JANUARY/FEBRUARY 2017

VOLUME 23 NUMBER 1

DEVOTED TO INTELLECTUAL PROPERTY LITIGATION & ENFORCEMENT Edited by Gregory J. Battersby Litigatorand Charles W. Grimes Trademark Litigation Truth in Music Statutes Judge Casper’s earlier summary Jenevieve Maerker judgment ruling in the case also disposed of Scholz’s claim under Massachusetts’s rarely litigated Truth in Music Statute, which prohibits “I’m with the is registered in Scholz’s individual “advertising a live musical perfor- Band:” name. Goudreau brought coun- mance or production in the common- terclaims alleging that Scholz’s wealth through the use of a false, Guitarist Can Call infringement claims violated the deceptive or misleading affiliation, Himself “Former 1983 settlement agreement by connection, or association between depriving him of his right to call the performing group and the record- Original Member” himself a former band member. In ing group.” Judge Casper rejected without Infringing a 2015 summary judgment ruling, this claim because the groups with US District Judge Denise Casper which Goudreau had performed in Trademark rejected most of the trademark Massachusetts, including Ernie and Recently a federal jury in Boston infringement claims because Scholz the Automatics, had not sought to found that Barry Goudreau, a gui- had failed to show that Goudreau had perform under the name BOSTON. tarist who played in an early incar- sufficient control over how he had The Massachusetts Truth in Music nation of the rock band Boston, been promoted by concert organiz- Statute was enacted in 2006 as a did not infringe trademark rights in ers. However, Judge Casper ruled result of efforts spearheaded by an the band’s name by allowing him- that factual issues remained as to organization called the Vocal Group self to be identified as a “former the trademark infringement claims Hall of Fame. More than 30 states original member” of Boston. The related to Goudreau’s involvement in have passed similar statutes over the verdict in Scholz v. Goudreau [Case Ernie and the Automatics, as well as past decade. Judge Casper’s sum- No. 1:13-cv-10951-DJC (D. Mass.)], Goudreau’s counterclaims. mary judgment decision is, so far, which rejected the trademark claims Following a seven-day trial last fall, the only written opinion to cite the brought by group founder Tom the jury found that Ernie and the Massachusetts version of the law. Scholz, is the latest development in Automatics’ reference to Goudreau a decades-long dispute between the as an “original” member of Boston former bandmates. was not likely to create consumer Getting the Bands Goudreau played with Boston in the confusion as to Goudreau’s affilia- Back Together late 1970s through about 1981, and tion with the band. The jury, how- Scholz v. Goudreau joins a growing played guitar on some songs on the ever, also found against Goudreau body of case law addressing musi- band’s first two albums. In 1982, after on his counterclaims, concluding that cians’ rights to use or refer to band leaving the group, Goudreau filed a Goudreau himself had not fulfilled names after musical groups separate. lawsuit against the other band mem- his obligations under the 1983 settle- In April of last year, for example, bers, which ended in a 1983 settle- ment agreement and therefore could the Eleventh Circuit upheld a district ment agreement that gave Goudreau not enforce it. court injunction preventing Thomas a right to use the phrase “formerly In light of this latter finding, Scholz McClary, an original member of of Boston.” However, in Goudreau’s filed a motion for judgment follow- the Commodores, from performing subsequent musical career (including ing the verdict, asking the Court to under the names “The Commodores a stint playing with Massachusetts car enter judgment against Goudreau on featuring Thomas McClary” and magnate Ernie Boch Jr.’s band Ernie Scholz’s claims for breach of the con- “The 2014 Commodores.” The court and the Automatics), he was referred tract. That is, trademark infringement found that those designations were to by various other epithets, including aside, Scholz argues that Goudreau likely to create consumer confu- “lead guitarist rock legend from the breached the contract by allowing sion in light of the trademark rights band Boston” and “original member Ernie and the Automatics to refer to retained by the Commodores mem- of Boston.” him as anything other than “formerly bers who “remained with the group Scholz filed the current lawsuit in of Boston.” Thus, the parties’ long- and controlled the quality and repu- 2013, alleging that Goudreau had running dispute is not over yet, and tation of the marks.” [Commodores directly and contributorily infringed the Court is working with the parties Entertainment Corp. v. McClary, 648 the trademark BOSTON, which to address the remaining claims. Fed. Appx. 771, 775 (11th Cir. 2016).

JANUARY/FEBRUARY 2017 IP Litigator 1 On remand in that case, the district have considered these cases appears and international trademark strategy, court has recently clarified that it is to be to protect consumers who will including selection, clearance, also misleading for McClary to refer assume that a band name trademark registration, policing, and licensing to himself as “COMMODORES’ refers to the band members who of marks and other brand assets. founder Thomas McClary.” Case stuck with the group and performed She also regularly litigates trademark No. 6:14-cv-1335-Orl-37GJK (M.D. under the name with the greatest con- and trade dress infringement and Fla. Nov. 15, 2016).] tinuity. If departing members wish to ownership disputes, both in federal court Similarly, in 1999, the Ninth Circuit use their former band’s name, they and before the US Trademark Trial held that trademark rights in the would be wise to work out an agree- and Appeal Board. Ms. Maerker’s band name, “The Platters”, belonged ment in advance, take care to avoid intellectual property experience to the band member who “has main- misleading consumers, and/or … try spans a broad range of industries, with tained continuity with the group and to get the band back together. particular emphasis on pharmaceuticals, has been in a position to control the medical devices, financial services, quality of its services.” [Robi v. Reed, high-tech, and consumer products. 173 F.3d 736, 740 (9th Cir. 1999).] Jenevieve Maerker, an associate A version of this article was published Although the facts of band his- in the Intellectual Property in Foley Hoag’s Trademark tory often are messy and complex, Department at Foley Hoag LLP, and Copyright Law Blog at www. the general approach of courts that has extensive experience in domestic trademarkandcopyrightlawblog.com.

Copyright © 2017 CCH Incorporated. All Rights Reserved. Reprinted from IP Litigator, January/February 2017, Volume 23, Number 1, pages 30–31, with permission from Wolters Kluwer, New York, NY, 1-800-638-8437, www.wklawbusiness.com