Stephen Slesinger, Inc. v. Disney Enterprises, Inc.

702 F.3d 640, 105 U.S.P.Q. 2d (BNA) 1472, 2012 U.S. App. LEXIS 26307, 2012 WL 6634221
Court of Appeals for the Federal Circuit·Decided December 21, 2012·No. 2011-1593·Published·Cited by 13 cases

Opinions

Opinion for the court filed by Chief Judge RADER. Dissenting opinion filed by Circuit Judge REYNA.

RADER, Chief Judge.

The Trademark Trial and Appeal Board (“Board”) dismissed with prejudice Stephen Slesinger, Inc.’s (“Slesinger” or “SSI”) challenge to the trademark rights related to A.A. Milne’s literary work featuring Winnie-the-Pooh and other charac[642]*642ters owned by Disney Enterprises, Inc. (“Disney”). During the course of the parties’ dispute, Slesinger filed twelve opposition and cancellation proceedings with the Board consolidated under Stephen Slesinger, Inc. v. Disney Enter., Inc., 98 U.S.P.Q.2d 1890 (T.T.A.B.2011) (the “Consolidated Proceedings ”). Because the Board properly barred Slesinger’s proceeding, granted summary judgment, and dismissed the case due to collateral estoppel, this court affirms.

I.

For decades, Slesinger and Disney have disputed the Winnie-the-Pooh rights in both state and federal courts as well as at the Board. This case questions the registration of various trademarks derived from the Winnie-the-Pooh works. Because the Board premises its dismissal on collateral estoppel, this court addresses briefly the background of Slesinger’s and Disney’s agreements about the marks.

In 1930, A.A. Milne transferred to Stephen Slesinger exclusive merchandising and other rights based on the Winnie-the-Pooh works in the United States and Canada. In 1961, Slesinger exclusively “assigned, granted, and set over to” Walt Disney Productions the rights in the 1930 agreement with A.A. Milne. Milne ex rel. Coyne v. Slesinger, No. 2:02-cv-0858, 2009 WL 3140439, at *2 (C.D.Cal. Sept. 25, 2009) (“Seller hereby assigns, grants, and sets over unto the purchaser all of the further rights in and to said work’ [sic] which are set forth in Paragraph 3 hereof ...”).

In a 1983 agreement, Slesinger acknowledged its transfer and assignment of “rights it had acquired from A.A. Milne to Disney by agreement dated 14 June 1961.” Id. The 1983 agreement then revoked the prior agreements and gave Slesinger “all of the rights in the work which were transferred to [Slesinger] in 1930 and amended from time to time.” Id. In turn, Slesinger transferred its rights back to Disney, as the agreement also provided that Slesinger “assigns, grants, and sets over unto Disney the sole and exclusive right in the United States and Canada to project, exhibit, and broadcast visually and audibly any motion pictures ...” as well as “various further rights in and to said work, which include merchandise ...” television, radio, and analogous processes. Id.

While the agreement sought to resolve the parties’ previous disputes and clarify their contractual arrangements, the parties interpret the 1983 agreement differently. Slesinger contends it retained rights in the Winnie-the-Pooh works, while Disney maintains Slesinger assigned all rights to Disney.

In 1991, before the present litigation began, Slesinger brought an action in Los Angeles Superior Court alleging Disney breached the 1983 agreement. Slesinger claimed Disney’s revenue from Winnie-the-Pooh products was not accurately calculated, meaning that Disney underpaid royalties. Specifically, Slesinger alleged in state court that the 1983 agreement gave Disney valuable rights “in exchange for a share of the receipts from exploitation of the Pooh characters.” Id. at *4. In the state court proceedings, Slesinger acknowledged that the 1983 agreement “re-granted, licensed and assigned all rights acquired rights [sic] to Disney.” Id. Slesinger further explained that “the grant of all ‘further rights’ in and to the Pooh Characters ... is a catch-all designed to ensure that Slesinger was granting ... all of the additional commercial exploitation rights Slesinger acquired that are not specifically mentioned in the 1983 Agreement.” Id. The California state court ultimately dismissed Slesinger’s claim, and the California Court of Appeals affirmed.

