Navajo Nation's Trademark Suit Against Urban Outfitters Proceeds; But Should It?

from the trademark-nation dept

Thu, Feb 11th 2016 11:23pm — Timothy Geigner

Alright, this one has me more than a bit puzzled. We've written here before about Urban Outfitters, which has previously been on the receiving end of intellectual property disputes in the form of the company's use of famous Obama iconography and for trying to inject a bit of humor into its coffee offerings. This time around, however, the clothing retailer is facing a lawsuit from the Navajo Nation for selling clothing and merchandise with patterns inspired by Native American designs and including the word "Navajo" or "Navaho" in the offerings.

The clothing chain will ask a federal judge in Santa Fe, N.M., on Wednesday to limit how far back in time the tribe can go to seek money over the company's products, which included everything from necklaces, jackets and pants to a flask and underwear with the "Navajo" name.

The tribe's lawsuit alleging trademark violations has been working its way through the courts for more than three years. Efforts to settle the case featuring two unlikely foes have failed as the tribe seeks vast sums of money from the company that also owns the Anthropologie and Free People brands.

The tribe isn't specifying exactly how much it's seeking, but considering it is asking for all the profits from the relevant merchandise on some of the products in question, and $1,000 per day per item on others, we're talking about millions of dollars here. The tribe is arguing that Urban Outfitters is violating the tribe's federal and state trademarks on its name, as well as the Indian Arts and Crafts Act, which was designed to prevent the sale of goods designed to fool customers into thinking that they were actually made by Native Americans. Let's deal with these in reverse order.

Urban Outfitters is the kind of retailer you find commonly in shopping districts all over the place. The company has never attempted to draw any affiliation with Native Americans in the past. Navajo branded clothing is branded as such as an homage to the inspiration for the design. The Navajo Nation has put forth a survey showing that 40% of consumers were confused by the use, but Urban Outfitters is expected to attack the validity of the survey. Keep in mind that the Arts and Crafts Act is entirely about fooling customers into thinking that the goods were made by Native Americans, rather than having anything to do with appropriating the name of the tribe. It's the kind of thing that, even if this were an actual valid problem, could be fixed by Urban Outfitters putting up a sign that said, "These products were not made by Native Americans," or something of that nature. But that isn't what the tribe actually wants. They want licensing from the trademark of their name.

As for the trademark in question, Urban Outfitters claims that "Navajo" is generic and that the tribe has abandoned the trademark first granted in the 1940s. The Navajo Nation pushed back with some history of the term Navajo, which was apparently a derogatory term invented by Spanish settlers. The claim is that the inventive nature of the word is a rebuttal on it being generic.

The Nation disputes the allegation of genericness. It asserts that the NAVAJO® mark is inherently distinctive as either fanciful, arbitrary or suggestive. According to the Nation, the mark is a fanciful because the term “Navajo” is an archaic, invented name, and fanciful when applied to the classes of goods of jewelry, clothing and accessories. Ironically, the Nation explained that the term was originally a derogative term used by the Spanish when referring to members of the Nation. The Nation members themselves refer to themselves as Diné. Accordingly, NAVAJO® is an invented term and fanciful when applied to the goods sold by the Nation.

In the alternative, the mark is arbitrary when used to describe these goods. Finally, the Nation contends that the mark is at the very least suggestive, because it suggests or requires an extra inference that goods sold are associated with the Nation.

I'm just not sure how a trademark on "Navajo" is substantively different than allowing for a trademark on "American", "Mexican" or "Canadian." It's the name of a people, nationality, or ethnicity. I'm struggling to see how such terms on their own are not generic.

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Filed Under: navajo, trademark
Companies: urban outfitters

34 Comments

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Lawrence D’Oliveiro, 12 Feb 2016 @ 12:20am

We Get This Sort Of Ownership Mentality Among New Zealand Māori Too
Culture is not something that should be owned. But certain people see corporations playing these legalistic games, and they figure they have a right to do the same.

What they need to understand is, the only way to win this game is to refuse to play.
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Anonymous Coward, 12 Feb 2016 @ 12:46am

The navajo, and other tribes, have been to New Zealand where we have a treaty with the maori that grants them 'tribal' rights to Haka (war chant) and possibly in future other things that exist outside law as we know it.
Get to know your culture, your indigenous culture, you fucked them and killed them and now you cry because they want to retain the little they have left.
This isn't copyright, or IP, it's an obliterated nation holding on to it's heritage.
Leave it alone
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Anonymous Coward, 12 Feb 2016 @ 12:53am

Re:
And your arrogance is evident in the fact that you call them Navajo in the title whilst quoting them as wishing to identify as Diné in your article. This alone proves you don't, and probably can't, understand the dynamics of bi/multi cultualism.
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Lisboeta, 12 Feb 2016 @ 2:06am

