Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA368087
`ESTTA Tracking number:
`09/13/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91179064
`Plaintiff
`Stephen Slesinger, Inc.
`Andrew D. Skale
`Mintz Levin Cohn Ferris Glovsky and Popeo P.C.
`3580 Carmel Mountain Road Suite 300
`San Diego, CA 92130
`UNITED STATES
`adskale@mintz.com, sckalamaras@mintz.com,
`Other Motions/Papers
`Andrew D. Skale
`ADSkale@mintz.com
`/ Andrew D. Skale /
`09/13/2010
`Opposers Opposition to Mtn to Dismiss for filing.pdf ( 51 pages )(2408234 bytes
`)
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Attorney Docket No. 36309-516
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`STEPHEN SLESINGER, INC.,
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`Opposition Nos.
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`Opposer,
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`V’
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`DISNEY ENTERPRISES, INC.,
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`Applicant.
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`Cancellation No.
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`Trademark Assistance Center
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`Madison East, Concourse Level Room C 55
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`600 Dulany Street
`Alexandria, Virginia 22314
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`91179064
`91182358
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`91183644
`91186026
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`91187261
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`91192691
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`91194551
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`91196019
`92046853
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`OPPOSER’S RESPONSE TO APPLICANT’S MOTION TO DISMISS
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`Pursuant to Trademark Rule 2.119(c), 2.127(a), and 2.117 (of 37 C.F.R.), and the Board’s
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`September 7, 2010 Order in Oppositions No. 91196019, Opposer Stephen Slesinger, Inc.
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`(“Opposer” or “Slesinger” or “SSI”), by undersigned counsel hereby files this Response to the
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`Motion to Dismiss filed by Applicant Disney Enterprises, Inc. (“Applicant” or “Disney”) on
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`October August 24, 2010 in Opposition No. 91196019, which has now been consolidated into
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`Opposition No. 91179064.
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`The sole issue on this Motion to Dismiss is whether the Civil Action constitutes a ruling
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`

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`Attorney Docket No.: 36309-406
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`Application Serial No. 77/890766
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`that defeats Opposition No. 911960191 In the Civil Action, the Court:
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`(i) denied Applicant’s
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`failed attempt to recapture certain of Opposer’s copyright and trademark rights (see Exhibit A,
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`Ninth Circuit’s ruling against Opposer); and (ii) by summary judgment, determined that
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`Applicant was not infringing Opposer’s trademark and copyright rights. The Court did not
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`decide the issue of ownership of the Pooh—related trademark rights.
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`At best, all Disney can argue is that the Civil Action decided that Disney was authorized
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`and therefore not infringing with respect to its uses of Slesinger’s rights, but has to pay for all of
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`the trademark (and copyright) uses. Order at 7: 14 (the agreements “entitle[] SSI to royalties for
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`all uses” (emphasis added)). She side—stepped a decision on license versus assignment, as the
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`evidence below demonstrates that to make such a decision would have required deciding
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`disputed issues of fact she never even purported to address, and certainly could not do on
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`summary judgment (in the face of material factual issues).
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`The Court never decided the issue of whether the parties’ agreement is a license or an
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`assignment. That issue is central here because if Applicant is a mere licensee, which Opposer
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`contends, Applicant cannot register trademarks in its own name and the Opposition should be
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`upheld. Thus, it is for this Board to determine if the arrangement between Applicant and
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`Opposer is one of a licensee or an assignment. Notably, Applicant’s persistent course of conduct
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`has demonstrated that the transfer was a license (with all uses inuring to Opposer’s benefit). The
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`Motion to Dismiss should be denied, and the consolidated proceedings move forward.
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`1 As was noted in the original Motion to Suspend filed in this case, there was an ongoing civil
`litigation pending in the United States District Court for the Central District of California, Milne,
`et al. and Disney Enterprises, Inc. v. Stephen Slesinger, Inc., Case No. 2:02—cv—08508—FMC—
`PLAX between the parties (the “Civil Action”). An Order granting a Motion for Summary
`Judgment and denying a Counterclaim Motion for Summary Adjudication was issued by the
`Court on September 25, 2009 (“Order”).
`(See Mtn. to Dismiss at Exhibit A).
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`-2-
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`Attorney Docket No.: 36309-406
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`Application Serial No. 77/890766
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`I. BACKGROUND
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`A.A. Milne wrote stories regarding characters centered around Winnie—the—Pooh, which
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`appeared in popular periodicals and books in the 1920’s. After signing an agreement with Mr.
