Miller v. Glenn Miller Productions, Inc.

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT

JONNIE D. MILLER, an individual; 
STEVEN D. MILLER, an individual;
CMG WORLDWIDE INC., a
corporation, No. 04-55874
Plaintiffs-Appellants,
 D.C. No.
v. CV-03-00529-AHM
GLENN MILLER PRODUCTIONS, INC.,
a corporation,
Defendant-Appellee.


JONNIE D. MILLER, an individual; 
STEVEN D. MILLER, an individual;
CMG WORLDWIDE INC., a
No. 04-55994
corporation,
Plaintiffs-Appellees,
 D.C. No.
CV-03-00529-AHM
v.
OPINION
GLENN MILLER PRODUCTIONS, INC.,
a corporation,
Defendant-Appellant.

Appeal from the United States District Court
for the Central District of California
A. Howard Matz, District Judge, Presiding

Argued and Submitted
December 7, 2005—Pasadena, California

Filed July 19, 2006

7947
7948 MILLER v. GLENN MILLER PRODUCTIONS
Before: Robert R. Beezer, Cynthia Holcomb Hall, and
Kim McLane Wardlaw, Circuit Judges.

Per Curiam Opinion
 MILLER v. GLENN MILLER PRODUCTIONS 7949

COUNSEL

Brian G. Wolf and Paul Karl Lukacs, Lavely & Singer, P.C.,
Los Angeles, California, for the plaintiffs-appellants-cross-
appellees.
7950 MILLER v. GLENN MILLER PRODUCTIONS
Sheldon Eisenberg, Adam J. Thurston, and Melissa B. Bon-
figlio, Bryan Cave LLP, Santa Monica, California, for the
defendant-appellee-cross-appellant.

OPINION

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 dis-
trict 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 extend-
ing the rule. The district court also correctly ruled, however,
that Appellants are barred by the doctrine of laches from tak-
ing legal action now, based on undisputed evidence establish-
ing 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 appen-
dix to this opinion.
 MILLER v. GLENN MILLER PRODUCTIONS 7951
We nevertheless address GMP’s argument that the district
court erred in concluding that it sublicensed the “Glenn Mil-
ler” mark rather than that it licensed its own separate and
independently owned “Glenn Miller Orchestra” mark. A party
that prevails on summary judgment may cross-appeal “any
adverse finding that form[s] the basis for collateral estoppel
in subsequent litigation.” Schwartzmiller v. Gardner, 752
F.2d 1341, 1345 (9th Cir. 1984) (alteration in original) (inter-
nal quotation marks omitted).

[2] We reject GMP’s contention that because it registered
the “Glenn Miller Orchestra” mark and the mark has become
incontestable, it has rights to the mark independent of the
rights to the “Glenn Miller” mark licensed by Helen Miller in
the 1956 agreement. This argument misapprehends a funda-
mental principle of trademark law: Registration does not
create a mark or confer ownership; only use in the market-
place can establish a mark. See Cal. Cooler, Inc. v. Loretto
Winery, Ltd., 774 F.2d 1451, 1454 (9th Cir. 1985) (“[A] trade-
mark is a common law property right that exists indepen-
dently of statutory provisions for registration.” (internal
quotation marks omitted)); 3 McCarthy on Trademarks and
Unfair Competition § 19:3, at 19-15 to -16 (4th ed. 2005).
Neither the registration nor the incontestable status of the
“Glenn Miller Orchestra” mark affects Appellants’ ownership
of the “Glenn Miller” mark, which (a jury could find) was
acquired through use in the marketplace.1 See 15 U.S.C.
1
We reject GMP’s argument that the district court erred in considering
Glenn Miller promotional materials and cease-and-desist letters from
Appellants to suspected trademark infringers, submitted to the district
court with Appellants’ reply to GMP’s opposition to their motion for sum-
mary adjudication, in determining that the evidence was sufficient for a
jury to conclude that Helen Miller owned a “Glenn Miller” trademark in
1956. Appellants introduced the evidence to counter GMP’s claims in its
opposition to summary adjudication that they had not established the exis-
tence of a “Glenn Miller” mark and had not policed their trademark rights.
Had GMP desired to respond to the new material, it could have asked the
district court for permission to do so. See Provenz v. Miller, 102 F.3d
1478, 1483 (9th Cir. 1996), as amended.
7952 MILLER v. GLENN MILLER PRODUCTIONS
§ 1065 (providing that a registered mark is not incontestable
“to the extent, if any, to which the use of [the] mark . . .
infringes a valid right acquired under the law of any State or
Territory by use of a mark or trade name continuing from a
date prior to the date of registration under this chapter of such
registered mark”). GMP’s “Glenn Miller Orchestra” mark
does not foreclose Appellants from establishing that GMP
breached the 1956 agreement and infringed upon their rights
to the “Glenn Miller” mark.

GMP misplaces reliance on Holiday Inns, Inc. v. Trump,
617 F. Supp. 1443 (D.N.J. 1985), for the proposition that a
licensee, by developing a trademark based on a name it has
been licensed to use, may acquire rights in the licensed name
adverse to the original licensor. In Trump, two hotel compa-
nies entered into a partnership with Donald Trump to develop
and operate a casino hotel in Atlantic City, New Jersey. Id. at
1446. Trump granted the partnership a license to use his
name, and the partnership named its property the “Trump
Casino Hotel.” Id. at 1453-55. When Trump subsequently
opened a casino hotel named “Trump’s Castle Casino Hotel”
in Atlantic City, the hotel companies sued to enjoin Trump
from using his name in association with the new property. Id.
at 1446-47. The district court rejected the hotel companies’
contract law claims, finding that Trump had not bargained
away his right to use his name for competing facilities. Id. at
1462-63. It also held that the hotel companies had acquired
some rights in Trump’s name through the development of
goodwill associated with the Trump Casino Hotel, id. at 1469-
70, but it ultimately denied injunctive relief based on equita-
ble considerations, id. at 1474. Because GMP is not seeking
to enjoin Appellants from competing with its Glenn Miller
Orchestra business, but rather contends that its “Glenn Miller
Orchestra” mark is independent of Appellants’ “Glenn Mil-
ler” mark and may be freely licensed to third parties, Trump
is inapposite.

[3] We also reject Appellants’ challenge to the district
court’s laches ruling. It is well-established that we examine
 MILLER v. GLENN MILLER PRODUCTIONS 7953
when a plaintiff “knew or should have known” of the infring-
ing activity to determine whether the plaintiff unreasonably
delayed in bringing suit. E.g., Jarrow Formulas, Inc. v. Nutri-
tion Now, Inc., 304 F.3d 829, 838 (9th Cir. 2002); Kling v.
Hallmark Cards, Inc., 225 F.3d 1030, 1039 (9th Cir. 2000).
Thus in E-Systems, Inc. v. Monitek, Inc., we held that laches
barred a trademark infringement action even though the plain-
tiff did not acquire actual knowledge of the defendant’s activ-
ities until the year of suit, where the “[p]laintiff ought to have
discovered defendant’s use sooner had it been diligently seek-
ing to enforce its mark.” 720 F.2d 604, 607 (9th Cir. 1983),
as amended; see also Bridgestone/Firestone Research, Inc. v.
Auto. Club de l’Ouest de la France, 245 F.3d 1359, 1362,
1364 (Fed. Cir. 2001) (holding that a petition for cancellation
of a registered trademark was barred by the doctrine of laches
based on the petitioner’s constructive knowledge); 5 McCar-
thy on Trademarks § 31:38, at 31-82 (laches requires deter-
mining when the plaintiff was “actually or constructively on
notice of defendant’s activities”).

Undeterred, Appellants cite several cases supposedly hold-
ing that laches is applicable only where the trademark holder
“knowingly allowed” the infringing mark to be used without
objection for a lengthy period of time. See Brother Records,
Inc. v. Jardine, 318 F.3d 900, 909 (9th Cir. 2003); GoTo.com,
Inc. v. Walt Disney Co., 202 F.3d 1199, 1209 (9th Cir. 2000);
Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174
F.3d 1036, 1061 (9th Cir. 1999). In the asserted cases, how-
ever, constructive knowledge was not at issue; rather, we
declined to apply laches because there was no undue delay
between the inception of infringing activity and the filing of
a lawsuit. See Brother Records, 318 F.3d at 902-03 (plaintiff
filed suit within one year of the inception of defendant’s
infringing activity); GoTo.com, 202 F.3d at 1204 (plaintiff
filed suit within two months of the inception of defendant’s
infringing activity); Brookfield Commc’ns, 174 F.3d at 1061
(“Brookfield filed suit the very day that West Coast publicly
announced its intention to launch [the allegedly infringing
7954 MILLER v. GLENN MILLER PRODUCTIONS
website].”). The phrase “knowingly allowed” in these opin-
ions is dictum and cannot bear the weight Appellants seek to
place on it.

Appellants also assert that the district court made a finding
that Steven Miller had actual knowledge of GMP’s unautho-
rized activities several years before filing suit. While GMP is
not entitled to summary judgment on the issue of laches based
on Steven’s actual knowledge in light of Steven’s sworn dec-
laration that he lacked such knowledge until 2000 or 2001, the
district court did not make a finding of actual knowledge. Cf.
Leslie v. Grupo ICA, 198 F.3d 1152, 1157-59 (9th Cir. 1999)
(holding that a sworn statement by a non-movant must be
accepted as true on summary judgment unless the statement
contradicts other sworn statements by the non-movant). The
district court’s finding of unreasonable delay rests on Appel-
lants’ constructive knowledge.2

[4] The district court correctly held that Appellants may
have had constructive knowledge of GMP’s activities as early
as 1981, more than twenty years before the current suit was
filed, and certainly no later than 1994, when Steven Miller’s
attorney began receiving GMP’s financial statements, and
thus that they unreasonably delayed in bringing suit. See, e.g.,
E-Systems, 720 F.2d at 607 (holding that a delay of six to
eight years was unreasonable). Because we affirm the district
court on the basis of laches, we do not review its alternative
holding that Appellants’ failure to supervise GMP’s use of the
“Glenn Miller” mark estops them from bringing this suit.
Wanlass v. Gen. Elec. Co., 148 F.3d 1334, 1337 n.** (Fed.
2
Relatedly, we do not address Appellants’ claim that the district court
erred in receiving into evidence a draft pleading prepared but apparently
never filed by Steven’s attorney in his California state court suit against
David Mackay, Sr. in 1980. The pleading is relevant only to Steven’s
actual knowledge of GMP’s behavior, an issue that cannot be resolved on
summary judgment.
 MILLER v. GLENN MILLER PRODUCTIONS 7955
Cir. 1998) (“Because we affirm summary judgment on the
basis of laches, we do not reach equitable estoppel.”).

