Donald Thomas Scholz vs. Barry Goudreau

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COMMONWEALTH OF MASSACHUSETTS

MIDDLESEX, ss.

SUPERIOR COURT DEPARTMENT
OF THE TRIAL COURT
Docket No.

--------------------------

DONALD THOMAS SCHOLZ,
Plaintiff,

v.

BARRY GOUDREAU
Defendant.

--------------------------

VERIFIED COMPLAINT


Plaintiff Donald Thomas Scholz brings this action against Defendant Barry Goudreau seeking redress for his breach of contract and trademark infringement.

Parties

1. Plaintiff Donald Thomas Scholz ("Scholz") is an individual living in Southern Middlesex County, MA.

2. Defendant Barry Goudreau ("Goudreau") is an individual who, on information and belief, lives in Swampscott, MA.

Venue

3. Venue is proper as Scholz resides in Middlesex County.

Facts

Background

4. Scholz is a successful musician, composer, recording engineer, and record producer.

5. In or about 1975, Scholz founded the hugely successful rock music group BOSTON.

6. Based on demo recordings on which Brad Delp sang all vocals, Jim Masdea played all drums, and Scholz played all other instruments, Epic Records signed Delp and Scholz to a record contract in 1975. Scholz had written all the songs on the demo recordings, and he alone produced, engineered, and financed the recording of the demos.

7. The original members of the band were thus Scholz and Brad Delp.

8. Scholz re-recorded the demo songs, plus some additional songs, for BOSTON's eponymously named first album, released in 1976 (the "debut album"). There were nine songs on the debut album, two of which were listed as one, "Foreplay/Long Time." All of the songs on the debut album were written by Scholz, except for "Let Me Take You Home Tonight," which was written by lead singer Brad Delp.

Goudreau's involvement in BOSTON

9. Goudreau is a talented guitar player.

10. Goudreau played on just two of the eight cuts on the debut album: "Let Me Take You Home" and "Foreplay/Long Time." Bassist Fran Sheehan played bass on "Let Me Take You Home" and "Foreplay." Delp played acoustic guitar on "Let Me Take You Home." Otherwise, excluding drums and vocals, Scholz played all instruments on the debut album, and performed on every song, performing more of the instrument tracks than all other musicians combined.

11. On BOSTON's second album, Don't Look Back, released in 1978, Goudreau appeared on just four of the eight cuts: rhythm guitar on "The Journey," lead guitar on "Used To Bad News," and some of the lead guitar on "Don't Look Back," and "Don't Be Afraid." Scholz played the majority of the guitar tracks on these four songs, and all other instruments on all songs, except for drums and a few notes of bass guitar on "Don't Look Back."

12. Goudreau performed live with BOSTON between 1976 and 1979. That included several major concert tours.

13. Goudreau last performed as a member of BOSTON in 1979.

14. Since Goudreau's last performance as a member of BOSTON in 1979, BOSTON has, among other things:

a. released three new albums: Third Stage, Walk On, and Corporate America;

b. released a Greatest Hits album and remasters of the first two albums; and

c. conducted six major concert tours and performed at various other events.

15. Goudreau did not play on Third Stage, Walk On, or Corporate America (BOSTON's Greatest Hits album includes two cuts which Goudreau played on from the first two albums).

16. Goudreau did not perform on any of BOSTON's six major concert tours since 1979.

17. Goudreau's sole performance with BOSTON since 1979 was at a tribute concert for the late Brad Delp in August 2007, in which all former members of BOSTON were invited to participate.

18. Even though Goudreau had played on only 2 of 8 cuts on the debut album, Scholz agreed to pay Goudreau 20% of the artists' royalties from all cuts on the album - the same percentage of artists' royalties that Scholz and Delp received on that album.

19. Likewise, even though Goudreau had played on only 4/8 cuts on Don't Look Back, Goudreau received 20% of the artists' royalties from all cuts on that album -- the same percentage of artists' royalties that Scholz and Delp received on that album.

20. Scholz agreed to Goudreau's receiving a full 1/5 share of the artist's royalties on the first two albums in an effort to foster harmony between the bandmembers.

The Parties' Contract.

21. In 1982, Goudreau filed suit against Scholz, the other bandmembers, and the band's touring entity, seeking a share of various assets and income streams.

22. On or about May 9, 1983, Scholz and Goudreau (and the other then bandmembers and BOSTON's touring company) executed a written Settlement Agreement (the "Agreement"). A true and accurate copy of the Agreement is attached hereto as Exhibit A.