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`Milne, Mr. Slesinger took the characters out of the text of Milne’s books, and developed them in
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`commerce and into an industry starting in the 1930’s, with famous, colorful, distinctive
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`characters. The agreement included, inter alia, the right to use Milne’s name, E.H. Shepard’s
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`name, the names of the characters, titles of the works and chapter headings — which obtained
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`protectable goodwill when Slesinger began using them as brands in commerce. By the 1940’s,
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`Disney recognized the value of Winnie—the—Pooh and that Milne’s rights had no value without
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`Opposer’s rights. Opposer’s rights were far more valuable because they involved U.S.
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`trademark, television and other media rights as opposed to Milne’s theatrical and foreign rights.
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`(See Exhibit B.) In 1960, Mrs. Slesinger (widow of Mr. Slesinger) took over the business and
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`desired that Mr. Walt Disney license Opposer’ s television rights to help promote her
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`merchandising campaigns.
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`In 1961, Applicant entered into two license agreements, one with Opposer and one with
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`Milne, through which Applicant licensed rights relating to Pooh. Both licenses contained
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`identical granting language and an identical royalty base. Applicant construed that language
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`(appearing in both agreements) to be a license, and informed its shareholders that Applicant had
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`licensed rights from Opposer and Milne. There was no acquisition in either agreement paying
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`for the outright sale of these rights. Applicant did not bargain for, pay for, or obtain ownership
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`of those rights from either Milne or Opposer. Nor did Applicant bargain for or obtain ownership
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`of those rights when these same parties entered into a new license agreement and amendment in
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`1983. Applicant never requested that Opposer assign over any of Opposer’s trademark rights or
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`Attorney Docket No.: 36309-406
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`Application Serial No. 77/890766
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`register an assignment of rights with the Trademark Office. Applicant never even attempted to
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`register trademarks in its own name until after the dispute with Opposer and Milne began.
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`Toward the end of the 1990’s, Applicant’s desire to buy—out all of the Winnie—the—Pooh
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`rights were widely publicized. At that time, Applicant offered Opposer and Milne several
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`hundred million dollars to buy—out those rights. Applicant consummated a deal with Milne, but
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`never with Opposer. Now Applicant would rather effectively steal Opposer’s ownership rights,
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`having this Board simply rule that the rights belong to Applicant, without having to pay Opposer
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`for those rights by suggesting the Court made a ruling it never made.
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`II. ARGUMENT
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`An issue that would defeat the marks opposed in the consolidated Oppositions and
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`Cancellation is whether Applicant is a licensee of Opposer’s rights to the marks or if Opposer
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`assigned those rights to Applicant. If Applicant is a mere licensee, then all its uses inure to the
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`benefit of Opposer. 15 U.S.C. § 1055; Clayton v. Howard Johnson Franchise Sys., Inc., 730 F.
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`Supp. 1553, 1560 (M.D. Fla. 1988) (“The law is clear that while a license is in effect, use of a
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`licensed mark by a licensee inures to the benefit of the licensor. See 15 U.S.C. § 1055 .”). As a
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`licensee, Applicant would be unable to register the Pooh—related marks in its own name. 15
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`U.S.C. 1051(a)(1) (“The owner of a trademark used in commerce may request registration of its
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`trademark. . .”); Ballet Tech Foundation, Inc. v. The Joyce Theater Foundation, 89 USPQ2d 1262
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`(TTAB 2008) (owner of mark could register based on sole use by licensee); TMEP § 1201.04
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`(“[I]f the record specifically identifies the applicant in a manner that contradicts the claim of
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`ownership, for example, as a licensee. . .registration should be refused”).
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`The Civil Action did not determine whether the parties’ relationship is one of a license or
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`an assignment. However, when that issue is decided, the evidence overwhelmingly demonstrates
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`Attorney Docket No.: 36309-406
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`Application Serial No. 77/890766
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`a license, not the assignment Applicant would wish it to be. Thus, Applicant’s attempt to
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`dismiss the consolidated Oppositions and Cancellation, including the present Opposition No.
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`91196019, should be denied.
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`A.
