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

Trademark Trial and Appeal Board

Jun 8, 2011

No. 91191230 (T.T.A.B. Jun. 8, 2011)

WINTER
Mailed: June 8, 2011

Opposition No. 91179064
Opposition No. 91182358
Opposition No. 91183644
Opposition No. 91186026
Opposition No. 91187261
Opposition No. 91188860
Opposition No. 91191230
Opposition No. 91192691
Opposition No. 91194551
Opposition No. 91196019
Opposition No. 91198046
Cancellation No. 92046853

Stephen Slesinger, Inc.

v.

Disney Enterprises, Inc.

Before Bucher, Taylor, and Mermelstein,
Administrative Trademark Judges.

By the Board:

This consolidated proceeding involves a dispute between
Stephen Slesinger, Inc. (“SSI”) and Disney Enterprises, Inc.
(“Disney”), which, respectively, claim rights to trademarks
derived from or connected with the literature of A.A. Milne,
author of the well-known children’s books featuring Winnie-
the-Pooh and other characters (hereafter collectively
referred to as the “POOH works”). This case is part of a
larger, long-standing dispute involving copyrights, various
contractual obligations, and Milne’s successors-in-interest;
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS A
PRECEDENT OF THE TTAB
Consolidated Proceedings: Opposition No. 91179064 (parent) et al
2
but the only issue that is before the Board is the
registrability of various trademarks derived from the POOH
works. The record shows (and the parties do not dispute)
that in 1930, Milne transferred to Stephen Slesinger (SSI’s
predecessor-in-interest) exclusive merchandising and other
rights based on the POOH works in the United States and
Canada; that in 1961, SSI granted exclusively to Walt Disney
Productions the rights it had acquired in the POOH works in
the 1930 agreement with Milne;1 and that in 1983, SSI signed
an agreement with Walt Disney Productions and Milne’s
successors-in-interest (Christopher Milne and the trustees
for the Pooh Properties Trust) involving the POOH works,
which revoked the 1930 and 1961 agreements and sought to
resolve the parties’ previous disputes and clarify their
contractual arrangements. The interpretation of the 1983
agreement is at the crux of the current dispute between the
parties, which includes these opposition and cancellation
proceedings. SSI contends that certain rights in the POOH
works were reserved to it, while Disney maintains that the
1983 agreement assigned all of SSI’s ownership rights in the
POOH works to Disney (including any trademark rights
appurtenant to them).

1 Milne ex. Rel Coyne v. Stephen Slesinger, Inc., 430 F.3d 1036,
1040, 77 USPQ2d 1281 (9th Cir. 2005).

Consolidated Proceedings: Opposition No. 91179064 (parent) et al
3
We turn to the instant proceedings. Disney currently
seeks 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 (hereafter referred to as the “POOH marks”) for
use in connection with various goods, including books, toys,
jewelry, and clothing, as identified in the applications2
involved in the above-referenced consolidated opposition and
cancellation proceedings.3 SSI opposes registration of the
applied-for marks on the grounds of priority and likelihood
of confusion, dilution,4 fraud, and lack of ownership. In

2 Application Serial Nos. 78807797, 78807737 and 78807736 (Opp.
No. 91179064); Application Serial Nos. 78807741 and 78807739
(Opp. No. 91182358); Application Serial Nos. 77130188, 77106448,
77106287, 77106420 and 77106429 (Opp. No. 91183644); Application
Serial Nos. 77189480, 77189490, 77189498, 77237639, 77282353,
77130198 (Opp. No. 91186026); Application Serial Nos. 77189475,
77487298 and 77487303 (Opp. No. 91187261); Application Serial
Nos. 77536925 and 77555882 (Opp. No. 91188860); Application
Serial No. 77189502 (Opp. No. 91191230); Application Serial No.
77357499 (Opp. No. 91192691); Application Serial No. 77558229
(Opp. No. 91194551); Application Serial No. 77890766 (Opp No.
91196019); and Application Serial Nos. 77887371 and 77887445
(Opp. No. 91198046).

3 On October 18, 2009, Opposition Nos. 91179064, 91182358,
91183644, 91186026, 91187261, 91188860, 91191230, 91192691, and
Cancellation No. 92046853 were consolidated; and, pursuant to
established Board policy, Opp. No. 91179064 was designated as the
parent case. In subsequent orders issued on May 19, 2010,
September 3, 2010, and on February 11, 2011, Opposition Nos.
91194551, 91196019, and 91198046, respectively, were also
consolidated with Opp. No. 91179064.

