IP Law Daily, TRADEMARK NEWS: Founder of Rock Band BOSTON Sues Former Bandmate, (Apr 19, 2013)

By Peter Reap, J.D., LL.M.

Donald Thomas (“Tom”) Scholz, one of the founders of the popular rock band BOSTON in the early 1970s, has accused former bandmate Barry Goudreau of infringing Scholz’ federally registered trademark “BOSTON” in a lawsuit filed April 17 in the federal district court in Boston. In addition, Scholz alleges that Goudreau is infringing his common law marks JUST ANOTHER BAND OUT OF BOSTON and WE WERE JUST ANOTHER BAND OUT OF BOSTON.

According to Scholz, the original members of BOSTON included only himself, who played all instruments except for drums, and Brad Delp, the lead vocalist. Scholz wrote all the songs on the original demo recordings and produced, engineered, and financed the recording of those demos himself.

BOSTON’s self-titled debut album was released in 1976 and was one of the most successful debut albums of all time. It sold 17 million copies and included the radio hits More Than a Feeling and Peace of Mind.

Goudreau played guitar for BOSTON for only three years, 1976-1979, of the band’s nearly 37 years of existence, the complaint relates. During that period, Goudreau played only a small portion of the guitar parts on BOSTON’s first two albums. Goudreau left the band to pursue a solo career in 1979.

In 1983, the parties executed a settlement agreement ending a suit filed by Goudreau seeking a greater share of the band’s income. In the settlement agreement, Goudreau agreed to “have no interest, right nor title to the name ‘BOSTON,’” according to Scholz. Goudreau also agreed that he would not use BOSTON to promote or advertise future performances.

However, Goudreau has actively promoted, advertised, and held himself out as being a founder of BOSTON, an original band member, or currently affiliated with BOSTON, rather than “formerly of BOSTON,” exaggerating his involvement with the band, violating the terms of the settlement agreement, misleading consumers, and causing brand confusion, Scholz alleges.

The complaint brings claims for trademark infringement, unfair competition, false designation of origin, and dilution, among others. Scholz seeks an injunction against Goudreau, damages, attorney fees, and a termination of the parties’ settlement agreement.

The complaint in Scholz v. Goudreau, Docket No. 1:13-cv-10951, was filed April 17, 2013.

Attorneys: Erik Paul Belt (McCarter & English, LLP) for Donald Scholz.

News: Trademark MassachusettsNews