Well that’s sweeter than honey. Disney Enterprises today had its trademark ownership rights to Winnie-the-Pooh reconfirmed by the U.S. Court of Appeal. In a 2-1 ruling (read it here), the Federal Circuit said the U.S. Patent and Trademark Office appeals board was correct to dismiss a challenge to Disney’s rights from publisher Stephen Slesinger Inc. “Accordingly, the Board correctly applied collateral estoppel to prevent Slesinger from asserting a claim that its 1983 grant of rights to Disney was a license as opposed to an assignment,” said judges Randall Ray Radar and Kathleen O’Malley of the Appeals Court in their majority opinion Friday.
The Slesinger family has been arguing for more than 20 years that it is entitled to royalties from Disney’s Pooh merchandise, DVDs, movies and other related material. The roots of the case go back to 1930, when Pooh creator A.A. Milne gave Slesinger exclusive merchandising rights to his works and characters. After having utilized those rights for three decades, the company in 1961 “assigned, granted, and set over to” Walt Disney Productions the rights from the 1930 agreement with Milne. In 1983, via another legal back and forth, the parties agreed that the Slesingers would take back the rights and then re-assign them exclusively back over to Disney. It was that complex agreement and who owned what and how much of it that first led to legal action on the part of the Slesinger estate in 1991. And eventually led to the case that was ruled on today. “As 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,” noted the majority judges today.
Complicating things further, as the case wound its way through the courts with victories on both sides, the Slesingers also filed a dozen proceedings with the Trademark and Patent office in hopes of making their point there. Unfortunately for them, as today’s ruling makes clear, that didn’t pan out. Unless the case is again reviewed by the Court of Appeal, which is unlikely in such instances, or taken to the Supreme Court, the Slesingers’ legal options are pretty much exhausted. However, in his dissenting opinion, Judge Jimmie Reyna wrote that he felt it it wasn’t clear whether a 2009 decision by the Central Court of California decided who actually owned the Pooh trademarks. That 2009 decision “appears to suggest that Slesinger retained some rights to the Pooh trademarks, but that any rights retained were insufficient to support an infringement action,” Reyna wrote
Lawyers from both parties presented their case in front of the panel in July. Slesinger is represented by Roger Zissu, Michael Chiappetta and David Donahue of New York firm Fross Zelnick Lehrman & Zissu. Disney Enterprises is represented Daniel Petrocelli, Cassandra Seto and Mark Miller of O’Melveny & Myers’ LA and San Francisco offices.
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