Two founding members of the funk band the “Commodores” have won the right to use the band’s name and trademark after a years-long legal dispute.
Last week, a Florida appeals court ruled in favor of Commodores founders William King and Walter Orange who run the Commodores Entertainment Corporation (CEC). King and Orange had sued former Commodores member Thomas McClary for trademark infringement in 2014 after he performed using variations of the group’s name, including “The Commodores featuring Thomas McClary.” McClary countered that he had ownership in CEC and sued the company for fraud and challenged its trademarks.
Two years later, a Florida federal court ruled in favor of CEC, putting a permanent injunction in place against McClary, preventing him from using the Commodores trademark, except in circumstances of fair use. That meant, for example, that he could perform as “Thomas McClary, founder of The Commodores,” but not as “The Commodores featuring Thomas McClary.”
The Hollywood Reporter points out that when singer/songwriter Lionel Richie left the band in 1982, the group’s members signed an agreement that said, “no Leaving Member, nor heirs of any member have or will have the right to make any individual use of the Name.” Then, when King and Orange ended up the only original members in the group, they transferred their common-law rights in the group’s trademark to CEC.
McClary’s appeal of the 2016 ruling ended with last week’s ruling, where U.S. Circuit Judge Stanley Marcus echoed the band’s earlier agreement: “[W]hen McClary left the band, he left behind his common-law rights to the marks,” noting further, “Those rights remained with CEC.” You can read the court documents here.
And in other Commodores-related news, Richie recently filed trademark applications for “Here Comes Da Judge” and “Here Comes Da Judge — Lionel Richie,” related to his role as a judge on the upcoming season of the TV series, ‘American Idol.’
Now a little walk down memory lane: