132 F. Supp. 3d 239
D. Mass.2015Background
- Scholz and Goudreau are former members of the rock band BOSTON who executed a 1983 Settlement Agreement: Goudreau may use only the phrase “formerly of Boston” in biographical usage for future performances and otherwise has no rights to the BOSTON name.
- Scholz sued asserting trademark infringement, unfair competition (Lanham Act and Mass. law), dilution, contributory and vicarious infringement, Truth in Music Act violation, Chapter 93A, breach of contract, and breach of implied covenant; Goudreau counterclaimed for declaratory judgment and related contract and statutory claims.
- Scholz’s infringement theory centers on contemporaneous promotions/advertisements for several shows/groups involving Goudreau (The Best of Boston promotions, Cannery Casino shows, JMBB, World Class Rockers, and Ernie and the Automatics (EATA)), plus meta-tags on Goudreau’s website.
- The record shows many allegedly infringing promotional materials were created by third parties; Goudreau often protested or instructed promoters to use “formerly of BOSTON,” and sometimes withdrew from shows when promotions used disallowed language.
- Disputed factual issues concern Goudreau’s relationship with EATA (his degree of control/ability to monitor promotions) and whether third parties promoted him with disallowed descriptions despite his instructions.
Issues
| Issue | Plaintiff's Argument (Scholz) | Defendant's Argument (Goudreau) | Held |
|---|---|---|---|
| Direct trademark infringement (Lanham Act & Mass. common law) | Scholz: Goudreau used or allowed use of terms other than the permitted phrase causing consumer confusion. | Goudreau: Third parties created the ads; no evidence he directly participated in or approved the infringing promotions. | Court: Judgment for Goudreau on direct-infringement claims — no evidence he caused the ads; summary judgment allowed as to counts based on those promotions and website meta-tags. |
| Contributory infringement | Scholz: Goudreau induced or permitted third-party promoters to infringe by failing to stop them and by participating. | Goudreau: He instructed promoters to use only "formerly of BOSTON," objected, and severed relationships when necessary. | Court: Mixed. Summary judgment denied as to contributory infringement relating to EATA (disputed control/monitoring); granted as to other alleged instances. |
| Vicarious trademark infringement | Scholz: Goudreau’s relationships with promoters (esp. EATA) made them appear to have authority to act for him. | Goudreau: No agency/partnership with third parties; he did not authorize or bind them. | Court: Denied for EATA (fact issue on apparent authority); granted for other promoters (no apparent/actual authority). |
| Trademark dilution (tarnishment) — Huckabee political comment | Scholz: Goudreau’s public reference ("Barry Goudreau from Boston") tarnishes the famous mark. | Goudreau: Statement was noncommercial/political and not actionable. | Court: Grants summary judgment to Goudreau — political/noncommercial use not actionable under the federal anti-dilution statute. |
| Unfair competition (15 U.S.C. § 1125(a)) and Mass. common-law unfair competition | Scholz: False/misleading commercial promotions injured his business/reputation. | Goudreau: Scholz lacks evidence of commercial injury and proximate cause under Lexmark. | Court: Grants summary judgment to Goudreau — Scholz offered no record evidence of reputational or commercial injury causally linked to alleged misrepresentations. |
| Breach of Settlement Agreement / implied covenant | Scholz: Goudreau breached by using descriptions other than permitted; breached implied covenant by interfering with Scholz’s rights. | Goudreau: Scholz interfered with Goudreau’s contractual right to describe himself and threatened promoters, breaching contract and covenant. | Court: Grants summary judgment to Goudreau on some declaratory aspects (contract unambiguous); denies summary judgment on counterclaim breach/implied covenant as to EATA-related facts — these issues survive for trial. |
| Truth in Music Statute (Mass.) | Scholz: EATA and JMBB misrepresented Goudreau as an "original" BOSTON member in MA performances. | Goudreau: Statute applies only to groups seeking to use the other group's name. | Held: Summary judgment for Goudreau — statute inapplicable because the bands did not seek to perform under the BOSTON name. |
| Chapter 93A (Scholz's claim) | Scholz: Goudreau’s pattern of conduct misled promoters and constituted unfair trade practices. | Goudreau: No direct infringement; no evidence of misrepresentations or control. | Court: Grants summary judgment to Goudreau — Scholz failed to plead/prove Chapter 93A as pleaded. |
| Counterclaim — Abuse of process (Goudreau) | Goudreau: Scholz litigated to obtain collateral advantages (royalties, discovery) outside legitimate ends. | Scholz: Actions pursued legitimate remedies related to Settlement Agreement and trademark claims. | Court: Grants summary judgment to Scholz — no abusive ulterior purpose or coercive misuse of process shown. |
Key Cases Cited
- Venture Tape v. McGills, 540 F.3d 56 (1st Cir.) (addressing inference of likelihood of confusion from admitted intent to divert competitor’s customers)
- Inwood Labs. v. Ives Labs., 456 U.S. 844 (U.S. 1982) (standard for contributory trademark infringement)
- Perfect 10 v. Visa Int’l Serv. Ass’n, 494 F.3d 788 (9th Cir.) (contributory liability test and need for direct control/monitoring of services)
- Boston Duck Tours v. Super Duck Tours, 531 F.3d 1 (1st Cir.) (likelihood-of-confusion standard)
- Lexmark Int’l v. Static Control Components, 134 S.Ct. 1377 (U.S.) (standing under § 1125(a) requires proximate causation and commercial injury)
- Linkage Corp. v. Trustees of Boston Univ., 425 Mass. 1 (Mass. 1997) (apparent authority test for vicarious liability)
- Celotex Corp. v. Catrett, 477 U.S. 317 (U.S. 1986) (summary judgment standard)