What exactly does 'tribal' rights to Haka (war chant) signify? I thought the NZ Rugby team regularly performed a haka, and they are not exclusively maori. Do the non-maori members have to pay a licensing/royalty fee? And what about the range of commercial products featuring the word "Eskimo". Or do the Inuit and Yupik peoples just not care?
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Anonymous Coward, 12 Feb 2016 @ 2:13am

Response to: Lisboeta on Feb 12th, 2016 @ 2:06am
billions of eskimo pies later, we have a problem?
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Anonymous Coward, 12 Feb 2016 @ 2:58am

Re:
The All Blacks perform two haha, one -ka Mete has been granted ownership to Ngāti Toa, the other is a new composition.
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Dark Helmet (profile), 12 Feb 2016 @ 3:41am

Re: Re:
"And your arrogance is evident in the fact that you call them Navajo in the title whilst quoting them as wishing to identify as Diné in your article. This alone proves you don't, and probably can't, understand the dynamics of bi/multi cultualism."

Hi there, friend. Quick question: are you a stupid person? Because calling me arrogant for referring to The Navajo Nation, a group created by the Diné, so-named by the Diné in official government papers (such as what this entire fucking post was a bout), and whose OWN GOVERNMENT EMBLAZONS ON THEIR OWN GOD DAMNED POLICE VEHICLES is about as fucking stupid a comment as I can think of.

https://en.wikipedia.org/wiki/Navajo_Nation_Police

So if have a problem with the Navajo Nation calling itself the Navajo Nation, go fucking take it up with Window Rock and leave me the hell out of it....
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Anonymous Coward, 12 Feb 2016 @ 3:49am

Re: Re: Re:
The Nation members themselves refer to themselves as Diné

the term “Navajo” is an archaic, invented name,
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Dark Helmet (profile), 12 Feb 2016 @ 4:17am

Re: Re: Re: Re:
I understand that they refer to themselves as Diné. The problem is they ALSO refer to themselves as Navajo, such as on their government vehicles, in the trademarks they register, etc. etc. etc.

They're allowed to use both names, of course. You're just not allowed to call me ignorant for calling them by one of the two names to which they refer themselves....
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Vidiot (profile), 12 Feb 2016 @ 4:42am

"... entirely about fooling customers into thinking that the goods were made by Native Americans..."

I've often pictured that noble tribe hard at work as they built my cousin's SUV... his Mazda Navajo.
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Anonymous Coward, 12 Feb 2016 @ 5:02am

Is there a copyright on the word squaw?
Yet another fool making their tribe look foolish seeking the almighty dollar.
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Michael, 12 Feb 2016 @ 5:51am

Re: Re: Re: Re: Re:
Also, Tim clearly thinks people that refer to themselves by two different names are assholes.
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Michael, 12 Feb 2016 @ 5:52am

Re: Response to: Lisboeta on Feb 12th, 2016 @ 2:06am
Their lawyer is currently preparing the paperwork. It's really difficult, the ink in his pen keeps freezing.
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Dark Helmet (profile), 12 Feb 2016 @ 6:18am

Re: Re: Re: Re: Re: Re:
"Also, Tim clearly thinks people that refer to themselves by two different names are assholes."

Um, what?!?!? I said the following in the comment to which you replied: "They're allowed to use both names, of course."
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Anonymous Coward, 12 Feb 2016 @ 6:36am

Re: Re:
So you are saying they have the rights to copyrighted 'dance numbers'. Okay, now that that is clear, why didn't you say so in the first place?

It isn't the general idea of 'Haka' that they own, but specific ones. So if people want to create new hakas they can. Sounds quite normal when it is put this way.
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Anonymous Coward, 12 Feb 2016 @ 6:36am

Re: Re: Re: Re: Re: Re: Re:
Dear Tim,

Don't give in to the trolls.
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Anonymous Coward, 12 Feb 2016 @ 6:56am

The majestic Navajo peoples, makers of "hipster panties"- who wouldn't be confused?

I wonder how the story would go if they where making Jewish hipster panties?
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Anonymous Coward, 12 Feb 2016 @ 6:57am

The Navajo should start selling shirts with the name "Urban Outfitters" on them.
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Wendy Cockcroft, 12 Feb 2016 @ 7:07am

Re: We Get This Sort Of Ownership Mentality Among New Zealand Māori Too
Remember that public consultation the Americans had a couple of years ago on "intellectual property?" I had a look through it and one of the saddest things I saw there was a Native American bewailing the appropriation of his culture by white folks who were apparently repackaging it for a white audience and cutting his tribe out of the profits made AND claiming copyright, etc., over it.

