Ji v. Bose Corp.

• Decision Date: 23 November 2010
• Docket Number: Nos. 09-2341,Nos. 09-2342,Nos. 09-2343,s. 09-2341,s. 09-2342,s. 09-2343
• Citation: 97 U.S.P.Q.2d 1217,626 F.3d 116
• Parties: Ting JI, Plaintiff, Appellant/Cross-Appellee, v. BOSE CORPORATION, Defendant/Third-Party Plaintiff, Appellee/Cross-Appellant/Third-Party Cross-Appellee, White/Packert, Inc., Defendant/Third-Party Defendant, Appellee/Third-Party Cross-Appellant.
• Court: U.S. Court of Appeals — First Circuit

626 F.3d 116

97 U.S.P.Q.2d 1217

Ting JI, Plaintiff, Appellant/Cross-Appellee,

v. BOSE CORPORATION, Defendant/Third-Party Plaintiff, Appellee/Cross-Appellant/Third-Party Cross-Appellee,White/Packert, Inc., Defendant/Third-Party Defendant, Appellee/Third-Party Cross-Appellant.

Nos. 09-2341, 09-2342, 09-2343.

United States Court of Appeals, First Circuit.

Heard Sept. 10, 2010.

Decided Nov. 23, 2010.

David K. Friedland, with whom Jaime Rich Vining, Lott & Friedland, P.A., Michael J. Schlesinger, Michael L. Cotzen and Schlesinger & Cotzen, P.L. were on brief, for appellant/cross-appellee.

Gregory A. Madera, with whom Amy L. Brosius, Stephen A. Marshall and Fish & Richardson P.C. were on brief, for Bose Corporation.

Mark D. Robins, with whom Michael R. Scott and Nixon Peabody LLP, were on brief, for White/Packert, Inc.

Before LYNCH, Chief Judge, TORRUELLA and HOWARD, Circuit Judges.

HOWARD, Circuit Judge.

These three consolidated appeals arise out of the improper use of a model's image to package and promote a home entertainment system. The model, plaintiff Ting Ji (Ji), although successful at trial as to liability, insists that a new trial as to damages is necessary to cure the district court's purported errors in refusing to compel discovery and instructing the jury. The maker of the entertainment system, defendant Bose Corporation (Bose), and Ji's photographer, defendant White/Packert, Inc. (White), contest other rulings of the district court in their respective cross-appeals.

After careful review, we affirm in all respects.

I. BACKGROUND

In 2004, Ji participated in a photo shoot for which she was paid $1,000. On the same day, she signed two documents in connection with the shoot. The first was her modeling agency's voucher (Voucher) that confirmed her attendance at the shoot and entitled her to payment. The Voucher included a release assigning limited use of Ji's photos; among other things, the release prohibited the use of images for "packages, point of purchase, [and] displays." The second instrument that Ji signed was White's adult release (Release), which included a broad release that assigned the "absolute right and permission to ... use" Ji's images "for any purpose whatsoever."

Thinking that it had secured a "total buy-out" of Ji's images based on the Release, White conveyed the images to Bose. Bose selected one of those images for the packaging of its 3•2•1® Series II DVD Home Entertainment System (the 321 System) and related promotional media. The image Bose selected featured the 321 System with Ji partially embracing a male model as they watched television from a couch. The photo was taken from behind the couch, exposing the back of Ji's head and little of her face; as a result, Ji is barely recognizable. Bose placed the image on the upper right-hand corner of each side of the 321 System's packaging.

After Ji discovered her image while perusing a Best Buy store, she sued Bose in federal district court in Florida. She asserted a false endorsement claim under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), a right-to-publicity claim under Florida Statutes § 540.08, and a common-law claim for invasion of privacy. Bose successfully moved to transfer the case to federal district court in Massachusetts, where it is based. Ji amended her complaint to assert an additional claim for unfair trade practices under Mass. Gen. Laws ch. 93A.¹ She also added White as a defendant. Bose then filed cross-claims against White for breach of contract, misrepresentation, indemnification, and contribution.

During discovery, Ji sought financial information from Bose, including sales data concerning its 321 System, on the ground that she needed that information to prove damages under the Lanham Act. Bose objected because, as a private company, its financial information, and particularly information concerning its sales, was sensitive and closely guarded. Bose also argued that discovery concerning such information should await the district court's ruling on Bose's pending and potentiallydispositive motion for partial summary judgment on Ji's Lanham Act claim. The district court agreed and postponed discovery.

