Tension hung in the late-afternoon air as the crowd trickled into Trim Tab Brewing Company’s narrow courtyard. As a makeshift town hall, the setting left something to be desired; even with a microphone, speakers struggled to be heard over the sounds of passing vehicles and the low din of the agitated crowd.
Thematically, though, the venue seemed particularly appropriate; overlooking the entrance to the brewery’s taproom was a giant reminder of the meeting’s focus and the subject of what would become a divisive, emotionally charged debate: painted in large, bold letters, “It’s Nice to Have You in Birmingham.”
Yellowhammer Creative, a Birmingham-based design and print studio, had scheduled the Oct. 8 meeting six days earlier following public outcry over the company’s application to federally trademark the “It’s Nice to Have You in Birmingham” slogan and logo for commercial use — a move that had generated heated debate over social media after it was brought to light in late September (Yellowhammer, which has already registered the slogan as a state trademark, filed the federal request in April).
News of Yellowhammer’s trademark application became widespread after a conflict between Yellowhammer and Birmingham-based investment firm LIV Apartment Partners — which planned to include a sign featuring the slogan at Jemison Flats, an apartment and office development downtown that the firm purchased last year — became public.
Documents leaked to the press earlier this month showed that Yellowhammer Creative had reached out to LIV in May, claiming “a significant economic interest in the commercial use of the phrase.” A later, undated memo from Yellowhammer to LIV had proposed a $63,000 licensing fee to be paid over 10 years. Subsequently, LIV — along with several other Birmingham citizens and community organizations — filed to postpone approval of Yellowhammer’s trademark application.
Opponents saw Yellowhammer’s attempt to trademark of the 60-year-old slogan as opportunistic and greedy. “It’s absolutely pathetic to see what this business is doing to hinder the redevelopment of Birmingham by claiming ownership of a slogan and design that predates the business itself!” read a one-star review left on the company’s Facebook page — one of 12 such negative reviews posted following the news of the trademark application. (The 21 five-star reviews posted on the page over the same time period, many of which directly respond to the controversy, illustrate the polarized public response to the issue.)
“Taking public property and capitalizing on it as your own is the epitome of corporate greed and the antithesis of civic stewardship,” read another one-star review. “I hope this town runs you out of business with red hot pitch forks [sic] blazing. You aren’t creative, you’re conquering.”
As the crowd assembled in Trim Tab’s courtyard, Yellowhammer founders Brandon Watkins and Brett Forsyth, accompanied by their attorney, Andrew Wheeler-Berliner, hoped to clarify intentions that they said had been misinterpreted as avaricious.
“Our move to trademark the phrase came solely from a position of goodwill, to prevent others from bastardizing or haphazardly changing the phrase for their own gain,” said Watkins, reading from a prepared statement at the beginning of the meeting. “Ask yourself if you would be excited as a proud Birmingham citizen to see people selling shirts that say, ‘It’s nice to have you in Atlanta,’ or ‘It’s nice to have you in Bombingham,’ or ‘It’s nice to have you in my butt,’ all of which we have gotten requests to [make], that we have declined. Without legal protection from some entity, the phrase would be hijacked and misused. Yellowhammer Creative has worked behind the scenes since the introduction of our grassroots campaign to prevent this from happening.”
Following the widespread criticism, Watkins said, Yellowhammer had met “with all of those who opposed our filing as well as many community organizations such as REV and the BBA [Birmingham Business Association].” Those discussions had led to a change of plan, he said — one that would involve Yellowhammer eventually ceding the trademark of the slogan to a newly formed civic body “committed to honoring Birmingham’s artistic heritage and fostering our eclectic creative community.” Yellowhammer and others hoping to use the slogan would then pay licensing fees to that group, he said, while the city of Birmingham would be able to use the slogan for free.
Specific details on what the hypothetical committee would look like were vague, he said, and open to community input. (Watkins later suggested that revenue generated by the committee licensing the slogan “could be something that could fund public art.”)
