Intellectual Property News and Reports

PER CURIAM:
[1] Steven and Jonnie Miller, adopted children of Helen Miller, wife of the world-renowned bandleader Glenn Miller, and their exclusive licensing agent CMG Worldwide Inc. (collectively “Appellants”) appeal from the district court’s order granting defendant Glenn Miller Productions, Inc. (“GMP”) summary judgment and dismissing their complaint on the basis of laches. See Miller v. Glenn Miller Prods., 318 F. Supp. 2d 923 (C.D. Cal. 2004). GMP cross-appeals the district court’s determination that it is engaged in unauthorized sublicensing. In his well-reasoned opinion, District Judge A.Howard Matz ruled that a licensee of trademark and related publicity rights may not sublicense those rights to third parties without express permission from the original licensor. Id. at 939. We agree with this extension of the well-established “sublicensing rule” from copyright and patent law to the licensing of trademark and related publicity rights such as occurred here, and with the district court’s reasons for extending the rule. The district court also correctly ruled, however, that Appellants are barred by the doctrine of laches from taking legal action now, based on undisputed evidence establishing that they should have known of GMP’s allegedly infringing activities well beyond the statutory period for bringing suit. Id. at 944-45. Accordingly, we affirm and adopt the district court’s thorough opinion with the exception of Section C.5 (id. at 945-46) and the final three sentences of the opinion (id. at 946, beginning with “Alternatively, the Court rules”). We also reprint the incorporated portions as an appendix to this opinion.

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