Flynn v. AK Peters, Ltd.

United States Court of Appeals
For the First Circuit

No. 03-1676
No. 03-2294
No. 03-2348

ANITA M. FLYNN,

Plaintiff, Appellant,

v.

AK PETERS, LTD.,

Defendant, Appellee.

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

[Hon. Richard G. Stearns, U.S. District Judge]
[Hon. Morris E. Lasker, Senior U.S. District Judge]

Before

Lynch, Circuit Judge,
Stahl, Senior Circuit Judge, and
Lipez, Circuit Judge.

Thomas W. Humphrey, with whom Seth S. Soffregen, William J.
Flynn, Neyhart, Anderson, Freitas, Flynn & Grosboll, and Wood
Herron & Evans were on the brief, for appellant.
Peter G. Hermes, with whom Gina A. Fonte and Hermes, Netburn,
O'Connor & Spearing, PC were on the brief, for appellee.

July 26, 2004
 LIPEZ, Circuit Judge. Plaintiff, an engineer and writer,

brought suit against her publisher for accepting book revisions

from her co-author without her consent and for giving a third

individual co-authorship credit when she felt that his effort did

not merit such credit. After losing her Lanham Act claim at

summary judgment, and suffering judgment as a matter of law and an

adverse jury verdict on her remaining claims at trial (as well as

a judgment against her for attorney's fees post-trial), Flynn

raises a bevy of claims on appeal. We affirm.

I.

We set forth the background, reserving some of the

details until the discussion of the individual issues on appeal.

Plaintiff-appellant Anita M. Flynn is an electrical engineer and

robotics scientist who wrote a book with a colleague, Joseph Jones,

entitled Mobile Robots: From Inspiration to Implementation. The

book was published in 1993 by Jones & Bartlett Publishers, Inc.

Shortly after publication, Jones & Bartlett assigned its

publication rights to AK Peters, a publishing house named after its

principals, Alice and Klaus Peters. The book was a great success,

and Klaus Peters asked Flynn and Jones to write a second edition of

the book in 1997. Hoping to have the revised edition published by

the next spring, Peters suggested that they invite another

contributor to help them with the research and writing. Jones and

Peters later agreed that Bruce Seiger, a high school teacher, would

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be added as a co-author and would write a chapter addressing

educational applications and curriculum proposals.

To confirm this agreement, Peters wrote to Flynn on

August 23, 1997, asking if she was amenable to the proposed

revision with Seiger’s assistance. Flynn responded in a letter

dated November 16, 1997:

I received your letter as to the second
edition of our book and would be happy to
agree to your suggested arrangement--on one
condition. That is, you send me my money for
my portion of the royalties on sales from
January '97 through June '97 in the next
month.

Alice Peters responded via letter on December 4, 1997:

Thank you very much for your letter of
November 16. I am enclosing an accounting of
the sales of your book, Mobile Robots, for the
period January-June 1997 along with a check
for settlement of the royalty for those sales.
We are pleased that you have agreed to our
suggestion regarding the 2d edition of Mobile
Robots. We will be forwarding a contract to
you soon for the signature.1

The publisher did not directly send Flynn a revised contract.

However, it had previously sent Jones four copies of the author

contract (one each for Jones, Flynn, Seiger, and AK Peters) and two

copies of a contract for the curriculum guide (one each for Jones

and Seiger) on October 3, 1997. Jones and Seiger began revising

1
Prior to trial in the district court, AK Peters claimed that
this agreement constituted a separate, superseding contract between
AK Peters and Flynn; however, the publisher chose not to argue that
point at trial.

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the text even though neither of the two original authors had signed

the contract.

Flynn did not have any further discussions with AK Peters

or its principals while Jones and Seiger revised the text. In

fact, she was largely uninvolved in the revision process. Perhaps

recognizing her diminished role, she agreed in May 1998 to give

half of the royalties from the revised edition to Jones and to

split the other half with Seiger.2

Although Jones and Seiger worked together to revise the

text, their relationship was not always harmonious. Jones wrote

Seiger an e-mail in early August 1998, in which he said that he was

planning to drop Seiger as a co-author because "none of the

contributions [Seiger was] uniquely qualified to make appear[ed] in

the new edition." After they discussed Seiger's involvement in the

project, Jones decided not to remove Seiger's name from the book

after Seiger agreed to take on more work. At some point, Jones and

Seiger decided, with AK Peters' consent, to publish the curriculum

guide as a separate book rather than including it as a section of

Mobile Robots.

