Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA166221
`ESTTA Tracking number:
`10/02/2007
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91179064
`Defendant
`Disney Enterprises, Inc.
`JEREMY KAUFMAN
`THE WALT DISNEY COMPANY
`500 S BUENA VISTA ST
`BURBANK, CA 91521-0006
`
`trademarks@disney.com
`Motion to Suspend for Civil Action
`Melanie Bradley - Attorney for Disney
`mbradley@omm.com
`/mbradley/
`10/02/2007
`Disney-Motion to suspend.PDF ( 5 pages )(140389 bytes )
`Disney-Exhibit A.PDF ( 5 pages )(180993 bytes )
`Disney-Exhibit B.PDF ( 4 pages )(145554 bytes )
`Disney-Exhibit C.PDF ( 2 pages )(68581 bytes )
`Disney-Exhibit D.PDF ( 157 pages )(13689798 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`_______________________________________________________X
`
`STEPHEN SLESENGER, INC.
`
`Opposer,
`
`V.
`
`DISNEY ENTERPRISES, INC,
`
`'
`
`:
`:
`'
`
`:
`Applicant.
`.....................................................--X
`
`Opposition No.
`Application Nos:
`
`91 179064
`78/807,797
`78/807,737
`78/807,736
`
`MOTION TO SUSPEND PROCEEDINGS PURSUANT TO 37 C.F.R. 2.117
`
`
`
`Applicant, Disney Enterprises, Inc., by and through its attorneys, O’l\/Ieiveny & Myers
`
`LLP, respectfully submits this motion for suspension of proceedings, pursuant to 37 CPR.
`
`§2.l £7 (a), pending the completion of the civil action between Disney and Stephen Slesinger, Inc.
`
`(“SS1”) before the Honorabie Florence-Marie Cooper, in the United States District Court for the
`
`Central District of California (Case no. CV—O2-08508 FMC), commenced on November 5, 2002.
`
`Pursuant to 37' C.F.R. §2.1 17 (a), “proceedings before the Board may be suspended until
`
`termination of the civil action” Whenever “it shali come to the attention of the Trademark Trial
`
`and Appeal Board that a party or parties to a pending case are engaged in a civil action. . which
`
`may have a bearing on the case.” See TMBP §510.02(a); General Motors Corp. v. Cadillac Club
`
`Fashions Inc, 22 U.S.P.Q.2d 1933 (TTAB 1992); Other Telephone Co. v. Connecticut National
`
`Telephone Co, 181 U.S.P.Q. 125 (TTAB 1974); Tokaido v. Honda Associates Inc., 179 U.S.P.Q.
`
`861 (TTAB1973); W?zopper~Burger, Inc. v. Burger King Corp, 171 U.S.P.Q. 805 (TTAB 1971).
`
`SS1, once again is attempting to litigate issues before the Board which already are the
`
`subject of pending litigation in the Central District of California.
`
`Just last year, SSE filed
`
`

`
`canceilation proceeding No. 92046853 against 25 of Disney’s trademark registrations which
`
`consisted of or contained names or characters associated with Winnie the Pooh (hereinafter the
`
`“Pooh Marks”), citing the same grounds as SS1 alleges in the instant Opposition. (Exhibit A).
`
`In response to SSI’s petition for cancellation, Disney flied a motion to suspend, explaining that
`
`the parties were engaged in civil litigation that had a bearing on the canceliation proceeding.
`
`(Exhibit B — Motion to Suspend without accompanying exhibits). After reviewing Disney’s
`
`submissions, the Board granted Disney’s motion and suspended the cancellation proceeding.
`
`(Exhibit C). Undeterred, SS1 now seeks to oppose three pending trademark applications for the
`
`mark “MY FRIENDS TIGGER & POOH.” For the Very same reasons that the Board suspended
`
`SSI’s cancellation proceeding, it should also suspend the instant opposition.
`
`SSI’s Opposition raises the same issues as the pending district court action. SS1 alleged
`
`in its Fourth Amended Answer and Counterciairns (“FAAC”) filed on October 6, 2006 in the
`
`Centrai District of California, that it is the “owner of rights in and to the Pooh trademarks”
`
`(Exhibit D 9,! 126), that any use of the Pooh Marks by Disney “has been pursuant to a license.” (id.
`
`ii 130) and that Pooh Marks previously registered by Disney rightfuliy belong to SS1 and should
`
`be ordered corrected to reflect SSI’s ownership (id. 1i137). Similarly, in its opposition papers,
`
`SS1 alleges that it “secured rights in the Winnie the Pooh characters,” including trademark rights
`
`(Opposition if 2), that Disney is only a licensee of SSI’s (id. ), and that Disney has not received
`
`SS1’s authorization to register any the Pooh Marks nor is Disney entitled to do so (id. 111} 4, 14).
`
`As the district court already has been asked to determine the respective rights of SSI and Disney
`
`to own, use and register the Pooh Marks, these claims clearly “have a hearing” on the instant
`
`opposition proceeding, 37 C.F.R. § 2.1l7(a).
`
`When there is such an overlap, as there is here, “it is deemed to be the better policy to
`
`

