In an IPWatchdog article published on Feb. 12, 2018, Dean Kent and Lindsay Lopez discuss a recent case in which they successfully represented the Commodores in a trademark infringement case against ex-bandmate and founding member Thomas McClary.
In 2014, the remaining members of the band sued McClary for false advertisement and trademark infringement after discovering his use of the band’s name in marketing efforts for his solo career. In 2016, a district court permanently barred McClary from using the band’s trademarks after ruling the Commodores have sole ownership of the marks. McClary appealed and last month, a circuit panel affirmed the district court’s ruling.
“Thomas McClary can make fair use of the marks,” Kent and Lopez explained. “The Eleventh Circuit declined to identify every use that constitutes fair use. What is clear is that he cannot use the name ‘The Commodores, featuring Thomas McClary.’ He has been performing as Thomas McClary, founder of the Commodores, and we haven’t objected to it.”
The Eleventh Circuit’s decision sheds light on what constitutes infringement for former band members. “The Eleventh Circuit has now clarified that, in general, departing members leave the name with the band, especially in joint ventures when the name was acquired jointly,” Kent and Lopez explained. “The name remains with the band members who maintain control over the character and quality of the band.”
For bands and musicians, this case highlights some key intellectual property protection strategies, and it is important that they get attorneys involved early to properly document ownership and use of the band’s name and any other intellectual property. Entertainers should take action to protect their trademarks as soon as they learn of potential infringement, such as sending cease and desist letters and, if necessary, filing suit. “Otherwise, a court may hold that the claims are barred by laches and acquiescence. Trademark owners have a duty to police their marks, so it is a good idea to set up some system to monitor for potential use of trademarks, such as setting up Google Alerts for the marks.”
For the full article, please click here.
