DONALD THOMAS SCHOLZ, Plaintiff/Counterclaim-Defendant, Appellant/Cross-Appellee,
BARRY GOUDREAU, Defendant/Counterclaim-Plaintiff, Appellee/Cross-Appellant.
APPEALS FROM THE UNITED STATES DISTRICT COURT FOR THE
DISTRICT OF MASSACHUSETTS [Hon. Denise J. Casper, U.S.
E. Stenger, with whom Lawrence G. Green, Laura Lee Mittelman,
and Burns & Levinson LLP were on brief, for
Jeffrey S. Baker, with whom Baker and Associates, P.C.,
Daniel P. Tarlow, Copani, Tarlow & Cranney, LLC, David M.
Given, and Phillips, Erlewine, Given & Carlin LLP were on
brief, for appellee/cross appellant.
Torruella, Lynch, and Kayatta, Circuit Judges.
TORRUELLA, CIRCUIT JUDGE
Thomas Scholz, a member of the rock band BOSTON, sued former
BOSTON guitarist Barry Goudreau for various trademark
infringement and breach of contract claims relating to
impermissible references that Goudreau had allegedly made
regarding his former association with the band. Goudreau
counterclaimed with his own breach of contract and abuse of
process claims. After the district court granted in part and
denied in part both parties' respective motions for
summary judgment, the extant claims proceeded to trial. The
jury found in favor of the respective defendant on each of
the remaining claims. Scholz and Goudreau now cross-appeal
the district court's summary judgment findings,
evidentiary rulings, and denials of the various motions
detailed in this opinion. For the reasons stated below, we
affirm the district court and deny both parties' appeals.
1976, Scholz and Goudreau were members of the rock-band
BOSTON, along with Fran Sheehan, Sib Hashian and Brad Delp.
Goudreau played the guitar in the band's first two albums
and performed with the band from approximately 1976 to 1979.
After Goudreau left BOSTON in 1981, he and the remaining
members of the band executed a settlement agreement (the
"Settlement Agreement") in 1983, pursuant to which
Goudreau would receive a one-fifth share of the band's
royalties for the first two BOSTON albums. The Settlement
Agreement also stated that Goudreau "shall have no
interest, right nor title to the name of 'BOSTON',
nor to any recording royalties, performing rights royalties,
performance income, copyright interests or payments, or
financial interest therein, except as provided herein."
The agreement clarified that:
D. The Name "BOSTON": The parties hereto
expressly agree that Goudreau may use the term "Formerly
of Boston" for and in conjunction with any biographical
usage with respect to future performances, but, except to
this extent, Goudreau shall have no other interest, right or
title to the name "BOSTON." Without limiting the
foregoing, Goudreau may not use the name "BOSTON"
for or in conjunction with any advertisement or promotion.
2004 to 2006, Goudreau and Sib Hashian began to play music
informally with Ernie Boch Jr. ("Boch"), an amateur
musician and New England area car mogul. Eventually, the
three started performing together in a band that they later
called Ernie and the Automatics ("EATA"). On
February 6, 2009, Boch, Goudreau, and other members of EATA
signed a Confirmatory Recording Artist Agreement (the
"Confirmatory Agreement") in which the signatories
granted Boch the right in perpetuity to use, and authorize
others to use, their names and biographical information for
advertising and promotion of EATA. By signing the agreement,
the EATA members warranted that use of their names and
biographical information would not infringe upon the rights
of any third parties.
created and managed EATA's website, which described
Goudreau as an "original" member of the band
BOSTON. In 2009, Boch posted on YouTube an EATA
"pop-up" music video produced by Boch's friend,
Ian Barret, to promote EATA's new album. The
"popup" video displayed lines of text that would
momentarily appear at the bottom of the screen overlaying
EATA's music video. Some of the pop-up messages read as
1."Guitarist Barry Goudreau and drummer 'Sib'
Hashian are 'former' original members of the band
2."Boston's' first record is the biggest selling
debut in history with 17 million units sold."
