Scholz v. Goudreau

Decision Date21 September 2015
Docket NumberCiv. Action No. 13-cv-10951
Citation132 F.Supp.3d 239
Parties Donald Thomas Scholz, Plaintiff and Counterclaim Defendant, v. Barry Goudreau, Defendant and Counterclaim Plaintiff.
CourtU.S. District Court — District of Massachusetts

Erik Paul Belt, Nicholas W. Allen, McCarter & English, LLP, Boston, MA, for Plaintiff and Counterclaim Defendant.

Brian J. Bosworth, Jonathan R. Deblois, Joseph P. Messina, Hayes, Messina, Gilman & Hayes, LLC, Boston, MA, for Defendant and Counterclaim Plaintiff.

MEMORANDUM AND ORDER

CASPER

, District Judge
I. Introduction

Plaintiff Donald Thomas Scholz ("Scholz") has filed this lawsuit against Defendant Barry Goudreau ("Goudreau") alleging federal trademark infringement in violation of 15 U.S.C. § 1114(1)

(Count I); unfair competition in violation of 15 U.S.C. § 1125(a) (Counts II and III); trademark dilution in violation of 15 U.S.C. § 1125(c) and Mass. Gen. L. c. 110H (Counts IV and VIII); contributory trademark infringement and vicarious trademark infringement in violation of 15 U.S.C. § 1114(1) (Counts V and VI); trademark infringement under Massachusetts common law (Count VII); unfair competition in violation of Massachusetts common law (Count IX); violation of Mass. Gen. L. c. 93A ("Chapter 93A") (Count X); violation of the Truth in Music Statute, Mass. Gen. L. c. 93, §§ 12 and 43B (Count XI); breach of contract (Count XII); and breach of the implied covenant of good faith and fair dealing (Count XIII). First Amended Comp., D. 43 ("FAC"). Goudreau asserts five counterclaims: declaratory judgment (Count I); breach of contract (Count II); breach of the implied covenant of good faith and fair dealing (Count III); violation of Chapter 93A (Count IV); and abuse of process (Count V). D. 45. Goudreau has moved for summary judgment on Scholz's claims, D. 83, and Scholz has moved for summary judgment on Goudreau's counterclaims, D. 88. For the reasons stated below, the Court ALLOWS in part and DENIES in part Goudreau's motion and ALLOWS in part and DENIES in part Scholz's motion.

II. Standard of Review

The Court grants summary judgment where there is no genuine dispute as to any material fact and the undisputed facts demonstrate that the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a)

. "A fact is material if it carries with it the potential to affect the outcome of the suit under applicable law." Santiago–Ramos v.Centennial P.R. Wireless Corp. , 217 F.3d 46, 52 (1st Cir.2000) (quoting Sánchez v.Alvarado , 101 F.3d 223, 227 (1st Cir1996) ). The movant bears the burden of demonstrating the absence of a genuine issue of material fact. Carmona v. Toledo , 215 F.3d 124, 132 (1st Cir.2000) ; seeCelotex v. Catrett , 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). If the movant meets its burden, the non-moving party may not rest on the allegations or denials in her pleadings, Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 256, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986), but "must, with respect to each issue on which she would bear the burden of proof at trial, demonstrate that a trier of fact could reasonably resolve that issue in her favor." Borges ex rel. S.M.B.W. v. Serrano–Isern , 605 F.3d 1, 5 (1st Cir.2010). "As a general rule, that requires the production of evidence that is 'significant[ly] probative."' Id. (quoting Anderson , 477 U.S. at 249, 106 S.Ct. 2505 ) (alteration in original). The Court "view[s] the record in the light most favorable to the nonmovant, drawing reasonable inferences in his favor." Noonan v. Staples, Inc. , 556 F.3d 20, 25 (1st Cir.2009).

III. Factual Background

Scholz and Goudreau were both members of the rock band BOSTON. D. 92 (Goudreau's statement of undisputed material facts) ¶ 1; D. 99 (Scholz's response to Goudreau's statement of undisputed material facts) ¶ 1; D. 101 (Scholz's counterstatement of additional material facts) ¶¶ 2-3. Goudreau, a guitar player, performed on BOSTON's first two albums and performed with the band from approximately 1976 until 1979. D. 92 ¶¶ 2, 4; D. 99 ¶¶ 2, 4. Goudreau left the band in 1981, filing a lawsuit against Scholz and other band members in 1982 regarding the rights and obligations of the parties. D. 92 ¶ 8; D. 99 ¶ 8. In May 1983, the parties to the suit executed a settlement agreement (the "Settlement Agreement"). D. 92 ¶ 9; D. 99 ¶ 9. Pursuant to the Settlement Agreement, Goudreau continued to receive a one-fifth royalty for the songs on the first two BOSTON albums. D. 92 ¶ 10; D. 99 ¶ 10. Regarding Goudreau's use of the BOSTON name, the Settlement Agreement stated:

1. By the execution hereof, the parties acknowledge that Goudreau is no longer, and he has ceased to be, a partner in Boston, and as such shall have no interest, right nor title to the name "BOSTON," nor to any recording royalties, performing rights royalties, performance income, copyright interests or payments, or financial interest therein, except as provided herein.
...
2D. 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.
D. 43-3 at 3, 8-9.