4 Opposition Nos. 91179064 and 91182358, and Cancellation No.
92046853 do not include a dilution claim.

Consolidated Proceedings: Opposition No. 91179064 (parent) et al
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addition, SSI seeks to cancel twenty-one5 registrations
owned by Disney for various POOH marks for goods similar to
those identified in its applications on the grounds of
priority and likelihood of confusion, fraud, and lack of
ownership.
This consolidated case now comes up for consideration
of Disney’s fully briefed motion to dismiss, which was filed
on December 23, 2009, in Opposition No. 91192691 in lieu of
an answer, and which the parties have agreed6 should apply
to all of the consolidated proceedings. In view thereof, we
also consider SSI’s responsive brief filed on September 13,
2010, and Disney’s reply brief filed on October 4, 2010, in
Opposition No. 91179064, rather than the briefs filed
previously in Opposition No. 91192691.
The Parties’ Arguments
Disney requests that the Board dismiss all of SSI’s
claims on the basis that SSI has no ownership interest in any
of the POOH works, which includes the POOH marks that are the

5 Since the filing of the petition to cancel on December 4, 2006,
nine of Disney’s registrations have been cancelled under Section
8 of the Trademark Act. The remaining active registrations
sought to be cancelled in Canc. No. 92046853 are as follows: U.S.
Reg. Nos. 1982916, 2257705, 2421065, 2700618, 2978291, 3021643,
3021644, 3024286, 3024287, 3038490, 3101432, 3122189, and
3175607.

6 See Disney’s “Notice of Final Determination of Civil Action,
Including Appeal,” filed July 16, 2010, in Opp. No. 91179064, and
footnote 2 in SSI’s response to motion to dismiss filed on
September 13, 2010, in Opp. No. 91179064.

Consolidated Proceedings: Opposition No. 91179064 (parent) et al
5
subject of these consolidated proceedings (motion at 2).
Disney asserts, inter alia, the following:
• The parties to the instant proceedings were involved in
a related civil action in Federal district court,7 in
which SSI asserted counterclaims against Disney for,
inter alia, trademark, trade dress and copyright
infringement.

• Upon Disney and SSI’s cross-motions for summary
judgment, the district court determined that “under the
clear terms of the [SSI and Disney] agreements, SSI
transferred all of its rights in the Pooh works to
Disney” and that SSI “retained no rights” in the Pooh
works (motion at 1, Disney emphasis).

• After concluding that SSI “may not now claim infringement
of any retained rights” (motion at 2), the district court
entered final judgment against SSI, and dismissed all of
SSI’s counterclaims on the merits and with prejudice
(motion, Exh. B at 2).

Disney contends that in view of the district court’s
dismissal based on lack of ownership, the court “necessarily
decided” that SSI “retained no rights” in the POOH works
(motion at 3) and, as a result, SSI is collaterally estopped
from relitigating the issue of ownership of the POOH
trademarks before the Board. In support of its motion, Disney
submitted copies of the district court’s order of September

7 Milne ex rel. Coyne v. Slesinger, Inc., No. 02-08508 (C.D. Cal.
2009). Disney Enterprises, Inc. (the party defendant herein),
The Walt Disney Company, and Walt Disney Productions, were the
named counter-defendants in the civil action (and were
collectively referred to as “Disney”). On September 25, 2009,
the district court entered an order granting Disney’s motion for
summary judgment on SSI’s first, second, third, and tenth
counterclaims and denying SSI’s cross-motion for summary
adjudication with respect to its first, second and third
counterclaims; and on October 7, 2009, the district court entered
final judgment.

