Guitarist Thomas McClary left the band in 1984 but has been performing under titles such as “The Commodores featuring Thomas McClary”.
Commodores Entertainment Corporation (CEC) is a company run by two of the band’s founding members William King and Walter Orange. CEC owns the exclusive right to use The Commodores’ name and trademarks. CEC commenced proceedings to stop McClary using the band’s name.
In August 2016 a Florida federal court granted CEC a permanent injunction against McClary preventing him from using the Commodores trademark except in instances of fair use. He could still bill himself as, for example, “Thomas McClary, founder of The Commodores”.
RESULT: McClary appealed and on 9 January 2018 the US Court of Appeal for the 11th Circuit affirmed the trial court’s decision.
Judge Stanley Marcus stated “When McClary left the band, he left behind his common-law rights to the marks… Those rights remained with CEC.” McClary had no interaction with the group as a member between 1985 and 2010.
The various agreements between the original band members included an agreement that if any of them died or quit, the majority of the partners retained the right to use the band’s name. These agreements formed evidence in support of CEC’s argument that “the trade 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.”
It was held that “no reasonable juror could have found that McClary retained a right to use the name ‘The Commodores’ in his own and separately from the group that has continually used that same name.”
The take home message is, don’t underestimate the importance of drawing up agreements with your band members from an early stage!
For more check out:
- COMMODORES ENTERTAINMENT CORPORATION V THOMAS MCCLARY, FIFTH AVENUE ENTERTAINMENT, LLC AND DAVID FISH, ET AL. [9 January 2018]
- Billboard article 10 January 2018 – The Commodores Trademark Fight Decided in Florida Court
- Florida Record article 15 January 2018 – Former Commodores member cannot use group’s name, court say