[h1]NFL says it has exclusive rights to 'Who Dat' [/h1][h4]By
Jaquetta White, The Times-Picayune[/h4][h5]January 29, 2010, 9:30AM[/h5]
NewOrleans Saints fans attending a recent game party in St. Bernard seemto be showing the NFL what they think of its 'cease and desist' order.
Count the
National Football League among the growing members of
Who Dat Nation.After all, they own the phrase -- or so they say in cease and desistletters sent out to at least two local T-shirt retailers earlier thismonth.
In letters sent to Fleurty Girl and Storyville, the NFL ordered the retailers to stop selling a host of merchandise that it says violates state and federal trademarks held by the
New Orleans Saints.
Among the long list of things the NFL saysis off-limits without a licensing agreement are some obvious violationslike the official logo of the Saints and the team's name. But the onethat stands out is "Who Dat."
Who knew?
The NFL, notinga 1988 trademark the Saints registered with the Louisiana secretary ofstate, says it has exclusive rights to the phrase and demands that theretailers stop selling it.
"I was surprised," Fleurty Girl owner Lauren Thom said. "I think everybody was."
Thom's shirts feature the phrase Who Dat written as one word withlowercase letters and preceded by a hash mark, a nod to the language ofthe social networking site Twitter. On Twitter, a hash mark followed bya word unifies all tweets on a specific topic. If a tweet, forinstance, includes #whodat, it joins other posts on a page generallyabout Saints topics on Twitter.
"It was designed to unify the Who Dat Nation, not within a tweet,but through a shirt," said Thom, who began selling the shirts in Auguston her Web site before opening a store on Oak Street two months ago.
The NFL also claims that several shirts at Storyville T-Shirts violate the NFL trademark,including a black shirt with the phrase Who Dat Nation, a name commonlyused to refer to Saints fans, and a black shirt that uses the term WhoDat along with the Roman numeral XLIV.
According to the letter, "any combination of design elements (evenif not the subject of a federal or state trademark registration), suchas team colors, roman numerals and other references to the Saints" arealso trademark violations.
That means that a black shirt featuring XLIV in gold letters, a representation of this year's Super Bowl, is off limits.
Bewilderment abounds
But it is the league's claim to "Who Dat" that has drawn the ire of locals and store owners and has puzzled trademark attorneys.
"Personally, I don't think anyone should be able to own 'Who Dat,'"said Josh Harvey, co-owner of Storyville. "It should belong to thepeople of the city of New Orleans."
Before it became a rallying cry of fans of the New Orleans Saints, Who Dat was used as a cheer by
St. Augustine High School. And before that it was perhaps first heard in minstrel shows in the later 1800s.
By late afternoon Thursday, social media sites were plastered with status updates from Saints fans angered by the NFL's move.
One crafty Twitter user created a shirt mocking the NFL onthe Web site customink.com. In yellow lettering, the front of the blackshirt reads: "Who exactly is it that states they are going to defeatthe football team from New Orleans?" The back taunts: "Cease and desistthis."
Patrick Henry Barthel, who has gone by the nickname "Dat'' for muchof his life, including in his 2003 run for governor of Louisiana,struggled to understand how a corporation could claim to own a phraseit didn't create.
"In my opinion I don't see how you can take something that is NewOrleans, that has been around since I can remember and call it yourown," said Barthel, who half-jokingly worried that he might have tochange his name and made sure to emphasize the term dat in his speech."I'm Dat. That's my name. What's next? Are they going to tell me Ican't be Dat anymore? They don't own dat phrase, or dat language or datnation. It's not a phrase. It's a people. It's a community. It's theway we talk. For someone to say that dat language belongs to them,that's out the box."
Ron Swoboda, whose Monday night football show on WVUE is credited with introducing a Who Dat cheer to a large football audience in 1983, was equally puzzled.
"It amuses me because here you have a bunch of big powerful suits in the NFL andthey're just going to take these little people to court who might becoming out with a product here and a product there that they're notgoing to get rich off of," Swoboda said. "Who Dat is something thatcame from the people here and in this particular instance, I thinkthey're going to do a lot more public relations damage than they aregoing to do themselves monetary good."
Trademark ownership in dispute
Determining who, if anyone, has an exclusive right to the phrase mayprove to be just as difficult as figuring out its exact origins.
The New Orleans Louisiana Saints Limited Partnership registered themark "Who Dat" with the secretary of state's office in April 1988,claiming that it had first used the phrase in November 1983. There areno details about how the Saints first used the term on file with theoffice, because that information is not required for registration.
The following month, the Saints Limited Partnership registered themark "Who Dat" when used in conjunction with "fleur-de-lis design" withthe secretary of state's office. The combination of elements was firstused by the Saints organization on May 1, 1988, according to records,though again there is no specific example of such.
Both registrations are Class 35, which governs advertising and business.
However, Steve Monistere, according to records, registered thetrademark five years earlier, in 1983. Monistere recorded the Who Datthat appears over the song "When the Saints Go Marching In" at hisFirst Take studios in 1983 and created a company, Who Dat Inc., tomarket and sell the phrase on T-shirts soon after. According to theLouisiana secretary of state, Monistere requested a trademark on thephrase for use on records, tapes, T-shirts and bumper stickers. In hisrequest for registration Monistere claims to have first used the phrasein commerce on Oct. 14, 1983.
According to Monistere, that means he has exclusive rights to the term.
"My reaction was not surprise," Monistere said. "We totally expected it and it is typical of the way that the NFL does business."
Monistere's record is listed as inactive with the office, however, meaning that it was not renewed upon expiration.
According to local trademark experts, that doesn't mean that he nolonger retains exclusive rights to the phrase. A trademark is generallyassigned to the person who can show that they were first to use it incommerce, trademark experts said. But it will probably take a judge tosort out the true ownership of the phrase if, in fact, someone does ownit.
"It doesn't appear to me that the Saints can certainly claim thisterm. It became used by the fans and they started putting it onmerchandise before the Saints did," said Raymond Areaux, an adjunctprofessor of trademark and unfair competition law at Loyola University."Typically merchants pick a brand and they start putting it on theirmerchandise and they use it. That's not what happened here. Somehow itwas adopted by the fans and not by the Saints. It was a second decisionby the Saints and the question is 'Can they do this?'"
To prevail in a trademark infringement case, one has to show boththat the public associates a mark with your business and that you werethe first to use it, said David Patron, a partner at the law firm ofPhelps Dunbar.
"The issue with the NFL is primarily going to come down to do they have rights to this? Were they the first to use Who Dat in commerce," Patron said.
Monistere maintains that he was the first to use the phrase in commerce, on T-shirts sold in 1983.
"Before then no one had ever put Who Dat on a shirt," Monistere said. "That is what establishes the ownership of a trademark."
