UP and lawsuits

Correction: that should be "chickens***"

In message , Jon Miller writes

I read in Railroad Modeller that UP are also taking a model manufacturer to court. Surely the fact that someone wants to model their locos is a

*good* thing as this is giving UP some free advertising. For those of us outside the US a model (or a video) is often the first time that we come across different railroads.

Where will it end? Does it mean that if I stand beside a railroad and take photos I am liable to the RR for their 'intelectual rights' ?

Anyone who knows about this case (or even thinks they know) care to enlighten those of living outside the US.

Mike Hughes wrote: [...]

A trademark has real monetary value ***, and its owner does not want its value diluted by similar trademarks in similar or competing businesses. The courts have upheld the principle that a trademark infringes on another trademark owner's rights if used in such a way as to "cause confusion in the mind of the buyer" (or words to that effect.) Thus, using a trademark similar to UP's in the transportation business would be clear case of infringement. For example. suppose you founded a trucking company, and called it Utica Pacific Transport. Sofar, not much of problem. But suppose you mark your trucks using UP's red lettering on a yellow background to spell out "Utica Pacific": you would be in trouble. If you used "UP" in red on a yellow background, you'd be in real trouble.

Whether a model or toy train actually infringes on UP's trademarks is not clear. Rulings on how far trademark protection can extend beyond a company's core-business have been ambiguous. IMO, UP is going too far, since no one would confuse a toy or model train with the real thing. OTOH, with the advent of sponsored models for collectors (eg, Coca Cola, John Deere), UP's rights may well be infringed. Also, railroad companies have sponsored or produced calendars and other publications in the past. UP's explanation seems to be that they don't want cheesy or sleazy models decorated for UP, nor do they want a substandard publication showing their trains. A judge could well agree with them, if it gets that far.

Of course, maintaining trademark rights and charging licensing fees is not the same thing. UP could license its trademarks for free, and charge the costs of the paperwork to advertising. But I suspect some careerist s.o.b. somewhere deep in the bowels of the organisation saw an opportunity to rise above the s**t in which he wallowed, and proposed licensing as a moneymaker. Now UP is stuck with paying his salary and the costs of his office staff....

***Footnote: Here in Canada, Nestle has dropped the original makers' names on its chocolate bars, but still marks them Mars, Coffee Crisp, KitKat, etc. On some specialty items intended for niche markets, it's even kept the original maker's name, eg, Cadbury's Dairy Box, sold AFAIK only at Christmastime. Good illustration of the value of a trademark, I think.

HTH

Mike Hughes wrote: [...]

A trademark has real monetary value ***, and its owner does not want its value diluted by similar trademarks in similar or competing businesses. The courts have upheld the principle that a trademark infringes on another trademark owner's rights if used in such a way as to "cause confusion in the mind of the buyer" (or words to that effect.) Thus, using a trademark similar to UP's in the transportation business would be clear case of infringement. For example. suppose you founded a trucking company, and called it Utica Pacific Transport. Sofar, not much of problem. But suppose you mark your trucks using UP's red lettering on a yellow background to spell out "Utica Pacific": you would be in trouble. If you used "UP" in red on a yellow background, you'd be in real trouble.

Whether a model or toy train actually infringes on UP's trademarks is not clear. Rulings on how far trademark protection can extend beyond a company's core-business have been ambiguous. IMO, UP is going too far, since no one would confuse a toy or model train with the real thing. OTOH, with the advent of sponsored models for collectors (eg, Coca Cola, John Deere), UP's rights may well be infringed. Also, railroad companies have sponsored or produced calendars and other publications in the past. UP's explanation seems to be that they don't want cheesy or sleazy models decorated for UP, nor do they want a substandard publication showing their trains. A judge could well agree with them, if it gets that far.

Of course, maintaining trademark rights and charging licensing fees is not the same thing. UP could license its trademarks for free, and charge the costs of the paperwork to advertising. But I suspect some careerist s.o.b. somewhere deep in the bowels of the organisation saw an opportunity to rise above the s**t in which he wallowed, and proposed licensing as a moneymaker. Now UP is stuck with paying his salary and the costs of his office staff....

