Bit Parts

BOSTON Band Principal Scholz Loses Appeal in “Original” Member Billing Dispute Against Former BOSTON Guitarist Goudreau

The U.S. Court of Appeals for the First Circuit sided in part with Barry Goudreau, co-founder and a former guitarist of the rock band BOSTON in an action filed against him by band principal Tom Scholz. Scholz v. Goudreau, 17-1264. After Goudreau departed from the band in 1981, he signed a settlement agreement that stated he “shall have no interest, right nor title to the name of 'BOSTON',” but could “use the term 'Formerly of Boston' for and in conjunction with any biographical usage with respect to future performances …” In the 2000s, Goudreau co-founded Ernie and the Automatics (EATA), which promoted him as an “original” member of Boston. Scholz sued Goudreau in the U.S. District Court for the District of Massachusetts. Scholz appealed the district court's dismissal of his breach of contract claim. Affirming, however, the Eleventh Circuit found: “Goudreau did not instruct those responsible for the promotions to use any language other than that which was permitted by the Settlement Agreement. While Scholz did show that some of Goudreau's performances were advertised using descriptors not in conformance with the Settlement Agreement, Scholz did not show that Goudreau had any role in drafting, approving, or promulgating such language. Similarly, on appeal, Scholz does not direct us to any record evidence from which we could find that Goudreau was responsible — either directly or indirectly — for any promotion or advertisement using language other than 'formerly of Boston.'” EATA member Ernie Boch managed that group's website, posting of its online video and advertising. Boch said in his deposition that he was the one who added “original” to describe Goudreau. The appeals court noted: “Scholz does not dispute this on appeal, instead arguing that Goudreau's failure to stop Boch from promoting Goudreau as otherwise constitutes a breach. But, given Boch's deposition testimony that Goudreau did request such limitations on EATA's promotional material, and Scholz's failure to provide any evidence that Goudreau did not so request, there was no evidence in the record from which the district court could have drawn the inference to which Scholz claims that he was entitled.” However, the appeals court affirmed the district court's grant of summary judgment to Scholz on an abuse of process counterclaim by Goudreau.

Former Band Member's Counterclaims Against Commodores Are Dismissed

The U.S. District Court for the Middle District of Florida dismissed counterclaims by former Commodores member Thomas McClary in a lawsuit the band filed against him for performing concerts as “Commodores Featuring Thomas McClary” and “The 2014 Commodores.” Commodores Entertainment Corp. (CEC) v. McClary, 6:14-cv-1335. In January 2018, the U.S. Court of Appeals for the Eleventh Circuit affirmed the district court's grant of a permanent injunction against McClary, a founding member of the music group who left in the 1980s to establish a solo career. Commodores Entertainment Corp. v. McClary, 879 F.3d 1114 (11^th Cir. 2018). In the recent development in the case, Middle District Judge Roy B. Dalton Jr. noted, “Before the Court is another farewell tour in this long-running trademark dispute.” The district judge then dismissed McClary's counterclaims against alleging defamation, violation of the Florida Deceptive and Unfair Trade Practices Act (FDUTPA), commercial misappropriation, present and prospective interference with economic opportunities, and breach of fiduciary obligation. Judge Dalton explained about the defamation counterclaim: “McClary and [his related company] Fifth Avenue focus on [Commodores' manager David] Fish's communications to non-parties. They insist that because McClary is permitted to make fair use of CEC's marks [e.g., as “formerly of”], Mr. Fish's emails representing that McClary could not make any use of the Marks was false and misrepresented the Court's preliminary injunction. According to McClary and Fifth Avenue, Mr. Fish demonstrated reckless disregard for the truth because he did not know what fair use meant and made no effort to ascertain its meaning, despite an obligation to do so. But a review of Mr. Fish's emails belies their claims. All they reveal is that: (1) Mr. Fish directed one recipient to the Court's Order concerning the preliminary injunction; and (2) Mr. Fish requested contact information concerning a promoter because he had become aware that a band was marketing itself as The Commodores. With this context, Mr. Fish's communications were not false. …” The district judge wrote that McClary's interference with prospective economic opportunities counterclaim “arises from Mr. Fish's alleged communications with booking agents and talent buyers in the industry which stated that McClary had no right to use 'The Commodores' Marks … Not all interference is actionable. Indeed '[t]here can be no claim [for tortious interference with a business relationship] where the action complained of is undertaken to safeguard or promote one's financial or economic interest.'”The district court concluded: “When the music stops, only CEC's claims for damages under [the Lanham Act,] 15 U.S.C. §1117, and FDUTPA remain viable.”