Scholz v. Goudreau

Donald Scholz (plaintiff) and Barry Goudreau (defendant) were both original members of the rock band Boston. After Goudreau left the band, he filed a lawsuit against Scholz and other remaining band members to determine his rights to the band’s royalties and name. The parties settled this lawsuit. In the settlement contract, Goudreau agreed he had no right to the name Boston except as permitted by the contract. The contract permitted Goudreau to use only the phrase “Formerly of Boston” “in conjunction with any biographical usage with respect to future performances.” The next sentence stated that “[w]ithout limiting the foregoing,” Goudreau could not use the name Boston in conjunction with any advertisement or promotion. Later, Scholz sued Goudreau in federal district court, alleging that Goudreau (1) had breached the contract by using the Boston name in advertisements in any form and in phrases other than “formerly of Boston,” (2) had breached the implied covenant of good faith by allowing third-party promoters to misuse the name, and (3) had contributed to the promoters’ trademark infringement. Goudreau opposed the claims, pointing out that Scholz had no evidence that Goudreau, as opposed to third-party promoters, had ever used the Boston name improperly. Goudreau also filed counterclaims against Scholz, (1) seeking a declaration that the contract allowed Goudreau to use similar phrases, such as “former member of Boston,” and (2) claimed Scholz breached the contract by preventing him from using “formerly of Boston” in advertisements. Both sides moved for summary judgment on their claims. The court considered both motions.