AFFIRMED.
7956 MILLER v. GLENN MILLER PRODUCTIONS
APPENDIX

United States District Court,
C.D. California.
Jonnie MILLER, Steven Miller, and CMG Worldwide, Inc.,
Plaintiffs,
v.
GLENN MILLER PRODUCTIONS, Defendant.
No. CV03529AHM (MCX).

April 23, 2004.

MATZ, District Judge.

TABLE OF CONTENTS

FACTUAL BACKGROUND. ...........................................927
ANALYSIS. .......................................................................932

A. The Legal Standard for a Motion
for Summary Judgment. .............................................932
B. Plaintiffs’ Motion for Summary Adjudication:
May GMP Sub-License Intellectual Property
Rights Without Plaintiffs’ Permission?. ....................933

1. Defendant’s Threshold Arguments That
the 1956 Agreement Did Not Convey a
License. ................................................................933

a. The Only Reasonable Interpretation
of the 1956 Agreement is That
it Conveys to GMP Both a Trademark
License and a License of Glenn Miller’s
Publicity Rights. ...........................................934
b. The Court Rejects GMP’s Arguments
that, as a Matter of Law, the 1956
Agreement Could Not Have Conveyed a
Trademark License. ......................................935
 MILLER v. GLENN MILLER PRODUCTIONS 7957
2. The Policy Reasons For the Sub-Licensing
Rule in the Patent and Copyright Contexts
Support Extending the Rule to the
Trademark Context. .............................................937
3. The Same Policies Also Support an
Extension of the Sub-Licensing Rule to
Licenses of Publicity Rights. ..............................938
4. Estoppel. ...............................................................939

C. Defendant’s Motion for Summary Judgment. ...........939

1. GMP Lacks the Unilateral Right to
Sub-License Multiple Ensembles Using the
Name “The Glenn Miller Orchestra”. ................939
2. There Are Fact Issues Concerning Any
Right of GMP to Directly Operate “Special
Units” of the Glenn Miller Orchestra and to
Sell Merchandise. ................................................940
3. The Relationship Between GMP’s
Contractual Rights and the Eleven Causes of
Action Asserted in the Complaint. .....................941
4. Plaintiffs’ Claims Are Barred By Laches. .........941

a. Plaintiffs’ Delay in Bringing Suit. ...............942

i. The Operation and Sub-Licensing
of Multiple Bands. .................................942
ii. The Sale of Merchandise. .....................943

b. Resulting Prejudice to GMP. .........................944

5. Plaintiffs are Estopped From Enforcing the
Terms of Any Trademark License Conveyed
to GMP by the 1956 Agreement. .......................945

CONCLUSION. .................................................................946
7958 MILLER v. GLENN MILLER PRODUCTIONS
This matter is before the Court on Plaintiffs’ Motion for Sum-
mary Adjudication and Defendant’s Motion for Summary
Judgment.

FACTUAL BACKGROUND

The principal facts of this case are either undisputed or not
genuinely disputed.FN1 Glenn Miller was a popular musician
*927 and band leader who formed the Glenn Miller Orchestra
in 1938. During the 1930s and 1940s, Glenn Miller recorded
and released sound recordings using his name and the name
“Glenn Miller Orchestra.” On December 15, 1944, Glenn
Miller was aboard an armed services airplane that crashed in
the English Channel. One year later, he was pronounced dead.
Glenn Miller’s last will and testament did not contain an
express provision bequeathing his publicity rights, trademarks
or other intellectual property rights. His widow, Helen Miller,
inherited the residue of his will, which would include what-
ever intellectual property rights he had.

FN1. Plaintiffs lamely dispute some of the facts cited
in this Order on the ground that “Plaintiffs have no inde-
pendent knowledge of the alleged fact.” See, e.g., # 19.
However, pursuant to Local Rule 56-3 and the Court’s
standing Scheduling and Case Management Order, in
order to genuinely dispute a material fact, Plaintiffs must
submit a declaration or other written evidence.

On either April 20, 1956 or April 23, 1956FN2, David Mackay,
Sr. (Glenn Miller’s close friend and lawyer during his life-
time) incorporated Glenn Miller Productions, Inc. (“GMP”).
GMP’s Certificate of Incorporation specifies that among
GMP’s many purposes were:

FN2. The parties dispute the exact date.

(c) To manufacture, purchase, sell and generally to trade and
deal in and with goods, wares, products and merchandise of
 MILLER v. GLENN MILLER PRODUCTIONS 7959
every kind, nature and description . . .
(e) To organize, own, operate, manage, direct, and control,
directly or through others, one or more orchestras or musical
organizations and to acquire by loan, hiring, purchase, agree-
ment, or other lawful means, the right to use and deal in or
with and to authorize others to use and deal in or with the
name, likeness, music, scores, arrangements and musical style
of others heretofore or hereafter engaged in the field of music.
(i) To acquire copyrights, licenses or other rights to or in
plays, films, dramas, dramatizations, musical compositions
and intellectual properties of all kinds.

See Mackay Decl., Exh. A(7-9). Despite the broad grant of
authority conferred by GMP’s Certificate of Incorporation, at
GMP’s first Board of Director’s meeting on April 25, 1956,
David Mackay, Sr. stated that “the main business of the cor-
poration would be to own and operate a traveling orchestra.”
See Mackay Decl., Exh. B (20).

At the first Board of Director’s meeting, David Mackay, Sr.
was elected President of GMP and he remained president until
his death in 1980. Helen Miller was elected Vice-President of
GMP and she served in that role until her death in 1966. GMP
also employed Helen Miller as a technical advisor. David
Mackay, Sr. and Helen Miller each owned 50% of the shares
of GMP until the times of their respective deaths.

Sometime between April 25, 1956 and June 6, 1956FN3 (in any
case, shortly after GMP was incorporated), Helen Miller exe-
cuted a written license agreement (the “1956 license agree-
ment”) in favor of GMP. The agreement consisted of one
paragraph which read, in its entirety:

FN3. The parties dispute the exact date.

For and in consideration of the sum of ONE AND NO
100THS ($1.00) DOLLAR and other good and valuable con-
sideration, the undersigned, individually and as Executrix of
7960 MILLER v. GLENN MILLER PRODUCTIONS
the estate of Glenn Miller deceased, hereby grants to Glenn
Miller Productions, Inc. the right and license to use the name
and likeness of Glenn Miller and the library of music belong-
ing to the Estate of Glenn Miller and/or the undersigned in
connection with the business activities of Glenn Miller Pro-
ductions, Inc.
See Wolf Decl., Exh. C. Notwithstanding the amount of con-
sideration (i.e., $1.00) specified in the 1956 license agree-
ment, the minutes of a June 6, 1956 GMP Board meeting state
that the Board agreed to pay Helen Miller $13,000 per year
in return*928 for permission to use Glenn Miller’s name, like-
ness and library of music (the same rights conveyed by the
1956 license agreement). See Mackay Decl., Exh. C(24).

Sometime after the 1956 license agreement was executed,
GMP began operating an orchestra called the Glenn Miller
Orchestra and engaging in a variety of promotional activities.
GMP entered into a written contract for the Glenn Miller
Orchestra to perform at Washington & Lee University on
June 6, 1956. Id., Exh. H. In addition, the minutes of a June
2, 1961 GMP Board meeting indicate that in 1961, GMP
authorized a zero-interest $30,000 loan to a production com-
pany to produce a television show on CBS titled “Glenn Mil-
ler Time” featuring the Glenn Miller Orchestra. Id., Exh. I.
The minutes also reflect that the production company received
the rights to “use the Glenn Miller name, picture, likeness,
music and arrangements in connection with the television
show, and usual accompanying promotion and publicity.” Id.
There is no evidence in the record that Helen Miller objected
to this licensing of Glenn Miller’s name, likeness and public-
ity rights. Finally, minutes from an August 26, 1971 GMP
Board meeting indicate that in 1971, GMP’s Board of Direc-
tors ratified GMP’s agreement to purchase 1,000 copies of a
book entitled “Glenn Miller Discography” in order to support
its publication. Id., Exh. J.

In 1965, GMP obtained a federal trademark registration for
the “Glenn Miller Orchestra” mark, which it renewed in 1985.
Id., Exhs. E-F.
 MILLER v. GLENN MILLER PRODUCTIONS 7961
Helen Miller died on June 2, 1966. Helen Miller’s will estab-
lished a testamentary trust containing her GMP shares. The
will named David Mackay, Sr. as the trustee. In his capacity
as trustee, David Mackay, Sr. later sold Helen Miller’s GMP
shares to GMP for $115,000. See Req. for Judicial Notice,
Exh. C. Upon Helen Miller’s death, David Mackay, Jr. (the
son of David Mackay, Sr.) was appointed vice president of
GMP (Helen Miller’s former position).

Like her deceased husband’s will, Helen Miller’s will did not
contain an express provision which bequeathed any of Glenn
Miller’s publicity rights, trademarks or other intellectual prop-
erty rights that she may have inherited. Her two adopted chil-
dren, Steven Miller and Jonnie Soper Miller, would have
inherited any such rights only through the residue of Helen
Miller’s will.

