ESTTA Tracking number:
`
`Filing date:
`
`Proceeding.
`Applicant
`
`Other Party
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA212486
`05/19/2008
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91183644
`Defendant
`Disney Enterprises, Inc.
`Plaintiff
`Stephen Slesigner, Inc.
`
`Motion for Suspension in View of Civil Proceeding With Consent
`
`The parties are engaged in a civil action which may have a bearing on this proceeding. Accordingly, Disney
`Enterprises, Inc. hereby requests suspension of this proceeding pending a final determination of the civil
`action. Trademark Rule 2.117.
`Disney Enterprises, Inc. has secured the express consent of all other parties to this proceeding for the
`suspension and resetting of dates requested herein.
`Disney Enterprises, Inc. has provided an e-mail address herewith for itself and for the opposing party so that
`any order on this motion may be issued electronically by the Board.
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`Respectfully submitted,
`/Melanie Bradley/
`Melanie Bradley
`mbradley@omm.com
`adskale@mintz.com, sckalamaras@mintz.com
`05/19/2008
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`..................................................__x
`
`STEPHEN SLESINGER, INC.
`
`Opposer,
`
`v.
`
`DISNEY ENTERPRISES, INC.,
`
`‘
`
`:
`:
`:
`:
`°
`
`Applicant.
`_--___--------_---_-_---_-__-_---_-__-__-_--_---__.--x
`
`Opposition No.
`Application Nos.:
`
`91 183644
`77/130,188
`77/106,448
`77/106,287
`77/106,429
`77/ 106,420
`
`MOTION TO SUSPEND PROCEEDINGS PURSUANT TO 37 C.F.R. §2.117
`
`Applicant, Disney Enterprises, Inc. (“Disney”), by and through its attorneys, O’Melveny
`
`& Myers LLP, respectfully submits this motion for suspension of proceedings, pursuant to 37
`
`C.F.R. §2.117 (a), pending the completion of the civil action between Disney and Stephen
`
`Slesinger, Inc. (“SS1”) before the Honorable 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.l 17 (a), “proceedings before the Board may be
`
`suspended until termination of the civil action” whenever “it shall come to the attention of the
`
`Trademarlc 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 §5l0.02(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); Whopper~Burger, Inc. v. Burger King Corp,
`
`171 U.S.P.Q. 305 (TTAB 1971).
`
`

`
`As SSI’s own opposition papers indicate, this is the fourth proceeding that it has initiated
`
`before this Board in an effort to bypass the parties’ pending action in the Central District of
`
`California. (Opposition ‘IN 5-6). In 2006, SSI filed a Cancellation proceeding against 25 of
`
`Disney’s trademark registrations that consisted of or contained names or characters associated
`
`with Winnie the Pooh (hereinafter the “Pooh Marks"), citing the same grounds as SSI alleges in
`
`the instant Opposition. (Exhibit A).
`
`In response, Disney filed a motion to suspend, explaining
`
`that the parties were engaged in civil litigation that had a bearing on the requested Cancellation
`
`proceeding. (Exhibit B (without accompanying Exhibits) and Exhibit C). Specifically, Disney
`
`advised the Board that SSI’s claimed ownership of the Pooh Marks was at issue in the federal
`
`civil action and that SSI itself had sought an order requiring that Disney's existing registrations
`
`for the Pooh Marks be “corrected” to reflect SSI’s ownership. On February 27, 2007, the Board
`
`granted Disney’s motion and suspended SSI’s cancellation proceeding. (Exhibit D).
`
`SSI next filed opposition No. 91 179064 to three pending Disney trademark applications
`
`for the mark “MY FRIENDS TIGGER & POOH,” raising issues identical to those raised in the
`
`first proceeding. (Exhibit E and A). Disney filed a motion to suspend the second proceeding
`
`and on March 5, 2008, the Board granted that motion. (Exhibit F). SSI also filed opposition No.
`
`91182358 to yet another two of Disney’s pending applications for the mark “MY FRIENDS
`
`TIGGER & POOH.” (Exhibit G). As with the prior proceedings, Disney moved to suspend this
`
`third proceeding. (Exhibit H). SSI did not oppose Disney’s motion to suspend, presumably in
`
`recognition that suspension of TTAB proceedings involving the Pooh Marks pending outcome of
`
`the civil action is appropriate. (See Exhibit I). As a result, on March 28, 2008, the Board
`
`granted Disney’s unopposed motion to suspend. (Exhibit J)
`
`

