• The Winnie the Pooh Case is Really, Really Over

    by  • December 26, 2012 • copyright, trademark

    I’ve written in the past about a dispute over ownership of the Winnie the Pooh intellectual property rights. The original state court case was a claim by Stephen Slesinger Inc. (SSI), the successor to the rights from A.A. Milne, that Disney had underpaid royalties. A subsequent infringement case was brought in federal court, and Disney successfully defended itself on the basis that it was licensed or that SSI had fully assigned its rights to Disney.

    The most recent chapter in the case was a Trademark Trial and Appeal Board decision refusing to cancel the Disney registrations for a number of Pooh marks. The Board held that the district court decision collaterally estopped the cancellation claim. SSI appealed to the Federal Circuit.

    The Court of Appeals for the Federal Circuit affirmed, but there was a dissent. The problem was the loose language the district court had used to reach its conclusion that Disney was not liable to SSI:

    The district court’s use of the phrase “granted to Disney all of the rights” could indicate an assignment, but it could also indicate a license to use, i.e., to promote, advertise and otherwise exploit the commercial value of the trademarks. Similarly, the district court’s conclusion that Slesinger “retained no rights which Disney could infringe” is equally consistent with either a license or an assignment. The court’s recognition that “Disney’s uses of the Pooh characters were authorized and royalty-producing” can reasonably refer to an assignment, but the words chosen by the court are more consistent with a license given the implied extension of authority and the obligation for continued royalty payments for use of the Pooh trademarks.

    Indeed, the district court’s opinion appears to suggest that Slesinger retained some rights to the Pooh trademarks, but that any rights retained were insufficient to support an infringement action. Milne, 2009 WL 3140439 at *4 (“Slesinger transferred all of its rights in the Pooh works to Disney, and may not now claim infringement of any retained rights.”). This scenario is as suggestive of a license as it is of an assignment. It follows that a finding that some or all rights were transferred is not itself determinative of ownership.

    The dissent therefore would not have found that the claim for ownership of the trademarks was necessary to the decision by the district court and therefore the TTAB wasn’t collaterally estopped. But it was only a dissent.

    Not surprisingly, according to the Los Angeles Times, a spokesman for SSI said “An appeal may be appropriate.” Motion for rehearing and rehearing en banc, anyone?

    Stephen Slesinger Inc. v. Disney Enterprises, Inc., No. 2011-1593 (Fed. Cir. Dec. 21, 2012).

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