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`The Civil Action Did Not Dispose Of the Issues That Must Be Determined By
`the Board in These Proceedings
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`Applicant’s Motion to Dismiss argued that the Civil Action determined the issue of
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`ownership of the trademarks, and collateral estoppel thus justifies dismissal. Although
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`disagreeing with Applicant’s assessment, Opposer originally recognized that there was no need
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`to address what was and was not decided in the grant of summary judgment in the Civil Action
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`(i.e. the issue of ownership Disney contends was decided by that ruling) if an appeal resulted in
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`an overturning of that ruling, and thus was in favor of suspending the consolidated proceedings
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`to avoid a waste of time in these proceedings?
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`However, now that the ruling in the Civil Action is final, Opposer gladly takes
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`Applicant’s faulty contention head on: The ruling had nothing to do with the determination of
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`whether the grant of rights from Opposer to Applicant was a license of rights or an assignment of
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`ownership.
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`Crucially, the issue in the Civil Action was whether Opposer could move forward with a
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`trademark infringement action against Applicant for uses that were neither licensed nor assigned.
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`In the Civil Action, Opposer argued that there were Pooh—related rights for which Applicant had
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`neither a license nor an assignment and thus Opposer could sue Applicant for infringement of
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`those rights. The Order in the Civil Action disagreed, determining that there were no use Disney
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`2 Thus, while Opposer filed a response a response to Applicant’s first motion to dismiss, now
`that the Civil Action is final, Opposer need now only address the issue of what the Civil Action
`decided — hence the present response to Applicant’s motion to dismiss filed in Opposition No
`91196019. Now that the oppositions are consolidated, this response is relevant to all the
`consolidated oppositions.
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`Attorney Docket No.: 36309-406
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`Application Serial No. 77/890766
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`was being challenged for that was neither licensed nor assigned, and thus no infringement action
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`could be maintained. “[A]n essential element of any trademark infringement claim is a
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`likelihood of confusion. . .from the unauthorized use or copy of a trademark.” Firma Melodiya
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`v. ZYX Music GmbH, 882 F. Supp. 1306, 1311 (S.D.N.Y. 1995). The decisive language of the
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`ruling finding the essential element of unauthorized use not satisfied was as follows:
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`Disney puts forth two main contentions in its Motion: First, that SSI granted to
`Disney all of the rights which Disney could infringe, and second, that SSI’s
`counterclaims are inconsistent with its earlier position in the Superior Court
`action that Disney’s uses of the Pooh characters were authorized and royalty-
`producing. The Court agrees with both propositions.
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`[Disney’s Motion to Dismiss at EX. A at 2:5—10 (emphasis added).]
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`With this in mind, Disney’s Motion to Dismiss fails on at least two grounds. First,
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`collateral estoppel cannot apply because determination of whether all ownership in the uses was
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`assigned to Disney, or merely licensed, was not necessary to the judgment. Second, the Court
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`did not determine whether the grant to Disney was an assignment of all ownership, or merely a
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`license, so it did not resolve the determinative issues presently before the Board.
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`1.
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`Authorization Was the Only Necessary Issue Decided In the Civil
`Action; Not the Issue of Ownership.
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`The only necessary and essential determination made by the Court’ s order in the Civil
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`Action was that Applicant’s challenged uses were authorized, thus precluding a claim for
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`infringement under the summary judgment standard. See Disney’s Mtn. to Dismiss at 2 quoting
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`Larami Corp. v. Talk to Me Programs, Inc., 36 U.S.P.Q. 2d 1840, 1843-44 (T.T.A.B. 1994)
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`(collateral estoppel requires that issue not only be “actually litigated” but that it be “necessarily
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`decided”); Mtn. to Dismiss EX. A. at 5-6 (“Summary judgment is appropriate if there is no
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`genuine issue of material fact...’ Material facts are those which may affect the outcome of the
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`case.’”) (quoting Long v. County 0fL0s Angeles, 442 F.3d 1178, 1185 (9th Cir. 2006). “A
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`Application Serial No. 77/890766
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`determination ranks as necessary or essential only when the final outcome hinges on it.” Bobby
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`v. Bies, 129 S. Ct. 2145, 2152 (2009); NLRB v. Thalbo Corp., 171 F.3d 102, 112 (2d Cir. 1999)
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`(not necessary if the issue itself did “not have any effect” on the outcome in that the outcome
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`could have stood without it, i.e. indispensable).
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`Whether the grant of authorization was a license or assignment was not necessary or a
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`material fact on summary judgment, and thus any statement in the ruling concerning it (assuming
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`there were such a statement) would not be a necessary determination to the Court’s grant of
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`summary judgment. Thus the motion to dismiss, premised solely on collateral estoppel, would
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`fail on that basis alone.
