Why UP is being licensing it's trademarks

[Pruitt]

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!

Mark B.

[brothaslide]

This is the best informed response to this topic I have read yet.

Thanks Brunton

[88gta350]

It's nice to hear some well-informed facts being put out there instead of knee-jerk bashing and threats.

[Anonymous]

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.

Just my .02

[Anonymous]

Mark--

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.

Common sense and business economics suggest the parties should settle this case quickly and quietly. But when it comes to intellectual property matters, ego often trumps self-interest. So we can expect additional ostentatious and counterintuitive displays before the dust settles.

--John

[Anonymous]

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.

Jay

[IRONROOSTER]

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

[Anonymous]

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]

[Anonymous]

QUOTE: Originally posted by NTDN

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.

Jay

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.

[johncolley]

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?

[Big_Boy_4005]

QUOTE: Originally posted by Brunton

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!

Mark B.

This is all well and good, but if it isn't at least in part about the money, why would Lionel and Athearn balk at repeated attempts by UP to reach an agreement? If it was simply about having a license to satisfy the new laws, it could be settled for a token amount. This has not happened. This also does not explain UP's desire to include the fallen flags in their claim.

WHAT VALUE IS A TRADEMARK TO A RAILROAD ANYWAY???? Why bother, I don't see other railroads lining up and trying to steal UP's name and reputation. I suppose someone could then come along and open up any business and take the same name, but who would want to?

This isn't the same as individual identity theft. You know, a lot of people share the same name. Try having a name like Johnson or Smith. Large corporations are hard to fake, though in some cases like Coke for example, their products are easy to copy. They do need protection, it helps consumers know what they are getting. But do railroads need this kind of protection???

I undrestand that there are not different classes for trademarks, but maybe there should be. Say you want to go into the soft drink business. Sorry, Coke and Pepsi are taken. How about Union Pacific Cola. Drink UP Cola!!! Hmmm, has posibilities, though 7Up may not like it. Of course consumers may make fun of your name. Drink it and U Pee Cola. On second thought, Union Pacific wasn't such a good name for a soft drink company. How about BNSF?

Let's face it, railroads are in a class by themselves. By taking this action, what is UP defending itself against, it has almost nothing to lose. It's place in the business world is secure.

[Anonymous]

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]

[Anonymous]

QUOTE: Originally posted by NTDN

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.

Jay

I'd love to see your source for this.

Please post a link.

[Anonymous]

QUOTE: Originally posted by ACL Fan

QUOTE: Originally posted by NTDN

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.

Jay

I'd love to see your source for this.

Please post a link.

I think he meant UP will get broken up into smaller railroads for breaking anti trust laws.

[Anonymous]

Is it possible then that the Rock Island, Katy, and others would come back ?

[88gta350]

QUOTE: Originally posted by Big_Boy_4005

WHAT VALUE IS A TRADEMARK TO A RAILROAD ANYWAY???? Why bother, I don't see other railroads lining up and trying to steal UP's name and reputation. I suppose someone could then come along and open up any business and take the same name, but who would want to?

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.

[Big_Boy_4005]

QUOTE: Originally posted by psngrtrn

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]

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.

[Big_Boy_4005]

QUOTE: Originally posted by 88gta350

QUOTE: Originally posted by Big_Boy_4005

WHAT VALUE IS A TRADEMARK TO A RAILROAD ANYWAY???? Why bother, I don't see other railroads lining up and trying to steal UP's name and reputation. I suppose someone could then come along and open up any business and take the same name, but who would want to?

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.

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 from the model manufacturers that they understand that that name belongs to the railroad. But that doesn't seem to be good enough for UP after all of these years.

The difference here is that the model manufacturers are not trying to take UP name or identity. They aren't even trying to profit from it directly. If they were, they would only make models with UP on them. That would show intent!!! The model manufacturers use UP's artwork incidentally in the process of conducting their business. They do this as a convenience for their customers.

If they wanted to, they could stop marking the trains UP and leave it to the modelers to do themselves. Problem solved!!!! Who wins if that happens?????

[Anonymous]

QUOTE: Originally posted by Oklahoma Train Nut

Is it possible then that the Rock Island, Katy, and others would come back ?