Watkins’ statement did little to unite the divided crowd — cries of both “We love you!” and “You’re lying!” were hurled at the Yellowhammer owners throughout the meeting — and some attendees, such as Alton Parker Jr., a partner at the law firm Spain & Gillon, took the forum’s opportunity for public discussion to express vehement objection to the trademark.
“The problem they have is, [the slogan]’s not theirs,” Parker said. “They didn’t create it. They didn’t make it. They didn’t do anything with it until they saw it was popular, and then they moved to get a federal trademark… There are people that have t-shirt production companies that were using this long before Yellowhammer Creative.”
“This in the public domain,” Parker continued, “and my personal feeling is that it shouldn’t be licensed to anybody, because it’s been here.”
A History of “Nice”
“It’s Nice to Have You in Birmingham” initially appeared in the 1950s as a public slogan heavily promoted by the city of Birmingham, as well as by civic organizations such as the Downtown Action Committee, the Birmingham Jaycees and the Young Men’s Business Club. According to Mark Kelly’s book A Powerful Presence: The Birmingham Regional Chamber of Commerce and the History of Birmingham, an early 1960s, Chamber of Commerce-headed public relations campaign centered on the slogan made it practically ubiquitous in the city: it was stamped into license plates and lapel pins; displayed on billboards and on signs at major transportation hubs; broadcast on local television stations and posted in windows of local businesses.
Though the campaign was intended to combat the negative national scrutiny directed at Birmingham during the Civil Rights movement, prominent activists such as Fred Shuttlesworth were quick to call the slogan’s apparent hypocrisy into question, suggesting that it was only directed toward white visitors: “As I came into Birmingham I walked underneath a sign that said, ‘It’s Nice to Have You in Birmingham,’” Shuttlesworth said in a 1963 speech. “I thought to myself, ‘For what? So we can be arrested and put in jail.’”
The slogan remained part of Birmingham’s cultural DNA through the 1970s — its presence in the 1976 Birmingham-set film Stay Hungry would become a topic of conversation at the Trim Tab town hall — but by the 1990s had faded into relative obscurity.
Bhamwiki credits André Natta, publisher of the online news website The Terminal, for reviving the slogan in September 2007. “I’d seen the license plates around town and did some research, knowing all of the meanings the slogan had — positive and negative,” Natta said. “The hope was to disrupt the slogan’s narrative while leaning heavily on it being a welcoming message for a city in the midst of a renaissance.”
Natta estimates that he made at least 500 t-shirts for the project. He still has “a handful” of size 2XL shirts that he had planned to sell this fall to help funding for The Terminal. “I’m not sure what I’ll do with those shirts now,” he said.
Following Natta’s use of the slogan, a mural by Skidmore Signs was painted on the outfield wall of Rickwood Field in 2010. Local photographer Bryan Johnson of A Bryan Photography has also sold t-shirts featuring the slogan since July 2011.
Yellowhammer Creative founder Brandon Watkins says he rediscovered the slogan while “rummaging through old photos” in 2007. His initial plans for painting a public mural centered on the slogan were postponed due to the 2008 financial crisis.
“I went to a couple of organizations and they couldn’t find the funding for it,” he said, noting that he had originally planned to paint the mural across from Railroad Park, “but I didn’t know how to get that done.” After partnering with Forsyth to form Yellowhammer in 2009 and incorporating the company in 2012, Watkins says the duo decided to focus on “It’s Nice to Have You in Birmingham.”
“We just figured a grassroots campaign that we started could facilitate [the mural],” Watkins said. In April ’13, the duo began selling t-shirts and posters using a redesigned version of the logo used in the 1960s. Forsyth estimates that Yellowhammer has since sold a few thousand “It’s Nice to Have You in Birmingham” shirts.
“We felt like we gave [the slogan] new life, and honestly, life and popularity it had never seen before,” Forsyth said.
Yellowhammer says that the interest in the slogan generated by the line of t-shirts and posters enabled Watkins to team with other local artists to form the Magic City Mural Collective, which painted murals featuring the slogan at three locations in the city: Woodlawn, John’s City Diner and Trim Tab Brewing Company.