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`In fact, as shown in the evidence presented below (e. g. that Paragraph 15 of the 1983
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`Agreement allows for the rights to come back to Slesinger, that certain of Disney’s rights were
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`non—exclusive, Disney’s own royalty statements and statements to shareholders characterizing
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`the grant as a license, and Disney’s treatment of an identical grant to Milne as a license) there
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`would have been gaping material factual issues crucial to determining the character of the grant
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`to Disney as a license or assignment in order to make the ruling Disney claims the Civil Action
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`made on summary judgment.3/ Yet not one of these pieces of evidence was mentioned in the
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`Order that Disney claims somehow is decisive here. To violate the rule prohibiting summary
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`judgment by determination of material facts disputed by the evidence, without even considering
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`these material facts in the slightest, would be unthinkable, since “on a motion for summary
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`judgment, [courts] may determine only whether a disputed issue exists; [they] may not resolve
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`it.” Glowacki v. Borden, Inc., 420 F. Supp. 348, 355 (D. Ill. 1976).
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`The Civil Action additionally did not rule whether the rights were exclusive or non-
`3/
`exclusive, and many of the rights granted to Disney were in fact non—exclusive. The Court
`refused to engage in unnecessary analysis to the issue at hand, whether or not the parties had
`urged a ruling on particular issues.
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`Attorney Docket No.: 36309-406
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`Application Serial No. 77/890766
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`2.
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`The Civil Action Did Not Decide Whether the Grant From
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`Opposer to Applicant Was a License or Assignment.
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`But the motion to dismiss fails on an even more fundamental level:
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`the ruling did not
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`actually decide the issue of whether the grant of authorization was a license or a full assignment
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`of all of Opposer’s rights. The fact is, that the Civil Action’s Order granting summary judgment
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`is, at best, ambiguous as to any other issue other than that certain of Disney’s uses were
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`authorized (e.g. whether a particular statement discusses copyright or trademark rights, actions of
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`the parties with respect to copyright or trademark rights, the character of the grant as license or
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`assignment, whether Disney’s rights were non—eXclusive). Such rulings cannot be said to have
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`preclusively decided an issue. Nilsen v. City 0fM0ss Point, Miss., 674 F.2d 379, 390 (5th Cir.
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`1982) (“When a holding depends on ambiguous grounds, neither ground is the subject of
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`collateral estoppel.”).
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`As the Court in its Order explained, the issue at hand was Slesinger (Opposer’s) position
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`that “[t]he rights Slesinger obtained from Milne are much broader than the rights Slesinger
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`licensed to Disney in the 1983 Agreement.” [Mtn. to Dismiss EX. A at 6]. In other words,
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`Opposer argued in the Civil Action that there were categories of use that Opposer had that were
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`broader than the use it licensed Applicant. Every statement of the Court that Applicant cites was
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`made in response to, and in answer to, that particular position of Opposer in the Civil Action.
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`The Court’s statement that “SSI granted to Disney all of the rights it had in the Pooh
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`characters, and retained no rights which Disney could infringe,” (id. at 3), was with respect to the
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`issue of breadth of certain uses authorized, not whether certain rights were licensed or as signed
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`to Applicant. The virtually identical statement that “The court is satisfied that. . .SSI transferred
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`all of its rights in the Pooh works to Disney, and may not now claim infringement of any retained
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`rights,” (id. at 8), only purported to address the breadth of certain rights Applicant was or was
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`-3-
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`Attorney Docket No.: 36309-406
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`Application Serial No. 77/890766
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`not authorized to use. When Applicant quotes in its Motion to Dismiss the language “[a]ll of its
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`rights” — that clearly referred to Applicants’ u_se rights, not all rights whatsoever, which is
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`obvious since Opposer still has royalty rights, the very rights the Court recognized in the Order
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`by stating Applicant owes Opposer “royalties for all uses” (Id. at 7.) 4 And it bears noting that
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`these statements in context were ambiguous as to whether discussing copyright, trademark or
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`both. Nilsen v. City 0fM0ss Point, Miss., 674 F.2d at 390 (ambiguity precludes collateral
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`estoppel on any grounds).
