The band’s song “Easy” does not reflect Commodores’ founder Thomas McClary’s court battle to use the trademark “COMMODORES founder Thomas McClary” for his solo career.  As I dug further into the meaning of the song, it is actually about the relief of ending a really difficult relationship.  I guess it fits that the relationship, or rather trademark dispute, between the owner of the COMMODORES trademark and the band’s founder Thomas McClary is ending (at least for now) with a permanent injunction against the latter’s use of the above trademark.

Last week, a United States District Court judge in Florida ruled on a Motion for Clarification Regarding Fair Use Under the Permanent Injunction and for Order to Show Cause Why Defendants Should Not Be Held in Civil Contempt filed by the trademark owner.  The judge began his opinion with “Where words fail music speaks” attributed to Hans Christian Anderson’s “What the Moon Saw,” in What the Moon Saw and Other Tales (1866).  The judge explained that “[h]owever, words have certainly not failed the parties to this lingering trademark dispute involving the Commodores.”

The Florida judge rejected the nominative fair use (“NFU”) defense raised by Mr. McClary.  In doing so, the judge looked at the NFU test factors:  “(1) Plaintiff’s product or service [i.e., singing] is not readily identifiable without the use of the trademark; (2) Defendants’ used only so much of the mark as it is reasonably necessary to identify the plaintiff’s product or service, and (3) the user of the mark does nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark owner.”  The third factor was determinative.  The judge found that there was an improper suggestion of sponsorship or endorsement by the Commodores.

The judge looked at other cases and the important factor for his decision turned on the fact that the accused marks preceded the accurate reference that he was the founder and the accused marks were more prominent than other words contained in the band name.  The judge explained that Mr. McClary could use the following marks:  “Thomas McClary formerly of the Commodores” or “Thomas McClary original founding member of the Commodores” and be considered NFU.

As a Commodores fan, I was glad that Mr. McClary and his band were, at least, not found to be in civil contempt or in other words in violation of the injunction.