CARL J. BARBIER, District Judge.
Before the Court are motions for summary judgment filed by Who Dat Yat Chat, LLC (Rec. Doc. 166), Storyville Apparel LLC (Rec. Doc. 184), and Fleurty Girl, LLC (Rec. Doc. 194); Who Dat, Inc.'s oppositions to same (Rec. Docs. 205, 207, and 206); replies (Rec. Docs. 217, 215, and 221); and a sur-reply (Rec. Doc. 224). Having considered the motions, the legal memoranda, the record, and the applicable law, the Court is prepared to rule on the motions.
The instant lawsuit primarily concerns the claim of trademark rights in the phrase "Who Dat." The phrase is in popular usage in Louisiana as an expression of community pride, sports enthusiasm, and other notions of social significance. The subject of this lawsuit is well-known. In early 2010, in conjunction with New Orleans Saints Superbowl mania, sales of merchandise with the phrase "Who Dat" exploded in Louisiana. Big business took notice. The NFL sent cease-and-desist letters to local retailers, although it eventually backed off its position. However, the NFL has settled, leaving the case in a somewhat uncertain procedural posture that merits a brief review before turning to the merits.
This proceeding includes two consolidated cases. The first is a declaratory judgment action filed by Who Dat Yat Chat, LLC ("WDYC") in 2010, which was removed to the Eastern District of Louisiana. At the time, WDYC intended to open a coffee shop in Violet, Louisiana, bearing the name "Who Dat Yat Chat." WDYC received a cease-and-desist letter from Who Dat, Inc. ("WDI"), advising that WDYC's plan to open the coffee shop bearing the intended nomenclature would violate WDI's trademark rights in the phrase "Who Dat." Also during March 2010, WDI filed its own lawsuit in the Middle District of Louisiana alleging trademark infringement and naming several defendants, including the NFL, the New Orleans Saints, the Louisiana Secretary of State, and several Louisiana retailers. In the complaint, WDI alleged its entitlement to declaratory relief; cancellation of Saints trademarks; a permanent injunction; and damages for fraudulent registration, breach of contract, deceptive advertising, unfair competition, trademark infringement, trademark dilution, commercial and product disparagement, negligence, and fraud.
On June 2, 2010, the Court denied WDYC's motion to remand and granted WDI's motion to transfer the declaratory judgment action to the Middle District, where WDI's lawsuit was then pending (Rec. Doc. 20). Thereafter, WDI's lawsuit involving the NFL was transferred to the Eastern District, leaving the WDYC declaratory judgment action the only lawsuit pending in the Middle District related to the Who Dat trademark claims (Rec. Doc. 24-4). On September 17, 2010, Judge James Brady in the Middle District ordered, in light of the parties' joint advisory, that the declaratory judgment action be transferred back to the Eastern District (Rec. Doc. 24). Several days later, the Court ordered WDI's lawsuit and the WDYC declaratory judgment lawsuit consolidated (Rec. Doc. 26). In October 2010, the Court recognized the "somewhat unusual procedural posture" for the WDYC lawsuit in denying WDYC's motion for sanctions against WDI (Rec. Doc. 46).
On November 17, 2010, the Court ruled on a motion to dismiss filed by the NFL and the New Orleans Saints concerning claims brought against them by WDI (Rec. Doc. 64).
During oral argument on a prior motion to dismiss, the lawyer for the Saints and the NFL stated that it was the Saints' position that "Who Dat" is a "generic phrase" in the "public domain," although the Saints would still protect the phrase as a trademark when used in connection with other NFL or Saints trademarks. Rec. Doc. 61, at 16. The Saints' and NFL's lawyer proceeded to relate to the Court that a "black and gold t-shirt saying Who Dat" was "fair game" and that if WDYC's owner wanted to "put that Who Dat on her coffee shop, God bless her."
