Monthly Archives: February 2010

35 Revisions to the Rules of Professional Conduct

For almost a decade, the Rules Revision Commission of the State Bar Board of Governors has been busy working the California Rules of Professional.[1] In November 2009, The California State Bar’s Board of Governors approved nearly three dozen new or amended professional conduct rules. These thirty-five rule revisions deal with issues ranging from attorney’s fees to lawyers serving as third-party neutrals.[2] Many view this as a key step on the road toward updating the state’s standards governing attorney conduct.

“This approval is a first step towards finalizing a much needed process,” states Alan M. Insul, “The result of the Rules Revision Commission’s work is something every California lawyer will need to review and address in their practice.”[3] Although the Board of Governors approved the rule revisions in November 2009, they won’t take affect for quite a while.[4] At the present time, these rules are under public comment until March 12.

The proposed rules and accompanying comments were part of the first group of recommendations presented to the board of governors for its consideration. None of the rules will go into effect, however, until after the public comment period – and unless and until they are approved by the California Supreme Court. In fact, the public is invited to speak at a March 11 public hearing in Los Angeles on proposed changes to the California Rules of Professional Conduct, which govern all lawyers in the state.

One major reason for the changes – the revisions are an attempt to harmonize California’s ethical rules with the ABA’s Model Rules. California is the only state in the country that does not follow the American Bar Association’s Model Rules of Professional Conduct in some form or another. These Model Rules form the bases of many states professional rules of conduct.

Indeed, the new California rules will even follow the numbering of the ABA ‘s Model Rules – this may take some time for California lawyers to adjust to.[5] For example, Rule 3-110 used to detail Failing to Act Competently. Just like the ABA numbering system, the rule on competence will now be California Rule of Professional Conduct 1.1.

Some of the Important Rule Revisions:

Require an attorney serving as a third-party neutral to explain the difference between an advocate and third-party neutral to someone unlikely to be aware of the distinction[6]

Retain California’s current standard prohibiting, for disciplinary purposes, an “unconscionable fee.” The commission had been considering adopting the ABA’s standard that prohibits an “unreasonable fee.”[7]

Follow the ABA Model Rule that expands ex parte communication to include all represented “persons.” The current rule applies only to a represented “party.”[8]

State that a lawyer shall not intentionally, recklessly, or repeatedly; fail to perform legal services with competence[9]

After the public comment deadline terminates on March 12, the 35 rule revisions will then be voted on by the State Supreme Court. The Supreme Court has the ultimate authority to then amend or drop the rule revisions. So stay tuned California attorneys, you are about to practice under an entirely new ethical regime.

According to State Bar President Howard Miller, “The work is now moving along … and the timetable on the rules revision calls for completion of the redrafting and renumbering during the summer of 2010 and then submitting the rules to the California Supreme Court, which has final authority for their adoption.”

For more information from the State Bar of California on the 35 rule revisions click here. And if you need a little extra help with the rule revisions 35 Revisions to the Rules of Professional Conduct is an excellent resource.

[1] The Rules of Professional Conduct of the State Bar of California are attorney conduct rules the violation of which will subject an attorney to discipline. Pursuant to statute, rule amendment proposals may be formulated by the State Bar for submission to the Supreme Court of California for approval. The State Bar has assigned a special commission to conduct a thorough study of the rules and to recommend comprehensive amendments.

[2] For a complete discussion of the history of the amendments, please see The Discussion Draft to the Proposed Rules of Professional Conduct of the State Bar of California

[3] According to Free Press Release Alan M. Insul is a Los Angeles-area lawyer who limits his practice to the areas of corporate, business, and real estate.


[5] However, the specific conflicts rules included together in Model Rule 1.8 are assigned separate numbers in the proposed California rules.

[6] See proposed Rule 2.4.

[7] See proposed Rule 1.5.

[8] See proposed Rule 4.2.

[9] The rule defines “competence” in any legal service as applying the diligence, learning, skill, and mental, emotional, and physical ability reasonably necessary for the performance of such service. See proposed Rule 1.1.

Literature and the Law

The great beauty of CLE is that whatever state you may practice in, there are only a few classes that you are required to take. California is one of the most burdensome, with six required units of legal ethics, substance abuse, and elimination of bias.

