Post‑Abitron, Narrowing an Injunction Does Not Strip Prevailing‑Party Status or Preclude Exceptional‑Case Fees Under § 1117(a)

Introduction

In this unpublished per curiam decision, the Eleventh Circuit confronted a recurring question in Lanham Act litigation after the Supreme Court’s decision in Abitron Austria GmbH v. Hetronic Int’l, Inc.: What becomes of fee awards and “prevailing party” status when a district court narrows a previously issued worldwide injunction to account for Abitron’s limits on the Act’s extraterritorial reach?

The dispute arises out of the long‑running battle over the mark “The Commodores,” the legendary funk and soul band name. Commodores Entertainment Corporation (CEC), controlled by original members William King and Walter Orange, sued former original member Thomas McClary and his company, Fifth Avenue Entertainment, LLC, for trademark infringement and related Lanham Act claims after McClary began performing as “The 2014 Commodores” or “The Commodores featuring Thomas McClary.” Over a decade, the district court issued preliminary and permanent injunctions, the case was bifurcated for trial on ownership and then liability/damages, and the court ultimately awarded CEC attorneys’ fees and costs under 15 U.S.C. § 1117(a).

While an earlier appeal of the injunction and fee award was pending, the Supreme Court decided Abitron, which narrowed the Lanham Act’s foreign reach. The Eleventh Circuit remanded for the district court to reassess the injunction and fees in light of Abitron. On remand, the district court “slightly” modified the injunction to exclude purely extraterritorial use (e.g., performances abroad) but maintained relief aimed at domestic “use in commerce,” including use by McClary’s New York‑based booking agent and a U.S. performance, and reinstated the fee award. In this fifth trip to the Eleventh Circuit, McClary challenged only the attorneys’ fee award. The court affirmed.

Summary of the Opinion

The Eleventh Circuit held that the district court did not abuse its discretion in awarding attorneys’ fees and costs to CEC as the “prevailing party” in an “exceptional” case under § 1117(a). Key points:

CEC remains the prevailing party notwithstanding the injunction’s post‑Abitron narrowing, because CEC owns the U.S. marks, obtained a jury award grounded in domestic infringement, and the injunction continues to bar domestic “use in commerce,” including use by McClary’s American agent and one U.S. performance.
The case is “exceptional” under the Octane Fitness standard (applied to Lanham cases in Tobinick v. Novella) due to the substantive weakness of McClary’s positions and the unreasonable manner in which he litigated, including repeated violations of the court’s orders and specious defenses (e.g., “fair use,” a typographical error theory, and rebranding as “Commodores Experience”).
Abitron did not undermine the fee award because the exceptional‑case finding turned on domestic infringing conduct and litigation conduct unrelated to extraterritoriality, and the injunction was only “slightly” modified to exclude purely foreign performances.

The court therefore affirmed reinstatement of fees ($602,618.67) and costs ($4,560.56).

