The Commodores have come to the end of their rainbow with former bandmate, Thomas McClary

But at least there’s a pot of gold there.   Commodores v McClary

Appeal Nos. 19-10791, 19-12819, July 23, 2020, 11th Circuit Court of Appeals.

Thomas McClary and his company (collectively “McClary”) appealed the summary judgment and damages ruling of the district court, as well as denial of his motions to modify the scope of a permanent injunction an join an indispensible party.

Lower Court Proceedings

The dispute revolves around the ownership of the mark “The Commodores” – the famous band of the 1970’s and 80’s.  McClary was an original member, but left the group in 1984.  He later formed a group that performed as the “2014 Commodores” and “The Commodores featuring Thomas McClary”.  The Commodores, via the entertainment company (“Commodores”) initiated this litigation alleging trademark infringement, trademark dilution, passing off, false advertising, and unfair competition.  McClary claimed interference with business relationships, trademark infringement, misappropriation of likeness and identity, breach of loyalty, good faith and fiduciary duty and defamation.  Hell hath no fury like a Commodore scorned.

The district court granted the Commodores’ motion for a preliminary injunction, and thereafter it was learned that McClary was marketing upcoming performances in Europe.  The Commodores moved for clarification and the district court held that the injunction had extraterritorial application.  The Court of Appeals affirmed the entirety of the preliminary injunction.  The district court then bifurcated the trial into Phase 1 for determination of trademark ownership rights and Phase 2 to address infringement, liability and damages.  At the conclusion of Phase 1, the district court granted the Commodores’ motion for judgement as a matter of law, converted the preliminary injunction to a permanent one, and entered final judgement.  The 11th Circuit affirmed these holdings.

The jury empaneled for Phase 2 found that McClary had notice of the Commodores’ trademark registrations as of June 2009 and awarded the Commodores’ damages for McClary’s performances occurring thereafter in various US and OUS locations.  McClary then moved to modify the permanent injunction, arguing that he had licensed the mark “The Commodores” in Mexico, New Zealand and Switzerland.  The district court denied the motion as untimely, and the present appeal ensued.

The 11th Circuit’s Holding

With respect to McClary’s argument that the summary judgment and injunction ought not include European performances, the 11th Circuit noted that the district court had not limited its holding to any particular performance.  The Court further noted that McClary had “long been on notice of his potential liability for the European performances.”  This notice included the Commodores complaint, which sought damages for continuing infringing conduct, and McClary’s continued use of “The Commodores featuring Thomas McClary” not only after entry of the Preliminary Injunction, but after the court issued a clarification order, which included the rebuke “[b]y proceeding in such a precipitous fashion, the Defendants [sic] conduct reflects contempt for the orders of the Court.”  The 11th Circuit piled on, noting:

McClary cannot credibly argue that he had no notice that the European performances could constitute infringement when the extraterritorial scope of the injunction was litigated in his two prior appeals, both of which were decided before the district court entered the summary judgment order at issue here.

The cease and desist letter mailed by the Commodores to McClary in June of 2009 was held to constitute actual notice of the Commodores’ trademark registrations.  McClary similarly failed to persuade the 11th Circuit of any error on the part of the district court in the scope of the permanent injunction.

Break-ups are hard.