UPDATE: BOSTON’S Founder and a Former Bandmate Still Seek Peace of Mind

Empty stage with band equipment

We have written previously about Scholz v. Goudreau, No. 13-CV-10951 (D. Mass.); the case recently went to trial on the parties’ surviving claims, and they are now immersed in post-trial briefing.

Tom Scholz and Barry Goudreau were once bandmates in BOSTON, and since Goudreau left the group in 1981, the two have occasionally litigated the trademark ramifications of his post-BOSTON career. The present dispute mostly arose from promotions tied to other musical acts and events that Goudreau was associated with.

In the fall of 2015, we focused on the parties’ cross-motions for summary judgment, and especially on Scholz’s claims of direct infringement. Judge Casper granted Goudreau’s motion with respect to the direct infringement allegations, but a number of the parties’ claims survived, and a seven-day jury trial was held from October 24 through November 1, 2016.

Scholz presented the following claims against Goudreau:

  • Contributory trademark infringement; and
  • Vicarious trademark infringement.

Goudreau asserted the following counterclaims against Scholz:

  • Breach of the parties’ 1983 settlement agreement; and
  • Breach of the implied covenant of good faith and fair dealing inherent to that settlement agreement.

On October 30, Scholz moved for leave to amend his amended complaint; he wished to claim that Goudreau was liable for breach of the settlement agreement based on the actions of an allegedly authorized agent under a theory of express authority. Scholz argued that they proceeded to trial presuming that mere apparent authority could animate his vicarious infringement claim, but trial testimony revealed a grant of express authority from Goudreau to his purported agent.

The next day, Goudreau moved for judgment as a matter of law on Scholz’s infringement claims. The basis for that motion was Scholz’s alleged failure to set forth substantial evidence of, among other things, likelihood of confusion, primary infringement, harm to Scholz’s mark, and Goudreau’s control of the alleged primary infringer’s actions.

The court denied both of these motions on November 1.

That same day, the jury found no contributory or vicarious trademark infringement by Goudreau. Its determination that there was no likelihood of cause consumer confusion ended both inquiries.

As for the counterclaims, the jury found that Goudreau did not perform his obligations under the contract, and that Scholz did not breach the settlement agreement.

On November 8, Scholz filed two post-trial motions. The first sought judgment against Goudreau based on the jury’s findings that he did not perform his obligations under the settlement agreement. Alternatively, the motion sought leave to amend and reinstatement of Scholz’s breach claim against Goudreau, which the court had disposed of on summary judgment. As relief, Scholz sought judgment that Goudreau forfeited his right to receive future royalties under the settlement agreement.

Scholz’s second post-trial motion sought judgment against Goudreau’s claim under Chapter 93A—the Massachusetts Consumer Protection Act. The basis for this motion was the jury’s rejection of Goudreau’s contract counterclaims, and the fact that the court—at summary judgment—had deemed his Chapter 93A claims “derivative of his breach of contract claim.”

In mid-December, Goudreau filed a motion for attorneys’ fees, as well as oppositions to both of Scholz’s post-trial motions.

The parties proceed with post-trial responsive briefing on these motions, and on Scholz’s anticipated motion for attorneys’ fees. If the schedule holds, they will finish later this month, and we will keep an eye out for the case’s final disposition.

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