Analysis

Precedents Cited and Their Influence

Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014): The Supreme Court defined “exceptional” under a materially identical Patent Act fee provision to mean a case that “stands out” based on the strength of a party’s position or the unreasonable manner of litigation, assessed under the totality of circumstances, including frivolousness, motivation, objective unreasonableness, and the need for compensation and deterrence. The Eleventh Circuit applies this standard to § 1117(a) fee awards in Lanham cases.
Tobinick v. Novella, 884 F.3d 1110 (11th Cir. 2018): The court applied Octane Fitness to the Lanham Act, reaffirmed abuse‑of‑discretion review, and upheld an “exceptional case” finding where a party engaged in vexatious litigation tactics. Here, the Eleventh Circuit analogized McClary’s persistent, unreasonable litigation conduct and disregard of court orders to the vexatiousness in Tobinick.
Verisign, Inc. v. XYZ.COM LLC, 891 F.3d 481 (11th Cir. 2018): Confirmed abuse‑of‑discretion review of fee awards and that reversal requires an error of law or a clearly erroneous factual finding. This framed the deference given to the district court’s reinstated fee award.
Fireman’s Fund Ins. Co. v. Tropical Shipping & Constr. Co., 254 F.3d 987 (11th Cir. 2001): A party need not prevail on all issues to be a “prevailing party.” The court relied on this to reject the argument that post‑Abitron narrowing of the injunction stripped CEC of prevailing‑party status.
Abitron Austria GmbH v. Hetronic Int’l, Inc., 600 U.S. 412 (2023): Limited the foreign reach of Lanham Act §§ 1114(1)(a) and 1125(a)(1). On remand, the district court conformed the injunction by excluding “purely extraterritorial” use, but found ongoing domestic “use in commerce” (including the U.S. booking agent’s activities and a U.S. performance) still actionable. The Eleventh Circuit’s fee analysis treated these domestic acts as sufficient to maintain prevailing‑party status and to support the exceptional‑case finding.
The Commodores appellate trilogy and remand:
- Commodores I, 648 F. App’x 771 (11th Cir. 2016): Affirmed preliminary injunction (including then‑permissible extraterritorial effect).
- Commodores II, 879 F.3d 1114 (11th Cir. 2018): Affirmed judgment as a matter of law on ownership; found rights were assigned to CEC and McClary introduced no contrary evidence.
- Commodores III, 822 F. App’x 904 (11th Cir. 2020): Affirmed summary judgment on McClary’s counter/third‑party claims, partial summary judgment on infringement, and jury award of profits; rejected attempts to narrow the injunction based on foreign licensing.
- Commodores IV, 2023 WL 5664170 (11th Cir. Sept. 1, 2023): Remanded to reconsider injunction and fees in light of Abitron.
These earlier rulings established CEC’s U.S. ownership and McClary’s lack of rights, framed the domestic basis for liability and damages, and documented the litigation conduct that later supported exceptionality.

Legal Reasoning

The court proceeded in two steps, both under abuse‑of‑discretion review:

Prevailing‑party status post‑Abitron. The district court “slightly” modified the injunction to exclude purely extraterritorial use (e.g., performances outside the United States), but found that McClary’s New York‑based booking agent’s activities—“organize, promote, negotiate, finalize, coordinate, plan, market, contract, [and] publicize” foreign shows—plus one U.S. performance, constituted domestic “use in commerce.” Those domestic acts preserved CEC’s core relief and jury award. Because a party need not prevail on every issue, Fireman’s Fund, CEC remained the prevailing party. McClary did not meaningfully dispute this on appeal.
Exceptional case under § 1117(a). Applying Octane Fitness and Tobinick, the court endorsed the district court’s totality‑of‑circumstances analysis:
- Substantive weakness: McClary’s claimed ownership or co‑ownership was “weak from the start.” Prior decisions found that King and Orange assigned their rights to CEC; McClary offered no contrary evidence and no viable co‑ownership theory. His supposed lack of notice was refuted by “ample evidence.”
- Unreasonable litigation conduct: A decade of “contested litigation” producing “over 600 docket entries,” two trials, four appeals, and repeated order‑defying conduct. Illustrations included: rebranding as “Commodores Experience” notwithstanding injunctions; a “nonsensical” attempt to create a legal distinction between “Commodore Entertainment Corporation” and “Commodores Entertainment Corporation”; a bid to add a former bandmate without addressing joinder feasibility; and persistent meritless defenses (e.g., “fair use”; a typographical error theory to invalidate a registration). The district court observed that McClary’s behavior “so flagrantly disregarded the law and the court’s orders that it verged on contempt of court.”
- Sanctions not required: The absence of a formal contempt finding did not preclude an exceptional‑case determination; sanctionable conduct is not the benchmark under Octane Fitness.
- Abitron’s limited effect: Although the injunction was narrowed to exclude purely foreign performances, the district court found that McClary’s “most egregious positions” had “nothing to do” with extraterritoriality. As the court succinctly put it, “Abitron did not make the decade of judicial labor necessitated by McClary’s misconduct simply disappear.” In other words, Abitron did not retroactively sanitize domestic infringement or unreasonable litigation conduct.
On that record, awarding $602,618.67 in fees and $4,560.56 in costs fell well within the district court’s discretion.