However, once you complete these required courses, there a number of other course that you are free to choose from to fulfill your minimum continuing education (MCLE) requirement. And as Director of Legal Education, I have noticed that there are quite a few attorneys that enjoy taking courses in their selected field to enhance their professional competence. However, there is also a large segment of attorneys out there who also enjoy taking a number of courses from outside their direct discipline. Indeed, the freedom of choice is an awfully powerful weapon in your hands.

And at Attorney Credits, we implore you to scour our course list in search of new and enjoyable courses that you might want to take – not just because you have to, but because you actually want to learn about a new subject or a new field of study. And one of the most popular courses on our website can teach you something new if you are looking for a little diversion, but it can also be very useful in a number of ways for many different types of attorneys.

For attorneys who rely on a pen or word processor, Literature and the Law is a very entertaining course and very useful at the same time. Taught by author Ona Russel, the course examines the connections and intersections between the two disciplines of Literature and Law. While you may think that these two fields of study are vastly unrelated, after spending an hour with Ona you may feel differently.

By examining rhetorical rigor, creative arguing, and reasoned empathy from works by Faulkner, Melville, and Dickinson, Dr. Russell details how literature can add practical value to the legal process – in the courtroom, at the bargaining table, and in the office. Attorneys who understand and harness the power of words and language will craft better arguments, write more persuasive briefs, and become better counselors – in addition to being entertained by Dr. Russell and her excellent analysis of the issues.

After all, attorneys are “wordsmiths.” Why not learn from some of the masters?

Employees or Independent Contractors: Traps and Pitfalls to Avoid

The economic downturn has not just hurt individuals, it has also left the Federal government and state governments with huge tax shortfalls.

As a means of closing this tax gap, the IRS is beginning to seriously scrutinizing working relationships — especially the employee/independent contractor designation. Facing record budget deficits, many federal and state officials are starting to aggressively pursue companies that misclassify employees as independent contractors.

The cornerstone of this new effort is President Obama’s 2010 budget which calculates that the federal crackdown will yield at least $7 billion in lost revenue over 10 years. The Obama administration plans to hire 100 more enforcement personnel and the I.R.S. has already begun auditing 6,000 companies to see whether they are in compliance with the law. Many states across the country have also have started to step up enforcement efforts, often in the form of stricter penalties for misclassifying workers.

The problem – in order to cut costs a numerous companies have chosen to wrongly classify regular employees as independent contractors. Companies that intentionally misclassify employees as independent contractors avoid paying Social Security, Medicare, and unemployment insurance taxes for those workers. And in this tough job market, workers are slow to rock the boat and challenge the misclassification.

This is not a small or random problem – many companies are intentionally passing employees off as independent contractors. The Department of Labor estimates that up to 30% of companies misclassify employees. And according to a New York Times article Ohio’s attorney general estimates that his state has 92,500 misclassified workers, potentially costing the state $35 million a year in unemployment insurance taxes, $103 million in workers’ compensation premiums and $223 million in income tax revenue. And last April, California Attorney General Jerry Brown won a $13 million judgment against companies that had misclassified 300 janitors, cheating the state out of payroll taxes.

At a time when companies are struggling, many in the business community are a little baffled by the increased federal and state scrutiny. In the aforementioned New York Times article, Randel K. Johnson questions whether the goal of raising a legitimate rationale for reclassifying workers. Johnson is the Senior Vice President with the United States Chamber of Commerce.

As Johnson also aptly points out, the laws are unclear in this area, and many employers are simply confused by the gray area that the law presents. And I would have to agree. Just listen to a tax attorney run through all the different factors and guidelines (that come from numerous sources) used to distinguish between an employee and independent contractor – your head starts to spin after a while.

Very generally stated – workers are generally considered employees when someone else controls how and when they perform their work. In contrast, independent contractors are generally in business for themselves, obtain customers on their own and control how they perform services. Among some of the most often misclassified workers are high-tech engineers, truck drivers, home health aides, and construction workers.

Companies are also able to circumvent many laws – minimum wage, overtime and antidiscrimination – by passing off regular workers as contractors allows. For example, independent contractors do not receive unemployment insurance if they are laid off or workers’ compensation if they get injured. And independent contractors rarely receive health insurance or other fringe benefits regular employees such as retirement benefits.