Goudreau's music career continued following his departure from BOSTON. He has been a member of, or performed with, various musical groups at a number of venues. Scholz's FAC focuses on the advertisements and promotions associated with five particular groups or performances involving Goudreau: performances at the Cannery Casino Hotel, promoted by Paul Curcio ("Curcio"); "The Best of Boston" performances, promoted by Maximus Entertainment and its Chief Executive Officer, Robert Devine ("Devine"); a musical revue called World Class Rockers ("WCR"); the James Montgomery Blues Band ("JMBB"); and Ernie and the Automatics ("EATA"). D. 43 ¶¶ 30-32, 34, 36, 38, 40; D. 92 ¶ 25. The crux of Scholz's claims is that Goudreau violated the Settlement Agreement and infringed on Scholz's BOSTON trademarks by using or allowing the use of descriptive terms that deviate from "formerly of Boston," as specified by the Settlement Agreement, in connection with these performances and musical groups. D. 43 ¶¶ 15-17, 51, 57, 63, 70, 77, 82, 90, 96, 102.

Scholz has sued or threatened to sue Goudreau prior to this action. Scholz pursued similar claims in a 2009 complaint that was later dismissed. D. 96 (Goudreau's statement of additional undisputed material facts in opposition to Scholz's motion for summary judgment) ¶¶ 77-80; D. 104 (Scholz's response to Goudreau's statement of additional undisputed material facts) ¶¶ 77-80. Scholz again sued in 2010, asserting the same claims as in the 2009 action, but the complaint was never served. D. 96 ¶¶ 81-83; D. 104 ¶¶ 81-83. Scholz threatened to pursue the same causes of action in 2011, providing Goudreau's counsel with a draft complaint that ultimately was never filed. D. 96 ¶¶ 84-85; D. 104 ¶¶ 84-85. Goudreau's counterclaims are primarily premised on Scholz's litigiousness and his additional efforts to thwart Goudreau's ability to promote himself. See, e.g. , D. 45 ¶ 46 (alleging that "[t]here are literally dozens of threatening letters ... in which Scholz uses his purported trademark rights in BOSTON to interfere with Goudreau's efforts to perform for venues and promoters").

IV. Procedural History

Scholz instituted the present action on April 17, 2013. D. 1. Goudreau answered and asserted five counterclaims against Scholz. D. 7. Scholz's motion to dismiss the counterclaims, D. 10, was denied on December 26, 2013. D. 22. On January 17, 2014, Scholz moved for leave to amend his complaint, D. 30, which the Court allowed on May 19, 2014, D. 41. Scholz filed the FAC, the operative complaint, on May 21, 2014, asserting the thirteen claims now before the Court. D. 43. Goudreau answered the FAC and asserted five counterclaims against Scholz. D. 45. Goudreau has now moved for summary judgment. D. 83. Simultaneously, Scholz moved for summary judgment on Goudreau's counterclaims. D. 88. The Court heard the parties on the pending motions and took these matters under advisement. D. 109.

V. Goudreau's Motion for Summary Judgment
A. Direct Trademark Infringement
1. Goudreau's performances and recordings

The Lanham Act, 15 U.S.C. § 1114(1)

, prohibits infringement of registered trademarks, providing:

Any person who shall, without the consent of the registrant—(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion or to cause mistake, or to deceive; ... shall be liable in a civil action by the registrant for the remedies hereinafter provided.

Federal trademark infringement under the Lanham Act and under Massachusetts common law require that a plaintiff prove that "(1) the plaintiff owns and uses the disputed marks; (2) the defendant used similar or identical marks without permission; and (3) unauthorized use likely confused consumers, harming the plaintiff." Lyons v. Gillette , 882 F.Supp.2d 217, 226 (D.Mass.2012)

(citing Venture Tape Corp. v. McGills Glass Warehouse , 540 F.3d 56, 60 (1st Cir.2008) ). The dispute here centers on the second prong. Goudreau asserts that the infringing uses of the BOSTON mark about which Scholz complains were, in every instance, the result of actions of third parties, not of Goudreau. D. 91 at 8. The Court agrees that Scholz has failed to proffer evidence that Goudreau was responsible for any of the allegedly infringing advertisements and promotions that are the subject of the FAC. Without evidence that Goudreau himself directly participated in the infringing activity, Scholz's...

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