According to its complaint, WDI is a Louisiana corporation formed in 1983, owned by brothers Sal and Steve Monistere. In that same year, Steve Monistere and Carol Nuccio wrote, produced, and recorded "Who Dat" as a song, with Aaron Neville and a few New Orleans Saints football players singing along. That same month, WDI recorded state trademark registrations for the phrase "Who Dat." WDI avers that in 1988, at the request of the New Orleans Saints, WDI helped form and promote the Who Dat! Fan Club, that the Saints recognized WDI as the first user of the "Who Dat" mark, and that the Saints contractually agreed to transfer any trademark rights it had in the phrase "Who Dat" to WDI. WDI claims ownership of the mark "Who Dat" and claims that it has derived income from royalty payments and licensing fees from the sale of merchandise bearing "Who Dat" trademarks.
WDI alleges that "Steve Monistere decided to develop a phrase that could be used as a battle cry unique to fans of the Saints" (Rec. Doc. 41, at 8). WDI's allegation is juxtaposed against the movants' and their proposed expert's
As previously noted, WDI has pending claims against WDYC, Fleurty Girl, and Storyville, which claims are the object of the instant summary judgment motions. As previously discussed, WDYC is the name of a coffee shop that WDYC's owner has intended to open in Violet, Louisiana. Fleurty Girl is a local New Orleans retailer that sells t-shirts, children's books, jewelry, and other accessories. Fleurty Girl's merchandise contains the phrase "Who Dat" as well as variations on that phrase. Storyville is also a retailer that offers various products containing the phrase "Who Dat." One of the movants is quick to point out that the extent of WDI's licensing scheme has not been limited to small retailers, citing WDI's cease-and-desist letter to Coca-Cola. Rec. Doc. 194-1, at 3 (citing Rec. Doc. 194-2, at 16). There also claims pending against Monogram Express and Liquid Ventures Inc., who were both defaulted on March 15, 2011. Rec. Doc. 100.
The third amended complaint filed by WDI presents 13 counts (Rec. Doc. 41). These counts request declaratory relief; request cancellation of certain marks; allege fraudulent registration of certain marks; request a permanent injunction; and allege claims for breach of contract, deceptive advertising under Louisiana law, trademark infringement under the Lanham Act, state statutory trademark infringement and dilution, unfair competition, federal trademark dilution, federal commercial and product disparagement, negligence, and fraud. The issue is whether WDI's claims and counterclaims against WDYC, Fleurty Girl, and Storyville survive summary judgment. WDYC seeks dismissal of all claims asserted by WDI in its complaint and cancellation of WDI's trademark. Fleurty Girl and Storyville each moves for dismissal of all of WDI's claims against it.
The three movants largely advance the same arguments for dismissal of WDI's claims against them. The overarching theme depicted in the several motions is that the phrase "Who Dat" is in the "public domain" and therefore insusceptible of being trademarked. The movants assert that the phrase was never associated with any specific good or service, and was never limited to any particular sport or sports team. Rather, the phrase was in the public domain long before WDI purported to adopt it as a trademark. In similar fashion, they argue that WDI has no goodwill in "Who Dat" because WDI's initial use was to record a song to associate the phrase with the Saints football team, rather than to identify the source of any products WDI intended to sell. They argue that when consumers buy "Who Dat" — labeled goods, they do not contemplate a single source backing the quality of the goods. The movants' argument is well-encapsulated by Fleurty Girl's characterization of WDI's stance: common phrases in the public domain are automatically trademarkable if one simultaneously forms a company with the same name.
The retailer movants argue that "Who Dat" is generic because it describes a type of good—t-shirts (and other apparel) that say "Who Dat"—and therefore is not a protectable trademark. To illustrate, Storyville states that consumers walk into the movants' stores asking for a "Who Dat t-shirt." Therefore, the phrase "Who Dat" is generic because it describes a particular class of products. The movants argue, in the alternative, that "Who Dat" is merely descriptive of t-shirts that say "Who Dat," the phrase has not acquired secondary meaning, and therefore it is not trademarkable. In support of their secondary meaning argument, the movants argue that WDI cannot show that the term's primary significance in the public's mind is the producer, rather than the product. They aver that if a survey were taken, it would prove what is already known—that WDI is not associated in the public mind with "Who Dat."
