Judge Thomas M. Durkin refused to toss out Rudolph Isley's case against his brother Ronald for allegedly making an unlawful attempt to register the name "The Isley Brothers" as a federal trademark in his decision on Wednesday. Rudolph contends that the name "The Isley Brothers" should be jointly owned.
The decision means that, without a settlement, the matter will proceed to discovery, during which both sides will gather evidence to support their claims, and eventually to a jury trial. Requests for comment from Ronald Isley's spokeswoman were not promptly fulfilled.
Band names frequently come up in trademark issues between different current and former members who disagree over who has the right to continue using a well-known name. Who actually makes up the band? Who has ownership of the name rights—the members or an LLC? Is it the original lineup or the lineup that generated the most successful songs?
Such legal action has been taken in the past by bands including Journey, Stone Temple Pilots, Jefferson Starship, the Rascals, the Ebonys, the Commodores, and the Platters. Before an agreement was struck in 2008, the Beach Boys' members fought for more than ten years over the use of their name. Additionally, Morris Day and the Prince estate recently got into a nasty argument over the trademark rights to his band's name, The Time.
In the case of the Isleys, Rudolph asserts that he and Ronald have shared ownership of the family's intellectual property ever since the passing of their third brother, O'Kelly Isley, in 1986. Ronald offers a different perspective, asserting that Rudolph hasn't played with the band since 1986 and that the "Isley Brothers" trademarks belong to those who have genuinely been using the name.
In a lawsuit filed against Ronald in March, Rudolph requested that the court rule that the parties jointly control the trademark rights to the name. Additionally, he requests a judgment requiring Ronald to account for how he has "exploited" the trademark and to split any profits made from it.
In his ruling on Wednesday, Judge Durkin determined that Rudolph would still hold the rights to the name if his claims were found to be genuine. "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 stated in his ruling.
Judge Durkin did this while citing numerous other decisions on the "unique circumstances of individual members' rights to a musical group's trademark." A judge determined that bandmates "do not retain rights to use the group's name when they leave the group" in a dispute involving The Platters. However, in a another instance, a judge determined that the lead singer of the doo-w** band Vito & the Salutations retained ownership of the name because he continued to play a "behind-the-scenes role" even after the band disbanded.
Rudolph claims that after he stopped performing, he continued to be "active" in the Isley Brothers, helping to secure a lucrative publishing deal in 2018 and negotiating the use of the band's well-known song "Shout" for a Super Bowl commercial 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 noted in his ruling.
Rudolph's attorney, Brian D. Caplan, said in a statement to Billboard on Thursday that his client was "happy that the court denied his brother's motion to dismiss his complaint" and "looks forward to the recognition of his rights as a 50% owner in the name 'The Isley Brothers,' the iconic name of the band he formed in 1954 with his two brothers."