Burlington Northern And Santa Fe Railway Says Artists Cannot Depict Their Trains

from the morons-in-a-hurry dept

Tue, Oct 24th 2006 4:13am — Mike Masnick

Greg Beck of Public Citizen writes in to let us know about a case Public Citizen is involved in, concerning whether or not it's trademark infringement to make a painting of a train from the Burlington Norther and Santa Fe (BNSF) Railway. The details of the case are yet another example of a company trying to stretch the meaning of trademarks well away from its intended purpose (to protect consumers against confusion) and, instead, using it to try to stifle speech they don't like. In this case, a law firm that represents injured railroad workers commissioned a series of paintings of various trains, including BNSF trains. BNSF did not like this, and demanded that the paintings be taken down as they violate its trademark. Beck goes through all of the legal precedents and case law why there is no trademark infringement here at all, but I think it should serve as yet another case where the famed moron in a hurry trademark test should be used. Would a moron in a hurry see these paintings on a lawyer's website and somehow be confused that the site was somehow associated with BNSF? It seems unlikely, though for the sake of BSNF, perhaps we'll change the test this time around to "a moron trying to catch a train."

Thank you for reading this Techdirt post. With so many things competing for everyone’s attention these days, we really appreciate you giving us your time. We work hard every day to put quality content out there for our community.

Techdirt is one of the few remaining truly independent media outlets. We do not have a giant corporation behind us, and we rely heavily on our community to support us, in an age when advertisers are increasingly uninterested in sponsoring small, independent sites — especially a site like ours that is unwilling to pull punches in its reporting and analysis.

While other websites have resorted to paywalls, registration requirements, and increasingly annoying/intrusive advertising, we have always kept Techdirt open and available to anyone. But in order to continue doing so, we need your support. We offer a variety of ways for our readers to support us, from direct donations to special subscriptions and cool merchandise — and every little bit helps. Thank you.

–The Techdirt Team

20 Comments

If you liked this post, you may also be interested in...

Reader Comments

Subscribe: RSS

View by: Time | Thread

Sean, 24 Oct 2006 @ 4:48am

Just a thought. So should BNSF sue those graffiti artist that tag their train cars for trademark violation because it causes people to believe that BNSF supports this?
[ link to this | view in thread ]
Anonymous Coward, 24 Oct 2006 @ 5:39am

not a good analogy
If they knew who was vandalizing their train cars, I think they'd want them in jail - not sue them
[ link to this | view in thread ]
Anonymous Coward, 24 Oct 2006 @ 5:44am

Re:
Well... they would, if they could catch them.
[ link to this | view in thread ]
Mark, 24 Oct 2006 @ 5:47am

Freedom of expression?!?
Would this not be covered under the constitution?

Let's see, freedom of expression...
[ link to this | view in thread ]
Mike F.M, 24 Oct 2006 @ 6:08am

If...
...these drawings were being used for mallicious purposes or to give the impression that the railway was bad or hated customers then they may have stood a chance of getting these drawings taken down - on different charges, of course.

As it stands, it's stupid to try and get them taken down because the amount of negative publicity that this will and is gaining will outweigh the positive effect they achieve (which I still can't see).
[ link to this | view in thread ]
Sanguine Dream, 24 Oct 2006 @ 6:20am

It's all about...
the numbers. These companies that cry foul like this are only in it for the money. They're scared of the notion that someone may acutally make something good without them getting the lion's share of the profit, credit, good press... Or is all this whinning over the fact the paintings were commissioned by a firm that handles cases involving injured railroad workers?
[ link to this | view in thread ]
mixlplix, 24 Oct 2006 @ 6:34am

ill guess the latter.
[ link to this | view in thread ]
DougT, 24 Oct 2006 @ 6:44am

Sadly, there seems to be some precedent for this. The Flatiron Building in NY is trademark, and the owners of the trademark have successfully sued in the past for the use of their image:

http://newyorkmetro.com/nymetro/news/media/features/1463/

And in the field of trains, the TGV seems to have a similar status:

http://www.istockphoto.com/tutorial_copyright_list.php?Keyword=&CategoryID=&Sort= &page=10

So ... for right or wrong ... it seems like BNSF actually has grounds to stand on.

