## Facts

- Glenn Miller, a prominent bandleader, died in 1944; his widow, Helen Miller, inherited rights associated with his name, likeness, and musical library.
- In 1956, Helen Miller entered a written license agreement granting Glenn Miller Productions, Inc. (GMP) the right to use Glenn Miller’s name and likeness and exploit the musical library in connection with operating a “Glenn Miller” orchestra and related business activities.
- The 1956 agreement contemplated GMP’s own operation of a Glenn Miller orchestra and did not expressly grant GMP a right to sublicense the licensed rights to third parties.
- By at least the late 1980s, GMP entered arrangements with third parties authorizing them to operate touring orchestras using the Glenn Miller name (or similar branding), resulting in multiple “Glenn Miller” orchestras.
- Helen Miller died in 1966 and bequeathed the rights to her children; the plaintiffs (the Millers) later acted as successors and used a licensing agent (CMG Worldwide, Inc.).
- During the 1980s and 1990s, the Millers sent multiple cease-and-desist letters to various third parties using the Glenn Miller name or likeness but did not sue GMP until 2003.
- Plaintiffs sued in 2003 asserting Lanham Act and related state-law claims, right-of-publicity/misappropriation claims, and contract-based claims tied to alleged overreach of the 1956 agreement.
- The parties filed cross-motions for summary judgment, including GMP’s defense that plaintiffs’ claims were barred by laches.

## Issues

1. Whether a licensee of trademark and related publicity rights may sublicense those rights without express authorization from the original licensor.
2. Whether the 1956 agreement permitted GMP to authorize multiple third-party orchestras (and related uses) under Glenn Miller branding, or instead limited GMP to its own use.
3. Whether plaintiffs’ claims were barred by laches due to unreasonable delay and resulting prejudice to GMP.

## Decision

- The court held that a licensee of trademark and related publicity rights may not sublicense those rights absent express permission from the licensor.
- The court concluded GMP’s sublicensing to third-party orchestras exceeded the scope of the 1956 agreement and was unauthorized on the merits.
- The court nevertheless granted summary judgment for GMP because laches barred plaintiffs’ claims: plaintiffs should have known of GMP’s practices long before filing suit, and GMP would be prejudiced by late-arising challenges after years of reliance and investment.
- Plaintiffs’ action was dismissed on laches grounds.

## Legal Principles

- Trademark and related publicity-rights licenses are presumed non-sublicensable unless the agreement clearly grants sublicensing authority.
- Courts are reluctant to imply sublicensing power because it can shift control over goodwill and reputation from the licensor to a licensee and multiple third parties.
- Laches may bar claims for injunctive and other relief where the plaintiff unreasonably delays after actual or constructive knowledge of the conduct and the defendant suffers material prejudice from the delay.
- A merits finding that conduct exceeds a license’s scope does not prevent judgment for the defendant if equitable laches is established on undisputed facts at summary judgment.

## Conclusion

The court determined that GMP lacked implied authority under the 1956 agreement to sublicense Glenn Miller’s name and related rights to third parties, but it denied plaintiffs any relief because their long delay in suing, despite notice of the challenged practices, caused prejudice sufficient to bar the action under laches.


Miller v. Glenn Miller Prods., Inc., 318 F. Supp. 2d 923 (C.D. Cal. 2004)