If you are an employment attorney or represent business, please join tax attorneys Stuart Hurwitz and Michael Sanders for Employees or Independent Contractors: Traps and Pitfalls to Avoid as they discuss the traps and pitfalls that your clients must avoid when making this difficult decision, and the consequences they face if they make the wrong choice. The course covers the IRS three point test, provides case examples, analyzes case law and details the consequences of misclassification.

CLE For the 21st Century

“What sculpture is to a block of marble, education is to the soul.”

— Joseph Addison

When we are younger I think we develop a misconception that as we go through life there is a day when we acquire all the answers and that our education is somehow complete. However, as I have progressed I realize just the opposite is true – the older I get the less I really know. And in order to constantly improve you must continue to educate yourself in this constantly changing world. It seems that every day brings a new advance in science, a major development in business or at least a new App for the iPhone.

While there are some techniques and practices that don’t go out of style, as society changes and the world around us seemingly becomes more complex, laws reflect that change and so does the practice of law. Whether it‘s new rules for the handling of electronically stored information or bettering your courtroom presence, we all have areas where we can grow, learn and improve to improve our skills as attorneys. And continuing legal education is one excellent avenue to brush up on statutory changes, polish an existing skill, or add a new tool to the arsenal.

As the Director of Legal Education, that is why I am so pleased of the selection of CLE courses that we feature on our website. We offer informative, yet relevant and entertaining courses and seminars that seek to increase the level of skill, knowledge, and professionalism of the twenty-first century legal practitioner. And with our one-click state bundles you can get all the units you need with a few clicks of your mouse.

According to the ABA, “as the bar becomes more technologically sophisticated, CLE must also branch out to meet the varied learning styles of the 21st century lawyer. So, too, must CLE, in order to be both valuable and relevant, take full advantage of the benefits offered by technology.” With years of technical development we have sought to leverage the power of technology to make fulfilling your CLE requirements easy and enjoyable so you don’t have to wait until the day before the MCLE deadline to get your classes done. Because we know that there is barely enough time in your schedule for a cup of coffee, we offer CLE on your own schedule all in one convenient, easy to use online format. And we will soon be offering CDs and DVDs for those attorneys who feel more comfortable working offline.

Because education is critical to continued professional development we hope that our Attorney Credits can serve as a valuable resource in your quest to enhance your knowledge and sharpen your skills as a legal practitioner.

Trick or Tweet? How About a Mistrial?

Thank you jurors, please leave your blackberries and iPhones outside the courtroom doors!

I have wanted to do a course on the electronic courtroom now for about six months – but of course, something always seems to come up and I haven’t been able to start writing the course. And I have seen no less than three articles in the last week commenting on the topic (thanks to the Judicial Conference and Time Magazine article). So I guess for now, the topic will remain blog fodder for you to chew on.

The reason the topic interests me so much is because the sanctity of the jury system and the right to a fair trial is again under assault by our new digital technologies and activities. Facebook, Twitter, Wikipedia – social networking, microblogging and easily accessible online resources have slowly crept into the courtroom and may force fundamental changes to our legal system.

In our new Information Age, how can we expect to sequester off juries from the outside world in order to uphold the fairness of our legal system? Everyday seems to bring a new trial that is tainted by Twittering jurors – and now even defendants are getting into the act. What’s next? Judges getting in trouble for “friending” defense attorneys? Oh wait …. that already happened in Florida.

This latest push to preserve our legal system comes from the Judicial Conference who just released model jury instructions in January that specify new protocol for juror conduct in our:

“You may not communicate with anyone about the case on your cellphone, through e-mail, Blackberry, iPhone, text messaging, or on Twitter, through any blog or website, through any internet chat room, or by way of any other social networking websites, including Facebook, MySpace, LinkedIn and YouTube.”

Bottom line: Drop that blackberry Juror #21!

In a January memo, U.S. District Judge Julie Robinson of Kansas, the chair of the Judicial Conference Committee on Court Administration and Case Management, told the informed the nation’s judges that the new jury instructions “address the increasing incidence of juror use, of such devices as cellular telephones or computers, to conduct research on the internet or communicate with others about cases.”

