A Florida federal court enjoined Thomas McClary, an original member of famed Motown band the Commodores, from branding himself as “COMMODORES’ Founder Thomas McClary” in his booking advertisements for solo gigs. McClary left the band in 1984 to pursue a solo career.

In 2014, Commodores Entertainment Corporation (“CEC”), the band’s legal entity, filed suit against McClary for trademark infringement, trademark dilution, passing off, false advertising, unfair competition, and deceptive trade practices when it was discovered that McClary was advertising and booking performances under the names “The Commodores featuring Thomas McClary” and “The 2014 Commodores.” In that case, CEC obtained a permanent injunction preventing McClary from using either name.

In the motion decided this week, CEC sought to enforce its existing injunction to prevent McClary from branding himself with the Commodores’ name.  McClary argued that the revised name was permitted under the doctrines of classic or normative fair use.  But the court held that McClary’s use of “COMMODORES Founder” suggested an endorsement by the band and “continues to cause a likelihood of confusion between the two bands.” Although the court enjoined the revised branding, it found that McClary may use the “Commodores” name so long as it is “preceded by the historically accurate reference” and is “not more prominent than other words contained in the band name.”

Takeaway: Artists who wish to advertise new ventures while reminding consumers of their association to a prior group must take care to use the proper advertising language.