Consolidated Proceedings: Opposition No. 91179064 (parent) et al
6
25, 2009,8 addressing the parties’ cross-motions for summary
judgment, and the court’s Final Judgment order of October 7,
2009,9 dismissing all of SSI’s counterclaims on the merits and
with prejudice.10 Also of record is a copy of the parties’
Stipulation to Voluntary Dismissal of Appeal filed with the
United States Court of Appeals for the Ninth Circuit, by which
SSI voluntarily dismissed its appeal of the district court
order of September 25, 2009.11
In opposition, SSI argues that collateral estoppel is
inapplicable to its claims before the Board because the
district court “did not actually decide the issue of whether
the grant of authorization [in the 1983 agreement] was a
license or a full assignment of all of Opposer’s rights”
(response at 5, emphasis original), and because the
determination of whether SSI assigned or licensed its rights
in the POOH works (including the POOH marks) to Disney was not
necessary to the judgment (response at 7, 11). Rather, SSI
asserts that the “only necessary and essential determination

8 “Order Granting Counter-Defendants’ Motion for Summary Judgment
and Denying Counter-Claimant’s Motion for Summary Adjudication,”
Milne v. Slesinger, Document 545, Case No. 02-08508 (C.D. Cal.,
Sept. 25, 2009) (motion, Exh. A).

9 “Final Judgment,” Milne v. Slesinger, Document 549 (C.D. Cal.,
Oct. 7, 2009) (motion, Exh. B).

10 Disney also submitted with its reply brief copies of its motion
for summary judgment in the civil action on SSI’s counterclaims,
SSI’s responsive brief, and Disney’s reply brief thereto.

Consolidated Proceedings: Opposition No. 91179064 (parent) et al
7
made [by the district court] was that [Disney’s] challenged
uses12 of the POOH works were authorized, thus precluding a
claim for trademark infringement” (response at 6). As such,
contends SSI, the district court’s statement that “SSI
transferred all of its rights in the Pooh works to Disney, and
may not now claim infringement of any retained rights” (Milne
v. Slesinger, slip op. at 8) “was with respect to the issue of
breadth of certain uses authorized, not whether certain rights
were licensed or assigned to Disney” (response at 8-9). SSI
maintains that the district court only decided that issue, and
for that reason alone, SSI’s counterclaims failed (response at
8, 12). Further, SSI argues that a conclusive determination
of ownership of rights in the POOH works on summary judgment
would have been improper in the civil action because it would
have required the district court to decide material factual
issues in dispute, such as whether SSI’s “grant of

11 See Exh. A to “Disney’s Notice of Final Determination of Civil
Action, Including Appeal,” filed July 16, 2010 in Opp. No.
91179064.

12 With respect to SSI’s counterclaim for trademark infringement,
the challenged uses of the POOH works are described in ¶ 132 of
SSI’s Fourth Amended Answer and Counterclaims, as follows:

Disney has been exploiting the Pooh Family of Characters in
mediums to which it did not receive rights under the 1983
Agreement. Disney has been diluting Slesinger’s Trademark
Rights without permission and in violation of its Trademark
Rights. These mediums include, but are not limited to:
Internet use, wireless use, advertising uses, credit cards,
ringtones on mobile phones, greeting cards, computer graphics,
Internet computer games, computer screen savers, computer
wallpapers, character meals, convention services (such as the
“Tigger Award”), magazines, multi-media kits, and other
products and services.”
Consolidated Proceedings: Opposition No. 91179064 (parent) et al
8
authorization” was exclusive in nature, whether such rights
constituted copyright or trademarks rights, and whether the
1983 agreement allowed for a reversion of rights to SSI. “Yet
not one of these pieces of evidence was mentioned in the Order
that Disney claims somehow is decisive here” (response at 7).
SSI also points out that the district court order recognized
that SSI is entitled to “royalties for all uses” (Milne v.
Slesinger, slip op. at 7); therefore, the district court could
not have meant that SSI conveyed all of its rights in the POOH
marks to Disney.
In reply, Disney points to documentation in the civil
action which shows that the issue of whether SSI’s grant of
rights in the POOH works constituted an assignment or a
license was extensively briefed by the parties and, thus,
which party owns the POOH works was necessarily decided by the
district court in order to consider SSI’s counterclaim for
trademark infringement and for declaratory relief.
Specifically, Disney argues that in order to address SSI’s
request that the district court issue a declaratory judgment
requiring the U.S. Patent and Trademark Office to correct the
title of Disney’s POOH registrations, the district court had
to determine whether by the 1983 agreement SSI transferred all
rights in the POOH works to Disney, or whether said agreement
constituted a license agreement with respect to the POOH

