Published February 29, 2012
FLAGSTAFF, Ariz. – The Navajo Nation has sued Urban Outfitters Inc. months after the tribe sent a cease and desist letter to the clothing retailer demanding it pull the "Navajo" name from its products.
The lawsuit filed late Tuesday in U.S. District Court in New Mexico alleges trademark violations and violations of the federal Indian Arts and Crafts Act, which makes it illegal to sell arts or crafts in a way to falsely suggest they're made by American Indians when they're not.
The tribe has about 10 registered trademarks on the Navajo name that cover clothing, footwear, online retail sales, household products and textiles. Tribal justice officials said they're intent on protecting what they believe are among the tribe's most valuable assets.
"The fame or reputation of the Navajo name and marks is such that, when defendant uses the 'Navajo' and 'Navaho' marks with its goods and services, a connection with the Navajo Nation is falsely presumed," the lawsuit states.
Urban Outfitters set off a firestorm of criticism last year with its line of Navajo-branded clothing and accessories — particularly underwear and a liquor flask, which the tribe said was "derogatory and scandalous," considering the sale and consumption of alcohol is banned on the reservation that spans parts of northeast Arizona, southeast Utah and northwest New Mexico. The company removed the product names from its website after acknowledging receipt of the cease and desist letter.
But the Navajo Nation wrote in its lawsuit that products with the Navajo name still are sold through other company brands, like Free People, in catalogs and retail stores.
The clothing boutique's website features several pieces of jewelry labeled vintage Navajo with turquoise stones and silver. A description for a handmade cuff says it originally was sold at a trading post, and has etched arrow detailing with a "sterling" stamp on the back.
There was no sign of the word "Navajo" on any products at an Urban Outfitters in downtown Tempe late last week.
The Philadelphia-based company did not respond to messages seeking comment Wednesday.
Company spokesman Ed Looram said in an email last October that Urban Outfitters had no plans to alter its products.
"Like many other fashion brands, we interpret trends and will continue to do so for years to come," he said. "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 later declined further comment, saying the matter was in the hands of legal counsel.
Susan Scafidi, who directs the Fashion Law Institute at Fordham University's law school in New York, said Urban Outfitters could point out the name changes in certain items in response to the tribe's original objections. The "Navajo Hipster Panty" and the "Navajo Print Fabric Wrapped Flask," for example, later appeared on the company's website as "printed" instead of "Navajo."
Other defenses include claiming no likelihood of consumer confusion between an authorized Navajo clothing item and the panty, using alternate spellings of "Navajo" and arguing that the contested product isn't a handicraft, she said.
But she and New York-based fashion lawyer Joseph F. Murphy Jr., agree the trademark infringement is clear. Both pointed to a history in which the Navajo Nation lost real property and now is fighting to protect intellectual property.
"That's what disgusts me about this situation," Murphy said. "I, like many people, thought it would have been resolved. But apparently Urban Outfitters declined to write the big apology and may have to write the big check."
The Navajo Nation's objections to traditionally styled beaded earrings or a hacienda bag that don't carry the tribe's name are much less likely to succeed, Scafidi said. But she said it shows a pattern that could influence a jury, which the tribe has requested in its lawsuit.
"Imagine all of those products piled on a table in the courtroom, looking like Santa Fe meets New York's notorious Canal Street or Beijing's Silk Market," she wrote in an email.
Tuesday's action isn't the first time the Navajo Nation has asserted its trademarks, though it had never taken action in federal court, said tribal Department of Justice attorney Brian Lewis. The tribe successfully forced the cancellation of a "Navaho" trademark last year that was used by a French company doing business in the United States. The tribe argued the name was phonetically identical and infringed on its trademark.
The tribe licenses its name to other businesses in exchange for a share of their profits, and it has identified about two dozen companies it believes are violating the Navajo trademark. Lewis said letters and phone calls typically convince others to stop infringing on the tribe's rights.
He said the widespread use of the word "Navajo" on products does not make it an acceptable practice, nor does it go unnoticed. But he said the tribe's resources are limited and the Navajo Nation must prioritize the actions it takes.
"In this case, the level and degree of egregious behavior and harm to the Navajo Nation factored heavily into the Navajo Nation's decision to act," he wrote in an email to The Associated Press.
The lawsuit seeks monetary compensation and an order permanently enjoining Urban Outfitters from using the name "Navajo" or variations of it on its products.