`
`suspend proceedings herein untii the civil suit has been finally concluded.” Tokaido, 179
`
`U.S.P.Q. at 861. This is because any decision by the district court “would be binding upon the
`
`Patent and Trademark Office” while “a decision by the Board would not be binding or res
`
`judicata as to the issues before the court.” Taro Co. v. Hardigg Indus, Inc, 187 U.S.P.Q.
`
`689,692 (TTAB 1975), rev ’d on other grounds, 549 F.2d 785, 193 U.S.P.Q. 149 (CCPA 1977).
`
`To prevent inconsistent or academic rulings (which most certainly would be the case in the
`
`instant opposition), suspension is appropriate even if “the trial in the federal court will take
`
`longer.” Whopperfiurger, I71 U.S.P.Q. at 807. As SS1 seeks to have the Board determine
`
`issues that squarely are before the court in the civil action, suspension is proper.
`
`Moreover, the trademark dispute is but a small part of extensive and interrelated litigation
`
`between SSI and Disney that dates back to 1991 and spans both federal and state proceedings in
`
`Los Angeles. As such, the parties stipulated last year to defer litigation of the trademark dispute
`
`until after resolution of SSI’s appeal of a judgment in favor of Disney and against SS1 in a
`
`related state court action, the finality of which judgment will have issue and claim preclusive
`
`effect on SSi’s trademark and other claims. The district court signed an order adopting the
`
`parties’ stipulation on October 23, 2006, and entered that order on its docket on October 25,
`
`2006. (Exhibit B). SSi’s filing of the ‘Opposition violates the parties’ stipulation and the court’s
`
`order that the trademark issues will be resolved at a later time in the district court action.
`
`

`
`For these reasons, Disney respectfuily requests that the Board grant this motion and
`
`suspend this opposition proceeding pending disposition of the district court action.
`
`Dated: October 2, 2007
`
`Respectfuity submitted,
`
`CYMELVENY & MYERS LLP
`
`
`
`Dale M. Cendali
`
`Dale M. Cendaii
`
`Daniel M. Petroeelii
`
`Melanie Bradley
`7 Times Square
`New York, New York 10022
`(212) 326-2000
`deendali@ornm.com
`mbrad1ey@ornm.com
`
`1999 Avenue ofthe Stars, Suite 700
`Les Angeies, California 90067
`(310) 553-6700
`dpetrocelii @onin1.com
`
`Attorneys for Respondent
`
`

`
`CERTIFICATE OF SERVICE
`
`1, Melanie Bradley, hereby certify that on October 2, 2007, I caused the Motion for
`
`Acceptance of Late-Filed Motion To Suspend in Lieu of an Answer and Motion to Suspend
`
`Pursuant to 37' C.F.R. §2.1 17 (a) to be served upon Opposer, by its counsel Andrew D. Skale, by
`
`personally delivering a true copy of the aforementioned document, enclosed in a properly
`
`addressed postpaid wrapper, via First Class naail to:
`
`Andrew D. Skale, Esq.
`Buchanan lngersoll & Rooney RC.
`P.O. Box 1404
`
`Alexandria, VA 223134.404
`
`
`
`

`
`u-‘I
`
` /V.
`
`TTAB
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`IN
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Canceilation No.
`
`: :
`
`STEPHEN SLESINGER, INCL,
`
`Petitioner,
`
`v.
`
`DISNEY ENTERPRISES, INC.,
`
`Respondent.
`
`.
`
`O ‘
`
`ll("/
`I) 9 8 Q‘ i
`:
`' 7 4/ 5 I 9 B’ 3 3
`
`PETITION FOR CANCELLATION
`
`Stephen Siesinger, Inc., ("Petitioner"), a New York corporation, located and doing
`
`business in the State of Florida, believes that it is being and will be damaged by the U.S.
`
`Registrations listed in Schedule A and hereby petitions to cause} the registrations, based on the
`
`following grounds:
`
`1.
`
`Upon information and beiief, Disney Enterprises, inc. ("Respondent"), is a
`
`Delaware corporation located and doing business at 500 South Buena Vista Street, Burbank,
`
`California 91521. Respondent is the owner of record of the U.S. Registrations listed in Schedule
`
`A for various marks pertaining to the animated character Winnie-the—Pooh and other characters
`
`that appear in stories featuring Winnie«the—Pooh ("the Registered Marks").
`
`2.
`
`Winniedthe-‘Pooh and his friends, and stories of their adventures, were the original
`
`creation of author AA. Milne, as shown in some of his works in the l920’s, including the hooks
`
`PF’hen We Were Very Young; Winnie-the-Pooh; Now We Are Six; and The House at Pooh Corner.
`
`3
`,_.____in_.i
`
`T1
`
`2-04-2006
`
`i}.S. Patent &?MOfcfTM Mail Flcot Di
`
`#22
`
`IEIOEKEODE GTRERRSE 00000111 1982915
`
`01 FC:540i
`02 FCs640i
`
`13900. 00 BP
`2400. 00 DP
`
`
`
`

