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`United States Court of Appeals
`For the First Circuit
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`Nos. 17-1264,
` 17-1316
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`DONALD THOMAS SCHOLZ,
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`Plaintiff/Counterclaim-Defendant, Appellant/Cross-Appellee,
`v.
`BARRY GOUDREAU,
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`Defendant/Counterclaim-Plaintiff, Appellee/Cross-Appellant.
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`APPEALS FROM THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
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`[Hon. Denise J. Casper, U.S. District Judge]
`
`
`Before
`Torruella, Lynch, and Kayatta,
`Circuit Judges.
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`August 21, 2018
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`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.
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`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.
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`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."
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`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."
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`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,
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`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.
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`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.
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`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
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`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-
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`
`
`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, fra
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