In the late 1970s, Steven and Jonnie Miller filed three sepa-
rate lawsuits against David Mackay, Sr. in Los Angeles, New
York and New Jersey based in part on a dispute over the own-
ership of GMP.FN4 On April 23, 1980, the parties entered into
an oral stipulation (“the settlement agreement”), which is
reflected on the record of the Supreme Court of the State of
New York, settling the New York and Los Angeles lawsuits.
As part of the settlement agreement, the parties agreed as fol-
lows:

FN4. According to a brief filed by Jonnie Miller in the
New Jersey Supreme Court, the complaint in the New
Jersey action alleged that David Mackay, Sr. had
breached his fiduciary duties and exerted undue influ-
ence over the Millers in order to gain personal financial
advantage. See Bonfiglio Decl., Exh. A(4). Steven Miller
testified at his deposition that the California litigation
concerned Steven and Jonnie Miller’s accusation that
David Mackay, Sr. had cheated them out of a one-half
ownership interest in GMP. See Eisenberg Decl., Miller
Depo. (19).
7962 MILLER v. GLENN MILLER PRODUCTIONS
Petitioners [Jonnie and Steven Miller] ratify and confirm the
agreement dated April 25, 1956, made by Helen Miller grant-
ing inter alia Glenn Miller Productions, Inc. ‘The right and
license to use the name and likeness of Glenn Miller *929
and/or [Helen Miller]’ and petitioners agree not to directly or
indirectly organize and/or operate or cause to be organized
and/or operate a band or orchestra using the name of Glenn
Miller or any facsimile thereof. Respondent [presumably,
David Mackay, Sr. or GMP] agrees to pay the petitioners the
sum of $50,000.00 ($25,000.00 to each petitioner) in consid-
eration of Glenn Miller Productions, Inc., past and continued
use in perpetuity of the name, likeness and library of music
of Glenn Miller.
See Wolf Decl., Exh. D (65-66). The New Jersey lawsuit did
not settle, and it ended in a ruling by the New Jersey Supreme
Court in favor of the Millers.

In 1979, Steven Miller retired from his job as a police officer
for the Monrovia police department.FN5 A draft pleading pre-
pared by an attorney for Steven Miller, dated April 7, 1980,
and entitled “Amended Petition for Removing Personal Rep-
resentative,” (i.e., David Mackay, Sr.), suggests that in 1980,
Steven Miller attempted to remove David Mackay, Sr. as the
personal representative of Helen Miller’s estate. Paragraph 42
of the draft pleading reads: “Prior to the death of Helen Mil-
ler, Mackay acquired one-half of the issued and outstanding
stock of two corporations which own and operate the Glenn
Miller Bands which have continued to play throughout the
world since the death of Glenn Miller.” See Eisenberg Decl.,
Exh 37(17). The record does not indicate whether such a
pleading was actually filed in the Los Angeles Superior Court.

FN5. Since his retirement, Steven Miller has described
himself has having participated in the administration of
GMP matters. See Eisenberg Decl., Miller Depo. (15).
Since 1979, Jonnie Miller has assisted him in doing so.
Id. (15-16).
 MILLER v. GLENN MILLER PRODUCTIONS 7963
On May 12, 1980, David Mackay, Sr. died. Upon his death,
David Mackey, Jr. became the president of GMP.

Since at least the 1980s, an ensemble calling itself the Glenn
Miller Orchestra has performed at many events and festivals,
including at the yearly Glenn Miller Birthplace Society Festi-
val in Iowa and the yearly Dancing on the Plains festival in
Colorado. See Mackay Decl. ¶ 12. Since 1981, GMP has oper-
ated one regular Glenn Miller Orchestra band, as well as “spe-
cial units” of the Glenn Miller Orchestra which supplement
the regular Glenn Miller Orchestra band during times of high
demand. Id. ¶ 13. These “special units” are comprised of dif-
ferent band leaders and musicians hired and supervised by
GMP, and they work on a performance-by-performance basis.
Id. Since 1988, the regular Glenn Miller Orchestra has been
led by Larry O’Brien. Id. Between the 1990s and the present,
Steven Miller has attended approximately 6 Glenn Miller
Orchestra performances, all of which he believes were led by
Larry O’Brien. See Eisenberg Decl., Miller Depo. (22-24).

Also since 1988, GMP has sub-licensed to third parties the
right to operate orchestras called the Glenn Miller Orchestra.
Id. ¶ 14. These sub-licensees have operated Glenn Miller
Orchestras in the United States, Canada, Germany and the
United Kingdom. Currently, GMP has two sub-licensees:
Schmidt & Salden GmbH & Co., which operates in Germany,
and Ray McVay, who operates in the United Kingdom. See
Mackay Decl., Exhs. L, O. Both sub-license agreements set
forth detailed “performance standards” which provide, for
example, that the orchestra shall consist of at least 16 musi-
cians plus a leader and one male and one female vocalist, that
the sub-licensee’s bandstands must be similar to that used by
the Glenn Miller Orchestra operated by GMP, that the orches-
tra shall consist of a particular number of various types of
instruments, and that the orchestra “shall at all times behave
and be *930 groomed in accordance with the highest stan-
dards of the Glenn Miller Orchestra.” Id. The sub-license
agreements also provide that a failure to conform to those
7964 MILLER v. GLENN MILLER PRODUCTIONS
standards constitutes a default. Id. Finally, the sub-license
agreements provide that they are not assignable or transfer-
able. Id. Counsel for GMP represented at the hearing on these
motions that David Mackay, Jr. assures that the sub-licensees
are complying with the terms of the sub-license agreements
by observing their performances and monitoring their book-
ings.

Beginning in 1983, GMP also has been selling merchandise,
including cassette tapes, videotapes, CDs, DVDs, t-shirts and
polo shirts bearing the “Glenn Miller Orchestra” mark or the
“GMO” logo. See Mackay Decl. ¶ 9. This merchandise is sold
primarily at GMO performances. Id. ¶ 10. During each perfor-
mance, an announcement is made regarding the sale of mer-
chandise, and a table displaying merchandise is set up in a
prominent location. Id. Since September of 1998, merchan-
dise has also been available on GMP’s website,
(www.glenmillerorchestra.com). Id. ¶ 11. Counsel for GMP
represented at the hearing that GMP’s annual worldwide reve-
nue is approximately $2 million dollars.

During the 1980s and 1990s, counsel for Steven and Jonnie
Miller sent at least eight cease and desist letters to third par-
ties who were not authorized to use or otherwise exploit
Glenn Miller’s name or likeness, but who were, nevertheless,
apparently doing so. See Eisenberg Decl., Exhs. 41-47; Miller
Decl., Exh. B. Although most of these letters were sent to
alleged infringers in the United States, one letter was sent to
a man in the Republic of South Africa who had allegedly
formed an unauthorized Glenn Miller Society in South Africa.
See Eisenberg Decl., Exh. 42. However, the Millers never sent
any cease and desist letters to GMP. Indeed, before they filed
this lawsuit, the Millers had never communicated with GMP
regarding any qualitative aspect of GMP’s business activities,
such as its operation of the Glenn Miller Orchestra, its sub-
licensing to third parties of the right to operate a Glenn Miller
Orchestra, or its sale of merchandise bearing the “Glenn Mil-
ler Orchestra” mark. See Mackay Decl. ¶ 2.
 MILLER v. GLENN MILLER PRODUCTIONS 7965
There are currently approximately 300 GMP shares outstand-
ing, most of which are owned by David Mackay, Jr. In 1992
and 1993, Jonnie Miller and Steven Miller (respectively)
became GMP shareholders by purchasing shares from David
Mackay, Jr.’s stepbrother, Samuel Clark. See Eisenberg Decl.,
Miller Depo. (20). Steven Miller currently owns eleven shares
in GMP and Jonnie Miller owns one share. Id. (20-21). GMP
sends its shareholders, including Jonnie and Steven Miller,
yearly financial information about GMP’s operations, includ-
ing GMP’s financial statements. See O’Reilly Decl., Exhs. A-
O. The record indicates that some of these financial state-
ments were sent directly to Steven Miller, and others were
sent to his counsel, Laura Ben-Porat of Gibson, Dunn & Crut-
cher. Id. Included in GMP’s financials were its income state-
ments, each of which contained line items for “Licensing
U.S.,” “Licensing U.K.,” and “Licensing Europe.” Id.

In 1994, the Millers hired the Roger Richman Agency, for a
period of two years, to be their exclusive licensing agent for
use of the Glenn Miller name “in connection with all video
recording and tapes; look-alikes; sound-alikes; advertising;
commercials; theater and other dramatic uses; animation;
newspaper; book and magazine syndication; endorsements;
promotions; premiums; sale of merchandise and/or use in all
services.” See Eisenberg Decl., Exh. 49(1). However,
excluded from the grant of rights to the Roger Richman
Agency were rights previously *931 granted by GMP to cer-
tain third parties, including “Orchestras of Glenn Miller Pro-
ductions, Inc., a New York Corporation.” Id. (6). In 1996, the
Millers hired Plaintiff CMG Worldwide, Inc. (“CMG”) to be
their exclusive licensing agent, subject to the same exclusion
for the pre-existing rights of “Orchestras of Glenn Miller Pro-
ductions, Inc., a New York Corporation.” Id., Exh. 50 (1, 7).

In 1999, Steven Miller filed trademark applications with the
PTO for the mark “Glenn Miller” in connection with various
classes of goods and services, including clothing, paper
goods, housewares, glass and entertainment activities. See
7966 MILLER v. GLENN MILLER PRODUCTIONS
Bonfiglio Decl., Exhs. B-F. However, the PTO rejected Ste-
ven Miller’s applications due to the likelihood of confusion
with GMP’s already registered “Glenn Miller Orchestra”
mark. Id., Exhs. G-K. On June 2, 2001, the PTO deemed Ste-
ven Miller’s applications abandoned. Id., Exhs. L-P. Some-
time later in 2001, Steven Miller filed new applications for
the Glenn Miller mark. GMP has opposed those applications,
and all proceedings by the PTO have been stayed pending the
outcome of this litigation. Id., Exh. Q.