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`Likewise, the statement in the Order that “both parties have treated the agreements as
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`constituting a transfer from SSI to Disney of all of SSI’s interests in the Pooh characters,
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`entitling SSI to royalties for all uses,” (id. at 7) plainly indicates that “all” refers to uses, not an
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`outright assignment of any and all rights whatsoever as Applicant would have it. Again, as
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`Opposer is still owed royalties, the court could not have meant all rights relating to the Pooh
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`characters, but merely rights related to all uses preventing the infringement suit from moving
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`forward. 5/
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`Applicant’s mischaracterization of the ruling is premised on reading the Order as
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`addressing more than just the issue of whether there were or were not particular rights not
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`4 The Order’s mention that Opposer did not “attempt[] to perfect or register any such rights,” is
`not correct, inadvertent, and contrary to documents in the trademark office’s records, as Opposer
`obtained numerous trademark registrations regarding Winnie—the—Pooh.
`(See Registration Nos.
`283,856; 302,372; 302,240; 304,587; and 313,255; see also Notice of Opposition, Schedule B).
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`5/ Slesinger largely monitored Disney’s use while this license was in effect, and from Slesinger’s
`observation Disney never had a practice of marking its items for trademark (i.e. ®), with Disney
`relying on copyright rights instead. Thus, Slesinger did not have opportunity to address this
`issue of trademark rights until after the dispute in the 1990s occurred. Thus the only course of
`conduct to draw on was Disney’s failure to claim anything beyond a trademark licensee’s rights.
`The 1983 Agreement is simply not consistent with an assignment, as shown clearly by Paragraph
`l5’s discussion of the agreement s expiration,” which could not exist had the rights been
`assigned to Applicant in that agreement.
`[Exhibit C.]
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`-9-
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`Application Serial No. 77/890766
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`licensed or assigned to Applicant, when that was plainly the only issue before the Court.
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`[Mtn.
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`to Dismiss Ex. A at 6.] Nothing further demonstrates this fact than that the Order does not
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`address or cite to any of the numerous pieces of evidence demonstrating that the arrangement is
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`one of a license, not an assignment (such as Exhibits 1-1 to 1-8 filed in Opposer’s Response,
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`filed January 7, 2010). Included in these exhibits, which are never addressed in the Order in the
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`Civil Action, is almost every royalty statement where Applicant admits Opposer is its licensor
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`(see an example below from Exhibit 1-8, page 90 noted as page “106 of 135”):
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`F
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`__
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`_
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`.
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`mm wtm‘ magma com-:a.:~ns
`Rift‘-EALTY
`i
`SF” 1iE¥.?‘(i*IfIi’}l§I THRQHG-H-1333131303
`
`FOR THE
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`V
`P:rmh1£:1‘Ti¥m w:1~ImE=n:E PDQH .
`Liéensers STF.~f?f£E.?% SLESINGER; INC.
`_ flmafraszt mm: M..s.n.c:H 31.. 3933:-
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`and Applicant’s statements to the SEC where it is admitted that its agreement with Opposer is a
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`“licensing agreement.” (See Exhibit 1-5, page 31, noted as page -17-).
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`As an epilogue worthy of mention, just days ago, on September 10, a special master
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`asked to rule on an issue of attorney’s fees expressed the opinion that “[t]he Court undeniably
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`considered the parties’ claims on the merits. . .and dismissed. . .because Slesinger did not own any
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`of the rights at issue.” This reading of the Order was based on Applicant’s mischaracterization
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`of the same statements it presents here, and would not have been gratuitously provided had the
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`-10-
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`Application Serial No. 77/890766
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`distinction — between breadth of certain rights granted, and whether the grant of those certain
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`rights was a license or assignment — been grasped.6
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`Was there any doubt as to whether the Court intended to make a statement about whether
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`the parties’ arrangement was one of a license or an assignment, that doubt is dispelled by the
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`Court’s careful word choice. In each instance Applicant cites to in its Motion to Dismiss (and in
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`passages Applicant does not reference), the Court was careful not to take a position on the
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`license / assignment issue. Applicant’s cited passages refer to Applicant’s authorization via a
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`“transfer” or “grant.” [Mtn. to Dismiss 2-3.] Such terminology is consistent with a license or
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`assignment. Pantone, Inc. v. Esselte Letraset, Ltd., 878 F.2d 601, 602 (2d Cir. 1989) (“Pursuant
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`to these agreements Pantone granted a license to use its trademark. . .”) (emphasis added); Basic
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`Fun, Inc. v. X—C0ncepts, LLC, 157 F. Supp. 2d 449, 455 (E.D. Pa. 2001) (“trademark licenses
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`may transfer certain rights to the exclusive licensee” (emphasis added)).