23. The Agreement ended the litigation Goudreau had started, and set forth the details Goudreau's rights going forward.

24. The Agreement states, in part:

1. By the execution hereof, the parties acknowledge that Goudreau is not 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.

2. As full consideration for Goudreau's retirement, Boston agrees to pay to Goudreau the following payments:

A. Future Recordings: With respect to the next (third) Boston album only, the sum of ONE HUNDRED THOUSAND DOLLARS ($100,000) shall be paid to Goudreau as set forth in Section 2.A(1) below. Thereafter, Goudreau shall receive no other royalties with respect to the next (third) Boston album or any other subsequent album recorded by Boston in the future. However, Goudreau shall not be entitled to receive any royalties whatsoever under this Section 2.A if no albums are released after the date hereof under the name "Boston." The parties hereto agree to send to CBS, Inc. and any other person or entities which are required to make payments to Boston in which Goudreau has an interest, irrevocable letters of direction providing for direct payment to Goudreau of such payments.

[...]

C. Previous Recordings: The parties hereto expressly agree that Goudreau shall continue to receive his full one-fifth (l/5) royalty (paid in the same manner as is paid to BOSTON) on the two Epic albums by Boston, known as "BOSTON" and "DON'T LOOK BACK" and also the same proportionate share on any future use of individual sides of these same original recordings, said sides agreed to be: "More Than a Feeling", "Peace of Mind", "Foreplay/Long Time", "Rock and Roll Band", "Smokin"', "Something About You", "Hitch A Ride", and "Let Me Take You Home Tonight", each of which is embodied in the album known as "BOSTON" and "Don't Look Back", "The Journey", "A Man I'll Never Be", "Feeling Satisfied", "Party", "Used To Bad News", and "Don't Be Afraid", each of which is embodied in the album known as "DON'T LOOK BACK"; also, any previously unreleased BOSTON material on which Goudreau has played, Goudreau shall receive this one-fifth (1/5) royalty interest, as defined above.

[...]

D [sic]. 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. [Emphasis added.]

25. The aforementioned Paragraph 2(D) was the major incentive for Scholz's agreeing to the payments that Goudreau would receive under the Agreement.

Scholz's Substantial Performance of the Agreement

26. Scholz has substantially performed all of his obligations under the Agreement since its execution in 1983.

27. Goudreau received the $100,000 under Paragraph 2(A) of the Agreement at or around the time of the release of BOSTON's third album, Third Stage in 1987.

28. Goudreau has received approximately $1,000,000, and perhaps more, pursuant to Paragraph 2(B) of the Agreement since execution thereof in 1983.

Scholz's sole ownership of the trademarks and service marks.

29. Scholz is the sole owner of the trademark/servicemark "BOSTON." The mark was first used in interstate commerce in August 1976. The mark is registered with the United States Patent and Trademark Office ("USPTO"), Registration No. 1,730,705, with respect to phonographic recordings and/or audio tapes, costume jewelry, souvenir merchandise, paper goods, and entertainment services in the nature of a rock band. Attached hereto as Exhibit B is a true copy of a print-out from the records of the USPTO, which evidences this trademark/servicemark registration. Scholz applied for registration of the mark on June 14, 1990, and registration issued on November 10, 1992.

30. Scholz is also the sole owner of the trademark/servicemark "BOSTON (logo)." The mark was first used in interstate commerce in August 1976. The mark is registered with the USPTO, Registration. No. 1,734,444, with respect to phonographic recordings and/or audio tapes, costume jewelry, souvenir merchandise, paper goods, and entertainment services in the nature of a rock band. Attached hereto as Exhibit C is a true copy of a print-out from the records of the USPTO, which evidences this trademark/servicemark registration. Scholz applied for registration of the mark on June 14, 1990, and registration issued on November 24, 1992.

31. The trademarks and service marks of the BOSTON name and logo are hereinafter referred to collectively as the "BOSTON marks."

32. Scholz has devoted his career to the creation of BOSTON's unique sound, both in sound recordings and in live performances. The BOSTON marks symbolize and represent the unique BOSTON sound.

33. Since obtaining the registrations in 1992, and for many years prior thereto, Scholz has sold goods and performed musical concerts under the name and logo BOSTON, and continues to do so.

