Commodores Entertainment Corp. v. McClary

Thomas McClary (defendant) was a founding member of the Grammy Award-winning band the Commodores. The group was formed in 1968. In 1978, the six original members and their manager formed a general partnership governed by an agreement providing that upon the death or withdrawal of less than a majority of the partners, the remaining majority would continue to have the right to use the Commodores name. Two months later, the partners registered Commodores Entertainment Corporation (CEC) (plaintiff) as a Nevada corporation. Over time, CEC and the partners entered into various agreements that consistently provided that the members had no individual rights in the Commodores name and that departing members of the band had no right to use the name. McClary left the band in 1984 to pursue solo interests and later formed a group that performed as “the 2014 Commodores” and “the Commodores featuring Thomas McClary.” At that point, the Commodores had two remaining original members, and they had recently transferred their common-law trademark rights in the name and logo to CEC, which in 2001 registered four trademarks with the United States Patent and Trademark Office. The registrations granted CEC exclusive rights to the marks for entertainment services. CEC, as the owner of the marks, sued McClary for trademark infringement. McClary argued that he retained common-law rights to use the name. The district court granted CEC a preliminary injunction, and the court of appeals affirmed. Later, after a two-week trial, the district court granted judgment as a matter of law to CEC and converted the preliminary injunction to a permanent one. McClary appealed again.