United States Court of Appeals
For the First Circuit
No. 05-2402
JOEL CIPES, D/B/A JOEL CIPES PHOTOGRAPHY,
Plaintiff, Appellee,
v.
MIKASA, INC.,
Defendant, Appellant.
APPEAL FROM THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS
[Hon. Nathaniel M. Gorton, U.S. District Judge]
Before
Selya, Lynch and Lipez, Circuit Judges.
R. Bradford Fawley, with whom Downs Rachlin Martin PLLC,
Howard J. Susser, Michael P. Murphy, Burns & Levinson LLP, Leonard
J. Santisi, and Frommer Lawrence & Haug LLP were on brief, for
appellant.
Andrew D. Epstein, with whom Barker, Epstein & Loscocco was on
brief, for appellee.
March 3, 2006
SELYA, Circuit Judge. In the case underlying this
chameleon-like appeal, a jury found defendant-appellant Mikasa,
Inc. liable for copyright infringement and awarded damages of
$665,000 to the copyright holder, plaintiff-appellee Joel Cipes.
Mikasa, shifting theories at every turn, asks us to intercede.
Finding Mikasa's evanescent arguments unpersuasive, we affirm the
judgment below.
The facts are straightforward. Mikasa is a national
purveyor of dinnerware, glassware, and the like. For several
years, Cipes (an independent contractor) served as Mikasa's primary
advertising photographer. Cipes copyrighted the photographs. See
17 U.S.C. § 201.
Initially, the parties operated under an oral agreement.
The terms of that agreement provided that Mikasa would pay Cipes a
flat fee for each commissioned photograph. The amount of the fee
varied based on complexity and intended use. While Mikasa could
thereafter reuse the photographs in its own publications (e.g.,
company catalogs, brochures, and mailings) without any incremental
payment, it had to pay Cipes a further stipend if it wished to
reuse a photograph in an advertisement placed in, say, a national
magazine.
Mikasa eventually developed an antipathy to the payment
of national advertising reuse fees. In December of 1998, it
informed Cipes that his relationship with Mikasa would be at risk
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if he continued to insist on the supplemental payments. Cipes
responded with a letter that proposed a more munificent price list
for photographs taken in 1999 and eliminated any reuse fees.
Mikasa did not respond to the letter but it continued to avail
itself of Cipes's services.
The parties' relationship endured, without any further
negotiations, throughout 2000 and into 2001. That created a
problem because Cipes's letter was ambiguous. He testified that it
only applied to 1999 and that, thereafter, the parties were once
again operating under their original fee arrangement. Mikasa's
representatives alleged that the 1999 prices and terms remained in
effect for subsequent years.
Matters came to a head when Cipes demanded reuse fees for
2000 and 2001. Mikasa demurred, asserting that Cipes's letter
constituted a perpetual waiver of such fees. Unable to resolve
this dispute amicably, the parties went their separate ways.
Mikasa nonetheless continued to reuse Cipes's photographs in
national advertising media even after Cipes's attorney sent a
cease-and-desist letter.
On December 10, 2002, Cipes sued Mikasa in federal
district court. His complaint alleged that Mikasa (i) infringed
his copyrights when it republished his photographs without a valid
license and (ii) breached the parties' contract when it refused to
pay the required fees for photographs reused in and after 2000.
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Mikasa denied these allegations. A jury was empaneled and trial
commenced on February 14, 2005.
At the close of all the evidence, the district court
proposed a special verdict form (to which the parties unreservedly
assented) and addressed the parties' proffered jury instructions.
With respect to each suggested instruction, the court indicated
whether it would include the substance of the proposition in its
final charge. It then entertained comments and warned counsel that
they should be sure to register any objections after the court read
the final version of the instructions to the jury. See Fed. R.
Civ. P. 51(c). The court declined Mikasa's request to furnish the
parties with an advance written copy of the charge on the ground
that the instructions were subject to linguistic polishing and
other minor adjustments until the moment of delivery.
Before instructing the jurors, the court assured them
that they would receive a written copy of the instructions for
their reference during deliberations. Neither party objected to
this anticipated course of action. The court then read the
instructions, afforded the parties an opportunity to object at
sidebar, and sent the jury off to commence deliberations.