`
`4)
`
`Attorney Docket No. 5701 1/03
`
`In 1930, Petitionefis predecessor, Mr. Stephen Siesinger, secured rights in the Winnie-the-Pooh
`
`characters directly from A.A. Milne in order that Petitioner could develop and popularize the
`
`characters outside of the books. Those secured rights inciuded trademark rights in the United
`
`States which Petitioner exercised for 30 years prior to licensing certain of those rights to
`
`Respondent in the 19605 and later, in a new 1983 agreement. Through the acquisition of those
`
`rights, Petitioner initiated and has been responsible for the development and popularization of the
`
`Winnie-the Pooh characters in the United States for over the past 75 years. For ali relevant
`
`periods, Petitioner has owned the rights in and to the Registered Marks. Respondent, since 1961,
`
`has been and is Petitioner’s licensee with respect to the Registered Marks.
`
`3.
`
`Petitioner has never consented to Respondent applying for or securing registration
`
`of the Registered Marks in Respondent’s name.
`
`COBNT I: FRAUD IN THE A?PLICATIONS
`
`4.
`
`In the applications that resulted in each of the Registered Marks, Respondent
`
`made filings that contained statements that Respondent “believes {Respondent} to be the owner
`
`of the mark sought to be registered” or equivalent allegations by Respondent as to ownership.
`
`5.
`
`Respondent was not the owner of the Registered Marks at the time that these
`
`filings were made. At those times, Respondent was, at most, only a licensee. As such,
`
`Respondent did not have any ownership rights in the Registered Marks.
`
`6.
`
`Upon information and belief, Respondent knew or should have known that it
`
`made false statements to the US. Patent and Trademark Office when Respondent alleged that it
`
`is the owner of the Registered Marks.
`
`

`
`Attorney Docket No. 5701 N03
`
`7.
`
`Upon information and belief, Respondent made the faise statements regarding
`
`ownership of the Registered Marks with the intent to procure registrations to which Respondent
`
`was not entitled, and Respondent was successful in procuring said registrations.
`
`COUNT II: LACK OF OWNERSHH’
`
`8.
`
`As a licensee of the Registered Marks, Respondent was not at any relevant time
`
`the owner of the Registered Marks.
`
`9.
`
`The registrations for the Registered Marks are therefore void pursuant to Section 3
`
`of the Trademark Act as the appiications were filed and prosecuted by an entity other than the
`
`owner ofthe subject trademarks.
`
`COUNT III: PRIOR RiGI-ITS
`
`10.
`
`Petitioner is the owner of the trademarks that are covered by the Registered
`
`Marks. As owner of the trademarks that are covered by the Registered Marks, an use of said
`
`marks, including uses thereof by licensee Respondent, has inured to the benefit of Petitioner.
`
`1 1.
`
`Petitioner has prior rights in the trademarks covered by the Registered Marks.
`
`Respondents continued registration and use of the Registered Marks on or in connection with
`
`the goods and services recited in said registrations is likeiy to cause confusion, or to cause
`
`mistake, or to deceive.
`
`

`
`DAMAGE AND RELIEF
`
`Attorney Docket No. S70l1i03
`
`12.
`
`Petitioner is and wilt continue to be damaged by the existence of the Registered
`
`Marks because the continued registration of these marks, to which Respondent is not entitled,
`
`impairs Petitioner’s ability to freeiy use and register Petitioner’s mark pursuant to Petitioncfs
`
`ownership rights. In addition, upon any termination of Respondent’s rights under license,
`
`Petitioner’s rights in and to the Registered Marks couid be impaired by Respondent’s continued
`
`registration of these marks.
`
`WHEREFORE, Petitioner prays that this Petition for Cancellation be granted, that
`
`Respondent's U.S. registrations in Schedule A be canceled, and for any and all other relief the
`
`Trademark Trial and Appeai Board may deem just and proper.
`
`The required fee is submitted herewith; please charge any additional fees that may be due
`
`in connection with the canceilation of the registrations identified in the attached Schedule A to
`
`our Deposit Account No. 02-4800.
`
`Respectfully submitted,
`
`STEPHEN ESINGER, INC.
`
` Date: November 30, 2006
`
` An ew D. Skale
`Fred W. Hathaway
`Attorneys for Petitioner
`BUCHANAN INGERSOLL & ROONEY P.C.
`P. O. Box 1404
`
`Alexandria, Virginia 223 I 3-1404
`Teiephone: 703«836~662O
`Facsimile: 703~836-202]
`
`