WDI responds that the movants' "public domain" analysis is misguided. As an initial matter, WDI asserts that most trademarks are words, phrases, or symbols that come from the public domain, as in "Apple" for computers and "Nike" for sporting goods. It avers that the appropriate analysis is whether "Who Dat," when used in connection with the sale of specific goods and services, is sufficiently distinctive to warrant protection. WDI states that it does not seek to exclude fans of the New Orleans Saints from using the phrase as a battle cry at football games, but rather to claim exclusive rights to the mark in connection with the sale of goods and services similar to those provided by WDI in connection with the Who Dat marks.
WDI argues that its mark is strong and protectable. It argues that the genericism argument is extremely misguided. To illustrate, it states that if "Who Dat" was a generic trademark, a customer would walk into a store and request "a Who Dat" because the mark would identify the class of goods to which the product belongs. This is not the case; "Who Dat" is not generic for "t-shirt." WDI also avers that the mark is not merely descriptive because "Who Dat" does not describe any aspect of the goods or services bearing that phrase. Rather, WDI asserts, "Who Dat" is an arbitrary mark, entitled to the strongest possible protection, in that it is a phrase with common words used in a unique way to identify the source of WDI's trademarked goods. Additionally, the United States Patent and Trademark Office's ("PTO") registration of WDI's Who Dat marks, in the context of soft drinks, entertainment services, fishing lures, and clothing, is prima facie proof of the mark's distinctiveness. WDI further argues that, in any case, the proper categorization of a mark's strength is a question of fact and that the public need not be able to identify the actual source of a trademarked good for the trademark to serve as a source indicator for that good.
Specifically in response to WDYC's motion, WDI avers that its "Who Dat Blues Band" mark is valid, protectable, and incontestable. It argues that the registration of this mark by the PTO is prima facie proof of the mark's distinctiveness. It avers that the repeated granting of registration for its Who Dat marks by the PTO in various contexts shows that the Who Dat marks are inherently distinctive, without the need for any proof of secondary meaning.
The movants also argue that WDI's state trademark registrations are ineffective in conferring any trademark rights to WDI. Although acknowledging that state registration may confer procedural advantages, the movants argue that the state registrations at issue did not create any substantive rights. They assert that WDI's state registrations have expired or were canceled. WDYC argues that state registration was improperly granted because WDI has not made or sold any goods bearing its alleged trademarks. It also argues that WDI's state registration was obtained fraudulently. WDI responds that a trademark need not be registered for it to obtain protection because trademark ownership is established by use, not registration. It also states that it need not rely on its state registrations because its federal trademark rights are sufficient for its claims to survive summary judgment.
WDYC argues that WDI's incorporation including the term "Who Dat" does not allow WDI to prevent WDYC from opening a coffee shop entitled "Who Dat Yat Chat." It asserts that a corporation does not have the right to use a corporate name if such use would amount to unfair competition in the use of a mark. It argues that WDI has gained no trademark rights by incorporating as "Who Dat, Inc."
WDYC also argues that collateral estoppel precludes WDI from litigating its claims in this case. WDYC argues that a state court ruled on the instant claims when WDI previously filed for a preliminary injunction. WDI responds that the prior state court judgment dismissed a request for a temporary restraining order and both parties' request for a preliminary injunction. WDI argues that none of the issues raised in the 1983 litigation were litigated to the point of a final judgment.
