IP Law Daily, TRADEMARK—11th Cir.: Attorney fees award against former Commodores guitarist in protracted trademark lawsuit affirmed, (Sep 30, 2025)

By Ravindra Kumar Singh, B.L.

Eleventh Circuit holds that protracted trademark dispute was “exceptional” under the Lanham Act, affirming district court’s reinstatement of more than $600,000 in attorney fees and costs.

The U.S. Court of Appeals for the Eleventh Circuit affirmed a district court order requiring Thomas McClary, a founding member of the Commodores, and his company, Fifth Avenue Entertainment, LLC, to pay over $600,000 in attorney fees and costs to Commodores Entertainment Corporation ("CEC"). The court held that CEC remained the prevailing party even after the Supreme Court's decision in Abitron Austria GmbH v. Hetronic Int’l, Inc., 600 U.S. 412 (2023), which restricted the extraterritorial reach of the Lanham Act. The Eleventh Circuit agreed that McClary’s litigation positions were exceptionally weak, his conduct repeatedly flouted court orders, and the case therefore merited fee-shifting (Commodores Entertainment Corp. v. McClary, No. 24-13225 (11th Cir. Sept. 29, 2025)).

Background. CEC, incorporated and managed by original Commodores members William King and Walter Orange, performs and licenses the iconic funk band’s name. McClary, who left the group in 1984, later promoted himself as “The Commodores featuring Thomas McClary” and “The 2014 Commodores,” booking performances in the United States and abroad through Fifth Avenue Entertainment. The dispute stems from CEC’s claim that McClary’s use of the “Commodores” mark infringed its rights under the Lanham Act, 15 U.S.C. § 1051 et seq.

CEC filed suit in 2014, obtaining a preliminary injunction against McClary's use of the name. The injunction was later converted into a permanent one after Phase I of the trial resolved ownership in CEC's favor. In Phase II, a jury awarded CEC damages equal to McClary's profits from European concerts and confirmed that McClary had notice of CEC's trademark rights as early as 2009. McClary repeatedly sought to narrow the injunction's scope but lost. He also pursued counterclaims, all of which were dismissed on summary judgment.

The district court found the case “exceptional” under 15 U.S.C. § 1117(a) and awarded $602,618.67 in attorney fees and $4,560.56 in costs. On an earlier appeal, the Eleventh Circuit remanded in light of Abitron, which limited the Lanham Act’s foreign application. On remand, the district court slightly modified the injunction to exclude purely foreign performances but reinstated its fee award, prompting McClary’s fifth appeal.

Prevailing party determination. The Eleventh Circuit concluded that CEC remained the prevailing party, noting it secured ownership of the marks, a damages verdict based on domestic infringement, and continued injunctive relief against McClary’s U.S.-based booking operations. The court cited Fireman’s Fund Ins. Co. v. Tropical Shipping & Constr. Co., 254 F.3d 987, 1012 (11th Cir. 2001), reaffirming that a party need not succeed on every issue to qualify as prevailing.

Exceptional case standard. Applying the framework of Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014), adopted in trademark cases via Tobinick v. Novella, 884 F.3d 1110 (11th Cir. 2018), the court affirmed that this case “stood out” for both the weakness of McClary’s claims and the unreasonable manner in which it was litigated. The panel emphasized that McClary’s assertion of continued trademark rights decades after leaving the group lacked evidentiary support, and his defenses, including that a typographical error in registration invalidated the mark, were meritless.

Disregard of court orders. The court stressed that McClary repeatedly ignored injunctions. Only months after the district court issued preliminary relief, he booked shows in the United Kingdom and Switzerland using the Commodores name. Later, he attempted to rebrand as the “Commodores Experience,” which the court found equally infringing. Such violations, the panel noted, justified the finding of exceptional circumstances, even absent a contempt citation (Octane Fitness, 572 U.S. at 555).

Vexatious litigation strategy. The Eleventh Circuit endorsed the district court’s finding that McClary engaged in vexatious litigation, reflected in over 600 docket entries, two jury trials, and five appeals. Attempts to relitigate settled questions, join unnecessary parties, and assert baseless defenses prolonged proceedings and imposed significant burdens. The panel emphasized that persistence alone does not make a case exceptional, but baseless persistence does (Tobinick, 884 F.3d at 1119).

Impact of Abitron. McClary argued that the Supreme Court’s ruling in Abitron undermined the fee award because it limited the Lanham Act’s extraterritorial application. The Eleventh Circuit disagreed, explaining that domestic conduct, including use of a New York-based booking agent and at least one infringing U.S. performance, kept the injunction and damages intact. The district court reasonably concluded that McClary’s most egregious positions were unrelated to extraterritoriality, and “Abitron did not make the decade of judicial labor necessitated by McClary’s misconduct simply disappear.”

Thus, finding no abuse of discretion, the Eleventh Circuit affirmed the reinstatement of attorney fees and costs.

The Case is No. 24-13225.

Judge: Per Curiam.

Attorneys: Lindsay Patrick Lopez (Trenam Law) for Commodores Entertainment Corp. Marie Claire Mirch (Mirch Law Firm, LLP) for Thomas McClary.

Companies: Commodores Entertainment Corp.

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