Union Pacific vs MTH trademark infringement summary

[conagher]

Here's a link to a good summary of what's going on in the lawsuit. Although I am not an MTH fan, I have to salute MTH owner Mike Wolf for having the guts to pursue this. It would seem MTH makes some good points. The outcome will definitely have an affect on all scales. Enjoy....

Erol's summery on the UP/MTH Lawsuit - Topic Powered by eve community

 

[METRO]

Yea, I don't get that, how does UP figure that MTH was illegally using their logos for that many years when they were just filed as protected a couple years ago?

Also, I believe the only other railroads to do this licensing thing are CSX and Amtrak (could be wrong there of course) how do they treat their logos?

Cheers!
~METRO

[Anonymous]

We should bring back dueling for the lawyers, that would result in a good outcome

[rrebell]

Also UP wanted a licence for all their fallen flags, wanted atlas to do a custom job on their 36' reefers in pacific fruit express, says up front that they want fee as this is a fallen flag, you go to their applicaton and its not listed so went to USPTO to look it up and found no one has it right now and the last one to have it was not UP but a hobby shop owner to make custom madel train cars, now I may not have a law degree but I think they lost that one!!!!!!!!!!

[Dave Vollmer]

Wow, my opinion of MTH just took a turn for the better!  Go get 'em, Mike!

I'm just waiting for NS to decide it owns the Pennsy Keystone and I get sued for my avatar...

[dude2]

Why does MTH think they can get by without paying the fee.  All mfg;s have been doint this for years.

If MTH thinks it is rich enough to fight the UP railroad they will be bankrupt before the fight is done.  You do not take on the richest railroad in the US unless you have mega bucks.

/Would't it just be cheaper to pay the fee and get on with businness.

Mth must like to pay lawyer fees as they are always in some sort of lawsuit.

How much have the waisted on lawyer fees that could have gone into making trains

more reliable and not quit as soon as you get them. 

[Charlie]

The railroads have to periodically register their trademarks as the time frame for trademarks aren't the same as for copyrights which is life plus 80yrs. So, if you want to get technical about it, the UP can try to claim that MTH violated the trademarks on it's images as long as the UP can show that the infringement happened while the images/logos where in an active state of trademark. I can remember my dad telling me stories of the ATSF enforcing its policies on this issue w/the manufactures.

Ch

[dave hikel]

I'd encourage you to read the link.  The author, Erol Gurcan aka Locolawyer, has been doing a great job of following all the lawsuits in the train hobby.  He's very good at presenting "just the fact mam."

Both MTH and Lionel are holding out against paying UP.  Since Lionel is in chapter 11 bankruptcy their case isn't moving in the courts, but MTH v UP is.  Both companies are making the same basic arguments.  One fact backing up their arguments is that UP has NOT charged companies to use their logos in the past. I can't remember which model it was, but UP actually payed Lionel to model one of their newer locomotives back in the 40's or 50's.

[mlehman]

UP and MTH suing each other?

That's about at the level of tying two mean cats' tails together and tossing them over a clothesline.

Maybe the rest of us will get some peace while they're clawing at each other.
Mike Lehman
Urbana, IL

[cjcrescent]

Why does MTH think they can get by without paying the fee.  All mfg;s have been doint this for years.

The liscening (sp) has only been in place since 2002 and a lot of manufacturers didn't sign up until 2003 and at least one (Kadee), still haven't. So the all mfgs statement isn't entirely correct.

Read the details of the case via the link.

I don't like MTH due to their business ethics and solving problems with a "lawsuit" mentality. But I must say MTH has presented a very valid argument and IF they win it could solve some of the manufacturers headaches.

[One Track Mind]

So after reading the article that was linked to this thread I see that what I heard may be true after all: that Union Pacific is generously donating the proceeds (ALL the proceeds???) from the trademark licensing fees to the maintenance of the steam program.

Nice stab at overcoming your public relations disaster Omaha, but we're still chuckling over that one.

I can laugh about it now that a little time has passed, but if I really stop and think how much trouble and lost income Union Pacific has cost the hobby shops then I'll get all riled up again and quit chuckling. Hey, you can't spell "riled up" without UP either.

I know, I know, they are a big business and they don't give a rat's behind about the rest of us. Doesn't mean I can't vent a little.

