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USCA1 Opinion

March 17, 1993

[NOT FOR PUBLICATION]

UNITED STATES COURT OF APPEALS


FOR THE FIRST CIRCUIT
___________________
No. 92-1985
TROPICANA PRODUCTS, INC.,
Plaintiff, Appellee,
v.
VERO BEACH GROVES, INC.,
Defendant, Appellant.
__________________
APPEAL FROM THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS
[Hon. Robert E. Keeton, U.S. District Judge]
___________________
___________________
Before
Torruella, Cyr and Boudin,
Circuit Judges.
______________
___________________
Steven J.

Comen,

William

R.

Moore, Michael

C.

Fee

and

________________
__________________ ________________
Hinckley, Allen & Snyder on Motion in Opposition to Motion for
_________________________
Costs and Attorneys' Fees, for appellant.
Robert F. Sylvia, Steven J. Comen, Michael C. Fee, William
________________
_______________ _______________ _______
R. Moore and Hinckley, Allen & Snyder on Further Opposition to
_________
_________________________
Motion for Costs and Attorneys' Fees, for appellant.
R. Mark McCareins, W. Gordon Dobie, John M. Bowler, Winston
__________________ _______________ ______________ _______
& Strawn, Gary R. Greenberg, Goldstein & Manello, P.C., and
_________ ___________________ ___________________________
Steven B. Gold on Motion for Costs and Attorneys' Fees and
_______________
Memorandum in Support, for appellee.
__________________
__________________

Per Curiam.
__________
to

recover

against

double

both

Vero

Tropicana Products,
costs,
Beach

Hinckley, Allen & Snyder,


and

39

frivolous

and

28 U.S.C.

appeal.

We

expenses,
Groves,

and

attorneys'

counsel,

under Fed. R. App. Proc.

Rules 38

deny the

attorneys' fees and sanctions

for

and

bringing an

motion

under Rule 38 and 28

Background
__________

allegedly

for double

1927, but award Tropicana its costs under Rule 39.


I.

fees

its

1927

Inc.

Inc. is seeking

costs,
U.S.C.

In May 1992, Tropicana


and preliminary

and

sued Vero Beach for damages

permanent injunctive

relief,

claiming

that it had violated and continued to violate a prior consent


judgment

of

the district

Lanham Act, 15 U.S.C.

court

and section

juice

with

Vero

squeezed orange juice.


a

of the

1125(a), by its print advertisements

and television commercials comparing


orange

43(a)

Beach's

Tropicana's pasteurized
non-pasteurized,

fresh-

The advertising in question depicted

carton of Tropicana Pure Premium orange juice atop an open

gas flame next


Squeezed

to a

orange juice

accompanying text
juice

carton of Vero
chilling

stated that ".

before they

package it.

'pasteurized' on their

Beach's Honestly

on a

block

of ice.

. . Tropicana
So

when you

carton, you know it

Fresh
The

cooks their
see the

word

has been cooked.

Honestly Fresh Squeezed orange juice is never cooked.

That's

why we can call it fresh squeezed . . . ."

-2-

After

hearing,

the

district

court

granted

Tropicana a temporary restraining order, determining that the

statement that Tropicana "cooked" its orange juice,


with

the picture

of its

orange juice

over an

together

open flame,

misrepresented the nature of Tropicana's flash pasteurization


process.

After a

further hearing,

the

court on

July 23

granted Tropicana's request for a preliminary injunction.

At

that time, a full trial on Tropicana's request for a judgment


of

contempt

and a

permanent

injunction

had already

been

scheduled for November 23.


On

August 6,

injunction.

Its

Vero Beach appealed

initial brief

was due

the preliminary

September 24,

approximately one week before the due date Vero Beach


an

extension

requested
results

of time

the

in

extension

which
because

of settlement discussions

to

file

sought

the brief.

it wished

to

but

await

It
the

through the Civil Appeals

Management Program (CAMP) which were scheduled for October 5.


Two

days

after the

CAMP hearing

settlement, Hinckley,
the

district court

paid it
filed

motion

failed to

Allen moved to withdraw


proceedings because

any legal fees


a

had

since the suit

requesting

the

as counsel in

Vero Beach
had begun.

district

produce a

court

had not
It also
to

stay

discovery and postpone the trial on the merits to permit Vero


Beach time

to find new counsel.

-3-

On October

30, Vero Beach

filed a second motion to extend the time for filing briefs so


that it could seek substitute counsel.
On November 2, the district court granted Hinckley,
Allen's

motion

to withdraw

corporations could

and

informed

not litigate

pro se

Vero Beach

in this

that

circuit so

that it would have to accept a default judgment if it did not


find new
Beach's
a

counsel.

