UP Sues Athearn and Lionel over Trademark infringement

[Camelback]

I am wondering if the question over who has the rights to the molds refers to models of steam engines which were built by Union Pacific or contracted specifically for UP. I think it is obvious that they have no claim over the molds for an EMD or GE diesel. Correct me if I am wrong, but weren't certain steam locos either built by a railroad or built specifically for a railroad by a manufacturer according to the railroad's specs?

My guess is that UP has its sights on the five hundred dollar Challengers, not the eighty dollar geeps.

[jwb1323]

There are two issues here, as I understand it. My wife is an attorney, although she doesn't specialize in trademark issues -- but she says you must protect a trademark. Remember that from the 1940s onward, companies have been building models of Challengers, from Lobaugh and Bowser through the brass importers and AHM/Rivarossi, down now to Lionel and Athearn. UP allowed this for 60 years or so, and (if they feel the Challenger is somehow their proprietary design) are all of a sudden saying NOW you can't copy it. This won't fly legally. The same applies to UP paint schemes. Varney and others were painting HO diesels in UP paint from about 1950 onward. 50+ years later, UP, after tolerating this all this time, says you must pay.

This isn't the same as, say, Deere or other tractor companies, who always licensed scale models of their tractors -- often they'd give them to tractor dealers who'd give buyers of the big tractor a scale model as a deal-sweetener. The model was always the proprietary property of the tractor manufacturer.

The other legal issue that I cited above is from another attorney quoted on the Altamont forum: trademark infringement only occurs if I have a railroad -- let's call it the BNSF -- and I decide I can get more business if I call my railroad the Union Pacific and start using its colors and logos. Then I've caused confusion with the real UP, and cause the real UP to lose money. This doesn't apply if the only thing I can ship in my model UP equipment is Woodland Scenics gravel.

[Engineer Spike]

Is there anyone who is in traffic management out there? Maybe you could start a boycott of UP. I'm sure that BNSF, CP, CN or many of the regionals would appreciate your business!

[JDFX]

8.) ANYONE, who sits on this forum, who defends U.P.'s trademark licensing agreement, as it stands now, is either:

A.) Ill-informed about what the contract says, or

B.) is a Self-Hating model railroader.

And how do comments like this make you any different than the "Super Modelers"? Hows this for a comment....

ANYONE who sits on this forum, who is against U.P.'s trademark licensing agrement, as it stands now, is either:

A.) One of the parties that is producing said unlicensed goods, or

B.) is a over-reactionary alarmist.

C.) Wouldnt care if their name and picture was used to sell other people's or company's products without renumeration.

I will conceed that the fallen flags being included in this is greed.

You proved my point... In your haste to quickly disparrage me on the board, as you've tried to do in the past, you proved the fact that your ill-informed about what the Union Pacific Licensing Agreement says.

I find it interesting that we agree that U.P. has the right to protect its current trademarks of "Union Pacific" but not its fallen flags, yet you still want to support what U.P. is doing.

I said "As the contract stands now". Its as clear as black and white, you cannot support only part of the current contract. You either support the whole document, or none of it. Suggesting that I might be an "Alarmist" (using your words) because I will not support a contract that is clearly corporate greed is irrational.

I'll suggest you work on your reading and comprehension skills first, as you seem to have a problem understanding what I type, then I suggest getting your hands on what the licensing agreement actually says.

I think you'll be quite suprised yourself.

And one more thing, please stop following me around the boards, trying to discredit everything I say, its getting old now.

[tocfan]

Let me throw a little food for thought out for everyone. What if the UP came out with a press release stating the revenue for this licensing would go to the historic locomotive program. Would your attitude toward this be any different. I think if they stated this from the beginning most of us would have a completely different attitude toward this, in fact we may go out and buy more UP equipment. Don't take this the wrong way, I disagree with this this and think they will lose in court but all I'm saying is that if the mgmt there had given this to some savvy PR people first, and they would have stated that on the front end, our perception would probably have been very different.

Mike Fleming

[JDFX]

Mike,

You deffinately bring up an interesting point.

Your probably right that more people would be out rushing to buy equipment, however I still stand by my line of thinking that as long as it was the U.P. shield, and its trade-phrases "we will deliver", etc, then fine.

I do not nor never will, under any circumstances, support the idea that

A.) U.P. can claim royalties on trademarks from fallen flag railroads

and

B.) Do not support the idea that U.P. holds right to all molds, decals, prints, pads, etc.

Regardless of what the legal eagles say is legal or not, thats what the contract says, if you sign it, you agree to it.

I also find it interesting that if you email Union Pacific about the issue, they all send a pre-written form letter about it. I sent three emails to them, from 3 different addresses, (and 3 different names) and I got the same email in return 3 times. If you ask them to elaborate on their "form letter" further, they will not email you back and discuss it.

[WANF-11--->Chaser]

You proved my point... In your haste to quickly disparrage me on the board, as you've tried to do in the past, you proved the fact that your ill-informed about what the Union Pacific Licensing Agreement says.

I find it interesting that we agree that U.P. has the right to protect its current trademarks of "Union Pacific" but not its fallen flags, yet you still want to support what U.P. is doing.

I said "As the contract stands now". Its as clear as black and white, you cannot support only part of the current contract. You either support the whole document, or none of it. Suggesting that I might be an "Alarmist" (using your words) because I will not support a contract that is clearly corporate greed is irrational.