Storyville argues that the phrase "Who Dat" on apparel is functional, and therefore cannot be a trademark. It states that consumers demand t-shirts with the phrase "Who Dat" because of their desire to express group identity and to show support for the region and for the Saints football team. Storyville argues that consumers purchase Who Dat t-shirts because of the words themselves, not because the phrase indicates the source or affiliation of the shirts. Therefore, "Who Dat" serves a function that is essential to the underlying good on which it is emblazoned. Fleurty Girl lends support to this argument in stating that the consuming public does not care where the shirts come from, and that "Who Dat" is not found on the inside label but rather the exterior that displays the message that a buyer seeks in purchasing a Who Dat shirt.
Storyville argues that WDI did not have a trademark in 2010, the year in which WDI sued Storyville, because WDI abandoned any trademark rights it may have had. Storyville avers that Storyville's business did not exist until 2006, and thus the only claims logically applicable to it are those for selling Who Dat-branded merchandise in late 2009 and early 2010, during the Saints Superbowl frenzy. Storyville argues that WDI dropped out of business for well over five years, failed to police its trademark for almost all of the 1990s and 2000s, and therefore abandoned any trademark rights it previously may have had. Storyville avers that although WDI filed an intent-to-use application in 1993, WDI never filed a statement of use, and in 1995, the PTO declared WDI's application abandoned. Storyville characterizes WDI's efforts as an intent to hoard a mark, rather than to use it in commerce. Storyville also asserts that the Saints, not WDI, registered "Who Dat" in 1988 for advertising and business, renewed the registration in 2008, and registered the phrase for clothing in 2007.
Storyville also argues that WDI's federal dilution claim should be dismissed because WDI cannot meet the high standard of proof of the mark's fame. Storyville asserts that it does not bear the burden of proving lack of fame, but that WDI must prove fame as one of the elements of its federal dilution claim. Storyville argues that WDI has not met its summary judgment burden, where the vast majority of the United States population is unexposed to WDI's marks. Storyville also argues that each of the 13 counts in WDI's third amended complaint must be dismissed because they fail as a matter of law when applied to Storyville.
WDI argues that Storyville's arguments lack merit. WDI cites case law that it asserts precludes Storyville's functionality argument. Regarding Storyville's abandonment argument, WDI asserts that there are issues of material fact precluding a grant of summary judgment. WDI argues that its inadvertent failure to file a statement of use does not indicate an abandonment of actual use, and that the affidavits submitted by WDI show that WDI continuously promoted and sold Who Dat merchandise under its mark from 1983 to the present. As to the dilution claims, WDI avers that the Louisiana statute does not require a showing of fame; and as to the federal claim, Storyville has provided no evidence regarding fame or lack thereof. WDI avers that at least there are factual issues, where the marks have been used for nearly 30 years, WDI has extensively advertised using the marks, and WDI has applied for trademark registration. Finally, although WDI concedes that certain causes of action were asserted only against the New Orleans Saints and the NFL, WDI argues that the other counts in the complaint survive summary judgment.
Summary judgment is appropriate when "the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law." FED. R. CIV. P. 56(c)(2);
If the dispositive issue is one on which the moving party will bear the burden of proof at trial, the moving party "must come forward with evidence which would `entitle it to a directed verdict if the evidence went uncontroverted at trial.'"
If the dispositive issue is one on which the nonmoving party will bear the burden of proof at trial, the moving party may satisfy its burden by merely pointing out that the evidence in the record is insufficient with respect to an essential element of the nonmoving party's claim.
Trademark law is concerned with the promotion of competition through protecting consumers against confusion and monopoly and protecting the investment of producers in their trade names.
