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By Peter Leung
April 15 — The 70s funk band The Commodores is entitled to a preliminary international injunction blocking a former member from using a confusingly similar name, an appeals court ruled.
The U.S. Court of Appeals for the 11th Circuit on April 15 rejected arguments that a preliminary injunction with international reach would threaten the sovereignty of foreign nations, even if that former member, Thomas McClary, had applied for the disputed trademarks in the EU (Commodores Entm't Corp. v. McClary, 11th Cir., No. 14-14883, unpublished 4/15/16).
The injunction prevents McClary from performing in the U.S. and abroad with his band that he referred to as “The Commodores featuring Thomas McClary.”
The Commodores is the Grammy-winning band known for hit songs such as “Brick House” and “Three Times a Lady.” In the early 1980s, two of the original members, Lionel Richie and McClary, left to start solo careers. The rest of the band continues to play together. In 2014, McClary began performing Commodores songs with his band that he called “The Commodores featuring Thomas McClary” and “The 2014 Commodores,” with plans to tour abroad.
The original Commodores band secured an injunction blocking McClary from using those band names both in the U.S. and abroad. McClary appealed, arguing that the district court did not have jurisdiction to issue an international injunction. McClary also argued that the trial court should not have issued the injunction because the plaintiff, Commodores Entertainment Corp. (CEC), did not have standing to bring its claim.
The 11th Circuit disagreed. It said that the international injunction was proper because it did not infringe the rights of other nations. The appeals court noted that all the parties involved are U.S. citizens or corporations.
The court also rejected McClary's argument there would be international harm because he has applied for an EU-wide Community Trade Mark for the disputed band names. It said that McClary has presented no evidence that a Community Trade Mark has been issued nor any support for the argument that merely submitting an application abroad should hamper the court's ability to issue an international injunction.
McClary's claim that the plaintiffs did not have standing to sue was also similarly unconvincing to the court. It found that the remaining original members of the band had common law rights to the name “The Commodores.” The court also found that the remaining members transferred the rights to the plaintiff corporation by acting as the sole corporate officers in CEC when the entity registered the trademark in 2001. The fact that the remaining band members consistently declined CEC's use of the mark further supported a finding of a transfer or assignment.
The 11th Circuit also affirmed the district court's finding that CEC has shown a substantial likelihood of success in its case, and that it would suffer irreparable harm if the court did not issue the injunction.
Judges Frank M. Hull and Jill A. Pryor of the 11th Circuit heard the case, along with C. Ashley Royal, U.S. District Judge for the Middle District of Georgia, sitting by designation. Trenam Kemker represented CMC. Mirch Law Firm LLP and Thompson-McClary Law Office represented McClary.
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