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`Had the Court intended to side with an assignment and against a license, it could have
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`easily done so by repeatedly using the word “assignment” instead of words clearly compatible
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`with both. Its abstention is no surprise, given “[i]t is an accepted principle of judicial economy
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`that a court need not decide issues that are unnecessary to granting or denying the relief a party
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`seeks before that court.” Gnyton v. Secretary of Health and Human Services, 2004 WL 2677196
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`*4 (Fed. Cl. Oct. 28, 2004). As the Court found resolution of the issue of “authorization”
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`sufficient to grant summary judgment, (Mtn. to Dismiss EX. A at 6), it had no need or occasion to
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`address the license / assignment issue.
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`6 A Special Master’s statement in a recommendation to the District Court is entitled to no weight
`in its characterization of a prior ruling, as it is merely a second hand reading of what the ruling
`itself says. The Order in the Civil Action, not subsequent statements by a special master, is what
`controls. Moreover, Opposer is planning on requesting that this statement from the Special
`Master be stricken.
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`Attorney Docket No.: 36309-406
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`Application Serial No. 77/890766
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`In fact, the Court could not have been clearer about its abstention when it found as a basis
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`for its ruling that Opposer had previously stated in the Superior Court action that: “SS1 regranted,
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`licensed and assigned all rights acquired.” [Mtn. to Dismiss Ex. A at 9:7.] That statement could
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`only be used to support the notion that Applicant was authorized to make use of “all rights,” not
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`that such authorization was an assignment instead of license, since the relied on statement
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`expressly characterized the grant as a “license.” Thus, it was the issue of whether all of
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`Applicant’s uses were authorized, not whether that authorization was a license or assignment,
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`that was determined in the Civil Action.
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`Accordingly, the Civil Action does not support Disney’s Motion to Dismiss, which
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`should be denied so that the Office can proceed to consider the merits of Applicant’s Opposition.
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`B.
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`The Transfer of Trademark Rights Was a License, Not Assignment
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`In the consolidated proceedings, a preview of the evidence showing that Disney is only a
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`licensee has been submitted a number of times. See, e. g. January 7, 2010 Response filed in
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`Opposition Proceeding No. 91192691. This includes the following facts:
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`0
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`Opposer’s predecessor, Stephen Slesinger, entered into a 1930 Agreement with
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`A.A. Milne; the 1930 Agreement was assigned to Opposer shortly afterward.
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`0
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`Pursuant to the 1930 Agreement, as amended, Opposer obtained the sole and
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`exclusive rights to develop Milne’s literary works, including the Pooh characters, in commerce
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`as trademarks in connection with a wide variety of goods and services.
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`0
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`Opposer’s rights included the right to register trademarks in Opposer’s name, and
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`Opposer did make such registrations.
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`0
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`Opposer exercised its rights for over 30 years (before Applicant), creating and
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`developing nationwide goodwill for the Marks, which Applicant now uses.
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`Attorney Docket No.: 36309-406
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`0
`
`In 1961, Opposer licensed rights in the Pooh marks to Applicant; in a 1983
`
`Agreement, the 1961 Agreement was revoked and Opposer again licensed to Applicant rights in
`
`the Pooh marks. On their face, neither agreement assigns Opposer’s trademark ownership rights
`
`to Applicant.
`
`0
`
`Applicant has repeatedly admitted that it received a license —— not an assignment --
`
`from Opposer.
`
`(Id. at Exhibit 1-1 to 1-8 for examples, all Exhibits are herein incorporated by
`
`reference).
`
`0
`
`No assignment from Opposer to Applicant of Opposer’s trademark rights has ever
`
`been filed with the PTO.
`
`0
`
`No payment was made from Applicant to Opposer for transfer of ownership of the
`
`trademark rights.
`
`0
`
`In royalty statements regularly furnished by Applicant to Opposer relating to the
`
`Winnie—the—Pooh characters, Applicant consistently referred to Opposer as its “Licensor.” (See,
`
`e.g. Id. at Exhibits 1-8 (“Licensor: Stephen Slesinger, Inc.”)).
`
`0
`
`Applicant did not apply to register any Pooh—related trademarks with the PTO
`
`until the mid—1990s, after Opposer had commenced litigation against Applicant in California
`
`state court.
