Monday, January 22, 2018

Trademarks Can Get Complicated When Members Leave the Band

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.

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