commodores third amended complaint.pdf

8/10/2019 Commodores Third Amended Complaint.pdf

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FIRST AMENDED THIRD PARTY COMPLAINT1

UNITED STATES DISTRICT COURTMIDDLE DISTRICT OF FLORIDA

ORLANDO DIVISION

COMMODORES ENTERTAINMENTCORPORATION,

CASE NO. 6:14-cv-01335-RBD-GJKPlaintiff/Counter Defendant

v.

THOMAS McCLARY, and FIFTH AVENUEENTERTAINMENT, LLC,

Defendants/Counterclaimants. _______________________________________________/THOMAS McCLARY, and FIFTH AVENUEENTERTAINMENT, LLC,

Third Party Plaintiffs,

v.

COMMODORES ENTERTAINMENT CORP.,A NEVADA CORPORATION,COMMODORE ENTERTAINMENT CORP.,DAVID FISH, AN INDIVIDUAL, WILLIAM KING,AN INDIVIDUAL, WALTER ORANGE,AN INDIVIDUAL, SAL MICAELS AN INDIVIDUAL,PYRAMID ENTERTAINMENT GROUP, INC.,A NEW YORK CORPORATION, DOES 1-100,

Third Party Defendants. _______________________________________________/

DEFENDANTS THOMAS MCCLARY AND FIFTH AVENUE ENTERTAINMENT,LLCS FIRST AMENDED THIRD PARTY COMPLAINT AND

DEMAND FOR JURY TRIAL

Third Party Plaintiffs Thomas McClary and Fifth Avenue Entertainment, LLC, a Florida

Case 6:14-cv-01335-RBD-GJK Document 55 Filed 10/14/14 Page 1 of 43 PageID 829


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FIRST AMENDED THIRD PARTY COMPLAINT

2

Limited Liability Company, allege as follows:

JURY DEMAND

1. Defendants//Counterclaimants and Third Party Plaintiffs Thomas McClary and Fifth

Avenue Entertainment, LLC hereby demand a jury in this action.

PARTIES

2. Third Party Plaintiff, Thomas McClary is an individual who at all times relevant hereto

was a resident of Orlando, Florida.

3. Third Party Plaintiff, Fifth Avenue Entertainment, LLC is a limited liability company

formed under the laws of the State of Florida, with its principle place of business locatedin Orlando, Florida.

4. Fifth Avenue Entertainment, LLC is a management company that manages booking and

touring for The Commodores featuring Thomas McClary and the artist Thomas

McClary.

5. The Plaintiff in this matter is Commodores Entertainment Corporation. Upon

information and belief, Plaintiff Commodores Entertainment Corporation is not a

corporation formed under the laws of any state.

6. Third Party Defendant, Commodores Entertainment Corp. is a Nevada Corporation doing

business throughout the United States, including Florida.

7. The Secretary of State of Nevada identifies the Third Party Defendant Commodores

Entertainment Corp . as an active domestic corporation. Commodores Entertainment

Corp. is a close corporation.

8. Third Party defendant Commodore Entertainment Corp. is a putative entity, origin



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unknown, which is represented to the United States Patent and Trademark Office as a

Nevada Corporation.

9. Third Party Defendant David Fish is an individual who is identified on the Nevada

Secretary of State business portal as the resident agent for Commodores Entertainment

Corp. Therefore, upon information and belief, Mr. Fish is a resident of Clark County,

Nevada. The conduct alleged herein was expressly aimed at Thomas McClary and Fifth

Avenue Entertainme nt, LLCs business in Florida and ability to conduct business through

the United States and the world, and caused harm, the brunt of which is suffered, and

which the third party defendant knows is likely to be suffered, in Florida, ThomasMcClary and Fifth Avenue Entertainment, LLCs home state.

10. Third Party Defendant William King is an individual who, at all times relevant hereto,

was a resident of Atlanta, Georgia. The conduct alleged herein was expressly aimed at

Thomas McClary and Fifth Avenue Entertai nment, LLCs business in Florida and ability

to conduct business through the United States and the world, and caused harm, the brunt

of which is suffered, and which the third party defendant knows is likely to be suffered,

in Florida, Thomas McClary and Fi fth Avenue Entertainment, LLCs home state.

11. Third Party Defendant Walter Orange is an individual who, at all times relevant hereto,

was a resident of Coral Springs, Florida. The conduct alleged herein was expressly

aimed at Thomas McClary and Fifth Avenu e Entertainment, LLCs business in Florida

and ability to conduct business through the United States and the world, and caused harm,

the brunt of which is suffered, and which the third party defendant knows is likely to be

suffered, in Florida, Thomas McCl ary and Fifth Avenue Entertainment, LLCs home

state.



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12. Third Party Defendant Sal Micaels is an individual who, at all times relevant hereto, was

a resident of New York, New York. Mr. Micaels is the owner and CEO of Pyramid

Entertainment Group, Inc. The conduct alleged herein was expressly aimed at Thomas

McClary and Fifth Avenue Entertainment, LLCs business in Florida and ability to

conduct business through the United States and the world, and caused harm, the brunt of

which is suffered, and which the third party defendant knows is likely to be suffered, in

Florida, Thomas McClary and Fifth Avenue Entertainment, LLCs home state.

13. Third Party Defendant Pyramid Entertainment Group, Inc. (Pyramid Entertainment ) is

a New York Corporation doing business in New York, the United States and the world.Pyramid Entertainment Group is an international talent booking agency. Pyramid

provides musical talent to open promotion concert events, corporate/private events,

casinos, fairs, festivals and more. Upon information and belief, Pyramid Entertainment

Group, Inc. is the booking agent for THE COMMODORES.

14. Third Party Defendants, Does 1-10, at all times relevant hereto were involved in the

misconduct which is alleged against the other defendants in this complaint. At such time

as the true names and identities of the Doe Defendants become known, Plaintiffs will

seek leave of this Court to amend this complaint alleging them as Defendants.

15. Unless specifically identified herein, the claims are asserted by both Third Party Plaintiffs

against all Third Party Defendants.

INTRODUCTORY ALLEGATIONS

Origin and success of The Commodores

16. Third Party Plaintiff, Thomas McClary co-founded a musical band in 1968 along with



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Lionel Richie. The band took the name The Commodores in 1968.

