The “Fun Facts” page of the Vulcan Park and Museum’s website answers questions about Birmingham’s iconic statue with the conversational quality of a particularly knowledgeable tour guide. “I bet you didn’t know many of these interesting facts about him,” the page declares, before going on to answer such questions as, “Why does Vulcan hold a hammer and spear?” and “How tall is Vulcan?”
But after six general-interest questions, the page ends with one that’s more specific: “Is the image of the statue and the word ‘Vulcan’ registered with the United States Patent and Trademark Office?” (“Yes!” the reply begins.)
The sudden swerve into legality is indicative of a greater lack of public awareness and understanding of the trademark laws that surround Birmingham’s most recognizable landmark. Who is permitted to use the image of Vulcan? Which depictions of the statue are prohibited by law, and which are protected by the First Amendment? As is usually the case with intellectual property law, complexities, ambiguities, and misconceptions abound.
“One thing that we have struggled with over the years is raising awareness,” said Vulcan Park Foundation President and CEO Darlene Negrotto. “[It’s] a big part of our issue. People just don’t know.”
“If you wish to use the likeness…”
Vulcan was a century old before it was ever the subject of a trademark. The cast-iron statue, commissioned by the Birmingham Commercial Club and created by sculptor Giuseppe Moretti in 1904, was designed to represent Birmingham’s industrial strength in that year’s World’s Fair in St. Louis.
After that exhibition, it took over a year for Vulcan to be re-erected in Alabama; it stood at the Alabama State Fairgrounds from 1906 until 1936, when it was placed atop a pedestal at the newly constructed Vulcan Park on Red Mountain. The statue was subject to a number of repairs and a modern “facelift” in 1968 before the Vulcan Park Foundation was formed in 1999 to oversee the statue’s restoration.
That restoration was completed in 2004, the statue’s centennial. The foundation applied for trademarks of the statue’s name and image in March of that year as part of “some very strict guidelines” attached to the restoration’s federal funding “for what we have to do for 50 years to maintain the historic condition of the statue and the pedestal,” Negrotto said. The trademark request for the statue’s name was approved by the United States Patent and Trademark Office (USPTO) the following year, while application technicalities prevented the trademark of Vulcan’s image from being approved until 2008.
The Vulcan Park and Museum’s website features a page dedicated to the trademark, which states, “If you wish to use the likeness (photo, sketch, drawing, etc.) of Vulcan or the word ‘Vulcan’ you must contact our Marketing/Public Relations department and obtain a license … prior to sending out any advertising and/or utilizing Vulcan icons in association with your business or organization.” The web page also lists uses that would require a license from the foundation — advertisements, websites, and merchandise, among others — but the page also seems to imply that all uses of Vulcan’s name and likeness are subject to the trademark.
That’s something that just isn’t true, said Woodrow Hartzog, an associate professor at Samford University’s Cumberland School of Law and a former trademark examiner for the USPTO.
“A lot of times, the natural inclination of rights holders is to exercise as much control as possible over the rights,” Hartzog said. “There are a lot of common myths when someone has trademark protection, because it’s like, ‘Oh, I can’t use this word at all,’ or ‘I can’t take a picture of this.’ … But that’s not really how trademark law works. It sounds often more protective than it actually is in practice. And that’s what’s likely true in this case as well.”
“Consistent with His Dignity”
For Negrotto, who has been president and CEO of the Vulcan Park Foundation since 2004, the trademarks on Vulcan exist to preserve “the integrity of the name and the image and its use in the public realm … so someone couldn’t just use the image for something that was totally inappropriate.”
The trademarks were intended, Negrotto continued, to protect the “symbolic importance of the statue to Birmingham and to the state — even nationally. He represents our heritage and our past. And over the course of time, people embraced the statue. [But] maybe some of the judgment that was used in utilizing the image may not have been consistent with his dignity and that importance to us as a community.”
For Negrotto, one such example of Vulcan’s dignity being damaged occurred in the mid-1910s when, while on display at the Alabama State Fairgrounds, the statue was used as an advertising mascot. In 1914, Vulcan’s empty left hand was used to hold a plaster ice cream cone bearing the name of the nearby Weldon-Jenkins Ice Cream stand. Later brands that used the statue for promotional purposes included Coca-Cola, Sherwin-Williams, and Heinz. Such uses, Negrotto said, were a “denigration,” and part of the reason the trademarks were initially deemed necessary.
Similarly, Negrotto says the trademark is intended to discourage people from altering the statue’s appearance. “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 told Weld in 2015. “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.
“If there’s a misuse, we know it when we see it,” she said.
But trademark law’s ability to protect the dignity of marks is limited, Hartzog said.
