Concerning the latest hoopla over UP wanting control over logos of former properties absorbed by merger. Includes comments by UP employees.

http://www.ngdiscussion.net/cgi-bin/NGDFcook.pl?read=37992
ryarger@rypn.org

>As a general rule I’ve heard from attorneys in the past that with regard to certain intellectual property (IP) rights- the operative principle is “use it or lose it” and that failing to aggressively protect a trademark, servicemark or other IP is tantamount to letting it fly in the breeze of the public domain.

On the other hand, my understanding was that the rights inherent in such IPÂ’s was that they were somewhat restricted; that is they were protected in the context of competition in the same arena.

Of course this was before the wild expansion of IP laws in recent years-whether through the creative edicts of the courts or legislation that was blatantly designed to protect specific individual (special) interests such as when copyrights were extended by Congress a while back in anticipation of the expiration of certain Disney IP's (the Â’28 Steamboat Willie shorts)

In this vein, I ask the legally knowledgable:

Apart from modelers trying accurately portray the original: Is the owner of former UP locomotives or rolling stock-either a museum displaying the property statically (e.g. any 4000) or a tourist/heritage operator (is the 618 in UP regalia @ Heber?) engaged in a form of commerce that is in competition with the UP? Is preserving anything with a still existing name or herald an IP infringement?

If UP has not asserted its presumed rights over the IP from predecessors how does one determine when such rights has become public domain?



Superheater@rrmail.com

> Concerning the latest hoopla over UP wanting
> control over logos of former properties
> absorbed by merger. Includes comments by UP
> employees.

The discussion thread mentions a UP letter sent to non-profit railroad museums regarding this issue. Apparently, this letter differs from a similar letter sent to "for-profit" modeling ventures.

Is anyone willing to share the contents of the museum letter?

A friend posed an interesitng thought to me today. What if UPRR said that all the royalty money collected would be put into the UPRR steam program?

Wouldn't happen but interesting anyways.

Joshua

Reportedly, Time-Warner or a division of that company that is the old Warner Brothers, is going after Tourist Railroads that are using the name "Polar Express" for certain special wintertime operations.

Unlike UP's licensing fees, which are small change, these guys demand a 5-digit up-front fee, then a hefty percentage of all gross sales.

> Reportedly, Time-Warner or a division of
> that company that is the old Warner
> Brothers, is going after Tourist Railroads
> that are using the name "Polar
> Express" for certain special wintertime
> operations.

> Unlike UP's licensing fees, which are small
> change, these guys demand a 5-digit up-front
> fee, then a hefty percentage of all gross
> sales.

Is that any different than "Thomas the Tank Engine?"


K4s1361@hotmail.com

This is because of the upcoming movie of course.

Joshua

I read most of the discussion --- and from what I can gather the UP also wants licensing revenue from any of the old roads logos that merged into their system. Is that correct? C'mon, let the old roads rest in peace!!

If I remember correctly, Guilford has been rather protective of their logos, including the intertwined B&M.

Rob

On its face, there's nothing wrong with what UP is doing. What has been odd (and oddly unremarked) is the percentage model companies are adding to UP models. Seems a bit higher than UP's "tax." zgouging? Oh, never.

Anyway, the reality is that you can't tale what isn't yous. Harry Potter, Thomas, Polar Express, the Wanderer... these are all creations of the creative community.

There shouldn't be any outrage expressed at people seeking to make a buck on what they own/create, nor should anyone be surprised if those same folks sue you for taking thier intellectual property without permission.

That's capitalism, folks. Live it. Breath it. It is what it is.

Of course, if enough people tell WB to stick it in their projector, then the price will drop for such things.

That too, is capitalism.

The model train board have been going nuts with UP flames. Truth is, I can't believe railroads let us get away with this very often.

UP isn't acting out of some new concern, either. For those of you who rock a little harder than most, you might recall a video from Minuteman bassist Mike Watt that had him at the throttle (and in violation of many things) of a preserved UP Centennial. UP acted very quickly to have their name digitally removed (via lawyers). In my mind, they should have had the whole thing put back in the can, as that yellow/red/gray is unmistakable.

It would be nice to see UP do this for a nominal fee, but the adt of doing it... I cannot argue with.

So, what railroads have asked you not to put their logo on preserved equipment?

Rob

Here are some quotes from the non-profit letter and application.

"We understand that the intent of your organization is to promote railroads and we don not wish to disrupt that mission. There is no fee associated with normal non-profit use of Union Pacific trademarks, which generally would include publications, sale of gift shop items acquired from licensed manufacturers, and display of Union Pacific-branded equipment. Moreover, we have offered licensed vendors the opportunity to sell royalty-free products to licensed non-profit organizations. Please note that only licensed non-profit organizations qualify for this exemption."

