The most recent development in the Navajo Nation v. Urban Outfitters case came by way of a federal judge in New Mexico clearing the way for the Navajo Nation to seek millions of dollars in its 2012 lawsuit over the retailer’s use of the "Navajo" name in connection with clothing, jewelry, flasks, and other merchandise.
District Judge Bruce Black ruled on a defense asserted by Urban Outfitters on Thursday, holding that the American tribe did not unreasonably delay a trademark infringement lawsuit, despite the Philadelphia-headquartered hipster retailer’s allegations to the contrary. According to court documents filed by Urban Outfitters, the tribe knew or should have known it has been using the “Navajo” name in connection with an array of goods, including necklaces, jackets, underwear, and flasks, for years (think: since 2001, according to Urban). The retailer alleged that it was prejudiced as a result of such delay; thereby, asserting a laches argument.
Note: If proven, laches, an equitable defense available to defendants (Urban Outfitters in the case at hand) in U.S. trademark infringement suits, can bar some or all of the relief requested by the plaintiff (the Navajo Nation). To establish laches, a defendant must prove that: the plaintiff unreasonably delayed in enforcing its rights; and the delay caused prejudice to the defendant.
According to Judge Black, who shot down the retailer’s defense, there was no evidence anyone legally associated with the Navajo Nation knew the retailer used the tribe's trademarks until June 2011, at which point the tribe sent a cease and desist letter to Urban Outfitters and followed up with the lawsuit.
"We're happy with the ruling and hope to resolve the matter expeditiously for the benefit of the Navajo people," Paul Spruhan, an attorney for the tribe, said Friday.
Court documents do not quantify the amount the Navajo Nation could recover if it's successful in its lawsuit, but it could amount to millions of dollars dating to 2008. On some claims, the tribe wants all the profits generated from the Navajo-themed sales. On others, it wants $1,000 per day per item, or three times the profit generated by marketing and retail of products using the name.
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.