Union Pacific and licensing agreements

[Anonymous]

Union Pacific now requires licensing agreements before manufacturers can use its logos on products (see the story on Trains.com's homepage).

Uncle Pete's position makes perfect sense to me, but there may be an aspect I'm overlooking. What are your thoughts on this? Will you be willing to spend a bit more a UP model so the manufacturer can cover the cost of the licensing agreement?

Paul Schmidt

[Anonymous]

Absolutely not.

[dknelson]

The UPs position makes total sense from a pure trademark law perspective. The law punishes those trademark holders who tolerate nonlicensed or approved uses -- the punishment is that you may lose your right to pursue and stop a genuine infringer. I think we would all agree that, say, a trucking firm that tried to use something like the UP shield or slogans could do real mischief in the marketplace by making customers think they were dealing with the UP. The UP's right to take action based on trademark could be imperiled if it can be said they tolerate infringers, even if that infringer made N scale boxcars. The law basically says the trademark holder cannot pick and choose which non authorized uses to pursue.

I guess it is worth pointing out that from time to time railroads have marketed models of their own trains. The Illinois Central used to market a Lindberg train set and even today the Wisconsin & Southern sells custom painted HO models of their equipment. SO it cannot be said that models are so different from the actual trains that there is no possible confusion over the source of goods associated with a given trademark.
I am less sure about the UPs right to protect old logos and slogans for which their trademark registration has lapsed due to non-use. There I think they might be on shaky ground and some model manufacturer could create a very interesting legal situation if IT trademarked old UP logos and slogans that have passed beyond the protected period.

Having said all that, I am not aware of any legal requirement that the UP charge or collect significant fees to enable model manufacturers and decal manufacturers to reproduce their trademarks. If it is in the form of a legal contract or agreement there needs to be "consideration" (something of value) on both sides. The right to use the logo is the value on their side, but a single dollar would be enough to make the contract legal and binding (so would a model itself, or anything of value) and anything over a dollar is pure profiteering by the UP. So the issue really should not be whether we are willing to pay a little more for UP models because it need not cost the model company much if anything.

The unfortunate thing about trademark law is this: it forces the trademark owner to be something of an SOB even when it does not want to be.
Dave Nelson

[leighant]

One issue related to licensing railroad (and other) trademakrs, logos etc is what is called "FAIR USE". Fair Use in scholarship, journalism, etc means generally (I am a writer, not a lawyer) that you may make some comment about a firm for non-commercial information purposes without prior permission... for instance, writing your opinion about the Union Pacific in a news artricle or report, or mention in a historical article or book. That of course is subject to libel and slander law-- a damaging or untrue statement could get you in trouble. Mass producing models in the commercial marketplace seems NOT to come under "fair use", and I accept the trademark owner's right to control it. Building and lettering my own personal models on my own private layout would seem to be a gray area, where I would tend to resist someone telling me what or how to model. Kenneth L. Anthony

[Anonymous]

"The unfortunate thing about trademark law is this: it forces the trademark owner to be something of an SOB even when it does not want to be."

You just hit the nail squarely on the head, Dave. I don't think UP is out the screw anybody with this decision. It's a simple matter of protecting their property from unauthorized use. Just like model railroad manufacturers have a rightful claim to their trademarks, so does UP. The shield logo, like UP's tangible property (i.e., right of way, etc.) is not in the public domain.

Paul Schmidt
Contributing Editor
Trains.com

[Anonymous]

Paul:

I seem to recall that CSX undertook a similar licensing arrangement several years back that was discussed at length in the Wall Street Journal. The position taken by CSX was lamented at the time, but I have not noticed a reduction in the availablility of CSX (or B&O, C&O, etc.) models in the marketplace. My guess is that UP is doing what they deem necessary to protect their trademarks, logos and other intangible assets. I doubt that they will use this to the economic detriment of the model railroad community.

