There's lots of stuff that might make a corporation look bad, but the corporation is nonetheless not entitled to suppress. Making a model of a graffitied train is one of them.
It's just clear here that Lionel doesn't think it worth fighting UP about.
@Professor Chaos posted:There's lots of stuff that might make a corporation look bad, but the corporation is nonetheless not entitled to suppress. Making a model of a graffitied train is one of them.
It's just clear here that Lionel doesn't think it worth fighting UP about.
The corporation issued the license. That gives them the right as to how it's represented by the licensee. The UP can and likely would revoke the license if Lionel didn't comply.
I seem to recall MTH lost the license from the MTA over graffiti on a run of subway car models.
Rusty
Prof C
As has been said part of this may be that UP doesn't want to be seen as encouraging graffiti on its engines, cars, station, misc. structures. Especially in view of current events.
Your free speech may be insulting to others. Your idea of a corporate image may not be agreeable to the company.
All of what you say may be true, but it presumes that the corporation has the legal right to prevent people from making models depicting its real trains, graffitied or not. Neither copyright nor trademark law is likely to confer that right, and a manufacturer does not need a license to do what the law already permits it to do.
But as I said earlier, the manufacturer may well decide it's not worth arguing with UP about.
Copyright and trademark law does give the holder the rights to protect the integrity of their marks and how the marks are used in commerce.
That's the whole idea behind those laws.
@AlanRail posted:Copyright and trademark law does give the holder the rights to protect the integrity of their marks and how the marks are used in commerce.
That's the whole idea behind those laws.
Yes but there are limitations to the monopoly granted by the government via patents, trademarks, and copyrights. That monopoly has historically ended at art, and I’d argue that scale models are a form of art.
Ok patents have a limited monopoly. But we're not talking about patents.
Copyrights 100 years plus life of author depending on the year produced. But we're not talking about copyrights either.
as to TRADEMARKS which is the issue, trademark protections lasts forever.
@AlanRail posted:Ok patents have a limited monopoly. But we're not talking about patents.
Copyrights 100 years plus life of author depending on the year produced. But we're not talking about copyrights either.
as to TRADEMARKS which is the issue, trademark protections lasts forever.
The length of protection is irrelevant. There are times when the trademark doesn’t hold and use in artistic works is one of them. The law is definitely not settled here in The States but it is definitely changing. See the link below for a somewhat recent case.
https://www.techdirt.com/artic...irst-amendment.shtml
I’d also argue that in the graffiti cars case this is specifically where UP would have no standing under current case law per the link above. Because the model is depicting something from the real world and is essentially a “commentary” on the state of decline in our inner cities, it is art.
Because I’m happy about Lionels production methods of this new Genset, and although I chose the UP with graffiti, I understand why UP is standing firm on how there products are perceived to the American people, knowing that they do not come out of the New Union Pacific paint shops with collage/graffiti paintings on their bodies. Therefore, I’ve switched my choice to the CSX version. It’s going to be a fun to run diesel, and will have a nice home on my layout. I have many large UP diesels, all showing the american flag, which makes America proud. Great thread. Happy Railroading Everyone.
@AlanRail posted:Copyright and trademark law does give the holder the rights to protect the integrity of their marks and how the marks are used in commerce.
That's the whole idea behind those laws.
I'm aware (I teach intellectual property law for a living 
). But trademark law does not give the owner the right to control all uses of the mark, even without the First Amendment limitations that rplst8 mentioned.
Trademark infringement requires that consumers would think that UP is the source of the models, or at least that UP endorsed or sponsored them. If you think that is likely when a train manufacturer produces a model in a railroad's livery, then that's your call on the facts.
Trademark dilution requires that the use lessen the ability of mark to identify the goods or services of the mark holder, or bring the mark into disrepute. Given that there are hundreds, if not thousands of graffitied engines in the real world, I think it's a very hard sell that producing a model of one would blur or tarnish a railroad's mark.
I think I'll leave it at that.