AK Peters sent the book to the printer without Flynn's

knowledge in early September 1998. A few weeks later, she asked

2
AK Peters has not paid Flynn any of the royalties from the
sale of the revised edition of Mobile Robots. It claims that it is
waiting for the authors to settle on the final allocation scheme.
Flynn claims that it is simply withholding the royalties in
retaliation for her lawsuit.

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Jones if she could see a copy of the revised manuscript. In mid-

October, well over one month after AK Peters sent the manuscript to

the printer, Flynn told Jones that "[she] looked through the

manuscript and didn't see anything that [Seiger] wrote." Jones

responded that Seiger "revised [one of the] chapter[s], added the

contests section, and contacted virtually every supplier in the

yellow pages, data books and trade magazines sections to verify the

addresses. He also did a word-by-word review of the whole book

looking for typos and inconsistencies." Jones noted the

difficulties that he and Seiger had in August, but said that

"[Seiger] actually did a tremendous amount of work at the end,

without his help it would not have been possible to get the book

out by [the deadline]." Responding to Flynn's concern that Seiger

did not write the curriculum chapter, Jones informed her that he

and Seiger were going to write that chapter as a separate book.

Flynn insisted that Seiger's contribution was "more in

line with an acknowledgment" and refused to sign the revised

authors' contract, even after Jones offered to restructure the

royalty distribution. Jones informed Flynn in late October that if

she did not sign the contract, AK Peters would exercise its rights

under Paragraph L of the original contract, which read:

The Author/Editor agrees to revise the Work
when the Publisher shall decide that a
revision is desirable, and to deliver same
within a reasonable time after such request.
Should the Author/Editor be unable or
unwilling to undertake such revision, or be

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 deceased, the Publisher may arrange in
agreement with the Author/Editor not to be
unreasonably withheld, for the preparation of
a revised manuscript, the cost of which
(including such royalties or fees as the
Publisher may elect to pay) shall be paid by
the Publisher and charged against any first
royalties that may accrue to the Author/Editor
from the sale of the revised edition. All
terms of this Agreement shall apply to each
revision as though it were the work being
published for the first time.

Jones claimed that this provision "basically says that they can

publish revised editions of the book and, if [Jones and Flynn]

don't help, they will employ whatever help they need and allocate

payments accordingly."

Flynn sent a letter to AK Peters via certified mail three

days later, informing the publisher that she had not agreed to the

revised contract. She said that she had reviewed the revised

manuscript and found a number of errors but said that her biggest

concern was the decision to list Seiger as a co-author. She said

that she only agreed to AK Peters' proposed revision because she

thought that Seiger was going to write a curriculum chapter and

that she refused to share credit and royalties for the revised

edition of the book without this contribution. She also expressed

concern that Seiger rewrote one of the chapters that was designed

to provide an easy introduction to robotics and added an electronic

circuit design that would not work. Flynn acknowledged Jones'

comment regarding AK Peters' right to revise the text under

Paragraph L but asserted that this right was not triggered under

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the circumstances present at that time. She argued that Paragraph

L only gave the publisher discretion to revise when an author was

unable or unwilling to participate in a revision. Since Flynn had

attempted to participate in the revision, AK Peters could not

invoke its Paragraph L rights. Similarly, she claimed that since

her objection to listing Seiger as a co-author was reasonable, the

publisher could not add him as an author until she was satisfied

with his contribution. She said that "[i]f Mr. Seiger performed

his part of the deal, there would be very few problems. He did

not." Toward the end of the letter, Flynn stated that she would

seek appropriate legal relief if AK Peters insisted on continuing

with publication of the revised edition as it appeared at that

time.

AK Peters responded to that letter by noting the

contributions that Seiger made to the book and by informing Flynn

that it had already sent the book to the printer by the time that

she notified them of her objections. It offered to address the

errors that she identified by printing an errata sheet and to

address the authorship issue by listing her before Seiger.

That arrangement was not acceptable to Flynn. She filed

a lawsuit against AK Peters and its principals in the United States

District Court for the District of Northern California on December

2, 1998 alleging: 1) violation of the Lanham Act, 15 U.S.C. §

1125(a); 2) violation of California Business and Professions Code

-7-
§ 17200 (concerning "unlawful, unfair or fraudulent business acts

or practices and unfair, deceptive, untrue or misleading

advertising"); 3) violation of the California Civil Code § 3344

(concerning trade misappropriation); and 4) breach of contract.3

After the suit was transferred to the District of Massachusetts, AK

Peters filed a motion for summary judgment on all claims on March

14, 2000. The court granted the motion with regard to the Lanham

Act claim, and the parties went to trial on the remaining three

claims.