"Public domain" is the movants' rallying cry. Largely based on Ms. Walton's purported expert report setting forth the multi-century history of Who Dat's usage in common parlance and various cultural settings, the movants argue that because the phrase has always been in the public domain, it is not subject to exclusive use in commerce by any one entity. As WDI persuasively notes in its opposition memoranda, one need look no further than some of the most popularized brands in the United States to see that words and phrases eventually obtaining trademark protection often emerge from the sea of general human discourse—from "Apple" for computers to "Blackberry" for mobile phone devices. Indeed, the Fifth Circuit has favorably countenanced the selection of words and designs from the public domain to serve as trademarks:
WDI argues that the Court should defer to the PTO's determination that the Who Dat marks are distinctive. It avers that the PTO has repeatedly granted registration of "Who Dat" as a mark in connection with a broad range of goods and services. WDI refers to patent applications and registrations in the context of soft drinks, live performances by a musical band, fishing lures, and apparel. However, because the counterclaim and claims at issue involve clothing retailers and a coffee shop, only the PTO filing regarding apparel appears relevant. WDI avers that it filed an application with the PTO to register the Who Dat mark in connection with clothing, and that the application was approved for registration on June 2, 1992, without any demonstration of secondary meaning. However, the document cited by WDI actually indicates that the trademark application's "Abandonment Date" was February 26, 1993, and that the mark was not actually registered on June 2, 1992, but was "Published for Opposition" on that date. Rec. Doc. 206-9, at 1. Therefore, WDI cannot rely on its filing to establish ownership in a putative Who Dat mark for selling apparel.
Even so, this does not preclude the possibility that WDI has ownership of a trademark in "Who Dat" in the context of apparel and/or restaurants. Trademark ownership is established by use, not registration.
Fleurty Girl asserts that WDI appears never to have sold any of its own merchandise labeled "Who Dat" so as to identify its own goods, although WDI has persisted in licensing its putative trademark rights in the phrase to other businesses that do sell apparel labeled with the phrase. A trademark right cannot exist in a vacuum; it only arises in connection with specific goods or services.
WDYC essentially argues that where it intends to sell coffee, donuts, and sandwiches at its coffee shop, WDI cannot possibly prevail in proving a likelihood of consumer confusion. WDI states that it asserts that the name "Who Dat Yat Chat" would likely cause confusion with WDI's "Who Dat Blues Band" mark. The market for a blues band, in the abstract, has little to do with the market for coffee shop goods and services. A trademark holder "may not enjoin others from using the mark if the likelihood of confusion between his product and the infringer's is minimal or non-existent, such as where the parties to the action use the mark in totally different markets, or for different products."
Of course, to prove it has a protectable mark, WDI must also prove that its mark is distinctive. The paradigm for addressing trademark strength is a categorization into one of four categories, listed from weakest to strongest: (1) generic, (2) descriptive, (3) suggestive, or (4) arbitrary or fanciful.
WDYC incorrectly argues that WDI is collaterally estopped from pursuing its claims against WDYC in the instant case. The prior litigation in state court led to a judgment in November 1983 dissolving a temporary restraining order and denying both parties' requests for a preliminary injunction. Rec. Doc. 166-11. The judgment dismissing the case indicated that both parties—WDI and a clothing retailer—could pursue damages in a trial on the merits.
The Court does not decide that WDI has a protectable trademark. It only decides that the movants have not carried their summary judgment burden of demonstrating the absence of a genuine issue of any material fact regarding whether or not WDI has a protectable mark or marks in the phrase "Who Dat."
Even where a plaintiff has a federally registered mark, alleged infringers such as the movants in this action may raise a "legal or equitable defense or defect . . . which might have been asserted if such mark had not been registered." 15 U.S.C. § 1115(a). Thus, if the movants properly prove no genuine issue of material fact concerning the applicability of a defense, the federal trademark infringement claims must be dismissed.
It is a complete defense that the registrant of a mark has abandoned the mark. 15 U.S.C. § 1115(b)(2). Trademark abandonment occurs through the owner's nonuse and intent not to resume use.
PTO records for WDI's mark, serial number 74459278, shows that the mark's class status is "Abandoned."
