ATLANTA — The U.S. Court of Appeals for the 11th Circuit has said a member of The Commodores who later left cannot use the group's name.
Defendants and appellants Thomas McClary and Fifth Avenue Entertainment LLC appealed a case involving plaintiff Commodores Entertainment Corp. in which Judges Stanley Marcus, Beverly B. Martin and Kevin Newsom issued an opinion Jan. 9.
The common-law trademark case began after McClary's admitted split from the Grammy Award-winning funk band The Commodores. The group formed in 1968 and became internationally acclaimed for hits including “Easy” and “Three Times a Lady," the ruling states. Upon their success, the six-member band and manager signed a general partnership agreement in 1978. One year later, the members and manager signed an exclusive artist production agreement with the Motown Records, agreeing that only the group, and not one member, had exclusive rights to the band name.
After leaving the band in 1984, McClary formed The 2014 Commodores and The Commodores Featuring Thomas McClary without the permission of Commodores Entertainment, a corporation still run by two original members of The Commodores. Commodores Entertainment filed suit against McClary and his entertainment company, Fifth Avenue, for trademark infringement, dilution, false advertising, unfair competition and passing off. A district court granted a preliminary injunction barring McClary from using the name, and after a two-week trial converted it to a permanent injunction. McClary appealed. He also appealed the lower court's oral denial of a motion to dismiss.
The 1tth Circuit ruled it lacked jurisdiction to consider the motion to dismiss.
The panel of judges discussed McClary’s argument that the trial court abused its discretion when it eliminated attorney Richard Wolfe’s expert testimony, which concluded the value of the trademark name Commodores and the cogency of the assignment to Commodores Entertainment; however, the court concluded Wolfe’s testimony was nothing more than an indecorous conclusion.
“Wolfe’s expert report is replete with legal opinion,” Marcus wrote. “In it, he offered the legal view that the original members ‘owned the underlying marks jointly as tenants in common, owning an undivided interest in the totality of the partnership assets.’”
Marcus discussed that to correctly overturn Commodores Entertainment's motion for judgment, the panel would have to find a rational reason that McClary would be allowed the name Commodores to classify a new musical ensemble.
But they didn’t for two specific 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 continually known as ‘The Commodores,’” Marcus wrote in the opinion.
“Second, the various contractual agreements executed by the parties confirm the group members contemplated that the marks were to be jointly but not severally owned and, in addition, that a member leaving the group would cease using the group’s name as an identifier,” he wrote.
The judges also shut down McClary’s argument that because he collected royalties from songs recorded before his 1984 departure, he was an “indispensable party” of the original six-member group.
“Between 1985 and 2010, McClary had no interaction with the group as a member,” Marcus wrote. “He did not perform with the group, record with the group, or participate in any decisions about performances or recordings.”
Furthermore, the judges deemed McClary’s continued use of The Commodores name would indeed create misrepresentation in the United States and worldwide if he continued to perform under the title.
“We conclude that the scope of the injunction was not impermissibly broad, that McClary’s arguments about the validity of the federal registration of the marks are irrelevant to this determination, and that McClary did not establish any affirmative defenses,” Marcus concluded in the appeal.