who-dat-behind.JPGNew Orleans Saints fans attending a recent game party in St. Bernard seem to 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 desist letters sent out to at least two local T-shirt retailers earlier this month.

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 says is off-limits without a licensing agreement are some obvious violations like the official logo of the Saints and the team’s name. But the one that stands out is “Who Dat.”

Who knew?

The NFL, noting a 1988 trademark the Saints registered with the Louisiana secretary of state, says it has exclusive rights to the phrase and demands that the retailers 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 with lowercase letters and preceded by a hash mark, a nod to the language of the social networking site Twitter. On Twitter, a hash mark followed by a word unifies all tweets on a specific topic. If a tweet, for instance, includes #whodat, it joins other posts on a page generally about 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 August on her Web site before opening a store on Oak Street two months ago.
NFL claims ownership of Who Dat

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 commonly used to refer to Saints fans, and a black shirt that uses the term Who Dat along with the Roman numeral XLIV.

According to the letter, “any combination of design elements (even if not the subject of a federal or state trademark registration), such as team colors, roman numerals and other references to the Saints” are also 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 the people 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.

who-dat-placard.JPGCourtesy Brown University LIbraryThe cover for E.E. Rice’s ‘Summer Nights’ featuring the song, ‘Who Dat Say Chicken In Dis Crowd,’ originally published by M. Whitmark & Sons around 1898.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 on the Web site customink.com. In yellow lettering, the front of the black shirt reads: “Who exactly is it that states they are going to defeat the football team from New Orleans?” The back taunts: “Cease and desist this.”

Patrick Henry Barthel, who has gone by the nickname “Dat” for much of his life, including in his 2003 run for governor of Louisiana, struggled to understand how a corporation could claim to own a phrase it didn’t create.

“In my opinion I don’t see how you can take something that is New Orleans, that has been around since I can remember and call it your own,” said Barthel, who half-jokingly worried that he might have to change 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 I can’t be Dat anymore? They don’t own dat phrase, or dat language or dat nation. It’s not a phrase. It’s a people. It’s a community. It’s the way 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 and they’re just going to take these little people to court who might be coming out with a product here and a product there that they’re not going to get rich off of,” Swoboda said. “Who Dat is something that came from the people here and in this particular instance, I think they’re going to do a lot more public relations damage than they are going to do themselves monetary good.”

Trademark ownership in dispute

Determining who, if anyone, has an exclusive right to the phrase may prove to be just as difficult as figuring out its exact origins.

The New Orleans Louisiana Saints Limited Partnership registered the mark “Who Dat” with the secretary of state’s office in April 1988, claiming that it had first used the phrase in November 1983. There are no details about how the Saints first used the term on file with the office, because that information is not required for registration.

The following month, the Saints Limited Partnership registered the mark “Who Dat” when used in conjunction with “fleur-de-lis design” with the secretary of state’s office. The combination of elements was first used 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 the trademark five years earlier, in 1983. Monistere recorded the Who Dat that appears over the song “When the Saints Go Marching In” at his First Take studios in 1983 and created a company, Who Dat Inc., to market and sell the phrase on T-shirts soon after. According to the Louisiana secretary of state, Monistere requested a trademark on the phrase for use on records, tapes, T-shirts and bumper stickers. In his request for registration Monistere claims to have first used the phrase in 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 no longer retains exclusive rights to the phrase. A trademark is generally assigned to the person who can show that they were first to use it in commerce, trademark experts said. But it will probably take a judge to sort out the true ownership of the phrase if, in fact, someone does own it.

“It doesn’t appear to me that the Saints can certainly claim this term. It became used by the fans and they started putting it on merchandise before the Saints did,” said Raymond Areaux, an adjunct professor of trademark and unfair competition law at Loyola University. “Typically merchants pick a brand and they start putting it on their merchandise and they use it. That’s not what happened here. Somehow it was adopted by the fans and not by the Saints. It was a second decision by the Saints and the question is ‘Can they do this?’”

To prevail in a trademark infringement case, one has to show both that the public associates a mark with your business and that you were the first to use it, said David Patron, a partner at the law firm of Phelps 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.”

A search of NFL merchandise on the league’s Web site did not find any items bearing the phrase “Who Dat.” However, “Believe Dat!” is featured on numerous items including flags, T-shirts, pennants and magnets.

It is unclear whether the NFL has ever used the phrase in commerce. Telephone calls to the NFL were not returned Thursday.

But the league appears to be making a push to control use of phrase in the marketplace. On Monday, the day after the New Orleans Saints defeated the Minnesota Vikings to secure a spot in Super Bowl XLIV in Miami, the National Football League filed to register the phrase “Who Dat” with the Florida secretary of state.

The request for registration includes a photograph of a black shirt with the word “Saints,” and the phrase “Who Dat?” surrounding a fleur de lis.

Legal precedent?

Should the dispute rise to the level of litigation, there may already be legal precedent.

In 1983 Monistere’s company, Who Dat Inc., sued Tee’s Unlimited for distributing white and yellow T-shirts with black lettering that read: “Who dat say dey gonna beat dem Saints.” Who Dat Inc., contended Tee’s Unlimited had infringed on its copyright.

Tee’s Unlimited argued that the phrase made popular with Saints fans through a song was in the public domain.

A judge ruled that neither side had exclusive rights to the phrase and both were allowed to sell shirts using it.

Harvey said he doesn’t plan to fight the Saints’ order, but would like clarity on the ownership status of the phrase.

“If someone does have legal ownership of this phrase, we’ll gladly pay them a royalty,” Harvey said. “But with the NFL and (Monistere) both claiming ownership, it’s unclear who, if anyone, owns Who Dat.”

Thom also doesn’t plan to challenge the NFL. She said an outcome of the brouhaha has been that business to her new store has increased. Because the league has allowed her to sell off the remaining inventory of #whodat shirts, the shirts became a collector’s item, selling out in two days.