`
`For these reasons and others, the evidence shows that Opposer owns the trademark rights
`
`to the Pooh—related marks in the United States, and Applicant is the mere licensee not permitted
`
`under trademark law to apply for or register the consolidated marks.
`
`III. CONCLUSION
`
`Opposer has been waiting a very long time for the issue of ownership of these marks to
`
`be resolved. The Civil Action did not address the issue of whether the arrangement between the
`
`-13-
`
`

`
`Attorney Docket No.: 36309-406
`
`Application Serial No. 77/890766
`
`parties is a license or an assignment. It is now time for the Board to review the evidence and
`
`resolve this issue once and for all. The motion to dismiss should be denied such that the
`
`proceedings can move forward and the issue of ownership of these rights be determined.
`
`Respectfully submitted,
`
`By:
`
`/s Andrew D. Skale
`Andrew D. Skale
`
`Susan Neuberger Weller
`Mintz, Levin, Cohn, Ferris, Glovsky,
`and Popeo, P.C.
`3580 Carmel Mountain Road
`
`Ste 300
`
`San Diego, CA. 92130
`Tel: 858-314-1506
`
`Fax: 858-314-1501
`
`E-mail:adskale@mintz.com
`
`Attorneys for Opposer
`Stephen Slesinger, Inc.
`
`Dated: September 13, 2010
`
`-14-
`
`

`
`Exhibit A
`
`€$§§s.EE1.§ n“§EEuEKEn§§, ?és.. BK§E§§fiEEEF§»i§&WEE§«?u
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`
`

`
`
`
`_% :mu-u:«>.~.::aa=a;:==-m:m.us.wez~emnsua.-acmw.w;w-.1~a:wuy:x;gu14a:vnc:«x;:a«za;u;nmuyamwumuamwnau-.um:zsea::g=ausa.:a=a.v~zwe.so-<\v\:\u-9::-\n2»>o.av¢«;smmmn mmmu\nmnwm=wmmmw;.muwmmmm uamwq=w.ppw-mm»gmmqmwmmmwm”,%”
`
`‘
`
`

`
`Bt.1b.1hX E
`
`

`
`Page 1 of 14
`
`Westlaw Delivery Summary Report for WAGNER,BENJA1\/[IN
`
`Date/Time of Request:
`Client Identifier:
`Database:
`Citation Text:
`Lines:
`Documents:
`Images:
`
`Monday, September 13, 2010 18:19 Pacific
`09999-515
`FEDFIND
`430 F.3d 1036
`758
`1
`0
`
`The material accompanying this summary is subject to copyright. Usage is governed by contract with Thomson Reuters,
`West and their affiliates.
`
`http://web2.westlaw.com/print/jarintstream.aspx‘?sV=Sp1it&prft=I-ITMLE&mt=Inte1lectual...
`
`9/13/2010
`
`..;\.wa=.-<c=.s=_m«sunxgvgasl¢zr\i%6\\1:N‘;A:l;\:._fi.:;:v.awa2.1.:mw;s5&:zn.\'ziv:&un'n:ra=v::u=-In(w.n-«:\*Jnrxuwgxswenga;:.5osnmmz»;u:gmwama-s=«n=.=nwns=.x<u-v»u«w«we,u mm mmgmw¢mWwqWwmww.u,,,m,,_,........,.,.,,,,,,,,,,.,...._,..,
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`
`
`
`
`
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`mm-,var3rmuvx«7mnam;amu::mmm7znnmmwnw.wa:qmavmmawmmsxxcxwayawmmwzem-m=2:ssmu=umv:=iua-o«w»—ae~a1s:.-;sr.;\xmm
`
`

`
`5-.:>:.m:L\L:h\‘.’-\'-\')|'5Ok‘ib'Wv¥.\1'-\-‘-IJK5~TR1R9=~W33'M?B‘°9I'-"’R‘<¢3Fl”-1\|7Q€Bt1‘lEP«3'i-'$‘$*#3nb«cn}=saNs-.'1v1'»e\.\r<\nAIvs=1:=mr-is-q\:nI1\.'ru\\;&.2.Ism»‘A*c¢b«nu:twq rmar¢v,:=Mw2NmIvM ~Mwa\\)€V1Ifl)€(V\‘IV"\'ld’l')
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`
`'-E‘-‘¢‘~‘-W-Tn-‘Tl?-H149-‘-\H:-’<’-=7-4-w.::.-re-m:t:v.mwannvm:.mFuw.:.u:s=n::c--
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`i24
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`at
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`Page 2 of 14
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`_WéstiavxL
`
`Page I
`430 F.3d 1036, 2006 Copr.L.Dec. P 29,151, 77 U.S.P.Q.2d I281, 05 Cal. Daily Op. Serv. 10,335, 2005 Daily Journ-
`al D.A.R. 14,104
`(Cite as: 430 F.3d 1036)
`
`P‘
`
`170B Federal Courts
`
`United States Court of Appeals,
`Ninth Circuit.
