Some bands take the initial necessary steps to protect their band’s name by filing for trademark protection. Many, however, fail to think through the implications of a band break-up on ownership of the trademark. As a result, ownership rights to trademarks can get complicated.

The United States District Court for the Middle District of Florida recently heard a case involving a former member of the Commodores. The band, formed in 1968, had many hits including “Easy”, “Celebrate”, and “Lady (You Bring Me Up)”. In 1984, Thomas McClary, founder and lead guitarist, left the band to pursue a solo career.

The issue of trademark ownership began to arise in 2009 when McClary formed a group and began advertising his new band as a “Commodores Reunion”. The original Commodores, although with several new members, continued to record and tour. McClary was instructed through Commodores’ counsel not to use the name Commodores, but chose not to heed the warnings and formed subsequent groups named “Commodores Featuring Thomas McClary” and “The 2014 Commodores”.

In 2014, the remaining members of the Commodores, William King and Walter “Clyde” Orange, felt they had no other choice, but to file a trademark infringement lawsuit against McClary on behalf of the Commodores (Commodores Entertainment Corp. “CEC” vs. McClary). The court ruled that since McClary had left the band, the trademark remained with the group. The court concluded that “King and Orange made valid assignments of their ownership rights in the marks to CEC and that CEC now owns the rights to the marks.”

Upon appeal of the trial court’s decision, the 11th Circuit ruled that McClary be allowed to reference the Commodores. For example, he can advertise “Thomas McClary, founder of the Commodores”, but he cannot use the name Commodores in his new band’s name.

Litigation is costly and full of uncertainty. All bands should execute a band agreement among the members which addresses ownership of trademarks and other intellectual property rights. Such an agreement can help avoid litigation and the costs associated with taking a claim to court.

Paul Quin is a partner at Saxon Gilmore & Carraway, P.A., and concentrates his practice on entertainment law, trademark law, toxic torts, products liability, medical malpractice, freedom of speech, environmental law, general tort law, and complex business litigation. He has spent many years as a professional drummer and remains active in the music industry. Mr. Quin represents musicians in a number of civil law arenas. He can be reached at 813.314.4523.

 

© 2018 Saxon Gilmore. Saxon Gilmore publications should not be construed as legal advice on any specific facts or circumstances. The contents are intended for general information and educational purposes only, and should not be relied on as if it were advice about a particular fact situation. The distribution of this publication is not intended to create, and receipt of it does not constitute, an attorney-client relationship with Saxon Gilmore. This publication may not be quoted or referred to in any other publication or proceeding without the prior written consent of the firm, to be given or withheld at our discretion. To request reprint permission for any of our publications, please use our Contact form via the link below. This site may contain hypertext links to information created and maintained by other entities. Saxon Gilmore does not control or guarantee the accuracy or completeness of this outside information, nor is the inclusion of a link to be intended as an endorsement of those outside sites.