close

For more than four decades, Fenwick & West LLP has helped some of the world’s most recognized companies become, and remain, market leaders. From emerging enterprises to large public corporations, our clients are leaders in the technology, life sciences and cleantech sectors and are fundamentally changing the world through rapid innovation.  MORE >

Fenwick & West was founded in 1972 in the heart of Silicon Valley—before “Silicon Valley” existed—by four visionary lawyers who left a top-tier New York law firm to pursue their shared belief that technology would revolutionize the business world and to pioneer the legal work for those technological innovations. In order to be most effective, they decided they needed to move to a location close to primary research and technology development. These four attorneys opened their first office in downtown Palo Alto, and Fenwick became one of the first technology law firms in the world.  MORE >

From our founding in 1972, Fenwick has been committed to promoting diversity and inclusion both within our firm and throughout the legal profession. For almost four decades, the firm has actively promoted an open and inclusive work environment and committed significant resources towards improving our diversity efforts at every level.  MORE >

At Fenwick, we are proud of our commitment to the community and to our culture of making a difference in the lives of individuals and organizations in the communities where we live and work. We recognize that providing legal services is not only an essential part of our professional responsibility, but also an excellent opportunity for our attorneys to gain valuable practical experience, learn new areas of the law and contribute to the community.  MORE >

Year after year, Fenwick & West is honored for excellence in the legal profession. Many of our attorneys are recognized as leaders in their respective fields, and our Corporate, Tax, Litigation and Intellectual Property Practice Groups consistently receive top national and international rankings, including:

  • Named Technology Group of the Year by Law360
  • Ranked #1 in the Americas for number of technology deals in 2015 by Mergermarket
  • Nearly 20 percent of Fenwick partners are ranked by Chambers
  • Consistently ranked among the top 10 law firms in the U.S. for diversity
  • Recognized as having top mentoring and pro bono programs by Euromoney

MORE >

We take sustainability very seriously at Fenwick. Like many of our clients, we are adopting policies that reduce consumption and waste, and improve efficiency. By using technologies developed by a number of our cleantech clients, we are at the forefront of implementing sustainable policies and practices that minimize environmental impact. In fact, Fenwick has earned recognition in several areas as one of the top US law firms for implementing sustainable business practices.  MORE >

At Fenwick, we have a passion for excellence and innovation that mirrors our client base. Our firm is making revolutionary changes to the practice of law through substantial investments in proprietary technology tools and processes—allowing us to deliver best-in-class legal services more effectively.   MORE >

Mountain View Office
Silicon Valley Center
801 California Street
Mountain View, CA 94041
650.988.8500

San Francisco Office
555 California Street
13th Floor
San Francisco, CA 94104
415.875.2300

Seattle Office
1191 Second Avenue
10th Floor
Seattle, WA 98101
206.389.4510

New York Office
1211 Avenue of the Americas
32nd Floor
New York, NY 10036
212.921.2001

Shanghai Office
Unit 908, 9/F, Kerry Parkside Office
No. 1155 Fang Dian Road
Pudong New Area, Shanghai 201204
P.R. China
+86 21 8017 1200


Litigation Alert: Ninth Circuit Extends Sublicensing Rule to Trademark Licenses

On July 19, 2006, the Ninth Circuit held in Miller v. Glenn Miller Productions, Inc., No. 04-55874 (9th Cir. 2006) that a licensee of trademark and related publicity rights does not have the right to sublicense those rights to third parties without the licensor's express permission. In so holding, the Ninth Circuit extended the well-established "sublicensing rule" from copyright and patent law to the licensing of trademark and related publicity rights. In so doing, the Ninth Circuit joins a number of other jurisdictions which have considered this issue and uniformly held that the sublicensing rule applies to trademarks.

Implications of Miller

This holding is a clear victory for trademark and right of publicity owners who wish to maintain maximum control of their rights. The ability to block undesirable trademark sublicenses is significant in view of a trademark owner's affirmative duty to supervise and control a licensee's use of the mark, on penalty of losing the ability to enforce the mark. The ability to block undesirable sublicenses of publicity rights, on the other hand, will allow the licensor to prevent unwanted uses of his or her name or likeness, including those that are offensive or otherwise injurious to the licensor or his image.

Background

Approximately 12 years after musician and bandleader Glenn Miller died in a plane crash, his former lawyer established Glenn Miller Productions., Inc. ("GMP") with the aim of establishing a business based on the Glenn Miller name which would, among other things, continue performances of the Glenn Miller Orchestra. Glenn Miller's widow, Helen Miller, served an executive role in the company and licensed to it the right to use the name and likeness of Glenn Miller and his music. GMP operated under this license agreement, executed in 1956, registering the "Glenn Miller Orchestra" trademark and operating a successful orchestra. Since 1988, GMP has also sublicensed to third parties the right to operate other orchestras called the Glenn Miller Orchestra, with the most current sublicensees in Germany and the United Kingdom. Miller's heirs, the present owners of his intellectual property rights, filed suit in the Central District of California, challenging GMP's ability to sublicense the Glenn Miller mark without their express permission. Although the Central District granted GMP's motion for summary judgment on the ground that plaintiffs' claims were barred by the doctrine of laches due to their substantial delay in bringing suit, it nonetheless held that the ban on sublicensing absent the licensor's express consent, already well-established in patent and copyright law, should be extended to licenses of trademarks and rights of publicity. Miller v. Glenn Miller Prods., 318 F. Supp. 2d 923 (C.D. Cal. 2004).

Ninth Circuit's Holding

In a brief opinion, the Ninth Circuit affirmed and adopted the majority of the district court's opinion, including its extension of the sublicensing rule to trademark and related publicity rights and the policy reasons justifying the extension. In the district court, GMP had argued that plaintiffs did not have the right to control sublicensing of the mark because that right was not reserved in the licensing agreement. Noting that under trademark law a trademark licensor has an affirmative duty to police its license, the district court observed, "A license agreement need not contain an express quality control provision because trademark law, rather than the contract itself, confers on the licensor the right and obligation to exercise quality control." Miller, 318 F. Supp. 2d at 936. The district court then identified two policy reasons for extending the sublicensing rule: First, the licensor's ability to monitor use of the mark will remove the potential for litigation caused by disputes between the licensor and licensee regarding the actions of the sublicensee. Second, preserving the licensor's control is necessary to protect the public's expectation of the source and quality of the trademarked product. The district court applied these same policies to extend protection to related publicity rights, which often are licensed in connection with trademarks, and for which the licensor has a similar right and incentive to control sublicensing arrangements.


For further information, please contact:

Jennifer Lloyd Kelly, Litigation Associate
jkelly@fenwick.com, 415.875.2426

Christine A. Vogelei, Litigation Associate
cvogelei@fenwick.com, 415.875.2348

Patrick E. Premo, Litigation Partner
ppremo@fenwick.com, 650.335.7963

This update is intended by Fenwick & West LLP to summarize recent developments in the law. It is not intended, and should not be regarded, as legal advice. Readers who have particular questions about these issues should seek advice of counsel.

© 2006 Fenwick & West LLP. All Rights Reserved.