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Former Band Member Must Sail On Down the Line

The US Court of Appeals for the 11th Circuit upheld a permanent injunction precluding a musician from using the trademarks of his former band. Commodores Entertainment Corp. v. Thomas McClary, Case No. 16-15794 (11th Cir., Jan. 9, 2018) (Marcus, J). The Court further found that because the band members only owned the band’s trademarks jointly, the trademark registration was not defective and the injunction was not overbroad.

This action began following two email blast advertisements by Thomas McClary, former member of the Commodores, a Grammy-Award-winning rhythm and blues, funk and soul band. The advertisements promoted McClary’s new band with the phrase “‘COMMODORES’ founder Thomas McClary.” In August 2014, the Commodores Entertainment Corporation (CEC), run by two original Commodores members who remain active with the band, sued for trademark infringement, false advertisement and trademark dilution, seeking damages and an injunction. 

McClary was an original member of the Commodores but “split from the band” in 1984 to strike out on his own. He later formed a musical group that performed as “The 2014 Commodores” and “The Commodores Featuring Thomas McClary.”

The district court granted CEC a preliminary injunction and enjoined McClary from using the marks. A panel of the 11th Circuit affirmed. After a full trial, the district court granted judgment as a matter of law to CEC and converted the preliminary injunction into a permanent one. McClary appealed the injunction order and the district court’s oral ruling denying his motion to dismiss for failure to join an indispensable party.

Before addressing the injunction, the 11th Circuit addressed whether it had jurisdiction to review the denial of McClary’s motion to dismiss for failure to join an indispensable party. The Court concluded that denials of motions to dismiss are not final orders reviewable on appeal, and declined to exercise pendant jurisdiction since resolution of the issues relating to the injunction did not depend on resolution of the motion to dismiss.

The 11th Circuit affirmed the permanent injunction order, concluding that McClary had no rights to “The Commodores” trademark because he left the group more than 30 years ago and abandoned his rights to the trademark once he departed from the group. The group, not the individual members, maintained joint ownership of the band’s marks. In accordance with the band members’ contracts with CEC, band members retained zero trademark ownership after departing from the band. McClary’s lack of control over the group and its business decisions also supported the determination that McClary’s trademark rights were extinguished when he left the group.

The Court found that the injunction was not overly broad since it does not preclude McClary from holding himself out as a former member and founder of the Commodores. The only limitations in the injunction were the prohibitions on McClary using the names “The 2014 Commodores” or “The Commodores featuring Thomas McClary,” because such names are likely to cause confusion with the current members of the CEC. The Court also found the extraterritorial reach of the permanent injunction not to be overly broad because the foreign infringing activity was likely to have a substantial effect in the United States, and exercising jurisdiction would not affect the rights of other sovereign nations.

This post was also written by Paul St. Marie, Jr.

© 2020 McDermott Will & EmeryNational Law Review, Volume VIII, Number 60


About this Author

Paul Devinsky, Intellectual Property Attorney

Paul Devinsky is a partner in the law firm of McDermott Will & Emery LLP and is based in the Firm’s Washington, D.C., office.  He focuses his practice on patent, trademark and copyright litigation and counseling, as well as on trade secret litigation and counseling, and on licensing and transactional matters and post-issuance PTO proceedings such as reissues, reexaminations and interferences.