-Doug
http;//www.htcphones.info
[ link to this | view in thread ]
mark o. worrell, 24 Oct 2006 @ 7:13am

Re: how about the cost of tickets?
the real problem is how much is this eventually costing the passenger or shipper in increased expenses...trains will be gone from the American landscape in 25-50 years and this is exactly why...train companies used to take pride in artists utilizing their images

its like greyhound saying don't use us in films...this foolish stance is just a lonely bugle coming from railroad's selfcreated Little Big Horn
[ link to this | view in thread ]
ehrichweiss, 24 Oct 2006 @ 7:22am

Doug makes a point...
and now I have to wonder if I could create a unique looking car, trademark it and then sue the town when they broadcast images of it on cable via their traffic-cams.

This is yet another example of why the USPTO and copyright offices need to be completely revamped immediately.

Of course it could be just as easy to say screw BNSF and start painting pics of maglev trains instead. They always say there's no such thing as bad publicity, so ignore them instead. When people stop paying any attention to them they'll either come around or be quickly forgotten.

That being said, I have some old toy trains for sale...I forget the name of them now...
[ link to this | view in thread ]
SPR, 24 Oct 2006 @ 7:43am

Be careful, they might sue you for using their name in the title of this article!!
[ link to this | view in thread ]
gizard lizard, 24 Oct 2006 @ 9:09am

Time to revise those paintings to depict the LAMF railroad.
[ link to this | view in thread ]
ConceptJunkie (profile), 24 Oct 2006 @ 9:25am

Patent-envy...
The holders of trademarks are just envious of how you can patent anything and strongarm anyone into doing what you want... they just want their fair share of being able to abuse the law for fun and profit.

Maybe they should patent the look of their trains and pursue that route. Why not? You can patent anything that even resembles an idea.
[ link to this | view in thread ]
Ballenger, 24 Oct 2006 @ 10:02am

If it's photography involving a logo on a privately owned train in a public setting, O. Winston Link's work for example, in question, it's not likely the greedy, simple-minded, short-sighted hired legal weasels trying to pull this off will get their way in the long term. If they are successful, we have a problem on a much larger scale to contend with. It's ironic, that this clumsy effort will probably push "train art" off a dusty shelf of awareness in the mind of the public, and by drawing attention to the genre, make their efforts all the more difficult. Photographers should make every effort to get shots of the legal team doing this standing next to a train, so those dill-weeds can be properly memorialized for the next few hundred years in railroad, legal and parasitology history text.
[ link to this | view in thread ]
SPR, 24 Oct 2006 @ 10:11am

Re:
As if someone would actually WANT a picture of a baterium, virus, lawyer or any other parasitic bug!!
[ link to this | view in thread ]
Grandfather Time, 24 Oct 2006 @ 11:00am

oh dear,...
this reminds me of that ebay/shampoo incident a while back, only now it involves a train and a painting.....
[ link to this | view in thread ]
Anonymous Coward, 24 Oct 2006 @ 11:46am

Would a moron in a hurry see these paintings on a lawyer's website and somehow be confused that the site was somehow associated with BNSF?
Only a moron could make a mistake like that. Oh, wait...
[ link to this | view in thread ]
Dosquatch, 24 Oct 2006 @ 11:50am

Precedent
The question isn't precedent, or wisdom, it's whether "moron in a hurry" is trumped by "moron with a lawyer"... though I suppose that would depend on the moron on the bench.

As far as legal standing, I can't imagine anyone would be fuzzy on this point - art is protected speech. In fact, some companies even (gasp) recognize and embrace the benefit to the brand name that art can bring.

imagine that.
[ link to this | view in thread ]
Anonymous Coward, 24 Oct 2006 @ 12:07pm

Re: Precedent
As far as legal standing, I can't imagine anyone would be fuzzy on this point - art is protected speech.
That doesn't prevent SLAPP suits.
[ link to this | view in thread ]
debra janousek, 8 Mar 2007 @ 12:05pm

Re: Precedent
go to nebdiv.com and see real photo's taken inside the bnsf. Graffiti written by their own employee's
[ link to this | view in thread ]