The district

court

also

denied

Vero

motion to stay discovery and continue the trial.

In

letter to Tropicana dated November 10 and forwarded to the

district

court,

Vero Beach

stated that

it would

default judgment given its deteriorating


and the fact

accept a

financial condition

that it could not proceed pro

se.

On November

23, the court entered a default judgment against Vero


finding that
and

it had willfully violated

permanently enjoining

advertising

it

the consent judgment

from any

or any comparative

Beach,

false or

deceptive

advertising relating

to any

Tropicana product.
On
under

Fed.

assented in
Vero

November
R.

App. Pro.

a telephone

Beach's appeal

grounds for

30, Hinckley,

from

the motion,

Rule

Allen

42(b),

to which

call, moving the


the preliminary
the

firm cited

filed a

court to

motion

Tropicana
dismiss

injunction.

As

its withdrawal

as

counsel for Vero

Beach in

that

the default

This

court ordered

the district court

judgment below
the

and the

rendered the

appeal dismissed.

fact

appeal moot.

Tropicana

then

-4-

filed its motion for

costs and attorneys' fees

Vero Beach and Hinckley, Allen.

against both

-5-

II. Discussion
__________
Tropicana's request for costs is clearly justified.
Rule 39 states that, "[e]xcept as otherwise provided by
if an appeal is

dismissed, costs shall be taxed

appellant unless otherwise ordered


Beach

voluntarily dismissed

its

. . . ."
appeal

As

law,

against the
noted, Vero

under Rule

42(b),

which provides that "[a]n appeal

may be dismissed on

motion

of the appellant upon such terms as may be agreed upon by the


parties or fixed

by the

dismissal under Rule 42

court."1

would come within the terms

39, particularly since the notice


case did not contain any
costs of

voluntary
of Rule

of dismissal filed in this

indication as to who would

the appeal and Rule

pay the

39 addresses that issue.

Atlantic Coast Line R. Co. v.


___________________________
Cir. 1932) (costs

Presumably, a

Wells, 54 F.2d 633,


_____

of appeal dismissed

were taxed against appellant under

See
___

634 (5th

by appellant as

a rule awarding costs

moot
to

____________________
1. Rule 42(b) also provides that "[i]f the parties to an
appeal . . . shall sign and file with the clerk of the court
of appeals an agreement that the proceeding be dismissed,
specifying the terms as to payment of costs, and shall pay
whatever fees are due, the clerk shall enter the case
dismissed, . . . ."
Since Vero Beach's motion to dismiss,
though assented to
by Tropicana,
contained no
terms
specifying who would pay the costs and fees and dismissal was
effected through an order of this court, the appeal was
actually dismissed under the portion of the rule quoted above
in the text of our opinion. See Clarendon Ltd. v. Nu-West
___________________
_______
Industries, Inc., 936 F.2d 127, 128 (3d Cir. 1991).
________________
-6-

appellee

whenever

an

appeal

is

dismissed,

except

for

jurisdictional reasons).
Rule

38 provides

damages and single


determines

costs to the

appeal

was "frivolous."

that an

is

frivolous

"overwhelming

if

weight

award "just

appellee" if
Just

it

damages

Applewood Landscape & Nursery Co.


_________________________________

Hollingsworth, 884 F.2d 1502,


_____________

appeal

court may

or double

includes attorneys' fees.


v.

that the

the
of

1508 (1st Cir.


"result

precedent

was

1989).

obvious,"

An
the

militate[d]

against

[appellant's] position," or there was "no legitimate

ground"

for the appeal, or if the appellant failed to set forth facts


to support

its legal theory.

Fargo Alarm Services,


____________________

E.H. Ashley & Co. v.


___________________

907 F.2d 1274,

To find an appeal frivolous, the


was brought in

bad faith or

1280 (1st Cir.

Wells
_____
1990).

court need not find that it

with malice.

"[I]t is

enough

that the appellants and their attorney should have been aware
______
that the appeal had no chance of

success."

Id. (emphasis in
___

original).
Under 28 U.S.C.
multiplies
vexatiously
personally

the
may
the

1927, "any attorney . . . who so

proceedings
be

in any

required

excess costs,

by

case
the

expenses

unreasonably
court
and

to

and

satisfy

attorneys fees

reasonably incurred because of

such conduct."

An attorney's

bad faith in bringing an appeal will always justify sanctions


under section 1927, but bad faith need not be shown to obtain

-7-

sanctions.