With all due respect, I see where you got your name Professor. All I care about is that Lionel takes the appropriate action/response to not lose their UP license. Don’t let one sour apple on a couple of offshoot models spoil the whole bunch. BTW, UP items make up the largest part of my collection so I’m somewhat partial.
@Steims posted:All I care about is that Lionel takes the appropriate action/response to not lose their UP license.
I think my point (and I don't want speak for the Professor) is that the model makers should not bow to big corporations, ever. And should not even need a license to begin with. They have the right to make small scale models of whatever they want as long as what they are modeling couldn't be construed as being sold as a replacement for the thing the trademark holder supplies or sells.
i.e. if MTH made a 1:1 model (or even an O gauge model) of a standard gauge Lionel Tinplate electric toy train, Lionel would have a valid beef. If Lionel (or MTH) got in the business of selling 1:1 locomotives to railroads with the UP paint scheme, UP would have a valid beef.
I doubt that a paying customer of UPs is going to conflate a 1:48 graffitied genset with something out of Bailey Yard.
Corporations are about protecting their image. With permission, Starbucks or Chevron etc will allow you to use their scaled down Logos on a Marathon banners showing that they are one of the sponsors. They're not going to allow you to use their logos all tagged up with a bunch of gang graffiti.
@SPSF posted:Corporations are about protecting their image. With permission, Starbucks or Chevron etc will allow you to use their scaled down Logos on a Marathon banners showing that they are one of the sponsors. They're not going to allow you to use their logos all tagged up with a bunch of gang graffiti.
Of course they’re not going to let you say they sponsor an event unless they actually do. That’s something that could potentially hurt their image. However if I take a picture of one of UP engines tagged with graffiti, win a contest and sell prints of it, there is nothing they can do other than use their lawyers to intimidate me into not selling it.
Some people bend the knee, and some people fight. But it in no way requires their permission or is in anyway illegal.
This is not an ARTISTIC expression issue. It's simply a licensing issue.
I agree that you can take a picture or make a drawing of a UP engine and put as much graffiti on it as you like. You can sell it as your own expression. Go ahead no issue.
Lionel doesn't have that luxury because I believe they have a license with UP to use UP's marks in a way that UP controls. I have not seen that licensing agreement. So what I'm putting forward is based on other agreements I have reviewed with other companies.
The next question that Prof. C raises is whether or not Lionel should fight that with UP. Maybe they should or maybe they already did and lost? Which I guess is true because the engine was cancelled.
If what is at stake is losing the right to use UP marks on other engines then I think they made the best choice for them .......and us!
@rplst8 posted:And should not even need a license to begin with. They have the right to make small scale models of whatever they want as long as what they are modeling couldn't be construed as being sold as a replacement for the thing the trademark holder supplies or sells.
I remember hearing that argument when Chessie System started the whole licensing deal back in the late 1970's.
Anyway, here's UP's statement straight from the their trademark page:
In order to protect the company's trademarks from unauthorized use and potential harm, Union Pacific requires express written permission for commercial uses of these marks on goods or for services. These restrictions do not apply to in-home model railroad hobbyists who create Union Pacific-branded equipment for personal use.
And here's their license application form:
https://www.uprr.com/aboutup/l...p_licensee_model.pdf
Bottom line, it's the UP that makes the final determination.
Rusty
@rplst8 posted:Of course they’re not going to let you say they sponsor an event unless they actually do. That’s something that could potentially hurt their image. However if I take a picture of one of UP engines tagged with graffiti, win a contest and sell prints of it, there is nothing they can do other than use their lawyers to intimidate me into not selling it.
Some people bend the knee, and some people fight. But it in no way requires their permission or is in anyway illegal.
Apples to Oranges. You taking a photo is Not the same as a manufacturer producing Multiple tagged / defaced models.
As Alan suggested, this is not about authorized or unauthorized trademark use or infringement. That issue is moot and was settled a long time ago (rightly or wrongly) by Lionel's lawyers when they decided it was appropriate for Lionel to enter into licensing agreements with the companies whose names and logo's they use to promote and sell their products and make money.
