Judge Has “More Than a Feeling” About Nominative Fair Use: Donald Thomas Scholz v. Fran Migliaccio and Anthony Migliaccio

federal court in Washington gave some “Peace of Mind” to former members of legendary rock band Boston when it denied Boston’s band leader a preliminary injunction in a trademark dispute.  Plaintiff Donald Thomas Scholz (“Scholz”) is the founder and band leader of Boston, and undisputed owner of all of Boston’s trademarks.  Fran Migliaccio and Anthony Migliaccio — a father-and-son duo know on stage as Fran and Anthony Cosmo (the “Cosmos”) — were members of Boston from the early 1990s until a few years ago.  Scholz still tours and creates new music under the Boston name, while the Cosmos perform under Fran’s own name, and the moniker “World Classic Rockers.”

Scholz brought suit against the Cosmos alleging misuse of the BOSTON mark when the Cosmos advertised and promoted their own performances using tag lines such as “Fran Cosmo of BOSTON” and “BOSTON former lead singer Fran Cosmo.”  Scholz requested injunctive relief, alleging that venues and consumers would be confused as to the Cosmos’ affiliation with Boston, but the Cosmos argued nominative fair use, noting that they accurately represented themselves as former members of the band.

The court began its analysis by explaining that, in a “classic” fair use analysis — one where the defendant uses the plaintiff’s mark to describe his own product — the Ninth Circuit’s “likelihood of confusion” balancing test is found in AMF Inc. v. Sleekcraft Boats (including factors such as strength of the mark, similarity of marks, relatedness of goods, etc.).  However, in the face of a nominative fair use defense — when a defendant uses a plaintiff’s mark to describe the plaintiff’s own product even to ultimately promote the defendant’s product — a different test applies.  Nominative fair use is a defense to alleged infringement when a defendant can prove that (1) plaintiff’s product or service is not readily identifiable without the use of the mark; (2) only so much of the mark is used as reasonably necessary to identify that product or service; and (3) the user does not suggest sponsorship or endorsement by the mark holder.

Under the first prong — comparing the present facts to those in the New Kids on the Block and Volkswagen cases — the court noted that the band Boston was not readily identifiable without the use of the BOSTON mark.  The second prong was potentially in dispute: Scholz argued that the Cosmos used various BOSTON marks improperly, while the Cosmos contended that, while they referenced the band’s name, they never actually used a BOSTON logo.  The court held that nominative fair use remained viable nonetheless.  The third prong, however, was the coup de grace: there was no suggestion of sponsorship or endorsement of the Cosmos’ bands by Scholz particularly because, in their contracts with venues and promoters, the Cosmos included clauses specifically requiring the name “Fran Cosmo” to appear in larger type than any reference to Boston, and that all promotional material must specify that Fran Cosmo was the former lead singer of the band.  The contract even specified that any performance by the Cosmos was not one by Boston, but merely a performance of the “hits of Boston” by the band’s “former players.”  Accordingly, the Cosmos’ nominative fair use defense prevailed, and Scholz was unable to show likelihood of success on the merits.

Next, while the court conceded that reputational harm may constitute irreparable damage sufficient to warrant an injunction, the court would not presume such harm where Scholz presented no proof beyond mere speculation.  Moreover, any harm resulting from lost ticket sales would constitute economic harm remediable by money damages.  Finally, the equities favored the Cosmos given their strong nominative fair use defense, the lack of clear proof of impropriety, the lack of irreparable harm to Scholz, and the fact that the Cosmos would incur at least the cost of changing their advertising were the court to issue an injunction. The court accordingly denied injunctive relief, releasing Fran and son to continue touring with their “Rock & Roll Band.”