`
`Now before the Board is yet a fourth proceeding involving Pooh Marks. As with the
`
`previous proceedings, Disney respectfully submits that the Board should suspend the instant
`
`proceeding pending the outcome of the Central District of California litigation because it raises
`
`the same issues as that action. As the Board already has recognized, SSI’s October 6, 2006
`
`Fourth Amended Answer and Counterclaims (“FAAC”) alleges that SSI is the “owner of rights
`
`in and to the Pooh trademarks” (Exhibit B 1]" 126), that any use of the Pooh Marks by Disney “has
`
`been pursuant to a license” (id. 1] 130), and that the Pooh Marks previously registered by Disney
`
`rightfully belong to SSI and should be ordered corrected to reflect SSI’s ownership (id. 1[1'37).
`
`Similarly, this fourth proceeding again alleges that SSI “secured rights in the Winnie the Pooh
`
`characters,” including trademark rights (Opposition 1] 2), that Disney is only a licensee of SSI’s
`
`(id.), and that Disney has not received SSI’s authorization to register any of the Pooh Marks nor
`
`is Disney entitled to do so (id. 111] 4, 15). As the Board previously held, because the federal civil
`
`court already has been asked to determine the respective rights of SSI and Disney to own, use
`
`and register the Pooh Marks, those claims “have a bearing” on the instant opposition proceeding,
`
`37 C.F.R. § 2.1 17(a).
`
`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.” Tokrzido, 179 U.S.P.Q. at 861.
`
`This is because any decision by the federal civil 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.” Tora Co. v. Hardigg Indus, Inc., 187 U.S.P.Q. 689,692 (TTAB l975),
`
`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 here), suspension is appropriate
`
`even if “the trial in the federal court will take longer.” Whopper-Burger, 171 U.S.P.Q. at 807.
`
`

`
`As SSI seeks to have the Board determine issues squarely before the federal civil court,
`
`suspension is, yet again, proper.
`
`As Disney previously advised the Board, the federal civil litigation remains pending. At
`
`a March 3, 2008 status conference in that matter, SSI’s counsel specifically reconfirmed that SSI
`
`intends to pursue its trademark claims in the federal civil action. (Exhibit K, Reporter’s
`
`Transcript at 7:14). The district court is set to hear a summary judgment motion by Disney
`
`addressing each of SSI's claims, including the trademark claims, in June 2008.
`
`For these reasons, Disney respectfully requests that the Board yet again grant Disney’s
`
`motion and suspend pending disposition ofthe federal civil action.
`
`Dated: May V2, 2008
`
`Respectfully submitted,
`
`O’MELVENY & MYERS LLP
`
`By:
`
`Melanie Bradley
`
`Dale M. Cendali
`Melanie Bradley
`7 Times Square
`New York, New York 10022
`(212) 326-2000
`dcendali@omrn.com
`mbradley@omm.com
`
`Daniel M. Petrocelli
`1999 Avenue of the Stars, Suite 700
`Los Angeles, California 90067
`(310) 553-6700
`dpetrocelli @omm.com
`
`Attorneys for Respondent
`
`

`
`CERTIFICATE OF SERVICE
`
`I, Melanie Bradley, hereby certify that on May 16, 2008, I caused the Motion to
`
`Suspend Pursuant to 37 C.F.R. §2.1l7 (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 mail to:
`
`I
`
`Andrew D. Skale, Esq.
`Mintz Levin Cohn Ferris Glovksy and Popeo, PC
`5355 Mira Sorrento Place - Suite 600
`
`San Diego, CA 92121-3039
`
` Melanie Bradle
`
`