In the Trim Tab courtyard, tempers were flaring. Wheeler-Berliner had taken the microphone from Parker and accused him of leaking private correspondences between Yellowhammer and LIV — including the memo that proposed licensing the slogan to LIV for $63,000 — to the media. (That figure, Watkins had told the crowd in his prepared statement, was a result of Yellowhammer feeling “very frustrated [and] slighted by LIV,” and was a “very terrible offer… The idea was they would either go away or perhaps have a change of heart and sit down and talk to us so we could resolve the matter.”)
“I guess my question is why you decided to turn this into a public issue, rather than coming to Yellowhammer directly with these concerns over the past four months,” Wheeler-Berliner asked Parker.
“Why did Yellowhammer Creative decide to turn this into a private issue when you could make money off something that has been in the public domain for 70 years?” Parker fired back. “I don’t understand.”
When LIV co-founder Ryan Griffin approached the microphone several minutes later, his tone was similarly incredulous. “I think the conversation [between Yellowhammer and LIV] got derailed because we got a letter from an attorney telling us to stop doing something that we felt like we didn’t need to stop,” he said, referring to the contested signage on the company’s Jemison Flats development. “Internally, our conversation was, ‘Guys, this isn’t worth it. This is silly that they’re asking us to do this.’ So we continued with our design. And then, we said, ‘Well, what do they want? They’re telling us to stop, but what do they want?’ And then we get that letter.”
“You asked us to bring a plan if we’re opposed,” Griffin continued. “My plan is that it remains in the public domain. And that can happen in one of two ways. One, you can abandon your trademark, or two, you can keep going your way and we’ll fight it. I’m not doing that begrudgingly. Ultimately, I think it’s the right thing.”
The Jemison Flats development was purchased at auction last June by JF Hat LLC, an affiliate of LIV Development and LIV Apartment Partners, for approximately $6.3 million. Following the purchase, Griffin and LIV co-founder Steven Ankenbrandt began making plans to renovate the development’s dilapidated parking deck, the state of which had drawn criticism due to its proximity to the new multimodal train station expected to be finished next year. During the process of designing the renovation, Ankenbrandt said, investors expressed interest in prominently featuring “It’s Nice to Have You in Birmingham” on the side of the building.
“We decided that, instead of just fixing windows, we would spend money to improve the image of the city,” Ankenbrandt said. “Our investors had also seen the sign with ‘It’s Nice to Have You in Birmingham’ at Rickwood Field, and their desire was that it would be on our building, basically welcoming people to the city of Birmingham.”
Ankenbrandt says that the Design Review Committee approved the signage in March and that Yellowhammer Creative first reached out to LIV in April, claiming “that they had rights to the phrase and [that they] wanted to control the artistic integrity of it.”
“We felt the proposed sign on top of Jemison Flats was an afterthought,” Watkins explained after the town hall meeting, “[and] that it was just put up there because of the popularity of the slogan. We were all for the idea, but we thought it could have been done better.”
When LIV received Yellowhammer’s proposed licensing deal, Ankenbrandt says that the figure “really was much more expensive than I had originally thought we would invest in that parking deck. Because of the size of their offer, we took a step back and said, ‘Wow, they don’t just want artistic rights, they want significant dollars to use this phrase.’”
Ankenbrandt began researching Yellowhammer’s trademark claim and discovered that the federal application was pending. LIV’s attorney advised that they object to the claim. “It just seemed like this was a really reaching request for what was a public phrase,” Ankenbrandt said.
When Yellowhammer’s licensing request was leaked to the media — “Our investors have connections into how this letter came out,” Ankenbrandt said, adding that LIV did not intend to release the offer until they had officially filed an objection to the trademark at the end of the month — Ankenbrant says the situation “just kind of spiraled.”
Ankenbrandt feels that Yellowhammer has mischaracterized LIV as a big corporation bullying a small business. Instead, he says, LIV is a “very small apartment investment firm” beholden to its investor — and adding “It’s Nice to Have You in Birmingham” to the Jemison Loft parking deck “was in the consciousness of our investors,” who felt that placing the sign across from the new train station would be an act of “corporate goodwill.”
