At this point it’s difficult to keep track of all the disputes, bad blood and legal battles that have emerged between current and former members of Boston over the years. In light of that, perhaps it’s a good thing that another lawsuit finally seems to have run its course. The suit that Boston founder Tom Scholz filed against former band mate and guitarist Barry Goudreau over trademark infringement has been dismissed by a federal judge. The lawsuit was filed over Goudreau’s continued use of the name Boston. Tom Scholz, the leader and principal songwriter of the band Boston, sued his former band mate Barry Goudreau, accusing the guitarist of trademark infringement. Scholz claims Goudreau’s persistent, unauthorized, and willful misuse” of Boston-related trademarks exaggerates his role in the band and 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.

Goudreau was a member of Boston for just three years of the band’s 37-year history, and played guitar on only two of the eight songs on the first album, and four of the eight songs on the second. After leaving Boston, Goudreau signed an agreement giving him 20 percent of royalties from all of the songs on the first two albums but giving him “no interest, right nor title to the name ‘Boston.’ Under the agreement, Goudreau was allowed to use the phrase “formerly of Boston” to advertise future performances.  Scholz alleged that Goudreau used the phrases “original” Boston member, “playing the hits of Boston” and “lead guitarist rock legend from the band Boston” instead of the agreed-upon wording.

The suit was dismissed by U.S. District Judge Denise Casper in Boston who dismissed 11 of Scholz’s 13 claims. The judge ruled that Goudreau did not directly infringe on the disputed trademarks and that his website was not likely to cause confusion for visitors. The judge allowed two remaining claims to continue, which are related to Goudreau’s involvement with a band known as Ernie and the Automatics and how much influence he had in the group’s promotional activities. The judge also permitted two counter suits by Goudreau to continue, including a claim that the restrictions Scholz sought to impose on his activities violated their royalty agreement.

The court explained that trademark infringement has three prongs:

  1. Plaintiff owns and uses the disputed marks;
  2. Defendant uses similar or identical marks without permission; and
  3. Unauthorized use likely confused consumers, harming the plaintiff.

Goudreau’s alleged direct infringement of the BOSTON trademark turned on the second prong. He was featured in promotional materials for a number of performances, which referred to him variously as “original founding Boston member Barry Goudreau,” BOSTON’s former “lead” guitarist “Playing the Hits of BOSTON,” and “lead guitarist rock legend from the band BOSTON.”

The court noted that some of these statements impermissibly deviated from the “Formerly of Boston” language permitted by the settlement agreement. But at every turn, Scholz was unable to establish that Goudreau himself was responsible for the promotions’ content. Absent such evidence, Goudreau was entitled to summary judgment with respect to these direct infringement allegations.

Scholz further alleged that Goudreau’s website infringed upon the BOSTON trademark because it used meta-tags including “BOSTON,” “band BOSTON,” and “Tom Scholz.” But the court again disagreed. The website itself stayed within the strictures of the settlement agreement, identifying Goudreau only as a “former” BOSTON guitarist. Even if visitors to the site were diverted by the meta-tags, the court said that—absent any confusion—this was not enough for infringement.

Keywords: Trademark infringement, Trademark, Boston band, Dilution and confusion.