At trial, AK Peters filed a motion for judgment as a

matter of law (JMOL) on all three claims after both sides had the

opportunity to present their cases, arguing that it was entitled to

judgment on the breach of contract claim because Flynn failed to

show that AK Peters materially breached the contract and that even

if it did breach the original contract between the authors and the

publisher, Flynn failed to show that she suffered any damages as a

result of that breach. Flynn responded, inter alia, that AK Peters

did indeed breach Paragraph L of the original contract and that she

had presented sufficient evidence of damages during her trial

testimony. After stating that it would reserve its decision on the

JMOL motion, the court asked the parties to submit jury

instructions that it could use to formulate the jury charge.

3
Flynn filed a separate suit against Jones and Seiger on June
26, 2000 that was consolidated with the suit against Peters and
settled on January 29, 2003.

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Flynn's proposed instruction stated that the "essential elements of

a breach" included "[d]amage to the Plaintiff arising from the

failure to perform."

The next morning, prior to charging the jury, the court

announced that it was dismissing the contract claim “on the grounds

that there's an absolute dearth of evidence with regard to damage

flowing from the breach of contract."4 It denied the motion with

regard to the two California state law claims and informed the

parties that “[they] may wish to adjust [their] closing statement

accordingly.” The parties made their closing arguments, the court

instructed the jury, and the jury returned a verdict in favor of AK

Peters on the two California state law claims. Flynn did not file

any post-verdict motions. However, AK Peters filed a motion for

$55,000 in attorney's fees under section 3344's fee-shifting

provision. The court granted that motion. Flynn subsequently

appealed the final judgment on the merits and the award of

attorney's fees.

Flynn essentially raises four issues in her appeal.

First, she argues that the publisher’s use of her name on the book

without her consent constituted a violation of the Lanham Act and

that the district court applied the wrong standard when it granted

4
Flynn argued that the court should still enjoin AK Peters
from selling Mobile Robots to remedy the purported breach, but the
court rejected that request. Flynn does not renew that request on
appeal.

-9-
AK Peters summary judgment on her Lanham Act claim. Second, she

claims that the district court erroneously granted JMOL to the

publisher on her breach of contract claim based on its mistaken

conclusion that she had not demonstrated damages arising from the

alleged breach. Relatedly, she claims that the timing of the

court's erroneous JMOL ruling, which the court issued right before

the parties presented their closing arguments to the jury, created

the misperception in the jurors' minds that she consented to

publication and that this perception prejudiced the jury's

consideration of her two California state law claims. Third, she

claims that the court improperly instructed the jury regarding the

meaning of Paragraph L and its relevance to her California state

law claims. Finally, she claims that AK Peters waived its right to

attorney's fees under the California fee-shifting provision; even

if it did not waive its right to fees, she asserts that the

district court's fee award was overly generous. We consider these

claims seriatim.

II.

A. Lanham Act

Flynn claims that AK Peters violated the Lanham Act by

listing her as an author of the second edition of Mobile Robots

without her consent. More specifically, she alleged in the

district court that "[t]he misleading use of her name is likely to

cause confusion by consumers as well as plaintiff's academic peers

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in that it will be assumed that she contributed to the revisions

and approved of the changes." Concluding that Flynn failed to

demonstrate that her name "is so associated with robotics that

within the robotic community it has an independent value or

meaning," the district court granted summary judgment to AK Peters

on her Lanham Act claim. Flynn claims that this "independent value

test" has no basis in First Circuit precedent and that she properly

opposed AK Peters’ summary judgment motion by citing her experience

in the robotics field and by alleging that she is famous within the

robotics community.5

Section 43(a) of the Lanham Act creates civil liability

for, inter alia:

Any person who, on or in connection with any
goods or services, . . . uses in commerce any
. . . false designation of origin [which] is
likely to cause confusion, or to cause
mistake, or to deceive as to the affiliation,
connection, or association of such person with
another person, or as to the origin,
sponsorship, or approval of his or her goods,
services, or commercial activities by another
person[.]

15 U.S.C. § 1125(a)(1)(A). This provision "is designed to reach,

among other things, attempts to appropriate the goodwill associated

with a competitor's trademark by means of confusingly similar

5
No party has argued to us the effect of Dastar v. Twentieth
Century Fox Film Corp., 123 S. Ct. 2041 (2003) on this claim. As
a result we do not reach any issue under Dastar as to whether a
claim is stated here. Rather, we deal with the case on the terms
briefed to us by the parties.

-11-
marking and packaging, which would create an impression that the

products of the defendant originated with the plaintiff."

Purolator, Inc. v. EFRA Distributors, Inc., 687 F.2d 554, 561 (1st

Cir. 1982). See also Waldman Pub. Corp. v. Landoll, Inc., 43 F.3d

775, 780 (2d Cir. 1994) (stating that section 43(a) prohibits,

inter alia , "'palming off[,]' . . . in which 'A' sells its product

under 'B's' name"). The key inquiry in a section 43(a) case is

whether the defendant's use of the plaintiff's trademark creates

confusion in the minds of consumers.

