[DO NOT PUBLISH]

In the

United States Court of Appeals

For the Eleventh Circuit

____________________

No. 22-10188

Non-Argument Calendar

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COMMODORES ENTERTAINMENT CORPORATION, 

Plaintiff-Counter

Defendant-Third Party

Defendant-Appellee,

versus

THOMAS MCCLARY,

FIFTH AVENUE ENTERTAINMENT, LLC, 

Defendants-Counter

Claimants-Third Party 

Plaintiffs-Appellants,

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2 Opinion of the Court 22-10188

DAVID FISH,

an individual,

WILLIAM KING,

an individual,

WALTER ORANGE,

an individual

DOES 1 - 100,

Third Party Defendants.

____________________

Appeal from the United States District Court

for the Middle District of Florida

D.C. Docket No. 6:14-cv-01335-RBD-GJK

____________________

Before WILSON, LUCK, and MARCUS, Circuit Judges.

MARCUS, Circuit Judge:

This is the fourth appeal in a protracted battle about the 

ownership of the name of a famous band brought by Commodores 

Entertainment Corporation (“CEC”) against Thomas McClary and 

his company, Fifth Avenue Entertainment, LLC (“McClary”). This 

time around, McClary appeals two district court orders: one awarding CEC substantial attorney’s fees, and another denying 

McClary’s motion to modify the scope of a permanent injunction. 

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22-10188 Opinion of the Court 3

After careful review, and in light of the Supreme Court’s recent 

opinion in Abitron Austria GmbH v. Hetronic International, Inc., 

143 S. Ct. 2522 (2023), we vacate and remand both orders.

I. 

 We have discussed the facts surrounding this case at length

elsewhere. See Commodores Ent. Corp. v. McClary, 648 F. App’x 

771 (11th Cir. 2016) (“Commodores I”); Commodores Ent. Corp. 

v. McClary, 879 F.3d 1114 (11th Cir.) (“Commodores II”), cert. denied, 139 S. Ct. 225 (2018); Commodores Ent. Corp. v. McClary, 

822 F. App’x 904 (11th Cir. 2020) (“Commodores III”). Briefly, the 

parties have long fought over the ownership of the mark “The 

Commodores,” the name of a famous funk and soul band that rose 

to prominence in the 1970s and 1980s. McClary, an original member of the band, left in 1984 and later performed in a group that he 

called “The 2014 Commodores” or “The Commodores featuring 

Thomas McClary.” In 2014, CEC -- a corporation run by two of 

the original Commodores who remained active in the group -- sued 

McClary, raising a slew of trademark, false advertising, and unfair 

competition claims arising under the Lanham Act, 15 U.S.C. § 1051 

et seq., and state law. McClary responded with several counterclaims and third-party claims of his own.

Early on, the district court granted a motion by CEC for a 

preliminary injunction, barring McClary’s use of the mark. Then, 

when CEC filed a motion for clarification revealing that McClary 

was marketing a tour in Europe, the court held that the preliminary 

injunction order applied extraterritorially because use of the mark 

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overseas would have a negative impact on CEC, a U.S. corporation, and would continue to cause customer confusion in this country. Based on the prevailing law at the time, we affirmed the entry 

of preliminary injunctive relief, including its extraterritorial application. Commodores I, 648 F. App’x at 778.

Moving forward, the district court bifurcated the trial into

Phase I, addressing the trademark ownership rights, and Phase II,

addressing infringement, liability, and damages. Phase I ended 

with the entry of an order granting CEC’s motion for judgment as 

a matter of law -- before the jury was called upon to answer the 

question -- and converting the preliminary injunction into a permanent injunction. We affirmed. Commodores II, 879 F.3d at 1142.

In Phase II, the district court granted partial summary judgment in favor of CEC on its trademark infringement claim and 

summary judgment in favor of CEC on all of McClary’s counterclaims and third-party claims. Then, at a 2019 trial, a jury found 

that McClary had actual notice of CEC’s trademark registrations as 

of June 2009 and that CEC was entitled to damages equal to

McClary’s profits from seven musical performances in Europe.

The district court also denied a motion by McClary to modify the 

permanent injunction so that it would no longer include Mexico, 

New Zealand, and Switzerland because McClary had obtained exclusive licenses for the mark in those countries. Again, a panel of 

this Court affirmed. Commodores III, 822 F. App’x at 915.

