Former Boston bandmates have dueling lawsuits drummed out of court

In a ruling that will leave neither side feeling satisfied, the US Court of Appeals for the First Circuit in Boston today upheld a lower-court ruling and verdict that basically instructed two former bandmates in the '70s rock and roll band Boston to stop suing each other, at least over the use of the band's name.

A three-judge panel upheld a judge's decision and jury verdict in US District Court in Boston that held that Barry Goudreau, who quit the band after its first two albums, did not violate the "Boston" trademark held by Donald Thomas "Tom" Scholz - but that Scholz did not owe Goudreau any damages for suing him in the first place.

Scholz sued Goudreau for copyright infringement in 2013 after Goudreau hitched a ride with Ernie Boch Jr.'s Ernie and the Automatics band and Boch began promoting Goudreau as, among other things, an "original' and "founding" member of the band. Scholz charged this violated an agreement Goudreau signed after he left the band, to basically not breathe the name "Boston" except to say he was "formerly of Boston." Goudreau countered with charges of his own, including "abuse of process" - for suing him with the "ulterior motive" of taking away his royalties for the first two albums.

A judge in US District Court in Boston tossed much of their respective cases, but agreed to let a jury decide whether Boudreau was violating Boston's trademark on "Boston" and whether Scholz's suit was a breach of the original separation agreement. A key question the judge felt a jury should decide: What Goudreau legally responsible for the way Boch was advertising his band?

The jury's answer was not a long time coming: After a week long trial in 2016, the jury rejected both sides' claims, although it added it had more than a feeling that Goudreau didn't fulfill his obligation not to make hay out of his two-album stay with Boston.

The decisions left neither Scholz nor Goudreau with peace of mind and both appealed the judge's decision to slash their legal arguments as well as the jury verdict.

Scholz argued the Goudreau "encouraged others to promote him as an 'original' or 'founding' member of BOSTON, in breach of the contract," for example, by giving Boch "the right to use and authorize others to use Goudreau's name and biographical information."

The appeals court said Goudreau provided proof that he didn't do that, that he never told anybody to say anything about his Boston-era guitar work except that he was "formerly of Boston," and that Goudreau was not to blame for Boch adding in the extra verbiage.

As for the jury finding that Goudreau did not fulfill his termination-agreement obligations, the appeals court said Scholz failed to show proof he was somehow harmed by that failure, a key component of a successful contract claim.

The evidence presented at trial did not compel the jury to conclude that Scholz suffered damages as a result of Goudreau's failure to perform his contractual obligations.

Turning to Goudreau, the appeals court said there was nothing wrong with the judge's decision to reject his claim that his former bandmate's suit was an "abuse of process," to deprive him of his continuing proceeds from the sale of the first two Boston albums. The court said "abuse of process" would require showing Scholz had "an ulterior motive" in bringing the suit, and the court noted Scholz was very upfront in his filings saying that for what he saw as a breach of contract, he wanted to be awarded Goudreau's future shares of the records' profits.

The court also rejected Goudreau's argument that an online video posted to promote an Ernie and the Automatics' album that included pop-up text that featured Goudreau's role in Boston was intended as a parody, which is protected under the First Amendment, and that it should not have been allowed as evidence of his alleged contract breaking.

The court replied, in essence, please, cool the engines. The video, even if Goudreau had no say over the pop-up text, was clearly meant to promote the Boch band's song - Boch himself uploaded it (the video itself is no longer on YouTube, but an ad for the album is), and was not just some parody.