In the memo, Robinson told fellow judges that “more explicit mention in jury instructions of the various methods and modes of electronic communication and research would help jurors better understand and adhere to the scope of the prohibition against the use of these devices.”

But will jury instructions really be enough? Do jurors even listen to them in the first place, let alone heed putting down that iPhone in their right hand that they are just dying to jump online and share crucial legal details on their Facebook page?

Last year a federal drug trial in Florida ended in a mistrial when eight jurors admitted to doing research on the case they were hearing. In March 2009, there was also a call for a mistrial in the prosecution of Vincent Fumo — although unheeded — when a juror was discovered tweeting and publishing trial updates on Facebook when the former Pennsylvania state senator was convicted of a graft. Even the litigants have been caught tweeting red handed, as separate stories in the Detroit News and Pittsburgh Tribune-Review identify defendants who opted to microblog mid-trial. And in another case, a juror sent a Facebook friend request to a witness.

Further complicating the issues, there are no uniform instructions for state courts because each state is free to adopt its own set of jury instructions. For instance, Florida is recommending that judges instruct jurors “that they cannot perform outside research using the internet, or use electronic devices to communicate about the case,” multiple times throughout the proceeding

Wait until video clips from a trial shows up on YouTube because one of the jurors shot secret video from their iPhone!

3rd Circuit Weighs Privacy of Cell Phone GPS Data

“This court believes that citizens continue to hold a reasonable expectation of privacy in the information the government seeks regarding their physical movements/locations — even now that such information is routinely produced by their cell phones — and that, therefore, the government’s investigatory search of such information continues to be protected by the Fourth Amendment’s warrant requirement.” U.S. Magistrate Judge Lisa Pupo Lenihan.

A closely watched privacy rights case is before the 3rd U.S. Circuit Court of Appeals this week that will determine the 4th amendment rights of cell phone users. In a case that is touted as one of the most important privacy rights battles of the modern era, the Philadelphia based court will hear arguments this week on the proper legal standard to apply when prosecutors demand cell phone location data.

At issue is what standard — “reasonable grounds” or “probable cause” —prosecutors need to show in order to obtain the GPS data. The global positioning (GPS) data, which is recorded about once every seven seconds whenever a cell phone is turned on, can be used to effectively track the whereabouts and movements of every single cell phone user. The battle over the electronic data pits the DOJ (Department of Justice) against privacy and civil liberties advocates from the Electronic Frontier Foundation (EFF), the Center for Democracy & Technology and the American Civil Liberties Union (ACLU).

The Justice Department argues that the proper standard to be applied is the “reasonable grounds” standard — meaning that they only have to show that the records are “relevant and material to an ongoing criminal investigation.” However in her 2008 opinion, U.S. Magistrate Judge Lisa Pupo Lenihan in Pittsburgh issued a 52-page opinion stating that prosecutors must meet the “probable cause” standard.

It is such an important matter and the issues are so crucial that a coalition of privacy and civil liberties lawyers from the Electronic Frontier Foundation, the Center for Democracy & Technology and the American Civil Liberties Union have taken up the fight against the DOJ. Justice Department attorney Mark Eckenwiler will argue for the federal government and will be opposed by Kevin Bankston of the Electronic Frontier Foundation and law professor Susan Freiwald of the University of San Francisco School of Law. 3rd Circuit Judges Dolores K. Sloviter and Jane R. Roth, along with visiting 9th Circuit Senior Judge A. Wallace Tashima will hear the appeal on Thursday.

The case is also important because it further offers a rare glimpse into the mechanics of federal criminal investigations. In these criminal investigations, nearly all documents are filed ex parte and remain sealed until the indictments are handed up. The issue went public because Lenihan declared that her opinion “shall not be sealed because it is a matter of first impression in this district and circuit on issues concerning the statutory and Constitutional regulation of electronic surveillance which do not hinge on the particulars of the underlying investigation.”

In the original case, Pittsburgh prosecutors had asked for cell phone location data in an ongoing drug case. Judge Lenihan rejected the Justice Department’s approach to the issue when she applied the more stringent standard. In a show of solidarity, the opinion was also signed by all four magistrate judges in the Western District of Pennsylvania – Amy Reynolds Hay, Susan Paradise Baxter, Francis X. Caiazza, and Robert C. Mitchell. U.S. District Judge Terrence McVerry also later issued a three-page order that affirmed Lenihan’s opinion and application of the more stringent standard.

