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“The Commodores” Mark Remains Owned by the Active Band

In Commodores Entertainment Corporation v. Thomas McClary, Fifth Avenue Entertainment, LLC, Case No. 16-15794 (11th Cir. 2018) (Available Here), the Court of Appeals for the Eleventh Circuit held that when McClary left the Commodore band, he also left behind his common law rights to the mark, THE COMMODORES.

The dispute is over the trademark THE COMMODORES, a band name. McClary was an original member of the Commodores band formed in 1968, but split from the band in 1984. McClary formed “The 2014 Commodores” and “The Commodores Featuring Thomas McClary.” When the original two members of Commodores, (Commodores Entertainment Corporation)(“CEC”) who remain active with the group, found out, they filed suit against McClary claiming trademark infringement, trademark dilution, passing off, false advertising and unfair competition. The district court initially granted a preliminary injunction to CEC, which the 11th Circuit affirmed, then the district court granted judgment as a matter of law to CEC. McClary appealed from an order granting judgment as a matter of law to(“CEC”) and converting the preliminary injunction to a permanent one.

As a preliminary matter, the Court of Appeals declined to exercise pendent appellate jurisdiction over the motion to dismiss because it was not inextricably intertwined with the permanent injunction. The Court of Appeals also found that there was no abuse of discretion by the trial court’s exclusion of expert testimony that amounted to legal conclusions. The district court’s responsibility to serve as the singular source of law required it to be vigilant about the admissibility of legal conclusions from an expert witness.

On the trademark ownership issue, the Court of Appeals found there were no contested facts that would lead a reasonable juror to say that McClary should properly be termed the legal owner of the trademarks. Therefore, the district court’s grant of judgment as a matter of law was upheld. The Court of Appeals found that McClary’s argument failed for two reasons. First, the common-law trademark rights were initially jointly owned, could not be divided for simultaneous use by multiple independent parties, and remained in the group. Second, the various contractual agreements executed by the parties confirm the group members contemplated that marks were to be jointly but not severally owned and, that a member leaving the group would cease using the group’s name. Therefore, no reasonable juror could have found McClary retained a right to use the name THE COMMODORES on his own and separately from the group that has continually used the same name.

The Court of Appeals and the district court considered it a significant fact that the remaining original members controlled the quality and reputation of the band performing as “The Commodores,” thus retaining the common-law rights to the mark. The Court of Appeals found McClary’s other arguments unpersuasive, specifically, that he continued to receive royalties and that his withdraw from the band was forged. The Court of Appeals also found that the extraterritorial reach of the injunction was not overbroad, because both parties are citizens of the U.S. and use of the mark abroad would create confusion both abroad and in the U.S. Lastly, the Court of Appeals found that the trademark registrations were not fraudulent or defective. There was no fraud because there was uncontroverted testimony that King did not submit any false or incorrect information to the PTO. The trademark registration was not defective for failure to include the proper company name or failure to include the proper date of first use. A misstatement of the date of first use in the application is not fatal to the securing of a valid registration as long as there has been valid use of the mark prior to the filing date. See Angel Flight of Ga., Inc. v. Angel Flight Am., Inc., 522 F.3d 1200, 1210 (11th Cir. 2008).


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