Sleep on Your Rights and You WILL Lose Them
A recent 9th Circuit case, Glenn Miller Productions, caught my eye because my late father-in-law was a huge big band fan. But the case is interesting to businesses which want to protect their trademarks, in several respects. The court found:
1. The patent and copyright rule that you can not sublicense intellectual property rights without express permission from the licensor is applicable to Trademarks and to “Publicity Rights” (publicity rights are the rights everyone has in their own identity).
This means that if you are buying a license to use someone’s trademark, and you think you might want to sublicense that right, make sure your license specifically and clearly grants you the right to sublicense.
2. The equitable concept of Laches, which derives from the maxim that if you sleep on your rights, you will lose them, is similar to a statute of limitations, but not quite the same, prevents you from suing to stop an intellectual property violation based not only on when you find out about the violation, but on when you SHOULD have known. Trademark law places an affirmative obligation to monitor and control the trademark on the owner. So you can’t ignore facts that might indicate a violation, and wait until the violation bops you over the head.
The lesson: Google your trademark, whether it’s registered or not, and take appropriate steps to protect it (again whether it’s registered or not) in a timely manner. Oh, and the ruling was that the Glenn Miller's heirs (or rather his wife's heirs) could not sue Glenn Miller Productions for a sublicensing the name Glenn Miller Ochester without permission because they slept on their rights.... and lost them
