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Eleventh Circuit Court Issues Decision in ‘Commodores’ Trademark Dispute


The Commodores is an American funk/soul band that was originally formed in 1968. Over the decades, this band has had many different members, most notably Lionel Richie. Recently, the band has been locked in a trademark infringement lawsuit with a former member. On January 9th, 2018, the United States Court of Appeals for the Eleventh Circuit issued a decision in this case (Commodores Entertainment Corporation v. David Fish, et al., Third Party Defendants). Originally, this claim arose out of the District Court for the Middle District of Florida.

Case Analysis: ‘Commodores’ Trademark Dispute 

The Background  

The trademark dispute in question related to who exactly had the legal right to perform under the name ‘Commodores’ for musical performances. On one side of the dispute were three of the band’s original members, including William King. On the other side of the dispute was another former founding band member, Thomas McClary, who was arguing that he also had the legal right to perform under the band name.

The Lawsuit

Mr. McClary left the band in 1984. Since that time, he has been performing under several different iterations of the band’s name. In the middle of 2014, a company owned by William King filed a trademark infringement lawsuit against Thomas McClary. This lawsuit alleged that Mr. McClary had no legal right to perform under the band’s name as the trademark for the band had been properly registered with the United States Patent and Trademark Office (USPTO) by King’s company more than a decade earlier. 

The Initial Court Ruling  

In August of 2016, a Florida federal court issued an initial ruling in this trademark infringement case. Upon reviewing the evidence, the court determined that Mr. McClary was in violation of the trademark rights of the other members of the band. The court entered a permanent injunction against Mr. McClary, ordering that he could no longer perform under the name ‘Commodores’. The one exception would be in instances of fair use. In other words, Mr. McClary still had the right to market himself as a former member of the ‘Commodores’. However, he did not have the legal right to  perform under the name ‘Commodores’. This is a critically important distinction.

The Appeals Court Has Reaffirmed the Decision 

Thomas McClary filed an appeal of the Florida federal court ruling. After hearing the case, the Eleventh Circuit court upheld the lower court’s decision. According to the Eleventh Circuit, when Mr. McClary left the band back in 1984, he abandoned any common law rights he had to use the trademark. As the original band members who remained eventually turned their common law trademark rights into formalized trademark rights by registering with the USPTO, they now have a valid ownership of the trademark for the band ‘Commodores’.

Contact Our Florida Trademark Law Attorneys Today 

At Pike & Lustig, LLP, our law firm handles complex trademark litigation cases. To set up your free, no strings attached trademark law consultation, please contact us today. With offices in Miami and West Palm Beach, we serve clients throughout South Florida, including in communities such as: Hialeah, Homestead, Miami Beach, Pompano Beach, Deerfield Beach, Lake Worth, and Boynton Beach.

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