`
`Attorney Docket No. 570} 1/03
`
`SCHEDULE A
`
`Petition for Cancefiation - Registered Marks
`Stephen Slesfnger, Inc. V. Disney Enterprises, Inc.
`
`
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`I 07-25~06 i
`
`

`
`IN THE UNITED STATES PATENT AND 'FRAi)EMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
` STEPHEN SLESINGER, INC,
`
`Cancellation No. 92046353
`
`Petitioner,
`
`v.
`
`Reg. No.:
`2415566
`2421063
`2421066
`
`1982916
`2415567
`2421064
`2623099
`
`2257705
`2421062
`2421065
`2700618
`
`
`
`DISNEY ENTERPRISES, INC.,
`
`
`
`Respondent.
`
`27027275
`2303118
`3021643
`302428?
`3122189
`
`2704886
`2832514
`3021644
`30384913
`3} 75607
`
`2704888
`2978291
`3024286
`3101432
`
`MOTION TO SUSPEND PROCEEDINGS PURSUANT TO 37 C.F.R. § 2.117
`
`Respondent Disney Enterprises, Inc. (“Disney”), by and through its attorneys, 0’MeIveny
`
`& Myers LLP, respectfully submits this motion for suspension of proceedings pending the
`
`cornptetion of the civil action between Disney ané Stephen Slesinger, Inc. (“SS1”) before the
`Honorable Florence-Marie Cooper, in the United States Disuici Court for the Central District of
`
`California (Case No. CV-02-08508 FMC), commenced on November 5, 2002. Pursuant to 37
`
`C.F.R. § 2.} l7(a), “proceedings before the Board may be suspended "until termination of the civil
`
`action” whenever “it shall come to the attention of the Tradexnark Trial and Appeal Board that a
`
`party or parties to a pending case are engaged in a civil action or another Board proceeding
`
`which may have a bearing on the case.” See TMBP § 510.02(a); Gen. Motors Corp. v. Cadillac
`
`Club Fashions Im, 22 U.S.P.Q. 2d 1933 (TTAB 1992); Other Tel. Co. v. Connecticut Nat’! Tel.
`
`Ca, 131 U.S.P.Q. 325 (TTAB 1974); Tokaido v. Honda Assocs. Inc., 1279 U.S.P.Q. 861 (TTAB
`
`I973); W?zopper~Burger, Inc. 3:. Burger King Corp, 171 U.S.P.Q. 805 (TTAB 1971).
`
`

`
`SSI’s Petition for Cancellation raises the same issues and seeks effectively the some relief
`
`as the pending district court action. The l"etition alleges that SS} “has owned the rights in and to
`
`the Registered Marks" (Petition fl 2), that all use by Disney has been as “only a licensee" and
`
`thus “has inure-ti to the benefit of Petitioner” (id. ‘H 5, 10), and that any registrations belong to
`
`SSI(ic1’. 1115 2-3). For purposes of comparison, Disney submits as Exhibit A a copy of the Fourtli
`
`Amended Answer and Cotmterclaims (“FAAC”) filed by SS! against Disney on October 6, 2005
`
`in the Central lfiistrict of California In the FAAC, SS1 alleges to be “an owner of rights in and to
`
`the Pooh trademarks" (Exhibit A1 126), that “{a]1l use by Disney has been pursuant to a license”
`
`and thus “inures to the benefit of Siesinger” (id. 1111 I30, 137), and that “any registrations
`
`improperly obtained by Disney regarding the Siesinger Traclentark Rights belong to Slesinger."
`
`(Id 1t 13?.) Based on these claims, SS} asks the district court to order “the United States ?atent
`
`and Trademark Office to correct the title of any such trademark registrations to Slesinger." (Id)
`
`In other words, the claims in the civil action not only “have a bearing” on the claims in the
`
`instant cancellation proceeding, 37 C.F.R. § 2.117(a), they are wholly duplicative of it.
`
`Furthermore, because the trademark dispute is but a small part of extensive and
`
`interrelated litigation between SS1 and Disney that dates back to 1991 and spans both federal and
`
`state proceedings in Los Angeles, the parties stipulated last year to defer litigation of the
`
`trademark dispute. On October 19, 2906, recogrizing that the trademark issues are intertwined
`
`with and dependent on the resolution of contract interpretation, copyright license, and other
`
`issues currently being litigated, the parties entered into a stipulation that the trademark issues
`
`will be resolved in a subsequent phase of the pending district court case, after conclusion of both
`
`(1) a “Phase 1” bench trial on copyright termination issues directly affecting SSI’s rights to the
`
`Pooh Works, currently scheduled for April 17, 200?, and (2) SSI‘s appeal of a judgment in favor
`
`