17. The individual members of the group began using the Commodores name and mark in

commerce in 1968.

18. The members of the group as of September, 1969 were: Lionel Richie, Thomas McClary,

Walter Orange, Ronald LaPread, Milan Williams, and William King.

19. Upon information and belief, since the bands formation in 1968, each member had equal

ownership in the trademarks. As of 2014, Mr. McClary and Mr. LaPread have never sold,

assigned, abandoned or otherwise relinquished their individual ownership interests in the

Commodores trademark . Thomas McClary has no information as to whether any of theremaining members of the Commodores assigned, sold, abandoned, relinquished or

otherwise discontinued his ownership in the Commodores mark.

20. The Commodores experienced its greatest success in the 1970's, due in part to the

substantial contribution of time and talent by all members of the group including Mr.

McClary.

21. From 1973-1982, James Carmichael, produced and co-arranged thirteen of The

Commodores albums, beginning with the album Machine Gun and including

Commodores 13 which was released in approximately 1982 or 1983. The Commodores

biggest hits, success and fame was during the 1970's and early 1980's.

22. In 1982, lead vocalist Lionel Richie left the Commodores to pursue a solo career.

23. In 1984, Mr. McClary stopped performing with The Commodores. Mr. McClary later

rejoined The Commodores for several live performances which are detailed below.

Mr. McClarys continued use of The Commodores mark

24. When Mr. McClary stopped performing with The Commodores in 1984, he went to



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Orlando where he continued to perform as The Co-Founder of The Commodores,

Thomas McClary . Mr. McClarys performances included performances for numerous

churches and charities, pe rforming The Commodores hit song Jesus Is Love among

other well known Commodores songs. McClary further performed for Shepherds

Hope a nonprofit medical facility whose fund -raising was spearheaded by a well known

former coach for the Orlando Magic, e very year as The Commodores featuring Thomas

McClary since 2001.

25. Mr. McClary is a core member of The Commodores as inducted in the Rock and Roll

Hall of Fame in 2003.26. Mr. McClary has appeared with The Commodores at several performances during 2006 -

2013.

27. Mr. McClary performed live with The Commodores on July 16 and 17, 2010 in

Bettendorf, Iowa and Santa Fe, New Mexico.

28. On June 23-24, 2010, David Fish sent an email to Mr. McClary confirming Mr.

McClarys participation in the live performances on July 16 and 17, 2010.

29. On August 7, 2010, David Fish sent Thomas McClary an e-mail pertaining to a proposal

to record a song that Mr. McClary had written, America.

30. On November 13, 2010, Thomas McClary, Ronald LaPread, J.D. Nicholas, Walter

Orange and David Fish met in Atmore, Alabama to discuss putting together a new

Commodore album of original songs with Mr. McClary, Mr. LaPread, Mr. King, Mr.

Orange, and Mr. Nicholas.

31. On December 8, 2010, David Fish sent an email to Ronald LaPread and Thomas McClary



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soliciting their help for original songs to start the recording process of a new album and

to reunite the original five Commodores in hope of getting Lionel Richie to eventually

join.

32. Shortly after the November 13, 2010 meeting, the group went to Mr. McCl arys home

and recording studio for a recording session. William King, James Carmichael, Walter

Orange, J.D. Nicholas, Ronald LaPread, David Fish and Thomas McCarthy were present.

33. On July 6, 2011 and Friday, July 8, 2011, William King and David Fish contacted Mr.

McClary regarding organizing a conference call to vote on whether they would use the

auditor, Greg McBowman, who Mr. McClary recommended to lead an audit of theCommodores record label Motown/Universal Music.

34. David Fish continued to correspond in group e-mails with Thomas McClary, Ronald

LaPread, Walter Orange, William King, J.D. Nicholas, and William King in 2012.

35. Since 1975, Mr. McClary has continually received quarterly royalty payments for his

membership in The Commodores.

The Commodores entities

36. In 1978, the members of the band formed a general partnership. By that time, they had

continuously used the name Commodores for over ten years, and developed substantial

goodwill. Each of the individual members had equal rights and ownership in the

Commodores name, common law trademark and goodwill.

37. The term of the partnership has expired.

38. On or about 1978, articles of incorporation were filed with the Nevada Secretary of State

establishing the Nevada Corporation, Commodores Entertainment Corp..

39. On or about 1977, a New York Corporation Commodores Merchandising Corporation



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was formed in New York State.

40. On or about 1979, the corporation Commodores Fan Club, Inc. was formed in New

York State.

41. On or about 1979, a corporation Commodores Entertainment Publishing Corp. was

formed in New York State.

42. On or about 1976, the corporations, Commodores Merchandising Corporation (a New

York corporation), Commodores Entertainment Publishing Corp. (A New York

corporation), and Commodores Fan Club, Inc. (a New York corporation) were merged

into the Nevada corporation Commodores Entertainment Corp.43. Upon information and belief, the shareholders in Commodores Entertainment Corp.

included Lionel Richie, Thomas McClary, Walter Orange, Ronald LaPread, Milan

Williams, and William King.

44. Mr. McClary and Mr. LaPread never sold, transferred or otherwise relinquished their

shares in Commodores Entertainment Corp. Mr. McClary has no knowledge as to

whether any other shareholders ever sold, transferred or otherwise relinquished his shares

in Commodores Entertainment Corp.

45. Mr. McClary remains a shareholder in Commodores Entertainment Corp.

46. Upon information and belief, none of the members of the band transferred their

individual common law ownership interests in the trademark or their interest in the good

will of The Commodores to the Partnership or any of the Commodores corporate

entities, nor did any receive consideration for the same.

47. Mr. McClary and Mr. LaPread never withdrew from the partnership or corporation and



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have never sold, transferred, assigned or otherwise relinquished their ownership interest

in the goodwill and the common law trademark THE COMMODORES.

48. According to the Nevada Secretary of State business entity search as of September 30,

2014, the officers and directors of Commodores Entertainment Corp. are William King,

President, Treasurer and Director, and Walter Orange, Secretary.

49. Upon information and belief Commodores Entertainment Corp. has failed to follow

corporate formalities. Mr. McClary has never received any notice to shareholders or

notice of shareholder meetings.

