Isley Brothers Headed For Long Court Battle Over Legal Rights to Band Name
Written by djfrosty on August 24, 2023
There won’t be a quick end to a nasty lawsuit pitting members of the Isley Brothers against each other over the trademark rights to the band’s name.
In a ruling Wednesday, Judge Thomas M. Durkin refused to dismiss Rudolph Isley’s lawsuit, which accuses brother Ronald Isley of improperly attempting to secure a federal trademark registration on the “The Isley Brothers” – a name Rudolph claims is supposed to be jointly owned.
Lawyers for Ronald had argued that the case should be tossed out because Rudolph surrendered any control over the name when he left the band. But in a ruling that noted the “unique circumstances” of band-name disputes, the judge said it could move forward toward trial: “Defendant’s motion is denied.”
Barring a settlement, the ruling means the case will head into discovery, in which both sides will gather evidence to support their arguments, and then to an eventual jury trial. Neither side immediately returned requests for comment on Thursday.
Band names are a constant source of trademark disputes, typically among various current and former members who disagree about who has the right to keep using a famous title. Who truly constitutes the band? Is it the members, or an LLC that owns the rights to the name? Is it the original lineup, or the one that produced the biggest hits?
Journey, Stone Temple Pilots, Jefferson Starship, the Rascals, the Ebonys, the Commodores and the Platters have all resorted to such litigation over the years. Members of the Beach Boys spent more than 10 years fighting over their name, before a settlement was reached in 2008. And Morris Day recently had an ugly fight with the Prince estate over the trademark rights to his band name, The Time.
In the case of the Isleys, Rudolph claims that since the 1986 death of their third brother O’Kelly Isley, he and Ronald have been the equal co-owners of the group’s intellectual property. Ronald sees things differently, claiming the “Isley Brothers” trademarks are the property of those who have actually been using a name – and that Rudolph has not performed with the band since 1986.
Rudolph sued Ronald in March, asking a judge to declare that the trademark rights to the name are “jointly owned by plaintiff and defendant equally.” He also wants a ruling that forces Ronald to explain how he has “exploited” the trademark and to share any revenue derived from it.
In Wednesday’s decision, Judge Durkin ruled that Rudolph’s allegations, if later proven true, would mean that he continued to have rights to the name. “Plaintiff’s contention is that when he ceased performing, he did not leave the group, but instead took on the sort of continuing managerial role that creates a continuing ownership right in the mark,” the judge wrote.
In doing so, Judge Durkin recounted many previous rulings on the “unique circumstances of individual members’ rights to a musical group’s trademark.” In one case among members of The Platters, a court ruled that bandmates typically “do not retain rights to use the group’s name when they leave the group.” But in another case, a court ruled that a singer from the doo-wop group Vito & the Salutations continued to hold rights to the name because he maintained a “behind-the-scenes role” after leaving the band.
Rudolph says he took a similar “active” role in the Isley Brothers after he stopped performing, including playing a key role in securing a multi-million dollar publishing deal in 2018 and helping to negotiate the use of the band’s iconic song “Shout” for a commercial during the Super Bowl in February.
“Plaintiff’s allegations regarding his activities on behalf of the group are more like those in [the Vito & the Salutations case] than [other musicians] who left their musical groups entirely and did not allege any continuing role,” Judge Durkin wrote.
The ruling means the case will head into discovery, in which both sides will gather evidence to support their arguments, and then to an eventual jury trial. Neither side immediately returned requests for comment on Thursday.