`
`Exhibit A
`
`

`
`BEFORE THE TRADEMARK TRIALAND APPEAL BOARD
`
`STEPHEN SLESINGER. INC-.
`
`Petitioner,
`
`V.
`
`DISNEY ENTERPRISES, INC.,
`
`:
`
`Cancellation No.
`
`Respondent.
`
`E ’;q89~oq/G/
`; 7 4/5 1 9 33 3
`
`PETITION FOR CANQ_EJ,;LA I ION
`
`Stephen Slesinger, lne., ("Petitioner"), aNew 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 cancel the nagisu-ations, based on the
`
`following grounds:
`
`
`
`1.
`
`Upon information and belief, Disney Enterprises, Inc. ("Respondent"), is a
`
`Delaware corporation located and doing business at 500 South Buena Vista Street, Bin-bank,
`
`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.
`
`Winnie-the-Pooh and his friends. and stories of their adventures, were the original
`
`creation ofauthor AA. Milne, as shown in some of his works in the 1920's, including the books ‘
`
`When We Were Very Young; Winnie-the—Paah; Now We Are Six; and The House aI‘Poah Corner.
`
`IEIDGIEDDS BTMMSE 60090111 1952915
`
`01 E85401
`GE FC:$40l
`
`124100.00 W
`24013.00 RP
`
`12404-2005
`
`U.S. Patent 3 Tl':|0fuJTM Mail Rep!
`
`
`

`
`Attorney Doclcet No. 57011103
`
`In 1930. Petitioner's predecessor. Mr. Stephen Slesingw, secured rights in the Winnie-the-Pooh
`
`characters directly from AA. Milne in order that Petitioner could develop and popularize the
`
`characters outside of the hooks. Those secured rights included 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 anew 1933 agreement. Throughthe acquisition ofthose
`
`rights, Petitioner initiated and has been responsible for the development and popularintlon of the
`
`Winnie-the Pooh characters in the United States for over the past 75 years. For all relevant
`
`periods, Petitioner has owned the rights in and to the Registered Marks. Respondent, since I961,
`
`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 narne.
`
`C UNT I:
`
`N
`
`Al’ L CATIO S
`
`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.
`
`Respondentwas notthe ownerofthellegistercd Marks atthetirne thetthese
`
`filings were made. At these 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 smternents to the U.S. Patent and Trademark Offiee when Respondent ellegul that it
`
`is the owner of the Registered Marks.
`
`
`
`

`
`Attorney Docket No. 570l1f03
`
`7.
`
`Upon information and belief, Rmpondent made the false statements regarding
`
`ownership ofthe Registered Marks with the intent to procure registrations to which Respondent
`
`was not entitled, and Respondent was successful in procuring said registrations.
`
`C
`
`1]: LA K OF
`
`RSH
`
`8.
`
`As a licensee ofthe Registered Marks, Respondent was not at any relevant time
`
`the owner of the Registered Marks.
`
`9.
`
`The registratiom for the Registered Marks are therefore void pursuant to Section 1
`
`of the Trademark Act as the applications were filed and prosecuted by an entity other than the
`
`owner of the subject trademarks.
`
`COUN'I' III; PRIQR BLGHTS
`
`10.
`
`Petitioner is the owner of the trademarks that are covered by the Registered
`
`Marks. As owner ofthe trademarks that are covered by the Registered Marks, all use of said
`
`marks, including uses thereof by licensee Respondent, has ‘toured to the benefit of Petitioner.
`
`11.
`
`Petitioner has prior rights in the trademarks covered by the Registered Marks.
`
`Respondenfs continued registration and use ofthe Registered Marks on or in connection with
`
`the goods and services recited in said registrations is likely to cause eonfizsion, or to cause
`
`mistake. or to deceive.
`
`

`
`Attorney Docket No. 5701 1/03 -
`
`DAMAQE 5,139 gag!
`
`12.
`
`Petitioner is and will 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 Petitiorter’s ability to freely use and register Petitioner's mark pursuant to Petitioner's
`
`ownership rights. in addition, upon any termination of Respondent's rights under license,
`
`Petitioner's rights in and to the Registered Marks could be impaired by Respondent's continued
`
`registration ofthese marks.
`
`WI-IEREFORE, Petitioner prays that this Petition for Cancellation be planted, that
`
`Respondent's U.S. registrations in Schedule A be canceled, and for any and all other relief the
`
`Trademark Trial and Appeal 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 cancellation of the reystrations identified in the attached Schedule A to
`
`our Deposit Account No. 02-4800.
`
`Date: November 30, 2006
`
`Respectfully submitted,
`
`STEPHEN ESINGER, INC.
`
`
`
` An
`D. Skale
`Fred W. Hathaway
`Attomeys for Petitioner
`BUCHANAN INGBRSOLL & RODNEY P.C.
`P. 0. Box 1404
`
`Alexandria. Virginia 22313-1404
`Telephone: 703-836-6620
`Facsimile: 703-836-2021
`
`
`
`