Registered Trademarks 50. Third Party Defendant, Commodore Entertainment Corp. is the registrant of the

following trademarks:

(a) THE COMMODORES, Regis tration number 2424689, first use in commerce date

4/1/1972. Filing date for this trademark is July 8, 1999;

(b) A logo/drawing of COMMODORES Registration number 2424686. The filing

date July 8, 1999, a first use in commerce date of 12/31/1968;

(c) The Commodores, Registration number 2497958, filed April 25, 2000, first use in

commerce 4/30/1972;

(d) The word mark Commodores a logo design, Registration number 2490360, first use

4/1/1972, filing date April 25, 2000.

51. Neither Commodore Entertainment Corp. nor Commodores Entertainment Corp. existed

at the time the mark The Commodores was first put into commerce in 1968.

52. Upon information and belief, The Commodores mark has not been registered outside of

the U.S. and Canada.



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53. Upon information and belief, Plaintiff Commodores Entertainment Corporation has not

registered the aforementioned trademark in any country or state.

The current Grammy winning Commodores

54. Upon information and belief. The current group that performs as The Commodores is

comprised of Walter Orange, William King, J.D. Nicholas and band calling itself The

Mean Machine

55. Upon information and belief, The Commodores do not have a webpage, nor do they own

Twitter name The Commodores, or the domain name thecommodores.com .

56. Upon information and belief, The Commodores have very little presence in the media,TV commercials, TV shows, or magazine ads.

57. The Commodores presence on the radio is the sound of the 70's and early 80's. Other

than one hit Grammy winning song, Nightshift , the current Commodores success and

exposure is very weak compared to the fame of the 1970's and 80's group.

58. Upon information and belief, The Commodores name is still prominent simply because

of the great songs that were recorded in the 70's and 80's that withstood the test of time.

These songs are still being played every day on radio, TV commercials, and movie sound

tracks.

59. Upon information and belief, since 2000, the Commodores have moved away from hard

ticket events, and mainly perform at private parties, corporate events, and casino groups.

Mr. McClarys use of the Commodores mark


Orlando where he continued to perform as "The Co-Founder of The Commodores,



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Thomas Mc Clary". Mr. McClarys performances included performances for numerous

churches and charities performing The Commodores hit song Jesus Is Love among

other well known Commodore songs. McClary further performed for Shepherds Hope

a nonprofit medical facility, whose fund-raising was spearheaded by a well known former

coach for the Orlando Magic, every year as The Commodores featuring Thomas

McClary since 2001.

61. Mr. McClary currently performs as Commodores Featuring Thomas McClary under

his own name and Fifth Avenue Entertainment, LLC. Mr. McClary has a right to use the

Commodores name.62. Promotional materials and bookings have always been represented as Commodores

Featuring Thomas McClary.

63. Fifth Avenue Entertainment, LLC and Thomas McClary have no t represented The

Commodores Featuring Thomas McClary as the current Commodores band.

64. Mr. McClary has a website: thomasmclary.com. Mr. McClary identifies himself as the

founder of the Commodores. He does not claim to be the Grammy Award winning

Commo dores. Further, he discloses that his band is The New 2014 Commodores


65. Mr. McClary has a Facebook page of The Commodores Featuring Thomas McClary.

66. Mr. McClary uses his own distinct logo for The Commodores Featuring Thomas

McClary.

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FIRST CLAIM FOR RELIEF

TRADEMARK INFRINGEMENT UNDER THE LANHAM ACT 32, 15 U.S.C. 1114

(THOMAS McCLARY v. COMMODORES ENTERTAINMENT CORP, COMMODOREENTERTAINMENT CORP. )

67. Third Party Plaintiff Thomas McClary incorporates paragraphs 1-66 in this Third Party

Complaint as if set more fully herein.

68. Mr. McClary has a valid common law trademark in the mark The Commodores based

on his prior use in commerce as early as 1968.

69. The Commodore s mark identifies the music, sound and entertainment servic es

developed and provided by all members of the group, including Thomas McClary. The

individual members of the group controlled the quality and nature of the Commodores

sound. Therefore, these individuals each own the common law trademark.

70. Mr. McClary has used the trademark continuously through receipt of royalties,

performances for church organizations and through participation, performances and

collaboration with William King, Walter Orange, J.D. Nicholas and Ronald LaPread.

71. Mr. McClary has enforceable rights in "The Commodores" trademark.

72. Commodores Entertainment Corp. and Commodore Entertainment Corp.s wrongful use

of the name The Commodores comprises an infringement of Mr. McClary's common

law trademark "The Commodores" and is likely to cause confusion, mistake and

deception of the public as to the identity and origin of Mr. McClary's commercial

activities, causing irreparable harm to Mr. McClary to which there is no adequate remedy

at law.



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73. By reason of the foregoing acts, Commodores Entertainment Corp. and Commodore

Entertainment Corp. are liable to Mr. McClary for Trademark Infringement.

74. Thomas McClary has had to retain an attorney to prosecute this action; therefore, Thomas

McClary is entitled to attorneys' fees.

75. Wherefore, Thomas McClary prays for such relief as set forth below.

SECOND CLAIM FOR RELIEF

UNFAIR COMPETITION UNDER LANHAM ACT 43 15 U.S.C. 1125(a)

(THOMAS MCCLARY v. COMMODORES ENTERTAINMENT CORP, COMMODOREENTERTAINMENT CORP.)



77. The current Commodores currently use the names and likenesses of Thomas McClary,

Lionel Richie, Ronald LaPread, Milan Williams, Walter Orange, and William King to

promote the band. This includes social media sites like Facebook.

78. The use of the original Commodores members names and likenesses and claims that the

hit songs of the 1970's originated from the current band is a false designation of origin,

false or misleading description of fact.

79. This false designation of origin and false or misleading representation of fact is likely to

cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or

association of such person with another person, or as to the origin, sponsorship, or

approval of his or her goods, services, or commercial activities by another person.

80. This commercial advertising and/or promotion misrepresents the nature, characteristics,

qualities, of the current Commodores group as other person's goods, services, or



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commercial activities, namely the original members of The Commodores including

Mr. McClary.

81. Commodores Entertainment Corp. and Commodore Entertainment Corp. have published,

printed, displayed or otherwise publicly used Mr. McClary's name, photograph, or other

likeness to promote and identify the current Commodores Band.

