Thomas McClary, Lionel Richie, William King, Walter Orange, and other students from Alabama’s legendary Tuskegee Institute founded The Commodores in 1968, with the slick soul ensemble in its various incarnations steering its way since with such hits as Easy, Brick House (click on image above to hear this tune), and Three Times a Lady.  The band has released more than 40 albums and has topped the charts with seven No. 1 singles, as well as a Grammy Award (1986, Nightshift).

Although Richie, of course, went on to a separate superstardom, other Commodores also have come and gone. And now a federal appellate court in Atlanta, upholding a lower court’s findings in a Florida trademark infringement case, has set straight who may use the group’s name and how.

The dispute involved guitarist McClary, who, after 14 years of success with the Commodores, left the band in 1984 to be replaced by J.D. Nicholas. The Commodores – with at least two of the original members, King and Orange – kept sailing along, performing, recording and touring, as they still do today, still with Nicholas (the three shown in photo, above). King and Orange also created the Commodores Entertainment Corp. and transferred their rights to the band’s name – which they and CEC registered and trademarked – to CEC.

Group members kept in touch and their relationships, the appellate court ruling makes clear, were friendly and without conflict.

Who are the ‘real’ Commodores?

But in 2014, and even earlier, Commodores Entertainment would declare in a lawsuit, King and Oragne became aware that McClary was advertising and promoting himself and a group that he called “THE COMMODORES featuring Thomas McClary.”  Besides McClary, this group included no other original group members.

CEC, King, and Orange sued McClary and Fifth Avenue Entertainment, an LLC McClary’s wife set up to deal with her husband’s musical ventures. King, Orange, and CEC asserted that McClary and Fifth Avenue infringed and diluted their registered Commodores mark, as well as violated Florida’s Deceptive and Unfair Trade Practices Act.

The plaintiffs said the improper mark use by the defendants could cause unwelcome public confusion as to which entertainers or performances, for example, ticket buyers might be spending money for: the CEC Commodores or McClary’s? The plaintiffs said in their suit that “as a direct and proximate result [of defedants’ actions]… Commodores Entertainment has suffered and continues to suffer irreparable harm for which it has no adequate remedy at law.”

Trademark trial

The case went to trial, and, as the appellate court noted in its ruling, a judge heard a detailed history of the Commodores’ mark, and how over the years various band members had declared and put in writing that no single member of the group could claim the ensemble’s intellectual property on exit. This went uncontested in various accords the band members struck and signed, including a general partnership agreement and contracts with the famed Motown Records. It stood up, even as members like Richie and McClary departed, always amicably.

Federal Rule of Civil Procedure 50 grants the Court authority to direct judgement as a matter of law.  The Court may only do so if no reasonable jury could arrive at a verdict for the other party. Roboserve, Ltd. v. Tom’s Foods, Inc., 940 F.2d 1441, 1448 (11th Cir. 1991). 

In the case at bar, U.S. District Judge Roy B. Dalton in Jacksonville, Fla., found that “no reasonable jury could conclude” anything but that the plaintiffs owned or had rights to the disputed marks and that McClary did not.

“Mr. McClary left behind all of his rights to the trademarks when he left the band in 1984,” the lower court found, and it issued a permanent injunction against him, so he cannot use the Commodores name, except in fair use situations.

Both the trial and appellate court decisions, by the way, note that disputes over marks and other IP are all too common among members of contemporary music groups. The materials in this case may prove helpful to practitioners because, among other things, the judges examine case law with criteria for determining ownership of these valuable assets. The trial judge, though, emphasized that a deeper dig into precedents proved unnecessary in the Commodores case.