`
`Attorney Docket No. 57011103 _
`
`SCHEDULE A
`
`Petition for Cancellation - Registered Marks
`Stephen Slesinger, Inc. 9. Disney Enterprises, Inc.
`
`
`'
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`
`
`
`
`a
`‘ DAYS OF HUNNY
`" POOH
`
`
`
`;
`
`
`
`

`
`Exhibit B
`
`

`
`
`
`2 ‘
`« ROBERT B.'HUT
`
`E1 ;
`JOSEPH W. COTCHETT (#36324)
`1 NANCY L. FINEMAN “#124870
`7
`ON (#42357)
`: PHILIP L. GREGORY #9s21§
`3 I
`DOUGLAS Y. PARI(( 23339
`' CDTCHETT PITRE,S1'M0 & McCARTHY
`340 Malcolm Road, sum zoo
`I4
`
`Em-lingame, CA 94010
`T Telephone: (650) 597-5000
`
`6 i
`Attorne
`{or Defendant and Counter-Claimant
`‘ STEP N SLESINGER, INC.
`
`[PROPOSED]
`
`UNITED STATES DISTRICT COURT
`
`CLARE
`
`
`
`SEPH CO
`
`FOR THE CENTRAL DISTRICT OF CALIFORNIA
`3.... “"
`her Receiver,
`RPRISES,
`
` i and DISNEY
`
`Case No. CV-02-08508 FMC (PLAI)
`
`-I
`
`DEFENDANT AND COUNTER-
`CLAIMANT STEPHEN SLESINGER,
`. lNC.'S FOURTH AMENDED ANSWER
`AND COUN'I'ERCLAlMS
`
`)
`
`)
`
`i di "d
`
`INC.
`
`I3lainfifl's,
`
`V.
`
`1 STEPHEN SLESINGER, INC.
`
`Defendant.
`
`STEPHEN SLESINGER. 1Nc.,
`Counter-Claimant,
`
`V.
`
`; DISNEY ENTERPRISES, lNC.;
`. THE WALT DISNEY
`' COMPANY; and WALT
`DISNEY PRODUCTIONS
`
`H
`
`Counter-Defendants.
`
`3. TRADE DRESS INFRINGEMENT
`4. BREACH OF CONTRACT
`
`5'8 %F fiE}1G
`
`If‘ =
`
` ‘:9 %%WE
`&%%%§£?‘'’‘ ” ms
`
`2
`
`etseg.
`
`I2.
`
`JURY TRIAL DEMANDED
`
`
`
`

`
`I .
`
`m-1111.
`
`ANSWER ...................................................... . . 1
`
`COUNTERCLAIMS ........... . . _.......................... . .1 .... . . 9
`
`1.
`
`11.
`
`lNl'RODUCTION ..................................... . . 9.
`
`JURISDICTIONANDVENUE ......
`
`............... ..1o
`
`111.
`
`TI-IEPARTIES ...........................
`
`......... ..11
`
`IV.
`
`FACTUAL BACKGROUND .~ ........................... . .12
`
`A.
`
`B.
`
`c.
`
`D
`
`E
`
`1=.
`
`G.
`
`H.
`
`1.
`
`I.
`
`THEPOOI-IFAMJLYOF CHARACTERSAREBORN ... 12
`
`BACKGROUND ON STEP!-[EN SLESINGER ........ ..13
`
`INITIAL AGREEMENTS BETWEEN MILNE AND
`SLESINGER .............. . .-.................... . . 14
`
`STEPHEN SLESINGER POPULARIZES POOH ..... . . . 16
`
`SI-IERLEY SLESINGER LASSWELL CONTINUES To
`DEVELOPTI-IE PQOH FAMILY o1= CHARACTERS. 7 . . . 17
`SLESINGBRAND DISNEY: THE 1951 AGREEMENT. .. 13
`
`UNDERPAYMENTS BY DISNEY ARE EXPOSED AND
`THE PA.R'IIES ENIERINTG THE 19s3AGBEEME1~rr ..21
`
`DESPITE 1'13 PROMISES AND AGREEMENTS DISNEY
`CONTINUES To UNDERPAY SLESINGER AFTER THE
`1933 AGREEMENT .............................. . . 24
`
`DISNEY IMPROPERLY USES THE COPYRIGHT ACT To
`ATTEMPT TO CUT OFF SLESINGER’S RIGHTS .... . . 25
`
`THE POOH BRAND IS CRITICAL T0 DISNEY’
`BUs1NEss ............................ . .
`. ...... . . 23
`
`K. . DISN'BY_'S IMFROPER ROYALTY STATEIVIENTS . . . . . 30
`
`V.
`
`CLAIMS FORRELIEF ............................... .. 31
`
`PRAYERFORRELIEF'............................ .;.....;...47
`
`JURY DEMAND .......................................... .. 52
`
`
`
`
`STEPHEN sLEs1NGEn. mc.-s munm AMENDED ANSWER AND counrnncuums
`£|«{l¢rll.ua1'.v..5‘tq£aSlcr.lhz¢r,Il=.. cmNo.cv-oz-nasosEMc(rLA.:)
`
`i
`
`