Prosecutors had argued that, under the Stored Communications Act – either read by itself or when read together with the Pen Register Statute – courts should apply the less burdensome reasonable grounds standard. In his 3rd Circuit brief, Mark Eckenwiler stated that the Pittsburgh prosecutors made the request for GPS cell phone data in connection with “an ongoing investigation into large-scale narcotics trafficking and various related violent crimes.” Eckenwiler needed the data because one of the targets of the investigation uses a number of vehicles and properties to conduct the illegal activities, traditional physical surveillance had proven difficult.

Judge Lenihan ruled that because such information “is extraordinarily personal and potentially sensitive,” prosecutors must meet a probable cause test when seeking this type of cell phone location data. Under a lower standard, Lenihan argued that the data would be “particularly vulnerable to abuse” due to the ex parte nature of the proceedings and the “undetectable nature” of the cell phone service provider’s compliance with such an order.

In a lengthy section of the opinion, Lenihan described the quickly evolving technology.“Cell phones, whenever on, now automatically communicate with cell towers, constantly relaying their location information to the towers that serve their network and scanning for the one that provides the strongest signal/best reception. This process, called ‘registration,’ occurs approximately every seven seconds,”as cell phone users change locations, the cell phones “automatically switch cell towers,” she penned, and telephone companies “track the identity of the cell towers serving a phone.”

Phones equipped with GPS capabilities can be tracked extremely accurately, Lenihan noted. According to the opinion, in urban areas where towers have become increasingly concentrated, tracking the location of just the nearest tower itself can place the phone within 200 feet, and triangulation data can provide further precision down to 50 feet. Lenihan concluded that the data sought by the prosecutor amounted to “tracking information,” and that Congress clearly intended to require prosecutors to meet a probable cause test to secure such data.

The DOJ argues that Judge Lenihan’s decision was wrong because the statutes clearly allow the government to require “a provider of electronic communication service” to disclose “a record or other information pertaining to a subscriber.” For the DOJ, Eckenwiler argued that “a request for historical cell-site information based upon specific and articulable facts establishing reasonable grounds satisfies each of the requirements of the statute.” Eckenwiler claims that there isn’t even a Fourth Amendment privacy interest since cell phone companies “regularly generate and retain” such data, and because the records “provide only a very general indication of a user’s whereabouts at certain times in the past.”

But in her brief Professor Freiwald argues that “to deny Fourth Amendment protection based on the government’s assurance that it seeks only limited [cell phone location data] flouts the fundamental principle that Fourth Amendment protections may not be left in the hands of law enforcement agents.” In a brief that was jointly filed by the EFF, ACLU and the Center for Democracy & Technology, Kevin Bankston urges the 3rd Circuit to uphold Lenihan’s ruling because he feels that Congress intended to give judges the discretion to deny such requests and require prosecutors to meet the ordinary standard for a search warrant.

Bankston argues that cell phone users have an expectation of privacy in such data because they “simply do not voluntarily expose their location whenever they make calls and receive calls … nor do they do so merely by turning on their cell phones.”

Here is the opinion. And you can also read more here.

Banned From Presidential Speech Due to Bumper Sticker

I chuckled pretty hard when I read about a recent case First Amendment case to come out of the 10th Circuit, which comes on the heels of the Supreme Court’s decision in Citizens United v. Federal Election Commission. Especially in First Amendment cases, courts really seem to strain their logic to validate their ideology – but Justice Paul J. Kelly of the 10th Circuit works pretty hard in a recent decision. Ironically, Kelly was put on the bench by George H.W. Bush in 1991.

In Weise v. Casper, the 10th Circuit found that people can be thrown out of a presidential event if the administration doesn’t like their bumper sticker because their bumper sticker is not speech. The ruling means, in short, that the would-be attendees who were ousted from the event had no First Amendment constitutional right to remain at a public speech.

The lawsuit arose from the plaintiff’s attendance at President George W. Bush’s March 2005 speech at the Wings Over the Rockies Museum in Colorado. As they drove into the event, they had a “No More Blood For Oil” bumper sticker – a phrase that had become synonymous with opposition to the Iraq War during the Bush administration. Merely hosting that message on their car – outside the event – was cause enough to remove the two attendees from Bush’s 2005 speech.