The Lanham Act defines the term "trademark" to include

any word or name used by a person "to identify and distinguish his

or her goods . . . from those manufactured or sold by others and to

indicate the source of the goods, even if that source is unknown."

15 U.S.C. § 1127. Strong and distinctive trademarks, such as

fanciful words (e.g., "Clorox") and words used in arbitrary ways

(e.g., "Apple Computers"), receive greater protection than weak,

generic marks (e.g., "bleach"). Some words are so common within a

particular context that they cannot secure any trademark protection

until they acquire a special association with a particular source

of consumer products or services. This association is called

"secondary meaning." Pursuant to this doctrine, "'[w]ords which

have a primary meaning of their own . . . may by long use in

connection with a particular product, come to be known by the

public as specifically designating that product.'" Volkswagenwerk

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AG v. Wheeler, 814 F.2d 812, 816 (1st Cir. 1987) (quoting

Volkswagenwerk AG v. Rickard, 492 F.2d 474, 477 (5th Cir. 1974));

see also DeCosta v. Viacom Int'l, Inc., 981 F.2d 602, 606 (1st Cir.

1992) (stating that secondary meaning "refers to a word's, or a

sign's, ability to tell the public that the word or sign serves a

special trademark function, namely, that it denotes a product or

service that comes from a particular source"). "The establishment

of secondary meaning in a word is an issue of fact," Wheeler, 814

F.2d at 816, and the individual seeking protection for a mark bears

the burden of proving that secondary meaning has attached within

the relevant class of consumers. Boston Beer Co. v. Slesar Bros.

Brewing Co., 9 F.3d 175, 181 (1st Cir. 1993). "There is sufficient

secondary meaning as long as a significant quantity of the

consuming public understand a name as referring exclusively to the

appropriate party . . . ." President & Trustees of Colby College

v. Colby College-New Hampshire, 508 F.2d 804, 807 (1st Cir. 1975);

see also 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair

Competition § 15:8 (4th ed. 2004) (stating that to establish

secondary meaning, a plaintiff needs to show "that the ordinary

buyer associates the mark with a single, albeit anonymous,

source").6

6
As we understand the district court opinion, it used the word
"independent value or meaning" as a synonym for "secondary
meaning." Contrary to Flynn's claim, the district court did not
develop an "independent value" test that reached beyond the
established precedents on secondary meaning.

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 Personal names are included in the class of common words

that may not secure protected trademark status until secondary

meaning has attached. See Donoghue v. IBC/USA (Publications), Inc.,

886 F. Supp. 947, 952 (D. Mass. 1995) ("[S]urnames, when used as

trademarks, are inherently indistinctive, i.e., weak [and] are

permitted trademark protection only upon a showing that they have

become strong marks by acquiring distinctiveness through secondary

meaning."); 2 McCarthy, supra, § 13:2. According to Professor

McCarthy:

Secondary meaning grows out of long
association of the [personal] name with the
business, and thereby becomes the name of the
business as such; is acquired when the name
and the business become synonymous in the
public mind; and submerges the primary meaning
of the name as a word identifying a person, in
favor of its meaning as a word identifying
that business.

Id. Therefore, before we can consider whether AK Peters infringed

upon Flynn's purported use of her name as a trademark, we must

evaluate whether Flynn's name has acquired secondary meaning within

the relevant class of consumers.

"Proof of secondary meaning entails vigorous evidentiary

requirements." Boston Beer Co., 9 F.2d at 181. The plaintiff must

not only show that it used a personal name as a trademark, but that

a "substantial portion of the consuming public associates [the

name] specifically with [its] business." Id. at 182. Furthermore,

the plaintiff must show that these consumers base purchasing

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decisions upon seeing the trademark (i.e. the personal name) on the

product:

To acquire a secondary meaning in the minds of
the buying public, a labelled product, when
shown to a prospective customer, must prompt
the reaction, "That is the product I want
because I know that all products with that
label come from a single source and have the
same level of quality." In other words, the
article must proclaim its identity of source
and quality, and not serve simply to stimulate
further enquiry about it.

