(L-R) Tom Scholz and Barry Goudreau of Boston, playing at Madison Square Garden (Photo: Richard E. Aron / Redferns)
The desire to prevent former bandmates from trading on past rock and roll glory is driving two similar federal trademark cases, with current members of the bands Boston, and, separately, the J. Geils Band, trading bitter accusations with former members about who can claim the names.The cases, in federal court in Boston, illustrate the disputes that arise when band members regroup and launch new tours 20 or 30 years after a band’s heydey. These fights can be highly emotional and involve long-nursed grudges, say attorneys who have represented parties in similar litigation.
“This may be driving [the litigation] more than dollars and cents,” said Ben McLane, an entertainment attorney at McLane & Wong in North Hollywood, Calif., whose practice focuses primarily on the music business. “It’s very common and it happens a lot more with these famous groups than with newer groups.”
Disputes spawned by creative marriages that have gone sour often boil down to people fighting about something they could easily make an agreement about, according to Brad Newberg, a Falls Church, Va., partner at Reed Smith. “Sometimes the litigants, or even some lawyers, forget that the purpose of trademark law is to prevent consumer confusion; it’s not to prevent the use of accurate historical information,” he said. “They think, ‘I don’t want this guy associated with my creative endeavor whatsoever,’ which is not really the purpose of trademark law.”
Joseph Messina of Boston-based Hayes Messina Gilman & Hayes, attorney for former Boston guitarist Barry Goudreau, suggested that that sort of overreach is at play in his client’s case. “There’s no sort of blanket immunity to do anything in the process of purporting to protect trademark rights,” he said.
Goudreau faces trademark, contract and related claims filed in April by band founder Donald Thomas Scholz, who claims Goudreau routinely violates a 1983 agreement to solely describe himself as “formerly of Boston.”
In counterclaims asserting breach of contract, unfair and deceptive trade practices, and abuse of process, Goudreau lays the blame for any confusion on promoters and venues. He also asserts that Scholz has “serially filed baseless lawsuits” against him and his family, misusing the legal process “for the illegitimate and ulterior purpose of preventing Goudreau from earning a living as a performing musician.” In December, U.S. District Judge Denise Casper in Boston rejected a motion to dismiss those counterclaims. Scholz lawyer Erik Belt, an intellectual property partner at McCarter & English in Boston, declined to comment.
In the Geils case, the parties are fighting over whether founder and band namesake John W. Geils Jr. signed away the rights to use the band name or “J. Geils” for ventures without the band in 1982. Geils referred to himself as J. Geils while performing as a musician “prior to the involvement of anybody else,” said one of his lawyers, Michael Patrick, a partner at Grimes in Norwalk, Conn.
Geils and his record label Francesca Records, which trademarked “J. Geils Band” for use with apparel and entertainment in December 2009, sued in 2012. Their targets are four band members who still perform together: Seth Justman, Daniel Klein, Richard Salwitz and Peter Wolf. They also sued the band’s manager and the businesses that stage the band’s reunion performances.
The claims and counterclaims involve ownership of several trademarks; whether the 1982 agreement is valid; and unfair and deceptive business practices and breach of contract. In separate 2013 orders, U.S. District Judge Dennis Saylor IV in Boston denied each side’s dismissal motions. The defendants’ lawyers at Boston-based Butters Brazilian did not respond to requests for comment.
Parties accused of trademark infringement can sometimes rely on the “nominative fair use” defense, according to Steve Baird, chairman of the intellectual property department at Minneapolis-based Winthrop & Weinstine. That allows in certain circumstances, including some types of advertising, the use of another’s trademark to identify that trademark owner or its goods or services.
The U.S. Court of Appeals for the Ninth Circuit coined the term more than two decades ago. The First Circuit, which would hear any appeal of the band cases, has embraced the concept, Baird said.
“The First Circuit has recognized the underlying principle of nominative fair use, but it has not yet decided on whether to apply one of the nominative fair use tests already developed in another circuit or create its own,” he said.
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