“It’s important to remember that the purpose of intellectual property [law] is not to give the owner of that property some sort of moral right to the mark,” Hartzog said. “We don’t recognize that copyright owners or trademark owners have some sort of moral right to make sure that their brands aren’t criticized. This goes to the very heart of the First Amendment, and the United States’ system of intellectual property recognizes the value of free speech.”
Hartzog pointed to the legal concept of trademark tarnishment, which protects famous marks from “being associated with disreputable things” — typically lurid or illicit things such as illegal drugs, which might be damaging to Vulcan’s brand.
“But the law is going to be very careful to balance that sort of tarnishment with people’s free expression and the ability to depict historical landmarks in ways in which they choose,” Hartzog said. “If people want to make a political statement by showing Vulcan totally naked as representative of the lack of funding for historical landmarks or something like that, then certainly that would be considered expression, which is largely protected by the First Amendment. And outside of the general rule [regarding] tarnishment against trademarks, there wouldn’t be much recourse.
“You have to be very careful to walk that line between patrolling your mark for tarnishment, which is a very limited sort of remedy, and watching out to avoid overreach, which is going after anyone that would depict Vulcan in a perhaps embarrassing or otherwise critical or degrading way, which is people’s right to free expression, particularly if you’re engaged in noncommercial conduct.”
“The Likelihood of Someone Being Confused”
When it comes to commercial depictions of Vulcan, though, the Vulcan Park Foundation can make a much more solid case. The purpose of trademark law is largely to prevent confusion in the marketplace; that is, to make sure that the sources of goods and services are not misidentified. (For example, a hypothetical start-up company named Google Services would run into some problems with trademark law.)
“If you were to informally hold an educational workshop at Vulcan Park,” said Hartzog, referring to one of the services specifically protected by Vulcan’s trademark, “and you were to market your services as Vulcan Educational Services, … it’s possible that would be confusing, and people would think that your services were actually being sponsored by the Vulcan Park Foundation. … That would be a really easy case where Vulcan could come in and say, ‘You’re misusing our trademark for the word ‘Vulcan.’”
The goods and services specified by the trademark registration are very important, Hartzog said, because they limit the scope of what the foundation can pursue. “They certainly don’t have total control over the word ‘Vulcan,’” he said. “The way that it works is, you don’t get a trademark for all goods and services. You can only get a trademark for very specific, limited, identified goods and services. So if you have a trademark for T-shirts, for example, you can’t use that trademark to go after someone who makes a service or some other non-T-shirt good, unless there’s the likelihood of someone being confused about the source sponsorship or affiliation of that branding. That’s the key.”
The registrations for both the word “Vulcan” and the statue’s imagery specify protection of the following goods and services: Promoting economic development, business, chamber of commerce, services in the nature of convention, and tourism in and around the city of Birmingham, Alabama; Retail gift shop services featuring articles relating to the Vulcan park statue the ‘VULCAN’ and the history of Birmingham, Alabama; Promoting and enhancing the image of the city of Birmingham by arranging for the licensing of the Vulcan park statue, its likeness, and the Vulcan name in connection with goods such as wearing apparel, foods, and novelties; … Sponsoring and organizing sporting events, cultural events and recreational activities in and around the city of Birmingham, Alabama; education and entertainment services, namely, conducting seminars, workshops, conferences, and exhibits in the field of history of Birmingham, Alabama.
Negrotto put it in simpler terms, stating that the foundation pursues those who “take advantage of the goodwill associated with [Vulcan].” Requests from political or fundraising campaigns to use the imagery of Vulcan are not approved, she said, because that implies that the campaigns were sponsored by the foundation.
But part of the protections granted by the foundation’s trademark are intended to protect the goods and services generated by the Vulcan Park and Museum itself — particularly, Negrotto said, the creation of official Vulcan-centric merchandise, the proceeds of which go toward the operation of the park and museum.
“That is a real, viable commercial endeavor for us, to create merchandise that has the likeness and the name on it,” Negrotto said. “For us, because we’re the custodians [of the statue], we’ve got to have those revenue streams. He’s not cheap.”
The upkeep for Vulcan, she said, comes from that merchandise, not the money generated by licensing fees. “That pretty much doesn’t even cover the legal filing costs,” she said. “The reality is, we want him to be used, but we’re not trying to profit off of that. Our profit area is the merchandise. When others create merchandise that has the image or the name on it, then that’s where we have to say, ‘Hey, we’re sorry, you can’t do that.’”
“We Wouldn’t Want Him to Be Left Out”
Things become significantly less clear, though, when it comes to artistic depictions of Vulcan — particularly when artists want to sell works of art featuring imagery of the statue.
“That’s a real grey area to us,” said Negrotto. “If it’s a work of art, that’s one thing. But if it’s 50 duplicates that are sold commercially, that could be something different. And this is where we have to look at it and consult with legal counsel. … Where do you draw the line between true art and a commercial venture? That’s a tough question, and I don’t have an easy answer.”