`
`of Disney and against SS! in a related California state court action, the finality of which
`
`judgment will have issue and claim preclusive effect on SSl’s trademark and other claims. The
`
`district court signed an order adopting the parties’ stipuiation on October 23, 2806, and entered
`
`that order on its docket on October 25, 2006. {Exhibit B.)
`
`Thereafier, and foilowing a change of counsel, SS1 applied to the district court to vacate
`
`the stipulation and order. SSI contended that, contrary to the stipulation and order, it now
`
`wished to immediately bring its trademark and other claims in the form of a separate federal
`
`action to be heard by the some districrjudge presiding over the pending action. {SS} will “file
`
`the remaining claims (e.g., trademark infringement ...) in a separate action, in the Central
`
`District of California, if it is assigned to Judge Cooper.” (Exhibit C at 3126-28).) On November
`
`3, 2006, the district court denied SSI’s application, leaving in full force and effect the stipulation
`
`and order deferring litigation of SSI’s trademark and other claims. (Exhibit 1).)
`
`Eleven days later, despite the district court’s order, SS1 orally informed Disney of its
`
`intention to initiate a trademark cancellation proceeding before this Board. Disney imruediateiy
`
`objected in writing that such a proceeding would violate the parties’ stipulation and the district
`
`eourt’s order. (Exhibit E.) SSI did not respond to Disney’s objection. Instead, two weeks later,
`
`SSI filed this Petition, although Disney did not receive or learn of it until January 23, 2007.
`
`Given these facts, suspension of the instant eanoeilation proceeding is appropriate for at
`
`least two reasons. First, the Petition raises issues that are already embraced in the pending civil
`
`action. When there is such an overlap, “it is deemed to be the better policy to suspend
`
`proceedings herein until the civil suit has been finally concluded.” Takaido, [79 Ll.S.P.Q. at 851.
`
`This is because any decision by the district court “would be binding upon the Patent and
`
`

`
`Trademark Office” while “a decision by the Board would not be binding or res judicata as to the
`
`issues before the court.” Taro Co. v. Hardigg Iradus, l’nc., 187 U.S.P.Q. 689, 692 (TTAB 1975),
`
`rev ’:2’ on other grounds, 549 F.2d 785, I93 U.S.P.Q. 149 (CCPA 1977). To prevent inconsistent
`
`or academic rulings, suspension is the appropriate action even if “the trial in the federal court
`
`wili take Eonger.” Whopper-Burger,'l7l U.S.P.Q. at 807.
`
`Second, SSI’s filing ofthe Petition violates the parties’ stipulation and the court’s order
`
`that the trademark issues wii} be resolved at a later time in the district court action. To the extent
`
`SS1 argues otherwise or urges reconsideration of the stipuiation and order, we submit Judge
`
`Cooper is in the best position to interpret and to assess her own order. Pursuant to Locai Rule
`
`83-1.4.1 of the Central District of California, Disney is concurrently notifying iudge Cooper of
`
`the pendency ofthis proceeding and the filing ofthis motion.
`
`For all of these reasons, Disney respectfuily requests that the Board grant this motion and
`
`suspend this cancellation proceeding pending disposition of the district court action.
`
`Dated: February 2, 2007
`
`Respectfully submitted,
`
`CPMELVENY & MYERS LLP
`
`By: r &tLfi%A
`
`Bale M. Cendali
`
`Dale M. Cendali
`
`Daniel M. Petroceiii
`
`‘
`
`Melanie Bradley
`7 Times Square
`New York, New York 10022
`(212) 326-2000
`dcendaii@orr.un.co1n
`mbraclley@omm.con1
`
`1999 Avenue of the Stars, Suite 700
`Los Angeles, Caiiforoia 9096’?
`(310) 553-6700
`dpctrocelii@omrn.com
`
`Attorneys for Respondent
`
`

`
`5
`
`UNYYED STATES PATENT ANC TRADEMARK OFFICE
`Trademark Trial and Appeai Board
`P.O. BOX 1451
`Alexandria, VA 22313-1451
`
`FEW/kk
`
`Mailed:
`
`February 27, 2007
`
`Cancellation No. 92046853
`
`STEPHEN SLESINGER,
`
`INC.
`
`v.
`
`DISNEY ENTERPRISES,
`
`INC.
`
`Frances S. Wolfson, Interlocutory Attorney:
`
`On February 2, 2087,
`
`respondent filed a motion to
`
`suspend proceedings pending the outcome of a civil action
`
`between the partiee.l Petitioner has filed a response to
`
`the motion.
`
`Whenever it comes to the attention of the Board that
`
`the parties to a case pending before it are involved in a
`
`civil action, proceedings before the Board may be suspended
`
`until final determination of the civil action.
`
`See
`
`Trademark Rule 2.117(a); and General Motors Corp. V.
`
`Cadillac Cflub Fashions Inc., 22 USPQ2d 1933 (TTAB 1992).
`
`Suspension of a Board case is appropriate even if the civil
`
`case may not be dispoeitive of the Board case,
`
`so long as
`
`the ruling may have a bearing on the rights of the parties
`
`1‘ Case No. CV-O2-08508 E’-‘MC, pending before the U.S. District Court for
`the Central District of California.
`
`

