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| To respond to this month's Editorial, send comments to: Editorial@modelrailroadnews.com |
Is it an issue of scale? |
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| Well, gentle readers, the play has begun. This statement is taken in its entirety from the Union Pacific web site, www.uprr.com/newsinfo/modelrail.shtml “Union Pacific Railroad Company has filed a complaint in U.S. District Court for the District of Nebraska naming as defendants Lionel, L.L.C. and Athearn, Inc. The defendants are model railroad manufacturers who have refused to enter into licensing agreements for their commercial use of Union Pacific trademarks. The complaint alleges claims of infringement of federally registered trademarks, trademark dilution under § 43(c) of the Lanham Act, Unfair Competition under § 43(a) of the Lanham Act, common law trademark infringement, unfair competition, and violation of the Nebraska Uniform Deceptive Trade Practices Act. Union Pacific believes it is imperative that it defends its trademarks against unauthorized use by Lionel and Athearn. Both companies repeatedly have rejected Union Pacific’s lawful licensing requests. Not only have Lionel and Athearn failed to license use of Union Pacific’s historic trademarks, they have violated trademark protection laws by producing new models featuring Union Pacific’s latest “Building America” branding and advertising campaign. Union Pacific notes that Lionel has a very active licensing program that protects its own trademark. It is difficult to understand why Lionel and Athearn believe they are above the law, while more than 60 other manufacturers, including many model railroad manufacturers, have licensed their Union Pacific products in accordance with the law. Union Pacific will continue reviewing applications and welcomes new licensees.” Those are Union Pacific’s words, and I’ll let you make out of them what you will. Lots of questions have been raised by this statement and the actions behind it, ranging from general issues surrounding both defendants to little legal things such as filing charges in federal court for violation of a state law. Just as sports writers sometimes find themselves covering the off-the-playing-field legal problems of athletes, so I find myself writing about the beyond-the-layout courtroom troubles which befall our hobby. That said, I proceeded to research the issue, reading the actual Lanham Act, specifically Section 43. Any first year law student will tell you there is often a huge difference between what a law says and what it means. Subsection (a) seems to be intended to prevent false or deceptive uses of a brand name or trademark. For instance, if we started painting real boxcars with UP logos so we could steal UP business with them, that would be a perfect example of a violation. But does anyone actually think that an HO boxcar “is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person” when placed against the daily business of Union Pacific? Does anyone actually think that the small plastic toy inside the Athearn or Lionel box is really a product or rolling stock of the actual railroad? I’ve never been fooled for a minute, myself. Perhaps the issue is exactly that: scale size. That leads to another interesting question: what would happen if a guy named — say — Lionel Feedlemuster was to paint a large moving van truck so that it looked exactly like a familiar blue and gold Lionel box with the words, “Lionel Moving and Storage” on the side? Would Lionel the model train company sue the pants off Mr. Feedlemuster? Could the moving van business successfully argue that their truck was in a completely different scale and couldn’t possibly be confused? Better yet, is Athearn half as culpable because it is producing in HO scale, half the size of O? See, that’s why magazine editors make poor lawyers (and jurors, for that matter.) We tend to ask all the wrong questions. It will take a Federal court seven or so years to determine whether or not the defendants were naughty or nice. A new precedent could be set here, or our first year law student’s admonitions could land full force upon them. When it comes to financial recovery, based upon how small the model railroad industry really is, UP may have to scale down its expectations. Imagine fighting through seven years of courtroom battles only to win 400 boxes of surplus horn-hook couplers. |
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| John Sipple, Editor | |
| To respond to this month's Editorial, send comments to: Editorial@modelrailroadnews.com | |
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