Fordham Law

Urban Outfitters Sued for Trademark Infringement by Navajo Nation

Susan Scafidi in IP Brief, June 18, 2012

Media Source

The Navajo Nation has recently initiated a lawsuit against the clothing retailer Urban Outfitters for trademark infringement, months after the tribe sent a cease-and-desist letter demanding it to stop using the “Navajo” name. The lawsuit, filed last Tuesday in U.S. District court in New Mexico, alleges trademark violations and violations of the federal Indian Arts and Crafts Act. This Act is very rarely seen in court, but makes it illegal to sell arts or crafts in a way to falsely suggest they were made by American Indians when they are not.  According to Susan Scafidi, who directs the Fashion Law Institute at Fordham University’s law school in New York, and New York-based fashion lawyer Joseph F. Murphy, the trademark infringement is clear, and they point to a history in which the Navajo Nation lost real property and now is fighting to protect intellectual property. The lawsuit seeks monetary damages and an injunction to prevent Urban Outfitters from using the Navajo name (or variations such as “Navaho”) on its products.

The Navajo Nation initially sent a cease-and-desist letter compelling the retailer to remove the offending product names from its website, but the lawsuit arose when the Navajo Nation realized that the products were still being distributed through other brands owned by Urban Outfitters, like Free People, as well as catalogues and outlets. A representative of the Navajo Nation stated that the Tribe had no connection whatsoever with Urban Outfitters, and that the infringement violations were “derogatory and scandalous.” The controversy was stirred up when Urban Outfitters introduced its Native American inspired line of products, which included Navajo underwear and liquor flasks. The production and sale of liquor flasks is particularly offensive to the Navajo Nation in light of the fact that the sale and consumption of alcohol is banned in the Navajo Reservation, which spans parts of northeastArizona, southeast Utah and northwest New Mexico. Other products are also in dispute, such as the traditionally styled beaded earrings and hacienda bags, which are very demonstrative of patterns that have long been used in traditional Native American artwork and designs, but do not carry the tribe’s name and are therefore much less likely to succeed. Those products particularly show a pattern that could influence a jury, which the tribe has requested in its lawsuit.

The Philadelphia-based company did not immediately respond to messages seeking comments, but company spokesman Ed Looram said in an email sent last October that Urban Outfitters had no plans to alter its products. He stated that “Like many other fashion brands, we interpret trends and will continue to do so for years to come. The Native American-inspired trend, and specifically the term “Navajo”, have been cycling thru fashion, fine art and design for the last few years.”  He then declined further comment, saying that matter was in the hands of legal counsel.

Branding and trademarks are considered to be the Navajo Nation’ most valuable assets and they Nation vows to protect them to the full extent of the law. There are approximately ten trademarks currently registered by the Navajo nation, including marks for clothing, footwear, online retail sales, household products and textile, and Tuesday’s action isn’t the first time the Navajo Nation has asserted its trademark: last year, the tribe successfully forced the cancellation of a “Navaho” trademark that was used by a French Company doing business in the United States. One solution for Urban Outfitters and for about two dozen companies the Nation believes are violating their trademarks is to license the Navajo name in exchange for a share of their profit, just like several businesses have already done.