[643]*643Meanwhile, the parties’ dispute over royalties proceeded in the Central District of California. In October 2006, Slesinger amended its district court claim to allege that Disney’s exploitation of the Winnie-the-Pooh characters infringed Slesinger’s trademarks and copyrights. Disney moved to dismiss the claim because Slesinger had admitted in state court that Disney’s uses of the Winnie-the-Pooh characters were authorized. Disney also contended that Slesinger granted all of the rights it had in the Winnie-the-Pooh characters to Disney and that Slesinger retained no rights which Disney could infringe.

In 2009, the district court considered the parties’ cross motions for summary judgment based on the 1983 agreement and addressed the agreement’s scope, judicial estoppel, and California’s Business and Professions Code. The district court noted the parties’ actions indicated the Winnie-the-Pooh rights were transferred to Disney in the 1983 agreement. Between 1983 and 2006, Disney registered at least fifteen trademarks. In 2004, Disney registered copyrights in forty-five works and renewed copyright registrations for another fourteen. In contrast, Slesinger did not attempt to perfect or register trademarks or copyrights before asserting its district court claims. The district court further noted that Slesinger never objected to those registrations until 2006, when the state court dismissed Slesinger’s claims for royalty agreement breach. Accordingly, the California district court based its judgment against Slesinger on “the conduct of the parties over the nearly 50 years of their relationship.” Id.

The district court also addressed Slesinger’s arguments that it did not relinquish all the rights it received from A.A. Milne to Disney. However, because Slesinger could not specifically identify any retained right, the court determined that the contracts did not permit any retention of rights. Thus, upon its review of the 1983 agreement, the court found that Slesinger granted its acquired rights to Disney. In sum, given the parties’ conduct, and the “clear terms” of the agreements, the district court determined that Slesinger “transferred all of its rights in the Pooh works to Disney, and may not now claim infringement of any retained rights.” Id.

Applying the doctrine of judicial estoppel, the district court found Slesinger’s arguments “inconsistent with statements made and positions taken by SSI in the state court litigation.” Id. at *5. In state court, Slesinger “has insisted that Disney’s uses of the works were derived from the SSI grants of ‘all’ rights to sound, word, picture representation, television, any representational device, similar or allied devices, videocassettes, promotion and advertising in all media, exploitation and licensing in all media.” Id. at *4. Thus, the district court based its finding of estoppel on Slesinger’s inconsistent positions. Id. at *5 (“SSI’s conduct demonstrates a blatant effort to salvage its lawsuit against Disney by taking an [sic] taking entirely inapposite and inconsistent posture in this case.”).

This dispute at the Board began in December 2006. Slesinger now attempts to cancel Disney’s applications to register the marks POOH, WINNIE THE POOH, CLASSIC POOH, MY FRIENDS TIGGER & POOH, and other marks comprising the names or images of “Pooh” and related fictional characters. Slesinger claims the agreement with Disney is a license, which does not grant Disney the right to register the marks.

Free access — add to your briefcase to read the full text and ask questions with AI

Stephen Slesinger, Inc. v. Disney Enterprises, Inc., 702 F.3d 640, 105 U.S.P.Q. 2d (BNA) 1472, 2012 U.S. App. LEXIS 26307, 2012 WL 6634221 (Fed. Cir. 2012).

702 F.3d 640 (Stephen Slesinger, Inc. v. Disney Enterprises, Inc.) — published by Counsel Stack Legal Research, free access to 12M+ legal documents.

Related

American Pacific Plywood Inc. v. United States
2026 CIT 23 (Court of International Trade, 2026)
In Re RIGGS
Federal Circuit, 2025
West v. United States
Federal Claims, 2019
Virnetx Inc. v. Apple, Inc.
909 F.3d 1375 (Federal Circuit, 2018)
Corson v. McDonald
662 F. App'x 954 (Federal Circuit, 2016)
Allen v. Department of Veterans Affairs
651 F. App'x 972 (Federal Circuit, 2016)
Gray v. Merit Systems Protection Board
650 F. App'x 775 (Federal Circuit, 2016)
Sacramento Municipal Utility District v. United States
566 F. App'x 985 (Federal Circuit, 2014)