## Facts

- A 1968-formed musical group achieved commercial success under the name “The Commodores.”
- In 1978, the original members entered a partnership agreement providing that, if fewer than a majority withdrew or died, the remaining partners would continue the business and have the right to use the name “The Commodores.”
- The members later formed a corporation and executed agreements repeatedly stating that individual members had no personal rights in the band name or logo and that departing members had no right to use “The Commodores.”
- Thomas McClary, a founding member and guitarist, left the group in 1984 and did not use the Commodores name for decades.
- Two remaining original members continued performing under the Commodores name and transferred common-law rights in the name and logo to the corporation.
- The corporation obtained federal registrations in 2001 for “THE COMMODORES” and related marks for entertainment services.
- Around 2013–2014, McClary promoted performances under names including “The 2014 Commodores” and “The Commodores featuring Thomas McClary,” which the corporation alleged created consumer confusion about affiliation with the long-continuing group.
- The district court granted a preliminary injunction, later granted judgment as a matter of law to the corporation on trademark ownership, and entered a permanent injunction; it also excluded the defense’s proposed attorney-expert testimony.

## Issues

1. Whether the case should have been dismissed for failure to join an indispensable party under Federal Rule of Civil Procedure 19.
2. Whether excluding the defense’s attorney-expert testimony was an abuse of discretion.
3. Whether McClary retained any common-law trademark rights in “The Commodores” name after withdrawing from the group.
4. Whether judgment as a matter of law for the corporation on trademark ownership and infringement was proper.
5. Whether the permanent injunction was impermissibly broad, including as applied to foreign performances.
6. Whether laches, waiver, or challenges to the federal registrations defeated the corporation’s claims or remedies.

## Decision

- The Eleventh Circuit affirmed the judgment in all material respects.
- The corporation owned the “Commodores” marks at common law and under federal registrations, and McClary retained no ownership rights after his withdrawal.
- The district court properly granted judgment as a matter of law on ownership and infringement and properly entered a permanent injunction.
- The district court did not err in rejecting the Rule 19 argument or in excluding the proposed attorney-expert testimony as improper legal and contract-opinion evidence.
- The injunction’s scope, including its reach to conduct outside the United States, was upheld.
- Laches and waiver defenses, and attacks on the registrations, did not warrant reversal.

## Legal Principles

- Common-law trademark ownership is determined by priority and continuity of use tied to the ongoing commercial identity, not by founding status or who first conceived the name.
- Where governing agreements allocate control of a group name to the continuing enterprise and deny departing members any right to use it, a former member generally cannot claim a residual right to use the mark.
- Expert testimony that primarily offers legal opinions or contract interpretations may be excluded because those matters are for the court.
- Judgment as a matter of law is appropriate when the documentary record and undisputed facts permit only one reasonable conclusion on ownership and infringement.
- Injunctive relief may extend to foreign conduct when necessary to protect U.S. trademark rights and prevent likely confusion affecting U.S. commerce.
- Laches and waiver require unreasonable delay and resulting prejudice; prompt action upon learning of infringing use defeats those defenses.

## Conclusion

The Eleventh Circuit held that the continuing Commodores business—operating through the corporation—owned the band-name trademarks, that a former member who withdrew and agreed he had no rights could not later market performances under confusingly similar names, and that a permanent injunction (including limited extraterritorial application) was an appropriate remedy.


Commodores Entertainment Corp. v. McClary, 879 F.3d 1114 (11th Cir. 2018)