Steven Miller claims that he first learned in 2000 or 2001 that
there was more than one functioning Glenn Miller Orchestra,
although he does not specify how he learned. See Miller Decl.
¶ 9. Steven Miller also claims that he did not learn until April
2003 (after filing this lawsuit) that GMP has entered into sub-
license agreements with third parties to use Glenn Miller’s
name and likeness in the United States and in foreign coun-
ties. Id. The record does not indicate when Steven Miller
learned that GMP has been selling merchandise bearing the
Glenn Miller Orchestra mark.

On June 22, 2003, Steven Miller, Jonnie Miller, and CMG
Worldwide, Inc. (collectively “Plaintiffs”) filed this action
against GMP, asserting eleven claims for relief: (1) breach of
written contract; (2) termination of written contract; (3)
infringement of statutory right of publicity; (4) violation of 15
U.S.C. § 1125(a); (5) intentional interference with economic
advantage; (6) federal statutory dilution; (7) state statutory
dilution; (8) violation of Cal. Business & Professions Code
§ 17200; (9) conversion; (10) accounting; and (11) declara-
tory relief, all based on GMP’s sale of merchandise bearing
Glenn Miller’s name, likeness and identity, and GMP’s sub-
licensing to third parties of the right to operate orchestras
named the Glenn Miller Orchestra.

Plaintiffs currently move for summary adjudication of one
narrow issue in this case. They seek a ruling from the Court
that GMP may not sub-license any intellectual property rights
 MILLER v. GLENN MILLER PRODUCTIONS 7967
conveyed to it pursuant to the 1956 license agreement without
express permission from the licensors (now the Millers), and
therefore that GMP’s admitted sub-licensing constitutes a
material breach of the 1956 license agreement. Defendant has
filed a cross-motion for summary judgment, contending that
the 1956 license agreement and 1980 settlement agreement
give GMP the right to sell merchandise and to operate and
sub-license multiple bands, and in any case, that all of Plain-
tiffs’ claims are barred by the doctrine of laches. Although the
Court ultimately finds that Plaintiffs’ claims are barred by the
doctrines of estoppel and laches, the Court will proceed to
examine the other issues raised by the parties because the
Court anticipates an appeal from the laches ruling and
believes that if the Court is found to be in error, on remand
it would be in the parties’ best interest to have their respective
rights and obligations previously clarified. Indeed, such clari-
fication may assist the parties in settling their surprisingly bit-
ter and very costly dispute.

*932 ANALYSIS

A. The Legal Standard for a Motion for Summary
Judgment.

Federal Rule of Civil Procedure 56(c) provides for summary
judgment when “the pleadings, depositions, answers to inter-
rogatories, and admissions on file, together with the affida-
vits, if any, show that there is no genuine issue as to any
material fact and that the moving party is entitled to judgment
as a matter of law.” The moving party bears the initial burden
of demonstrating the absence of a “genuine issue of material
fact for trial.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242,
256, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). A fact is mate-
rial if it could affect the outcome of the suit under the govern-
ing substantive law. Id. at 248, 106 S.Ct. 2505. The burden
then shifts to the nonmoving party to establish, beyond the
pleadings, that there is a genuine issue for trial. Celotex Corp.
7968 MILLER v. GLENN MILLER PRODUCTIONS
v. Catrett, 477 U.S. 317, 324, 106 S.Ct. 2548, 91 L.Ed.2d 265
(1986).

“When the party moving for summary judgment would bear
the burden of proof at trial, it must come forward with evi-
dence which would entitle it to a directed verdict if the evi-
dence went uncontroverted at trial. In such a case, the moving
party has the initial burden of establishing the absence of a
genuine issue of fact on each issue material to its case.”
C.A.R. Transportation Brokerage Co., Inc. v. Darden Restau-
rants, Inc., 213 F.3d 474, 480 (9th Cir.2000) (citations omit-
ted). In contrast, when the non-moving party bears the burden
of proving the claim or defense, the moving party can meet
its burden by pointing out the absence of evidence from the
non-moving party. The moving party need not disprove the
other party’s case. See Celotex, 477 U.S. at 325, 106 S.Ct.
2548. Thus, “[s]ummary judgment for a defendant is appro-
priate when the plaintiff ‘fails to make a showing sufficient to
establish the existence of an element essential to [his] case,
and on which [he] will bear the burden of proof at trial.’ ”
Cleveland v. Policy Management Sys. Corp., 526 U.S. 795,
805-06, 119 S.Ct. 1597, 143 L.Ed.2d 966 (1999) (citing
Celotex, 477 U.S. at 322, 106 S.Ct. 2548).

When the moving party meets its burden, the “adverse party
may not rest upon the mere allegations or denials of the
adverse party’s pleadings, but the adverse party’s response, by
affidavits or as otherwise provided in this rule, must set forth
specific facts showing that there is a genuine issue for trial.”
Fed. R. Civ.P. 56(e). Summary judgment will be entered
against the non-moving party if that party does not present
such specific facts. Id. Only admissible evidence may be con-
sidered in deciding a motion for summary judgment. Id.;
Beyene v. Coleman Sec. Serv., Inc., 854 F.2d 1179, 1181 (9th
Cir.1988).

“[I]n ruling on a motion for summary judgment, the nonmov-
ing party’s evidence ‘is to be believed, and all justifiable
 MILLER v. GLENN MILLER PRODUCTIONS 7969
inferences are to be drawn in [that party’s] favor.’ ” Hunt v.
Cromartie, 526 U.S. 541, 552, 119 S.Ct. 1545, 143 L.Ed.2d
731 (1999) (quoting Anderson, 477 U.S. at 255, 106 S.Ct.
2505). But the non-moving party must come forward with
more than “the mere existence of a scintilla of evidence.”
Anderson, 477 U.S. at 252, 106 S.Ct. 2505. Thus, “[w]here
the record taken as a whole could not lead a rational trier of
fact to find for the nonmoving party, there is no genuine issue
for trial.” Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio
Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538
(1986) (citation omitted).

Simply because the facts are undisputed does not make sum-
mary judgment appropriate. Instead, where divergent ultimate
inferences may reasonably be drawn from the undisputed
facts, summary judgment is improper. See *933 Braxton-
Secret v. A.H. Robins Co., 769 F.2d 528, 531 (9th Cir.1985).

B. Plaintiffs’ Motion for Summary Adjudication: May
GMP Sub-License Intellectual Property Rights Without
Plaintiffs’ Permission?

It is well established in patent and copyright law that a patent
or copyright licensee may not sub-license his licensed intel-
lectual property rights without express permission from the
licensor. See Gardner v. Nike, Inc., 279 F.3d 774 (9th
Cir.2002); Everex Systems v. Cadtrak Corp., 89 F.3d 673, 679
(9th Cir.1996). (The Court will henceforth refer to this rule as
“the sub-licensing rule.”) Although the Ninth Circuit has not
addressed whether the sub-licensing rule applies to trademark
licenses, the courts that have addressed the issue have uni-
formly held it does, and thus that a trademark licensee may
not sub-license a mark without express permission from the
licensor. See Tap Publications, Inc. v. Chinese Yellow Pages
(New York), Inc., 925 F.Supp. 212, 218 (S.D.N.Y.1996); In re
Travelot Co., 286 B.R. 447, 455 (Bankr.S.D.Ga.2002); Rau-
fast S.A. v. Kicker’s Pizzazz Ltd., 208 U.S.P.Q. 699, 703, 1980
WL 30295, 1980 U.S. Dist. LEXIS 16490 *12-13
7970 MILLER v. GLENN MILLER PRODUCTIONS
(E.D.N.Y.1980); J. Thomas McCarthy, McCarthy on Trade-
marks and Unfair Competition, § 18:43 (4th ed.) (hereinafter
“McCarthy”). The reasoning behind the courts’ extension of
the sub-licensing rule to the trademark context is that, “[s]ince
the licensor-trademark owner has the duty to control the qual-
ity of goods sold under its mark, it must have the right to pass
upon the abilities of new potential licensees.” McCarthy,
supra, § 25:33.

In Plaintiffs’ motion for summary adjudication, Plaintiffs ask
the Court to apply the sub-licensing rule (previously recog-
nized by courts in Tap, Travelot and Raufast) to trademark
licenses. Plaintiffs also ask the Court to extend the sub-
licensing rule to licenses of publicity rights.FN6 Finally, Plain-
tiffs seek a ruling that because the 1956 license agreement did
not grant GMP express permission to sub-license, GMP does
not have the right to sub-license any intellectual property
rights it obtained under the 1956 license agreement.

FN6. Fundamentally, the right of publicity “is the
inherent right of every human being to control the com-
mercial use of his or her identity.” See McCarthy, supra,
§ 28:3. California law recognizes both a statutory and
common law right of publicity. The statutory right of
publicity is codified in Cal. Civil Code § 3344, which
provides in relevant part: “Any person who knowingly
uses another’s name, voice, signature, photograph, or
likeness, in any manner, . . . for purposes of advertising
or selling, . . . without such person’s prior consent . . .
shall be liable for any damages sustained by the person
or persons injured as a result thereof.” California’s
common-law right of publicity protects an individual’s
name and likeness from appropriation for either commer-
cial or non-commercial purposes. See Wendt v. Host
Int’l, Inc., 125 F.3d 806, 811 (9th Cir.1997). The right to
publicity extends 70 years beyond an individual’s death.
See McCarthy, supra, § 28:27; Cal. Civ.Code § 3344.1.
 MILLER v. GLENN MILLER PRODUCTIONS 7971
1. Defendant’s Threshold Arguments That the 1956
Agreement Did Not Convey a License.

Defendant argues, first, that as a matter of contract law, the
1956 agreement between Helen Miller and GMP did not con-
vey a license. Defendant also argues that even if the parties
did intend the agreement to convey a license, at the time,
there were no existing trademark rights that could be licensed.