`
`Defendant Stephen Slesinger, Inc., by its attorneys, answers the First
`
`‘ Amended Complaint as follows:
`
`1-3. Defendant admits that plaintifis purport to assert that this Count has
`
`5.
`
`Defendant denies having suficient knowledge or information to form
`
`j a belief as to the allegations contained in paragraph 5 and therefore denies Ihe
`
`,,
`
`same.
`
`'
`
`6.
`
`Defendant denies the allegations contained in paragraph 6 to the
`
`extent these imply that plaintifiDisney owns the Winnie-the-Pooh character, and
`
`‘ further denies having suflicient knowledge or information to form a belief as to
`
`3 the remaining allegations of paragraph 6 and therefore denies the same.
`
`7.
`
`Defendant denies the allegations contained in paragraph 7 except
`
`22
`
`licensed to Walt Disney Productions certain rights it obtained front the trustees of
`Pooh Properties Trust, also on April 1, 1983 (the "1933 Agreement‘).
`A
`8.
`Because the allegationscontained in 1553::-ugtnph 8 are conclusions of
`law that require neither an admission nor a denial, defendant respeotfitlly refers the
`3 Court to the statute and authorities interpreting the same for the meaning thereof.
`
`
`
`9.
`Because the allegations contained in paragraph 9 are conclusions of
`E law that require neither an admission nor a denial, defendant rewctfitlly refers the
`i Court to the statute and authorities interpreting the same for the meaning thereof.
`
`
`
`

`
`T;
`
`10. Defendant denies the allegations contained in paragraph 10 but admits
`
`; that plaintiffs characterize their actionas set forth therein.
`
`11. Defendant denies having sufficient knowledge or information to form
`
`1;. Defendant admits the allegations contained in paragraph 12.
`
`13.’ Defendant denies having sufiicit knowledge or information to form
`
`14. Defendant denies the allegations contained in paragraph 14 except
`
`- admits that in January 1930 A. A. Milne and defendant's predecessor, Stephen
`
`E which agreements speak for themselves, and defendant respectfully refers the
`
`; Court to the contents thereofand otherwise denies the allegations contained in
`
`paragraph 16.
`
`
`
`as ’ admits
`
`17. Defendant denies the allegations contained in paragraph 17 except
`in 1983 it entered into a new agreement with Walt Disney_Produetions,
`
`
`
`STEPHEN SLESINGER, INCJS FOURTH JLMENDED ANSWER AND COUN'l'ERCLA.lMS
`Q Milne, stat. v. StephaISles!l££1'.Iun,CnseNo. CV-01-08508 FMC(l'LAx)
`
`

`
`I.
`
`19. Defendant denies having sufiicient knowledge or information to form
`2 a beliefas to the allegations contained in paragraph 19 and therefore denies the
`
`G
`
`20. Defendant incorporates herein by reference all ofthe allegations and
`
`‘ averments contained in paragraphs 1 through 19 ofthis Answer.
`
`21. Defendant denies having suficient knowledge or infcmiation to fonn
`
`22. Defendant denies the allegations contained in paragraph 22.
`19 .1
`23. Defendant adniitsthe allegations contained inparagraph 23.
`23
`24. Defendant denies the allegations contained in paragraph 24 except
`21 i
`2 admits that Milne aueges that Milne seeks a declaration that the Milne
`
`25. Defendant incorporates herein by reference all of the allegations and
`
`averments contained in paragraphs 1 through 24 ofthis Answer.
`
`26. Defendant denies having sufl'icient knowledge or information to -form
`
`, a belief as to the allegations contained in paragraph 26 and therefore denies the
`
`
`
`Ccn'cH'Erl'.
`PURE. SIMON d:
`Mocrmav
`
`V STEPHEN SLESINGER. lNC.'SF0lJR'l'H AMENDED ANSWERANDCOUNTERCLAIMS
`'= 41fllIe.duLnS1:pba:Sl¢singar.Ina,CanNmCV-02-08508FMC(PLAJ)
`
`