Consolidated Proceedings: Opposition No. 91179064 (parent) et al
9
works. Additionally, Disney contends that the district
court’s order is not ambiguous as to which rights in the POOH
works were transferred by SSI to Disney.
Board’s Decision
Because both parties submitted and relied on materials
outside of SSI’s pleadings, we treat Disney’s motion as one
for summary judgment. See Fed. R. Civ. P. 12(d); Trademark
Rule 2.116(a), 37 C.F.R. § 2.116(a). See also Advanced
Cardiovascular Sys. Inc. v. SciMed Life Sys. Inc., 988 F.2d
1157, 26 USPQ2d 1038 (Fed. Cir. 1993); Libertyville Saddle
Shop Inc. v. E. Jeffries & Sons Ltd., 22 USPQ2d 1594 (TTAB
1992); and TBMP § 503.04 n.1 (3d ed. 2011) (“With respect to
inter partes proceedings commenced prior to November 1, 2007,
if, on a motion to dismiss for failure to state a claim upon
which relief can be granted, matters outside the pleadings are
submitted and not excluded by the Board, the motion will be
treated as a motion for summary judgment”).
• Summary Judgment Standard
Summary judgment is an appropriate method of disposing of
cases in which there is no genuine dispute as to any material
fact and the movant is entitled to judgment as a matter of
law. See Fed. R. Civ. P. 56(a).
A party moving for summary judgment has the burden of
demonstrating the absence of evidence to support the nonmoving
party’s case, and that it is entitled to judgment as a matter
Consolidated Proceedings: Opposition No. 91179064 (parent) et al
10
of law. Sweats Fashions Inc. v. Pannill Knitting Co., 833
F.2d 1560, 4 USPQ2d 1793, 1795-1796 (Fed. Cir. 1987), citing
Celotex Corp. v. Catrett, 477 U.S. 317, 325 (1986). A factual
dispute is genuine if, on the evidence of record, a reasonable
finder of fact could resolve the matter in favor of the non-
moving party. See Opryland USA Inc. v. Great American Music
Show Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992); and
Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d
1542 (Fed. Cir. 1992). Additionally, “the record must be
viewed in a light favorable to the party opposing the motion,
and all justifiable inferences are to be drawn in the non-
movant’s favor.” Barmag Barmer Maschinenfabrik AG, 731 F.2d
831, 221 USPQ 561, 564 (Fed. Cir. 1984).
• Collateral Estoppel
Under the doctrine of collateral estoppel or “issue
preclusion,” once an issue is actually and necessarily
determined by a court of competent jurisdiction, that
determination is normally conclusive in a subsequent suit
involving the parties to the prior litigation. Int’l Order
of Job’s Daughters v. Lindeburg & Co., 727 F.2d 1087, 220
USPQ 1017, 1019 (Fed. Cir. 1984). The underlying rationale
is that a party who has litigated an issue and lost should
be bound by that decision and cannot demand that the issue
be decided again. Mother’s Rest. Inc. v. Mama’s Pizza,
Inc., 723 F.2d 1566, 221 USPQ 394, 397 (Fed. Cir. 1983).
Consolidated Proceedings: Opposition No. 91179064 (parent) et al
11
In order for issue preclusion to apply, the following
requirements must be met: (1) the issue to be determined
must be identical to the issue involved in the prior
litigation; (2) the issue must have been raised, litigated
and actually adjudged in the prior action; (3) the
determination of the issue must have been necessary and
essential to the resulting judgment; and (4) the party
precluded must have been fully represented in the prior
action. See Mayer/Berkshire Corp. v. Berkshire Fashions
Inc., 424 F.3d 1229, 76 USPQ2d 1310, 1312-13 (Fed. Cir.
2005); Jet Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 55
USPQ2d 1854, 1858-59 (Fed. Cir. 2000); and Larami Corp. v.
Talk To Me Programs Inc., 36 USPQ2d 1840, 1843-44 (TTAB
1995).
We turn to the first factor for issue preclusion, that
is, whether the issue to be determined in this case is
identical to the issue involved in the prior civil action
between the parties. After carefully reviewing the parties’
arguments and exhibits, we find that there is no genuine
dispute that the key issue to be determined in these
consolidated proceedings is identical to the issue involved
in the prior civil action, namely, whether SSI has an
ownership interest in the POOH works.
As to the instant proceedings, to prevail on any of its
claims, SSI would have to establish that it has rights in
Consolidated Proceedings: Opposition No. 91179064 (parent) et al
12
the involved trademarks. Therefore, to survive Disney’s
construed motion for summary judgment, SSI must establish
either that there is no genuine dispute that it has an
ownership interest in the marks, or that there is at least a
genuine dispute as to its ownership of the marks and that it
is entitled to try the issue.
Specifically, SSI is the plaintiff in these proceedings
and asserts rights which are not based on its own federal
registrations.13 As such, SSI may not rely on a presumption
of validity of its trademark rights, and in order to prevail
on its substantive claims of likelihood of confusion or
dilution, or at least proceed to trial on its claims, SSI
bears the burden of establishing that it owns “a mark or
trade name previously used … and not abandoned,” Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), or that it
is “the owner of a famous mark …,” Section 43(c) of the
Trademark Act, 15 U.S.C. § 1125(c). Likewise, ownership of
the POOH marks is central to SSI’s fraud claim and to its
claim of lack of ownership under Section 1 of the Trademark
Act, 15 U.S.C. 1051(a). In particular, SSI’s fraud and
ownership claims are based, respectively, on SSI’s
allegations that Disney was (at the time of filing) a