Impact and Prospective Significance

While unpublished and therefore non‑precedential, this decision carries practical lessons for Lanham Act litigants navigating the post‑Abitron landscape:

Prevailing‑party status survives modest injunction narrowing. Narrowing an injunction to remove purely foreign uses does not, by itself, deprive a plaintiff of prevailing‑party status when domestic liability, damages, and meaningful injunctive relief remain.
Exceptional‑case fees can rest on domestic conduct and litigation behavior unaffected by Abitron. Courts will focus on the totality of circumstances—including the strength of claims/defenses and compliance with court orders—rather than on shifting extraterritorial standards. Defendants cannot invoke Abitron as a blanket shield against § 1117(a) fee exposure.
Domestic “use in commerce” can exist even when performances occur abroad. Although the scope of the modified injunction was not formally at issue on this appeal, the district court’s finding (recited in the opinion) that a U.S. booking agent’s planning, marketing, contracting, and publicity activities constitute domestic “use in commerce” underscores a significant risk area: U.S.‑based orchestration of foreign events may ground domestic liability and sustain fee awards.
Litigation conduct matters. Persistently weak positions, rebranding maneuvers to skirt injunctions, and disregard for court orders strongly support an “exceptional case” finding, even absent contempt sanctions. The opinion signals a willingness to deter such conduct through fee shifting.
Foreign registrations do not control U.S. rights. The court rejected arguments premised on foreign registrations or licensing as immaterial to the core U.S. ownership and use issues that drove liability and fees.

Complex Concepts Simplified

Prevailing party: The party that achieves a material alteration in the legal relationship of the parties, typically through judgment or meaningful injunctive relief. One need not win on every issue to “prevail.”
Exceptional case (Lanham Act § 1117(a)): A case that stands out due to the weakness of a party’s position or the unreasonable way the case was litigated, evaluated under the totality of circumstances. Bad faith or sanctionable misconduct is not required.
Abuse of discretion: A deferential appellate standard. Reversal requires showing that the district court made an error of law or a clearly erroneous factual finding.
Use in commerce: Under the Lanham Act, relevant “use” involves using the mark in the sale, offering for sale, distribution, or advertising of goods/services. Post‑Abitron, courts focus on domestic “use in commerce” when assessing reach of §§ 1114 and 1125.
Extraterritoriality post‑Abitron: The Supreme Court limited the Lanham Act’s application to domestic infringing “use in commerce.” Purely foreign conduct is generally outside the Act’s reach; domestic acts remain actionable.
JMOL (Judgment as a Matter of Law): A ruling that, taking the evidence most favorably to the non‑movant, no reasonable jury could find in that party’s favor on an issue, allowing the court to decide as a matter of law.
Per curiam; unpublished: A decision issued collectively without a named author; “Not for publication” decisions are non‑precedential but can be persuasive.

Conclusion

The Eleventh Circuit’s decision in Commodores Entertainment Corp. v. McClary reaffirms two interlocking principles in Lanham Act litigation after Abitron:

Narrowing an injunction to exclude purely foreign uses does not unravel prevailing‑party status where domestic infringement, damages, and meaningful injunctive relief remain.
Exceptional‑case fee awards under § 1117(a) may rest on the substantive weakness of defenses and the unreasonable manner of litigation—including persistent violations of court orders—regardless of intervening doctrinal shifts on extraterritoriality.

For trademark litigants, the message is clear: Abitron narrowed the Lanham Act’s foreign reach, but it does not retroactively cleanse domestic “use in commerce,” erase jury verdicts grounded in domestic acts, or insulate parties from fee shifting where the record shows objectively weak positions and vexatious litigation conduct. Compliance with injunctions, careful assessment of the strength of defenses, and avoidance of tactics that “stand out” as unreasonable remain paramount.