`
`
`
`2'). Defendant admits the allegations contained in paragraph 27.
`
`i
`
`28. Defendant denies the allegations oontained in paragraph 28 except
`admits that Disney alleges that it seeks a declaration that the Hunt Terminatiou_
`Notice is valid.
`_
`A m
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`FIRST COMPLETE HVE DEFENSE
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`A
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`‘
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`A
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`Plaintiifs‘ First Amended Complaint fails to state a claim upon which
`29.
`reliefmay be
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`SECOND coMPLE'r.E AFFIRMATIVE DEFENSE
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`30.
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`Plaintiffs‘ claims fail because the agreement or ayeemenu they claim.
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`are no longer subject to termination.
`mm]: COMPLETE AFFIRMATIVE DEFENSE
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`31.
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`PIaintifl's' claims with respect to the agreements and events that took"
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`FOURTH COMPLETE AFFIRMAIIVE DEFENSE
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`32.
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`Plaintiffs‘ claims based upon the alleged validity and efiectiveness of
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`the Termination Notices served by Milne and Hunt on or about November 4, 2002
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`5' STEPHEN SLESINGER. lNC.'S FOURTH AMENDED ANSWER AND COUN'l'l-.'.RCLAIMS
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`FIFTH COMPLETE AFFIRMATIVE DEEENSE
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`{V
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`33.
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`Plaintiffs‘ claims should be dismissed because pla.intifi's have failed to
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`slxrn COMPLETE ANDIOR
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`PARTIAL AFFIRMATIVE DEFENSE
`Plaintiffs‘ claims with reépect to the validity and efiectiveness ofthe
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`34.
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`SEVENTH COMPLETE ANDIOR
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`-
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`..
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`_ PARTIAL AFFIRMATIVE DEFENSE
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`35. Any termination by Milne and/or Hunt pursuant to section 304(d) of
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`19 E- those arising under federal, state, and/or foreign trademark and unfair competition
`20 ; laws or under foreign copyright laws.
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`I
`EIGHTH COMPLETE AFFIRMATTVE DEFENSE
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`36.
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`Plaintiffs‘ claims are barred by the doctrine of unclean hands.
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`N1N'I_'H COMPLETE AFFlRM.A1‘IVE DEFENSE
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`37.
`Plai:nIiffs' claims are baxred by the statute of limitations including but
`not limited to, Cal. Civ. Code. §§ 337 - 1, 3, 338(d), 339 -1, 3, and 343.
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`
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`‘ STEPHEN SLESINGER, lNC.'S FOURTH AMEND ANSWER AND COUNTER-CLAIMS
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`TENTH COMPLETE ANDIOR
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`PARTIAL AFFIRMATIVE DEFENSE
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`38.
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`P1a.intifi's' claims are premature, as there is no substantial controversy
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`ELEVENTH COMPLETE moron
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`PARTIAL AFFIRMATIVE DEFENSE‘
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`pieimifiz-r claims fail because ofone ofthe following:
`39.
`The eciione ufPlaintiffDisney and the Walt Disney Company
`(3)
`(hereinafter, eoneeeiveiy, "Disney") in connection with the rermineiiee Notices
`
`Disney thereunder and to recapture and exploit such rights;
`(b)
`Even ifthe Court deems the Termination Notices to he efibctive.
`14
`ie t pla.i'mifi‘Disney, andlor any other related entity would remain legally and
`_
`16 equitably obligated to pay to Slesinger the royalties provided for under
`1983
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`
`
`17 Agreement;
`E
`(c)
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`_
`I
`Disney violated its fiduciary imd/or other obligations-to Slesinger in
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`
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`STEPHEN SLESINGER, INCJS FOURTH AMENDED ANSWERAND COUNFERCLAIMS
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`have such a right, Disney's inducing Coyne, purportedly acting on Milne's behalf,
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`and Hunt to bring about such a termination would be a tortious interference with
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`Siesingei-‘s rights under contract;
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`(1)
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`Hunt has no right to exercise any right of termination trader 17 U.S.C.
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`* § § 304(c:) or (d) of the United States Copyright Act, because the illustrations in
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`- question were works made-for-hire;
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`(g) Hum has no right to exercise any right of termination under 17 U.S.C.
`
`Under CaL Civ. Code §_35@l, plaintiffii cannot accept the benefits of
`(i)
`‘C the transaction provided to them by the 1983 Agreen1ent(e.g., the rights). withoiif