As you say, culture can't be owned but when some unrelated person comes along and packages it in a fixed medium, they then assert ownership rights (because we let them get away with calling it "property!") over it and prevent the tribe, etc., from making any money off their own culture. That was my interpretation of what I saw there and it really struck me. What a rotten thing to do to anyone.
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Anonymous Coward, 12 Feb 2016 @ 7:31am

Re: Re: Re: Re: Re: Re: Re:

"Also, Tim clearly thinks people that refer to themselves by two different names are assholes."
Um, what?!?!?
Appears to be a rather mangled Techdirt cultural reference:
I somehow find it bothersome that your responding under a different name than your TD article postings. It makes it very confusing and doesn't allow the readers to decipher easily whom they're addressing.
Although that particular comment was posted by an AC (not me!), and not by Tim.
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Cdaragorn (profile), 12 Feb 2016 @ 7:52am

Re: More like hiding its heritage
How does preventing anyone else from ever seeing anything about them help "hold onto their heritage"?

No one is taking anything from these people. If anything, they're celebrating them and their heritage.

This is nothing but a selfish money grab. It's the exact same thing they've been doing for generations to the smaller communities around them. They've bankrupted every school and store within 100 miles of their land because judges are happy to bend over to them no matter how ridiculous their claims are.
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Anonymous Coward, 12 Feb 2016 @ 8:30am

Headline question
Navajo Nation's Trademark Suit Against Urban Outfitters Proceeds; But Should It?
Yes.

Next question?
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steell (profile), 12 Feb 2016 @ 9:12am

Re: Re: Re: Re:
What name is not an "Invented Name"?
And all very old names are "Archaic", which means very old.

Dumbest post of the week.
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Michael, 12 Feb 2016 @ 9:15am

Re: Re: Re: Re: Re: Re: Re:
Tim (DH) - I didn't think I needed the sarcmark.

Sorry about that.
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Disgruntled customer now, 12 Feb 2016 @ 10:05am

Re:
I thought the company at least had a licensing agreement with the native tribe corporation in order to use the name. Also if that had been the case, I also assumed it had some kind of OK with designs in order to "homage" the native indians. I'm demanding full refund for EVERYTHING.
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JoeCool (profile), 12 Feb 2016 @ 10:31am

Re: Re: Re: Re: Re:
They're allowed to use both names, of course.

Which is a point that needs to be made. THEY are allowed to use both names. ANYONE ELSE is NOT. If you aren't Navajo, you may ONLY use the term Navajo. They're also REALLY strict on enforcing the Art and Crafts Act. I live in the heart of Navajo country and have run into that in the course of business a couple of times. You can't have anything that remotely suggests "Native American" for sale, even with signs proclaiming them as not Native American. You can't resell the stuff, either, unless you've specifically worked out a contract with the tribe. They have absolute power in the local area in that regards, so it'll be interesting to see how this lawsuit goes to see how far that power reaches.
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Anonymous Coward, 12 Feb 2016 @ 11:02am

Re:
Will Mazda have to pay to retroactively license that name? Or will there be a recall to rebadge every one? Hmmmm...Mazda Eskimo.....
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Lawrence D’Oliveiro, 12 Feb 2016 @ 1:33pm

Re: wishing to identify as Diné
But the trademark complaint is over the use of the name “Navajo” or “Navaho”, not “Diné”.

So if they don’t identify with the names “Navajo” or “Navaho”, why should they have trademark ownership of those names?
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Anonymous Coward, 12 Feb 2016 @ 5:13pm

If the Navajo can't protect their intellectual property, then they're... going to stop... being Navajo?

This is what happens when you try to apply IP and litigation-happy RIAA tactics to everything.
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Coyne Tibbets (profile), 13 Feb 2016 @ 10:37am

Big versus Little company...which is it that always wins, again?
The Diné may have trouble with their "Navajo" trademark. I'm not sure about that.

But as for stealing their styles... Well, if I went back and made a imitation of a Macy's purse from perhaps 1902, the government wouldn't see the difference. I would still be guilty of the major crime of creating a knock-off under trademark protection. It isn't relevant how old the style is, only was it trademarked at the time.

But Urban Outfitters is a big company; and since the trademark law was made to help big companies exclude little competitors from the market...well let's just say I don't see this going in favor of the Diné, no matter what the law is.
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Anonymous Coward, 15 Feb 2016 @ 6:17am

Re:
you fucked them and killed them

I've never killed anyone, you sanctimonious, politically-correct asshole.
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nasch (profile), 15 Feb 2016 @ 9:56am

Re: Re: Re: Re: Re: Re:
If you aren't Navajo, you may ONLY use the term Navajo.

Actually I can call them whatever I want.
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nasch (profile), 15 Feb 2016 @ 10:05am

Re: Big versus Little company...which is it that always wins, again?
It isn't relevant how old the style is, only was it trademarked at the time.

Is Urban Outfitters arguing that it isn't trademark infringement because the designs are old?
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Anonymous Coward, 22 Feb 2016 @ 5:42pm

When negotiations fail, hire a lawyer and Sioux the Cherokee pants off of them.
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