The White House had a policy of excluding those who did not agree with the president from his public appearances. It’s a policy a federal appeals court is upholding in a decision a dissenting judge decried as “simply astounding.” Although the speech was on private property, the President’s speech was an official government event, funded by the government. The two plaintiffs obtained the free tickets from a local Colorado representative and the event was open to the public.

The funniest part is the reasoning that the majority uses to come to their decision that the bumper sticker wasn’t protectable “speech.” At one point in the opinion Judge Paul J. Kelly makes the genius statement that “they weren’t even speakers at all … they were attendees” as if they had to actually speak at the event to have a First Amendment right to free speech and expression.

Further, according to the opinion, “Plaintiffs simply have not identified any First Amendment doctrine that prohibits the government from excluding them from an official speech on private property on the basis of their viewpoint.” The court adds, “Although defendants ejected them from the event on the basis of their speech outside the event, plaintiffs have identified no authority suggesting that mere attendance is transformed into speech or even expressive activity because of their speech elsewhere.” Judge Kelly works pretty hard at drawing distinctions – but his argument seems to crumble under his strained logic. Who cares if their speech took place outside the event, they were still ejected for it!

And while the 10th Circuit is hard at work limiting our individual freedoms, the Supreme Court is busy expanding corporation’s First Amendment rights. Somehow spending money is speech, but a bumper sticker is not.

Just last month, the Supreme Court overruled two important precedents about the First Amendment rights of corporations, and ruled that the government may not ban political spending by corporations in candidate elections. According to the majority, the 5-to-4 decision was a vindication of the First Amendment’s most basic free speech principle — that the government has no business regulating political speech.

Yet, that is exactly what they were doing in the 10th Circuit case – regulating political speech.

In dissent in the 10th Circuit case, Judge William Holloway said the individuals “were rudely, publicly and forcefully ejected from a public meeting to which they had properly gained admission by complying with the requirements that had been established. The speaker at the meeting was the president of the United States.” Holloway added, “It is simply astounding that any member of the executive branch could have believed that our Constitution justified this egregious violation of plaintiffs’ rights.” Holloway said the decision was “severely distressing” and added that the majority was “misguided.” I would have to agree with Judge Holloway – Judge Kelly, this is one case you got wrong.

Read More speech/#ixzz0eVjUr2gl

Who Dat Sey They Gonna Own That Mark?

Legendary NBA coach Pat Riley owns the trademark to the phrase “three-peat” even though the Lakers were never able to pull off the feat with all-star Magic Johnson in the late ‘8o’s. Those dreams were dashed by Michael Jordan evolving into the best basketball player of all time.

However, Riles & Co., the corporate entity of Coach Riley, successfully registered the trademark under U.S. Registration Number 1552980 despite the fact that Lakers guard Byron Scott coined the term and that fans had already used the chant at Laker games. Riles & Co. subsequently obtained additional registrations expanding the trademark to cover numerous other types of merchandise in addition to apparel.

Ironically, it was Michael Jordan – the man who dashed Riley’s chances of three-peating as coach of the Laker’s – who helped add serious profits to Riles & Co.’s bottom line. Riley went on to reap some serious coin by again licensing the phrase to merchandisers when the Bulls – led by Jordan – won three consecutive NBA championships from 1996 through 1998. Riley was also able to license the phrase when the New York Yankees won three straight World Series championships from 1998 through 2000 and when the Lakers won three straight NBA championships from 2000 through 2002. Although there have been a few challenges to the mark (many challenges claimed that the mark is generic), the trademark “Three-peat” is still active for shirts, jackets, caps, etc, and for commemorative mugs.

Well, fast-forward a few years, and it’s all just a case of history “Re-Peating.” Who dat sey they gonna own that mark? Who Dat? Who Dat?

For decades, the chant “Who Dat” has permeated the Lousiana Superdome at Saint’s home games. “Who Dat?” is short for “Who Dat Sey They Gonna Beat Them Saints? Who Dat? Who Dat?” an homage to the creole culture of the region. For years, the term (with its vaudeville and jazz roots) has been synonymous with the team and it’s ravenous fans as they cheer on their home team.

