Boston Founder Loses Trademark Battle of the Bands

How Did Boston Lose a Long-Running Trademark Infringement Suit?

Rock band Boston recently lost its long-running trademark infringement suit against former guitarist Barry Goudreau. Boston founder, Tom Scholz, sued Goudreau for using the term “original” member of the band instead of “former” in promotion and advertising related to the guitarist’s new band, Ernie and The Automatics. However, a Massachusetts jury ultimately concluded that any alleged trademark misuse was unlikely to cause confusion by members of the public.

 Allegations of Trademark Infringement

After leaving Boston, Goudreau filed a lawsuit over royalties against Scholz and the other remaining band members. Pursuant to a resulting settlement agreement, the parties agreed that Goudreau could refer to himself as “formerly of Boston,” but would have no other interest, right or title to the trademarked name BOSTON. However, advertisements and promotions for subsequent bands Goudreau played with referred to him as “lead guitarist rock legend from the band Boston,” “Barry Goudreau of the Multi-Platinum Group Boston,” and “original member of Boston.”

In 2013, Scholz filed a trademark infringement lawsuit against Goudreau, alleging that that he had violated the settlement agreement and infringed on Scholz’s BOSTON trademarks by using or allowing the use of descriptive terms that deviate from “formerly of Boston.” According to the suit, Goudreau’s “persistent, unauthorized, and willful misuse” of trademarks associated with Boston embellished his role in the band. The suit also maintained that the trademark infringement “deprives Scholz of his ability to control fully the nature and quality of all (Boston) products and services . . . and harms the valuable reputation and goodwill” of the band.

In a 2015 summary judgment ruling, U.S. District Judge Denise Casper dismissed several of the trademark infringement claims, concluding that Scholz has failed to provide evidence that Goudreau was responsible for any of the allegedly infringing advertisements and promotions. Accordingly, he could not be held liable for direct infringement because issues of fact still existed with respect to the trademark claims involving promotions by the band Ernie and the Automatics, they proceeded to trial.

Jury Rejects Trademark Claim

To prove trademark infringement under the Lanham Act and Massachusetts common law, Scholz had to demonstrate that “(1) the plaintiff owns and uses the disputed marks; (2) the defendant used similar or identical marks without permission; and (3) unauthorized use likely confused consumers, harming the plaintiff.” The jury ultimately sided with Goudreau on the issue of trademark infringement. It concluded that any misuse of the BOSTON trademark was unlikely cause confusion about the status or lineup of the band in the mind of the public. As Goudreau’s attorneys argued, while his role and influence over the band is debatable, Goudreau is technically an original member of Boston.

The case is Scholz v. Goudreau, U.S. District Court, District of Massachusetts, No. 13-10951.

For more articles dealing with intellectual property and trademark infringement cases, make sure to check out our MusicESQ site. Otherwise, if you have any questions regarding the case or if would you like to discuss the matter further, please contact me, Shane Birnbaum, at 201-806-3364.