., 510 U.S. 517, 534, n.19 (1994)).

Goudreau cries foul, alleging that the district court

utilized a more onerous "clear and convincing evidence" standard

than the Octane Fitness "preponderance of the evidence" standard.

5 The application of Octane Fitness's interpretation of § 285 of
the Patent Act to § 1117(a) of the Lanham Act is not disputed by
the parties; the district court applied Octane Fitness and Scholz
does not argue for a different standard. We also note that five
other circuits have so far applied Octane Fitness to Lanham Act
cases. See Sun Earth v. Sun Earth Solar Power, 839 F.3d 1179,
1180-81 (9th Cir. 2016) (en banc); Baker v. DeShong, 821 F.3d 620,
621–25 (5th Cir. 2016); Georgia–Pacific Consumer Prods. LP v. von
Drehle Corp., 781 F.3d 710, 720–21 (4th Cir. 2015); Slep–Tone
Entm't Corp. v. Karaoke Kandy Store, Inc., 782 F.3d 313, 317–18
(6th Cir. 2015); Fair Wind Sailing, Inc. v. Dempster, 764 F.3d
303, 313–15 (3d Cir. 2014).

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Further, he says that the district court only embarked on a cursory

review of the Octane Fitness factors. Since the district court

found for Goudreau on almost all of Scholz's Lanham Act claims,

Goudreau argues that this case was "exceptional." Additionally,

Goudreau notes that the district court's refusal to award

attorney's fees fails to deter Scholz from bringing future

frivolous lawsuits, and that because Goudreau raised an issue of

material fact as to Scholz's bad faith in abusing the litigation

process, the district court abused its discretion. See Nightingale

Home Healthcare v. Anodyne Therapy, 626 F.3d 958, 963-64 (7th Cir.

2010) ("Abuse of process is a prime example of litigating in bad

faith.").

We find neither that the district court used the

incorrect standard, nor that it abused its discretion. The

district court was intimately familiar with the totality of the

circumstances in this case, and reasonably found the case not to

be an "exceptional" one warranting the sought-after award. In its

electronic order denying Goudreau's motion, the district court not

only cited the Octane Fitness factors but also thoughtfully

analyzed each of those factors. Goudreau's disagreement with the

district court's weighting of those factors does not render that

analysis "cursory." As for deterrence, the district court properly

observed that a judgment on the merits at summary judgment itself

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precludes future litigation on the same set of facts. See B&B

Hardware, Inc. v. Hargis Industries, Inc., 135 S. Ct. 1293 (2015)

("This Court has long recognized that the determination of a

question directly involved in one action is conclusive as to that

question in a second suit." (internal quotation marks and citation

omitted)).

Goudreau's argument that he is entitled to attorney's

fees because of Scholz's purported abuse of process is equally

unavailing. As we have concluded, the district court properly

granted summary judgment to Scholz on Goudreau's abuse of process

claim. Goudreau has simply failed to prove the exceptionality of

his case by a preponderance of the evidence, or any other standard,

and we therefore affirm the district court's denial of costs and

attorney's fees.

3. Evidentiary Ruling

Finally, Goudreau argues that the district court

erroneously admitted into evidence at trial the EATA music video

with "cartoon-like pop-up text" created by and uploaded onto the

internet by Boch's friend, Ian Barrett. According to Goudreau,

the video was constitutionally protected non-commercial artistic

work comparable to a parody. Therefore, Goudreau argues, it could

not form the basis of liability for intellectual property

infringement.

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 Under Rules 401 and 402 of the Federal Rules of Evidence,

the court will generally admit evidence that makes a fact more or

less probable than it would be otherwise. Fed. R. Evid. 401, 402.

But the court, at its discretion, may exclude such relevant

evidence if the evidence would confuse or mislead jurors, or if

its probative value is outweighed by unfair prejudice. Fed. R.

Evid. 403. When previously considering a Lanham Act trademark

claim, we have found that certain artistic forms of expression,

such as parodies, may be protected speech and thus not subject to

trademark infringement liability, notwithstanding the fact that

protected speech used another entity's registered trademark for a

non-commercial purpose. L.L. Bean, Inc. v. Drake Publishers, Inc.,

811 F.2d 26, 31-33 (1st Cir. 1987).

Goudreau asserts that the admission of this video

fundamentally prejudiced his case and caused jury confusion as to

the significance of the author's usage of the word-mark BOSTON to

Scholz's trademark claim. The jury finding that Goudreau did not

perform his obligations under the Settlement Agreement, Goudreau

argues, proves that admitting the video into evidence "was anything

but harmless." As a secondary matter, Goudreau maintains that

neither he nor Boch had anything to do with the creation of the

"pop-up" text, and that Scholz failed to show that Goudreau had

anything to do with it being posted online.

