Commodores Entertainment Corporation v. Thomas McClary
879 F.3d 1114
| 11th Cir. | 2018Background
- The Commodores (formed ~1968) became a famous musical group; original members included Thomas McClary, William King, Walter Orange, Lionel Richie, Ronald LaPread, and Milan Williams. King and Orange remained continuous members.
- The members created partnership and contractual agreements (1978 partnership, 1979 and 1983 Motown agreements, 1984 amendment) stating the band name/marks were jointly owned and that leaving members would not have individual rights to the name.
- McClary left the performing group in 1984 (he admits he "split"), performed little-to-no group activity 1985–2010, then later formed "Commodores Featuring Thomas McClary" / "The 2014 Commodores."
- King and Orange assigned their common-law rights to Commodores Entertainment Corporation (CEC); CEC later registered federal trademarks for THE COMMODORES and design marks.
- CEC sued McClary and his company (Fifth Avenue) for trademark infringement, dilution, passing off, false advertising, and unfair competition; district court issued a preliminary injunction affirmed on appeal; after a bifurcated trial the court granted JMOL to CEC on mark ownership and converted the injunction to permanent.
- On appeal McClary challenged jurisdiction over certain orders, exclusion of his expert (attorney Wolfe), ownership of the marks, scope/extraterritoriality of the injunction, alleged defects in federal registrations, and asserted affirmative defenses (laches, waiver).
Issues
| Issue | Plaintiff's Argument (CEC) | Defendant's Argument (McClary) | Held |
|---|---|---|---|
| Whether appellate jurisdiction exists over the permanent-injunction and JMOL orders | Appellate jurisdiction exists under §1292(a)(1) and Rule 54(b) as to injunction/JMOL | JMOL/other interlocutory rulings not certifiable; seek review of denial to dismiss for failure to join LaPread | Court has jurisdiction over JMOL and permanent injunction; no pendent jurisdiction over denial to dismiss for failure to join indispensable party |
| Admissibility of expert testimony from attorney Wolfe | Wolfe offered inadmissible legal conclusions; exclusion appropriate to keep law with the court | Wolfe qualified to testify about industry norms and trademark ownership issues | Exclusion not an abuse of discretion: Wolfe’s report/testimony was largely legal conclusions and beyond permissible expert scope |
| Who owns common-law trademark rights in THE COMMODORES after McClary left (ownership/right to use name) | The marks remained with the continuing group and CEC as assignee of King/Orange; leaving members relinquish individual use | McClary contends he retained rights (no formal withdrawal, receipt of royalties, signature dispute over withdrawal letter) | JMOL for CEC affirmed: common-law rights stayed with the group/continuing members and assigned to CEC; no reasonable juror could find McClary retained individual rights |
| Scope and extraterritorial reach of injunction; fair-use carve-out | Injunction limited to non-fair-use commercial uses likely to cause confusion; extraterritorial reach warranted because defendant is U.S. citizen and foreign use affects U.S. commerce | Injunction overbroad; foreign trademark filings and sovereignty concerns; fair-use and historical references should be allowed | Injunction proper and convertible to permanent; fair-use/historical references allowed; extraterritorial reach upheld under controlling principles (Steele factors) |
Key Cases Cited
- Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133 (legal standard for judgment as a matter of law)
- Tana v. Dantanna’s, 611 F.3d 767 (11th Cir.) (elements for Lanham Act §43(a) infringement claim)
- Crystal Entm’t & Filmworks, Inc. v. Jurado, 643 F.3d 1313 (11th Cir.) (test for allocating rights where original appropriation is unclear)
- Robi v. Reed, 173 F.3d 736 (9th Cir.) (band-member leaving; rights remain with members who continuously control the group)
- Steele v. Bulova Watch Co., 344 U.S. 280 (extraterritorial application of U.S. trademark law)
- Int’l Café, S.A.L. v. Hard Rock Café Int’l (U.S.A.), Inc., 252 F.3d 1274 (11th Cir.) (factors for extraterritorial Lanham Act reach)
- Angel Flight of Ga., Inc. v. Angel Flight Am., Inc., 522 F.3d 1200 (11th Cir.) (fraud on PTO standard; misstatements and registration validity)
- Carnival Brand Seafood Co. v. Carnival Brands, Inc., 187 F.3d 1307 (11th Cir.) (assignment/standing principles for trademark rights)