If this ever happened (I doubt it will) they'd probobly divide it into two systems and use new names.

[Anonymous]

QUOTE: Originally posted by wes454

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.

Just my .02

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.

[Anonymous]

I do not see 5 bucks as a big deal?
especially for those of you who buy brass engines at 1500.00 a pop and then have them professionally painted.
Let it go pay the price model railroading is as my wife says another man's exspensive hobby.
quit whining

[Anonymous]

QUOTE: Originally posted by unionpacific4018

I do not see 5 bucks as a big deal?
especially for those of you who buy brass engines at 1500.00 a pop and then have them professionally painted.
Let it go pay the price model railroading is as my wife says another man's exspensive hobby.
quit whining

No, 1500.00 is about $75 in UP licencing, the more money the model costs the more you pay, plus if you have 10 UP engines you pay $50.

[Anonymous]

The Scene: Way up on the something-teen floors of Union Pacific Office
building in Omaha, we overhear the conversation of a couple of
upper-middle-managers discussing current issues on the UP . . .


Voice #1 - "Did you hear what our Legal Department did today?"
Voce #2 - "No."

V1 - "They took Lionel and Athearn to Court for Trademark Infringement"
V2 - "You're kidding. With all of the other **** going on and that's all
the better they have to do?"

V1 - "Evidently"
V2 - "Why just Athearn and Lionel?"

V1 - "Sounds like they were the only ones who had balls enough not to cave
in to our new Licensing Agreement"
V2 - "So, how much is it worth?"

V1 - "Well, if you figure all of the stuff they make, it probably adds up to

a couple of hundred bucks a day."
V2 - "So while we are losing millions a day because our Dwell Time is up,
our Average Train Speed is down, we don't have enough Crews, and are
Customers are getting PO'd, our couple hundred dollars an hour Lawyers are
shaking down model railroad manufacturers for a couple hundred bucks a
day??"

V1 - "Sure. In this day, you need to look at all of your revenue streams.
All these outfits selling stuff with our logo on it. And not only our logo.

Also, the logos of all of the stuff we've acquired over the years - SP,
Rio Grande, Northwestern, MoPac. A little here, a little there, it all adds

up. It's almost as good as actually delivering cars to customers, except we

don't incur any expense while doing it. It's all profit and someone else
does all the work."
V2 - "I suppose that gives us another out with Wall Street. I see it now --

UP announces lower 2nd Quarter Earnings because Athearn and Lionel refused
to pay their Licensing Fees. Sounds to me like we need to put our Legal
Deparment to some good use, like running trains!"

V1 - "Lawyers running trains?? That's a scary thought. I don't think you'd

ever get a Lawyer to trade in a ride in his Beemer for one of them rough
riding GE's. Then, they'd probably get dirty, too. Can't have that. Hell,

letting railfans run trains would be a whole lot more productive. Actually,

that was another brainstorm that came out of meeting I was in the other day
trying to figure out this Crew Shortage thing. We are going to setup a
Fantasy Railroad Camp, where Railfans pay us $2000 a week to work for the
railroad. Now, that's a revenue generator. I bet railfans would line up
for blocks!"
V2 - "Railfans?? What about the Saftey Issues? You can't just turn
Railfans lose on the Railroad! Besides, we've spent years running them off
the property."

V1 - "Safety is only a problem when trains are moving. Since most of are
trains aren't moving these days, it isn't an issue. And when they do move,
it is slow, like a shortline on Exempt Track. Can't do much damage at that
speed."
V2 - "Hard to argue with that. I dunno. Still seems to me, we should be a
little more worried about not letting the railroad melt down again."

V1 - "We will protect our trademarks because -- WE CAN ! That's our new
motto."
V2 - "We can?? We can what?? I though it use to be We can Handle It."

V1 - "It used to be, but obviously, we couldn't. So, we went with We Can,
because it is less committal. We didn't want another PR Disaster like that
We Will Deliver fiasco a couple of years back."
V2 - "Well, I thought I heard just about everything. What's next?? Have
our Car Ordering number forward to JB Hunt??"

V1 - "Now that you mention it. . . It would save us having to make the call
ourselves"