"There is no fee for licensed non-profit use of Union Pacific logos or names, but ALL uses must be approved in advance. Non -profit organizations may distribute Union Pacific-licensed items only though on-sit fits shop, Internet-based gift shop or to organization members. Distribution beyond these categories requires specific approval from Union Pacific and may incur a use fee."

The questions asked are merchandise based, and include whether your products are lead free, do you carry product liability insurance, and whether you maintain inventory. They also ask what product licenses you hold, and for how long, and ask for copies of catalogs and photos of products.

The check boxes for which logos you use include 4 variation on UP logos and a single box for "constituent railroad(s)"

All in all what they are asking for is reasonable and proper.

Randy Hees

> The discussion thread mentions a UP letter
> sent to non-profit railroad museums
> regarding this issue. Apparently, this
> letter differs from a similar letter sent to
> "for-profit" modeling ventures.

> Is anyone willing to share the contents of
> the museum letter?


hees@ix.netcom.com

> Is that any different than "Thomas the
> Tank Engine?"

Yes, the Thomas people just get a straight percentage of the gate. No up-front fees. Of course, they get their license fees from the manufacturers of the merchandise that is sold.

BN

> Yes, the Thomas people just get a straight
> percentage of the gate. No up-front fees.

There is a $2000 up front non-refundable fee. AN a 9% royalty on all Thomas merchandise.

wyld@sbcglobal.net

> So, what railroads have asked you not to put
> their logo on preserved equipment?

> Rob

When a real live working railroad donates a locomotive to a museum does it come with a license to keep it in the corporate paint job ????


lamontdc@adelphia.net

> On the other hand, my understanding was that
> the rights inherent in such IPÂ’s was that
> they were somewhat restricted; that is they
> were protected in the context of competition
> in the same arena.

Here's the listing for Trademark Classes:

http://www.uspto.gov/web/offices/tac/tm ... ication018

In essence, yes, one entity can hold the trademark "Excelsior" in Class 010, Medical Apparatus, while another holds it in Class 027, Floor Coverings, as there is no practical possibility of "confusingly similar" product overlap.

However, one would have a very hard time trademarking the Nike Swoosh in a class that Nike's lawyers haven't already covered - the intent (to profit from someone else's brand) would be all too obvious. And using a registered graphic (for example, the UP Shield) in a class that UP hasn't registered is NOT "Fair Use."

> Apart from modelers trying accurately
> portray the original: Is the owner of former
> UP locomotives or rolling stock-either a
> museum displaying the property statically
> (e.g. any 4000) or a tourist/heritage
> operator (is the 618 in UP regalia @ Heber?)
> engaged in a form of commerce that is in
> competition with the UP? Is preserving
> anything with a still existing name or
> herald an IP infringement?

No. Unless something has changed very recently.

I discussed this with John Rimmasch at The Heber Valley once. My recollection is that UP had no objection to no. 618 being lettered "Union Pacific," but because their UP caboose was in service, they did ask that it not be lettered for UP.

In a similar vein, the C&TS asked for, and got, permission to letter ex-D&RGW locos with the "flying Rio Grande" herald. UP did not ask for any payment, or place any conditions on the use that we didn't ask for. (We specified only non-commercial use - lettering equipment and structures.)

> If UP has not asserted its presumed rights
> over the IP from predecessors how does one
> determine when such rights has become public
> domain?

"Public Domain" and "Fair Use" are wonderful phrases for people who want to justify their own actions. (Sorry - felt a rant coming on. Back to the subject.)

Fair Use applies to Copyright - the ability to, e.g., make a cassette copy of an LP (excuse me, "rip a CD") for your own use or quote in a review or a scholarly journal. It does not apply to Trademarks in the same way, if at all.

There are two types of trademarks - graphics (logos) which may include distinctive or even common words, and text (the word itself). Once a trademark is registered, it is the property of the registrant unless it expires or is assigned to someone else. It becomes "Public Domain" only if it expires.

The two celebrated cases of trademarks lapsing because the owner didn't enforce them are "Xerox" and "Aspirin." In both cases what was lost was the registration of the TEXT, not a graphic of that word. I'm not aware of any instance where a graphic has become public domain except for when registration expired.

UP has not actually filed to trademark the two words "Union Pacific." ALL UP tradmarks that I looked at were graphics.

As to predecessor railroads, some of them filed for tradmarks on some of their logos. You can see a complete list of the ones UP is concerned with at the link below, along with the terms of their various agreements.

One other comment on predecessor logos: it is not necessary that they represent an existing company providing railroad services. A logo is property. There is a shoe company that owns two "Cumbres & Toltec" logos, complete with representation of a steam locomotive, in the Shoes class. (I don't see any of the UP bashers screaming foul on that one.)

UP's program is described at the web link below. Read the agreements, look at what UP is doing, and compare it to the hysteria and rhetoric of some in the model and railroadiana community. Draw your own conclusions.

JAC

Union Pacific Licensing Program