2 McCarthy, supra, § 15:11. The plaintiff can meet this

evidentiary burden through the use of direct evidence, such as

consumer surveys or testimony from consumers, or through the use of

circumstantial evidence. Since Flynn did not provide any direct

evidence on this issue, we will focus on the requirements for

circumstantial evidence. A plaintiff may establish secondary

meaning for a name by presenting circumstantial evidence regarding:

"(1) the length and manner of its use, (2) the nature and extent of

advertising and promotion of the mark and (3) the efforts made in

the direction of promoting a conscious connection, in the public's

mind, between the name or mark and a particular product or

venture." Boston Beer Co., 9 F.3d at 182; see also 815 Tonawanda

St. Corp. v. Fay's Drug Co., 842 F.2d 643, 648 (2d Cir. 1988)

(including among the factors that may be considered to prove

secondary meaning "advertising expenditures, consumer surveys,

media coverage, attempts to copy the mark, and length and

exclusivity of use").

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 Flynn submitted for the summary judgment record a copy of

her curriculum vitae and an affidavit in which she stated that she

has worked in the robotics field since 1985, has given seventy

invited talks and written twenty-nine papers in the field, and has

founded a company that designs micro robots. Viewed in the proper

light, she claims that this evidence demonstrates that "she has an

esteemed reputation and a well-recognized name." This claim

ignores the stringent requirements for secondary meaning evidence.

"Such 'opinion' testimony by a [party] is considered self-serving

and of little probative value." Fay's Drug Co., 842 F.2d at 648.

It would be more important to know, for example, how likely it

would be for the average consumer of books like Mobile Robots to be

aware of the papers Flynn cites. It is the mindset of these likely

consumers and not simply the strength of her publication record in

the abstract that matters in determining whether secondary meaning

has attached. Moreover, Flynn declared that the authors intended

to market the book to "a wide audience" from "high school age to

Ph.D. level researchers"; therefore, it is this broad class of

consumers and not a select subset of academic "insiders" that

matters for secondary meaning purposes. Flynn failed to produce

any evidence demonstrating that this extended group of consumers is

aware of her academic achievements.

Flynn also says in her affidavit that a handful of

strangers have told her that they recognized her from a talk or

-16-
that they had read her book, and her nephew says in his affidavit

that a robotics graduate student that he met said that Flynn was

"famous." However, such limited anecdotal evidence does little to

establish that her name has acquired secondary meaning within the

class of consumers who would be likely to purchase a book on

robotics, and that these consumers would be more likely to purchase

books because her name was on the cover.

Flynn's reliance on Donoghue highlights the weakness of

her case. In that case, the court enjoined a mailing company from

using the plaintiff's name and face in an advertisement after the

plaintiff, a financial expert, introduced evidence demonstrating

that

[He] is a nationally known investment advisor,
with expertise in the subject of money market
and mutual fund investing. He has been in the
business of providing investment advisory
services to the general investing public for
approximately twenty-two years. The plaintiff
has written ten books on the subject of
investment advice and is a nationally
syndicated financial columnist. Over the past
decade, he has appeared frequently on network,
cable and syndicated television shows dealing
with financial markets, financial advice, and
investments, and, over the past twenty-two
years, he has participated in hundreds of
seminars and conferences regarding investment
strategies.

Id. at 948-49. He also produced a monthly audio cassette

investment advisory service and an electronic mutual fund tracking

and analysis service and published a print newsletter, which had

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17,000 subscribers and was "well-known among consumers and in the

financial advisory services industry for its analyses of market

trends and its mutual fund recommendations." Id. at 949. Given

this circumstantial evidence, the court concluded that the

plaintiff "has become widely known, due to his efforts during the

past twenty-two years, as [a financial] expert" and that his name

"through numerous publications and determined self-promotion, has

become associated in the public mind with expertise in strategic

investment advice." Id. at 953. Accordingly, the court did not

have difficulty concluding that "the plaintiff's surname has

acquired a secondary meaning vesting it with protected trademark

status." Id.

Flynn's summary judgment offerings do not remotely

approach the evidence of secondary meaning presented in Donoghue.

If Flynn's evidence demonstrated anything, it is that she has

expertise in the robotics field and that a handful of individuals

in the field have recognized her name and face. That evidence did

not demonstrate that the relevant consumers have associated her

name with a product. She did not demonstrate that a reasonable

factfinder could conclude that her name serves anything more than

its primary function to identify her as an individual. Given this

failure to demonstrate that her name has acquired secondary

meaning, we must agree with the district court that the Lanham Act

does not apply to her claim.

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B. Breach of Contract

Flynn alleged that AK Peters breached its original

publication contract with her by accepting revisions to Mobile

Robots and adding Seiger as a co-author without her consent. She

claims on appeal that the district court erroneously granted AK

Peters’ JMOL motion on her breach claim based on its mistaken

conclusion that she failed to establish damages from the breach.

