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'No Sublicense' Rule Extended to Trademark and Publicity Rights: The Half-Century Saga of Miller v. Glenn Miller Productions, Inc.

By Stephen W. Feingold and Sarah E. Cleffi

It is well settled that a patent or copyright licensee may not sublicense that right absent specific authorization. See, eg, Gardner v. Nike, Inc. 279 F.3d 774 (9th Cir. 2004); Unarco Industries, Inc. v. Kelley Co., 465 F.2d 1303 (7th Cir. 1972); In re Patient Education Media, Inc, 210 B.R. 237 (S.D.N.Y 1997). Trademarks are often group-ed with patents and copyrights as 'intellectual property,' but fundamental differences among the genres exist. See, eg, Sony Corp of America v. University City Studios, 464 U.S. 417, 439 n.17 (1984). Do the same policies supporting the so-called 'no sublicense' rule in the patent and copyright context apply to trademarks and related publicity rights?

The Ninth Circuit recently addressed both issues in Miller v. Glenn Miller Productions, Inc. (Miller II), 454 F.3d 975, 978 (9th Cir. 2006). While the conclusion that the 'no sublicense' rule applies is not particularly surprising, the decision appears to be the first at the circuit level on both questions.

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