The state of Alabama announced a few weeks ago that all official signs coming into the state will receive a makeover. The longtime phrase “Alabama the Beautiful” will be replaced with “Welcome to Sweet Home Alabama.” An article earlier this week, HERE, reported, the state of Alabama will pay $75,000 as a licensing fee for use of the “trademark” Sweet Home Alabama. I am not going to speculate as to whether a road sign insignia change on every sign all across the state, to the tune of $61,000 with now an additional licensing fee of $75,000, is a good use of taxpayers’ money. Instead, let’s focus on the intellectual property implications of making such a change for the state of Alabama and why it might have been unnecessary for Alabama to pay this licensing fee.
The article states that Universal owns the trademark [emphasis added] of Sweet Home Alabama. However, a search with the United States Patent and Trademark Office for the phrase Sweet Home Alabama produces only three results, none of which are Universal and one of which is a man in Tuscaloosa who is apparently going to have clothing printed with the phrase. I am assuming this is once again an example of not quite accurate news reporting when it comes to intellectual property issues. What Universal does own is the musical work copyright in the song Sweet Home Alabama and is responsible for the publishing rights for the song. There are no doubts about this.
There are two types of copyright on every song. There is the musical work copyright and the sound recording copyright. The sound recording copyright is the copyright you actually hear when you listen to music. The musical work copyright is the copyright that protects the “work, including any accompanying words.” You can remember the difference because the sound recording is what you hear (sound = hear) and musical work copyright is the actual work (work = sheet music).
What Universal licensed to the state of Alabama is the words Sweet Home Alabama. For my longtime readers who know I am staunch advocate of creators’ rights, I’m going to shock you with this next statement. I think there are some very good arguments to be made that it was not necessary for the state to license or pay a fee to Universal for this type of use. The three main arguments are (1) Universal has not taken steps to trademark the title of the song; (2) the phrase is not protected by copyright, thus a license is not necessary, and finally, (3) if it is subject to copyright protection, then the use is transformative and would be fair use.
Short words and phrases can be subject to trademark protection. In this case, the trademark argument also fails. Unlike Jimmy Buffett’s Margaritaville, Universal has not taken the extra steps to register “Sweet Home Alabama” as a trademark nor does it point to a particular source of product. For additional reading on how the song title of Margaritaville is more valuable as a trademark than a song read my earlier article HERE.
A very good argument exists that the phrase is not copyrightable and subject to copyright protection, thus there is no need to license. The phrase may not be protected by copyright law because short phrases and titles are not subject to copyright protection. The phrase is not appearing with any other musical elements. So, while the music and accompanying words are subject to copyright protection together under a musical work copyright, on a sign in the middle of a pine forest in Alabama the music portion is missing. The copyright argument fails to me.
Even if the phrase is subject to copyright protection, the use on signs is transformative. The new signs will say “Welcome to Sweet Home Alabama.” New words are added to the original phrase found in the Universal tune. It does not use the phrase by itself. I am assuming the sign will have some sort of artwork attached to it also.
In Campbell v. Acuff-Rose Music, the Supreme Court stated “of the four 107 factors, “the purpose and Page II character of the use, including whether such use is of a commercial nature . . .,” the inquiry focuses on whether the new work merely supersedes the objects of the original creation, or whether and to what extent it is controversially “transformative,” altering the original with new expression, meaning, or message. The more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.” Meaning, there is a strong argument that a lyric on a sign is transformative because it adds new expression and meaning. Placing music lyrics on road signs certainly seems transformative. Finally, the fair use argument tips in the state of Alabama’s favor because isn’t a road sign alerting visitors to crossing state lines more informational/noncommercial in nature than an commercial use? Where is the commercial nature with use of the signage in this way?
In the alternative, I can certainly understand and appreciate why the state chose the safer and more traveled road of seeking licensing. The $75,000 for a five year license works out to $15,000 a year, barely over $1,000 a month. The fee is small compared to the cost of potential litigation. From this writer’s opinion, I think the state should have sought more versed intellectual property counsel or negotiated the fee lower.
What do my other IP readers think? Was it necessary for the state of Alabama to license this phrase from Universal? Is there something I am missing? Take part in the Comments section below and Stay Tuned In!
If you liked this post, please share it and click the FREE Subscription button above to get more! Follow and tweet to me on Twitter where I pass along the latest entertainment law, broadcasting and intellectual property news @RyanneDSaucier