“all IP” puts C&D recipient on notice of TM (R), and a bit on the meaning of blue check marks

Commodores Entertainment Corp. v. McClary, Nos. 19-10791,
19-12819, — Fed.Appx. —-, 2020 WL 4218236 (11th Cir. Jul. 23, 2020)

As quickly summarized by the court:

The prolonged dispute concerns the
ownership of the mark “The Commodores,” the name of a famous Grammy
Award-winning rhythm and blues, funk and soul music band. McClary was an
original member of The Commodores but left the band in 1984. He later formed a musical
group that performed as “The 2014 Commodores” and “The Commodores featuring
Thomas McClary.” In 2014, [plaintiff] CEC filed this lawsuit against McClary,
claiming trademark infringement, trademark dilution, passing off, false
advertising, and unfair competition….

At the outset of the case, the
district court granted CEC’s motion for a preliminary injunction. After the
injunction was entered, CEC learned that McClary and his band were marketing
upcoming performances in Europe. Upon CEC’s motion for clarification, the
district court held that the injunction had extraterritorial application
because use of the marks overseas would have a substantial and negative impact
on CEC, an American corporation.…

The district court then determined that CEC owned trademark
rights, and ultimately found that McClary infringed. A jury found that McClary
had actual notice of CEC’s trademark registrations as of June 2009 and that CEC
was entitled to damages from McClary’s profits resulting from musical
performances at West Hampton Beach Performing Arts Center (WHBPAC) and six
non-US locations.  The jury also found
that CEC had not shown it had suffered damages under the FDUTPA. McClary moved
to modify the permanent injunction, arguing that he had acquired licenses to
use the trademark “The Commodores” in Mexico, New Zealand, and Switzerland. The
district court denied the motion as untimely/insufficiently justified. The
court of appeals affirmed everything. 

The most notable thing to me here was the court of appeals’
reasoning that McClary had actual notice of the trademark registration (which
affects eligibility for profits/damages under 15 U.S.C. § 1111) because of a
letter that claimed only “all intellectual property rights” and didn’t mention
registrations. The court of appeals reasoned that the jury reasonably could
have concluded that “all intellectual property rights” included registered
trademarks. “The statement that CEC would treat ‘any future unauthorized use of
the Commodores trade name or logo’ as misconduct further put McClary on actual
notice of CEC’s trademark registrations.” This seems quite misguided to me,
given the existence of non-registered trademark rights, but there you have it. 

As for the motion to modify the permanent injunction, it was
filed “more than five years after the court entered the preliminary injunction,
three years after it issued the clarification order confirming its
extraterritorial reach, two-and-a-half years after it entered the permanent
injunction, and over a year after our Court affirmed the scope of the permanent
injunction.” And McClary obtained the licenses he sought to effectuate from
April 2017-August 2018. “He did not move for two years after his first
acquisition, and about nine months after his last. The district court was well
within its discretion to find this time frame unreasonable, especially in light
of the extensive litigation over the injunction and McClary’s failure to
explain the delay.”

As for McClary’s counterclaim for commercial
misappropriation of his likeness and identity under Fla. Stat. § 540.08, it was
based on screenshots of a Facebook page run by “The Commodores,” which had a
blue checkmark next to the name “The Commodores,” and used his picture on the
page. CEC introduced an unsworn declaration from William King, current member of
The Commodores and CEC’s president, averring that CEC does not maintain a
Facebook page. McClary failed to present any rebuttal evidence, including any authority
about the blue checkmark’s meaning or how Facebook confirms the identity of a
verified account. Without that, he couldn’t avoid summary judgment.

McClary’s defamation/business disparagement counterclaims:
They were based on allegedly false e-mail communications CEC’s former manager made
to non-parties, representing that McClary was enjoined from any use of CEC’s
marks. But the district court had already ruled that McClary’s use of CEC’s
marks, including “The Commodores featuring Thomas McClary,” created a
likelihood of confusion and actual confusion, the emails were true when McClary
continued to market himself as “The Commodores featuring Thomas McClary” in the
EU, and the former manager eliminated any ambiguity by attaching the
preliminary injunction to his e-mail.

from Blogger https://ift.tt/33Vonrk

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