Cruz v. Savage,
____
______

1990).

Rather,

conduct

in

harassing
that an

sanctions are

multiplying

attorney acts

'serious

justified "if

proceedings

in disregard

harassment

and studied

justice.'"

Id.
___

or

is

disregard for

"more severe than mere


Id.
___

an attorney's

unreasonable

thus

and

"It is enough

of whether

vexation,

(citation omitted).

incompetence . . . ."
and

631-32 (1st Cir.

or annoying" in an objective sense.

constitutes

must be

896 F.2d 626,

his conduct
displaying

the orderly

process of

However,

the conduct

negligence, inadvertence, or

Bringing

a "frivolous, dilatory

vexatious" appeal would warrant an award of double costs

against

an attorney under Rule 38 and an award of attorneys'

fees under section 1927.

Id. at 635.
___

Accordingly, Tropicana's ability


costs and

attorneys' fees

Allen turns

showed

against Vero Beach

essentially on

was frivolous,
bad

for the

the appeal

could also recover

unreasonable

or

"multiplying" the proceedings, or


disregard

double

and Hinckley,

the question whether

although Tropicana

faith,

to obtain

vexatious

conduct

some "serious and

orderly process

if it

of justice."

in

studied
Tropicana

alleges that Vero Beach's likelihood of persuading this court


to vacate the

preliminary injunction was "non-existent"

decries the "total and


Yet it makes
substantively

and

obvious meritlessness" of the appeal.

no attempt to explain to us
frivolous

--

its

brief

why the appeal was


is

devoid

of

any

-8-

reference
court

to the

legal

issues considered

in granting the injunction.

by the

district

Because Tropicana has not

addressed the issue, and this appeal was dismissed before the
parties submitted

their briefs,

we do not

consider whether

the appeal had merit or was substantively frivolous.


Tropicana argues

that the

decision to

appeal the

preliminary

injunction

was

judicial resources and


Thus,

its argument

ill-considered,

caused undue

appears to

wasteful

expense for

be one based

of

Tropicana.

essentially on

section 1927 standards -- that Vero Beach and Hinckley, Allen


unreasonably
showed
bringing

and

multiplied

for the

orderly process

a disregard
the appeal

prosecuting

it

Tropicana makes
have known to
before the full
file a motion
worse,

vexatiously

in

the first

appropriately.

place

To

proceedings

and then

support

the following points.

of justice

its

in

and
in
not

argument,

Hinckley, Allen must

a certainty that the appeal would not be heard


trial on the
for an

merits, yet

expedited hearing.2

the firm did not

twice sought extensions.

file a timely
In

the firm did


To make

not

matters

appellate brief, but

fact, as it

turned out,

Vero

____________________
2. Tropicana also states that Vero Beach's appeal was
interlocutory and "not certified for immediate or expedited
appeal," but does not elaborate on this point.
We do not
understand why the appeal should have been certified since 28
U.S.C.
1292(a) clearly gives this court jurisdiction over
appeals from "[i]nterlocutory orders of the district courts
of the United States . . . granting . . . injunctions . . .
."
-9-

Beach

never

filed any

Allen

failed

to move

brief at
promptly

withdraw its appearance


withdraw
Vero
after

as counsel

Beach did
it

was

decision to

all.
to

dismiss

the appeal

before this court after

for Vero Beach

not stipulate
defaulted

accept the

Moreover, Hinckley,

in

in the

to dismiss
the

district

or

it moved to

district court.
the appeal

until

court, and

default judgment rather

its

than retain

successor counsel demonstrated that it had never been serious


about the appeal.
to dismiss the

Furthermore, once the parties had

appeal, Hinckley, Allen

dismiss the appeal

agreed

filed its motion

without first forwarding a draft

to

copy of

the motion to Tropicana for inclusion of terms on the payment


of costs and fees, as Tropicana had expressly asked it to do.
Finally, the appeal
get away
and

was basically motivated by

from Judge Keeton who was

a desire "to

well versed in the facts

applicable law, and [to] obtain a more friendly forum in

the court of appeals."


The points

made by Tropicana do not persuade us to

award double costs and attorneys' fees against Vero Beach and
Hinckley, Allen.
Tropicana
before the
decision by
true

asserts,

Although it

was

that the

appeal

trial on the merits,


us before the

that Hinckley,

Allen

not a
would

"certainty",
not be

it is probably true

trial was unlikely.


did not

file

It

a motion

as

decided
that a
is also
for

an

expedited appeal, but its failure to do so does not mean that

-10-

the appeal

was ill-considered.

to stay discovery and


court.
had

Hinckley,

Allen did attempt

to continue the trial in

the district

Although it filed its stay motion two months after it

noticed

its appeal,

months before
granted,

the date

the

motion was

of the trial.

a matter which was outside

filed

Had the

almost two
motion been

its control, the appeal

would have been heard before the trial on the merits.


