There’s been a lotta yapping about this on various message boards,
forums, etc., most of which is unfortunately accompanied by a lotta
ignorance as well.
UP probably couldn’t care less about the model railroad manufacturers
using their logos on model trains, except for one little thing -
Changes in trademark and copyright laws a few years ago (done
primarily to mesh with international agreements in these areas)
basically allow that, if a trademark or copyright is knowingly not
enforced in one instance, someone being sued for infringement by the
trademark/copyright holder in another instance can use that lack of
enforcement to get “off the hook” for their own infringement, or even
worse, get the trademark/copyright declared “public domain.”
So if UP, which certainly knows that model manufacturers make models
with UPs trademarks on them, ignores the infringement, some other
company who may well impact UPs business in some substantial way can
also get away with infringing on the trademarks, as the model makers
set a precedent.
Used to be that ignoring the model makers would be considered “tacit
agreement” for the model makers to use the trademarks, and would have
no impact on other enforcement actions UP might make to protect their
trademarks. Under the revised laws, it is more likely to be
considered “abandonment” of the trademark in a court of law.
So don’t villify UP - they’re unwilling victims of circumstances
here. Villify the jerks who changed the law instead. And expect more
railroads to follow suit.
At least UP hasn’t gone after private website owners over trademark
infringement (yet), as Viacom did to all the private Start Trek
websites a few years ago!
OK so what!? Yes they are charging for the use of thier trademarks…so does everyone else!!
In my humble opinion, we shouldn’t be so pissed at UP as we should be at Kato, Athearn and the like that have raised the prices of the UP models! Come on!! $5 more for a UP engine than a non-UP??? I think the manufacturers could eat the $5. I mean we all know that you can get models at online retailers for WAY less than MSRP…so to me the manufacturers should buck up, and use some of the profits they have made off all the UP models they have sold without paying UP for the trademarks, and the prices should stay the same.
Thanks for leading off a discussion of this topic in a thoughtful and civil manner. You’re right, there has been a lot of ignorance–even childishness–displayed on similar threads.
UP certainly would have good reason to jealously protect its tradenames, service marks and trademarks out of concern that a failure to do so would open up an “abandonment” issue. However, the details of UP’s program suggest there’s more than just a defensive move in play.
If the only motive were protection against “abandonment”, UP could have offered all potential licensees an agreement which would have affirmed UP’s rights in the various marks and names, given UP the ability to approve or disapprove of proposed uses, and charged either no fee or only a token fee. That’s essentially what they have offered for nonprofit organizations that have limited distribution of UP-related products.
Instead, UP has insisted on much-more-than-token royalty payments, has demanded confidential business information from manufacturers, and has even insisted on copies of AUDITED financial statements from some applicants. No wonder most major model railroad manufacturers–from Athearn to Walthers–have declined to fall in line.
The wide-ranging nature of the allegations in UP’s federal lawsuit Complaint also is of interest. If mere “protection” were UP’s aim, it could have skipped causes of action which require it to allege and prove that it is in competition with Lionel and Athearn in the model train market!
It will be interesting to see how Lionel and Athearn to UP’s suit. At the initial stages we can expect all available defenses to be asserted–including (how ironic) claims that UP “abandoned” the names and marks in question–particularly the fallen-flag and “historic” logos. I would also expect the defendants to assert that UP obtained its federal trademark registrations through misrepresentations, if not fraud.
UP is trying to make as much money as possible for their Execs before they get disolved by the government (yes they know it’s coming), so it’s just one big ploy by the top executives to make as much money for themselves before they’re out of jobs.
While the UP probably does need to enforce their trademark, they don’t need to charge a percentage of sales. They could charge model railroad manufacturers a flat fee of $5.
Enjoy
Paul
I can remember my dad who worked for the Santa Fe for 31 years in Corperate Communications working with Athearn to produce some of the models that we enjoy today. I remember him saying that Santa Fe actually paid Athearn to produce models in Santa Fe’s various paint schemes, primarily locomotives.
Ch[soapbox]
What??[%-)]
Pray tell where did this come from? Are you actually suggesting that the Government is going to come in and take over UP and set up Conrail West? Got any facts to support this theory? I really want to hear this one!
My theory on licensing is, UP will prevail, CSX will follow, then the rest of the gang will go along. Soon every model will cost a little extra and there wont be a damn thing anybody can do about it. The truly amazing part is by that time, nobody will care anymore. Kinda like how we gripe about gas pruces, while er fill up our SUV’s.
Your only defense is to buy your decals now, and put them in a cool, dry place.
they are doing it simply because some damn fool lawyer told them they could, And maybe make a few bucks to add to their bottom line. Don’t worry about the ill will that such an ill advised move might engender in the railfan public( some of whom may be shareholders). Haven’t their executives anything better to do than worry about model railroaders?
I’ll put in an easier context. think of all of the pictures that you have take over the years. When a person takes a photograph and has the film developed, the photographer owns the rights to the images they took. Would you like it if a person used one of your photos for their own personal gain without your permission or knowledge? I wouldn’t.
Ch[soapbox]
If UP failed to protect it’s copyright, another company could take said name as it’s own and protect it’s copyright… sue UP for using the name and UP would now be forced to completely abandon what it spent 150 years to build.
A few years back, a man who owned his own small computer rpair business (who’s last name happened to be Nissan) registered Nissan.com for his business. Nissan Motors sued him because they didn’t get there first. They claimed Nissan the computer guy was taking advantage of Nissan the car company’s reputation and the site should be shut down. Guess what, it was shut down. At least made non-commercial. You cannot make money from somebody elses name. it’s that simple. Got to www.nissan.com to see for yourself. Nissan the computer guy keeps it registered as kind of a parting shot at Nissan the car company. Want to visit Nissan the car company? Have to go to www.nissanmotors.com for that.
If it could be shown that Nissan Motors had abondoned it’s trademark name, Nissan the compter guy could have had everybody looking foir a nissan car coming to his website, possibly making sales from it. That is why it was shut down, and that is why UP is doing what it is doing.
I have seriously raised this exact question before. By this standard it would be illegal to copyright a photo of something that belongs to someone else, such as a UP locomotive. Only UP could hold the right to the image you created. There is no point in trying to copyright photos of trains, because you can’t sell them without permission.
But doesn’t UP automaticly get that kind of consideration already under existing law?
They can easily prove that that is their name and they had it first, because they made it famous over the last 150 years. I believe that is what is meant by common law trademark. There is no need for large fees to maintain rights, just a basic agreement fr
They could have gone the other way with this, Kato and others could have raised the price on ALL products, not just UP , say by $2.50 to make up the difference and few would have been the wiser.
Model manufacturers are in a tough place. Lost profits equate to less R&D and making of dies. This equate to less new models and lost sales. They are in a tough place here, and I do not blame them for the UP price hike.