Miller v. Glenn Miller Productions
| Decision Date | 23 April 2004 |
| Docket Number | No. CV03529AHM (MCX).,CV03529AHM (MCX). |
| Court | U.S. District Court — Central District of California |
| Parties | Jonnie MILLER, Steven Miller, and CMG Worldwide, Inc., Plaintiffs, v. GLENN MILLER PRODUCTIONS, Defendant. |
Brian G. Wolf, Paul Karl Lukacs, Lavely & Singer P.C., Los Angeles, CA, for plaintiffs.
Sheldon Eisenberg, Bryan Cave LLP, Santa Monica, CA, for defendant.
ORDER GRANTING DEFENDANT'S MOTION FOR SUMMARY JUDGMENT AND DISMISSING COMPLAINT.
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
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
This matter is before the Court on Plaintiffs' Motion for Summary Adjudication and Defendant's Motion for Summary Judgment.
The principal facts of this case are either undisputed or not genuinely disputed.1 Glenn Miller was a popular musician 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 whatever intellectual property rights he had.
On either April 20, 1956 or April 23, 19562, David Mackay, Sr. (Glenn Miller's close friend and lawyer during his lifetime) incorporated Glenn Miller Productions, Inc. ("GMP"). GMP's Certificate of Incorporation specifies that among GMP's many purposes were:
(c) To manufacture, purchase, sell and generally to trade and deal in and with goods, wares, products and merchandise of 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, agreement, 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 corporation 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, 19563 (in any case, shortly after GMP was incorporated), Helen Miller executed a written license agreement (the "1956 license agreement") in favor of GMP. The agreement consisted of one paragraph which read, in its entirety:
For and in consideration of the sum of ONE AND NO 100THS ($1.00) DOLLAR and other good and valuable consideration, the undersigned, individually and as Executrix of 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 belonging to the Estate of Glenn Miller and/or the undersigned in connection with the business activities of Glenn Miller Productions, Inc.
See Wolf Decl., Exh. C. Notwithstanding the amount of consideration (i.e., $1.00) specified in the 1956 license agreement, 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 for permission to use Glenn Miller's name, likeness 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 company to produce a television show on CBS titled "Glenn Miller 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 publicity rights. Finally, minutes from an August 26, 1971 GMP Board meeting indicate that in 1971, GMP's Board of Directors 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.
Helen Miller died on June 2, 1966. Helen Miller's will established 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 property rights that she may have inherited. Her two adopted children, 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 separate lawsuits against David Mackay, Sr. in Los Angeles, New York and New Jersey based in part on a dispute over the ownership of GMP.4 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 follows:
Petitioners [Jonnie and Steven Miller] ratify and confirm the agreement dated April 25, 1956, made by Helen Miller granting...
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