CommLawBlog : Broadcast & Communications Lawyers & Attorneys : Fletcher Heald & Hildreth Law Firm : Telecommunications, FCC Regulation, Communications Act

NFL backs off trademark claim to "Who Dat"

We weren’t the only ones who weighed in on the NFL’s questionable decision to claim trademark rights in “Who Dat”. As we reported, Senator David Vitter was all over the issue like a cheap suit, as was Louisiana Governor Jindal and his Attorney General Buddy Caldwell, according to reports here and here (among others). And the winners in the beat down are: common sense, reason, the Who Dat Nation, and just about everybody but the NFL.

Of course, the NFL couldn’t just cowboy up and fess up to a mess up. No, it sniffed that it wasn’t really trying to stop the widespread use of “Who Dat” – rather, it was just trying to prevent use of that phrase “only if a Who Dat item also contained NFL or Saints trademarks or if it is falsely claimed that an unauthorized item is affiliated with the Saints or NFL”, according to an MSNBC report.

Wait a minute. The Wall Street Journal’s WSJ.com reported that in late January the NFL had filed in Florida to register (under Florida’s local trademark laws) the expression “who dat” on apparel. And the Journal quoted the NFL’s blunt instrument cease-and-desist letter as saying that using “who dat” is likely to “confuse the purchasing public into believing” that items with the slogan are sponsored by the NFL. The Journal also quoted an NFL rep as saying that for 20 years the NFL has been “using and enforcing its rights in the ‘who dat’ mark to refer to Saints football”.   So the latest spin they’re trying to apply to their problem appears to be, well, spin.

Be that as it may, reason has apparently prevailed here, so now we can get back to the matter at hand: getting ready to stuff ourselves beyond belief on food and alcohol while a bunch of overly large men beat each other senseless.

And, we’ll remind you yet again, that the NFL does have a valid, registered trademark in the term “Super Bowl” and will, if prior experience is any indication, continue to prosecute unauthorized uses of that term to the fullest extent possible.

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The NFL illustrates our point, again.

A couple of days ago we ran our annual alert about the fact that some folks – large professional sports organizations in particular – seem to be trying to take control of our language by registering as trademarks just about every word or phrase in sight . . . and then telling us we have to pay to use those words and phrases. For those who may not have believed us, check this out: reports out of New Orleans indicate that the NFL is claiming that “Who Dat” – long the catch-phrase of the Super Bowl-bound (oops, make that Super Bowl ®-bound) Saints, and before that a staple of minstrel shows and vaudeville acts back into the 1800s – is a registered NFL trademark. 

According to those reports, the NFL has gone after local Big Easy tee-shirt vendors, trying to get them to stop selling their own home-grown “Who Dat” tees. Seems a bit heavy-handed, particularly in view of the hard times folks in N’awlins have suffered in recent years. (That’s what Senator David Vitter thought, at least. He fired off a letter to the NFL advising that he is printing up, for sale, a bunch of tee shirts emblazoned with the message “WHO DAT say we can’t print Who Dat!” His message to the NFL: “Please either drop your present ridiculous position [asserting control of “Who Dat”] or sue me.”)

“Ridiculous” seems about right to describe the NFL’s practice of going after local business owners for something like this. That’s especially so when any rational person would understand that this is one of those situations where you're better off cultivating support for one of your more hard-luck franchises, even if it costs you a few bucks here or there.  

But for our purposes here at CommLawBlog.com, it helps us make our point: if the NFL is willing to swim against the tide of goodwill that’s flowed into New Orleans since Hurricane Katrina, you should figure that the NFL will be perfectly happy to go after you for misuse of “Super Bowl” – darn, we messed up again – “Super Bowl ®”. Who dat ® say you haven’t been warned?

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Our annual cautionary reminder about trademark protection

Hmmmm. Rumour has it that there’s some kind of important football game coming up in a week or so, down in Miami (the anglicized spelling is another nod to the fact that I don’t consider this “real football”). 