82. The Commodores do not have Mr. McClarys permission to use his name or likeness in

advertising the current group. Mr. McClary did not given written or oral consent to such

use.

83. Commodores Entertainment Corp. and Commodore Entertainment Corp.s use of Mr.McClary's mark to promote, market and sell its products or services in direct competition

with Mr. McClary's goods and services is likely to cause confusion, mistake and

deception among consumers.

84. Commodores Entertainment Corp. and Commodore Entertainment Corp.s unfair

competition has caused and will continue to cause damage to Mr. McClary, and is

causing irreparable harm to Mr. McClary for which there is no adequate remedy at law.

85. By reason of the foregoing acts, Commodores Entertainment Corp. and Commodore

Entertainment Corp. are liable to Mr. McClary for Trademark Infringement.


McClary is entitled to Attorneys' fees.


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THIRD CLAIM FOR RELIEF

PASSING OFF - SECTION 43(a)


88. Third Party Plaintiff incorporates paragraphs 1-66 of this Third Party Complaint as if set

more fully herein.

89. The current Commodores currently use the names and likenesses of Thomas McClary,

Lionel Richie, Ronald LaPread, Milan Williams, Walter Orange, and William King to

promote the band. This includes social media sites like Facebook.

90. The current Commodores with the Mean Machine group also advertises themselves

as the originators of the hit songs like Three Times a Lady and Brick House.

91. By marketing The Commodores band using the names, likeness, songs, goods and

services of Thomas McClary, Lionel Richie, Ronald LaPread, Milan Williams, with

Walter Orange and William King, in interstate commerce, Commodores Entertainment

Corp. and Commodore Entertainment Corp. are passing off their goods and services to

the public as if they are the original group The Commodores.

92. As a result of Commodores Entertainment Corp. and Commodore Entertainment Corp.s

conduct, members of the public will and have been reasonably deceived and/or confused

into believing that by going to a concert held by The Commodores they are going to see

all of the original Commodores, or that Thomas McClary and other band members have

permitted The Grammy Award winning Commodores to use their names and likeness

to promote their band.



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93. Mr. McClary is damaged by such deception as it negatively impacts his ability to

distribute, market or otherwise exploit his products and musical performances as "The

Commodores Featuring Thomas McClary" and subjected him to consumer confusion.




FOURTH CLAIM FOR RELIEF

DILUTION BY TARNISHMENT 15 U.S.C. 1125(c) (2)(C)

(THOMAS MCCLARY V. COMMODORES ENTERTAINMENT CORP., COMMODOREENTERTAINMENT CORP., WILLIAM KING and WALTER ORANGE)

96. Third Party Plaintiff incorporates paragraphs 1-66 in this Third Party Complaint as if set

more fully herein.

97. On or about September 24, 2014, The Commodores with the Mean Machine performed

at Epcot Center. The group promoted themselves as The Commodores Known for their

song "Three Times A Lady". The current Commodores are not known for the song

Three Times a Lady. The song was written by Lionel Richie when he was a member of

the original Commodores.

98. The Commodores were always a wholesome professional group, and presented

themselves to the public in that m anner. The current group performing as The

Commodores and The Commodores with the Mean Machine continue to exploit the

mark and goodwill of the original Commodores band.

99. The current group performing as The Commodores is tarnishing the mark and goodwill

of the band. On or about September 23, 2014, The Commodores and the Mean



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Machine performed live at Epcot Center in Orlando, Florida before an audience

comprised of mature adults and small children

100. Upon information and belief, the group introduce d themselves as The Commodores and

the Mean Machine. At the end of the show, Walter Orange, while throwing t -shirts to

the crowd, made a statement about funk and proceed to wipe his sweaty armpits with

a t-shirt - yelling something to the effect you want tome funk and threw the sweaty t -

shirt into the audience. This was unsavory conduct that shed a negative light on the

Commodores name.

101. Upon information and belief, during a show at Epcot Center, Walter Orange narratedwhat the group had learned from Mickey Mouse while William King and two of the band

members proceeded to walk/hop and grind (sexual rotation of the hips) as a

demonstration of what they learned from Mickey.

102. This conduct is inappropriate and tarnishes The Commodores mark.

103. Third Party Defendants Commodores Entertainment Corp., Commodore Entertainment

Corp., William King and Walter Orange have tarnished the famous Commodores mark

by portraying it in an unwholesome and unsavory context during the above described

performances(s) at Epcot Center.

104. This conduct is dilution by tarnishment as the mark loses its ability to serve as a

wholesome identifier of The Commodores Featuring Thomas McClary or any of Mr.

McClarys product s using the Commodores mark.

105. The result of Third Party De fendants conduct is that the public will associate the lack of

prestige in the Commodores Entertainment Corp., William King, and Walter Oranges

goods with Mr. McClarys unrelated goods as The Commodores Featuring Thomas



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McClary.

106. Mr. McClary is damaged by such conduct as it negatively impacts the wholesome

identity of his goods, and his ability to distribute, market or otherwise exploit his

products and musical performances as "The Commodores Featuring Thomas McClary".


McClary is entitled to Attorneys' fees pursuant to 15 U.S.C.A. 1117.


FIFTH CLAIM FOR RELIEF

COMMON LAW TRADEMARK INFRINGEMENT (THOMAS MCCLARY v. COMMODORES ENTERTAINMENT CORP, COMMODORE

ENTERTAINMENT CORP.)



110. Since Mr. McClary's senior use of "The Commodores" mark, Mr. McClary has used the

mark continually in commerce.



Thomas McClary".

112. Mr. McClarys perf ormances included performances for numerous churches and

charities performing The Commodores hit song Jesus Is Love among other well known

Commodore songs.

113. McClary further performed for Shepherds Hope a nonprofit medical facility, whose

fundraising was spearheaded by a well known former coach for the Orlando Magic, every



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year as The Commodores featuring Thomas McClary since 2001.

114. Mr. McClary currently performs as Commodores Featuring Thomas McClary under

his own name and Fifth Avenue Entertainment, LLC. Mr. McClary claims a right to use

the Commodores name since 1968.

115. Promotional materials and bookings have always been represented as Commodores

Featuring Thomas McClary, or The New 2014 Commodores Featuring Thomas

McClary.