`
`in the Board case.
`
`See Martin Beverage Co. V. Colita
`
`Beverage Corp., 169 USPQ 568, 570 (TTAB 1971).
`
`After careful review of the record,
`
`including
`
`petitioner’s “Fourth Amended Answer and Counterclaims”
`
`(filed by petitioner as defendant in the civil suit), it is
`
`determined that suspension is appropriate. Petitioner seeks
`
`a “declaration” from the Court to “correct the title" to any
`
`registrations that it believes respondent has obtained
`
`improperiy.
`
`inasmuch as petitioner believes respondent
`
`obtained the registrations that are the subject of this
`
`Board proceeding improperly,
`
`the final disposition of
`
`petitioner's request for such declaration from the Court is
`
`likely to have a bearing on the Board proceeding. Moreover,
`
`a decision of a federal district court is binding upon the
`
`parties in a Board proceeding, whereas a decision of the
`
`Board is not binding.
`
`The non—prevailing party in a Board
`
`proceeding may then bring a civil action in a district court
`
`pursuant to 15 U.S.C.
`
`§ 107l{b), and receive a trial de novo
`
`on the exact same issue decided by the Board.
`
`See,
`
`tor
`
`example, Goya Foods Inc. V. Tropicana Products Inc., 846
`
`F.2d 848,
`
`6 USPQ2d l95O (2d Cir. 1988); and American
`
`Bakeries Co. V. Pan—O—Go1d Baking Co., 650 F. Supp. 563,
`
`2
`
`USPQ2d 1208 (D. Minn. 1986).
`
`

`
`JOSEPH W. COTCPETT (#3 6324)
`NANCY L. FINEMAN ($124870
`ON (#4g367)
`COTC%TT PITRE, SIMOé& MCCARTHY
`
`ROBERT B. HUTCHIN
`PPHLIP L. GREGORY #9521
`7
`DOUGLAS Y. PARK ( 23339
`
`340 Maicolrn Road, Sulte 200
`Burlingame, CA 94010
`Telephone: (650) 697-6000
`
`Attorne s for Defendant and Counter-Claimant
`STEP
`N SLESINGER, INC.
`
`[PROPOSED]
`
`UNITED STATES DISTRICT COURT
`
`FOR Tfi CENTRAL DISTRICT OF CALIFORNIA
`
`) Case No. CV~02-08508 FMC (PLA.x'.)
`
`"‘
`
`DEFENDANT AND COUNTER-
`CLAIMANT STEPHEN SLESENGER,
`INC.’S FOURTH ALIENDED ANSWER
`AND COUNTERCLAIMS
`
`.
`
`RRJGEMENT 01:
`
`TED STATES C0%IYCR?O %R THE
`1
`2. TRADEMARK INFRINGEIVIEN1‘
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`3. TRADE DRESS INFRINGEMENT
`
`) ) ) ) 3
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`§
`3
`
`) )
`
`7. DE
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`T
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`REL
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`.
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`3. DECLARATORY RELIEF RE
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`4. BREACH OF CONTRACT
`5. BREACH 01: [RELIED COVEN
`)
`or GOOD FAETH AND FAIR Dfigirme
`)
`6. FRAUD
`g
`TrE‘“19‘§3‘ A‘c?&1vm~JI§fF RE
`;
`§ RERRRRSRE
`) 9. ?qE‘§3LAI%ATO(I§Y RELIEF RE
`)
`RE\f%IRSI0 AOREIIEENENT
`;
`I0. INHJNCTIVE RELIEF
`3
`’ 1'
`€ E0%E 5§‘fi1E1¥:§~E
`)
`TERNIINATI N NOTICE
`
`12. VIOLATION OF CALIFORNIA BUSiNESS
`%R£§%%%%%%“”““W-
`
`JURY TRIAL DEMANDED
`
`CLARE MENE, an individual,
`béand threu 11 MICHAEL _
`J SEPH COJSNE her Receiver,
`and DISNEY ENTERPRISES,
`INC.
`_
`
`Rlainfifis,
`
`v.
`
`STEPHEN SLESINGER, INC.
`
`Defendant.
`
`STEPHEN SLESINGER, INC.,
`Counter—Claimant,
`
`v.
`
`DISNEY ENTERPRISES, INC;
`THE WALT DISNEY
`COMPANY; and WALT
`DISNEY PRODUCTIONS
`
`Counter-Defendants.
`
`I2
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`13
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`14
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`15
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`_ 17
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`18
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`19
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`20
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`DJout
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`23
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`24
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`26
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`2'?
`
`LAW OFFICES
`
`CDTCHETT,
`‘ms, SIMON &
`MCCAMHY
`
`
`
`
`
`STEPHEN SLESINGER, [NC.’S FOURTH AMENDED ANSWER AND COUNTERCLAIMS
`. Miine, et at v. Srephen Slesinger, Inc, Case No. CV-02-88508 FMC (PLAI)
`
`

