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"Sister Sledge" Sibling's Use of "Sister Sledge Sledgendary" Isn't Trademark Infringement

Sister Sledge was formed by four siblings in 1971 and is best known for the 1979 hit record "We Are Family." Sister Sledge LCC was established in Arizona in 2006, giving each sister a quarter share of the company, which procured approval of a "Sister Sledge" federal trademark in 2009. But after the registration expired, group member Kathy Sledge Lightfoot acquired trademark registration for the Sister Sledge name. Then in May 2019, the Sister Sledge LLC's managers passed a resolution that "approve[d] the advertisement of any performance by any individual [m]ember of the [C]ompany" and "dissolve[d] … any purported restrictions on any one [m]ember's use of the Sister Sledge brand or [T]rademark in any promotion or advertisement in connection with live performances in the U.S. and abroad." In addition, co-managing member Lightfoot gave the LLC an exclusive license to use "Sister Sledge." In 2020, Lightfoot and the LLC sued sister and LLC member Debra DeBruine in the U.S. District Court for the District of Arizona. The complaint alleged DeBruine's use of "Sister Sledge Sledgendary" to promote that group on social media constituted trademark infringement and unfair competition of "Sister Sledge" under the federal Lanham Act and related state laws. DeBruine responded with counterclaims that included challenging the validity of Lightfoot's federal trademark registration. Lightfoot v. DeBruine, CV-20-00666. Finding Lightfoot's federal registration was void from the start, Arizona District Judge Diane J. Humetewa explained: "Ms. DeBruine argues it is undisputed that she, the ['Sister Sledge'] Group, and the Company all hold rights to the Trademark as prior users. … Therefore, the Company and the Group, comprised of the three surviving sisters, have used the Trademark before Ms. Lightfoot's 2017 Trademark Registration and hold ownership interests at common law." But noting "[i]n issuing its Order, the Court joins the scarce case law on joint ownership of trademarks," District Judge Humetewa observed: "The Supreme Court and Ninth Circuit have not yet considered when an owner of a trademark brings a claim for infringement against another co-owner" and that few district courts have ruled on the issue. Embracing the majority view of those district courts, Judge Humetewa decided that "an owner of a trademark cannot maintain an action for infringement against a co-owner because they both enjoy equal rights of usage. Therefore, Plaintiffs cannot sustain a trademark infringement or unfair competition claim against Ms. DeBruine on the basis of her use of the Trademark as a co-owner." Then granting DeBruine's motion for summary judgment on those claims, the district judge noted: "The May 2019 Resolution's unambiguous text authorizes each of the Company members to use the Trademark free from any restrictions."

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