“We weren’t doing this to steal something from them,” Ankenbrandt added. “We were doing this because it’s what we thought was a public good.”
Expressions of Civic Pride
Pushback from LIV, however, is not the only opposition facing Yellowhammer Creative’s trademark claim. Other artists from around the local community — particularly those who had also been selling t-shirts and posters featuring the slogan — have been vocally against the idea. André Natta says that while he doesn’t have an opinion “one way or the other” on Yellowhammer’s attempt to protect their design featuring the slogan, he feels the slogan itself should be trademarked “by one of the organizations that originally created it,” such as Chamber of Commerce successor the Birmingham Business Alliance, the Birmingham Jaycees Foundation and the Young Men’s Business Club.
Patrick Bodden, whose wife Erin has been selling metal art featuring the slogan since December, spoke at the Trim Tab meeting to “challenge the narrative [Yellowhammer] are presenting here about big business versus small business.” His wife, he said, received emails from Forsyth in September “telling her to cease and desist making her art.”
“He made a polite request that I cease production and sale of my ‘It’s nice…’ items and indicated that YHC holds the trademark to the phrase,” Erin said, reached for comment after the meeting. “I called Brett a few days later to ask if they would consider allowing me to sell out my existing supply if I moved all of my inventory out of Birmingham and offline and only sold at the [Riverchase] Galleria. He agreed, which I appreciated.”
Forsyth and Watkins both reject labeling the emails as “cease-and-desist” letters. “They were very friendly, very supportive,” Forsyth said.
Watkins later added that they came from a temporary need to show that they were “regulating” the trademark for the purposes of the application. “It did end up looking like we were just pushing everybody away, when in fact that’s not [what we meant],” he said.
“If we were to follow through with what he had laid out, if she could just wait a little while longer so we could set up this group, then she could go through that system just like everybody else that wants to use that slogan and she would have those rights,” Forsyth said.
Even so, Erin Bodden is skeptical. After filing for an extension to oppose Yellowhammer’s trademark claim, she says she has been approached by other local artists who had been similarly dissuaded from producing items with the slogan. “As a result, there are fewer products available for people in Birmingham to express their civic pride,” she said. “I believe that our city’s slogan should not be limited in use through ownership and private regulation.”
Others that have filed for the trademark to be postponed include REV Birmingham and the Birmingham Business Alliance. Both organizations, when reached for comment, provided statements that suggested they were seeking time to further assess the situation before deciding whether or not to formally object.
Darrell O’Quinn, a self-described concerned citizen who filed for a 90-day postponement of the application’s approval, says that he plans to file an objection to the trademark himself. O’Quinn’s concern, he says, stems from his belief that the slogan is less in need of protection than Yellowhammer had indicated.
“I don’t think Yellowhammer has done a sufficient job of making that case, at least from what I’ve seen,” O’Quinn said. “From just a general citizen’s point of view, it didn’t appear to me that there was a problem. They haven’t convinced me that this was something that was imminent. That’s not to say that what they’re saying’s not true, but I need to see some documentation [that the slogan is in danger].”
O’Quinn also expressed practical concerns with Yellowhammer’s proposed “civic body” plan. “That requires a significant commitment of administration and to think that that would happen just on a volunteer basis, I don’t think is reasonable,” he said. “And then, if you have to pay somebody to actually do that, would this potentially generate enough revenue to cover those expenses? I just don’t think that would work.”
An Open Question
The creation of a civic entity to protect an iconic part of Birmingham’s image is not an entirely new idea. The Vulcan Park Foundation was formed in 1999 as a nonprofit organization designed to restore the statue of Vulcan, which was then in a state of significant disrepair.
Now, the foundation’s continuing role is “to protect the symbolic meaning of the statue as well as the physical statue,” says Darlene Negrotto, president and CEO of Vulcan Park and Museum. According to the Vulcan Park and Museum website, the foundation has secured ownership “of all intellectual property pertaining to the Vulcan Statue likeness,” including a registered trademark. Negrotto’s rationale for this protection does not sound far removed from Yellowhammer Creative’s own argument regarding “It’s Nice to Have You in Birmingham.”