The court eventually granted Bose's partial summary judgment motion and dismissed Ji's Lanham Act claim. Of the factors that courts have found necessary to prove false endorsement under the Lanham Act, the district court concluded that Ji could at best prove two and that six leaned decidedly in Bose's favor. See Downing v. Abercrombie & Fitch, 265 F.3d 994, 1007-08 (9th Cir.2001) (listing factors in false endorsement case). Of critical importance to the district court, Ji did not show, nor could the court credibly infer, that her identity (or "mark," in trademark parlance) was familiar to Bose's target audience.

Despite this setback, and the specter that her extant discovery requests would be fruitless, Ji again moved to compel production of Bose's financial information. This time Ji argued that she still needed that information in order to prove damages on her right-to-publicity claim because Florida law entitled her, if successful, to a "reasonable royalty." Fla. Stat. § 540.08. The district court initially denied the motion. On further reflection, however, the court granted it in part and ordered Bose to produce information "sufficient for [Ji] to inform the jury of the extent of [Bose's] use" of her image:

This Court has previously ruled that the "reasonable royalty" language in Fla. Stat. § 540.08 provides for recovery of compensatory damages which does not implicate the net worth of the defendant. Nevertheless, the plaintiff may reasonably argue that her fair compensation, should she prove a violation of the statute, ought to depend, to some degree, upon Bose's usage of her image.

Bose will, therefore, produce to Ji ... information sufficient for her to inform the jury of the extent of its use of the subject photographs. Such information includes, to the extent that it is available, 1) the number of unit boxes on which her image appeared, 2) the number of point-of-purchase displays that were produced in the years in which her image was in use and 3) the number of promotional CD-ROMs that were distributed in the advertisement of the [321 System]. Bose will not be required to produce sales figures with respect to its [321 System] unless no other metric, such as those indicated in the preceding sentence, is ascertainable.

After the close of discovery, Bose and White moved for summary judgment on Ji's Florida claims. They asserted, and Ji agreed, that her Florida claims "hinged on" a question of contract interpretation: whether the Voucher or the Release controlled Bose's rights with respect to the images of Ji taken by White. Bose and White argued that the Release controlled because the Voucher left essential terms blank and was therefore unenforceable. Ji countered that the absence of some terms in the Voucher did not invalidate it. According to Ji, the Voucher controlled because it was executed earlier in time. At the very least, Ji argued, the question was more appropriate for the jury because it involved competing accounts of the parties' intentions. Viewing both contracts together, the district court concluded that it was unclear from the plain language which controlled the dispute. Because the parties submitted conflicting extrinsic evidence, and had retained expert witnesses in part to opine on this precise question, the district court denied summary judgment.

The case proceeded to trial. After four days of argument and testimony, the jury found that Bose violated Ji's publicity andprivacy rights under Florida law but awarded her only $10,000 (a fraction of her $2 million demand).² The jury also found that White was liable to Bose for the award.

After judgment entered, Bose moved for attorneys' fees on Ji's unsuccessful false endorsement claim under an express provision in the Lanham Act, 15 U.S.C. § 1117(a) ("[t]he Court in exceptional cases may award reasonable attorneys' fees to the prevailing party"), and as a sanction for "vexatious" litigation under 28 U.S.C. § 1927 (providing for attorneys' fees in cases where an attorney "unreasonably and vexatiously ... multiplies the proceedings in any case"). The district court denied the motion on the ground that Ji's false endorsement claim, while meritless, failed to satisfy the high standards under either statute for the imposition of attorneys' fees.

All parties appealed.

II. DISCUSSION

These appeals raise three main issues.

A. Measure of Damages under Florida Statutes § 540.08

Ji's principal grievance is that the district court fundamentally misunderstood the measure of damages under § 540.08 as compensatory rather than royalty based. Had the court correctly understood the law, Ji argues, it should have compelled Bose to produce sales data (number of units sold, revenues, profits), rather than mere usage data (number of units on which Ji's image appeared). Ji contends that without sales data the jury could not calculate a percentage of sales, and therefore could not determine a reasonable royalty. Ji also argues that the court's omission of her proposed royalty-based damages instruction was erroneous. Even if the jury had the benefit of sales data, Ji postulates, it still could not have determined a reasonable royalty because the court's charge restricted any award to compensatory damages. According to Ji, these errors require a new trial on damages. ³

We disagree. In doing so, we need not prophesy whether the Florida Supreme Court would characterize damages under § 540.08 as compensatory or something else. Instead, we take each of Ji's two arguments on their own terms and reject them.

1. Motion to Compel

"Discovery orders ordinarily are reviewed for abuse of discretion." Cusumano v. Microsoft Corp., 162 F.3d 708, 713 (1st Cir.1998). This standard is "not appellant-friendly," and we will not intervene without a "clear showing of manifestinjustice, that is, where the...