Case: 1:23-cv-01720 Document #: 1 Filed: 03/20/23 Page 1 of 8 PageID #:1

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF ILLINOIS

RUDOLPH ISLEY,

Plaintiff, Case No. 23-cv-1720

vs.

RONALD ISLEY, DEMAND FOR JURY TRIAL

Defendant.

COMPLAINT

Plaintiff Rudolph Isley, by his attorneys, Reitler Kailas & Rosenblatt LLP and Mandell

Menkes LLC, as and for his Complaint against the Defendant herein, alleges as follows:

PRELIMINARY STATEMENT

1. Plaintiff brings this declaratory action pursuant to 28 U.S.C. §§ 2201 and 2202 in

order to obtain (A) a judicial declaration that all U.S. common-law and statutory rights in and to

the trademark THE ISLEY BROTHERS (the “Mark”) are jointly owned by Plaintiff and

Defendant equally, because the Mark is an asset of a partnership in which Plaintiff and

Defendant are the sole and equal members; and (B) an accounting and payment of Plaintiff’s

share of all proceeds received by Defendant in connection with the provision of services and sale

of goods under the Mark within the applicable limitations period prior to the filing of this

Complaint.

JURISDICTION AND VENUE

2. This Court has diversity jurisdiction in this matter pursuant to 28 U.S.C. §1332

because Plaintiff and Defendant are citizens of different States and the amount in controversy

exceeds the minimum jurisdictional amount of $75,000.

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3. Venue lies within this judicial district pursuant to 28 U.S.C. §§ 1391(b)(2) in that

a substantial part of the events or omissions giving rise to the claim occurred in this judicial

district, because Defendant has engaged in use and exploitation of the Mark in commerce in this

judicial district.

PARTIES

4. Plaintiff Rudolph Isley (“Rudolph”), now 83 years of age, is a resident of the

State of Illinois and a founding member of the world-famous musical group The Isley Brothers

(the “Group”).

5. Defendant Ronald Isley (“Ronald”), now 81 years of age, is a resident of the State

of Missouri and, like Rudolph, is a founding member of the Group.

6. The Group was formed in Cincinnati, Ohio in or about 1954 by Rudolph, his

brother Ronald, and their brother, O’Kelly Isley Jr. (“O’Kelly”), now deceased.

FACTUAL BACKGROUND

7. The three brothers, Rudolph, Ronald, and O’Kelly, (the “Brothers”) at all times

intended to operate and did operate the Group as a common-law partnership.

8. The Brothers at all times equally shared in the Group’s expenses and profits.

9. The Brothers at all times equally shared in the control of the business of the

Group.

10. The Brothers at all times equally contributed capital to operate the business of the

Group.

11. The Group collectively owned property, including without limitation the record

label T-Neck Records, Inc. a New Jersey corporation; the music publisher Teaneck Pub. Co., a

New Jersey corporation; the music publisher Bovina Music, Inc., a New York corporation;

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approximately 300 acres of land in upstate New York; and more than 100 registered copyrights

in musical compositions jointly authored by the Group.

12. The Group at all times collectively entered into contracts with providers of goods

and services in connection with the Group’s activities.

13. The Group actively toured and recorded between 1954 and 1973, and recordings

made and released by the Group during that period are still being manufactured and sold in

interstate commerce under the Mark THE ISLEY BROTHERS (the “Mark”) and under no other

mark.

14. In or about 1973, the Group’s touring and recording personnel expanded to

include Plaintiff’s younger brothers Ernie Isley and Marvin Isley, and Plaintiff’s brother-in-law

Chris Jasper.

15. The new personnel left the Group in or around 1984 to perform under the name

Isley Jasper Isley.

16. Throughout this period, the Group remained an equal partnership under the sole

ownership, direction and control of its founding members, Rudolph, Ronald, and O’Kelly Isley.

