I Used to Be With The Band – Trademark Law

Business-savvy rockstars understand that a band name can represent a valuable brand. The idea that federal trademark protection can extend to a band’s name is not a recent one.  The registrant of the name of the 1940s and 50s smooth vocal group “The Ink Spots” claimed the name was first used in commerce in late 1945. Bands from Aerosmith to ZZ Top have also obtained federal trademark registrations on their band’s name.

While continuous use of a name, and verifying the quality of the services provided under a trademark are necessary to maintain the value of a federal trademark, longevity and stability are, of course, not hallmarks of the typical rock or pop band. Whether it’s ego clashes, substance abuse issues or the old standby “creative differences”, most bands undergo lineup changes, and break ups, which may end the bands viability or at least devalue the quality of its music.  However, as shown by the success of tribute bands, reunion and revival tours, and the continuing sales and playing of music created long ago, the promotional value of a defunct (or, perhaps more precisely, “de-funked”?) band’s name can long outlive the band itself.

Naturally, use of a trademark protected name by performers having no relationship to the related group is clearly trademark infringement and may be copyright infringement to the extent they play protected songs without permission. However, more difficult issues can arise when a former band member forms or joins a new act but promotes himself or herself as a founding member of the former band. Notable instances include disagreements among members of the Stone Temple Pilots and The Drifters.

This very issue was at the heart of, Scholz v. Goudreau, Case No. 1:13-cv-10951-DJC (D. Mass.). That lawsuit is the latest chapter in a long-running battle between Barry Goudreau and Tom Scholz over the band name “Boston,” the hugely successful 1980s rock group of which Goudreau and Scholz were members. Scholz, who holds a federal trademark registration for “Boston” in connection with “musical entertainment services”, sued Goudreau in 2013, claiming Goudreau had infringed upon the mark by allowing himself to be identified as a former Boston member after joining Ernie Boch, Jr.’s “Ernie and the Automatics”.

In a 1983 agreement settling his own Boston-related trademark suit, Goudreau obtained the right to refer to himself as being “formerly of Boston.”  Scholz’s suit, however, alleged that promotions by Boch went much further, including references such as a “founding member” and Boston’s “lead guitarist rock legend.”  In addition to Scholz’s infringement claims, each party asserted that the other had breached the 1983 agreement.

Direct, Contributory and Vicarious Infringement Claims

In 2015, U.S. District Judge Denise Casper granted pretrial motions seeking dismissal of a number of Scholz’s claims. Noting the absence of any evidence that Goudreau himself had made any of the offending “Boston” references, Judge Casper held that no finding of “direct” infringement was possible.

However, the Court noted that it was also obliged to consider whether, through the acts of a third party (Boch), Goudreau had contributorily or vicariously infringed upon the Boston trademark.

To find that Goudreau had committed contributory trademark infringement, there must be evidence that Goudreau intentionally induced Boch to use the “Boston”-related references. Finding no such evidence in the record, Judge Casper also dismissed this claim from the lawsuit.

However, the Judge concluded that a jury could determine that Goudreau was vicariously liable for Boch’s alleged infringing conduct by virtue of their working together. If a sufficient relationship was found to exist, a jury could find that Boch’s acts should be attributed to Goudreau, notwithstanding the lack of the latter’s knowledge or consent. Goudreau’s counterclaims were also left for determination at trial.

After a week of sometimes rancorous testimony, in early November the jury determined that no infringement had occurred, and that the Boston-affiliations used by Boch did not create a likelihood of confusion regarding his affiliation with the band. However, the same panel rejected Goudreau’s counterclaims, concluding that they were precluded by Goudreau’s own failure to fully abide by the terms of the 1983 settlement agreement.

Lest one assume the former bandmates’ nearly 35-year trademark battle ended with the jury’s verdict, Scholz reportedly has filed a motion requesting Judge Casper to enter judgment on his breach of contract claims against Goudreau.

The Importance of a Written Agreement

Collaborations among artists, like many business relationships, are often made “on a handshake” since everybody always considers themselves “friends” at that time.  Business considerations are usually considered only incidentally, if at all, and are often thought distasteful by people who are going about the task of creating music, just like they are when they are writing code or creating the next best widget. This is probably nowhere more common than when a group of rockers get together to pursue their dream of stardom.

The absence of a written agreement doesn’t ordinarily become a problem until after the band has both commercial success and a falling out. In that case, it is often the case that a clear statement of the parties’ future rights to benefit from the partnership’s trademark could have avoided costly and protracted litigation.

The attorneys at Sherman IP have years of experience in counseling businesses and artists alike in ways to protect their investments of money, time and creative energy against the possibility that one day they and their associates will part company.