Court refuses to dismiss trademark suit over train logo

CALIFORNIA–In late May, a federal District Court judge in Los Angeles refused to dismiss claims that a music video of a fictional Union Pacific train conductor who drinks on the job, runs over pedestrians, and throws a bomb at an ambulance violates Union Pacific’s trademark rights.

In 1995, Sony Music Entertainment released the video “Big Train” featuring musician Mike Watt as the conductor. Union Pacific Railroad filed suit for trademark infringement and defamation. Sony stopped distributing the video, but Union Pacific continued its suit for damages.

A&E Television Networks, Fox Inc., Home Box Office, and October Films filed a friend of the court brief, arguing that Union Pacific’s attempt to “bootstrap” a defamation claim onto a trademark claim could have grievous consequences for the First Amendment.

The news and entertainment media argued that videos are “pure” speech entitled to First Amendment protection. A news report could depict Union Pacific trademarks, they said, and the fact that “Big Train” was artistic and motivated by profit should not diminish its First Amendment protection. Union Pacific responded that a news report about unsafe railroads, for example, could not feature Union Pacific’s trademark if that particular railroad was not unsafe.

In addition, the entertainment companies argued that trademark law was not intended to prohibit the non-competitive use of a trademark. But Union Pacific countered that Sony had admitted that the purpose of a video is to market music, and that the appropriation of a Union Pacific logo was intentional and critical for that goal.

The entertainment companies also argued that Union Pacific had not alleged that the video made false assertions of fact with malice, necessary elements of a defamation claim. Further, the events of the video were clearly fantastic, so it was privileged parody, they argued. Union Pacific responded that clear messages about Union Pacific and its safety programs were conveyed by the depiction of a reckless conductor, and that the video was not a parody because it was not a commentary or variation on an original work. (Union Pacific Railroad Co. v. Sony Music Entertainment, Inc.; Amici Curiae Counsel: Michele Lynch, Washington, D.C.)