Hartzog said he sees that grey area as “one of the fundamental tensions in all of intellectual property law, which is trying to make sure that we protect freedom of expression while also properly incentivizing property owners to create creative works by giving them certain ownership-like rights in these images.”
But would works of art depicting Vulcan as part of the larger Birmingham skyline be seen as susceptible to the Vulcan Park Foundation’s trademark protections? It’s a stretch, Hartzog said.
“For example, from my yard, I can see Vulcan in the distance,” he said. “If I decided to paint what I saw in my front yard, including some of Vulcan, and then sell that painting, particularly if Vulcan is featured in the background, it would seem to be a really aggressive overuse of intellectual property to come after me for selling a painting when it’s not likely to indicate source sponsorship or affiliation with the owner of the trademark.”
Negrotto seemed to agree. “I’ve not seen that as something we’ve ever pursued before,” she said.
“Usually when he’s included in the skyline in images or art, it’s usually okay by us, because that’s bigger than just him,” added Morgan Berney, the foundation’s director of marketing and PR. “We wouldn’t want him to be left out of that skyline.”
But a correspondence from earlier this summer between Berney and a local pottery company suggested otherwise.
Susan Gordon, artist and president of Susan Gordon Pottery, LLC, submitted a licensing request for a coaster design that would feature the Vulcan’s silhouette as part of the city’s skyline (which also prominently featured silhouettes of the Regions-Harbert Plaza and Sloss Furnaces). The coaster, Gordon told Berney, was to be sold directly to customers at Pepper Place Market for the retail price of $28, with the possibility of selling the coasters to Cahaba Heights retailer Chickadee for resale.
“Usually, we ask for 10 percent of what you retail for,” Berney replied, to which Gordon agreed. In a follow-up email, though, Berney added that “no more than 100 should be produced.” When Gordon declined, responding that she had expected to be able to sell “upwards of 1,000 of these,” Berney responded by suggesting a license for 500 coasters with the image, “then renegotiate for another 500 when you sell out of the first.
“Because Vulcan is an iconic piece of Birmingham’s skyline, we’re definitely willing to negotiate,” she said. Gordon instead chose to remove Vulcan’s silhouette from the coaster’s design entirely.
When asked why the coaster’s design — of which the Vulcan silhouette was neither the central nor the most prominent part — was not considered “okay” by the foundation, Berney replied, “We get concerned when the use of the image strikes us as something that we think is likely to cause confusion either as to the affiliation, connection, or association of the goods with Vulcan Park Foundation, or as to the origin or approval of the goods, services, or commercial activities by Vulcan Park Foundation.
“In being reminded of the conversations with Ms. Gordon, the method and production numbers indicated it as a commercial use of the image,” she added. “We have to make judgment calls, and that was the judgment there. Dozens of artists and vendors appreciate the trademark that we manage and are willing to work with us by providing a nominal portion of proceeds to support Vulcan and our nonprofit organization.”
Gordon maintains that her use of the Vulcan’s silhouette, by its lack of prominence in the overall design, would not have caused confusion regarding source sponsorship or affiliation — which means it would not have been subject to Vulcan Park Foundation’s trademark claim.
“A lot of times, people are using the Vulcan trademark in an ornamental way, which means in a way that does not indicate source sponsorship or affiliation, but just as a display,” said Hartzog. “Trademark rights do not extend to those ornamental uses, necessarily. … It’s one area that trademark owners often take advantage of, and those who are on the receiving ends of these kinds of complaints don’t always draw the distinction between these fair uses of the trademark and those that are really confusingly similar to confuse people of source sponsorship or affiliation.
“Part of the story of intellectual property law is that it’s often easier to not use it,” he added. “Even though you may be legally in the right, the relative uncertainty concerning whether or not you’re entitled to use it or not, or just the cost of getting an attorney and pushing back — people don’t want to risk a lawsuit.”
Does that mean that trademark law can often lend itself to erroneous or overreaching enforcement on the part of intellectual property owners? “Absolutely,” Hartzog said. “But that’s not really unique to Vulcan. That’s endemic in the entire intellectual property system, and it’s one of the reasons why consumer advocates often argue for clearer rules for what constitutes trademark infringement and what doesn’t, and clearer rules protecting freedom of speech, because it’s so closely related. It’s difficult to draw the lines.”
Despite the complexities involved, Negrotto maintained that maintenance of the trademark is not one of the Vulcan Park Foundation’s main priorities. “This is not what we do all day, every day,” she laughed. “It’s not something that we are really well versed in.
“The more that people understand, the more the word gets out, the easier it is for us to respond to the requests. Because we don’t want to be the bad guy. We’re not. We’re just doing what we’ve been asked to do as part of our responsibilities and promoting Vulcan as the symbol of our region, which is part of our mission. Please, ask us. More than likely, we’ll say yes.”