Apparently, this particular mark was not the first Who Dat mark for clothing for which WDI filed an application that was subsequently listed in PTO records as abandoned. WDI points out the existence of this registration in its opposition memorandum for the proposition that the application was approved for registration without any demonstration of secondary meaning. Rec. Doc. 207, at 16. However, the exhibit it references, a printout of a search of PTO records, shows that the mark, serial number 74218866, is listed not as registered on June 2, 1992, but as published for opposition on that date. Rec. Doc. 207-9. A search for serial number 74218866 in TARR reveals that this mark's current status is "Abandoned because no Statement of Use or Extension Request [was] timely filed after [the] Notice of Allowance was issued."
WDI's abandonment of its trademark applications may be evidence of whether it intended to abandon the marks. On the other hand, if the failure to complete the registration was inadvertent, abandonment of the applications may not prove abandonment of the trademarks.
Pretermitting the issue of intent,
Steve Monistere avers in his affidavit that, as president of WDI, he has personal knowledge that WDI consistently and continuously used Who Dat marks from 1983 until the present by "distributing, selling, manufacturing, licensing, and offering products, goods, services, entertainment, music cd's, records, and albums, food and merchandise under those trademarks." Rec. Doc. 207-1, at 6. He avers that this was the case even during the "lean years when `WHO DAT' merchandise was not selling well" and that WDI "has never abandoned or intended to abandon its use of these marks."
The record also contains the affidavits of several retailers that have paid for licenses with WDI to use the phrase "Who Dat" on their merchandise. They aver that they sold Who Dat-branded merchandise pursuant to these licensing agreements during the alleged period of abandonment.
Notwithstanding these affidavits, Storyville presses its abandonment argument premised on a distinction between the sale of merchandise bearing a trademark and the use of a trademark. It argues that even if WDI tried to sell Who Dat merchandise, WDI does not present any evidence of an attempt to maintain exclusive trademark use from 1994 when WDI failed to file a statement of use through late 2009 when WDI became proactive during the Saints' winning football season. However, Storyville cannot prevail on summary judgment because of WDI's evidence, which Storyville does not rebut with its own evidence, that WDI attempted to maintain any goodwill it had in the marks through continuing to enter into licensing agreements and to sell goods bearing the marks.
"That the mark is functional" is a defense to an infringement suit. 15 U.S.C. § 1115(b)(8). The statute does little to define the functionality defense, which has accumulated substantial judicial gloss. Under the traditional test, a mark is functional and therefore incapable of trademark protection "if it is essential to the use or purpose of the article or if it affects the cost or quality of the article."
"Who Dat" on a t-shirt may be an element of product design in some sense. If it is fancifully inscribed on the shirt or displayed along with related items of local culture, it certainly could constitute artistic expression that is in some sense independent of any tendency to suggest that the garment originated with a company that sells wares bearing that particular phrase. However, this does not necessarily mean that any design element in "Who Dat" would be "useful" enough to be "functional." Under the traditional formulation, the phrase would not be functional because it is not essential to the use or purpose of the garment. The garment's central purpose of covering the wearer is preserved regardless of whether there is text on the garment. Although in some sense a popular phrase like "Who Dat" would affect the "quality" of the article, it has no effect on the ability of the garment to serve its primary clothing function.
However, under the more broadly stated "competitive necessity" formulation, "a functional feature is one the `exclusive use of [which] would put competitors at a significant non-reputation-related disadvantage.'"
The doctrine of aesthetic functionality acknowledges that when "aesthetic considerations play an important role in the purchasing decisions of prospective consumers," a design feature of a product that substantially contributes to the aesthetic appeal of the product may not be trademarkable. RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 17, cmt. c (1995). The doctrine is an application or extension of the basic functionality premise: if a design confers a significant benefit upon consumers that cannot practically be duplicated by alternative designs, it is aesthetically functional. Id. However, because beauty is in the eye of the beholder, it is difficult to evaluate a given design's aesthetic superiority over alternative designs. Thus, a finding of aesthetic functionality ordinarily requires objective evidence of a lack of adequate alternative designs.