After all that, CEC moved for attorney’s fees and costs under 

§ 1117(a) of the Lanham Act. The district court referred the matter 

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to a magistrate judge, who determined in a Report and Recommendation (“R&R”) that CEC was entitled to fees and costs because the case was “exceptional” under § 1117(a). The magistrate 

judge instructed CEC to submit updated information about its fees 

and costs and then issued a second R&R, calculating attorney’s fees 

to be $602,618.67 and costs to be $4,560.56. Over the objections of 

McClary, the district court adopted both R&Rs in full. 

 While the supplemental order on attorney’s fees was pending, McClary moved to modify the scope of the permanent injunction under Federal Rules of Civil Procedure 60(b)(5) and (b)(6). 

McClary argued that he had received a trademark registration of 

“The Commodores” from the European Union, so the district 

court should modify the injunction to allow him to use the mark 

throughout the European Union. The district court denied this

motion too because: (1) the application, which was filed more than

five years after the entry of the permanent injunction, was untimely under Rule 60(c)(1); and (2) even if the motion were timely, 

it failed on the merits. Applying this Circuit’s precedent interpreting Steele v. Bulova Watch Co., 344 U.S. 280 (1952), the trial court 

concluded that McClary and his LLC were U.S. citizens, that their

activity had a substantial effect in the United States, and that the 

worldwide injunction did not infringe on the sovereignty of the European Union, so it upheld the worldwide scope of the injunction.

II. 

At this stage of the case’s prolonged history, McClary is appealing the district court’s order awarding CEC attorney’s fees and 

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its order denying his request for a modification of the scope of the 

permanent injunction. However, before we could reach the merits 

of the appeal, the Supreme Court decided Abitron, which altered 

the law in some measure surrounding “the foreign reach of 15 

U.S.C. § 1114(1)(a) and § 1125(a)(1),” two provisions of the Lanham 

Act. 143 S. Ct. at 2527. In that case, a manufacturer of radio remote 

controls, Hetronic, sued a foreign distributor, Abitron, under § 

1114(1)(a) and § 1125(a)(1) for “Abitron’s infringing acts worldwide.” Id. A jury awarded Hetronic damages, and the district court 

“entered a permanent injunction preventing Abitron from using 

the marks anywhere in the world.” Id. After the Tenth Circuit 

largely affirmed the judgment, the Supreme Court granted certiorari and reversed, holding that § 1114(1)(a) and § 1125(a)(1) “are not 

extraterritorial and that they extend only to claims where the 

claimed infringing use in commerce is domestic.” Id. 

Notably, the same Lanham Act provisions at issue in Abitron

are implicated in the case before us. Thus, following Abitron, we 

asked the parties to brief its impact here. CEC responded that 

Abitron did not affect the district court’s orders since the focus of 

the permanent injunction was primarily domestic and the attorney’s fees determination was based on McClary’s long history of a 

variety of unreasonable litigation tactics. McClary, for his part, 

claimed that both orders must be vacated because the injunction is

aimed mostly at his foreign conduct, and because CEC is no longer 

entitled to attorney’s fees now that Abitron has vindicated his litigation position all along. So, as we see it, the parties’ current 

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dispute raises several new factual questions. And importantly, they 

disagree on whether the injunction is targeting domestic and/or 

foreign conduct, and on how this discrepancy might fare under 

Abitron, which restricted the Lanham Act’s reach over foreign conduct. Because the resolution of the issues in front of us may require

further factfinding, we are not inclined to tackle them in the first 

instance. Pullman–Standard v. Swint, 456 U.S. 273, 291–92 (1982) 

(“[F]actfinding is the basic responsibility of district courts, rather 

than appellate courts.” (alteration in original) (quotations omitted)); E.E.O.C. v. Joe’s Stone Crab, Inc., 220 F.3d 1263, 1286 (11th 

Cir. 2000) (“We therefore abide by the general rule of law that a 

remand is the proper course unless the record permits only one 

resolution of the factual issue.” (quotations omitted)). Instead, we 

believe the wiser course is to give the district court the first opportunity to reconsider both the extraterritorial application of the injunction and its attorney’s fees determination, taking into account 

the Supreme Court’s new case law. 

Accordingly, we vacate and remand so that the district court 

can revisit its latest two orders in light of the Supreme Court’s decision in Abitron.

VACATED AND REMANDED. 

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