`
`TABLE OF CONTENTS
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`Page No.
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`ANSWER ...................................................... .
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`COUNTERCLAEVIS .
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`I.
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`I1.
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`INTRODUCTION .
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`JURISDICTION AND VENUE .
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`27
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`23
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`3
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`c‘3¥§§£?‘¥,
`?I;\f4R§&,S.§£§&
`
`
`STEPHEN SLESINGER. INCBS FOURTH AMENDED ANSWER AND COUNTERCLAIMS
`Iifilne, at at v. Szephen Slesinger, Inc., Case No. CV—B2—085G8 FMC (FLA!)
`
`i
`
`24
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`2,
`°
`26
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`V.
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`CLAIMS FOR RELIEP .
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`PRAYERFORRELIEF
`JURY DEMAND .
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`. .; ....... ..47
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`. 52
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`III.
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`THE PARTIES .
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`IV.
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`FACTUAL BACKGROUND .- ........................... . .12
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`A. Tm POOH FAMILY OF CHARACTERS ARE BORN .
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`BACKGROUND ON STEPHEN SLESINGER .
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`. 1,3
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`10
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`11
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`12
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`14
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`15
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`16
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`7
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`I
`Is
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`19
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`20
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`2:
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`22
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`23
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`E.
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`C.
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`D.
`E.
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`F.
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`G.
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`H.
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`I.
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`J.
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`K.
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`INITIAL AGREEMENTS BETWEEN MILNE AND
`SLESINGER .................................... .
`. 14
`STEPHEN SLESTNGER POPULARIZES POOPI ........ 16
`SHIRLEY SLESINGER LASSWELL CONTINUES TO
`DEVELOP T"_l_-[E POOH FAMILY OF CHARACTERS .
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`. 17
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`SLESTNGER ANDDISNEY: THE I961 AGREEMENT. .
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`. 18
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`UNDERPAYMENTS BY DISNEY ARE EXPOSED AND
`THE PARTIES ENTER INTO THE I933 AGREEMENT .. 21
`I
`_
`DESPITE ITS PROMISES AND AGREEMENTS DISNEY
`CONTINUES TO UNDERPAY SLESINGER AFTER THE
`1983 AGREEMENT .............................. .
`
`. 2A
`
`DISNEY IMPROPERLY USES THE COPYRIGHT ACT TO
`ATTEMPT TO CUT OFF SLESINGER’S RIGHTS .
`.
`.
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`. 25
`
`Tm POOH ERAND IS CRITICAL TO DISNEY’S
`BUSINESS ..................................... .
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`. 23
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`DISN.EY’S IMPROPER ROYALTY STATEMENTS .
`.
`'
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`. 30
`
`A......... .
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`. 3:
`
`

`
`
`
`Defendant Stephen Slesinger, Inc., by its attorneys, answers the First
`
`2 Amended Complaint as follows:
`
`l-3. Defendant admits that plaintiffs purport to assert that this Court has
`
`4.
`
`Defendant denies having sufficient knowledge or information to form
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`5.
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`Defendant denies having sufficient: knowledge or information to form
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`same.
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`6.
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`Defendant denies the allegations contained in paragaph 6 to the
`
`18 Florida, that much of its revenues are derived from payments made to it by
`19 Disney«reIated entities pursuant to an agreement dated April 1, 1983, in which it
`20
`licensed to Walt Disney Productions certain rights it obtained from the trustees of
`
`
`
`21 Pooh Properties Trust, also on April 1, 1983 (the "1983 Agreement").
`8.
`Because the allegationseontained in paragraph 8 are conclusions of
`law that require neither an admission nor a denial, defendant respectfully refers the
`23
`24 Court to the statute and authorities interpreting the same for the meaning thereof.
`25
`9.
`Because the allegations contained in paragraph 9 are conclusions of
`26
`law that require neither an admission nor a denial, defendant respectfiilly refers the
`27 Court to the statute and authorities interpreting the same for the meaning thereof.
`
`9
`LAWOFFICES
`
`28
`
`Corcnsrr,
`rms, SIMON &
`]pjcC,1_Rj};*{
`
`
`
`STEPHEN SLESINGER, INCJS FOURTH AMENDED ANSCWER AND COUNTERCLAIMS
`Milne, er al. 1:. Stephen Slesinger, Inc., Case No. CV-02418508 FMC (PLA.X}
`
`I
`
`
`
`