3."The original cover art for 'Boston's'
first record was a head of Boston lettuce, not the guitar
4."Brian met Barry when he joined 'Orion the
Hunter', Barry's first band project after
5."Brian, Barry, and Tim would later form 'RTZ'
with 'Boston' lead singer, Brad Delp."
addition, Boch advertised EATA in magazines, in which he
referred to Goudreau as an original and founding member of
BOSTON. The cellophane wrapping of EATA's 2009 CD album
entitled "Low Expectations" bore a sticker reading:
"Featuring Barry Goudreau . . . former original member
of the multi-platinum selling band 'BOSTON.'"
When EATA held a CD release party on February 7, 2009, the
promotional material read in part: "Barry Goudreau and
Sib Hashian, two former original members of the
multi-platinum selling band BOSTON have reunited."
addition to EATA's advertisements, Goudreau's musical
performance in "The Best of Boston series" was
promoted as featuring "original founding Boston member
Barry Goudreau." Additionally, promotional materials for
Goudreau's shows at the Cannery Casino Hotel referred to
Goudreau as "BOSTON's former 'lead'
guitarist and an original 'BOSTON' member."
Moreover, Goudreau was described as "the lead guitarist
rock legend from the band BOSTON" in performances with
the James Montgomery Blues Band.
April 17, 2013, Scholz filed suit against Goudreau in the
District of Massachusetts, alleging, as is relevant to this
appeal, federal trademark infringement in violation of 15
U.S.C. § 1114(1), breach of contract, and breach of the
implied covenant of good faith and fair dealing. Goudreau
filed an answer on May 24, 2013, and asserted various
counterclaims including breach of contract, breach of implied
covenant of good faith and fair dealing, and abuse of
process, all under Massachusetts law. Goudreau also sought a
declaratory judgment that using language other than
"formerly of Boston" does not violate Scholz's
trademark rights. Scholz subsequently filed a first amended
complaint ("FAC") on May 21, 2014, adding claims of
contributory trademark infringement in violation of 15 U.S.C.
§ 1114(1), and vicarious trademark infringement in
violation of 15 U.S.C. § 1114(1).
February 17, 2015, Scholz and Goudreau each filed a motion
for summary judgment. As it pertained to Goudreau's
motion, the district court granted summary judgment to
Goudreau with respect to all of Scholz's claims except
for those of contributory and various trademark infringement
as they related to Goudreau's membership in EATA.
Notably, the district court found that there was a genuine
issue of material fact regarding whether Goudreau had the
ability to directly control or monitor EATA's promotions
of Goudreau. As to Scholz's motion, the district court
granted Scholz summary judgment on Goudreau's claim for
declaratory judgment, as well as the abuse of process claim,
finding that Scholz did not use the litigation process to
obtain an improper end. But the district court denied
Scholz's motion for summary judgment as to Goudreau's
other two counterclaims relevant to this appeal.
district court held a jury trial on the remaining claims in
October and November of 2016. Following the fifth day of the
seven-day trial, Scholz filed a motion to amend his FAC to
reinstate his breach of contract claim so as to conform it to
the evidence presented at trial. The district court denied
this motion the next day. On November 1, 2016, the jury
rejected all of the claims and counterclaims that it was
presented. On the verdict form for Goudreau's breach of
contract counterclaim, the jury answered "NO" to
the question of whether Goudreau "perform[ed] his
obligations under the contract, or was excused from
performance because of [Scholz's] conduct."
November 8, 2016, Scholz again moved to reinstate and for
entry of judgment on his breach of contract claim in light of
the jury's finding that Goudreau had not performed his
obligations under the Settlement Agreement. On December 15,
2016, Goudreau filed a motion for attorney's fees
pursuant to 15 U.S.C. § 1117(a). On February 16, 2017,
the district court denied both motions. Both parties appealed
in the following month.