[modelmaker51]

A lot of the smaller manufacturers have stopped producing UP models because of this new policy of UPs. Some have even givin up the hobby business altogether. The smaller companies can't afford the fees (which can add  as much as $10 to 20$ to the retail price of a model that already costs $30 to $40. The larger manufacturers can spread it out and just raise their prices overal a few points.

In addition UP wants fees for all the fallen flags as well, which by law their not entitled to, but they know these little mom and pop businesses (which most hobby manufacturers are) can't afford to fight them.

This is all about the big bully on the block stealing your lunch money! This hobby has been giving these guys free advertising for over 50 years.

What we should be doing is writing letters to UP and our congressmen. Or tell Atlas, Athearn, Kato etc to stop producing those models and boycot them, (yeah, in  an ideal world).

[AntonioFP45]

No flames intended......please correct me if I'm wrong guys, but from what I've read before regarding the trademark licensing.....would not model railroad manufacturers wind up paying pennies or nickels on the dollar?  CSX is already doing this....but strangely no one has been making a big stink about it. 

Yes, UP's public relations image is deplorable but it seems that the uproar is over something that sports teams and other corporations have been doing for a couple of decades now. 

Realistically, some of the modelers that may be upset about this issue have no problem paying $80 for an NFL jacket.  Also paying $15 for a $1 baseball cap that was made in Mexico with their favorite team logo on it from a sports store.

 

 

[Paul3]

Antonio,
Remember that UP wants a percentage based not on MSRP but on wholesale cost.  For example, say there is something UP that normally costs $100.  Well, the retailer probably paid $60 for it from Walthers/Horizon/whoever (using general retail industry mark ups, etc....not counting volume sales, special deals, blow outs, etc.).  In turn Walthers/Horizon/whoever probably paid the manufacturer $20 for it (as you can see, most of our money goes to the suppliers, not the people who actually make anything).  This probably cost the manufacturer around $10-$12 to make (including shipping costs, raw materials cost, R&D, the box, etc.).  Again, not using any "real" info, just in general.

Now, UP comes in and demands, say, a $1 "UP tax" on the wholesale cost, which as outlined above would be $20 + $1.

This means that Walthers/Horizon/whoever buys it from the manufacturer for $21, then turns around and sells it to a retailer for $62.50.  The retailer then turns around and sells it to you for $105.

See how that $1 "UP tax" now costs you $5?  Sure, the manufacturer could "eat" the dollar, but that's not fair to them as, you can see, they aren't exactly making a mint here in the first place.

CSX, on the other hand, IIRC, demands only a flat fee to use their logos, does not demand a production model to judge a product's worthiness, does not require financial disclosures, etc.  UP does, and are by far the worst to deal with according to a source or two I know in the business.

The problem with bringing in sports teams into this discussion is that the NFL, MLB, NCAA, etc. has "always" enforced their "brand".  UP has not done so for 100 years.

Also, there is some question as to whether or not models are the same as representative art.  For example, if I were to take a picture of a UP engine from a public area and sell it, that's legal.  But if I were to build a model of it and sell it, that's not?  The only difference is the medium.

Remember, this has yet to actually hit any US court, so there is no way to tell, as of yet, what will happen.

Paul A. Cutler III
*************
Weather Or No Go New Haven
*************

[ericboone]

    I've learned a few basics about trademarks from my wife.  (She is studying to take the patent bar from the United States Patent and Trademark Office.) 
    The Union Pacific probably has a case for its currently used logos and trademarks, although there are several potential holes.  The Union Pacific has failed to use its trademarks properly.  The USPTO requires that a trademark be marked with a "TM" and a registered trademark with a circled "R".  The UP has started marking their recently registered marks with the "R" as evidenced by their web page, but I've never seen the "TM" on their locomotives or rollingstock.  Given the past history of the UP paying Lionel to use their logos and the decades of implied approval by not defending their trademark, the UP may have lost its rights, at least when it comes to model railroad products.  That said, the UP will probably prevail with their case for their current logos and registered trademarks.  Note that just because several of their trademarks were just recently registered, that does not mean that they are not enforceable or protected.  Registering them just makes enforcement easier.  By law, trademarks must be shown in use as part of the registration package.
   I believe the Union Pacific's case is very weak for their fallen flags.  Trademark rights, registered or not, can be kept forever, but they must continue to be used.  In the case of fallen flag railroad trademarks, the railroads quit using the logos and thus have probably lost the right to claim them as protected for their own use.  I believe the model railroad industry will prevail regarding fallen flag trademarks.