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`TWELIITH COMPLETE ANDIOR
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`PARTIAL AFFIRMATIVE DEFENSE
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`40.
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`Plaintiffs fail to state a claim because the 1930 Grant that plaintiffs
`
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`THIRTEENTH COMPLETE ANDIOR
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`PARTIAL AFFIRMATIVE DEFENSE
`41.’ Because the various paragraphs ofp1aintifis' First Amended.
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` §
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`1. Winnie-the-Pooh is instantly recognized throughout the world by his
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`rounded-yellow body and red shirt. Every year, he becomes more and more
`5 I popular through the selling oftoys, clothing, novelties, and other products,
`
`3.
`
`In 1930, Stephen Slesinger obtained, inter aria, rights to ‘Winnie-the-
`
`jPoohinthe United States andCanadafi'omthe author, A.A. Milne. Atthetimehe
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`22 development skills and developed W'mnie—the-Pooh and his fiiends into successful
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`: merchandising properties, in many product lines and services, and protecting these
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`2 product lines and services through intellectual property rights and contract rights
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`5.
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`Following Slesinget-‘s successful efforts, in 1961 Disney entered into
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`6.
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`Rather than dealing fairly and honestly with Slesinger since executing
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`M the 1983 Agreement, Disney has intentionally and continuously failed to properly
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`accumulate. calculate, and pay royalties to Slesinger, failed to report on gross
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`receipts without deduction, intentionally and continuously failed to report royalties
`in a timely manner, engaged in unauthorized uses of Slesinger"s intellectual
`,,
`
`28 U.S.C. §1332(a), as this controversy exceeds the value of $75,000 and is
`
`; between citizens ofdifferent states. The Court has supplemental jurisdiction over
`Slesingefs state law claims pursuant to 28 U.S.C. §l367.
`9.
`venue is proper in this District pursuant to 23 U.S.C. §§l39l(b),
`
`D
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`139I(c), and 140001). The Disney Counter-Defendants are headquartered andlor
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`: perform business in this District. A substantial part of the events, acts, omissions,
`and transactions complained ofltenein occurred in this District.
`
`
`M SFEPHENSLESWGER. lNC.‘S FOURTII AMENDEDANSWERANIJCOUNTEIICIJLIMS
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`15.
`In its complaint in this action, Disney claims that ithas the right to
`16 5 enforce the Tennination Notice served on Slesinger in November of 2002 by
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`17 Third Party Defendant Minette Hunt (the “Hunt Termination Notice"). The Hunt
`15 i Termination Notice was filed with the United States Copyright Oifiee by I-I1mt‘s
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`19 ; agents, who were located in California.
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`16.
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`Third Party Defendant Harriet Jessie Minette Hunt (“Hunt”) is a
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`} resident and citizen of the United Kingdom and purports to be the sole living
`2:
`22 grandchild ofErnest H. Shepard (“Shepard”). Shepard created certain bieeienncb
`white illustrations of Winnie-the—Pooh and his fiiends.
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`
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`17. At all relevant times, each Counter-Defendant was and is the agent of
`
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`23 1 Defendants.
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`STEPHEN su:sINGER, mess FOURTH AMENDED ANSWER AND COUN'l'ERCl..AlMS _
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`18.
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`In 1921, A.A. Milne (“Milne”) gave his son, Christopher Robin
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`' Milne, a bear for Christopher‘: first birthday. His son and the bear later heeame
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`the inspiration for Milne’ s writings about the cheracter, Winnie-the-Pooh.
`19.
`In 1923, Milne wrote a poem about Christopher Robin entitled
`“Vapers." He told his wife, Daphne, that she could keep the money she received
`from the sale ofthe "Vespers" poem. With the assistance ofTess Slesinger, M13.
`Milne sold the poem to may Fair magazine, where it was first published. The
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`, “Vespers” poem became popular.
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`-
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`..
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`' 20.
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`From 1924 to 1928, Milne published numerous poems and stories,
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`Some derivative decorations in the Pooh Books were created by
`22.
`27 \ Shepard. Shepa.rd’s derivative decorations showed the Pooh Family ofCharacters
`23 inblaek-and-white drawings.
`
`' s
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`mmm smsmonn. mess FOURTH AMENDEDANSWERANDm
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`4 copyrighlregislmnt.
`24. As of 1929, the Pooh Family of Characters were known only in
`? Milne's black and white text and had not been developed outside ofboolcs and
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`25.