This is strictly about the terms of that licensing agreement and it should be clear to everyone that, under its terms, UP must have had some kind of creative control over the end product being manufactured by Lionel and bearing their name and logo and they decided, pursuant to the terms of that agreement, that they didn't want a model of one of their engines to be graffitied up and therefor nixed its production. UP clearly believes that they have a certain image in the marketplace that they want to protect and it is immaterial whether you agree that they have that image or not.
This is not about what you do in the privacy of your own home nor is it strictly about confusion in the market place of a replacement product. If you believe that you can put a Nike swoosh on a model train or a t-shirt and sell it in the public marketplace w/o permission, then good luck to you - but first ask the nursery school that decided to paint Disney characters on the side of their building.
As to why Lionel put out a catalog picture without UP permission I'd guess that a copy was provided to UP to approve. Somehow approving toy train graphics in a timely fashion may not be very high on UP's priorities. YOU THINK!
@Rusty Traque posted:I remember hearing that argument when Chessie System started the whole licensing deal back in the late 1970's.
Anyway, here's UP's statement straight from the their trademark page:
In order to protect the company's trademarks from unauthorized use and potential harm, Union Pacific requires express written permission for commercial uses of these marks on goods or for services. These restrictions do not apply to in-home model railroad hobbyists who create Union Pacific-branded equipment for personal use.
And here's their license application form:
https://www.uprr.com/aboutup/l...p_licensee_model.pdf
Bottom line, it's the UP that makes the final determination.
Rusty
I love this line in the application:
Please submit representative product sample(s) with this completed application.
Now for some commentary:
Me thinks that they want free model trains. Man, I should go into model train licensing.
@Rusty Traque posted:I remember hearing that argument when Chessie System started the whole licensing deal back in the late 1970's.
Anyway, here's UP's statement straight from the their trademark page:
In order to protect the company's trademarks from unauthorized use and potential harm, Union Pacific requires express written permission for commercial uses of these marks on goods or for services. These restrictions do not apply to in-home model railroad hobbyists who create Union Pacific-branded equipment for personal use.
And here's their license application form:
https://www.uprr.com/aboutup/l...p_licensee_model.pdf
Bottom line, it's the UP that makes the final determination.
Rusty
Thank you Rusty . 😉
Finally a voice of reason and clarity .
Maybe we've been homebound ( layout room ) for too long. 🤔
@SPSF posted:Apples to Oranges. You taking a photo is Not the same as a manufacturer producing Multiple tagged / defaced models.
But making hundreds or thousands of prints of that photo isn’t?
I’m sorry but I disagree and the court cases have slowly but steadily been moving that way.
The thing to remember is trademarks are conferred to an owner by the government and are not an absolute or inherent right.
Its in everyone’s best interest to ensure a fly by night company doesn’t impersonate an upstanding one. But paintings and models alike do not do that. No one would be confused.
@Richie C. posted:As Alan suggested, this is not about authorized or unauthorized trademark use or infringement. That issue is moot and was settled a long time ago (rightly or wrongly) by Lionel's lawyers when they decided it was appropriate for Lionel to enter into licensing agreements with the companies whose names and logo's they use to promote and sell their products and make money.
This is strictly about the terms of that licensing agreement and it should be clear to everyone that, under its terms, UP must have had some kind of creative control over the end product being manufactured by Lionel and bearing their name and logo and they decided, pursuant to the terms of that agreement, that they didn't want a model of one of their engines to be graffitied up and therefor nixed its production. UP clearly believes that they have a certain image in the marketplace that they want to protect and it is immaterial whether you agree that they have that image or not.
This is not about what you do in the privacy of your own home nor is it strictly about confusion in the market place of a replacement product. If you believe that you can put a Nike swoosh on a model train or a t-shirt and sell it in the public marketplace w/o permission, then good luck to you - but first ask the nursery school that decided to paint Disney characters on the side of their building.
