Stephen Slesinger, Inc. v. Disney Enterprises, Inc.
702 F.3d 640
| Fed. Cir. | 2012Background
- Board dismissed Slesinger's TTAB opposition/cancelation actions against Disney marks with prejudice based on collateral estoppel from a California district court decision.
- 1930 Milne rights granted Slesinger for US/Canada; 1961 Disney acquired rights via assignment from Slesinger.
- 1983 agreement asserted Slesinger licensed/assigned Pooh rights; Slesinger contended retained rights while Disney asserted full assignment to Disney.
- 1991–2006 state and federal litigation pursued royalty/ownership disputes; district court held Slesinger transferred all Pooh rights to Disney and barred further claims.
- Board treated Milne case as preclusive; this court reviews collateral estoppel de novo and affirms the Board.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether collateral estoppel barred Slesinger’s claims | Slesinger argues district court did not decide ownership, so estoppel not warranted | Disney argues ownership was resolved and essential to infringement ruling | Yes, estoppel applied to ownership issue |
| Whether ownership of Pooh trademarks was essential to ruling on infringement | Ownership needed to challenge Disney's registrations | Infringement could be resolved on license authorization regardless of ownership | Ownership not essential; infringement resolved via authorized use under license |
| Whether the district court’s language conclusively decided assignment vs license | District court used 'granted' and 'retained no rights' suggesting ambiguity | Judgment shows transfer of all rights; language not controlling | Preclusion proper notwithstanding language nuances (assignment as determined) |
Key Cases Cited
- Montana v. United States, 440 U.S. 147 (Supreme Court 1979) (four-factor test for issue preclusion; burden on proponent)
- In re Freeman, 30 F.3d 1459 (Fed.Cir.1994) (necessity requirement for issue preclusion)
- Mother’s Rest, Inc. v. Mama’s Pizza, Inc., 723 F.2d 1566 (Fed.Cir.1983) (essential vs incidental issue for estoppel)
- Clark v. Bear Stearns & Co., 966 F.2d 1318 (9th Cir.1992) (preclusion when issue is only rational basis for judgment)
- Yamaha Corp. of Am. v. United States, 961 F.2d 245 (D.C.Cir.1992) (focus on dispositive nature of judgment for estoppel)