What occurred next was quixotic: the deputy clerk was en
route to deliver a copy of the instructions to the jurors when the
jury foreman sent a note to the judge requesting the promised
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instructions. The court allowed the deputy clerk to complete his
mission but did not inform counsel of the note at that juncture.
Responding to the special verdict form, the jury found
Mikasa guilty of infringing Cipes's copyrights and awarded Cipes
$665,000 in damages. However, the jury also found that while the
parties had entered an enforceable contract — presumably evidenced
by Cipes's letter — Mikasa had not breached that contract. Neither
party objected to the taking of the verdict, and the court
discharged the jury.
Next, the court informed counsel of the note requesting
the written jury instructions. The court asked the lawyers whether
they had anything to say. Silence reigned.
After the court entered judgment on the verdict, Mikasa
filed a renewed motion for judgment as a matter of law or,
alternatively, for a new trial. See Fed. R. Civ. P. 50, 59. It
argued, among other things, that the copyright infringement award
was inconsistent with the finding that Mikasa had not committed a
breach of contract. The district court rejected this argument,
plausibly explaining that there was no necessary inconsistency;
although the jury explicitly found that the parties had entered
into an enforceable contract, it did not specify the terms or
duration of the contract and may have found, for example, that the
contract covered only the year 1999. The court proceeded to reject
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Mikasa's other arguments as well and denied its post-trial motion.
This timeous appeal ensued.
In its opening brief on appeal, Mikasa reiterated its
inconsistent verdict claim; asserted that the copyright
infringement award should not stand because the evidence
established, as a matter of law, that Mikasa had a continuing
license to use the photographs; and posited, in the alternative,
that Cipes, through his conduct, had granted Mikasa an implied
license. In response, Cipes maintained that Mikasa had not
adequately preserved any of these arguments and that, in all
events, none of them had the slightest merit.
Without abandoning the points pressed in its opening
brief, Mikasa advanced two new theories in its reply brief. It
contended for the first time that the trial court erred when it (i)
failed to honor defense counsel's request for a written copy of the
jury instructions before delivering the charge and (ii) neglected
contemporaneously to apprise counsel of the jury note. At oral
argument, Mikasa again switched gears; it waived all the issues it
had briefed, save only for its claim of error with respect to the
jury note.1
1
Despite this express waiver, Mikasa's appellate counsel
nevertheless proceeded at oral argument to calumnize the district
court for its unwillingness to supply an advance written copy of
the jury instructions. This criticism is unjustified. Although
the Civil Rules require the court to inform the parties about the
content of its anticipated jury instructions prior to summations
and charge, see Fed. R. Civ. P. 51(b)(1), there is no requirement
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While an appellate court is not compelled to accept a
party's concession on an issue, see, e.g., United States v.
Sánchez-Berríos, 424 F.3d 65, 81 (1st Cir. 2005) (disregarding
concession of error), the issues conceded by Mikasa are both
procedurally defaulted and substantively weak. Consequently, we
accept the waiver and address only the claim of error anent the
jury note.
Procedurally, Mikasa is barred on at least three levels
from advancing its jury note claim. First, Mikasa did not object
after the court told the jurors that it would furnish them with a
written copy of the charge. Second, Mikasa did not object when the
court belatedly informed counsel both of the jury note and of its
actions with respect thereto. Such lost opportunities count
against an appellant. See United States v. Sutton, 970 F.2d 1001,
1006 (1st Cir. 1992) ("When a trial judge announces a proposed
course of action which a party believes to be erroneous, that party
must act expeditiously to call the perceived error to the judge's
attention, on pain of forfeiting the right subsequently to
complain."). Third, Mikasa did not raise the jury note claim in
its opening brief in this court. That omission runs afoul of the
well-settled principle that issues advanced for the first time in
that a trial court give counsel a written copy of the instructions
before charging the jury. Here, the court painstakingly addressed
each of the parties' proposed instructions at the charge conference
and, thus, fully satisfied the strictures of Rule 51(b)(1).
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an appellant's reply brief are deemed by the boards. See, e.g.,
Waste Mgmt. Holdings, Inc. v. Mowbray, 208 F.3d 288, 299 (1st Cir.
2000); Sandstrom v. ChemLawn Corp., 904 F.2d 83, 87 (1st Cir.
1990).
