Commodores Entertainment Corporation v. Thomas McClary
648 F. App'x 771
11th Cir.2016Background
- CEC owns four trademarks for use with Commodores/Commodore terms; McClary left The Commodores in the 1980s but remained a musician.
- In 2014, McClary began performing as The Commodores featuring Thomas McClary, or The 2014 Commodores, with his own band.
- District court granted a preliminary injunction barring Appellants from using the marks domestically and internationally.
- The court held the right to use the marks resided in the remaining members of The Commodores who stayed with the group.
- CEC sought to enjoin McClary and Fifth Avenue Entertainment from using the marks; Appellants appealed.
- Appellants challenged standing, likelihood of confusion, irreparable harm presumptions, and extraterritorial reach of the injunction.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Standing and enforceable rights | CEC has enforceable rights via transfer to CEC by King/Orange; supports standing. | CEC lacks standing without valid transfer and registration defects nullify rights. | CEC has standing; sufficient transfer evidence shown. |
| Likelihood of confusion | Use of The Commodores/marks by McClary creates likely confusion with CEC | No substantial likelihood of confusion between marks and McClary's version | District court did not err; substantial likelihood of confusion found. |
| Irreparable harm | Confusion and brand erosion show irreparable harm; eBay does not bar this | eBay prohibits presumptions; irreparable harm must be proven by evidence | No error; irreparable harm supported by likelihood of confusion evidence. |
| Extraterritorial reach | Lanham Act allows extraterritorial injunctions when US interests affected | injunction infringes foreign sovereignty; comity concerns | Injunction valid extraterritorially; no foreign sovereignty infringement found. |
Key Cases Cited
- Crystal Entm't & Filmworks, Inc. v. Jurado, 643 F.3d 1313 (11th Cir. 2011) (use of common law marks can violate Lanham Act)
- North American Medical Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211 (11th Cir. 2008) (Lanham Act injunctive standards; likelihood of success factors)
- Axiom Worldwide, Inc., 522 F.3d 1248 (11th Cir. 2008) (reiterates eBay framework for injunctions)
- Levi Strauss & Co. v. Sunrise Intl. Trading Inc., 51 F.3d 982 (11th Cir. 1995) (abuse of discretion standard; no deference to legal determinations)
- eBay Inc. v. MercExchange, LLC, 547 U.S. 388 (U.S. 2006) (presumption of irreparable harm not automatic; equity governs injunctions)
- Bulova Watch Co. v. International Co., 344 U.S. 280 (U.S. 1952) (extraterritorial reach factors for Lanham Act injunctions)
- Int’l Café, S.A.L. v. Hard Rock Café Int’l (U.S.A.), Inc., 252 F.3d 1274 (11th Cir. 2001) (extraterritorial considerations in Lanham Act cases)
- Am. Rice, Inc. v. Ark. Rice Growers Coop. Ass’n, 701 F.2d 408 (5th Cir. 1983) (extraterritorial injunctions in Lanham Act context)