13 The five trademark registrations for POOH related marks that
are identified in SSI’s notices of opposition, namely, U.S. Reg.
Nos. 283856, 302372, 302240, 304587 and 313255, have all been
cancelled.

Consolidated Proceedings: Opposition No. 91179064 (parent) et al
13
licensee of SSI and that Disney attempted to mislead the
USPTO when it asserted otherwise in its applications, and
that SSI is the rightful owner of the involved mark.14
Thus, SSI’s ownership of rights (or lack thereof) in the
POOH marks is clearly a central issue in these proceedings
with respect to SSI’s substantive grounds for relief.15
Whether SSI has any ownership interest in the POOH
works as a result of the 1983 agreement between the parties
was also the pivotal issue addressed by the district court.
SSI alleged in its Fourth Amended Answer and Counterclaims
that “the 1983 Agreement consisted of two agreements: a
grant to Slesinger and then a license from Slesinger to
Disney” (¶69); that SSI “has valid protectable trademark

14 See ¶ 9 (fraud claim, count one) and ¶ 14 (lack of ownership,
count two), in the notice of opposition in Opp. No. 91179064;
¶¶ 10 & 15 in Opp. Nos. 91182358, 91183644, 91192691, 91194551,
91196019, and 91198046; ¶¶ 12 & 17 in 91186026, 91187261,
91188860, and 91191230; and ¶¶ 5, 8 & 10 (fraud, lack of
ownership and prior rights) in the petition for cancellation.