116. Fifth Avenue E ntertainment, LLC and Thomas McClary have not represented The

Commodores Featuring Thomas McClary as the current Commodores band.117. Mr. McClary has a website: thomasmclary.com. Mr. McClary identifies himself as the

founder of the Commodores. He does not claim to be the Grammy Award winning

Commodores. Further, he discloses that his band is The New 2014 Commodores


118. Mr. McClary has a Facebook page of The Commodores Featuring Thomas McClary.

119. Mr. McClary uses his own distinct logo for The Commodores Featuring Thomas

McClary.

120. As a result of such use, the mark is associated with Mr. McClary as the founder,

songwriter, and performer, arranger of The Commodores band that acquired significant

fame in the United States and throughout the world. Mr. McClary's common law

ownership in the mark and the goodwill are valuable assets. Mr. McClary has an

enforceable right in the trademark.

121. By using the mark "The Commodores" after Mr. McClary's first use in commerce,

Commodores Entertainment Corp. and Commodore Entertainment Corp. have infringed



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and continue to infringe on Mr. McClary's common law mark.

122. Commodores Entertainment Corp. and Commodore Entertainment Corp.s use of The

Commodores mark with the names and likenesses of the original band members,

including Thomas McClary, upon information and belief have resulted and will continue

to result in consumer confusion.

123. Commodores Entertainment Corp. and Commodore Entertainment Corp. do not have

Mr. McClary's permission to use his common law mark.

124. As a direct and proximate result of Commodores Entertainment Corp. and Commodore

Entertainment Corp.'s actions, Mr. McClary has been damaged and will continue to bedamaged.




SIXTH CLAIM FOR RELIEF

CANCELLATION OF REGISTERED TRADEMARKS




128. William King signed the application for trademarks that were filed on behalf of

Commodore Entertainment Corp. with the United States Patent and Trademark Office. In

the applications for the trademarks, William King made false representations regarding a

material fact, namely that there were no other individuals with rights to the trademark and



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that a corporation Commodore Entertainment Corp. was a valid Nevada corporation

that owned the mark.

129. Mr. King knew the statement was false as he knew that each individual member of The

Commodores, including Mr. McClary had each used the The Commodores mark since

1968 and had not relinquished or discontinued that use. Further, Mr. King, as president

and director of Commodores Entertainment Corp. knew there was no Nevada

corporation Commodore Entertainment Corp.

130. Mr. King made the misrepresentations on behalf of Commodores Entertainment Corp.

with the intent to induce reliance on the misrepresentation.131. Upon information and belief the United States Patent and Trademark examiner did

reasonably rely on the misrepresentations and issued a trademark registrations for the

marks.

132. Mr. McClary did not authorize registration of his common law mark by Commodore

Entertainment Corp. As a direct and proximate result of the misrepresentations, Mr.

McClary has suffered damages.




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SEVENTH CLAIM FOR RELIEF

COMMERCIAL MISAPPROPRIATION OF LIKENESS AND IDENTITY F.S.A 540.08

(RIGHT OF PUBLICITY)

(THOMAS MCCLARY V. COMMODORES ENTERTAINMENT CORP, COMMODOREENTERTAINMENT CORP. )

135. Third Party Plaintiff Thomas McClary incorporates paragraphs 1-66, 77-86, 89-93 in this

Third Party Complaint as if set more fully herein.

136. The current Commodores curren tly use the name and likeness of Thomas McClary and

other original band members to promote the band. This includes social media sites like

Facebook.

137. Commodores Entertainment Corp. and Commodore Entertainment Corp. have published,

printed, displayed or otherwise publicly used Mr. McClary's name, photograph, or other

likeness to promote and identify the current Commodores Band.

138. The Commodores do not have Mr. McClarys permission to use his name or likeness in

advertising the current group.

139. As a direct and proximate result of Commodores Entertainment Corp. and Commodore

Entertainment Corp.s actions, Mr. McClary has been damaged and will continue to be

damaged


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EIGHTH CLAIM FOR RELIEF

REQUEST FOR DECLARATORY RELIEF 28 U.S.C. 2201(a)

(THOMAS MCCLARY V. COMMODORES ENTERTAINMENT CORP. AND COMMODOREENTERTAINMENT CORP.)



142. An immediate and actual controversy exists over Mr. McClary's ownership rights to "The

Commodores" mark.

143. Plaintiff Commodores Entertainment Corporation (CEC) claims that Mr. McClary has no

right to use The Commodores Mark.

144. Mr. McClary began using the Commodores name and mark in commerce in 1968.

145. Mr. McClary has never sold, assigned, abandoned or otherwise relinquished his

individual ownership interest in the Commodores trademark .

146. In 1984, Mr. McClary stopped performing with The Commodores.



Thomas McClary". Mr. McClarys performances included performances for numerous

churches and charities performing The Commodores hit song Jesus Is Love among

other well known Commodore songs. McClary further performed for Shepherds Hope

a nonprofit medical facility whose fund-raising was spearheaded by a well known former

coach for the Orlando Magic, every year as The Commodores featuring Thomas

McClary since 2001.

148. Mr. McClary is a core member of The Commodores as inducted in the Rock and Roll



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Hall of Fame in 2003.

149. Mr. McClary has appeared with The Commodores at several performances during 2006 -

2013, including but not limited to live performances on July 17 and 17, 2010 in

Bettendorf, Iowa and Santa Fe, New Mexico.

150. Mr. McClary has participated in the business affairs of The Commodores, including

meeting with Ronald LaPread, J.D. Nicholas, Walter Orange and David Fish met in

Atmore, Alabama to discuss putting together a new Commodore album of original songs

with Mr. McClary, Mr. LaPread, Mr. King, Mr. Orange, and Mr. Nicholas.

151. Later the group held a recording session at Mr. McClarys home and studio in Orlando,Florida and recorded the song America which Mr. McClary had written.

152. Thomas McClary also contributed to the process of selecting original songs to start the

recording process of a new album and to reunite the original five Commodores in hope of

getting Lionel Richie to eventually join.

153. On July 6, 2011 and Friday, July 8, 2011 William King and David Fish contacted Mr.

McClary regarding organizing a conference call to vote on whether they would use the

auditor, Greg McBowman, who Mr. McClary recommended to lead an audit of the

Commodores record label Motown/Universal Music.