But who owns the rights to the “Whod Dat?” phrase? Roger Goodell would tell you that the New Orleans saints franchise and the NFL. Goodel, the current commissioner of the NFL, spent all last week sending cease and desist letters to Louisiana t-shirt shop owners ordering them to cease producing t-shirts bearing the phrase “Who dat?”

According to the NFL spokesman Brian McCarthy, “If ‘who dat’ is used in a manner to refer to Saints football, then the Saints own the rights.” And NFL spokesman Dan Masonson claims that, “Any unauthorized use of the Saints colors and other [marks] designed to create the illusion of an affiliation with the Saints is equally a violation of the Saints trademark rights because it allows a third party to ‘free ride’ by profiting from confusion of the team’s fans, who want to show support for the Saints.”

But is the NFL really the “free rider” here?

Whenever a trademark dispute arises, one of the primary questions to ask to ask is whether there is a likelihood of confusion amongst consumers. The NFL would have the burden of proving that the use of its “Who Dat?” mark has created a likelihood of confusion about the origin of it’s goods or services.

Trademarks serve to protect consumers by allowing them to identify a particular business as the true source of goods or services. The question would be whether people think of the NFL when they think of a gold and black “Who Dat? with a Fleur-de-Lis.

In addition, the NFL must also establish hat it has established a protectable trademark right in a the “Who Dat” mark. Two brothers from New Orleans also claim to hold a valid mark in the phrase through ‘first use.’ Sal and Steve Monistere, two musicians and avid Saints fans recorded a version of “When the Saints Go Marching In” in the early eighties and incorporated the “Who Dat” chant into their song. Aaron Neville later recorded their song in an early ’80’s video version. However, Steve and Sal Monistere’s record is currently listed as inactive, meaning that it was not renewed upon expiration. This may be proof that they abandoned the mark.

Without other valid mark holders, the question really becomes is the phrase really distinctive enough for the NFL to register it as a protectable trademark in the first place? In order to be have a valid right against infringers, a mark must be a distinctive sign or indicator used to distinguish it from other products or services. Courts often speak of marks falling along a “spectrum of distinctiveness,” with fanciful marks like Kodak being afforded the most protection and generic marks like “Murphy Bed” afforded no protection. Many are asking how the NFL can claim ownership of a phrase that has been used for over a century?

“Who Dat” has been used for over one-hundred years outside a football context and has its roots in the arts and culture of Louisana. Indeed, the phrase can be traced to vaudville acts in the 1890’s and jazz music of the 1930’s. And there are a multitude of high school and college football teams who have claimed to use the chant since the 1970’s. This may be proof that the mark is not valid because it is generic – or at least much more generic than Riley’s “three-peat.”

Interestingly, the NFL seems to be talking out both sides of its mouth. On one hand they claim to have enforced the mark for years. Brian McCarthy says the enforcement isn’t new and that for two decades, the NFL has been “using and enforcing its rights in the ‘who dat’ mark to refer to Saints football.”

However, the NFL just registered the mark with the Florida Department of State last week, right in time for the Super Bowl which is being held in Miami (no coincidence there!), and previous to that there were never any legal actions over ownership of the phrase. Many claim that NFL didn’t seem to care much about the mark a few years ago when the Saints were terrible and weren’t selling much apparel. But now that the profit motive is there – the NFL is too.

The NFL’s actions have not only angered fans, but they also have the Louisiana political community in an uproar as well. The cease and desist letters provoked responses from Louisiana’s Senator David Vitter, Lousiana’s Congressman Charlie Melancon, and state governor Bobby Jindal. Vitter sent a formal letter to NFL Commissioner Roger Goodell criticizing the NFL’s attempt to claim ownership of the chant. Vitter further informed Goodell that he would be printing t-shirts using the phrase and daring the NFL to sue him! Jindal merely asked the state attorney general to look into ownership rights of the phrase.

It will be interesting to see how it all plays out – and if anybody really cares next week after the Saints have beaten the Colts 27-24 in overtime. Personally, I just don’t see where the NFL is going to be able to establish rights to the mark. But it’s an interesting case because it shows just how valuable IP in sports has become – and just how far associations like the NFL will go to defend their alleged marks.