IP Law Daily, TRADEMARK—N.D. Ill.: Rudolph Isley could have rights in THE ISLEY BROTHERS name registered by brother Ronald, (Aug 25, 2023)

By Robert Margolis, J.D.

Rudolph no longer performed with the musical group, but his continued involvement in the group’s business supported his claim for continued rights in THE ISLEY BROTHERS name.

Though Rudolph Isley, one of the founding members of The Isley Brothers musical group, stopped performing and recording music with the group in 1989, he asserted in a recently filed lawsuit that his continued involvement in the group’s business and promotional affairs gives him continuing rights in the trademark THE ISLEY BROTHERS that his brother Ronald recently registered exclusively in his own name. The federal district court in Chicago has held that Rudolph’s allegations are sufficient for him to pursue his claims for a declaratory judgment and an accounting against Ronald, finding that those allegations support the inference of a common-law partnership between the two related to the group’s affairs, and that “in the unique context of individual members’ rights to a musical group’s trademark,” Rudolph’s continued activities give him continued rights in the group’s name even though he stopped performing (Isley v. Isley, August 23, 2023, Durkin, T.).

The Isley Brothers. Rudolph, Ronald, and O’Kelly Isley founded The Isley Brothers musical group in 1954, and subsequently achieved significant success, including several gold records, induction into the Rock and Roll Hall of Fame and Songwriters Hall of Fame, and hit records in six different decades. Rudolph alleged in his complaint that the three brothers intended to, and did, operate the group as a common-law partnership. They shared equally in expenses and profits, and control of the group’s business. O’Kelly died intestate in 1986, and Rudolph alleges that according to Letters of Administration, O’Kelly’s interests passed equally to Rudolph and Ronald such that each became 50% owners of the partnership.

Rudolph stopped performing or recording new music in 1989, but alleges that he continued to promote and manage the group’s properties, including participating in negotiations of a multi-million dollar music publishing deal in 2018 and a recent licensing deal for the group’s song “Shout” in a 2023 Super Bowl commercial, and forming business entities with Ronald to manage the group’s assets and interests.

Trademark registration. In November 2021, Ronald applied for federal registration of the mark THE ISLEY BROTHERS exclusively in his own name, listing the priority date for the mark as 1954, the year the group was founded. The United States Patent and Trademark Office approved the application, registering the mark in August 2022. Rudolph then filed suit, alleging on information and belief that Ronald was exploiting the mark without his approval. Rudolph sought a declaration that he jointly owns all statutory and common law rights to THE ISLEY BROTHERS mark, as well as an accounting and payment of 50% of the proceeds Ronald has received in connection with the registered mark. Ronald moved to dismiss the lawsuit.

Common-law partnership. The court first rejected Ronald’s argument that Rudloph failed to allege facts supporting the claim that the common-law partnership to which he belongs owns the ISLEY BROTHERS mark. While the court agreed with Ronald that O’Kelly’s death in 1986 dissolved the original three-person partnership, and there was no allegation of an express agreement between Rudolph and Ronald to continue as a two-person partnership, that did not preclude a claim that through their actions since O’Kelly’s death the two of them acted as a partnership such that such an agreement can be inferred. The court found that Rudolph alleged sufficient facts to support such an inference.

Under Illinois law, a partnership may exist whether the two or more persons involved intended to form one, and a written agreement is not required. 805 ILCS 206/202. A verbal agreement, and/or facts and circumstances can establish the existence of a partnership. Rudolph alleged several such facts and circumstances, including: Rudolph and Ronald shared in the group’s royalties and profits; they dealt with each other and third parties on behalf of the group; they performed for three years together as the group after O’Kelly’s death; neither can enter into agreements on the group’s behalf without the other’s approval; they recently entered into royalty contracts where they split the profits or royalties 50-50; and they jointly created and own separate entities to manage the group’s assets. These sufficed, under Illinois law, to state a plausible claim that a partnership exists, the court held.

Continuing right. Ronald also argued that in the absence of a partnership, Rudolph has no continuing right in the mark because he left the group in 1989 when he decided to stop performing and recording music, and the mark is still being used by Ronald and others in connection with new songs and performances. The court rejected this argument as well.

The court cited several cases arising in “the unique context of individual members’ rights to a musical group’s trademark” after an individual group member stopped performing with the group. From cases involving The Commodores, The Platters, The Kingsmen, and other groups, the court found a legal principle that where an individual group member leaves the group but remains continuously involved such that the member is in position to control the quality of the group’s services, the departed member retains rights in the group’s trademarks. Here, the same facts described above that sufficed to allege the continued partnership between Rudolph and Ronald with respect to the group’s affairs, were sufficient to support a claim that Rudolph did not leave the group when he stopped performing but instead “took on the sort of continuing managerial role that creates a continuing ownership right in the Mark,” the court held.

The case is No. 1:23-cv-01720.

Attorneys: Brian D. Caplan (Reitler Kailas & Rosenblatt LLP) for Rudolph Isley. Jeffrey Mark Movit (Mitchell Silberberg & Knupp LLP) for Ronald Isley.

Cases: Trademark IllinoisNews GCNNews