34. As a result of Scholz's long and extensive usage and promotion of the BOSTON marks in interstate commerce: such marks have become distinctive to designate BOSTON recordings, BOSTON live performances, BOSTON merchandise, etc.; such marks have become distinctive to distinguish BOSTON's recordings, live performances, and merchandise from others; and Scholz has built up and owns valuable good will which is symbolized by the BOSTON marks.

35. The BOSTON marks are famous marks.

Goudreau's repeated wrongful uses of the name "BOSTON"

36. Goudreau has repeatedly and in various ways wrongfully used the name BOSTON in violation of the parties' 1983 Agreement Goudreau has repeatedly, and without right or authorization, used in commerce the name BOSTON and/or the logo BOSTON in connection with goods or services, and/or containers for goods. Several examples are set forth below.


Live and recorded endorsements of Governor Mike Huckabee for President.

37. In or about February 2008, and perhaps at other times, Goudreau appeared live at several campaign rallies for Governor Mike Huckabee in the Governor's campaign to be the 2008 Republican candidate for U.S. President.

38. At those campaign rallies, Goudreau played BOSTON songs on stage with Governor Huckabee, who plays the bass guitar. Those songs included BOSTON's iconic "More Than A Feeling," one of the sound recordings on BOSTON's debut album that Goudreau had nothing to do with. On information and belief, "More Than A Feeling" became an informal campaign theme song at several Huckabee events and on several pro-Huckabee websites.

39. On at least one occasion, Goudreau taped a promotional piece in support of Governor Huckabee's campaign in which he said: "Hi. this is Barry Goudreau of the band BOSTON here in Manchester ... " The present tense of Goudreau's statement wrongly suggested that: a) Goudreau was still with BOSTON; and b) BOSTON was endorsing Huckabee.

40. The promotion was posted on YouTube.com.

41. The promotion violated the Agreement and/or infringed the BOSTON marks.

"Celebration of the Sea."

42. In 2005, Goudreau performed at the Celebration of the Sea Music & Film Festival in the Miami, FL, area.

43. Promotion of the event described Goudreau as follows:

Barry Goudreau and Fran Sheehan: Original Members of the Band Boston
The arena rock group behind one of the fastest-selling debut albums in history, Boston formed as a concept of Tom Sholtz [sic] while he was at Massachusetts Institute of Technology. After graduating, Sholtz [sic] joined a local band led by guitarist Barry Goudreau. The band, soon included bassist Fran Sheehan, vocalist Brad Delp, and drummer John "Sib" Hashian. Boston would go on to make two of the best-selling albums in rock and roll history.

44. Attached hereto as Exhibit D is a print-out from the event's website containing the promotion.

45. In addition to containing several factual inaccuracies and using Scholz's name, this promotion uses the name BOSTON to promote Goudreau's appearance, in violation of the Agreement and infringing upon the BOSTON marks.

Doug Flutie Tribute Concert.

46. On information and belief, in the fall of 2006, Goudreau agreed to perform at a concert scheduled for November 13, 2006 at Boston Symphony Hall in honor of Doug Flutie.

47, Also on information and belief, Goudreau and/or someone on his behalf led organizers of that concert to believe that BOSTON would be performing,

48, When the organizers learned that Goudreau was not affiliated with BOSTON, they asked Scholz, through his manager, to have BOSTON perform.

49, The organizers made clear to Scholz's manager that he wanted Scholz, Delp, and those BOSTON bandmembers, still affiliated with Scholz to perform.

The Cannery, Las Vegas,

50, Goudreau was scheduled to perform at the Cannery in Las Vegas, NV, on April 5, 2008.

51. This show was promoted as:

"FRAN COSMO & BARRY GOUDREAU (BOSTON)."

52. Attached hereto as Exhibit E is a print-out of a local online promotion of the event, and a photograph of the marquis outside the Cannery, taken on or about April 5, 2008.

53. The promotion violated the Agreement and/or infringed the BOSTON marks.

"World Classic Rockers."

54. On several dates in (at least) early 2008, Goudreau performed in various locations for an entity called World Classic Rockers with another former BOSTON member, Fran Cosmo.

55. On information and belief, World Classic Rockers is a live performance featuring former members from a handful of classic rock bands, in which they each perform a few songs for which their respective former bands were well known.

56. The promotions for World Classic Rockers prominently featured the name BOSTON and described Goudreau as follows:

BARRY GOUDREAU's guitar work is a trademark of the BOSTON sound on smash singles such as "More Than A Feeling"; "Peace of Mind"; "Foreplay/Longtime"; "Rock n Roll Band"; "Don't Look Back" and other chart-toppers. Released in 1978, their self-titled album "Boston" sold over 17 million copies during its initial year of release, making it the #1 selling debut album of all time, a mark that still stands today.