17. O’Kelly died intestate on March 31, 1986.

18. Pursuant to Letters of Administration issued by the State of New Jersey Bergen

County Surrogate’s Court on Sept 24, 1986, O’Kelly’s interests passed to Plaintiff and

Defendant equally, leaving each with a 50% share of ownership in the Group and the Mark.

19. In recognition of the foregoing, both Plaintiff and Defendant are currently 50%

owners of all rights and interests of the Group, with neither party having the authority to enter

into deals concerning the Group or the exploitation of the Mark without consent of the other

party.

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20. In 1989, due to poor health conditions and his brother’s death, Plaintiff

discontinued his performances with the Group and did not participate in making new recordings

after that date, but has remained active in promoting and managing the Group’s properties,

including a major multi-million dollar music publishing deal in 2018, under which Plaintiff and

Defendant each received 50%, and most recently the negotiation of a lucrative license deal for

the use of the Group’s song “Shout” in a commercial that was aired on the broadcast of the 2023

Super Bowl.

21. The Group has been highly successful and has won many awards and accolades

for their music, including induction into the Rock and Roll Hall of Fame in 1992 and receiving

gold, platinum or multi-platinum certification of thirteen of their albums by the Recording

Industry Association of America.

22. The Group received the Grammy Lifetime Achievement Award in 2014, and was

inducted into the Songwriters Hall of Fame in June of 2022.

23. The Group’s recordings have sold over 18 million units in the United States alone.

With their first major hit charting in 1959 ("Shout"), and their most recent hit in 2022 (a remake

of the Group’s1975 song “Make Me Say It Again Girl,” credited to “Beyoncé with Ron Isley and

The Isley Brothers”) they are among the few artists ever to have been recognized on the

Billboard Hot 100 chart with new music in six different decades.

24. The recordings of The Isley Brothers on which Plaintiff performed (“Group’s

Recordings”) were at all times released under the Mark and under no other mark.

25. Until the date of this Complaint, Plaintiff has continued to receive royalties

generated by the sale of the Group’s Recordings.

26. Many of the Group’s Recordings have been digitally sampled by hip-hop and rap

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producers under license from the Group, and Plaintiff continues to receive payments for such

uses of the Group’s Recordings.

27. Accordingly, all the goodwill in the Mark from 1954 until the present have inured

to the Group and not to any individual member, and Plaintiff has not abandoned his rights in the

Mark.

28. After O’Kelly’s death, the Group established a Delaware corporation, Isley

Brothers Royalty Venture I SPC Inc. (“IBRV”).

29. The IBRV was owned equally by Rudolph and Ronald and performed certain

business and administrative functions on behalf of the Group relating to the Group’s royalty

income.

30. In June of 2000, Rudolph and Ronald established a Delaware limited liability

company, Isley Brothers L.L.C. (“the LLC”), which performed financial functions on behalf of

the Group in connection with a certain identure entered into between the LLC and Manufacturers

and Traders Trust Company and a related Note Purchase Agreement for the sale of notes issued

under the indenture.

31. The members of the LLC were Rudolph and Ronald, and the IBRV was named as

Managing Member. The LLC is classified by the IRS as a partnership, and every year since the

formation of the LLC it has issued Schedule K-1 income statements to Rudolph and Ronald for

submission to the IRS with Form 1065, U.S. Return of Partnership Income.

RONALD’S BELATED CHALLENGE TO OWNERSHIP OF THE MARK

32. On November 2, 2021, Ronald, acting without the knowledge or approval of

Rudolph, filed an application to register exclusive rights in the Mark in the U.S. Patent and

Trademark Office in his own personal name, for the following goods and services: “Visual

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recordings and audiovisual recordings featuring music and animation” (the “Application”).

33. The Application was approved by the U.S. Patent and Trademark Office, and

without Plaintiff’s knowledge, was registered on August 16, 2022 (“Registration”). A copy of the

Registration is attached as Exhibit A.

34. Significantly, the Application and Registration claim exclusive rights in the Mark

dating back to a priority date of 1954, when the Brothers first formed the Group.

