Scholz v. Goudreau
132 F.Supp.3d 239, 2015 U.S. Dist. LEXIS 125730, 2015 WL 5554012 (2015)
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Rule of Law:
A musician may be held secondarily liable for trademark infringement, either contributorily or vicariously, if a factual dispute exists as to whether the musician exercised direct control over a third party's infringing promotions or had a relationship, such as band membership, that created apparent authority for the third party to act on their behalf.
Facts:
- Donald Thomas Scholz and Barry Goudreau were members of the rock band BOSTON.
- Goudreau performed on BOSTON's first two albums and was a member from approximately 1976 until 1979.
- After Goudreau left the band in 1981, he and Scholz entered into a settlement agreement in May 1983.
- The agreement permitted Goudreau to use the specific term 'Formerly of Boston' for biographical purposes related to future performances, but otherwise prohibited him from using the name 'BOSTON' in advertisements or promotions.
- Following the agreement, Goudreau continued his music career, performing with various groups, including as a member of a band called Ernie and the Automatics (EATA).
- Promoters and advertisements for Goudreau's performances, particularly with EATA, used descriptions such as 'original Boston member' and 'lead guitarist rock legend from the band BOSTON,' which deviated from the settlement agreement.
- At a political event for Mike Huckabee, when asked where he was from, Goudreau stated, 'Barry Goudreau from Boston. I like Mike.'
Procedural Posture:
- Donald Thomas Scholz filed a lawsuit against Barry Goudreau in the U.S. District Court for the District of Massachusetts, the court of first instance.
- Goudreau filed an answer and asserted five counterclaims against Scholz.
- Scholz's motion to dismiss the counterclaims was denied by the district court.
- The court granted Scholz leave to amend his complaint, and he filed a First Amended Complaint.
- Goudreau answered the amended complaint and re-asserted his five counterclaims.
- Goudreau moved for summary judgment on all of Scholz’s claims.
- Scholz moved for summary judgment on all of Goudreau's counterclaims.
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Issue:
Can a musician be held secondarily liable for trademark infringement when third-party promoters use infringing language in advertisements, if the musician did not directly create the advertisements but was a member of a band that used such promotions?
Opinions:
Majority - Judge Casper
No direct liability exists, but potential secondary liability remains for band-related promotions. The court granted summary judgment for Goudreau on the direct infringement claims because Scholz failed to provide evidence that Goudreau personally created or disseminated the infringing advertisements. However, the court denied summary judgment on the claims of contributory and vicarious infringement as they related to Goudreau's membership in the band EATA. For contributory infringement, a factual dispute exists as to whether Goudreau's instructions to EATA's management and their responsiveness demonstrate he had the requisite 'direct control and monitoring' over their infringing promotions. For vicarious infringement, Goudreau's acknowledged membership in EATA could lead a third party to reasonably infer that the band's representatives acted with his apparent authority, creating an issue for the jury. The court dismissed the trademark dilution claim related to the political event, holding that using the mark in a political context constitutes noncommercial speech, which is exempt from the Lanham Act's prohibitions.
Analysis:
This case clarifies the scope of secondary liability for trademark infringement in the context of performing artists and third-party promoters. The court distinguishes between an artist's non-liability for the unauthorized actions of independent promoters and potential liability stemming from a more formal relationship, such as band membership. The decision establishes that being a member of an infringing entity (like the band EATA) can create a sufficient nexus of control or apparent authority to survive summary judgment. This puts artists on notice that they may have an affirmative duty to police the promotional activities of groups they formally join, as a passive or ineffective objection to infringing promotions may not shield them from secondary liability.
