Sail On: Former Commodores Guitarist Fails to Establish Rights in Band’s TrademarkJanuary 11, 2018

Who owns a band’s trademark when that band is composed of multiple people? And more importantly, what rights does a band member have in that trademark when they leave the band? Earlier this week, the Eleventh Circuit addressed these very questions in a case involving legendary funk/soul band the Commodores.

The Commodores, famous for chart-topping singles like “Brick House” and “Three Times a Lady,” formed in 1968. Despite the group’s success, one of the original members, Thomas McClary, decided to leave the band in 1984 to pursue a solo career.

Problems started to arise, however, in 2009 when McClary performed with two other former members of the Commodores and advertised the show as “a Commodores reunion.” Despite being told by the band he had no right to use the Commodores name, McClary thereafter formed a group named “Commodores Featuring Thomas McClary” in 2013, which would also perform under the name “The 2014 Commodores.” 

The band filed a lawsuit against McClary in 2014 claiming, among other things, trademark infringement. The United States District Court for the Middle District of Florida granted a preliminary, and later permanent, injunction against McClary enjoining him from using “the Commodores” trademark and granted the band’s motion for judgment as a matter of law on the basis that McClary had left the band in 1984 and had left behind all rights to the band’s trademark when he did so. The court ruled that rights in “the Commodores” trademark remained “with the group.”

On appeal, the Eleventh Circuit affirmed the district court’s ruling. The court noted that, as trademarks are designed to identify and distinguish one’s goods or services from those of another and to indicate the source of the goods or services, “the Commodores” identifies and distinguishes the music of only the band known as “the Commodores”—not an unrelated band formed by a former member. The court explained that rights in this name remained with the group members who “continued to use and exert control over the group.” As McClary had left the band and did not exercise any control over the quality or reputation of the band performing as “the Commodores,” the court determined he did not have any rights in the name.

In response to an argument by McClary that the permanent injunction was “overbroad” by preventing him from identifying himself and his music “in a historically accurate way,” the court added a key distinction. Notably, the court explained that McClary is not precluded from identifying himself as a founder of the Commodores or in any other historically accurate way, providing the example of “Thomas McClary, founder of The Commodores.” While this use includes the band’s trademark, it does so in a way that constitutes fair use. As the court made clear, ownership in a band’s trademark will generally remain with the band when a member leaves, but that member is free to use a mark that is either unlikely to cause consumer confusion or constitutes fair use. “Thomas McClary, founder of The Commodores” and variations thereof meet this standard—“Commodores Featuring Thomas McClary” does not.

The case is Commodores Entm’t Corp. v. McClary, Case No. 16-15794 in the United States Court of Appeals for the Eleventh Circuit and can be read here.


Nicholas Krob is an Intellectual Property Attorney at McKee, Voorhees & Sease, PLC. For additional information please visit or contact Nick directly via email at



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