“More Than a Feeling”: Boston trademark dispute slips away

United States of America
  • Member of band sued ex-bandmate for infringement of a co-owned trademark
  • Defendant claimed that plaintiff’s true motive was to “litigate Goudreau [defendant] into submission” to obtain all rights to first two albums
  • Court issued judgment in defendant’s favour as plaintiff failed to establish a breach of contract relating to use of the mark


In a dispute between two former members of a rock band, the US Court of Appeals for the First Circuit has upheld a summary judgment in favour of the defendant, concluding that the plaintiff failed to establish a breach of contract relating to use of a co-owned trademark (Scholz v Goudreau, Case Nos 17-1264, 1316 (First Circuit 21 August 21 2018) (Judge Torruella)).


Donald Scholz, a member of the rock band Boston, sued his former bandmate and guitarist Barry Goudreau for trademark infringement and breach of contract for allegedly making impermissible references relating to Goudreau’s former association with Boston. Goudreau counterclaimed with his own breach of contract and abuse of process claims. A prior settlement agreement between Scholz and Goudreau limited Goudreau’s use of the band’s name but permitted certain language for biographical purposes. Scholz alleged that promotional materials featuring Goudreau used language other than that permitted by the settlement agreement and therefore claimed breach of contract.


The district court granted summary judgment in favour of Goudreau as Scholz failed to show that Goudreau had drafted or approved the promotional language in question. The district court also granted in part and denied in part other motions for summary judgment by both parties. While the trial proceeded to a jury verdict in favour of the respective defendant on each of the remaining claims, both Scholz and Goudreau cross-appealed the district court’s summary judgment findings, evidentiary rulings and denials of various other motions.

The First Circuit affirmed the district court ruling on the breach of contract claim. The parties’ prior settlement agreement limited Goudreau’s use of the trademark BOSTON to a description of him as a “former” or “original” member of Boston in promotional copy. Some of the promotional material that Scholz found objectionable used terms such as “original founding member” or “Lead Guitarist Rock Legend from the Band BOSTON,” but Goudreau did not instruct the parties responsible for the promotions to use any language other than that permitted by the settlement agreement. Scholz thus failed to show that Goudreau had drafted or approved the language.

In his counterclaim, Goudreau alleged that the district court erred by entering summary judgment in Scholz’s favour on Goudreau’s abuse of process claim, asserting that there were genuine issues of material fact as to Scholz’s motives for bringing the underlying litigation. Goudreau claimed that the totality of the circumstances showed that Scholz’s true motives were to “litigate Goudreau into submission” in order to obtain all royalty and copyright rights to Boston’s first two albums and to obtain discovery from Goudreau and others to be used in other litigation. The First Circuit affirmed the district court’s dismissal of this counterclaim, however, noting that the counterclaim was based on the explicit motive stated in Scholz’s complaint: “When a plaintiff directly states his purpose in his complaint, ‘even a pure spite motive’ does not establish that there was an abuse of process if the process is used ‘only to accomplish the result for which it was created.’”

Goudreau also appealed the district court’s denial of his claim for attorneys’ fees. Again, the First Circuit affirmed:

The district court was intimately familiar with the totality of the circumstances in this case, and reasonably found the case not to be an ‘exceptional’ one warranting the sought-after award. In its electronic order denying Goudreau’s motion, the district court not only cited the Octane Fitness factors but also thoughtfully analyzed each of those factors.

It noted that deterrence was not a factor here since, as the district court observed, “a judgment on the merits at summary judgment itself precludes future litigation on the same set of facts”.

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