USPTO, Trademark Trial and Appeal Board
No. 91179064, June 8, 2011
A panel of judges at the TTAB has ruled that a former licensee of rights to “Winnie the Pooh” is collaterally estopped from pursuing trademark opposition and cancellation proceedings against Disney. In 1930, A.A. Milne, the creator of Winnie the Pooh, transferred his exclusive merchandizing and other rights to Stephen Slesinger who then granted these rights exclusively to Walt Disney Productions in 1961. Some dispute over the rights ensued but these were resolved contractually in 1983 with Disney securing exclusive ownership rights in all Pooh works, including any trademark rights attached to them.
Disney is currently seeking to register several Pooh-related marks at the TTAB in conjunction with various goods, including computer games, and other internet-related uses. According to Slesinger’s complaint, Disney has been exploiting the Pooh characters in mediums to which it did not receive rights under the 1983 Agreement. These mediums include: “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, magazines, multi-media kits, and other products and services.”
Disney argued that the 1983 agreement transferred all rights in the Pooh works to Disney, including rights to use the trademarks in technological mediums that could not have been contemplated at the time. Disney also asserted that this issue had already been decided in Disney’s favor in prior district court proceedings where Disney was awarded summary judgment against similar challenges from Slesinger (Milne v. Slesinger, Document 545, Case No. 02-08508 (C.D. Cal., Sept. 25, 2009.) Slesinger argued that the issues now before the TTAB were not addressed in that district court ruling.
Ultimately, the TTAB disagreed with Slesinger. It reviewed the district court’s order of summary judgment and found that the district court had considered all issues of ownership in finding that there was no genuine dispute as to Disney’s exclusive rights to the Pooh marks coming out of the 1983 agreement, namely, that Disney owns all rights whatsoever to the Pooh marks.
The TTAB found that the issues Slesinger raised in the case before it were identical to the issues involved in the prior civil action. Thus, under the doctrine of collateral estoppel, Slesinger was barred from re-litigating these matters. The doctrine of collateral estoppel, or “issue preclusion,” mandates that 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. See 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.