Not so easy – Commodores claim partially succeeds

October 2018

TRADE MARK

 

A US judge has ruled in favour of the Commodores in their legal fight with a past member over his continued  use of the word Commodores.

Commodores Entertainment Corp, which represents the current version of the Commodores which includes founding member William King along with Walter Orange and James Dean “J.D.” Nicholas took, legal action against former member Thomas McClary accusing him of infringing their trademark and violating previous court orders by performing under various ‘Commodores’ names, including ‘The Commodores Experience featuring Thomas McClary’. In its April legal filing, CEC said McClary continued to use the Commodores name on his social media channels and in promotional material for events and festival appearances. The company then stated that: “Mr McClary calling his band ‘The Commodores Experience’, ‘Commodores’ Experience’ or ‘Commodore’s Experience’ is likely to cause additional consumer confusion, is not historically accurate and is not using CEC’s [trade] marks in fair use”.

When the band’s six original members formed a partnership in the 1970s, they agreed that if any of them died or left the band, the remaining partners retained the right to use the name “The Commodores”. Their 1979 deal with Motown Records said that band members could perform with other groups, but “in no event” could they use The Commodores name.

In 2014, the band sued McClary for false advertisement and trademark infringement after finding that his use of the band’s name in marketing efforts for his solo career. Then in 2016, a district court permanently barred McClary from using the band’s trademarks after ruling the Commodores have sole ownership of the marks. The appeal court (Eleventh Circuit) affirmed the district court’s ruling: “When McClary left the band, he left behind his common-law rights to the marks,” wrote U.S. Circuit Judge Stanley Marcus. “Those rights remained with CEC.”

McClary found a small amount of leeway in the concept of fair use when it was decided he could bill himself as “Thomas McClary, founder of The Commodores” but not refer to a performance as that of “The Commodores featuring Thomas McClary,” for example.

 

Both sides subsequently made a number of complaints about the other, most of which the Florida judge hearing the case, Roy B Dalton, has now dismissed. But Law 360 reported  the Judge Dalton has sided with CEC and ruled that McClary has used the company’s marks and in doing so has likely confused concert-goers.

Judge Dalton issued a summary judgement in CEC’s favour on the trademark infringement point while “keeping open the possibility of damages under Florida’s Deceptive And Unfair Trade Practices Act”. Dismissing the other matters he noted “When the music stops, only CEC’s claims for damages under [trademark law] and FDUTPA remain viable”.

http://www.ipwatchdog.com/2018/02/12/commodores-trademark-ip-entertainment/id=93534/  and https://www.billboard.com/articles/news/8093830/the-commodores-trademark-fight-decided-florida-court

http://www.musiclawupdates.com/?p=7617

http://www.completemusicupdate.com/article/court-sides-with-commodores-over-commodore-in-commodores-trademark-case/

https://www.scribd.com/document/243244687/Commodores-trademark-preliminary-injunction-pdf

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