*934 a. The Only Reasonable Interpretation of the 1956
Agreement is That it Conveys to GMP Both a Trademark
License and a License of Glenn Miller’s Publicity Rights.

The threshold question is: what rights did the 1956 licensing
agreement convey to GMP? Plaintiffs argue that the license
agreement conveyed a trademark license to GMP. GMP first
argues in opposition that the 1956 agreement did not convey
a trademark license, but instead a license of Glenn Miller’s
right to publicity. In Plaintiffs’ reply brief, Plaintiffs contend
(somewhat inconsistently with their opening brief) that the
1956 agreement “transfers a bundle of rights, including trade-
mark rights and publicity rights.” See Reply at 13. In any case,
Plaintiffs contend in their reply brief that the exact categoriza-
tion of the rights conveyed by the 1956 licensing agreement
is not relevant because the sub-licensing rule should apply to
all areas of intellectual property. Id. However, if Plaintiffs are
wrong about the scope of the rights conveyed to GMP by the
1956 agreement, the Court would not have to address whether
the sub-licensing rule should be extended to licenses of trade-
marks and publicity rights.

Courts apply general principles of contract interpretation
when interpreting the terms and scope of a licensing agree-
ment. See Mendler v. Winterland Production, Ltd., 207 F.3d
1119, 1121 (9th Cir.2000). “[T]he fundamental goal of con-
tract interpretation is to give effect to the mutual intent of the
parties as it existed at the time of contracting.” See United
States Cellular Invest. Co. of Los Angeles v. GTE Mobilnet,
7972 MILLER v. GLENN MILLER PRODUCTIONS
Inc., 281 F.3d 929, 934 (9th Cir.2002). Under California
lawFN7, “[t]he test of admissibility of extrinsic evidence to
explain the meaning of a written instrument is not whether it
appears to the court to be plain and unambiguous on its face,
but whether the offered evidence is relevant to prove a mean-
ing to which the language of the instrument is reasonably sus-
ceptible.” See Pacific Gas and Electric Co. v. G.W. Thomas
Drayage & Rigging Co., 69 Cal.2d 33, 37, 69 Cal.Rptr. 561,
442 P.2d 641 (1968) (in bank); United States v. King Features
Entertainment, Inc., 843 F.2d 394, 398 (9th Cir.1988).
Because California law recognizes that the words of a written
instrument often lack a clear meaning apart from the context
in which the words were written, courts may preliminarily
consider any extrinsic evidence offered by the parties. “If the
court decides, after consideration of this evidence, that the
language of a contract, in the light of all the circumstances,
is ‘fairly susceptible of either one of the two interpretations
contended for,’ extrinsic evidence relevant to prove either of
such meanings is admissible.” Pacific Gas, 69 Cal.2d at 38-
40, 69 Cal.Rptr. 561, 442 P.2d 641; United States Cellular
Invest. Co., 281 F.3d at 939. Extrinsic evidence includes testi-
mony regarding the circumstances in which a contract was
written, the subsequent conduct of the parties, and the com-
mon usage of particular terms in a given industry. See Pacific
Gas, 69 Cal.2d at 38-39, 69 Cal.Rptr. 561, 442 P.2d 641;
United States Cellular Invest. Co., 281 F.3d at 937; United
Cal. Bank v. THC Financial Corp., 557 F.2d 1351, 1360 (9th
Cir.1977).

FN7. The agreement lacks a choice of law clause.
Given the absence of any argument by the parties that
California law does not govern the agreement, the Court
will apply California law in construing it.

If, after considering the language of the contract and any
admissible extrinsic evidence, the meaning of the contract is
unambiguous, a court may properly interpret it on a motion
for summary judgment. See Southern California Gas Co. v.
 MILLER v. GLENN MILLER PRODUCTIONS 7973
City of Santa Ana, 336 F.3d 885 (9th Cir.2003). *935 How-
ever, if the interpretation turns upon the credibility of conflict-
ing extrinsic evidence, or if “construing the evidence in the
nonmovant’s favor, the ambiguity can be resolved consistent
with the nonmovant’s position,” summary judgment is inap-
propriate. Id.; Cejay Parsons v. Bristol Devel. Co., 62 Cal.2d
861, 865-66, 44 Cal.Rptr. 767, 402 P.2d 839 (1965).

The 1956 license agreement conveyed to GMP “the right and
license to use the name and likeness of Glenn Miller . . . in
connection with the business activities of [GMP].” See Wolf
Decl., Exh. C. The license agreement does not explicitly con-
vey to GMP either the right to license any existing Glenn Mil-
ler trademark or Glenn Miller’s publicity rights, or both.
However, the terms “name” and/or “likeness” are found in
both the Lanham Act definition of a trademark and in the def-
initions of California’s statutory and common law rights to pub-
licity.FN8 Because the 1956 agreement is ambiguous on its face
and is reasonably susceptible to multiple interpretations,
extrinsic evidence is admissible to prove the parties’ intent
when they executed the agreement. See Pacific Gas, 69
Cal.2d at 38-40, 69 Cal.Rptr. 561, 442 P.2d 641.

FN8. The Lanham Act defines a trademark as includ-
ing “any word, name, symbol, or device, or any combi-
nation thereof” used by a person “to identify and
distinguish his or her goods . . . from those manufactured
or sold by others and to indicate the source of the goods,
even if that source is unknown.” 15 U.S.C. § 1127. Simi-
larly, under both California statutory and common law,
the right of publicity protects against the appropriation
by others of one’s “name, voice, signature, photograph,
or likeness.” See Cal. Civ.Code § 3344; Wendt v. Host
Int’l, Inc., 125 F.3d 806, 810-11 (9th Cir.1997).

It is undisputed that Helen Miller executed the 1956 license
agreement shortly after incorporating GMP. The proximity of
the two events, the undisputed fact that after its formation and
7974 MILLER v. GLENN MILLER PRODUCTIONS
until the execution of the license agreement, GMP did not
conduct any business beyond electing officers and drafting
bylaws, and GMP’s use of the name “Glenn Miller” in its own
name, strongly suggest that GMP was incorporated for the
specific purpose of conducting business related to Glenn Mil-
ler, notwithstanding that the Certificate of Incorporation
speaks more generally about its purposes. (See pages 2-3,
supra.) In addition, as described above, GMP’s Certificate of
Incorporation provided that GMP was authorized to “manu-
facture, purchase, sell and generally to trade and deal in and
with goods, wares, products and merchandise of every kind,
nature and description” as well as to “organize, own, operate,
manage, direct and control, directly or through others, one or
more orchestras or musical organizations.” See Mackay Decl.,
Exh. A(7-9). It is hard to imagine that GMP would be able to
sell and trade merchandise and operate orchestras bearing the
Glenn Miller mark without exploiting Glenn Miller’s identity
or likeness for promotional purposes. Likewise, it is hard to
imagine that GMP could exploit Glenn Miller’s publicity
rights without using a trademark containing the Glenn Miller
name. Therefore, the Court finds that 1956 agreement is sus-
ceptible to only one reasonable interpretation-that it conveys
both a trademark license and a license of Glenn Miller’s pub-
licity rights.

b. The Court Rejects GMP’s Arguments That, as a Matter
of Law, the 1956 Agreement Could Not Have Conveyed a
Trademark License.

GMP next argues that regardless of how the terms are con-
strued, as a matter of law, the 1956 agreement could not have
conveyed a trademark license to GMP because neither Plain-
tiffs nor their predecessors owned a “Glenn Miller” trademark
in 1956. Therefore, GMP argues, the 1956 *936 agreement
must have conveyed only a license of Glenn Miller’s publicity
rights. This argument is unpersuasive.

An individual may acquire trademark protection in a personal
name in one of two ways. First, an individual may obtain a
 MILLER v. GLENN MILLER PRODUCTIONS 7975
federal trademark registration from the Patent and Trademark
Office. See McCarthy, supra, § 16:19. It is undisputed that
neither Plaintiffs nor their predecessors have, at any time,
obtained a federal registration for the mark “Glenn Miller.”
Second, an individual may prove that through usage, a per-
sonal name has acquired a secondary meaning. See McCarthy,
supra, § 13.2. “Secondary meaning is the consumer’s associa-
tion of the mark with a particular source or sponsor.” See E.
& J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1291
(9th Cir.1992). In determining whether a mark has obtained
secondary meaning, courts consider: (1) whether actual pur-
chasers of the product bearing the mark associate the mark
with the producer; (2) the degree and manner of advertising
under the mark; (3) the length and manner of use of the mark;
and (4) whether use of the mark has been exclusive. See
Comm. for Idaho’s High Desert v. Yost, 92 F.3d 814, 822 (9th
Cir.1996). Whether a claimed mark has obtained a secondary
meaning is a question of fact to be determined by a jury. See
Igloo Products Corp. v. Brantex, Inc., 202 F.3d 814, 818 (5th
Cir.2000).

Plaintiffs present evidence of pre-1956 advertising and use of
the Glenn Miller name in connection with the sale of goods
and services, such as radio shows, advertisements for agents,
record labels, cigarettes, transcription services, concerts,
record compilations, musical instruments, commemorative
clothing, photographs and specialty items. See Steven Miller
Decl., ¶¶ 4-19, Exh. A. This evidence is sufficient to permit
a reasonable jury to conclude that by 1956, consumers associ-
ated the name “Glenn Miller” with a particular source or qual-
ity of product, and thus that the Glenn Miller name had
acquired a secondary meaning. Therefore, the Court rejects
GMP’s argument that the 1956 agreement could not have con-
veyed a trademark license because in 1956 Helen Miller had
no trademark to convey.