154. David Fish continued to correspond in group e-mails with Thomas McClary, Ronald

LaPread, Walter Orange, William King, J.D. Nicholas, and William King in 2012.

155. Since 1975, Mr. McClary has continually received quarterly royalty payments for his

membership in The Commodores.

156. Mr. McClary alleges that he has senior rights to the mark The Commodores by his



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prior use, and he has not abandoned, or intended to abandon, his mark.

157. Wherefore, Thomas McClary prays that this Court declare that Mr. McClary as senior

user of "The Commodores" mark has common law rights to the mark over any rights to

the mark claimed by Commodores Entertainment Corp. or Commodore Entertainment

Corp.

NINTH CLAIM FOR RELIEF

VIOLATION OF FLORIDA'S DECEPTIVE AND UNFAIR TRADE PRACTICES ACT

FLA. STAT. 501.201 et seq .

(THOMAS MCCLARY v. COMMODORES ENTERTAINMENT CORP. AND COMMODOREENTERTAINMENT CORP.)

158. Third Party Plaintiffs incorporate paragraphs 1-66 in this Third Party Complaint as if set

more fully herein.

159. As alleged fully above, (i.e. allegations contained in claims 2, 3, 4, 5, 6, 7 and 8), Third

Party Defendants Commodores Entertainment Corp. and Commodore Entertainment

Corp. use of the Commodores mark in promotion of its goods and services, including

live musical performances is unfair competition as defined under the Florida Deceptive

and Unfair Trade Practices Act.

160. The conduct includes Third Party Defendants Commodores Entertainment Corp. and

Commodores Entertainment Corp.s infringement on Mr. McClarys trademark, engaging

in unfair competition, passing off the goods and services of the original Commodores

band as their own, fraud in trademark application, diluting the mark through tarnishment

and unsavory acts, and violating Mr. McClarys right of publicity.

161. By engaging in the acts described above, Third Party Defendants Commodores



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Entertainment Corp. and Commodore Entertainment Corp have engaged in unfair

methods of competition and unfair and deceptive acts practices in the conduct of trade or

commerce.

162. As a direct and proximate result of Third Party Defendants actions, Mr. McClary and

Fifth Avenue Entertainment, LLC have been damaged and will continue to be damaged.

163. Thomas McClary seeks a declaratory judgment that Third Party Defendants Commodores

Entertainment Corp. and Commodore Entertainment Corp.s conduct violates the Florida

Deceptive Use and Unfair Trade Practices act

164. Third Party Defendants Commodores Entertainment Corp. and CommodoresEntertainment Corp. have caused, and unless enjoined by the Court, will continue to

cause Thomas McClary irreparable harm.

165. Thomas McClary is entitled to recover actual damages, plus attorney's fees and court

costs as provided in FLA. STAT. 501.2105

166. In conducting such acts, Third Party Defendants Commodores Entertainment Corp. and

Commodore Entertainment Corp. acted with malice or disregard for Third Party

Plaintiffs rights, therefore, Third Party Plaintiff is entitled to punitive damages .


TENTH CLAIM FOR RELIEF

DEFAMATION/BUSINESS DISPARAGEMENT

(THOMAS MCCLARY and FIFTH AVENUE ENTERTAINMENT, LLC v. ALL THIRD PARTY

DEFENDANTS )

168. Third Party Plaintiffs incorporate paragraphs 1-66 in this Third Party Complaint as if set



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more fully herein.

169. In or about June, 2014 Third Party defendants David Fish, Walter Orange, William King,

individually and on behalf of Commodores Entertainment Corporation, Commodores

Entertainment Corp, Commodore Entertainment Corp., and Third Party Defendants Sal

Micaels and Pyramid Entertainment contacted West Hampton Beach Performing Arts

Center (WHBPAC) and misrepresented that Mr. McClary did not have the right to use

the mark The Commodores.

170. On or about August, 2014, Third Party Defendants through its agents, including but not

limited to, David Fish and Matt Santos sent an email blast to booking agents in the U.S.and Europe falsely stating that Walter Orange and William King were the only owners of

the "Commodores" mark and that Fifth Avenue Entertainment and Thomas McClary had

no right to use the Commodores name. Third Party Defendants and their agents continue

to make these false statements. Specific booking agents who received this e-mail

included Carlos Keyes in the United States and Italian promoter Luigi Sidero.

171. The statements in paragraphs 169-171 were false.

172. Third Party Defendants knew aforementioned the statements were false.

173. The aforementioned statements have damaged Mr. McClary's personal reputation and the

business reputation of Fifth Avenue Entertainment, LLC.

174. As a direct and proximate result of Third Party Defendants actions , Mr. McClary and


175. In conducting such acts, Third Party Defendants acted with malice or disregard for Third

Party Plaintiff(s) rights, therefore, Third Party Plaintiffs are entitled to punitive damages

176. Third Party Plaintiffs have had to retain an attorney to prosecute this action; therefore,



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they are entitled to Attorneys' fees.

177. Wherefore, Third Party Plaintiffs pray for such relief as set forth below.

ELEVENTH CLAIM FOR RELIEF

INTERFERENCE WITH PRESENT ECONOMIC ACTIVITIES


DEFENDANTS )


more fully herein.

179. On or about June, 2014, Fifth Avenue Entertainment entered into a contract with

WHBPAC for the performance of The Commodores Featuring Thomas McClary.

180. Fifth Avenue Entertainment instructed WHBPAC to use the name The Commodores

Featuring Thomas McClary on all advertising and promotion of the concert.

181. WHBPAC put Commodores on its marquee. Fifth Avenue Entertainm ent, LLC

instructed WHBPAC to change the marquee to The Commodores Featuring Thomas

McClary. WHBPAC did not have time or room on the marquee to change it.

182. Third Party defendants David Fish, Walter Orange, William King, individually and on

behalf of Commodores Entertainment Corporation, Commodores Entertainment Corp,

Commodore Entertainment Corp., and Third Party Defendants Sal Micaels and Pyramid

Entertainment Group knew that Thomas McClary and Fifth Avenue Entertainment had a

present business relationship with WHBPAC. The Third Party Defendants contacted

WHBPAC and misrepresented that Mr. McClary did not have the right to use the mark

The Commodores.