She cites evidence relating to damage to her reputation and damage

due to AK Peters’ decision to withhold her royalties. Moreover,

she argues that even if she did not prove actual damages, “her

claim for breach of contract should still have been submitted to

the jury with an instruction on nominal damages."7

1. Actual Damages

Flynn's claim that AK Peters owes her royalties for the

second edition of Mobile Robots cannot support her claim for a

breach of Paragraph L of the original publication contract (dealing

with the relationship between the authors/editors and the publisher

over revisions to the first edition of Mobile Robots). Even if AK

Peters has withheld her royalties to retaliate for this lawsuit,

7
Flynn also cites "lost wages" in her brief. However, she
does not actually claim that she has lost wages. Rather, she
simply argues that she will have to spend two years of her life
writing a new book to eliminate the current stain on her
reputation. Therefore, we consider the wages claim to be an
attempt to monetize her reputational harm and not an independent
source of harm.

-19-
that alleged breach would constitute a separate breach never relied

upon in Flynn's pleadings and never actually litigated at trial.

Flynn's allegation of harm to her reputation also fails.

As the Massachusetts courts have stated, "[d]amages for injury to

reputation are usually not available in contract actions," Daley v.

Town of West Brookfield, 476 N.E.2d 980, 980 n.1 (Mass. App. 1985),

because such damages are remote, speculative, and not within the

contemplation of the parties. See Redgrave v. Boston Symphony

Orchestra, Inc, 855 F.2d 888, 892 (1st Cir. 1988) (en banc). We

have made exceptions to this general rule when plaintiffs have

provided evidence of specific harm that is proximately related to

their reputational injury. See id. (allowing recovery for harm to

reputation when the plaintiff, an actress, identified specific

movie and theater performances that would have been offered to her

but for the breach of contract); see also Jorgensen v. Mass. Port

Auth., 905 F.2d 515, 522 (1st Cir. 1990) ("Massachusetts might . .

. decide to respond to these foreseeability concerns not by

rejecting reputation-damage claims entirely, but by allowing them

if plaintiffs can show specific identifiable lost job opportunities

or an equivalently particular form of injury.").

Flynn failed to make such a particularized showing. In

fact, her trial testimony undercut her claim that the alleged

breach of AK Peters harmed her professional reputation. When she

was asked whether any person told her that they thought less of her

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because her name was on the revised edition of Mobile Robots, she

replied: "People treat me okay. Nobody has told me that they think

less of me. But people have told me they think more of me for

standing up for this and pursuing this litigation." Moreover, she

was named a visiting assistant professor at the University of

California at Berkeley after the second edition of Mobile Robots

was published, and she admitted in her deposition that she was not

aware of having "been denied any grants or any job promotions

because of the second edition of the book." Viewing Flynn's

allegations regarding reputational harm within the context of

Massachusetts case law, we have no difficulty concluding that she

failed to introduce any evidence substantiating damages from AK

Peters' publication of the revised edition of Mobile Robots.

2. Nominal Damages

Flynn is correct that she would have been entitled to

nominal damages even if she could not prove actual damages as part

of her contract claim. Under Massachusetts law, a person who is

injured by a breach of contract has a right to judgment even if the

breach caused no harm. Nathan v. Tremont Storage Warehouse, 102

N.E.2d 421, 423 (Mass. 1951); see also Restatement (Second) of

Contracts § 346 (1979). If Flynn had raised the issue properly,

the court should have allowed her breach of contract claim to go to

the jury with an instruction on nominal damages.

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 We conclude, however, that Flynn forfeited her right to

appeal the court's erroneous conclusion that she was required to

prove actual damages to establish a breach of contract claim. When

AK Peters argued in favor of its motion for JMOL by stating that

she failed to prove damages, Flynn did not make the nominal damages

argument. Instead, she argued that she had, in fact, proved

damages. Also, she herself asserted that proof of damages was an

essential element of a breach of contract action.8 Hence, she has

unmistakably forfeited her claim that the district court

erroneously granted JMOL on her contract theory, as well as her

related claim of prejudice related to the timing of the court's

ruling.9

C. Jury Instruction on California Statutory Claims

After the jury had been deliberating for six hours on

Flynn's two remaining claims, the California statutory claims, one

of the jurors sent a note to the court asking it to “explain

Paragraph L of the original contract in layman’s terms.” That

8
Flynn does not argue to the contrary on appeal. Instead, she
cites the portion of AK Peters' proposed jury instruction in which
it stated that she was entitled to nominal damages if she
established the other elements of her contract claim. Flynn cannot
rely on the proposed instruction of the defendant to meet her own
obligation to raise the nominal damages issue with the district
court.
9
Theoretically, Flynn could request plain error review of her
forfeited claim, see Chestnut v. City of Lowell, 305 F.3d 18, 20
(1st Cir. 2002) (en banc); however, she makes no such argument on
appeal, and any such argument would be unavailing.