Furthermore, Vero
time

for filing its

record shows that


CAMP hearing until

Beach's

brief were

the parties

motions to

made for

extend

good cause.

were unable

to schedule

after Vero Beach's brief was

the
The
the

due because

the judge who was to preside over the hearing was unavailable
before that time.
to request
Had
case,

It was no abuse of process

an extension

of time under

Vero Beach timely filed


it would have incurred

for Vero Beach

those circumstances.

its brief and

then settled the

an unnecessary expense, a very

legitimate concern for a company in financial trouble.


Vero Beach's brief was

due almost two weeks before

Since

the CAMP

hearing,

Tropicana

response before

would

likely have

the hearing was held,

own expenses that would have

begun

preparing its

thereby incurring its

proven unnecessary had the case

settled.

In addition, Vero Beach moved to extend the initial

time for

filing its brief

over a week before

the brief was

actually due, further indicating that it sought the extension


for valid reasons and not just as a delaying tactic.

-11-

The second extension which Vero Beach requested was


also justified.
reasonable
Hinckley,

It

seems clear that Vero Beach

needed some

period of time in which to seek new counsel after


Allen

representation.

announced
The

its

desire

to

request for an extension

withdraw

its

until the end

of November was not excessive -- not only did Vero Beach need
to locate new counsel, but its new counsel would have had
review

the lengthy

prepare

a brief.

the

record
At

below, evaluate

the time the

the issues

to
and

extension was requested,

district court had not yet denied Vero Beach's motion to

postpone

the trial on the

merits so that

further action on

the

appeal

was feasible.

Hinckley, Allen

Accordingly,

and Vero

these extensions,

Beach acted reasonably

in a way

unnecessary expenses

we conclude

calculated to save

and to

that

in seeking
both parties

conserve the resources

of this

court as well.
We

see

no

improper

dilatoriness

in

Hinckley,

Allen's failure to seek immediately to withdraw its appellate


representation of Vero Beach or to
after it filed

its motion

Beach

district

in

the

Tropicana at the

to withdraw as
court.

would apply

that

new

Beach's

counsel for

Hinckley,

hearing on November

from representation
Vero

have the appeal dismissed

2 that its

to the

counsel

appeal as

should

determine the status of the appeal,

Allen

be

Vero

informed
withdrawal
well and

permitted

to

a point that seems to us

-12-

an indisputably valid

one.

The firm also

obligation to ensure that its withdrawal


proceeded

in a

way

Beach's interests,

that would
and permitting

not

arguably had

from representation

adversely impact

Vero

an

Beach a

Vero

reasonable

period of time to find new counsel who could evaluate whether


the

appeal

should proceed

obligation.
Rule

Cf.
___

ABA Model

1.16(b) ("a

client if
adverse

lawyer

withdrawal
effect

on the

to

the extent

client's

interests,

employment of

be

consistent with

Rules of

from representing

accomplished without

interests of

such

as

other counsel .

practicable

. .

."); see also


________

Code of Professional Responsibility, DR


event,

id. (d)
___

shall take

to protect

allowing

material

the client");

representation, a lawyer
reasonably

that

Professional Conduct,

may withdraw

can be

("[u]pon termination of
steps

would

time

a
for

ABA Model

2-110(A)(2) ("In any

a lawyer shall not

withdraw from employment until he

has taken reasonable steps

to avoid foreseeable prejudice to

the

rights of his client, including giving due notice to his

client,
.").

allowing time for employment of other counsel, . . .


Moreover,

the transcript

shows that, already


new

counsel,

of

then, Vero Beach was

but having

difficulty

circumstances, Hinckley, Allen may


most sense
level

the November

to continue

attempting to find

doing so.

-13-

Under the

have decided that it made

its representation at

in case it was needed to

2 hearing

the appellate

file a motion to dismiss the

appeal on Vero Beach's

behalf, which, as it turned

out, the

firm eventually did.


