September 18, 2018
Commodores Entertainment Corporation, or CEC, sued Thomas McClary in August 2014 alleging that McClary was infringing its trademarks by advertising his solo shows as “The Commodores Experience Featuring Thomas McClary” and “Commodores 2014”. McClary left the Commodores in 1984.
Judge Roy B. Dalton granted summary judgment to CEC on the infringement claim, deciding that McClary’s use of the word “Commodores” was likely to cause consumer confusion and was not fair use of the trademark. However, Judge Dalton declined to rule in CEC’s favour on its claim for compensation under Florida’s Deceptive and Unfair Trade Practices Act on the grounds that the band had not substantiated its estimate of damages.
Earlier in the acrimonious four-year litigation, McClary had filed two dozen counterclaims against CEC and third parties and had sought to challenge the validity of CEC’s “Commodores” trademark. Judge Dalton ruled that CEC owned valid trademarks in a November 2016 decision subsequently affirmed by the United States Court of Appeal for the Eleventh Circuit.
The Commodores initially carried on business as a general partnership and incorporated CEC in 1978. The group, which previously counted Lionel Richie as a member, was signed to Motown Records and is known for songs including “Easy” and “Brick House.”
A trial to determine damages arising from the trademark infringement will follow Judge Dalton’s summary judgment decision on the infringement issue.
Under United States trademark law, individuals and corporations may file for intellectual property protection on phrases, names or marks associated with their business. Use of the trademarked material by others in a way likely to confuse or mislead the public may lead to a claim for infringement and monetary damages.
Author: Wes Dutcher-Walls