## Facts

- In 1956, Helen Miller entered a licensing agreement granting Glenn Miller Productions, Inc. (GMP) commercial rights to use Glenn Miller’s name, likeness, and music catalog.
- GMP was formed to exploit “Glenn Miller” commercial rights; Helen held an officer role in the company.
- After Helen’s death in 1966, her adopted children, Steven and Jonnie Miller, inherited her intellectual property interests; CMG Worldwide, Inc. served as their licensing agent.
- In litigation in the late 1970s involving GMP’s principal, the heirs ratified and extended the 1956 agreement in perpetuity.
- Beginning in the 1980s, GMP entered agreements allowing third parties to operate orchestras using the “Glenn Miller Orchestra” name.
- In 2003, Steven asserted he first learned of the third-party orchestra arrangements, and the heirs and CMG sued, alleging (among other claims) that GMP improperly sublicensed trademark and related publicity rights without authorization.

## Issues

1. Whether the plaintiffs’ claims were barred by laches due to long delay and constructive knowledge of GMP’s activities.
2. Whether GMP’s agreements with third-party orchestras were unauthorized sublicenses of the “Glenn Miller” mark and related publicity rights, or permissible licensing of GMP’s own independently owned “Glenn Miller Orchestra” mark.
3. Whether the rule prohibiting sublicensing without express permission applies to trademark and related publicity-rights licenses.

## Decision

- The Ninth Circuit affirmed summary judgment for GMP, holding the plaintiffs’ claims were barred by laches.
- The court approved the rule that a licensee of trademark and related publicity rights may not sublicense those rights without the original licensor’s express permission.
- The court affirmed the determination that GMP’s third-party orchestra arrangements constituted sublicenses of the “Glenn Miller” mark, not licenses of a separate independently owned “Glenn Miller Orchestra” mark.

## Legal Principles

- Laches may bar trademark- and publicity-rights claims where undisputed evidence shows the claimant should have known of the challenged conduct well beyond the analogous limitations period and the defendant would be prejudiced by the delay.
- Absent express authorization from the original licensor, a licensee of trademark and related publicity rights may not sublicense those rights to third parties.
- Courts may treat “orchestra-name” licensing arrangements as sublicensing of the underlying persona/mark rights when the licensed identity derives from the original licensed mark rather than an independently owned mark.

## Conclusion

The court affirmed judgment for GMP because the plaintiffs’ long delay, despite constructive knowledge of GMP’s publicly visible licensing practices, barred relief under laches, while also approving a default rule that trademark and publicity-rights licensees cannot grant sublicenses without express permission and concluding GMP’s orchestra arrangements were sublicenses of the “Glenn Miller” mark.


Miller v. Glenn Miller Prods., Inc., 454 F.3d 975 (9th Cir. 2006)