`
`.
`
`Clare MILNE, by and through Michael Joseph
`COYNE, her receiver, Plaintiff-Appellant,
`v.
`
`STEPHEN SLESINGER, INC., Defendant—Ap-
`pellee.
`No. 04-57189.
`
`Argued and Submitted Sept. 13, 2005.
`Filed Dec. 8, 2005.
`
`Background: Heir of author of children's books
`brought action against assignee of license rights,
`seeking declaratory judgment
`that heir's notice of
`termination of licenses, as of end of copyright re-
`newal term, was valid. The United States District
`Court
`for
`the Central District of California,
`F1orence—Marie Cooper,
`J., 2003 WI. 21076983,
`entered judgment on the pleadings for assignee as
`to declaratory judgment claim, and heir appealed.
`
`Holdings: The Court of Appeals, Callahan, Circuit
`Judge, held that:
`(1) author's original grant of license rights was ter-
`minated upon execution of agreement,
`in 1983,
`between author's heirs and assignee that renegoti-
`ated parties’ rights;
`(2) agreement between heirs and assignee was not
`“agreement to the contrary,” within meaning of ter-
`mination provision of the Sonny Bono Copyright
`Term Extension Act (CTEA); and
`(3) heirs were not entitled to “moment of freedom”
`between period governed by author's original grant
`of license rights and their subsequent agreement
`with assignee.
`
`Affirmed.
`
`West I-Ieadnotes
`
`[1} Federal Courts 170B €37->776
`
`l70BVIII Courts of Appeals
`l70BVIII(K) Scope, Standards, and Extent
`l70BVIII(K)l In General
`l70Bk776 k. Trial De Novo. Most
`
`Cited Cases
`
`Court of Appeals reviews de novo an award of
`judgment on the pleadings.
`
`[2] Federal Civil Procedure 170A €53-71044
`
`170A Federal Civil Procedure
`
`1'/OAVII Pleadings and Motions
`l7OAVII(I_.) Judgment on the Pleadings
`170AVII(L)] In General
`l70AkI 044 k. Clear Right
`ment. Most Cited Cases
`
`to Judg-
`
`Federal Civil Procedure 170A €-791055
`
`170A Federal Civil Procedure
`
`17'0AVI[ Pleadings and Motions
`170AVII(L) Judgment on the Pleadings
`170AVII(L)1 In General
`170Ak1053 Determination of Motion
`l70Ak1055 k. Matters Deemed Ad-
`mitted. Most Cited Cases
`
`A judgment on the pleadings is properly granted
`when, taking all the allegations in the pleadings as
`true, the moving party is entitled to judgment as a
`matter of law.
`
`[3] Copyrights and Intellectual Property 99 €>»=>
`48
`
`99 Copyrights and Intellectual Property
`991 Copyrights
`991(5) Transfer
`99k48 k. Licenses in General. Most Cited
`
`Cases
`
`Author's original grant of license rights in copy-
`rights for children's books, in 1930, was terminated
`upon execution of agreement,
`in 1983, between an-
`thor's heirs and licensee's
`assignees, by which
`parties’
`rights were renegotiated, and thus 1983
`
`© 2010 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`http://web2.westlaW.com/print/printstream.aspX?sv=Split&prft=HTMLE&mt=Intellectual...
`
`9/13/2010
`
`

`
`Page 2
`430 F.3d’l036, 2006 Copr.L.Dec. P 29,151, 77 U.S.P.Q.2d 1281, 05 Cal. Daily Op. Serv. 10,335, 2005 Daily Journ-
`al D.A.R. 14,104
`(Cite as: 430 F.3d 1036)
`
`Page 3 of 14
`
`agreement was sole grant of rights in existence a