The heavily cited Navajo Nation v. Urban Outfitters lawsuit is still underway, and after a year or so of little news to report (other than an ongoing squabble between Urban Outfitters and its insurance company as to who is liable for the legal costs in connection with the litigation), the case is slated to move forward after the Navajos scored a favorable ruling in the lawsuit they filed in February 2012. This past week, U.S. District Judge Bruce D. Black “disagreed with Urban Outfitters’ argument that the Navajo Nation lacked standing [to sue] because it allegedly could not show injuries such as harm to its reputation, lost customers or lower profit margins traceable to the retailer and that it lacked sufficient identity interest in the descriptions of the non-Navajo products, according to the order,” per Law360. Black held, instead, that the Navajo has shown injury in fact and thus, can continue to pursue its claim under the Indian Arts and Crafts Act.
The Navajo’s early victory does not stop there, though. Judge Black stated in his opinion, which was released on December 21st, that not only can the Navajo Nation pursue its initial claims against the hipster retailer in connection with its use of the Navajo Nation’s trademarked moniker on an array of goods, but the Navajo Nation may also seek damages under the Indian Arts and Crafts Act for the retailer’s use of additional tribal names. Black held that Urban Outfitters’ use of terms, such as “Pueblo,” “Zia” and “Zuni” and more general terms such as “Indian” and “Native American,” are actionable, as the Navajo was able to demonstrate that it sells goods marketed and produced by members of those tribes and by artisans who identify with the general terms.
The Navajo Nation initiated litigation against Urban Outfitters in 2012 stemming from the sale of its “Navajo Hipster Panty” and flasks (among other goods including garments, jewelry, purses, etc.), after Navajo Nation Attorney General, Harrison Tsosie, sent a cease and desist letter to the retailer back in October 2011. Urban Outfitters responded by removing the word “Navajo” from all of its products but failed to do so for its affiliate brands, such as Free People, as well for the goods in its catalogues and outlet stores. As a result, the Navajo Nation filed suit, alleging trademark violations and violations of the federal Indian Arts and Crafts Act.
In its complaint, the Navajo Nation, one of the largest tribal governments of all North American tribes, alleged that Urban Outfitters is guilty of trademark infringement and dilution, as the tribe holds an array of registered marks for the word “Navajo.” As for the claim involving the Indian Arts and Crafts Act of 1990, a federal truth-in-advertising law that prohibits misrepresentation in marketing of American Indian products within the U.S. According to the law, it is illegal to offer or display for sale, or sell any art or craft product in a manner that falsely suggests it is Indian produced, an Indian product, or the product of a particular Indian or Indian Tribe. Put simply, you cannot use the name of an Indian tribe on your non-Indian made product or in connection with your non-Indian made product (if that product is even remotely close to one that may be considered an "art" or "craft"), as such usage will falsely suggest to consumers that it was made by American Indians when its not. Far from receiving a slap on the wrist, businesses found to be in violation of the Act may face civil penalties or can be prosecuted and fined up to one million dollars.
In addition to the Indian Arts and Crafts Act of 1990, the Navajo Nation has approximately ten registered trademarks of its name that cover a wide range of products.