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183. Third Party Defendants David Fish, Walter Orange, William King, individually and on



Entertainment Group threatened legal action against WHBPAC if it did not cancel The

Commodores Featuring Thom as McClary performance.




Entertainment Group knew that Thomas McClary and Fifth Avenue Entertainment had acontract with WHBPAC.




Entertainment Group intended to interfere with Thomas McClary and Fifth Avenue

Entertainments business relationship with WHBPAC.




Entertainment Group interf ered with Thomas McClary and Fifth Avenue Entertainments

business relationship with WHBPAC, thus causing Thomas McClary and Fifth Avenue

Entertainment damages.

187. Prior to Thomas McClarys coming to New York for the performance at the WHBPAC,

James Birk, executive director of WHBPAC informed Mr. McClary that if the audience



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reception of the group was good, WHBPAC's standard policy is to automatically book

the act for the following year to come back . The Commodores Featuring Thomas

McClary tickets sales were sold-out or close to it and the group did two encores with

standing ovations for each.

188. After the show Thomas McClary inquired about the standard policy of the automatic

bookings to return, and Mr. Birk replied that he couldn't honor the policy to immediately

re-book The Commodores Featuring Thomas McClary. Mr. Birk told Mr. McClary he

needed to make sure WHBPAC would not encounter any legal action from CEC because

of the previous threats that he had gotten from CEC and statements from the Third PartyDefendants.




Party Plaintiff(s) rights ; therefore, Third Party Plaintiff(s) are entitled to punitive

damages.




///

///

///



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TWELFTH CLAIM FOR RELIEF

INTERFERENCE WITH PROSPECTIVE ECONOMIC ACTIVITIES


DEFENDANTS )


more fully herein.

194. Thomas McClary and Fifth Avenue Entertainment, LLC had future economic and/or

contractual relationships with booking agents and venues for live performances in 2015.

195. On or about August, 2014, Third Party Defendants through its agents, including but not

limited to, David Fish and Matt Santos caused an email blast to be sent to booking agents

in the U.S. and Europe falsely stating that Walter Orange and William King were the

only owners of the "Commodores" mark and that Fifth Avenue Entertainment and

Thomas McClary had no right to use the Commodores name. Specific booking agents

who received this e-mail included Carlos Keyes in the United States and Italian promoter

Luigi Sidero.

196. This email blast went throughout the talent buyers in the industry. It was forwarded to

Carlos Keyes by a few different buyers. The email says that if Pyramid hears of a show

announced or advertised for Thomas McClary using the Commodores name, they will

have their legal team contact them. That scared off many buyers. Mr. Keyes was talking

to many buyers at the time. The e-mail caused a major decline in the interest in booking

Mr. McClary.

197. Mr. McClary and Fifth Avenue Entertainment, LLC had a prospective economic

relationship to appear at the Tampa Bay Black Heritage Festival event in January, 2015.



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Mr. Keyes spoke to the event buyer who was 100% interested in have The Commodores

featuring Thomas McClary perform at the event on January 2015. The fee would have

been around $25K to $30K. A few days later, Mr. Keyes called and spoke to William

Sanders about booking for this event. Mr. Sanders said that someone on the committee

received Pyramid's email and they are no longer interested in presenting The

Commodores Featuring Thomas McClary at the festival.

198. The "Email from David Fish was also forwarded Carlos Keyes from an Italian promoter

Luigi Sidero. Mr. Sidero was adding shows in Europe to coincide with the UK tour

shows Mr. Keyes had booked for Thomas McClary. Mr. Sidero was going to book two(2) shows in Italy in February, 2015 at $25K each and add shows in Austria. Mr. Sidero

received this email from George Lietner who sent the email from David Fish. Because of

the e-mail, Mr. Sidero did not book the shows.




Entertainment Group knew that Thomas McClary and Fifth Avenue Entertainment had

prospective business relationships with their own booking agent, Carlos Keyes, and other

booking agents in the United States and Europe.



Commodore Entertainment Corp., threatened legal action against Carlos Keyes if he did

not cease and desist from booking The Commodores with Thomas McClary for future



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live performances.



and Commodore Entertainment Corp., have interfered with Thomas McClary and Fifth

Avenue Entertainments prospective business opportunities, as Fifth Avenue

Entertainments ability to secure certain live appearances by The Commodores

Featuring Thomas McClary has declined.

202. On or about June 10, 2014, Fifth Avenue Entertainment, through its counsel Beryl

Thompson-McClary sent CEC a cease and desist letter.203. Third Party defendants David Fish, Walter Orange, William King, individually and on


and Commodore Entertainment Corp., and Sal Micaels and Pyramid Entertainment

Group continue to contact prospective booking agents and venues with the intent to

interfere with Fifth Avenue Entertainments business.




Party Pl aintiff(s) rights ; therefore, Third Party Plaintiff(s) are entitled to punitive

damages






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THIRTEENTH CLAIM FOR RELIEF

BREACH OF DUTY OF LOYALTY AND UTMOST GOOD FAITH

(THOMAS MCCLARY v. WILLIAM KING AND WALTER ORANGE)








York State.






into the Nevada cor poration Commodores Entertainment Corp.

214. Upon information and belief, the shareholders in Commodores Entertainment Corp.







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in Commodores Entertainment Corp..


217. Upon information and belief, Walter Orange and William King are also shareholders and

officers of Commodores Entertainment Corp.

218. William King is a director of Commodores Entertainment Corp.

219. Commodores Entertainment Corp. is a close corporation.

220. As shareholders and officers William King and Walter Orange owed a duty of loyalty and

utmost good faith to Thomas McClary.221. As a director, William King owes Thomas McClary a duty of loyalty and utmost good

faith.

222. By committing the acts alleged herein, Mr. King and Mr. Orange have breached their

duties of loyalty and utmost good faith to Mr. McClary. The breaches include, but are not

limited to:

a. Denying Mr. McClarys lawful rig ht to use the Commodores trademark;

b. Denouncing Mr. McClarys rights as a shareholder in the corporation;

c. Failing to follow corporate formalities including shareholder meetings, keeping

minutes of meetings, and keeping Mr. McClary apprised of the business of the

corporation, including income, expenses, profits and losses;

d. Defaming Mr. McClary;

e. Interfering with Mr. McClarys business;

f. Performing as the Commodores in an unsavory and inappropriate manner which

tarnishes the Commodores name and reputation;



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g. Registering The Commodores mark with the United States Patent and

trademark Office under a false name and misrepresenting the ownership in the

mark.

