United States: "I'm With The Band": Boston Guitarist Can Call Himself "Former Original Member" Without Infringing Trademark

Last Updated: November 16 2016
Article by Jenevieve J. Maerker

Last week, a federal jury in Boston found that Barry Goudreau, a guitarist who played in an early incarnation of the rock band Boston, did not infringe trademark rights in the band's name by allowing himself to be identified as a "former original member" of Boston. The verdict in Scholz v. Goudreau, Case No. 1:13-cv-10951-DJC (D. Mass.), which rejected the trademark claims brought by group founder Tom Scholz, is the latest development in a decades-long dispute between the former bandmates.

Goudreau played with Boston in the late 1970s through about 1981, and played guitar on some songs on the band's first two albums. In 1982, after leaving the group, Goudreau filed a lawsuit against the other band members, which ended in a 1983 settlement agreement that gave Goudreau a right to use the phrase "formerly of Boston." However, in Goudreau's subsequent musical career (including a stint playing with Massachusetts car magnate Ernie Boch Jr.'s band Ernie and the Automatics), he was referred to by various other epithets, including "lead guitarist rock legend from the band Boston" and "original member of Boston."

Scholz filed the current lawsuit in 2013, alleging that Goudreau had directly and contributorily infringed the trademark BOSTON, which is registered in Scholz's individual name. Goudreau brought counterclaims alleging that Scholz's infringement claims violated the 1983 settlement agreement by depriving him of his right to call himself a former band member. In a summary judgment ruling last year, U.S. District Judge Denise Casper rejected most of the trademark infringement claims because Scholz had failed to show that Goudreau had sufficient control over how he had been promoted by concert organizers. However, Judge Casper ruled that factual issues remained as to the trademark infringement claims related to Goudreau's involvement in Ernie and the Automatics, as well as Goudreau's counterclaims.

Following a seven-day trial, the jury last week found that Ernie and the Automatics' reference to Goudreau as an "original" member of Boston was not likely to create consumer confusion as to Goudreau's affiliation with the band. The jury also, however, found against Goudreau on his counterclaims, concluding that Goudreau himself had not fulfilled his obligations under the 1983 settlement agreement and therefore could not enforce it. In light of this latter finding, Scholz filed a motion for judgment earlier this week, asking the Court to enter judgment against Goudreau on Scholz's claims for breach of the contract. That is, trademark infringement aside, Scholz argues that Goudreau breached the contract by allowing Ernie and the Automatics to refer to him as anything other than "formerly of Boston." Thus, the parties' long-running dispute is not over yet, and the Court has scheduled a status conference for this afternoon.

Truth in Music Statutes

Judge Casper's earlier summary judgment ruling in the case also disposed of Scholz's claim under Massachusetts's rarely litigated Truth in Music Statute, which prohibits "advertising a live musical performance or production in the commonwealth through the use of a false, deceptive or misleading affiliation, connection, or association between the performing group and the recording group." Judge Casper rejected this claim because the groups with which Goudreau had performed in Massachusetts, including Ernie and the Automatics, had not sought to perform under the name BOSTON. The Massachusetts Truth in Music Statute was enacted in 2006 as a result of efforts spearheaded by an organization called the Vocal Group Hall of Fame. More than thirty states have passed similar statutes over the past decade. Judge Casper's summary judgment decision is so far the only written opinion to cite the Massachusetts version of the law.

Getting the Bands Back Together

Scholz v. Goudreau joins a growing body of case law addressing musicians' rights to use or refer to band names after musical groups separate. In April of this year, for example, the Eleventh Circuit upheld a district court injunction preventing Thomas McClary, an original member of The Commodores, from performing under the names "The Commodores featuring Thomas McClary" and "The 2014 Commodores." The court found that those designations were likely to create consumer confusion in light of the trademark rights retained by the Commodores members who "remained with the group and controlled the quality and reputation of the marks." Commodores Entertainment Corp. v. McClary, 648 Fed. Appx. 771, 775 (11th Cir. 2016). Similarly, in 1999, the Ninth Circuit held that trademark rights in the band name The Platters belonged to the band member who "has maintained continuity with the group and has been in a position to control the quality of its services." Robi v. Reed, 173 F.3d 736, 740 (9th Cir. 1999). Although the facts of band history are often messy and complex, the general approach of courts that have considered these cases appears to be to protect consumers who will assume that a band name trademark refers to the band members who stuck with the group and performed under the name with the greatest continuity. If departing members wish to use their former band's name, they would be wise to work out an agreement in advance, take care to avoid misleading consumers, and/or ... try to get the band back together.

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