57. Attached hereto as Exhibit F is a print-out from the World Classic Rockers' website containing the promotion.

58. This promotion violated the Agreement and/or infringed Scholz's trademarks/service marks.

59. This promotion incorrectly states that Goudreau played on the recordings of "More Than A Feeling," "Peace of Mind," and "Rock n Roll Band," three of BOSTON's largest hits. This misleadingly exaggerates Goudreau's participation in BOSTON, and wrongfully promotes his current performances.

Reload Entertainment

60. In early 2008, and perhaps at other times, a manager in Florida called Reload Entertainment was offering Goudreau's live performance for booking, prominently using the name BOSTON.

61. Reload Entertainment described the act, in part, as follows:

Now in Concert!
Former Members of Boston
Playing the hits of
Boston
Barry Goudreau
former lead guitar and original member of Boston


62. Attached hereto as Exhibit G is a promotional piece obtained from Reload Entertainment's website.

63. This promotion violates the Agreement and/or infringed the BOSTON marks.

"The Best of BOSTON "

64. In early 2008, and perhaps at other times, Maximus Entertainment of Austin, Texas, was offering Goudreau's live performance, along with former BOSTON members Fran Cosmo and Anthony Cosmo, for booking under the name "The Best of BOSTON."

65. Attached hereto as Exhibit H are two pages from a contract that was offered on Maximus Entertainment's website.

66. The advertising rider contained therein directs the purchaser to describe the act as follows:

In all advertising promotional material, including but not limited to: TV ads, radio spots, newspaper ads, posters, flyers, and tickets:

The Best of
BOSTON
Featuring

Original founding member of Boston "Barry Goudreau"
[...]

67. This promotion violates the Agreement and/or infringed the BOSTON marks.

"The Best of BOSTON - Boone Bike Bash."

68. Goudreau was scheduled to play the Boone Bike Bash in West Des Moines, Iowa, on August 1, 2008.

69. The promotion described the performance as follows:

"Best of"
Boston
August 1, 2008

Come listen to Fran Cosmo (Boston singer), Barry
Goudreau (founding member), and Anthony Cosmo
(former guitarist) play all the best of Boston. Including
Foreplay/Longtime, Amanda, More Than A Feeling,
Peace of Mind, and tons more! Don't miss it!


70. Attached hereto as Exhibit I is a print-out from the event's website containing the promotion.

71. This promotion violates the Agreement and/or infringed the BOSTON marks.

"The Best of BOSTON - Prairie Knights Casino & Resort."

72. Goudreau was scheduled to play at the Prairie Knights Casino & Resort in North Dakota on July 1, 2008.

73. The promotion described the performance as follows:

The Best of Boston

Featuring original founding Boston member Barry
Goudreau, Boston singer Fran Cosmo and former
Boston guitarist Anthony Cosmos

74. The promotion even included a graphic of "the Best of Boston" designed to resemble the BOSTON logo.

75. Attached hereto as Exhibit J is a true and accurate copy of a print-out of a page from the Prairie Knights Casino & Resort website.

76. This promotion violates the Agreement and/or infringed the BOSTON marks.

Promotion of Goudreau's latest band. Ernie & The Automatics.

77. Goudreau currently plays guitar in a band called Ernie & The Automatics.

78. Ernie & the Automatics perform live, mostly in bars in Southern New England.

79. Ernie & The Automatics recently released its first album, entitled Low Expectations.

80. This album has been widely promoted in New England.

81. Widely broadcast radio and TV ads for the album begin with the following language: "Barry Goudreau and Sib Hashian both former original members of the multi-platinum selling band BOSTON have reunited after 25 years."

82. A sticker on the shrink-wrap of Ernie & The Automatics' CDs for sale in retail outlets reads:

Featuring ...
BARRY GOUDREAU
and
SIB HASHIAN
former original
members of the
multi-platinum
selling band
"BOSTON"


83. Copies of the album cover and the shrink wrap are attached hereto as Exhibit K.

84. The promotions of this album violate the Agreement and/or infringed the BOSTON marks.

Likelihood of confusion, mistake. and/or deception, and dilution.

85. Goudreau's unauthorized uses of the BOSTON marks have been in commerce and have caused and are likely to cause confusion and/or cause mistake and/or deceive customers, including as to the source, sponsorship, approval, association, or affiliation of Goudreau and his performances, recordings, and goods.

