Ex-Boston Guitarist Free of Most Trademark Claims

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By Anandashankar Mazumdar

Sept. 22 — The bulk of legal claims asserted by the founder of the classic rock band Boston against a former member of the group were thrown out by the U.S. District Court for the District of Massachusetts in a Sept. 21 ruling.

The latest round of lawsuits brought by Boston's founder, D. Thomas Scholz, against former band member Barry Goudreau included objections to Goudreau's mention of the band at a 2008 presidential campaign rally for former Arkansas Gov. Michael D. Huckabee (R).

On that point, the court ruled that even though Scholz believed that an association of his band's name with politics would tarnish the trademark's reputation, under the federal trademark dilution statute, Goudreau's identification of himself as “Barry Goudreau from Boston. I like Mike,” was not a use in commerce that amounted to a trademark-type usage.

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“The use of marks in a political context is not commercial and thus is exempt from the statutory prohibition against dilution,” the court said.

Federal Claims, Truth in Music Claim Tossed 

Scholz was unable to make most of his trademark-related claims stick, mostly because the court found that there was no evidence in the record that Goudreau was responsible for the promotional materials that Scholz had objected to.

Additionally, the court threw out a claim based on the Massachusetts Truth in Music Statute, Mass. Gen. Laws c. 93, §§12 and 43B.

The truth in music law, which is similar to ones enacted in other states, is targeted at bands that perform using the names of popular—mostly older—music groups.

In this case, the court said, there was no proof that Goudreau had performed with a band that was using the name “Boston,” even though promotional materials might have referred to his being a “former” or “original” member of the group.

Abuse of Process Counterclaim Also Out 

All-in-all, the court dismissed Scholz's claims of direct trademark infringement, contributory and vicarious infringement, trademark dilution and unfair competition under federal trademark law.

Only one claim of indirect infringement did survive summary judgment because there was an outstanding question regarding whether Goudreau did have an ability to control the advertisements and promotions.

Goudreau's counterclaims against Scholz didn't fare very well either. Scholz had threatened legal action several times before—actually filing lawsuits in 2009 and 2010—and Goudreau said that his litigiousness was part of an effort to snatch back Goudreau's ongoing 20 percent interest in the band's 1970s hits.

But the court said that there was no evidence that Scholz was abusing the legal process for improper purposes.

Legal Wrangling Since the 1980s 

Scholz founded Boston in 1976, with Goudreau as one of the original members, and Goudreau played with the band live through 1979 and on some of the recordings of the band's first two albums, “Boston” (1976) and “Don't Look Back” (1978).

Goudreau's association with Boston ended in legal wrangling in the early 1980s and he and Scholz settled their dispute with an agreement that allowed Goudreau to state that he was “formerly of Boston” in biographical material but that he could not mention the name “Boston” in promotional materials or advertisements.

In exchange, Scholz conceded 20 percent of the royalties from the first two Boston albums, even though Scholz said repeatedly that Goudreau had little to do with the recordings of those albums or the composition of the songs.

Most of the things that Scholz had complained of were promotions for concerts that mentioned that Goudreau was a former member of the band.

However, the court said that the language of the agreement was clear that the ban on advertising or promotions was not a limitation on Goudreau's right to describe himself as “formerly of Boston.”

On the other hand, the court said that the agreement was similarly unambiguous that Goudreau was allowed only to use the term “former” and not describe himself as an “original member” of the band.

In any case, the court found that Scholz had failed to offer evidence that these promotions were Goudreau's responsibility. Indeed, Goudreau testified in depositions that on at least one occasion, he had pulled out of a concert series when the promoter ignored his pleas to stop using the reference to Boston in a way that would violate the 1983 settlement agreement.

Scholz was represented by McCarter & English LLP, Boston. Goudreau was represented by Hayes Messina Gilman & Hayes LLC, Boston.

To contact the reporter on this story: Anandashankar Mazumdar in Washington at amazumdar@bna.com

To contact the editor responsible for this story: Mike Wilczek in Washington at mwilczek@bna.com

Text is available at: http://www.bloomberglaw.com/public/document/Scholz_v_Goudreau_Docket_No_113cv10951_D_Mass_Apr_17_2013_Court_D/2.