GMP also argues that the 1956 agreement could not have con-
veyed a trademark license because the agreement did not con-
7976 MILLER v. GLENN MILLER PRODUCTIONS
tain a provision for the supervision and control over the goods
and services GMP produced under the license. It is well estab-
lished that when the owner of a trademark licenses the mark
to others, he retains a “duty to exercise control and supervi-
sion over the licensee’s use of the mark.” See Sheila’s Shine
Products, Inc. v. Sheila Shine, Inc., 486 F.2d 114, 123-24 (5th
Cir.1973); Siegel v. Chicken Delight, Inc., 448 F.2d 43 (9th
Cir.1971). However, a provision recognizing the licensor’s
supervision and control is not an essential element of a trade-
mark license. See Dawn Donut Co. v. Hart’s Food Stores,
Inc., 267 F.2d 358, 368 (2nd Cir.1959) (“The absence of an
express contract right to inspect and supervise a licensee’s
operations does not mean that the plaintiff’s method of licens-
ing failed to comply with the requirements of the Lanham
Act. Plaintiff may have in fact exercised control in spite of the
absence of any express grant by licensees of the right to
inspect and supervise”); Bunn-O-Matic Corp. v. Bunn Coffee
Service, Inc., 88 F.Supp.2d 914 (C.D.Ill.2000) (holding that
an agreement conveyed a trademark license despite the agree-
ment’s lack of an explicit quality control provision). A license
agreement need not contain an express quality control provi-
sion because trademark law, rather than the contract itself,
confers on the licensor the right and obligation to exercise
quality control. See *937 McCarthy, supra, § 18:59. There-
fore, the lack of a quality control provision in the 1956 agree-
ment does not mean that Helen Miller could not have
conveyed a valid trademark license to GMP.

Having found, first, that the only reasonable interpretation of
the language of the 1956 agreement is that it conveyed both
a trademark license and a license of Glenn Miller’s publicity
rights, and second, that a jury could reasonably find that
Helen Miller owned a trademark that she could license, the
Court now will turn to the merits of Plaintiffs’ summary adju-
dication motion.
 MILLER v. GLENN MILLER PRODUCTIONS 7977
2. The Policy Reasons For the Sub-Licensing Rule in the
Patent and Copyright Contexts Support Extending the Rule
to the Trademark Context.

Acting on its own, GMP has sub-licensed to third parties the
rights it acquired in the 1956 agreement. Could it do so, law-
fully? In Harris v. Emus Records Corp., 734 F.2d 1329 (9th
Cir.1984), the Ninth Circuit addressed for the first time
whether under the 1909 Copyright Act, a copyright licensee
could transfer his license to a third party without permission
from the original licensor. The Ninth Circuit held that a copy-
right licensee could not do so. Id. at 1334. In support of its
ruling, the Ninth Circuit discussed several policy issues,
including that a copyright licensor’s retained rights in the
copyright would be jeopardized if the licensee could sub-
license without notifying or receiving permission from him.
Id. The Ninth Circuit reasoned: “By licensing rather than
assigning his interest in the copyright, the owner reserves cer-
tain rights, including that of collecting royalties. His ability to
monitor use would be jeopardized by allowing sublicensing
without notice.” Id. Eighteen years later, in Gardner v. Nike,
Inc., 279 F.3d 774, 781 (9th Cir.2002), the Ninth Circuit held
that the same rule applied to the 1976 Copyright Act, for the
same reason. In addition to agreeing with the Harris court’s
concern about the ability of a copyright licensor to monitor
use, the Ninth Circuit also recognized that in the absence of
such a requirement, disputes between a licensor and a licensee
regarding whether a sub-licensee was acting within the scope
of the original license would trigger litigation (an undesirable
result). Id.

The policy rationales cited by the Ninth Circuit in Harris and
Gardner apply with equal force to the sub-licensing of trade-
marks. As discussed above, a trademark owner has an affir-
mative duty to supervise and control the licensee’s use of its
mark, in order to protect the public’s expectation that all prod-
ucts sold under a particular mark derive from a common
source and are of like quality. See McCarthy, supra, §§ 18:42,
7978 MILLER v. GLENN MILLER PRODUCTIONS
18:48. Licensors who fail to meet this obligation may lose
their right to enforce the trademark license. Id. § 18:48. Com-
mon sense suggests that if a trademark licensee could unilat-
erally sub-license a mark without notifying or obtaining
consent from the licensor, then a trademark licensor would
lose his ability to police his mark, thereby becoming estopped
from enforcing his ownership rights vis-a-vis the licensee.
Such a result is illogical, undesirable, and at odds with the
nature of intellectual property rights. Moreover, if a trademark
licensor could not control the capacity of a licensee to sub-
license its mark, then disputes about the suitability of a poten-
tial sub-licensee or about whether a sub-licensee is acting
within the scope of the original license would trigger litiga-
tion. As the Ninth Circuit recognized in Gardner, this result
is also undesirable.

The Court acknowledges that, as GMP points out in its oppo-
sition and the Supreme Court has recognized, there are *938
“fundamental differences” between patent and copyright law
on the one hand, and trademark law on the other hand. See
Sony Corp. of America v. Universal City Studios, 464 U.S.
417, 439 n. 19, 104 S.Ct. 774, 78 L.Ed.2d 574 (1984). For
example, while the basic policies underlying copyright and
patent protection are to encourage creative authorship and
invention, the purposes of trademark protection are to protect
the public’s expectation regarding the source and quality of
goods. Id. at 429, 104 S.Ct. 774; McCarthy, supra, §§ 3:4-
3:11. However, despite these differences, copyright and trade-
mark licensors share a common retained interest in the owner-
ship of their intellectual property-an interest that would be
severely diminished if a licensee were allowed to sub-license
without the licensor’s express permission. For these reasons,
the Court finds that the policies underlying the sub-licensing
rule in patent and copyright law apply with equal force to
trademark law. Accordingly, a trademark licensee such as
GMP may not sub-license without express permission from
the original licensor.
 MILLER v. GLENN MILLER PRODUCTIONS 7979
3. The Same Policies Also Support an Extension of the
Sub-licensing Rule to Licenses of Publicity Rights.

Plaintiffs also argue that the sub-licensing rule should apply
to licenses of an individual’s publicity rights. Plaintiffs cite no
authority for this proposition, but merely rely on the same
policy arguments and rationales discussed above.

Although trademarks and publicity rights share many com-
mon features, they are also dissimilar in several ways. For
example, while trademark laws protect the trademark owner
by fortifying the public’s expectation regarding the source and
quality of goods and services, the right of publicity protects
an individual’s “persona” from commercial exploitation by
others. See McCarthy, supra, §§ 29:8-29:9. However, the dis-
tinction most relevant for the purposes of this motion is that
a licensor of an individual’s publicity rights, unlike a trade-
mark licensor, lacks an affirmative statutory or common law
duty to police its license and to ensure that the licensee is
maintaining sufficient quality controls. See McCarthy, supra,
§ 28:14. Therefore, one of the two policy rationales support-
ing the extension of the sub-licensing rule to trademark
licenses-that unfettered sub-licensing will prevent the licensor
from satisfying his obligation to supervise the licensee-does
not apply to licenses of publicity rights.

Nevertheless, a licensor of publicity rights may, in many
instances-indeed, in probably all instances and respects-have
a powerful incentive to supervise the licensee’s use of those
rights. The facts of this case are instructive. If GMP were per-
mitted to sub-license Glenn Miller’s publicity rights without
notifying or obtaining permission from the owner of those
rights-Plaintiffs, as this Court has found-it could sub-license
Glenn Miller’s publicity rights to a third party who used his
name or photograph or likeness to promote fascism or por-
nography. Such use presumably would horrify Glenn Miller
if he were alive; it also would adversely affect the image of
Glenn Miller that Plaintiffs (successors to their mother, the
7980 MILLER v. GLENN MILLER PRODUCTIONS
original licensor) may wish to preserve. However, absent a
sub-licensing rule, Plaintiffs would have no ability to prevent
GMP from sullying their father’s name (and, in fact, would
have no right to even know that GMP was doing so). In addi-
tion, any disputes about whether GMP could sub-license
Glenn Miller’s right of publicity to a particular third party, or
whether a third party sub-licensee was acting beyond the
scope of the original license, would trigger litigation. These
are undesirable results.

Moreover, in practice, many licenses convey both trademark
rights and publicity *939 rights. In such cases, “the special
rules of trademark licensing must be followed in order to pre-
serve the trademark significance of the licensed identity or
persona.” McCarthy, supra, § 28:14. Again, the facts of this
case help illustrate this principle. If, without Plaintiffs’ knowl-
edge or permission, GMP could sub-license the Glenn Miller
mark to third parties who use the mark to sell products or
causes at odds with what Glenn Miller stood for, the public’s
image of Glenn Miller’s persona surely would become tainted
in a manner that Plaintiffs did not intend. Conversely, if GMP
could sub-license Glenn Miller’s publicity rights to third par-
ties who use his name or photograph or likeness to sell a wide
variety of products whose quality is not controlled, then the
Glenn Miller mark may become diluted. For these reasons, at
least in cases such as this one in which a license conveys both
trademark and publicity rights, the sub-licensing rule should
be extended to cover publicity rights.

For these reasons, if a jury were to find that at the time Helen
Miller executed the 1956 license agreement, she actually had
a trademark in Glenn Miller’s name to convey, then because
the 1956 license agreement does not expressly grant GMP
unilateral authority to sub-license the mark, GMP may not do
so. In addition, because the 1956 license agreement does not
grant GMP express permission to unilaterally sub-license
Glenn Miller’s publicity rights, GMP may not do so.
 MILLER v. GLENN MILLER PRODUCTIONS 7981
4. Estoppel.

Finally, GMP argues that Plaintiffs are estopped from enforc-
ing the terms of any trademark license Helen Miller conveyed
to GMP in the 1956 agreement because Plaintiffs have failed
to affirmatively supervise and control the quality of the goods
and services provided under the license. Although GMP prop-
erly asserts this defense in opposition to Plaintiffs’ motion for
summary adjudication, the Court chooses to deal with it in the
next section (regarding GMP’s motion for summary judg-
ment).

