The court fight between Ronald Isley and the estate of his late brother Rudolph Isley over the trademark to The Isley Brothers is over.
Counsel for both sides filed a stipulation of dismissal in Chicago federal court on Wednesday (August 12).
The filing, which you can read here, states that the action in Case No. 1:23-cv-01720 is “dismissed with prejudice and with each party bearing its own costs and attorneys’ fees.”
It was entered under Rule 41(a)(1)(A)(ii) of the Federal Rules of Civil Procedure, which lets parties close a case by agreement without a judge’s order.
The dismissal with prejudice bars Rudolph Isley‘s estate from bringing the same claims again.
The document sets out no ownership split for the mark THE ISLEY BROTHERS and records no payment between the parties, though any settlement terms would not appear on the docket.
No court ever ruled on who owned the mark. The registration Ronald Isley secured in August 2022 was neither canceled nor amended, and stands in his name alone.
It was signed by Brian D. Caplan of Reitler Kailas & Rosenblatt LLP for the estate, with Steven P. Mandell of Mandell Menkes LLC also on the filing, and by Jeffrey M. Movit of Cohen & Gresser LLP for Ronald Isley.
Rudolph Isley filed the complaint in the US District Court for the Northern District of Illinois on March 20, 2023.
He was 83 and living in Illinois at the time; Ronald was 81 and living in Missouri.
The case was brought as a declaratory action under 28 U.S.C. §§ 2201 and 2202, with the amount in controversy pleaded at above USD $75,000.
The complaint asked the court to declare the mark jointly and equally owned by the two brothers, and to order an accounting and payment of Rudolph‘s “rightful 50% share” of proceeds.
The trigger was an application to the US Patent and Trademark Office.
On November 2, 2021, Ronald Isley applied to register exclusive rights in the mark in his own personal name, “acting without the knowledge or approval of Rudolph,” the complaint alleged.
The USPTO registered it on August 16, 2022, covering visual and audiovisual recordings featuring music and animation.
The application and registration claimed a priority date of 1954 — the year the group was formed — while asserting that Ronald alone held the rights.
Those assertions, made in correspondence and “under penalty of perjury to the U.S. Patent and Trademark Office, are false,” the complaint said.
Rudolph, Ronald and O’Kelly Isley Jr. formed the group in Cincinnati, Ohio, in or about 1954, according to the complaint.
The complaint alleged that the three brothers “intended to operate and did operate the Group as a common-law partnership,” sharing expenses, profits, capital and control equally.
Property held collectively included the label T-Neck Records, Inc., the publishers Teaneck Pub. Co. and Bovina Music, Inc., around 300 acres of land in upstate New York, and more than 100 registered copyrights.
The group toured and recorded in its original lineup between 1954 and 1973, and recordings from that period are still sold under the mark and no other, according to the complaint.
The touring and recording lineup expanded in 1973 to take in Ernie Isley, Marvin Isley and brother-in-law Chris Jasper.
Those three left around 1984 to perform as Isley Jasper Isley, with ownership and control staying with the founding members.
O’Kelly Isley died intestate on March 31, 1986.
Letters of Administration issued by the Bergen County Surrogate’s Court in New Jersey on September 24, 1986 passed his interests to his two brothers equally, leaving each with 50%.
Rudolph stopped performing and recording with the group in 1989, citing poor health and his brother’s death.
He remained active in promoting and managing its assets, the complaint said, pointing to a multi-million-dollar publishing deal in 2018 that paid each brother 50%, and a license for the song Shout in a commercial aired during the 2023 Super Bowl.
Rudolph also continued to draw royalties from sales of the group’s recordings, and from hip-hop and rap producers licensing samples of them.
Two jointly held vehicles were cited: Isley Brothers Royalty Venture I SPC Inc., owned equally, and Isley Brothers L.L.C., formed in June 2000 around an indenture and note sale involving Manufacturers and Traders Trust Company.
That LLC is classified by the IRS as a partnership, and has issued Schedule K-1 income statements to both brothers every year since it was formed.
Ronald Isley moved to dismiss on two grounds: that any partnership owning the mark had dissolved when O’Kelly died, and that his brother retained no right in the name after leaving the group.
Judge Thomas M. Durkin refused, in a memorandum opinion and order dated August 23, 2023.
On the first, Durkin agreed with Ronald: any such partnership would have dissolved as a matter of law on O’Kelly‘s death in 1986, and no express agreement to continue it had been pleaded.
But the complaint set out enough to infer a two-man partnership between the surviving brothers after that date, he found, pointing to their joint dealings on the group’s behalf alongside an Illinois presumption that someone receiving a share of profits is a partner.
On the second, Durkin quoted a 1999 Ninth Circuit ruling that group members “do not retain rights to use the group’s name when they leave the group.”
Someone who stays continuously involved and can control the quality of the group’s services keeps the right to the mark, the same ruling added, even as a manager rather than a performer.
Rudolph Isley died in October 2023, aged 84.
“Our family will miss him. But I know he’s in a better place,” Ronald Isley said in a statement at the time.
The estate took over as plaintiff, and this week’s dismissal is captioned The Estate of Rudolph Isley v. Ronald Isley.
The question the complaint put to the court, whether the mark was jointly owned, was never answered.
The complaint put the group’s US sales at more than 18 million units.
It also cited induction into the Rock and Roll Hall of Fame in 1992 and the Songwriters Hall of Fame in June 2022, the Grammy Lifetime Achievement Award in 2014, and 13 albums certified gold, platinum or multi-platinum by the RIAA.
The complaint described the group as among the few acts ever to chart new music on the Billboard Hot 100 in six different decades, bookending the run with Shout in 1959 and a 2022 remake of Make Me Say It Again Girl credited to Beyoncé with Ron Isley and The Isley Brothers.
Other US music rights disputes have ended quietly, with terms undisclosed.
Warner Music Group and The Jesus and Mary Chain — the Scottish band founded by brothers James and William Reid — ended their own rights lawsuit in March 2023 with a stipulated dismissal and undisclosed terms.
Universal Music Group settled a trademark dispute with investing platform OpenDeal, which trades as Republic, in December 2024 after three years of litigation, also without disclosing terms.
The stipulation was entered as document number 95 on a docket opened almost three and a half years earlier.Music Business Worldwide
