By: Gabriela Rios | Law Clerk | gabriela.rios@procopio.com
Theodore J. Griswold | Partner | ted.griswold@procopio.com
There are many laws in the United States designed to protect the integrity of Indian arts, sacred artifacts, and human remains. As Anna Hohag described in the Struggle to Protect Against Cultural Genocide, these laws are not always as expansive as needed to fulfill the intended purpose. However, the Navajo Nation has coupled the strength of the Lanham Act, designed to promote competition and the maintenance of product quality, with the Indian Arts and Crafts Act to actively protect the integrity of the Navajo name and the many artisans and organizations that rely on the quality that name brings to sell their goods.
Currently, the Navajo Nation holds 86 trademarks using the Navajo component and has made a concerted effort to protect the Nation’s culture and image. See NPR interview available here. Despite their efforts, clothing retailer Urban Outfitters, has used the term Navajo or Navaho to describe at least 40 items on its website or catalogs, which the Navajo Nation argues is trademark infringement, trademark dilution, unfair competition and commercial practices laws violations, and a violation of the Indian Arts and Crafts Act in its complaint filed in February of 2012. Recently, on December 21, 2015, a federal district court in New Mexico held that the Navajo Nation can in fact sue Urban Outfitters for a violation of the Indian Arts and Crafts Act for use of the term Navajo and other tribal names like Zuni, Pueblo, and Zia, as well as more generic terms such as Indian and Native American. You can read the ruling by clicking here.
The Indian Arts & Crafts Act allows Indian tribes, Indian Arts and Crafts Organizations, and individual Indians to sue a person or entity who sells a product in “a manner that falsely suggests it is Indian produced, an Indian product, or the product of a particular Indian or Indian tribe or Indian arts and crafts organization, resident within the United States …” 25 U.S.C. §305e(b).
The Navajo Nation alleged that Urban Outfitters has advertised, promoted, and sold products under the Navaho or Navajo (and other tribal) names both online and in its stores since at least March of 2009. The Navajo Nation argued that Urban Outfitters use of the Navajo and Navaho to describe its products leads consumers to falsely presume there is a connection with the Navajo Nation and that falsely suggests the products are Indian products within the meaning of the Indian Arts and Crafts Act.
Urban Outfitters first attempted to dismiss the IACA claims by arguing that the Navajo Nation did not allege that Defendants falsely suggest that their product are Indian product, Indian products, or the products of a particular Indian or Indian tribe. The court easily denied the motion to dismiss as to the IACA claims, because the Navajo Nation cited to several examples of Urban Outfitters using the term Navajo to describe several items for sale and held that a jury must decide “whether a defendant falsely suggested that it was selling Indian products.”
Urban Outfitters then attempted to argue that (1) the Navajo Nation cannot show any “injury in fact traceable to the defendants” and therefore summary judgment should be granted in their favor as to all the Navajo Nations claims; and (2) the Navajo Nation lacked a sufficient interest in the goods sold using “non-Navajo” descriptions to sue for damages as to those products. The court denied this motion for summary judgment and held that the Navajo Nation can sue for defendants use of “non-Navajo” descriptions and that the Navajo Nation may be able to prove an injury in fact by showing that it suffered an injury to a commercial interest in reputation or sales as a result of the defendant promoting his own interest by telling a known falsehood to or about the plaintiff or his product.
This latter holding is problematic for the Navajo Nation moving forward. The tribe argued that it is not required to prove a competitive injury by lost sales damages or other direct economic harm because such damages are difficult or impossible to prove; rather the statute imposed “damages as the greater of three times the defendant’s profits on the false goods or $1,000 a day for as long as they had them up for sale.” This provision, the Nation argued, provides an election of damages and was a recognition that actual damages could be difficult to prove.
The court order is far from a win for the Navajo Nation, but retailers should take notice. Using Indian, Native American, or other tribal names to describe their products could implicate the Indian Arts & Crafts Act and expose them to significant liability.
Gabriela is a citizen of the Cahuilla Band of Indians and currently clerking for Procopio. She graduated from the James E. Rogers College of Law at the University of Arizona in 2015 and was recently admitted to the State Bar of California.
Ted is head of the Native American Law practice group and primary editor for the Blogging Circle. Connect with Ted at ted.griswold@procopio.com and 619.515.3277
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