15 Inasmuch as the district court decided that SSI lacks any
ownership interest in the POOH works, we find that it is also
established that SSI lacks any ownership interest in the POOH
marks that could be damaged by Disney’s registrations. In view
thereof, SSI lacks standing to raise any of its asserted claims
in these proceedings. See Ritchie v. Simpson, 170 F.3d 1092, 50
USPQ2d 1023 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). See also
Gal v. Israel Military Indus. of the Ministry of Defense of the
State of Israel, 230 USPQ 669, 674 (TTAB 1986), aff’d, 824 F.2d
980 (Fed. Cir. 1987) (not precedential) (“In determining then,
that collateral estoppel bars Gal from asserting proprietary
rights in the term “UZI” in this action, we must conclude that
Gal does not have standing to oppose registration by applicant of
the mark sought to be registered on any statutory ground where
proprietary rights in the term are necessary for standing to
exist.”). However, our dismissal of SSI’s claims infra is not
based solely on SSI’s lack of standing.
Consolidated Proceedings: Opposition No. 91179064 (parent) et al
14
rights in ‘Winnie the Pooh,’ ‘Pooh,’ and ‘Christopher
Robin’” (¶ 128); that the scope of Disney’s grant to use
Slesinger’s trademark rights was established by the 1983
agreement, that all use by Disney has been pursuant to a
license, and that Slesinger licensed trademark rights to
Disney (¶ 130); and that, as a licensee of certain of
Slesinger’s trademark rights, the use of the marks in
Disney’s trademark registrations inures to the benefit of
SSI (¶ 137). Critically, SSI requested that the district
court issue a declaratory judgment ordering the U.S. Patent
and Trademark Office to change the title to Disney’s several
POOH registrations (¶ 137) to reflect ownership by SSI.
Disney, in its motion for summary judgment in the civil
action, sought judgment on SSI’s counterclaims for
infringement on the basis that SSI has no ownership rights
in the POOH works and lacked standing to bring the
infringement action (reply brief, Exh. B, Sec. II, at 2).
In its cross-motion for summary judgment, SSI sought a
summary adjudication of its first, second and third
counterclaims for copyright, trademark infringement, and
trade dress infringement, respectively (reply brief, Exh. C,
Sec. III, at 4 and Sec. IV, at 12). SSI also argued that
“Disney never procured an assignment of [SSI’s POOH
trademarks and trade dress] rights in either the 1961 or the
1983 Agreements.” Id.
Consolidated Proceedings: Opposition No. 91179064 (parent) et al
15
The district court specifically addressed the issue of
whether SSI has any remaining ownership interest in the POOH
works, as follows:
Summary Judgment is appropriate where the terms of a
contract are clear and unambiguous. The fact that the
parties disagree as to their meaning does not alter
that result. … Here, the unambiguous nature of the
contracts is strongly supported by the conduct of the
parties over the nearly 50 years of their relationship.
Both parties have treated the agreements as
constituting a transfer from SSI to Disney of all of
SSI’s interests in the Pooh characters, entitling SSI
to royalties[16] for all uses. … The Court is satisfied
that under the clear terms of the parties’ agreements,
SSI transferred all of its rights in the Pooh works to
Disney, and may not now claim infringement of any
retained rights. Disney’s Motion for Summary
Adjudication of the first, second, third, and tenth
counterclaims is granted; and SSI’s cross-motion for
Summary Adjudication of the first, second and third
Counterclaims is denied.

Milne v. Slesinger, slip op. at 7-8 (emphasis in original).
Based on our review of SSI’s pleading in the civil
action, the parties’ cross-motions for summary adjudication,
and the district court’s order in the civil action, there is
no genuine dispute that the civil action involved the

16 In consideration of the grant made by SSI in paragraph 7 of
1983 agreement (“Slesinger hereby assigns, grants, and sets over
unto Disney the sole and exclusive right in the United States and
Canada … .”), and in consideration of the grant made in paragraph
8 of said agreement (“In addition, Slesinger hereby assigns,
grants and sets over unto Disney all of the further rights in and
to said “work” … .”), Disney agreed to pay SSI specified amounts
described in paragraphs 9 and 10 of the agreement. “Royalties in
an assignment agreement are properly conceived as deferred
consideration for the original conveyance of rights, with the
amount of consideration pegged to the commercial success of the
product.” Baladevon, Inc. v. Abbott Labs., Inc., 871 F.Supp. 89,
33 USPQ2d 1743, 1748 (D. Mass. 1994) (internal citations
omitted).

Consolidated Proceedings: Opposition No. 91179064 (parent) et al
16
specific issue of which party owns the POOH marks as a
result of the contracts between the parties. Further, based
on our review of SSI’s pleadings in these consolidated
cases, the identical issue of ownership is also involved in
the instant proceedings, because, as discussed, SSI cannot
prevail in these cases without establishing that it owns the
POOH trademarks.17
Regarding the second and fourth factors for applying
issue preclusion, we find that there is also no genuine
dispute that the issue of ownership of the POOH marks was
raised, litigated, and actually adjudged in the prior civil
action, and that SSI was fully represented by counsel in the
prior proceeding. Specifically, as discussed, Disney raised
the issue of ownership of the POOH works by seeking
dismissal of SSI’s counterclaims in the civil action on the
basis that SSI has no ownership rights in the POOH works and
thus could not prevail in the infringement action. SSI
opposed Disney’s motion, contending that SSI’s transfer of
rights in the POOH works was a license, rather than an