If the discussion is constrained to accepting the fact that Lionel signed an agreement, and is bound by that, then yes it’s that simple.
However, in contract law the onus is usually placed on the author of the contract to defend the wording and terms and conditions. IMHO the contract is unenforceable. UP likely bullied Lionel (and others) into signing this through threats of litigation and if it were tested in court and pursued to the highest authority, I believe UP would ultimately lose.
The example with putting a Nike swoosh on a T-shirt is ill-conceived since that’s exactly what Nike does - they sell apparel with their logo on it.
@Rusty Traque posted:The corporation issued the license. That gives them the right as to how it's represented by the licensee. The UP can and likely would revoke the license if Lionel didn't comply.
Yup. That's pretty much all there is to it. Without a doubt the license gives UP complete authority to control and approve the manner in which its brand is portraited.
The UP graffiti genset looks pretty ugly, IMHO, and disfigures their image. If I were representing the UP, I would have have told Lionel to can it as well.
@rplst8 posted:
However, in contract law the onus is usually placed on the author of the contract to defend the wording and terms and conditions. IMHO the contract is unenforceable. UP likely bullied Lionel (and others) into signing this through threats of litigation and if it were tested in court and pursued to the highest authority, I believe UP would ultimately lose.
After how many years of litigation?
The Graffiti Genset is cancelled. Get over it.
Rusty
@Rusty Traque posted:After how many years of litigation?
The Graffiti Genset is cancelled. Get over it.
Rusty
Agreed. I'm already doing my research on graffiti decals. I think we've covered all the nooks and crannies of this.
With MTH in limbo (to my knowledge as of this post), we don't need Lionel getting in hot water with a railroad many of us model.
However, in contract law the onus is usually placed on the author of the contract to defend the wording and terms and conditions. IMHO the contract is unenforceable. UP likely bullied Lionel (and others) into signing this through threats of litigation and if it were tested in court and pursued to the highest authority, I believe UP would ultimately lose.
There is no "onus". If there is an ambiguity in the contract, meaning an interpretation issue; then that falls against the drafter of the contract; unless wording in the contract says otherwise. That doesn't apply in this situation. There is no ambiguity.
As to whether the contract is enforceable or if UP "strong-armed" Lionel or if a higher court would rule against UP; I think you are reading out of the wrong law books as those arguments sound a lot like "bar-law"; that's the law discussed by patrons in bars.
UP controls the use of their mark. PERIOD.
@rplst8 posted:If the discussion is constrained to accepting the fact that Lionel signed an agreement, and is bound by that, then yes it’s that simple.
However, in contract law the onus is usually placed on the author of the contract to defend the wording and terms and conditions. IMHO the contract is unenforceable. UP likely bullied Lionel (and others) into signing this through threats of litigation and if it were tested in court and pursued to the highest authority, I believe UP would ultimately lose.
The example with putting a Nike swoosh on a T-shirt is ill-conceived since that’s exactly what Nike does - they sell apparel with their logo on it.
Your beliefs are your own, but you have zero factual basis from which to conclude that any licensing contract between the parties is unenforceable or that UP "bullied" Lionel into signing it.
To the contrary, it is much more likely that Lionel's counsel reviewed this issue calmly and thoroughly before concluding that a licensing agreement was required and advised Lionel to sign it if they wanted to produce UP badged products. To suggest that a 100 year old, multi-million dollar annual revenue company like Lionel was "bullied" by UP is absurd.
OK guys....enough discussion about this. I see we must have a bunch of lawyers here on the forum some of whom received their "degree" from "Armchair University". Where were all of you when OGR got sued last year over forum members posting copyrighted pictures here? I can tell you FIRST HAND that it was costly for OGR. We were told that we could fight it out in court and take the chance that we might lose or just settle out of court. We had very good legal council, 5 of our attorneys were experts in the field and they all agreed we should negotiate a settlement because the legal costs of fighting it in court would exceed what the other side was willing to settle for! That my friends is the REAL world when it comes to situations like this. OK, topic closed.
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