To the extent it is a viable theory, aesthetic functionality arguably would apply in a case like the present, as Storyville argues it does. Although the movants have not introduced concrete evidence in the form of consumer surveys or otherwise, it makes sense that consumers who purchase clothing labeled with the phrase "Who Dat" would give no great attention to the manufacturer or brand name, but would care greatly that the shirt reads, "Who Dat." It appears highly probable in light of the phrase's popular history in local New Orleans culture that consumers want Who Dat gear because it says "Who Dat"—perhaps combined with some other design element that the consumer wishes to identify with, such as a token of New Orleans culture, the Saints football team, or even indignation regarding the controversy raised by the instant case.
The Supreme Court's approval vel non of the aesthetic functionality doctrine has been unclear. In
In
The Fifth Circuit revisited the aesthetic functionality doctrine in detail more than three decades later in
The court then addressed the defendant t-shirt manufacturer's non-traditional functionality argument that "the shirts allow groups of people to bond and show support for a philosophy or goal; facilitate the expression of loyalty to the school and a determination of the loyalties of others; and identify the wearer as a fan and indicate the team the fan is supporting."
The Fifth Circuit's decision in
Although WDI relies on its alleged federal trademark rights to defend against the instant motions, the movants do argue that the state law claims should be dismissed. The movants do not carry their summary judgment burden, largely for the reasons previously discussed in the context of the federal infringement claims. WDYC argues that the Louisiana trademark registrations should be canceled because they were obtained fraudulently.
WDYC's argument is not persuasive. That the public used the phrase "Who Dat" prior to October 14, 1983 does not make WDYC's application fraudulent. WDYC asserts that WDI asserted that the mark was first used anywhere on that date—that it was first used as a trademark on that date. There is no proof that such a statement would be untrue, for none of the movants argues that some other entity used "Who Dat" as a trademark prior to WDI.
Fleurty Girl argues that the state trademark claim should be dismissed because WDI's only use of the trademark has involved licensing agreements. It cites WDI's complaint that discusses WDI's licensing agreements in the early 1980s, around the time that WDI applied for state trademark protection.
Concerning the federal dilution claim, Storyville argues that WDI cannot meet the very high standard of proving the WDI marks' fame. Storyville argues that WDI's sales are negligible and its advertising non-existent. However, Storyville introduces no evidence to support these assertions. Instead, it points out that WDI bears the burden of proving that "Who Dat" is a famous mark in connection with WDI's goods and argues that WDI has not done so and cannot do so.
First, the Louisiana anti-dilution statute does not require a showing of the mark's fame.
Because WDI would bear the burden of proof at trial regarding the federal dilution claim, Storyville may satisfy its burden by merely pointing out that the record evidence is insufficient with respect to the element of fame.
Many of the counts in WDI's third amended complaint appear not to apply to the movants, but were intended to apply to the NFL and the Saints, who are no longer in the litigation. Thus, Storyville argues that each of the 13 counts should be dismissed. WDI concedes that the causes of action for cancellation (Count 2), fraudulent registration (Count 3), breach of contract (Count 5), and fraud (Count 13) only applied to the claims against the NFL and the Saints. Thus, those claims should be dismissed.
Storyville requests the dismissal of all other counts: Count 1 for declaratory relief, Count 4 for a permanent injunction, Count 6 for deceptive advertising under state law, Count 7 for federal trademark infringement, Count 8 for state law statutory trademark infringement and dilution, Count 9 for unfair competition, Count 10 for federal dilution, Count 11 for federal commercial and product disparagement, and Count 12 for negligence. The Court declines to dismiss these counts because of factual issues, as previously discussed. However, the Court already dismissed Counts 11 and 12 as to the Saints and the NFL (Rec. Doc. 64). WDI is ordered to amend its complaint to remove allegations regarding claims against parties that have been dismissed and to clarify the causes of action it presses forward.
For the foregoing reasons,