We doubt that Tropicana means to suggest
that Hinckley, Allen
the appeal on
definitive

had some obligation

its own since only

decision to do so.

to dismiss the appeal


been unduly

to try to

dismiss

Vero Beach could

make the

Nor does Vero Beach's failure

until November 30

untimely.

seriously

seem to us to

In Tropicana's presence,

have

Vero Beach

was informed on November 2 that it could not litigate in this


circuit without being represented by counsel.
eight

days later,

it

court that, given its


would

not

judgment

retain new

informed Tropicana

By letter sent

and the

deteriorating financial condition,


counsel

on November 23.

and would

accept

Thus, within two

proceed before

appeal, Tropicana

the district
knew

that it

court or
would win

a default

to

Vero Beach

prosecute its

in the

court and that the appeal would have to be dismissed.


those circumstances, the failure

annoying

Moreover, our
was taken

or

Under

unreasonably

be regarded as a
dilatory

docket indicates that no action

by either party

district

to formally file the motion

to dismiss until the end of November cannot


vexatious,

it

weeks after the

conditions arose which made it more difficult for


to

district

or by the

court in

action.

on the appeal
November, so

that the

failure to dismiss

the appeal earlier

in November

-14-

clearly caused no

undue expense

for Tropicana

or waste

of

judicial resources.3
Nor are we persuaded

that Vero Beach's decision to

accept a default judgment in the district court shows that it


had

not

brought

its

appeal

seriously.

demonstrates, the district court


would have to accept

As

a default judgment

The

record also shows

financial

condition, which

Hinckley,

Allen's

impossible

to

bills and

find

unresolvable tangle,

had

if it did not

appear pro se
poor

unable to

had

counsel.

Vero Beach's acceptance of

judgment cannot possibly reflect

find

Vero Beach's

rendered it

apparently

replacement

record

informed Vero Beach that it

substitute counsel since a corporation may not


in this circuit.

the

pay

also made
Given

it
this

the default

adversely on its motivation

in bringing the appeal in the first place.


Tropicana

suggests

that

Hinckley,

Allen

deliberately

filed its

appeal before
and fees to

assented-to

motion to

Tropicana could append its


the motion.

A careful

fees

In its

and costs,

the

statement of costs

reading of

asseverations regarding the relevant


deliberateness.

dismiss

Tropicana's

events suggests no such

memorandum supporting its motion for

Tropicana states

that it

informed William

____________________
3. We realize that Tropicana sent a letter to the clerk of
this court on November 3, to which the clerk responded, but
Tropicana's letter responded to the court's October 30th
order granting Vero Beach a second extension of time for
filing its brief.
-15-

Moore,

conversation

Hinckley,

Allen

on November 25

attorney,
that it would

in

telephone

agree to dismiss

the appeal, but that it intended to "seek an Order" for costs


and

fees.

consistent with
fees

As

phrased,

is

fully

petition for

with this court, which it eventually did.

The specific

that

Hinckley,

to file

comment

a separate

request

an intent

Tropicana's

Allen

send

it

draft

motion

dismissing the appeal so that it could append its request for

fees and costs to the motion was made


dated November 25, the
place.

separately in a letter

same day the phone

Although that

conversation took

letter was sent by facsimile

and thus

presumably arrived the day it was sent, it was addressed to a


different Hinckley, Allen attorney,
Moore

who

preparing

appears to
the

Thanksgiving.

motion.

been

weekend.

the one

November

Moore filed the

it on Monday, November
intervening

have

Steven Comen, and not to

25

was

responsible
the day

for

before

motion to dismiss by mailing

30, the first business day

after the

In its memorandum opposing Tropicana's

request for fees, Hinckley, Allen explains that "[t]he letter


. . . due to the Thanksgiving holiday
Assented-to Motion."

crossed paths with the

From that we infer that Hinckley, Allen

is saying that, because of the holiday, Comen did not receive


Tropicana's letter in time to direct Moore to send a draft of
the

motion to dismiss to Tropicana

with this

court.

The present

before filing the motion

record gives us no

reason to

-16-

doubt the firm's

explanation, although

we note

that it

is

somewhat ambiguously phrased.


We need
that Vero Beach
more receptive
that

forum for

fees.

brought in

allegation

in an attempt to

its arguments.

Absent

find a

a showing

substantive legal merit, that

alone would not support

attorneys'

generally

on Tropicana's

brought its appeal

the appeal itself had no

motivation
and

not spend long

We have

an award of double costs

no

an attempt

doubt that

to receive

appeals are

more favorable

treatment from us than that accorded by the trial court.


III. Conclusion
__________
Tropicana's
granted.
under Rule

Its

request

for

request for double

38 and for

costs under

-17-

39 is

costs and attorneys'

sanctions under

denied.

Rule

28 U.S.C.

fees

1927 is

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