[AntonioFP45]

Thanks Paul,

I have a better understanding of the situation.  Seems though that lawyers on both sides are going to have fun with this one.

Peace.

[claycts]

So this is what is holding up the Genesis Big Boy and Lawsuit that MTH and UP are fighting over has Atherns Worried? Or have they paid their pound of flesh?

Isn't this the same guy MTH that has the EMF deal for the DCC?

[Bill H.]

To me, I see this whole affair as extreme silliness.

Suppose UP wins and sends a battalion of inspectors around the world looking for UP branded products on individual layouts, some of which may be 50+ years old. Will they then demand payment from the layout owner?

Perhaps a bit of modification to such equipment is in order?

Onion Pacific

Union Pacifico

or some such...

[modelmaker51]

To me, I see this whole affair as extreme silliness.

Suppose UP wins and sends a battalion of inspectors around the world looking for UP branded products on individual layouts, some of which may be 50+ years old. Will they then demand payment from the layout owner?

Perhaps a bit of modification to such equipment is in order?

Onion Pacific

Union Pacifico

or some such...

This only pertains to currently produced (and future) merchandise and it's the producers' responsibility to get the permissions and pay the fees, not the end user. You're safe! Even if you're decaling your own stuff, it would be the decal producer's responsibility. Again, you're safe!

[johncolley]

The image damage done to Uniquely Pathetic by their own #*!!^&&* lawyers is incredible! Can't the people at the top see what's happenning and fire the $#%%&**! lawyers for their mindless stupidity? As we used to say," find an empty warehouse, give 'em a 1 inch brush and have them paint the ceiling!" jc5729

[Anonymous]

    I've learned a few basics about trademarks from my wife.  (She is studying to take the patent bar from the United States Patent and Trademark Office.) 
    The Union Pacific probably has a case for its currently used logos and trademarks, although there are several potential holes.  The Union Pacific has failed to use its trademarks properly.  The USPTO requires that a trademark be marked with a "TM" and a registered trademark with a circled "R".  The UP has started marking their recently registered marks with the "R" as evidenced by their web page, but I've never seen the "TM" on their locomotives or rollingstock.  Given the past history of the UP paying Lionel to use their logos and the decades of implied approval by not defending their trademark, the UP may have lost its rights, at least when it comes to model railroad products.  That said, the UP will probably prevail with their case for their current logos and registered trademarks.  Note that just because several of their trademarks were just recently registered, that does not mean that they are not enforceable or protected.  Registering them just makes enforcement easier.  By law, trademarks must be shown in use as part of the registration package.
   I believe the Union Pacific's case is very weak for their fallen flags.  Trademark rights, registered or not, can be kept forever, but they must continue to be used.  In the case of fallen flag railroad trademarks, the railroads quit using the logos and thus have probably lost the right to claim them as protected for their own use.  I believe the model railroad industry will prevail regarding fallen flag trademarks.

^^^^^^what he said.  US Airways has given the names PSA, Piedmont and Allegheny to their regional carriers and have painted their jets in the color schemes just to keep the trademarks from going Public Domain.

As for MMR's being upset about this, I doubt UP cares.  We are not their customers.  Their customers are the ones who put freight in their cars.  And to keep those customers happy they will do anything to get the cost low.  So, if they can get money out of Bachmann, Kato, BLI et al. to lower there cost to their real customer they will. 

Do I think it is costing them more to pursue this than they will make???  Yes.

[dinwitty]

Here's a link to a good summary of what's going on in the lawsuit. Although I am not an MTH fan, I have to salute MTH owner Mike Wolf for having the guts to pursue this. It would seem MTH makes some good points. The outcome will definitely have an affect on all scales. Enjoy....

Erol's summery on the UP/MTH Lawsuit - Topic Powered by eve community

 

 

you know, the best evidence I can think of is to take into court some old tinplate train with the UP logo's on it and ask UP...

"Did you ever ask for licensing fees placed on this model train?

Watch them melt.

 

What UP is doing is practically a form of Blackmailing.