[douginut]

As odd is it may seem the requirement that licensing agreements be entered into might just work out for the best for our hobby.
Over the years (as recently as two weeks ago) I have been shopping and found HORRIBLE "models" of trains that claim to be "Union Pacific" or other railroads. If licensing restricts the use of the trademarks to QUALITY products then the whole exercise will have been worth it beyond simply protecting valuable assets.

Doug Polhamius, in Utah

[Anonymous]

I think this topic is kinda ironic! If any of you are auto buffs then this is nothing new to you!! A few years ago we where working on the girls car and we decided that we wanted a "Pontiac Diamond" for the back window of her 92 Grand Am. "Hey No Problem!!" So I went to a car shop at the local mall. After all thats where I got them for my 95 Beretta, and all my cars before. So I stroll in start to chat with a long time employee that I known for awhile. Then after looking around I grew nervious because I'm not finding any GM logos on the wall where they ALWAYS WHERE. So I asked "What happened to all the GM logos?" The response whent something like this....An employee was a a swap meet(SOUND FAMILAIR?) and brought some extra CHEVY logos(BOW TIES) with him. He was approched by a GM representitive that was strolling the grounds. The guy told us that we had to stop SELLING & DESTROY all NON GN approved parafinila, or they would sue our A-- off.....so this is the reason I can't sell you any gm logos except for those (and they pointed to the rack behind me). IGG that cheap .. NO THANKS so I reluctantly left. I found a sticker store that custom made them but it cost me $20 more then what the car shop used to ask for it!! Now if you still are lost on where this is going...Trademark enforcement is nothing new. ALL auto makers enforce it albit mostly for $. If some one slaped on a MOPAR logo on a engine and the people who bought it where not happy then Chrysler gets the bad rap!! Same thing for UP. Ive seen some pretty great replicas of their Engines and cars....also alot of realy sad looking ones too!!! Remember Cover your own .....well if you dont know re read this post!!
Thanks Icemanmike-Milwaukee

[rogerhensley]

And as I recall. CSX backed off of that after the tremendous bad publicity that it caused them. They decided that models didn't count and that they were good FREE publicity.

As far as UP goes, forget it! Not one dime!

Roger

[dknelson]

I remember reading years ago that some of the military contractors actively cooperated with the plastic model kit manufacturers so that the kits would be accurate. I do know that EMD actively cooperated with Lionel on their famous Santa Fe F unit model (as I believe the New York Central cooperated with Lionel on the original scale Hudson)
As to fair use -- I think fair use would protect the model railroader who created his or her own Union Pacific logos or decals. But once it becomes a commercial commodity, fair use goes out the window.
The real crunch issue is whether the railroad will be "reasonable." And the worst possible outcome would be if ONE manufacturer somehow got an EXCLUSIVE license from UP so that all others would be frozen out. That is why the model railroad industry MRIA has to step in here I think
Dave Nelson

[Anonymous]

No.

[bfsfabs]

Icemanmike,

You are obviously a GM person. I am a MoPar freak and often wondered how much Chrysler paid, over the years, for the use of Roadrunner and Wyle Coyote stuff.

My personal opinion is anybody who has a copyright/trademark/servicemark should protect it vigorously. I sure would.
If they don't, then the item no longer has any real meaning.
Lowell

[Anonymous]

The problem is that this practice IS impacting the model railroading hobby. Example: I cannot find "Texaco" decals bacause Texaco will not allow decal manufacturers to use the logo without paying a fee. Yes I know I can recreate these via computer myself but I have never been able to get the quality I have come to enjoy from Microscale and others. In sum: this policy has limited my ability to enjoy my hobby to some degree. These guys need to realize that they have MUCH more to gain by simply allowing the use of their logos for purposes such as this and saving their legal energies in pursuit of real offenders that pose a true threat to their corporate identity.

