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.