223. The breaches are material.

224. Mr. McClary has asked that the breaches be cured.

225. As a direct and proximate cause of the breaches of duties of care and utmost loyalty, Mr.

McClary has suffered damages, and exact amount to be determined at trial.

226. In conducting such acts, Mr. King and Mr. Orange acted with malice or disregard for

Thomas McClar ys rights ; therefore, Thomas McClary is entitled to punitive damages.227. Thomas McClary has had to retain an attorney to prosecute this action; therefore, Mr.

McClary is entitled to attorneys fees.


FOURTEENTH CLAIM FOR RELIEF

BREACH OF FIDUCIARY DUTY

(THOMAS MCCLARY V. WILLIAM KING AND WALTER ORANGE)










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York State.






into the Nevada corporation Commodores Entertainment Corp.


included Lionel Richie, Thomas McClary, Walter Orange, Ronald LaPread, MilanWilliams, and William King.






238. William King is the President, Treasurer and Director of Commodores Entertainment

Corp.

239. Walter Orange is the Secretary of Commodores Entertainment Corp.

240. Commodores Entertainment Corp. is a close corporation.

241. As officers William King and Walter Orange owe a fiduciary duty to Thomas McClary.

242. As a director, William King owes a fiduciary duty to Thomas McClary.

243. By committing the acts alleged herein, Mr. King and Mr. Orange have breached their

duties to Mr. McClary. The breaches include, but are not limited to:



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a. Denying Mr. McClarys lawful right to use the Commodores trademark;

b. Denouncing Mr. McClarys rights as a shareholder in the corporation;

c. Failing to follow corporate formalities including shareholder meetings, keeping

minutes of meetings, and keeping Mr. McClary apprised of the business of the

corporation, including income, expenses, profits and losses;

d. Defaming Mr. McClary;

e. Interfering with Mr. McClarys business.

f. Performing as the Commodores in an unsavory and inappropriate manner which

tarnishes the Commodores name and reputation.g. Registering The Commodores mark with the United States Patent and

trademark Office under a false name and misrepresenting the ownership in the

mark.

244. The breaches are material.

245. Mr. McClary has asked that the breaches be cured.

246. As a direct and proximate cause of the breaches of duties of care and utmost loyalty, Mr.

McClary has suffered damages, and exact amount to be determined at trial.

247. In conducting such acts, Mr. King and Mr. Orange acted with malice or disregard for

Thomas McClarys rights ; therefore, Thomas McClary is entitled to punitive damages.

248. Thomas McClary has had to retain an attorney to prosecute this action; therefore, Mr.



///



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FIFTEENTH CLAIM FOR RELIEF

ACCOUNTING

(THOMAS MCCLARY v. COMMODORES ENTERTAINMENT CORP.)






was formed in New York State.253. On or about 1979, the corporation Commodores Fan Club, Inc. was formed in New

York State.






into the Nevada corporation Commodores Entertainment Corp.









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259. As a result of Mr. McClarys position as a shareholder, he is entitled to an accounting of

the income, expenses, loans to shareholders or others, retained earnings, dividends, assets

and liabilities of Commodores Entertainment Corp.

260. This accounting includes an examination by Mr. McClary or his agent of the

corporations financial and corporate books and records including but not limited to

contracts, balance sheets, income statements, profit and loss statements and tax returns.

261. Upon information and belief, Commodores Entertainment Corp. has failed to maintaincorporate formalities, including meetings, corporate minutes, or formal issuance of

shares.

262. Thomas McClary has never been provided with this information.

263. Wherefore, Thomas McClary prays that the Court order Commodores Entertainment

Corp. to allow Mr. McClary or his agent to examine the books and records of the

corporation and for an accounting of the income and expenses of the corporation.

264. Thomas McClary has had to retain an attorney to prosecute this action; therefore, Mr.



PRAYER FOR RELIEF

1. That Third Party Plaintiffs be awarded damages in excess of $100,000.00, the exact

amount of which will be determined at the time of trial.

2. That Third Party Defendants be ordered to pay to Third Party Plaintiffs a sum, the exact



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amount of which will be proven at the time of trial, for lost earnings, both past and future.

3. That Third Party Defendants be ordered to pay to Third Party Plaintiffs a sum, the exact

amount of which will be proven at the time of trial, for damage to Thomas McClarys reputa tion

and the business reputation of Fifth Avenue Entertainment, LLC.

4. That the Court order Commodores Entertainment Corp. to provide Mr. McClary with an

accounting and to permit the examination by Mr. McClary (or his agent) of Commodores

Entertainment Co rp.s books and records.

5. That the Court declare that Thomas McClary as senior user of "The Commodores" mark

has common law rights to the mark senior to the rights claimed by Commodores EntertainmentCorp. and Commodore Entertainment Corp.

6. That the Court cancel U.S. Trademark Registration Numbers 2424689, 2424686,

2497958, and 2490360.

7. That in the alternative, the Court rectify the aforementioned U.S. Trademark

Registrations to reflect the true ownership of the marks, including naming Thomas McClary as a

rightful owner.

8. That Third Party Plaintiffs be awarded the attorney's fees and court costs incurred in the

prosecution of this Third Party Complaint.

9. That Third Party Plaintiffs be awarded punitive damages in an amount the exact amount

of which will be determined at the time of trial for punitive damages.

10. And, that the Third Party Plaintiffs be awarded such other and further relief as the court

may deem just and equitable in the premises.

///

///



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Dated October 13, 2014. BY /s/ Marie Mirch

Marie MirchMirch Law Firm, LLP750 B Street #2500

San Diego, CA 92101(619) 501-6220Counsel for Defendants/Counterclaimants/Third Party Plaintiffs



43/43

YERIFICATION

I Thomas McClary individually and on hehalf of Fifth Avenue Entertainmentveriry and swear under penalty of perjtrry rmder thre laws of the United States and State ofFlori@ that the foregoing is true and correct with the exception of those allegationsmade.rr4rurinftmatinn and-heJicf wlirJrlhay.e.a guylfrifh-hefieftohetnre..

Executed tfrirft tU day of Octotx:r zIl4.


commodores third amended complaint.pdf

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