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 We review a district court's evidentiary rulings for

abuse of discretion, Pagés-Ramírez v. Ramírez-González, 605 F.3d

109, 115 (1st Cir. 2010), but review legal issues within those

evidentiary ruling de novo and findings of fact for clear error.

Cameron v. Otto Bock Orthopedic Indus., Inc., 43 F.3d 14, 16 (1st

Cir. 1994). In light of these standards, we find that the district

court's conclusion that the video was a commercial promotional

piece was not clearly erroneous, and that the video was not subject

to constitutional protection as a matter of law. Accordingly, the

district court did not abuse its discretion in admitting the "pop-

up" video.

There was plenty of evidence to support the district

court's finding that the video served a commercial purpose. First,

the music video over which the pop-up text appears was created

immediately after EATA released its CD "Low Expectations" in

February 2009. The original music video (the version without the

pop-up text) was created by Boch to promote that new CD. That

original music video itself contains old video footage and sketches

of the band BOSTON, and the text in the pop-up messages described

two of the band members' ties to BOSTON. Ian Barrett, Boch's

friend who created the video, told Boch that he was going to create

this pop-up video and post it on the internet, and Boch uploaded

it to YouTube on November 2, 2009, soon after the release of "Low

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Expectations." Given these facts, it was reasonable for the

district court to conclude that the pop-up video was created and

posted in order to promote EATA's new album.

Further, the district court did not err as a matter of

law in concluding that the "pop-up" EATA video was not protected

speech in the form of a parody, and that the music video itself

was relevant to an issue at trial: whether Goudreau's was liable

for contributory or vicarious trademark infringements contained in

the video. Although Goudreau cites L.L. Bean, Inc. for support,

the parody described in that case is readily distinguishable from

the pop-up video at issue here. That case involved an article

within the "humor" and "parody" page of an adult entertainment

monthly periodical that utilized L.L. Bean's trademark along with

sexually explicit photos of nude models. L.L. Bean, Inc., 811

F.2d at 27. Unlike that article, the pop-up video at issue here

is not used solely as a form of artistic expression. Rather, it

uses the trademark to give factual data about band members, and is

used to promote the band's album. This is a far cry from the

protected speech in L.L. Bean, Inc. Cf. Parks v. LaFace Records,

329 F.3d 437, 454 (6th Cir. 2003) ("Crying 'artist' does not confer

carte blanche authority to appropriate a [trademarked entity's]

name.").

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 But even were we to assume that this pop-up video was

intended to be parody, L.L. Bean, Inc. noted that a parody that

"engenders consumer confusion [is] entitled to less protection"

since it "implicates the legitimate commercial and consumer

protection objectives of trademark law." 811 F.2d at 32 n.3. A

"pop-up" video that features two former members of BOSTON, contains

text describing Goudreau and drummer Sib Hashian as founding

original members of BOSTON, discusses BOSTON's record sales and

the artwork on BOSTON's first album cover, and displays old footage

of BOSTON, would certainly have the potential to cause consumer

confusion.

Goudreau's claim that admission of the video caused the

jury confusion is equally unavailing. Goudreau does not show that

any jury confusion resulted from the video's introduction as it

pertains to Scholz's Lanham Act claims. To the contrary, the jury

found in Goudreau's favor as to these claims. While the jury did

find that Goudreau did not perform his obligations under the

Settlement Agreement, this was in relation to his own breach of

contract cross-claim, not Scholz's Lanham Act claims. Any argument

that admission of the video would cause the jury to confuse

Scholz's trademark infringement claims with Goudreau's breach of

contract claims was not argued before the district court and is

therefore waived. See Wood v. Millyard, 566 U.S. 463, 470 (2012).

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Even absent such waiver, Goudreau would still fail to establish

that it was this pop-up video, and not some other piece of

evidence, that caused the jury to make that finding. Therefore,

we find that the district court did not abuse its discretion in

admitting the pop-up video at trial.

III. Conclusion

Having addressed and rejected all of the parties' claims

of error, our work is complete. For the aforementioned reasons,

we affirm the judgment of the district court.

Affirmed.

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