Sublicenses for Trademark and Right of Publicity Require Licensor's Express Permission

Case: Miller v. Glenn Miller Productions, Inc., No. 04-55874, 04-55994 (9th Cir. 7/19/06)

The One Sentence Summary: Although defendant improperly entered into unauthorized trademark and right of publicity sublicenses using the "Glenn Miller" name without permission of the licensor, licensor's claim was dismissed for laches in light of licensor's constructive knowledge of defendant's actions, unreasonable delay in bringing the lawsuit, and prejudice to defendant.


What They Were Fighting About: In 1956, defendant Glenn Miller Productions, Inc. ("GMP") received a license from Glenn Miller's widow, Helen Miller, for the use of Glenn Miller's name, likeness and library of music. Steven and Jonnie Miller, Helen Miller's children, sued GMP on breach of contract, trademark infringement and right of publicity claims arising from GMP's sublicensing of GMP's GLENN MILLER ORCHESTRA mark to other orchestras. The district court found that GMP could not sublicense without permission of the licensor, but that laches barred the action.

Ninth Circuit Holdings:

• The Ninth Circuit panel affirmed and incorporated the district court's summary judgment decisions that laches barred plaintiff's claims of unauthorized trademark and right of publicity sublicensing.
• The 1956 agreement was intepreted by the court on summary judgment to be a trademark and right of publicity license even though those terms were not used.
• The fact that "Glenn Miller" was not a registered trademark at the time of the 1956 agreement did not mean that the agreement was not a trademark license. Trademark rights had arisen through use of the "Glenn Miller" name, and there was no need for a registration in order to license those rights. Moreover, the lack of an express quality control provision in the agreement did not mean it was not a trademark license - the right of the licensor to control the quality of the licensee's use arises from trademark law and need not be explicitly set out in a license.
• GMP, the trademark licensee, could not sublicense without express permission of the licensor. This rule applies in the patent and copyright areas, and the Ninth Circuit panel affirmed the district court's application of the rule in the trademark area. Because a licensor needs to control the quality of use of its mark, it needs the ability to approve sublicenses.
• The express permission of the licensor was also required for the licensee to grant sublicenses to the right of publicity. Here, the trademark and right of publicity licenses worked together, and it would not make sense to allow the sub-license of one without the other.
• Plaintiffs' claims were barred by laches because plaintiffs had constructive knowledge and should have known that defendant GMP was sublicensing other Glenn Miller Orchestras, yet unreasonably delayed in bringing this action. GMP was prejudiced by plaintiffs' delay because GMP entered into many contracts to expand its business during the period of delay.