`
`10. Defendant denies the allegations contained in paragraph I0 but admits
`
`11. Defendant denies having sufficient knowledge or information to form
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`12. Defendant admits the allegations contained in paragraph 12.
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`13. Defendant denies having sufficient knowiedge or information to form
`
`same.
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`14. Defendant denies the allegations contained in paragraph 14 except
`
`12
`
`admits that in January 1930 A. A. Milne and defendant's predecessor, Stephen
`
`13 Slesinger, entered into a Memorandum of Agreement (the " 3930 Grant"), which
`14 memorandum speaks for itself, and defendant respectfiilly refers the Court thereto
`15
`for the contents thereof and finther admits the allegation contained in the last
`16
`sentence of paragraph 14.
`
`17
`
`18
`19
`
`20
`
`21
`
`22
`
`23
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`
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`15. Defendant denies having sufficient knowledge or information to form
`
`a belief as to the allegations contained in paragaph 15 and therefore denies the
`same.
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`16. Defendant admits that it entered into an agreementin 1961 with Walt
`
`Disney Productions (the "1961 Slesinger Disney Agreement") and further admits
`that Walt Disney Productions entered into an agreement in l961 with the
`
`executors of the Milne estate and with Daphne Milne in her individual capacity,
`
`24 which agreements speak for themselves, and defendant respectfully refers the
`
`25 Court to the contents thereof and otherwise denies the allegations contained in
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`26 paragraph 16.
`
`LAW OFHCE9
`
`Corcnnrr,
`PURE, Sadon &
`MCCARTHY
`
`27
`
`28
`
`
`
`17. Defendant denies the allegations contained in paragaph 17 except
`
`admits that in 1983 it entered into a new agreement with Walt Disney Productions,
`
`STEPHEN SLESINGER, [NC.’S FOURTH AMENDED ANSWER AND COUNTERCLAIMS
`Milne, et al. v. Stephen Slesinger, Inc., Case No. CV-02 -08508 FMC (PLAx)
`
`2
`
`

`
`
`
`Slesinger, Christopher Milne - plaintiff Clare Milne's father - and the Pooh
`
`2 Properties Trust in which, inter alia, the 1930 Grant by A. A. Milne to defendant's
`
`3 predecessor, and all arnendrnents thereto, were revoked and a new grant of rights
`
`4 was made to defendant and further admits that in 1983 Walt Disney Productions
`
`5
`
`andthe Pooh Properties Trustees entered into an agreement.
`
`18. Defendant denies having sufficient knowledge or information to form
`
`7
`
`8
`
`9
`
`a belief as to the allegations of paragraph 18 and therefore denies the same except
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`asserts that the Termination Notices purportedly served by plaintiff Clare Milne
`
`and Harriet Jessie Minette Hunt (the "Termination Notices") speak for themselves,
`
`10
`
`and respectfully refers the Court thereto for the contents thereof.
`
`‘.
`
`19. Defendant denies having sufiicient knowledge or information to form
`
`a belief as to the allegations contained in paragraph 19 and therefore denies the
`
`33.2116.
`
`20. Defendant incorporates herein by reference all of the allegations and
`
`averments contained in paragraphs 1 through 19 of this Answer.
`
`2}. Defendant denies having snfficient knowledge or information to form
`a belief as to the allegations contained in paragraph 21 and therefore denies the
`
`same.
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`22. Defendant denies the allegations contained in paragraph 22.
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`23. Defendant admits the allegations contained in paragraph 23.
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`24. Defendantdenies the allegations contained in paragraph 24 except
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`admits that Milne alleges that Milne seeks a declaration that the Milne
`
`12
`
`13
`
`14
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`15
`
`16
`17
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`18
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`19
`
`20
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`21
`
`:2
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`2.3 Termination Notice is valid.
`
`24
`
`25. Defendant incorporates herein by reference all of the allegations and
`
`
`
`25
`
`26
`
`27
`
`28
`
`9
`LAW OFFICES
`
`Corcaz-tn”,
`Pnrez, SIMON &
`MCC.aR'fi-IY
`
`averments contained in paragraphs 1 through 24 of this Answer.
`
`26. Defendant denies having sufficient knowledge or information to form
`
`a belief as to the allegations contained in paragraph 26 and therefore denies the
`
`same.
`
`
`
`STEPHEN SLESINGER, INCJS FOURTH AMENDED ANSWER AND COUNTERCLAIMS
`rhfilne, et at. v. Stephen Slesinger, Inc, Case No. CV-02-08508 FMC (PLAX)
`
`3
`
`

`
`27. Defendant admits the allegations contained in paragrap