Chances are, you are one of the 100+ million people who watched Super Bowl XLIV on Sunday. To say it was big is an understatement – it was a day of record breaking. Along with being the most-watched television program since the series finale of M.A.S.H, it was the first appearance (and first Super Bowl win) for the Saints in the battle for the Lombardi Trophy. Sunday’s victory for the New Orleans Saints, and the subsequent strains of “Who Dat!” heard throughout New Orleans also echo a recent controversy over the Saints’ battle cry – and who, if anyone, can copyright or claim trademark on such a saying. Originating in minstrel shows and other decidedly un-PC uses, “Who Dat’s” modern associations with football are contested. Some claim it arose from Patterson High School, some 60 miles south of New Orleans, following a star football player, Dalton Hilliard, to LSU and later to the Saints in the 80s. Others say it came from a cheer used at Southern University and New Orleans’ St. Augustine High school. No matter the origin, though, “Who Dat” is now a beloved and unmistakable rally cry – it’s even been memorialized in song. Members of the Who Dat Nation say that the Saints fans own the slogan, but the NFL begs to differ.
Well known as a zealous and sometimes overprotective guardian of its intellectual property, the NFL began to target sellers of unofficial Saints merchandise using the slogan, claiming exclusive rights over the phrase based on a 1988 trademark. The NFL asserted that any use of the phrase, the Saints’ black and gold colors, or roman numerals infringed on their trademark. Another wrinkle in this issue? A lapsed copyright to the phrase belonging to two Louisiana brothers. This did not deter the NFL, however. Cease and desist letters – the ominous reveille of an impending IP suit – began to appear in late January. But Saints fans did not go quietly into the night. Their protests over the NFL’s claims raises the question of what exactly can be trademarked, and what kind of protections arise from them.
TRADEMARKS AND FAIR USE
Trademark Law’s modern iteration comes by way of the Lanham Act of 1946 – 15 U.S.C. §§ 1051-1127. A trademark, like a copyright, is created when the work it marks is created, but a trademark exists to identify the source of products and services (as opposed to works of literature or art, like copyrights). Trademarks are meant to be a unique identifier of certain brands to consumers – a distinguishing mark to assure quality and prevent fraud or misrepresentation. Trademarks must be distinct and specific. Merely descriptive or generic trademarks are often not registered by the US Patent and Trademark Office. Trademarks do not need to be registered, but registered trademarks (identified by the ® symbol) are more likely to be protected and upheld in court. Registered marks, if used uncontested for five years, become “incontestable,” which means that a mark may not be contested on the basis of being “descriptive,” (even if it is). Infringements on unregistered trademarks (identified by the ™ symbol) are not explicitly conferred any protection under federal law.
Trademark claimants, in order to bring a successful claim, must prove that they were the first party to use the mark in trade, and that the public associates it with their business. One powerful defense trademark defendants have is the doctrine of fair use. With trademarks, fair use is seen as a tool of the First Amendment – protecting the defendant’s right to use the mark to describe a product (not identify it) or to refer to the mark owner.
SO WHO OWNS “WHO DAT?”
Several parties have laid claim to the mark of “Who Dat” – including two trademarks by the New Orleans Saints Louisiana Partnership in 1988 (one for “Who Dat,” and one for the phrase in conjunction with the team’s Fleur de Lis logo). However, Steve Monistere, a local musician, registered the trademark five years earlier, in 1983, as part of his original version of the chant “Who Dat.” Monistere registered the trademark for the sale of records, cassette tapes, bumper stickers, t-shirts and other merchandise, claiming exclusive rights to the phrase, and was one of the first to call foul when the NFL went on the offensive.
The real ownership of the trademark is murky – if the phrase can even be trademarked. The immediate association with “Who Dat” is with the football franchise, not Mr. Monistere. Nevertheless, “Mr. Monistere claims he first sold shirts bearing the now infamous slogan in April 1983 – more than five years before the Saints claimed trademark on the phrase. He even filed a suit against Tees Unlimited in 1983 for copyright infringement: Tees Unlimited printed shirts saying “Who dat say dey gonna beat dem Saints.” The court held that neither side had exclusive rights to the phrase. There still remains questions over whether the phrase can be trademarked it all – it originates far before the 1980s, and its initial association with Louisiana football is not even clear. Even Saints coach Sean Payton asserts that “I dont think anyone can own Who Dat personally.”
SETTLING THE SCORE
Even after all the confusion regarding the true ownership of the phrase – and whether it is something that can be trademarked – the NFL registered a trademark for “Who Dat” in Florida, the location of Super Bowl XLIV. Their claims in Louisiana have been met with criticism and protest – even from Louisiana Junior Senator David Vitter. The NFL returned with an uncharacteristic almost-apology, saying that it would “narrowly focus” its enforcement attempts to uses of the phrase associated with other identifiers of the Saints.
This uncharacteristic backing off of the NFL is almost as unexpected as the Saints’ underdog win on Sunday. Still, the question remains: just who, if anyone, can trademark a slogan? The NFL may have backed off while the Saints came marching in (sorry), but the battle over “Who Dat” will have to wait until next season.