35. Contradicting the claimed priority date, the Application, and Registration, assert

that Defendant Ronald Isley claims sole exclusive rights in and to the Mark in his individual

capacity.

36. Counsel for Defendant Ronald Isley has asserted in correspondence that

Defendant alone has exclusive ownership of the Mark, see letter attached as Exhibit B.

37. These assertions in correspondence to Plaintiff, and under penalty of perjury to

the U.S. Patent and Trademark Office, are false.

38. Upon information and belief, Defendant has within the past year offered goods

and services in commerce to the public under the Mark within this judicial district and in other

locations, without the authorization or approval of Plaintiff, and has failed to account to or make

payment to Plaintiff in connection with such exploitation of the Mark.

FIRST CLAIM – DECLARATION OF OWNERSHIP

39. Plaintiff repeats and re-alleges each and every allegation in paragraphs 1 through

38 above as if fully set forth herein.]

40. By reason of the foregoing, an actual and justiciable controversy of sufficient

immediacy and reality has arisen and now exists between Plaintiff and Defendant, concerning

their respective rights and interests in the Mark.

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41. Plaintiff contends that the Mark is jointly owned by Plaintiff and Defendant.

42. Defendant contends, by virtue of his sworn filing in the U.S. Patent and

Trademark Office, that he is the sole owner of the Mark.

43. Declaratory relief from this Court is necessary pursuant to the Declaratory

Judgment Act, 28 U.S.C. §§2201 et seq., so that the Parties may know their respective rights and

obligations with respect to the Mark.

44. By reason of the foregoing, Plaintiff is entitled to a declaratory judgment and

related relief, declaring that the Mark is jointly owned by Plaintiff and Defendant.

45. Plaintiff has no adequate remedy at law.

SECOND CLAIM – ACCOUNTING AND PAYMENT

46. Plaintiff repeats and re-alleges each and every allegation in paragraphs 1 through

45 above as if fully set forth herein.

47. Rudolph is unaware of the degree to which Ronald exploited the Mark, the

licenses and/or other transactions that Ronald entered into for the use of the Mark, or the revenue

Ronald garnered through such exploitation. Consequently, Rudolph has a need to discover the

transactions completed and the revenues earned through Ronald’s improper registration of the

Mark.

48. By reason of the foregoing, Plaintiff is entitled to a judgment ordering Defendant

to account for and pay over to Plaintiff the Plaintiff’s rightful 50% share of all results and

proceeds of the past exploitation of the Mark realized by Defendant.

JURY DEMAND

Pursuant to Fed. R. Civ. P. Rule 38(b), Plaintiffs demand a trial by jury on all issues

properly triable.

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PRAYER FOR RELIEF

WHEREFORE, Plaintiffs respectfully request that this Court enter judgment as follows:

A. On the First Claim, a judgment declaring that the Mark is jointly owned by

Plaintiff and Defendant.

B. On the Second Claim, a judgment ordering Defendant to account for and pay over

to Plaintiff the Plaintiff’s rightful 50% share of all results and proceeds of the

exploitation of the Mark realized by Defendant.

C. Awarding Plaintiff his costs and disbursements, including reasonable attorneys’

fees, incurred in prosecuting this action; and

D. Awarding Plaintiff such other and further equitable and legal relief as this Court

may deem necessary, just and proper.

Dated: March 20, 2023 Respectfully submitted,

RUDOPLH ISLEY

By: /s/ Steven P. Mandell

One of his attorneys

Steven P. Mandell (ARDC #6183729)

MANDELL MENKES LLC
333 W. Wacker Dr., Suite 450
Chicago, IL 60606
Tel.: (312) 251-1000
[email protected]

Brian D. Caplan
Robert W. Clarida
885 Third Avenue, 20th Floor
New York, New York 10022
Telephone: (212) 209-3050
Facsimile: (212) 371-5500
[email protected]
[email protected]

Attorneys for Plaintiff