17 Under Trademark Act § 2(d), SSI must establish its priority,
which it cannot do without proving its ownership of some prior
right with which Disney’s mark might cause confusion. Likewise,
in order to prevail on its dilution claim, SSI would have to
prove that it is “the owner of a famous mark … .” Trademark Act
§ 43(c) (emphasis added). Finally, SSI’s fraud and ownership
claims both plead as an essential element that Disney does not
own the marks in the subject applications because they are in
fact owned by SSI. E.g., Notice of Opp. 91179064, ¶¶ 9 (fraud),
14 (lack of ownership). Thus none of SSI’s pleaded claims are
tenable in light of the district court’s finding that SSI
transferred all of its rights to Disney.
Consolidated Proceedings: Opposition No. 91179064 (parent) et al
17
assignment. The district court granted Disney’s motion for
summary judgment with respect to SSI’s counterclaims and
denied SSI’s cross-motion for summary judgment.18 Milne v.
Slesinger, slip op. at 12. Further, in its Final Judgment
order, the Court stated expressly that it has “fully
adjudicated all claims and counterclaims” between the
parties, and dismissed with prejudice SSI’s first, second,
and third counterclaims for copyright, trademark, and trade
dress infringement, stating that “all of [SSI’s]
counterclaims are dismissed on the merits and with
prejudice” (Final Judgment order, Milne v. Slesinger,
Document 549 (C.D. Cal., Oct. 7, 2009)).
In view of the foregoing, no genuine dispute exists
with respect to whether the issue of ownership of the POOH
works was raised, litigated and adjudged in the prior civil
action. Further, inasmuch as SSI’s “Memorandum of Points
and Authorities in Opposition to Disney’s Motion for Summary
Judgment or Summary Adjudication on Slesinger’s
Counterclaims” in the civil action was signed and submitted
by SSI’s counsel in the instant proceedings, there is no
genuine dispute that SSI was fully represented in the prior
civil action.

18 Thus, SSI’s request for declaratory relief in the nature of
requiring the USPTO to change the title to the Disney “Pooh”
registrations was also effectively denied.
Consolidated Proceedings: Opposition No. 91179064 (parent) et al
18
Turning to the third factor for collateral estoppel,
the parties disagree as to whether the district court’s
determination that SSI transferred “all of its rights in the
Pooh works” was necessary and essential to the resulting
judgment for Disney. As discussed, Disney argues that in
order to grant its summary judgment motion, the district
court “necessarily decided” that SSI “retained no rights” in
the POOH works, i.e., that the transfer of rights to Disney
constituted an assignment, rather than a license. In
contrast, SSI argues that the district court order decided
only a very narrow issue with respect to its trademark
infringement claim, namely, whether there were any
unauthorized uses by Disney of the POOH works beyond the
interests that SSI transferred to Disney in the 1961 and
1983 agreements.
We are persuaded by the entirety of the record put
before us, and resolving any inferences in favor of SSI, the
non-moving party, that there is no genuine dispute that the
district court’s determination regarding the nature and
scope of the conveyance from SSI to Disney was necessary and
essential to the resulting judgment in the civil action. As
shown in the following passage from the order, the district
court clearly interpreted the agreements of the parties,
examined the nature of the transfer of rights and, based
thereon, determined whether SSI assigned or merely licensed
Consolidated Proceedings: Opposition No. 91179064 (parent) et al
19
its rights in the POOH works to Disney (and thus retained
some rights in the POOH works), so that the court could
decide whether there was a genuine dispute as to which party
owns the POOH works, and thus determine the pleaded claims.
In spite of SSI’s protestations today that “[t]he
rights Slesinger obtained from Milne are much broader
than the rights Slesinger licensed to Disney in the
1983 Agreement,” SSI Opp’n at 4, the language of the
parties’ agreements belies that contention.
Significantly, nowhere in its motion papers does SSI
identify precisely what rights it believes it retained.
Nor can any such rights be discovered by reading the
contracts. SSI received “certain rights” from Milne
and “further rights” in later agreements, and granted
“those rights it had acquired” to Disney. … The Court
is satisfied that under the clear terms of the parties’
agreements, SSI transferred all of its rights in the
Pooh works to Disney ….