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portion of the contract provides that 1) the authors are obligated

to provide a revised edition if the publisher requests one; 2) if

the authors are unable or unwilling to revise the text, the

publisher may hire another person (paid with a portion of the

authors' royalties) to perform the revision; and 3) the authors may

not "unreasonably withhold" their consent regarding the process

once the publishers undertake a revision. The contract also states

that all of the terms of the original contract apply to future

revisions as if those revisions are the original edition.

Flynn told the judge that she did not think that

Paragraph L applied to the statutory claims because she never

expressed any unwillingness to make the revisions herself.

Therefore, she said that the court should instruct the members of

the jury that contract interpretation is a factual matter and that

it is their job to interpret the language. Although AK Peters

agreed that the court should leave the interpretation of Paragraph

L up to the jury, it said that if the jurors were to conclude that

Paragraph L applied, they should be instructed to apply each

sentence of the contract as they found the facts. The court

brought the jury into the courtroom and the following colloquy

ensued:

THE COURT: I understand the first sentence of
Paragraph L, which says that the
author/editor agrees to revise the work
when the publishers will decide and so
forth to mean as follows: That the
publisher has the right to decide that

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 a revision is desirable. And if he
does, the author/editors agree to
revise the work and to deliver a
revised version within a reasonable
period of time.

In addition, it’s important to note
that the last sentence of Section L
states that all terms of this agreement
shall apply to each revision as though
it were the work being published for
the first time. So the same rules
apply to the revision as to the first
one.

Does that explanation help you? Or are there –

A JUROR: No, there’s more.

THE COURT: I’m sorry?

JURY FOREPERSON: I guess they’re saying it was
the middle line, Your Honor.

THE COURT: The middle?

A JUROR: It says if the editor/author is not
willing, available–the publisher has
the right to do something.

THE COURT: Yes. Oh, I see what you mean. It
says, Should the author/editor be
unable or unwilling to undertake such
revision or be deceased, which doesn’t
apply there, the publisher may arrange
an agreement with the author not to be
unreasonably withheld for the
preparation of a revised manuscript.

Now, do you have a question about the
meaning of that?

A JUROR: Yes.

THE COURT: As I read it, what it means is that
if the author won’t do what the first
sentence says he agrees to do or is

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 unable to do so, then the publisher may
do so.

Now, the question is a little more
complicated in this case by the fact that
there were two authors to begin with. And
one of them, Mr. Jones, clearly did agree.
And Ms. Flynn contends that she didn’t
agree.

I don’t think I can aluminate [sic] any
more than I have with as much
experience as I’ve had with this sort
of–does that help?

A JUROR: Yes.

THE COURT: Okay. Please return and go ahead.

Neither party objected to this instruction, and the jury returned

to its deliberations.

Flynn now claims that the court’s instruction contained

significant prejudicial errors. She argues that the court failed

to instruct the jury that the relevance of Paragraph L to the

dispute was a factual matter that the jurors had to resolve for

themselves, that it misstated the facts by saying that Flynn

“contends she did not agree” to undertake a revision, and that its

interpretation of the contract foreclosed the possibility that the

jury could have concluded that her refusal to consent to the

changes to the book, including the addition of Seiger as a co-

author, was reasonable.

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 While we agree that the district court’s instruction was

problematic,10 Flynn's failure to object when the court issued the

instruction constituted a forfeiture of her right to object on

appeal. See Fed. R. Civ. P. 51(c) (stating that a party must

"object[] promptly after learning that the instruction or request

will be, or has been, given or refused"); Gray v. Genlyte Group,

Inc., 289 F.3d 128, 134 (1st Cir. 2002)("[E]ven if the initial

request is made in detail, the party who seeks but did not get the

instruction must object again after the instructions are given but

before the jury retires for deliberations.") (emphasis in

original). As we have previously observed, "[o]ur interpretation

of Rule 51 is quite strict." Connelly v. Hyundai Motor Co., 351

F.3d 535, 544 (1st Cir. 2003). There is a good reason for this

strictness. We enforce our object-or-forfeit rule "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 by covertly relying on

the error." Cross v. Cleaver, 142 F.3d 1059, 1068 (8th Cir. 1998)

(citation and internal quotation marks omitted).

10
Flynn's primary breach argument was that the publisher,
contrary to the requirement of Paragraph L, never presented to her
the revisions that were contemplated. In short, she was never
given a chance to agree or disagree. The court's instruction
seemed to miss this nuance. The court's instruction also seemed to
obscure the right of the authors reasonably to withhold their
agreement to revisions.