***Footnote: Here in Canada, Nestle has dropped the original makers' names on its chocolate bars, but still marks them Mars, Coffee Crisp, KitKat, etc. On some specialty items intended for niche markets, it's even kept the original maker's name, eg, Cadbury's Dairy Box, sold AFAIK only at Christmastime. Good illustration of the value of a trademark, I think. Good chocolate bars, too :.)

HTH

Especially if you call it "UNION PACIFIC CALENDAR 2006."

Union Pacific Railroad has U.S. trademark #2666974 for "UNION PACIFIC." They also sell calendars, and they also license their trademark. Nils Huxtable is selling a calendar called "UNION PACIFIC CALENDAR 2006," a calendar which the Union Pacific has no quality control on. You darn right a judge could well agree with Union Pacific.

No... you'd own the copyright to the photos you took.

In message , Mark Mathu writes

I can see that in such a case the use of the UP name would tend to imply that the calendar had been authorised or approved by them, but how can this be the same for a model loco produced by a manufacturer who is also producing nearly identical models with a different livery. What if someone scratch builds a loco, paints in UP colours and later sells it on? Sounds like a case of some busy body trying to make a name for themselves.

I could of course be completely wrong as I don't know the exact case being put forward. Is there anywhere on the web where I can find out more - or can someone post more info here.

For the particular case we are discussing, here are the UP's lawsuit and Nils Huxtable's reply:

OK, I read it all, and IMO Huxtable has a case. IMO, a jury would acquit him and find for him in the counterclaim. No telling what an appeal court would find, though. No matter what, UP looks bad, because they are beating up on a photographer whose products UP, and staff of UP, have purchased many times in the past, without ever a murmur of trademark infringement, etc.

And my hunch was right: UP is stuck with paying the costs of a "director of corporate relations" by name of Brenda. Heh heh.

The following from the defense which I read to mean Lionel for example has been using this for 75 years, just one example.

------------------------------------------ Fifth Affirmative Defense

103. Plaintiff has abandoned the ?Union Pacific ?word mark,and all or part of one or more of the marks pleaded in the Complaint ,by permitting the uncontrolled use thereof by numerous third parties over many years, and, through naked licensing.

-----------------

The follow mean in my non lawyer thoughts that Union Pacific is simply two words without any particular reason to make it distinctive.

---------------------- Sixth Affirmative Defense

104. Plaintiff ?s ?Union Pacific ? word mark, and all or part of one or more of the marks pleaded in the Complaint , are not inherently distinctive, and are not entitled to protection against dilution under 15 U.S.C. § 1125(c).

---------------------------------------------------

and it goes on and on

-------------------------- Seventh Affirmative Defense

106. Plaintiff is not entitled to injunctive or monetary relief under any circumstances for Defendant ?s activities within Canada, or in other countries abroad, where Plaintiff does not hold trademark rights, and/or which are not subject to the jurisdiction of this Court.

------------------------

What is naked licensing?

The fifteen instances of "defendant lacks knowledge or information sufficient to form a belief as to the truth of the allegations" sure doesn't help his case, though.

What hunch was that? Brenda Mainwaring's name is all over the UPRR web site and has been mentioned in rec.models.railroad several times in the past.

Huuuh ?

You don' know what you are talking about.

In an Answer, a defendant uses that phrasing to mean "Well, plaintiff you claim 'X' is fact; now prove it."

-- Jim McLaughlin

Reply address is deliberately munged. If you really need to reply directly, try: jimdotmclaughlinatcomcastdotcom

Why wouldn't Huxtable use that reply to all of the claims?

Ahhh... it sound like they were licensing UNION PACIFIC but not actually following through to insure that it was being used by outside parties in a way that wasn't harmful; in effect they weren't protecting the trademark against misuse -- and therefore could be considered as having quit using the trademark.