“People love Vulcan and they want to embrace him, but they may want to put something in his hand that may not be particularly in keeping with the statue and its symbolic importance to our community,” she said. “For example, [holding] a beer does not enhance his meaning to the community. So, that protection was put in place so that we could talk with the folks that were using [his image] and help them to understand the importance in upholding the dignity of the statue and what he means to us.”
The park charges a “minimal” licensing fee for use of Vulcan’s image, which Negrotto says helps to “defray our administrative and legal costs in maintaining the federal protection.
“A lot of folks know that we do control the use of the image, so they’ll contact us and we’ll just send them the paperwork and it’s all okay,” Negrotto added. “If it’s promoting the city, if it’s promoting our image, if it’s for tourism or local purposes, we absolutely encourage that. We just request that people go through us.”
Despite the apparent analogue between what is already in practice at Vulcan and what Yellowhammer says it is pursuing, there is still significant debate over whether or not Yellowhammer can legally trademark “It’s Nice to Have You in Birmingham.”
Woodrow Hartzog, an associate professor at Samford University’s Cumberland School of Law, whose focus includes intellectual property law, says that the feasibility of Yellowhammer’s plan is dependent on its ability to prove that the slogan is synonymous with their company.
“It’s important to note that if you’re going to claim trademark protection, you have to be using the mark in a way that indicates source sponsorship or affiliation and isn’t just using trademark law to have broader rights over a particular slogan,” Hartzog said. “A really good example is with shirts. The United States Patent and Trademark Office will not recognize a trademark in a slogan or design that is clearly ornamental — that is, that’s being used clearly for its display value rather than for its value as a source indicator.” For clothing designs, he said, the most valuable candidates for trademark were small brand-indicating logos such as the Lacoste alligator.
In fact, the USPTO’s website specifically notes that “a slogan prominently displayed on the front of a t-shirt may be considered merely ornamental use and not trademark use.” The larger the rendering of the slogan on the goods in question, the website states, the less likely it will be considered a trademark.
Hartzog said that whether Yellowhammer’s use of the slogan qualified as source-indicating “is an open question.” The company might try to establish “secondary meaning,” he explained, which would mean that they would attempt to prove that the slogan has become synonymous with their company.
“It sounds like this is an attempt to establish a right to the [trademark] based upon the fact that people look at ‘It’s Nice to Have You in Birmingham’ and say, ‘That’s tantamount to Yellowhammer Creative,’” Hartzog said. The significance of secondary meaning, he added, is established in two ways — either over a period of at least five years (for which Yellowhammer is not yet eligible) or through “mounds of evidence, just lots and lots of consumer evidence. You do consumer surveys. It’s not a cheap process, but it’s evidentiary. You introduce evidence that a significant amount of the population considers this to be synonymous with indicating the source of Yellowhammer Creative.”
Wheeler-Berliner said that the USPTO examining attorney approved Yellowhammer’s claim of significant secondary meaning; any opposition filed will likely re-examine the case from the perspective of this criteria. If no opposition is filed by Dec. 30, when O’Quinn’s extension expires, Yellowhammer will be granted the trademark, he said.
Not legally relevant, Hartzog says, is the argument that the slogan has existed in the public domain for decades. “It’s possible for companies to take slogans and words and symbols that have been used in the public generally and apply them to be a trademark,” he said. “We see this happen all the time with, for example, Nike’s slogan ‘Just do it.’ People probably said, ‘Just do it,’ before Nike invented it. They weren’t the first people ever to say, ‘Just do it.’ However, they were some of the first people to say it with respect to indicating source sponsorship or affiliation with some particular good or service. And that’s really what counts with respect to trademark protection.”
Cheerleaders for Birmingham
Those opposed to Yellowhammer Creative weren’t the only voices heard at the Trim Tab town hall meeting. Some attendees spoke out in solidarity — or at least sympathy — with Forsyth and Watkins.