Terry (Ohio)

[Anonymous]

Doug; That "quality" stipulation is a mighty big "IF"...a great many corporations use licensing agreements as an additional revenue source.The amount of money to be realized is far more important than quality or accuracy. The practise can lead to more "toys" than ever, unless there is a real desire within the corporation to maintain tradition, at the expense of profit. [...EVERYONE...TRY NOT TO FALL OVER LAUGHING !]
Examples of the "toys boys" would be the John Deere Train Sets, the 1920's diecast trucks with 1990's Coca-Cola and Caterpillar logos, NFL Boxcars, and dozens, if not hundreds, of others.
The entire die cast auto-truck hobby is now under the control of licensing agreements,and their aggressively litigous corporate operators.
I doubt the CFO and General Counsel of Union Pacific care one hoot about whether UP modelers have an 'accurate' UP model...but if some eastern European facsimile of a GG-1, in yellow, with a UP nose herald, shows up in supermarket trainsets in a few years, you will know what they really gave a hoot about.
Hope I'm wrong....but, glad I'm a freelancer ... Compliments of the Season & best regards / Mike

[Anonymous]

The only thing that bothers me about all this is the other predecessor railroads are included. I don't give a hoot about UP, but I have several models of CNW, MP, WP, MKT, D&RGW and SP prototypes and hope to acquire several more.

As far as Paul's question, "Will you be willing to spend a bit more a UP model so the manufacturer can cover the cost of the licensing agreement?" is concerned, I, for one, would only be willing to spend more if that manufacturer is Microscale, and even then, not much more than what is charged for any other set of decals. As far as other manufacturers are concerned, I don't care and won't buy their prepainted UP stuff anyway. I haven't been dazzled by any manufacturer's painting quality in so long that I paint all my own stuff.

If any of this does become a problem for manufacturers, I suggest they just do what Walthers did with the HO scale UPS prototype parcel service trailer decals: offer a set containing "Reliable Parcel Delivery" and "United Postal Service" and leave it up to the modeler to come up with the combination that suits him or her. You could easily do that with different "shields" and text ready for splicing for any railroad name...

RCHarris

[Anonymous]

I still think UP does have a right to "Protect" it's (CURRENT) ASSetts. But how far is too far? Yea if they dont stop these shoddy golddiggers from making sad looking replicas, their reputation could be tarnished.

The UP sheild and logos (up to 20 back) I can see but what about CNW,Lichfield & Madison, Rock Island? There HAS to be a limit on the FALLEN FLAGS (Oh yea we do miss em'). UP did not own any of these durring there rise to glory...so why start now? Also another problem arises, Why NOW? Gee....UP had how many years to say or do something!! And at the same time we will can a ton of management. Humm......$$$$$$$$$$$ Naw mony is NEVER a factor now is it!?!

Like I posted earlier What If Mopar did make the "ROAD RUNNER" and used the bird as "THE VOICE OF THE ROAD RUNNER"....BEEP-BEEP without permision of WB? Or my Chevy Beretta....It got its name from the gun (and yes) under licence. Why because no one fell asleep at the throttle for a century!!! Icemanmike-Milwaukee

[Anonymous]

Wondering it THAT is part of the problem with getting my Southern Pacific Black Widow F7AB sets in N scale. I don't mind another $1 or $2, but believe they should have to allow model representations, even if like songwriter fees we have to pay a royalty. Applies to Decals too?

[Anonymous]

Atlas has licensed Fords. No Chevy or Dodge. We have NO N scale John Deere, Caterpillar, JD tractors were available for a while. Can't some N scale company get licenses for Hereford beef cattle? Or maybe some Black Angus cattle? At least we don't need licenses for the Jesus Saves signs! 8-) Even if we do for the Church names unless we model generic independents.

[Anonymous]

That must be the problem with why there are no classic McDonald's golden arches, no Tastee Freeze, no real A&W stands, no Dairy Queens or Bob's or Shoney's resturants, no IHOP or Waffle Houses, Uncle John's Pancake House, Stans Drive Ins, Wenerschinzles (SP?) hot dog stands, Circle K, Safeway markets, Rexall Drugs, Thrifty Drug stores, Ralphs, Albertsons, Lucky Super Markets, Signal Gasoline, Richfield Gas Stations, Goodyear Tires, and Sears Roebuck and Company warehouse or catalog stores. lots of things missing...