In many instances, procedural defaults work forfeitures
rather than waivers, see generally United States v. Rodriguez, 311
F.3d 435, 437 (1st Cir. 2002) (distinguishing between waivers and
forfeitures), and it is therefore arguable that the jury note
claim, though manifestly unpreserved, might nonetheless be
reviewable for plain error. Even so, Mikasa would not be assisted.
The test for plain error is familiar. Relief under that standard
requires the appellant to make the following showings: "(1) that an
error occurred (2) which was clear or obvious and which not only
(3) affected the [appellant's] substantial rights, but also (4)
seriously impaired the fairness, integrity, or public reputation of
judicial proceedings." United States v. Duarte, 246 F.3d 56, 60
(1st Cir. 2001). Mikasa cannot satisfy that standard here.
Mikasa is undeniably correct in asserting that the
appropriate course of action when a trial court receives a note
from a deliberating jury involves sharing the note with counsel at
the earliest practicable opportunity. See United States v.
Hernandez, 146 F.3d 30, 35 (1st Cir. 1998); United States v.
Parent, 954 F.2d 23, 25 (1st Cir. 1992). A trial court's failure
to follow that course, however, does not automatically constitute
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reversible error; instead, it engenders harmless-error review. See
Parent, 954 F.2d at 25; United States v. Maraj, 947 F.2d 520, 526
(1st Cir. 1991).
In this instance, the error was merely a technical one,
which had no practical effect on the proceedings. The purpose of
the rule is to ensure that counsel are allowed an opportunity to
comment on or object to the court's proposed response to a jury
note before that response is given. See Hernandez, 146 F.3d at 35.
The instant note, however, was not one that required the court to
respond substantively; the written copy of the jury instructions
had been promised in the court's charge — a promise to which Mikasa
had not objected — and the deputy clerk was en route to fulfill
that promise when the judge received the note. Because the judge
simply decided to let the delivery proceed, he had no occasion to
respond substantively. Thus, any error in neglecting to tell
counsel promptly about the note was manifestly harmless.
In a variation on this theme, Mikasa's appellate counsel
insinuates that the copy of the instructions delivered to the jury
did not faithfully replicate the charge as given and that this
discrepancy injected an element of reversible error. Cf. Rogers v.
United States, 422 U.S. 35, 39-41 (1975) (finding court's failure
to apprise counsel of jury note not harmless where question was
"tantamount to a request for further instructions" beyond scope of
original charge). We have compared the copy of the instructions
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sent to the jury (which the district court prudently inserted into
the record) and the transcript of the charge as delivered from the
bench. This comparison offers no hint of prejudicial error.
Despite some trivial semantic alterations, we are satisfied that
the written copy was the functional equivalent of the oral charge.
Straining at gnats while asking us to swallow a camel,
Mikasa's appellate counsel also hypothesizes that the court's
actions might not have been harmless if, for example, the
unrecorded note had indicated something other than the district
judge recounted (say, that the jury was confused about the
imbricated nature of the copyright and contract claims). The
district court could, of course, have avoided any such innuendo by
following our prescribed procedure and marking the jury note as an
exhibit for identification. See Maraj, 947 F.2d at 525. Once
again, however, the error in failing to mark the note was entirely
benign.
These are our reasons. First, the jury note came at the
very start of deliberations. It is extremely doubtful that the
jurors had time, prior to submitting the note, to discuss the case
in any detail. Second, it is wildly implausible that the judge,
having determined to tell the lawyers about the note, would
fictionalize its contents. There is a presumption of regularity
that attends certain judicial proceedings, see, e.g., Ouellette v.
United States, 862 F.2d 371, 374 (1st Cir. 1988), and we are
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comfortable applying that presumption here. Third, and finally, if
Mikasa had any legitimate question about the wording of the jury
note, it could have asked the district court to produce the note
and make it part of the record. Having spurned this opportunity
when the court advised the parties of the note, Mikasa cannot now
be heard to speculate about unsubstantiated worst-case scenarios.
Our review is limited to the record below, see Fed. R. App. P. 10,
and there is nothing in the record to suggest that the note was
anything other than a simple request that the district court follow
through on its promise to furnish a copy of the charge.
We need go no further. A party, dissatisfied with the
district court's handling of a trial yet persuaded that the points
it raised below lack merit, cannot blithely switch horses mid-
stream in hopes of locating a swifter steed. Without exception,
Mikasa's claims have been waived or forfeited, and there is no
basis for disturbing the district court's judgment.
Affirmed.
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