“I wasn’t around in the ‘60s and ‘70s and ‘80s in Birmingham,” said Max Rykov, a community advocate. “I moved here two and a half years ago, my first time living here as an adult. I had never heard of the slogan before. I, like probably 99 percent of those who have seen the t-shirts, know about [the slogan] 100-percent because of the work that Yellowhammer Creative have done… This is about good people doing something that is not dark and evil like it seems everyone is making them out to be.
“Even if they’re not right legally, the amount of unnecessary hatred I’ve seen people posting over the last couple of days is disgusting and absurd and stupid. Nobody who cares about this would have known about the phrase without Yellowhammer Creative.”
Bruce Lanier, principal architect at Standard Creative, LLC and co-founder of community arts company MAKEbhm, says that he feels that Forsyth and Watkins’ intentions have been misconstrued and that Yellowhammer has been wrongfully vilified.
“It really makes me mad,” Lanier said. “The whole thing makes me mad in a really disappointed-in-people kind of way. Was [the trademark] a tactically brilliant move on Yellowhammer’s part? Probably not. But I think it’s at least debatable as to whether or not they have a right to trademark the artwork, because it is original artwork.”
Lanier, who helped to “incubate” Forsyth and Watkins as they started Yellowhammer, says he has been troubled by “how quickly Birmingham turned on Yellowhammer.”
“I genuinely believe that Brett and Brandon did that with the absolutely best intentions,” Lanier said. “I think when they made that move, it was to keep people from exploiting the slogan… And they did it in what they thought was the right way, but it wasn’t savvy. And that blew up on them in a way that they didn’t see coming.”
“They’re exactly what we want people to feel about Birmingham,” Lanier said. “We want people who grew up in this town, who have stayed around and who have made a business out of saying, ‘Hell yeah, we’re cheerleaders for Birmingham.’ Those are the people you want on your team.”
Wheeler-Berliner, Yellowhammer’s attorney, said he believes that LIV and LIV’s investors are targeting his clients. The leaked licensing proposal, he said, was “an effort to undermine us, to take the legality out of it and make it a PR issue. It seems like an effort to really destroy my clients’ business, to damage their reputation and to threaten them.”
Wheeler-Berliner said he believes that the conflict over the trademark reflects how the city still undervalues its burgeoning artistic community. “These screen printers, these artists — because that’s what they are — created a lot of value [for the phrase] through this,” he said. “And when these commercial developers came in, they recognized the value that had been created, and they wanted to benefit off of that for themselves, but they didn’t want to recognize the work these guys did generating that value. I do see that happening a lot. There is very much a disrespect for artists happening in this town. We want the benefit of what they create, but we don’t want to compensate them for it.
“That’s something that needs to change,” he added. “A lot of what is making this city exciting and making people want to be down here — and quite frankly developing the market for the apartments [LIV] is building, is what the creative community in this city is giving to it. [The artists] don’t necessarily have to get all that money back, but don’t [expletive] them over. And that’s what was happening here.”
Lanier suggested that the entire situation stood in opposition to the sense of community that has enabled Birmingham to progress so much in recent years. “This upward vector that Birmingham is on [is because] for the first time in the 20 years that I’ve lived here, people are playing well with each other. People are getting along and not getting turf-y and not trying to tear each other down to make an inch of progress for themselves.”
“But this situation is the old Birmingham,” he added.
As the meeting at Trim Tab concluded, with the packed crowd dispersing back into the brewery’s taproom and into the parking lot, Forsyth and Watkins seemed to visibly relax for the first time since the 90-minute meeting had begun. Watkins walked his mother, who had been in attendance, to her car before returning to the mostly empty courtyard. He seemed optimistic that Yellowhammer would be vindicated, and expressed excitement for seeing conversations about a potential civic body to protect “It’s Nice to Have You in Birmingham” continue.
“It’s going to be a lot of work and it’s going to take a lot of people,” he said. “But just from tonight, I think there’s a passion for it and that was great to see. We wanted this to open up the conversation. We knew that there were going to be some people for us, but that’s what this was, to get everybody out here.”
“Everybody’s for Birmingham,” he added. “Whether it’s for Yellowhammer or against Yellowhammer, everybody’s for Birmingham.”