I'll suggest you work on your reading and comprehension skills first, as you seem to have a problem understanding what I type, then I suggest getting your hands on what the licensing agreement actually says.

I think you'll be quite suprised yourself.

And one more thing, please stop following me around the boards, trying to discredit everything I say, its getting old now.

Where have I tried to "disparage" you on this board? As I recall you're the one that fired the first volley by calling anyone that disagrees with you a using YOUR words "self hating model railroader". All I have done is to state my opinion, the reasoning for that opinion and return fire for attacks on my character and that of anyone else that disagrees with the great JDFX.

Seems to me that you're the one that cant handle the spirit of message boards - open communication, by attacking someone for having differing opinions.

As for your comment about my reading and comprehension skills, the same goes for you too.

You should get out of that "everything or nothing" or "your with us or against us" view on things. Yes it is possible to not entirely agree or disagree on an issue as it stands. And contrary to the "black and white" definition you gave the UP contract, nothing is ever defined in black and white these days only a different shade of grey.

By your reasoning we should throw away the entire US Constitution because we might disagree with the 9th ammendment (speaking of disparagement) or any other ammendment we might not like.

And I'm sorry if you think I sit around all day plotting to "disparage" JDFX, LOL, like my only goal is to trip you up every time you open your big mouth.

Think before you speak, YOU might be surprised.

[N-railroader]

As far as I'm concerned, Lionel might not live up to sign anything
anymore in regards of UP license fees.
I guess you all read about the 40M$ judgement against LIONEL in favour
of MTH for manufacturing after stolen blue prints?
If this is holding up in appeals court, then GOOD NIGHT Lionel.

[atsfman]

Let me throw a little food for thought out for everyone. What if the UP came out with a press release stating the revenue for this licensing would go to the historic locomotive program. Would your attitude toward this be any different. I think if they stated this from the beginning most of us would have a completely different attitude toward this, in fact we may go out and buy more UP equipment. Don't take this the wrong way, I disagree with this this and think they will lose in court but all I'm saying is that if the mgmt there had given this to some savvy PR people first, and they would have stated that on the front end, our perception would probably have been very different.

Mike Fleming

I think the answer for me would be for something on the order of " I don't ever get to see real steam on any railroad, I am not particularily interested in steam engines, I am a modeler more than a railfan, and so I would not consider it worth the extra money.

Bob

[walt]

Like it or not, UP has the right to do whatever it wants to do ( license, not license, give it away, etc) with its current logo and color patterns. This is its corporate property and will be protected by the courts. The case relating to the fallen flags is much less certain--- here it will probably be necessary for UP to show that somehow it is injured by the "unauthorised" use of those images.

[Otto Vondrak]

The courts will find that UP doesnt have as much control over its logo as it thinks it does. As stated earlier, the burden to prove the case is on UP, and they have very little to stand on- you cant decide you want to control your logo after 50 or 60 years of allowing unlicensed production to go on unchallenged. I dont care if they take the licensing fee and bring back ten steam locomotives... all they are doing is giving the hobby and the industry another black eye.

-otto-

[walt]

One other thing to remember about the courts is that they are not only concerned with a decision in a particular case, they are also concerned with what effect their holding will have on decisions in future situations. In this case, for a court to rule that UP has forfeited the right to control its logo ( as long as it is a registered trademark) because of a 50 year practice of not requiring the payment of fees or royalties for its use, would be to say to all companies that they must charge a licensing fee for the use of the logo, even if at a particular time, they feel that there are valid reasons not to do so, or face the prospect of losing the protection that registering a trademark is intended to provide. I can't see any court ruling in this manner.--- And let me add, this is not to say that I agree with UP's position, because I don't, but I do believe that this case is dealing with the essence of trademark protections.

[Otto Vondrak]

You dont need to charge a licensing fee to exhibit control over your trademark... Especially with UP controlling the properties of maybe a dozen fallen flag names under its umbrella (UP, SP, DRGW, CNW, CGW, M&StL, and many more), this only adds up to greed- or bullying. Take your pick.

-otto-

[JDFX]

You do not need to charge a fee to protect your trademark...

You can license someone to use your trademark free of charge.

Most companies use a "blanket license" which, for a small fee (covers the costs of filing the paperwork, and pays that particular employee's salary) you can be an licensed user, and create an unlimited amount of product.

As for UP, if they want to charge a fee for licensing based on a "Per Piece" charge, fine. FOR U.P. Painted Models.


But as Otto said, when it comes down to all the fallen flags as well, I don't care how you slice it, its still corporate greed.

black eye on the hobby? Thats putting it lightly... Especially if U.P. wins this through out... CSX and NS are both waiting for just an opportunity to supplement their incomes as well.

Worse case scenario, PROTO-FREELANCE model trains. They can't charge royalties for unpainted models.

or

get a really good computer/printer set up, and print your own decals... UP cannot stop you from making your own.

[jockellis]

CSX has begun to charge for its logos, too, at the rate of up to 33¢ per product. I would imagine that Athearn and all the other producers of high volume models could care less what the money is going to because it takes much of the profit out of what they are doing. Funny, the well-run railroads such as Norfolk-Southern and CN don't seem to be in such a hurry to make their profit off modelers. I have worked in model railroad retail sales and can attest to the fact that some products just don't sell when the price goes up so Athearn and other low cost model producers must deduct that from their profit.
Jock Ellis