Who Dat, Inc. v. Rouse’s Enterprises, LLC, No. 12—2189, 2013 WL 395477 (E.D. La Jan. 31, 2013)

Who Dat Inc. (“WDI”) is a company who purports to own the trademark in Who Dat, a phrase chanted by fans cheering for the New Orleans Saints. The phrase reached the height of its fame during the Saints’ historic run to Super Bowl victory at the end of the 2009 NFL season. WDI has no connection to the New Orleans Saints or the NFL. Rouse’s is a Louisiana based grocery store that allegedly sold goods bearing the phrase Who Dat.

After unsuccessful attempts to stop Rouse’s from using the mark, WDI brought suit in the Eastern District of Louisiana for trademark infringement. In its answer, Rouse’s claimed non-infringement based in part on the fact that WDI does not own an enforceable trademark and that the trademark is invalid and unenforceable. Rouse’s also asserted affirmative defenses and filed counterclaims. Similar to its answer, it defended that WDI does not own or hold enforceable rights in the phrase Who Dat and that the marks are invalid and unenforceable. It then counterclaimed for a declaration that the marks are invalid and unenforceable and that WDI has no rights in the marks. If the answer, defenses, and counterclaims all strike you as being the exact same thing, it is because they are. Accordingly, WDI sought to strike the defenses under Rule 12(f) for redundancy and dismiss the counterclaims under Rule 12(b)(6) for simply restating what WDI put in its complaint and not putting forth a distinct claim of relief. The court rejected both.

First, the court held that the defenses were not redundant because they present distinct legal reasons for why WDI should not succeed on the merits. The court neglected to say what the distinct reasons were, but it did say that striking a defense, especially in this early stage of litigation, is very rare and requires a showing by the moving party that a failure to do so would cause prejudice. WDI did not show prejudice, so its motion to strike was struck.

Second, despite WDI’s claim that the counterclaims were the “mirror image” of WDI’s complaint, the court disagreed again. The court found that counterclaims for declaratory judgments of non-infringement require more from the defendant/plaintiff (Rouse’s) than merely showing the plaintiff/defendant (WDI) failed to meet its burden. Rather, the defendant/plaintiff has a burden as well. In other words, Rouse’s needs to do more than just show that WDI did not effectively prove it has rights in the marks or that they are enforceable, it must conclusively show that WDI has no rights in the mark. This is potentially harder to do and, according to the court, presents a qualitatively different claim. Moreover, a declaratory judgment action plays an important role because “’mere exoneration from infringement does not always meet the necessities of a wrongly accused defendant. He wishes to be freed from the restrictions of an invalid patent or trademark, and he represents not only himself, but in a sense, also the public which is likewise excluded from the field of monopoly.’”

In light of the foregoing both of WDI’s motions were denied. Thus, in response to the question, “Who dat think they gon beat them grocery sellers?” the court answered “Not WDI. At least not today.”