C. Defendant’s Motion for Summary Judgment.

GMP has filed a cross-motion for summary judgment, con-
tending that: (1) the 1956 license agreement and 1980 settle-
ment agreement grant GMP the right to sell merchandise
bearing the Glenn Miller Orchestra mark; (2) the same two
agreements grant GMP the right to operate and sub-license
multiple bands; (3) because GMP has the right to sell mer-
chandise and to operate and sub-license multiple bands, all of
Plaintiffs’ eleven claims for relief necessarily fail; and (4) all
of Plaintiffs’ claims are barred by the doctrine of laches.
Although the Court rejects GMP’s first three contentions, it
agrees that Plaintiffs’ claims are barred by laches. The Court
also finds that Plaintiffs are estopped from enforcing the
terms of any trademark license Helen Miller conveyed to
GMP in the 1956 agreement.

1. GMP Lacks the Unilateral Right to Sub-License
Multiple Ensembles Using the Name “The Glenn Miller
Orchestra.”

GMP argues that the only reasonable interpretation of the
1956 license agreement and the 1980 settlement agreement is
that they permit GMP to sub-license to an unlimited number
of third parties the right to operate orchestras named the
Glenn Miller Orchestra. However, because the Court has
7982 MILLER v. GLENN MILLER PRODUCTIONS
already ruled that a trademark and publicity rights licensee
(such as GMP) may not sub-license those rights without the
express permission of the licensor, and because it is undis-
puted that the two agreements do not expressly authorize
GMP to sub-license, as a matter of law, GMP lacks the unilat-
eral authority *940 to sub-license its right to operate a band
named the Glenn Miller Orchestra.

2. There Are Fact Issues Concerning Any Right of GMP
to Directly Operate “Special Units” of the Glenn Miller
Orchestra and to Sell Merchandise.

GMP also argues that the only reasonable interpretation of the
1956 license agreement and the 1980 settlement agreement
shows that Helen Miller and Plaintiffs actually granted to
GMP the right to itself operate more than one ensemble
named the Glenn Miller Orchestra, such as ensembles referred
to as “special units,”FN9 and to sell merchandise bearing the
Glenn Miller Orchestra mark,FN10 including cassette tapes, vid-
eotapes, CDs, DVDs, t-shirts and polo shirts. GMP relies on
the following undisputed evidence in support of its interpreta-
tion:

FN9. Since the operation of “special units” does not
constitute sub-licensing, the sub-licensing rule does not
bar GMP from itself operating more than one Glenn Mil-
ler Orchestra absent express permission from the Millers.

FN10. At the hearing on these motions, counsel for
Plaintiffs represented that Plaintiffs object to the sale of
this merchandise only to the extent that it bears the
stand-alone “Glenn Miller” name, as compared to the
“Glenn Miller Orchestra” mark. Plaintiffs have failed to
proffer any evidence whatsoever of such merchandise
being sold, which itself is a basis to grant GMP’s motion,
in addition to the reasons discussed, infra, concerning
laches.
 MILLER v. GLENN MILLER PRODUCTIONS 7983
1. GMP’s Certificate of Incorporation provides that GMP is
authorized to “organize, operate, manage, direct, and control,
directly or through others, one or more orchestras or musical
organizations,” and to “manufacture, purchase, sell and gener-
ally to trade and deal in and with goods, wares, products and
merchandise of every kind, nature and description ” Mackay
Decl., Exh. A(7-9).
2. At the time Helen Miller executed the 1956 license agree-
ment, she was a 50% shareholder in GMP. See Mackay Decl.,
¶ 5.
3. The 1956 license agreement grants GMP the right to use
Glenn Miller’s name and likeness “in connection with the
business activities of Glenn Miller Productions, Inc.” Wolf
Decl., Exh. C.
4. At GMP’s first Board of Directors meeting on April 25,
1956, David Mackay, Sr. (the then-chairman) stated: “The
main business of the corporation would be to own and operate
a traveling orchestra.” See Mackay Decl., Exh. B.
5. During Helen Miller’s lifetime, GMP sought and success-
fully obtained trademark protection for the “Glenn Miller
Orchestra” name, and there is no evidence that Helen Miller
objected. See Mackay Decl., Exhs. E-F.
6. The 1980 settlement agreement contains a non-compete
clause which provides that Steven and Jonnie Miller “agree
not to directly or indirectly organize and/or operate or cause
to be organized and/or operate a band or orchestra using the
name of Glenn Miller or any facsimile thereof.” Wolf Decl.,
Exh. D (65-66).
7. GMP has operated “special units” of the Glenn Miller
Orchestra since 1981 and Plaintiffs never objected. Mackay
Decl. ¶¶ 13, 22; Eisenberg Decl., Miller Depo. (143).
8. GMP has openly sold merchandise bearing the Glenn Mil-
ler Orchestra mark at concerts since 1983 (six of which Ste-
ven Miller attended), and has sold merchandise on its website
since September 1998. However, *941 Plaintiffs never
objected. Mackay Decl. ¶¶ 9, 11, 22; Eisenberg Decl., Miller
Depo. (143).
7984 MILLER v. GLENN MILLER PRODUCTIONS
In contrast to the foregoing facts, which definitely do consti-
tute powerful evidence favoring GMP, the record also shows
that for at least 25 years after the execution of the 1956
license agreement (and during the entirety of Helen Miller
and David Mackay, Sr.’s respective lifetimes), GMP did not
operate more than one Glenn Miller Orchestra or sell mer-
chandise bearing the Glenn Miller Orchestra mark. See
Mackay Decl., ¶¶ 9-14. This lengthy history, which is consis-
tent with the language of item 4, above (“ . . . a traveling
orchestra”), would at least permit a jury to infer that Helen
Miller’s intent in executing the 1956 license agreement, and
the intent of GMP and the Millers when they entered into the
1980 settlement agreement, was to have only one orchestra.
Accordingly, the Court DENIES summary adjudication of this
issue.

3. The Relationship Between GMP’s Contractual Rights
and the Eleven Causes of Action Asserted in the Complaint.

GMP contends that it has the contractual rights to sell Glenn
Miller Orchestra merchandise and to operate and sub-license
multiple Glenn Miller Orchestras, and that because all of
Plaintiffs’ claims for relief are based on GMP’s alleged lack
of these rights, all of Plaintiffs’ claims fail as a matter of law.
However, because (as shown above) there are genuine dis-
putes of material fact that preclude the Court from determin-
ing the scope of GMP’s contractual rights, the Court cannot
find that all of Plaintiffs’ claims are defeated.

4. Plaintiffs’ Claims Are Barred By Laches.

Next, GMP argues that Plaintiffs’ claims (which are all based
on GMP’s operation or sub-licensing of ensembles named the
Glenn Miller Orchestra and its sale of merchandise) are
barred by the doctrine of laches, regardless of whether the
merchandise contained merely the name “Glenn Miller”
instead of “Glenn Miller Orchestra.” (See footnote 10.) “La-
ches is an equitable time limitation on a party’s right to bring
 MILLER v. GLENN MILLER PRODUCTIONS 7985
suit,” which is “derived from the maxim that those who sleep
on their rights, lose them.” See Kling v. Hallmark Cards, Inc.,
225 F.3d 1030, 1036 (9th Cir.2000); Hot Wax, Inc. v. Turtle
Wax, Inc., 191 F.3d 813, 820 (7th Cir.1999). It is well estab-
lished that laches is a valid defense to Lanham Act claims for
both monetary damages and injunctive relief. See Jarrow For-
mulas, Inc. v. Nutrition Now, Inc., 304 F.3d 829, 840 (9th
Cir.2002), cert. denied, 537 U.S. 1047, 123 S.Ct. 600, 154
L.Ed.2d 520 (2002); Hot Wax, 191 F.3d at 822.

In order to succeed on a defense of laches, a defendant must
prove both: (1) an unreasonable delay by plaintiff in bringing
suit, and (2) prejudice to himself. See Couveau v. American
Airlines, Inc., 218 F.3d 1078 (9th Cir.2000) (per curiam). In
considering whether a plaintiff’s delay was unreasonable,
courts consider: (1) the length of the delay, measured from the
time the plaintiff knew or should have known about his poten-
tial cause of action, and (2) whether the plaintiff’s delay was
reasonable, including whether the plaintiff has proffered a
legitimate excuse for his delay. See Jarrow Formulas, 304
F.3d at 838.

If a plaintiff files suit within the applicable period of limita-
tions for his claim, there is a strong presumption that laches
does not bar the claims. See Jarrow Formulas, 304 F.3d at
835. Conversely, if any part of the alleged wrongful conduct
occurred outside of the limitations period, courts presume that
the plaintiff’s claims are barred by laches. Id. at 836-*942 37.
The parties agree that a four year statute of limitations applies
to all of Plaintiffs’ claims.FN11 Accordingly, the complaint hav-
ing been filed on January 22, 2003, claims that accrued and
were known or in the exercise of reasonable care would have
been known as of January 22, 1999 would be barred.

FN11. The California statute of limitations for breach
of contract claims, statutory right of publicity claims,
state trademark infringement and/or dilution claims, and
state unfair competition claims is four years. See
7986 MILLER v. GLENN MILLER PRODUCTIONS
Cal.Code Civ. Proc. §§ 337, 343. The Lanham Act does
not contain a statute of limitations, and therefore Lanham
Act claims are governed by the analogous state statute of
limitations, which in this case are state trademark
infringement and dilution claims under Cal. Bus. &
Prof.Code §§ 14330 and 14335. See Jarrow Formulas,
304 F.3d at 836-37. Therefore, the statute of limitations
for all of Plaintiffs’ eleven causes of action is four years.

a. Plaintiffs’ Delay in Bringing Suit.

Because all of Plaintiffs’ claims are governed by a four year
statute of limitations, the first issue is whether Plaintiffs actu-
ally knew or should have known that GMP was operating or
sub-licensing multiple Glenn Miller Orchestras and/or selling
Glenn Miller Orchestra merchandise before January 22, 1999.
The Court finds that Plaintiffs had constructive notice of
GMP’s activities long before that time.

i. The Operation and Sub-Licensing of Multiple Bands.

