The Navajo Nation has scored a significant victory regarding a legal issue that has been an ongoing irritation to many Indian nations: the use of tribal names as trade names for merchandise not authorized by the tribes, without paying royalties to the tribes, and sometimes flatly contrary to tribal values. Millions of dollars are at stake in Navajo Nation v. Urban Outfitters, with many more cases like it to come if the principles in the trial court decision stand.
In 2011, Navajo Nation Attorney General Harrison Tsosie sent a cease-and-desist letter to Urban Outfitters claiming that only the Navajo nation has a right to label commercial goods “Navajo.” Urban Outfitters was selling a variety of products, from underwear (“Navajo Hipster panty”) to jackets, jewelry, and flasks with designs suggesting those of the desert southwest where the Navajo people live.
When Urban Outfitters did not comply, the Navajo Nation filed a lawsuit seeking damages for the exploitation of their name by non-Navajos. This is a problem faced by Navajos as well as Cherokees, Comanches, Seminoles, and many others.
Two common arguments by the exploiters of tribal names have often prevailed. First, they claim the name is in such widespread use and has been for so long that it’s become generic. Like an Eskimo pie or a Big Chief tablet, the tribal name no longer identifies a particular people with a common artistic heritage.
Second, they claim that even if the name is not generic, the owners of the name waited so long to bring the lawsuit that the people being sued could no longer prove how the name came to be used and, as important, they have spent money on advertising over the years to “build the brand” and they should not lose that money when nobody told them the name was already taken.
This defense is called “laches,” and to prove laches you must prove that the owner of the name knew or should have known it was being used and unreasonably delayed doing anything about it. You must also prove that the delay caused harm. This defense, for example, would almost certainly stop the Cherokee from reclaiming their name from Jeep, because so much money has been spent on the name and the advertising has been so pervasive that the Cherokee governments had to know.
The point of registering trademarks is to give fair notice to the world that the name is taken, but the problem for Indian nations going out and registering their tribal names is that you normally have to specify what business you intend the mark to protect. Not being registered does not mean you can’t protect your name, but it does mean that you have to prove that the person using your name had notice of your claim, and until you give them a cease and desist letter, you can’t prove they had notice.
However, the Navajo Nation has a number of registered trademarks covering a wide range of products, so the registration offers some protection by showing notice as to the products named.
In addition, the Indian Arts and Crafts Act of 1990 provides penalties for selling products in a way that suggests they are made by Indians or an Indian tribe when that is not true. To get that protection, the Navajos must show that the particular item they are complaining about is an “art” or a “craft.”
Urban Outfitters aims for a young hipster image, marketing primarily to young adults, 18 to 28. They also sell under the names Free People, Terrain, and Anthropologie, among others, in the U.S., Canada, and Europe.
It’s part of Urban Outfitters’ hipster image to be aggressively irreverent. They have demonstrated irreverence in the past by using the pink triangle that gay people were forced to wear in Nazi death camps. The Anti-Defamation League has also complained about Urban Outfitters’ use of the Star of David.
In 2014, Urban Outfitters offended Kent State University by offering a Kent State sweatshirt with bullet holes and blood spatter. The company denied any intent to profit from the Kent State massacre, but they received this from Kent State:
May 4, 1970, was a watershed moment for the country and especially the Kent State family. We lost four students that day while nine others were wounded and countless others were changed forever. We take great offense to a company using our pain for their publicity and profit. This item is beyond poor taste and trivializes a loss of life that still hurts the Kent State community today.
Urban Outfitters took the Kent State shirts out of their stores and off their website and sold them on Ebay.
In 2003, Urban Outfitters marketed a Monopoly parody called Ghettopoly, which was criticized as racist by the NAACP. They offended the Irish with St. Patrick’s Day items depicting drunks. They offended veterans by using patterns with patches that could only be displayed by persons currently serving in a particular unit of the Army Rangers.
In 2006, they were selling Christmas ornaments in the shape of handguns in the city of their corporate headquarters, Philadelphia. These ornaments came after a terrible year of gun homicides with over 1,700 shootings and over 300 fatalities.
With such a history of associating hip and cool with offending people, this particular case of appropriating the Navajo tribal name looked like an uphill battle. U.S. District Judge Bruce Black may have changed the shape of the battlefield when he ruled on March 31 that the Navajo Nation has not unreasonably delayed asserting its rights since 2001, as Urban Outfitters claimed.
By holding that Urban Outfitters had failed to prove that anyone with a legal connection to the Navajo tribal government had knowledge of the Navajo name being used before General Tsosie sent his cease and desist letter, Judge Black has opened up the possibility that they may be liable to the Navajos for millions of dollars in profits and statutory penalties.
The size of the possible exposure means that Urban Outfitters has plenty of room to offer settlement terms rather than appeal. With so much money at stake, they have incentive to settle. The Navajo Nation’s incentive to settle is that if they lost the appeal, a precedent that upholds the rights of many Indian nations besides the Navajo could get reversed.
If this decision is upheld, the routine abuse of tribal names by non-Indians coast to coast could all of a sudden get very expensive and businesses in the future will think twice before using a tribal name without first purchasing a license from the owners of that name.