Milne v. Slesinger, slip op. at 6-7, 8.
SSI argues that the district court decided only that
Disney’s uses were authorized under the 1983 agreement, and
that we should not interpret the court’s decision to have
passed on the broader issue of whether the 1983 agreement
reserved to SSI “any and all rights whatsoever” in the POOH
works (response at 9). The clear wording of the district
court’s order does not support SSI’s contention that the
decision was focused only on whether a particular array of
uses by Disney of the POOH works was authorized.
As noted above, SSI’s ownership of rights to the POOH
works was clearly an essential element of the claims in the
civil action. In particular, before considering whether
Disney’s actions were infringing (or whether SSI was
Consolidated Proceedings: Opposition No. 91179064 (parent) et al
20
entitled to have USPTO records regarding Disney’s
registrations corrected to show SSI as owner), the district
court necessarily had to consider whether SSI had any rights
in the POOH works. The question of whether Disney’s uses
were infringing or “authorized” is only relevant once SSI’s
rights are established. To that end, the court considered
“the unambiguous nature of the contracts,” which it deemed
to be “strongly supported by the conduct of the parties over
the nearly 50 years of their relationship” (Milne v.
Slesinger, slip op. at 7), and determined that SSI had
retained no rights at all. The fact that the district court
described the transaction between the parties in relation to
the POOH works as a “transfer” from SSI to Disney of all of
SSI’s rights in the POOH works does not mean that the
district court did not decide the issue of ownership, or
that resolving that issue was not necessary and essential to
the resulting judgment for Disney. On the contrary, in view
of Disney’s motion seeking summary adjudication on SSI’s
counterclaim for trademark infringement and SSI’s
corresponding demand for declaratory relief regarding the
title to the POOH trademarks, the district court did
consider and necessarily decided the nature of the parties’
transactions.
Further, we disagree with SSI’s contentions that the
order is unclear as to the nature of the transferred rights,
Consolidated Proceedings: Opposition No. 91179064 (parent) et al
21
i.e., whether copyright and/or trademark rights were
conveyed, or that because material facts assertedly remained
in dispute, the district court could not have determined on
summary judgment that SSI had transferred by assignment all
of its rights in the POOH works.19 On the contrary, the
factual basis of the order and the scope of the rights
discussed are unambiguous. The district court relied on the
wording in the relevant contracts and concluded that SSI had
transferred all rights in the POOH works.
In view thereof, the district court determined that
there was no genuine dispute as to the nature and scope of
the conveyance from SSI to Disney, and that other
allegations of fact were not material to its determination
regarding the transfer of rights between the parties. Cf.
Octocom Sys., Inc. v. Houston Computers Serv., Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787-88 (Fed. Cir. 1990) (“A
factor … is not made material by submission of evidence on
the point; rather, the factor must be shown to be material
or relevant in the particular case ….” (emphasis in
original)).
In view of the factual findings of the district court
in granting Disney’s motion for summary judgment and in

19 Had SSI believed that the district court exceeded its authority
under Fed. R. Civ. P. 56 in deciding the motions before it, its
remedy would have been to press its appeal. Needless to say, we
do not review the district court’s order to determine whether it
was properly decided.
Consolidated Proceedings: Opposition No. 91179064 (parent) et al
22
denying SSI’s cross-motion for declaratory and other relief,
we find that the determination that SSI transferred all of
its rights in the POOH works was necessary and essential to
the resulting judgment for Disney.
In sum, as a result of the prior district court
litigation between the parties, we find that there is no
genuine dispute that the issue of ownership of the POOH
works and of the POOH trademarks derived from those works to
be determined in these consolidated proceedings is identical
to the issue involved in the prior civil action; that the
issue of ownership of the POOH works was actually raised,
litigated and adjudged in the district court action; and
that the determination of whether SSI assigned or licensed
its rights to the POOH works to Disney was necessary to the
resulting district court judgment. Further, there is no
genuine dispute that SSI had a full and fair opportunity to
litigate the issue of ownership in the prior civil action.
In view of the foregoing, we find, as a matter of law,
that Disney is entitled to summary judgment based on
collateral estoppel. Having transferred all of its
interests in the POOH works (including any associated
trademark rights), SSI cannot prevail on its claims of
likelihood of confusion, dilution, fraud or lack of
ownership.
Consolidated Proceedings: Opposition No. 91179064 (parent) et al
23
Accordingly, the consolidated opposition and
cancellation proceedings, namely, Opposition Nos. 91179064,
91182358, 91183644, 91186026, 91187261, 91188860, 91191230,
91192691, 91194551, 91196019, 91198046, and Cancellation No.
92046853 are dismissed with prejudice.
•••