GMP argues that Plaintiffs actually knew, or should reason-
ably have known, that GMP was operating and/or sub-
licensing multiple Glenn Miller Orchestras as early as 1980,
and at the latest by 1996. In support of this argument, GMP
submits the following undisputed evidence:
1. Steven Miller retired from his other occupation(s) in 1979.
Since then, he has been involved in the administration of
GMP matters. His sister, Jonnie Miller, has assisted him in
doing so. See Eisenberg Decl., Miller Depo. (15-16).
2. As counsel for both sides acknowledged at the hearing on
these motions, there is a decades-long history of profound ill
will between these Plaintiffs and the Mackays, who controlled
GMP after Helen’s death in 1966. At one point, the Millers
were pursuing three lawsuits in three states against David
Mackay, Sr. The Millers had the incentive and the means,
such as the attorneys mentioned below, to monitor carefully
and continuously what GMP was doing concerning perfor-
 MILLER v. GLENN MILLER PRODUCTIONS 7987
mances and sales. Indeed, Steven Miller attended at least six
concerts and was in a position to inquire from the Orchestra
members and the band leader about whether they were per-
forming elsewhere or authorizing others to do so.
3. A draft pleading prepared by an attorney for Steven Miller,
dated April 7, 1980, and entitled “Amended Petition for
Removing Personal Representative” provides: “Prior to the
death of Helen Miller, Mackay acquired one-half of the issued
and outstanding stock of two corporations which own and
operate the Glenn Miller Bands which have continued to play
throughout the world since the death of Glenn Miller.” See
Eisenberg Decl., Exh. 37(17).
4. In 1992 and 1993, Jonnie and Steven Miller (respectively)
became GMP shareholders. Each year thereafter, GMP sent
Steven Miller financial information, including GMP’s income
statements. Some of the income statements were sent to Ste-
ven Miller directly; others were sent to his *943 attorney,
Laura Ben-Porat of Gibson, Dunn & Crutcher. Each income
statement contained line items for “Licensing U.S.,” “Licens-
ing U.K.,” and “Licensing Europe.” See O’Reilly Decl., Exhs.
A-O. Steven Miller admitted receiving at least some of these
financial statements. See Eisenberg Decl., Miller Depo. (45-
46, 53-54). Counsel for Plaintiffs represented at the hearing
that despite being shareholders, Steven and Jonnie Miller
never attended a shareholder meeting or even spoke with
David Mackay, Jr.
5. In 1994, the Millers hired the Roger Richman Agency to
serve as their exclusive agent in obtaining licensees who
would pay for the right to use Glenn Miller’s name for com-
mercial purposes, including on various products. Excluded
from the products that the Agency was granted the rights to
license, were the rights that GMP previously had granted to
other third parties, such as “Orchestras of Glenn Miller Pro-
ductions, Inc., a New York Corporation.” See Eisenberg
Decl., Exh. 49(1). In 1996, the Millers entered into a licensing
agent agreement with Plaintiff CMG Worldwide, Inc. that
contained the same exclusion. Id., Exh. 50(1,7).

Steven Miller argues that despite the evidence submitted by
GMP, not until 2000 or 2001 did he learn that there was more
7988 MILLER v. GLENN MILLER PRODUCTIONS
than one functioning Glenn Miller Orchestra. See Miller Decl.
¶ 9. (Steven Miller does not specify how he learned.) Steven
Miller also claims that he did not learn until April 2003 (after
filing this lawsuit), that GMP had entered into sub-licensing
agreements with third parties to operate ensembles called
“The Glenn Miller Orchestra.”

The Court finds that Steven Miller’s involvement in GMP
matters, his status as a shareholder and his receipt of annual
financial statements (some of which were sent directly to his
attorney), were sufficient to give him constructive notice as
early as 1980 and no later than the early-mid 1990s, that GMP
was operating and/or sub-licensing more than one Glenn Mil-
ler Orchestra. Moreover, the licensing agent agreements and
the Amended Petition, each of which explicitly refer to the
existence of more than one Glenn Miller Orchestra, suggest
that Steven Miller had actual knowledge long before filing
suit. Because Plaintiffs offer no legitimate excuse (beyond
their purported ignorance of GMP’s activities) for their delay
in filing suit, their delay was unreasonable.

ii. The Sale of Merchandise.

GMP also contends that Plaintiffs knew or reasonably should
have known that GMP was selling merchandise bearing the
“Glenn Miller Orchestra” mark as early as 1983 and as late
as the 1998. In support of its argument, GMP submits the fol-
lowing undisputed evidence, in addition to items 1 and 4
already discussed in the previous section:
1. Since the 1980s, Steven and Jonnie Miller have monitored
unauthorized uses of the Glenn Miller name and have sent at
least eight cease and desist letters to alleged infringers,
including one living in South Africa. See Eisenberg Decl.,
Exhs. 41-47; Miller Depo. (107-08, 125); Miller Decl., Exh.
B.
2. Since 1983, GMP has openly sold merchandise bearing the
Glenn Miller Orchestra mark at performances. See Mackay
Decl. ¶ 9. During these performances, an announcement is
 MILLER v. GLENN MILLER PRODUCTIONS 7989
made regarding the sale of merchandise, and a table display-
ing the merchandise*944 is set up in a prominent location. Id.
Between the 1990s and the present, Steven Miller has
attended approximately six Glenn Miller Orchestra perfor-
mances. See Eisenberg Decl., Miller Depo. (22-24). Steven
Miller admitted that he was aware that GMP was selling CDs
at one of the performances. Id. (142-144).
3. Since September of 1998, GMP has sold Glenn Miller
Orchestra merchandise on its website,
www.glennmillerorchestra.com. See Mackay Decl. ¶¶ 9, 11.

Although Steven Miller contends that he did not gain actual
knowledge of GMP’s merchandising activities from the
above-mentioned factors, the record does not indicate when
and how he first discovered that GMP was selling objection-
able merchandise.

The Court finds that the Millers’ status as GMP shareholders,
their involvement in GMP matters since 1979, Steven Miller’s
attendance at six Glenn Miller Orchestra performances since
the early 1990s at which merchandise was advertised and sold
in prominent locations, Steven Miller’s admitted knowledge
that GMP sold CDs at one such concert, and GMP’s open and
notorious sale of merchandise on its website were more than
sufficient to give Plaintiffs constructive knowledge that dur-
ing the 1980s and 1990s (and in any case, long before January
of 1999), GMP was selling merchandise bearing the Glenn
Miller Orchestra mark. Because Plaintiffs present no legiti-
mate excuse (aside from ignorance), for their delay in filing
suit, their delay was unreasonable.

b. Resulting Prejudice to GMP.

In addition to establishing that Plaintiffs’ delay in filing suit
was unreasonable, GMP must also demonstrate that it has
been prejudiced by the delay. A defendant may establish prej-
udice by showing that during the delay, it invested money to
expand its business or entered into business transactions based
7990 MILLER v. GLENN MILLER PRODUCTIONS
on his presumed rights. See Whittaker Corp. v. Execuair
Corp., 736 F.2d 1341, 1347 (9th Cir.1984); Jackson v. Axton,
25 F.3d 884, 890 (9th Cir.1994) (abrogated on other grounds,
as recognized in Jarrow Formulas, 304 F.3d at 833-34); Her-
man Miller, Inc. v. Palazzetti Imports and Exports, Inc., 270
F.3d 298, 322 (6th Cir.2001) GMP may also prove prejudice
if as a result of entering into such business transactions during
the delay, it may incur liability for damages. Id. “[I]f only a
short period of time has elapsed since the accrual of the claim,
the magnitude of the prejudice require [d] before the suit
should be barred is great, whereas if the delay is lengthy, prej-
udice is more likely to have occurred and less proof of preju-
dice will be required.” See Hot Wax, 191 F.3d at 824.
GMP contends that Plaintiffs’ delay in filing suit has caused
it prejudice because since the 1980s, GMP has invested a sig-
nificant amount of time and money in developing its mer-
chandising program, cultivating a market for GMP music,
expanding its business through the operation of special Glenn
Miller Orchestra units, and forming relationships with sub-
licensees throughout the world. See Mackay Decl. ¶ 23. In
addition, GMP contends that it will suffer a tremendous loss
of goodwill among its existing licensees and clients if now
forced to discontinue selling merchandise and operating or
sub-licensing multiple Glenn Miller Orchestras. Id. Moreover,
at the hearing on these motions, counsel for GMP represented,
without refutation, that if GMP is forced to stop sub-licensing,
it will be in breach of its existing sub-licensing agreements,
and may thus incur liability for damages. Finally, at the hear-
ing, counsel for Plaintiffs conceded that GMP has been preju-
diced by the delay. GMP’s showing of prejudice is sufficient
to support*945 a defense of laches, especially in light of
Plaintiffs’ long delay in filing suit.
Because Plaintiffs’ 5-23 year delay in filing suit was unrea-
sonable and because GMP has been substantially prejudiced
by the delay, all of Plaintiffs’ claims are barred by laches.
....
 MILLER v. GLENN MILLER PRODUCTIONS 7991
CONCLUSION

For the foregoing reasons, the Court concludes that as a mat-
ter of contract law, in the 1956 agreement Helen Miller con-
veyed both a trademark license and a license to the right of
publicity. It concludes that as a matter of trademark law,
Helen Miller was in a position to convey a trademark license
and that a jury could reasonably find facts establishing that
she did. And it concludes that the sub-licensing rule applies
to both such conveyances-i.e., trademark and rights of public-
ity. However, despite having found that Plaintiffs have legal
claims that the law could recognize, the Court nevertheless
GRANTS IN WHOLE Defendant’s motion for summary
judgment FN14 and dismisses the complaint because under the
doctrines of laches, Plaintiffs waited too long to assert those
claims. . . .

FN14. Docket number 19.

IT IS SO ORDERED.