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`Stephen Slesinger was a successful publisher, producer, illustrator,
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`and writer. As ofthe 1930s, he was the United States’ most successful
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`.'
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`representative of authors (including Edgar Rice Burroughs, Rex Beach, Will
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`. James, Hendrik Wilhelm Von Loon) and newspaper syndicate comics (Bell
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`26.
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`In the 19303, Stephen Slesinger was a pioneer in developing
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`L comprehensive “character merchandising” plans, which included: artwork, product
`
`27.
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`'I'hroughout the mod, 1940:, and 1950;, Stephen slesingor also was
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`a media innovator (creating Telecomics films, a new film medium that featured
`~ synoptic versions ofpopular children's books and comic to-actions), president of
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`a motion picture production company (Telepictures, Inc., formed with the family
`ofZane Grey), 21 film producer (includiflg ielevision credits), a journalist, and an
`
`
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`STEPHEN SLESINGER. ]NC.'S FOURTH AMENDED ANSWER AND COUN1'ERCI.A1MS
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`and white pages ofMi1ne’s text, thereby increasing theirpopularity and value.
`29. On January 6, 1930, Milne and Stephen Slesinger entered into a
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`1
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`17 Slesinger included, but were not limited to. the following:
`
`.
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`_
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`13 l
`19 E
`20
`21
`22
`23
`24
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`25 ;
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`_
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`l
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`a.
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`the
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`and privilege to
`The “sole and exclusive right,
`name of the Author, the title ofthe said works, and the
`characters therein, the draviiingsandillustrations inthe said
`several works and the right to have made other and further
`and illustrations portraying or reflecting actions of
`the said several
`including the right to use the same
`in and for the purpose ofadvertising publicity and otherwise,
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`except as is herein specifically stated to the contrary";
`
`h.
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`2:5 _
`27
`23 ‘
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`The right to “sell or cause to be sold, as aforesaid, in interstate
`andlor foreign commerce, some ofthe fabrics, things or
`materials";
`
`' srernsn snssmnsn. rNc.'s FOURTH AMENDED ANSWERAND COIINTERCLAIMS
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`14
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`I
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`c.
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`The “exclusive privilege of reproducing endior using the rights,
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`privileges and licenses hereinbefore granted in any or every
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`material form as aforesaid, including the rights to gen: and
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`license others...”; and
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`d.
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`The right to be protected “fiom all claims which may be made
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`upon or taken against fslesinger] on the ground that the said
`illustrations andlor characters are the copyright or the property
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`of any other party...."
`'
`.
`The 1930 Agreement provided that merchandise subject to trademark
`32.
`;rigl1tswastobeprotected“tmdertheTrademarkActoftheUnited States of
`..
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`33.
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`Soon after Milne and Stephen Slesinger signed 1930 Agreement,
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`; Stephen Slesinger assigned his interest in the 19303 Grant to Slesinger.
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`34. Over time, the 1930 Agreement was amended by other writings (the
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`23
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`its insular possessions, the Dominion ofCanada and Nova Scotia...the soleand
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`’ exclusive rights for and the use thereof within the above-mentioned territorial and
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`
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`1 uses of the books referred to in the [1930 Agreement] and the various song books
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`or works published or to be published or issued, based on or adapted fiom them or
`
`2a
`
`9
`c‘c'Ect"§r. ‘E
`'";.§“§cfl“m”"
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`upon the literary works to be written in the future dealing with the characters
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`.
`-
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`36. At the time the 1930 Agreement was signed, the idea ofcreating a
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`; licensing men-ket for branded character merchandise was in its infancy. Licensing
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`is the business ofgrnnting rights to advertise, reproduce, and use aperson or
`10
`11 “ charnctefs name and likeness in connec