86. Goudreau's various uses of the BOSTON marks are likely to cause confusion, mistake, and/or deception in various ways, such as:

a. whether the band BOSTON is performing at the various performances promoted by Goudreau. It is not;

b. whether Goudreau performed on the sound recordings of BOSTON's iconic hits "More Than A Feeling," "Peace of Mind," and "Rock n Roll Band." He did not; and

c. whether the first touring band of BOSTON is reuniting after 25 years. It is not; BOSTON has continued to exist, record, and tour throughout that time. Moreover, the suggestion that Goudreau and Hashian have reunited after 25 years is false and meant to mislead the public into thinking of a BOSTON reunion. In fact, not only have Goudreau and Hashian played together on many occasions over the years, but they are close friends and their families socialize together;

87. Goudreau's unauthorized uses of the name BOSTON are lessening the capacity of Scholz's famous marks to identify and distinguish goods and services.

88. Goudreau's unauthorized uses of the BOSTON marks removes form Scholz the ability to control the nature and quality of all products and services provided under the BOSTON marks, and harms the valuable reputation and good will of BOSTON.


Count I
Breach of Contract


25. Scholz repeats and realleges herein all the foregoing paragraphs.

26. Scholz and Goudreau were parties to an enforceable contract.

27. As detailed above, Goudreau has breached that contract.

28. As a result of Goudreau's breach, Scholz has been damaged.


Count II
Breach of Covenant of Good Faith and Fair Dealing


29. Scholz repeats and realleges herein all the foregoing paragraphs.

30. The parties' contract contains an implied covenant of good faith and fair dealing.

31. As detailed above, Goudreau has breached that covenant.

32. As a result of Goudreau's breach, Scholz has been damaged.


Count III
Violations of the Lanham Act § 43


33. Scholz repeats and realleges herein all the foregoing paragraphs.

34. As detailed above, Scholz is the sole owner of the registered BOSTON's marks.

35. Goudreau's unauthorized uses of the BOSTON marks in commerce to advertise, promote, and market his own products and performances, or those of third parties, constitutes trademark infringement, false designation of origin, false or misleading description of fact, and/or false or misleading representation of fact.

36. These acts are likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection or association between Scholz, BOSTON, Goudreau, and other third parties, and as to the origin, sponsorship, or approval of Goudreau's and BOSTON's respective goods and services and commercial activities.

37. These acts constitute unfair competition and are unlawful and actionable under Section 43(a) of the Lanham Act, 15 U.S.C. § 112S(a).

38. All of the foregoing uses of the BOSTON name by Goudreau are diluting, blurring, and/or tarnishing Scholz's marks.

39. Goudreau willfully intended to trade on Scholz's reputation and/or to cause dilution of Scholz's marks.

40. As a result of all of the foregoing, Scholz has been damaged and Goudreau has been unjustly enriched.


Requests for Relief

WHEREFORE, Plaintiff Donald Thomas Scholz asks this Honorable Court to:

i. Under Count I, enter judgment in favor of Scholz and against Goudreau, and award Scholz contract damages in the form of restitution for all monies paid to Goudreau under the parties contract, and/or whatever other damages the Court deems appropriate;

ii. Under Count II, enter judgment in favor of Scholz and against Goudreau, and award Scholz all appropriate damages;

iii. Under Count III, order Goudreau to account for: (a) all monies received under the parties' Agreement; and (b) all profits received from all of the performances and sales in connection with which he used the name BOSTON;

iv. Under Count III, enter judgment in favor of Scholz and against Goudreau, and award Scholz: (a) Goudreau's profits; (b) Scholz's costs; (c) Scholz's reasonable attorneys' fees; and (d) any other available relief;

v. Award Scholz his costs and attorneys' fees reasonably incurred in pursuing these claims; and

iv. Grant Scholz any other relief which this Court deems appropriate.


VERIFICATION

I, DONALD THOMAS SCHOLZ, have read the foregoing complaint and hereby declare the allegations therein to be true based upon my personal knowledge and/or upon information which I believe to be true.

Signed under the pains and penalties of perjury this 26th day of June 2009.


__________________________
DONALD THOMAS SCHOLZ


Respectfully submitted,

DONALD THOMAS SCHOLZ,
Plaintiff,
By his counsel,


__________________________
Susan E. Stenger
BBO No, 555552
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Lawrence G: Green
BBO No. 209060
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