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 Flynn argues that we should not apply our object-or-

forfeit rule here because she did not have an opportunity to

object.11 "As a practical matter," she says, "there was no way to

make an objection in the time between the Court's question 'does

that help?', the juror's response 'Yes', and the Court's 'Okay.

Please return and go ahead.'" We disagree. Even in the absence of

an inquiry from the judge about objections from counsel to the

court's answers to the jurors' questions, she could have and should

have objected after the judge finished his instruction but before

the jurors left the courtroom. Whatever discomfort counsel may

have felt about objecting without an invitation, such a response is

required if litigants want to preserve their rights. As the D.C.

Circuit noted in its response to a litigant in similar

circumstances: "We think he was under the duty to object and, even

at the risk of incurring the displeasure of the trial court, to

insist upon his objection. Having failed to do so, it is too late

to urge this as error here." Phillips v. Kitt, 290 F.2d 377, 378

(D.C. Cir. 1961) (per curiam).

D. Attorney's Fees.

California Civil Code section 3344, one of the statutes

under which Flynn filed her claims, includes a fee-shifting

11
Flynn also argues that Rule 51 does not apply because it was
up to the jury to interpret the contract and because the court's
interpretation of the contract was incorrect as a matter of law.
Her argument confuses an argument on the merits with an argument as
to whether we should consider the merits.

-27-
provision: “[T]he prevailing party in any action under this

section shall also be entitled to attorney’s fees and costs.”

Flynn pleaded in her complaint that she intended to seek attorney’s

fees, but AK Peters did not inform her of its intention to do so

until the parties met in the judge’s chambers to discuss the jury

charge. Flynn claims that this delay constituted a forfeiture of

AK Peters’ right to seek fees under the statute. Even if the

publisher did not forfeit its claim to fees, she argues that the

court’s award of $55,000 was unreasonably generous and should be

reduced.

In support of her forfeiture claim, Flynn argues that

attorney's fees sought by a prevailing defendant are “special

damages” within the meaning of Fed. R. Civ. P. 9(g),12 and that AK

Peters forfeited its right to seek special damages by not stating

its intention to do so in its answer to her complaint. The

district court rejected this novel argument, holding that Fed. R.

Civ. P. 54(d)(2)13 alone governed AK Peters' claim for attorney's

12
Fed. R. Civ. P. 9(g) states: “When items of special damage
are claimed, they shall be specifically stated.”
13
Fed. R. Civ. P. 54(d)(2) states, in pertinent part:
2) Attorneys' Fees.

(A) Claims for attorneys' fees and related nontaxable
expenses shall be made by motion unless the substantive
law governing the action provides for the recovery of
such fees as an element of damages to be proved at trial.

(B) Unless otherwise provided by statute or order of the
court, the motion must be filed no later than 14 days

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fees. On appeal, Flynn fails to cite any authority demonstrating

that, under California law, litigants must prove the right to

section 3344 attorney's fees as a separate element of damages, and

we have not been able to locate such authority. Concluding that

Rule 54(d)(2) controls this case, we affirm the district court’s

conclusion that AK Peters did not forfeit its right to seek

attorney's fees.

We review the court's determination regarding the

reasonableness of the prevailing party's attorney's fee request for

"manifest abuse of discretion" and, barring legal errors, "we will

set aside a fee award only if it clearly appears that the trial

court ignored a factor deserving significant weight, relied upon an

improper factor, or evaluated all the proper factors (and no

improper ones), but made a serious mistake in weighing them." Poy

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

marks omitted).

Flynn does not object to the rate that AK Peters'

attorney charged, which the publisher's attorney claimed was below

market rates, nor does she claim that AK Peters' attorney billing

after entry of judgment; must specify the judgment and
the statute, rule, or other grounds entitling the moving
party to the award; and must state the amount or provide
a fair estimate of the amount sought. If directed by the
court, the motion shall also disclose the terms of any
agreement with respect to fees to be paid for the
services for which claim is made.

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records were not sufficiently specific. Instead, noting that only

ten percent of the pleadings were directly related to the section

3344 claim and that the attorneys only referenced section 3344 in

billing entries totaling $6,417, she argues that she should only be

responsible for ten percent of AK Peters’ legal costs. The

district court rejected this argument, concluding that the

complexity and length of the litigation justified the fees. It

specifically noted that the bills represented two years of legal

work defending Flynn’s section 3344 claim and that AK Peters did

not present bills for expenses that it incurred while defending the

claim in the California court. Most importantly, in our view, the

consent issue that was integral to the section 3344 claim was also

common to all of the claims. Therefore, we reject her argument

that there was an abuse of discretion in the district court's fee

award.

Affirmed.

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