That means it’s time for the obligatory reminder that the term “Super Bowl ®” has been registered as a trademark by the NFL, so using the term without the NFL’s permission . . . yadda, yadda, yadda, serious financial penalties for infringement.

There’s a term for this type of recurring annual story in the journalism world: “evergreen”.   Rather than waste your time and ours, we’ll simply link to the story we posted on this issue last year.  Just substitute “Colts” and “Saints” for “Steelers” and “Cardinals”. The legal principles remain exactly the same.

We should also point out that the NFL is not the only organization which has managed to stake a claim to particular words or phrases that get considerable public attention periodically. For example, just over the horizon but closing in fast we have the “Olympics ®”, the “Oscars ®”, and the “FIFA World Cup ®” (you know, the real football). And there are lots more where these came from. Some trademark owners are more obnoxious than others about enforcing their rights in the mark against every little Tom, Dick or Harry – the NFL’s hard-nosed efforts along those lines are quasi-legendary. Still, the fact is that, by jumping through the trademark registration hoops, these folks have obtained the right to control the use of their marks to a significant degree. They have also obtained the right to sue anyone who infringes on their marks. You should contact us if you have any questions as to whether a term by which you might ordinarily refer to a major event – sporting or otherwise – is a registered trademark subject to these limitations.

The preceding has been brought to you as a public service by CommLawBlog ®.

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A couple of recent court cases touch on issues we've discussed recently regarding the licensing of image and other trademark-type rights claimed to be held by athletes and sports leagues.  

Licensing of NFL Apparel

The big news is that the United States Supreme Court has agreed to hear oral argument in a case involving the National Football League's ability to engage in exclusive licensing of its merchandise.  The case  is an appeal by a company called American Needle of an adverse decision in the United States Court of Appeals for the Seventh Circuit.  For some 20 years American Needle (along with a number of competitors) had been licensed by the NFL to produce and sell caps bearing NFL logos. But then the NFL decided to enter into an exclusive marketing deal with only one company.  After Reebok was awarded the exclusive deal, American Needle challenged the right of the NFL to strike such an exclusive deal.  American Needle lost the last round in the Seventh Circuit.

Sports law experts are watching the case because, in a separate petition for Supreme Court review, the NFL itself had asked the Court to broaden the antitrust exemption the NFL currently enjoys.  The relief the NFL sought could affect not only all aspects of the NFL's operation, but also the status and operation of other major professional sports leagues.  Since the Supremes appear to have granted only American Needle's petition for cert, and not the NFL's, it's not clear whether the NFL's requested relief will be fair game when the case is presented.  But we'll be watching to see whether the Court makes any pronouncements that might shed light on how it would rule in other areas regarding licensing of team or player trademarks or image rights. 

While the American Needle case involves an overtly commercial use of these trademarks, there is an outside chance that the Court could make a broader pronouncement about the licensing of these rights generally which would affect the ongoing lawsuits by CBS Interactive and Yahoo against the NFL regarding the use of player images and information in fantasy sports. We'd rate this as "highly unlikely" but may attend the oral argument nonetheless. 

Use of College Football Player Image Rights in Video Games

More former college football players are stepping up in the pocket to file suit against Electronic Arts for that company's use of their likenesses in its "NCAA Football" video game.  We previously discussed the lawsuit filed by former Nebraska and Arizona State quarterback Sam Keller.  That case was filed in the United States District Court for the Northern District of California.  Now former Rutgers quarterback Ryan Hart has filed a similar action in a state court in Somerville, NJ.  He is joined in this lawsuit by former University of California quarterback Troy Taylor. 

So, while college football players may or may not attend class, at least a few former players might become part of a class action lawsuit.

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Apparently there is some kind of big football game upon us. Not really caring for the sport myself and wanting to stay out of trouble, I won't actually say the name of the game or the teams involved.  What's that?  You didn't know about the implications of using the NFL's registered trademarks without their permission? 

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