IS ALL “FAIR” IN FASHION AND APPROPRIATION?

By: Heather Torres | Intern | heather.torres@procopio.com
Ted Griswold | Partner | ted.griswold@procopio.com

On July 12, 2016, New Mexico Federal Judge Bruce D. Black granted another partial win to Urban Outfitters in the infamous, Navajo Nation v. Urban Outfitters, by denying the Nation’s motion to dismiss Urban Outfitters’ trademark fair use defense. As a result, Urban Outfitters will be able to assert the affirmative defense of descriptive fair use against the Nation’s trademark infringement claim at trial. Descriptive fair use allows the use of another’s mark if used to describe a user’s product or their geographical origin, rather than indicate the user’s own products or business. Essentially, Urban Outfitters argued that the term “Navajo” is only a descriptor to signify a general style and “is and always has been a geographically descriptive [term].”

This latest ruling is consistent with the court’s earlier decision in May. In May, Judge Black found the “Navajo” mark to be a niche mark not “famous” enough to be protected from trademark dilution. The court accepted Urban Outfitters condensing a Tribal Nation and its distinctive cultural expressions into a generic mark capable of being exploited by non-Indian businesses. This acceptance contributes to the continued cultural genocide of Indian identity through what scholars Angela Riley and Kirsten Carpenter call “Indian Appropriation.” The court’s earlier dismissal of the trademark dilution claim could indicate a high likelihood of Urban Outfitters’ fair use defense being accepted at trial.

The Navajo Nation also asserts Urban Outfitters used the term “Navajo” in violation of unfair competition and commercial practices law and in violation of the Indian Arts & Crafts Act (“IACA”). As discussed in Gabriela Rios’ post, New Mexico District Court Holds Urban Outfitters Can Be Sued Under Indian Arts & Crafts Act, the Act allows Indian tribes to sue a person or entity who sells a product in a way 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). Though, the Act has been perceived as a protection with all bark and no bite, the Nation could see some remedy. On May 19, 2016, Judge Black found that the Act allows the Nation to collect statutory damages “. . . of not less than $1,000 for each day on which the offer or display for sale or sale of a given type of good continues.”

Heather Torres (San Ildefonso Pueblo, Navajo) is a rising 3L enrolled in the Critical Race Studies specialization at the University of California, Los Angeles School of Law. Heather is an Executive Editor for the Indigenous Peoples’ Journal of Law, Culture & Resistance at UCLA. She is a recipient of the 2016 Procopio Native American Internship.

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.

Tribe Beats Beer Behemoth in Trademark Settlement

By: Kele Bigknife | Intern | kele.bigknife@procopio.com

Theodore J. Griswold | Partner | ted.griswold@procopio.com

In June, the Lumbee Tribe of North Carolina filed suit in federal court against beer giant, Anheuser-Busch LLC (AB), and one of its distributors R.A. Jeffreys Distributing Co. LLC, alleging trademark infringement, unfair competition, and unfair and deceptive practices. Without the Tribe’s permission, AB and R.A. Jeffreys used the Tribe’s logo mark and slogan mark in promotional material advertising Budweiser and Bud-Light alcohol products at multiple convenience stores near the Lumbee reservation.

The lawsuit claimed that AB’s use of the allegedly infringing marks led to a significant amount of confusion within the community and among consumers, creating a false impression in the minds of the public that the Lumbee Tribe had approved of AB’s products being sold under its logo and slogan. According to the complaint, many members of the Lumbee Tribe found the advertising offensive because alcohol abuse is often associated with Native American communities.

AB and R.A. Jeffreys quickly settled the lawsuit with the Tribe in exchange for a “sizeable donation” to one of the Tribe’s nonprofits, cessation of the advertising campaign, and an apology for the improper use. The Tribe has announced that the settlement money will go towards supporting education and youth programs.

This story is an example that even against a huge multi-billion dollar corporation, a Tribe should fight to protect its valuable intellectual property rights and ensure that a Tribe’s name, customs and culture are not abused for third party financial gain. It also exemplifies the importance of Tribal Governments trademarking their identity to protect their image and expedite resolution when abuse occurs.

Kele Bigknife is a citizen of the Cherokee Nation and is entering his third year at the University of Michigan Law School. He is a member of the Editorial Board for the Michigan Business and Entrepreneurial Law Review. Kele is a recipient of the 2016 Procopio Native American Internship.

Ted is head of the Native American Law practice group and primary editor for the Blogging Circle. Connect with him at ted.griswold@procopio.com and 619.515.3277.

 

 

The Idea of Indians

By: Eric Abeita | Intern
Theodore J. Griswold | Partner | ted.griswold@procopio.com

During the NBA Finals, a television ad was aired that opposed using Native Americans as mascots, specifically targeted to the Washington Football Team.[1] The ad stated that Native Americans refer to themselves in many ways, “Indomitable, strong, Inuit, Blackfoot,” but they don’t refer to themselves as the R- word. It was particularly powerful in that it did not specifically state that R- word, but ended with a simple shot of a Washington helmet on a football field to convey the message. The ad was developed by the National Congress of American Indians, and paid for by the Yocha Dehe Wintun Nation tribe in California. It was targeted to be aired during the Superbowl, but extraordinary airtime costs kept it from being seen on television’s biggest forum.

This week, the U.S. Patent Office agreed with the ad’s sentiment, when it ruled that the R-word nickname is “disparaging to Native Americans” and that the six registered trademarks that involve the R-word must be canceled. The Trademark Trial and Appeal Board found that “substantial composite of Native Americans found the term REDSKINS to be disparaging in connection with respondent’s services during the relevant time frame…” Blackhorse, et al v. Pro-Football, Inc., Cancellation No. 92046185, Board Decision, pg. 72 (June 18, 2014).

Momentum for the campaign to get Washington to change its nickname is building. Like so many social movements that succeed because of public pressure, this one may ultimately be victorious because the American people will finally say enough, or because the Washington Football team will get hit in its pocketbook when it can’t protect its team name from use by others. This issue may ultimately be resolved by financial cost, but money has nothing to do with why teams should stop using Native Americans as mascots.

It remains perplexing and sad that Native Americans are still being used as mascots all over the country, and that the R-word is still being used for that team in the Nation’s capitol. Advocates for using Native Americans as mascots state that Native American names and tribes are used in “respectful ways”, and it is done to “honor” the tribes by making them “positive mascots”. This contention misses the point.   The point is that Native Americans are people, living and working in modern America. They are not a thought or an idea of what a Native American is, they are Native Americans. When a team uses a Native American tribe as a mascot, it is not allowing the American people to see Native Americans as everyday people in their communities. It is a dehumanizing effect that can be corrected.

The legal proceedings in Blackhorse will continue, as there is little doubt that the football team will appeal. However, public awareness can change. People can choose not to support the disparagement of Native American people as mascots by their individual actions. “Proud, forgotten, Indian. . . . rancher, teacher, doctor, soldier.” These are the appropriate images of Native America. Maybe over time this idea will sink in, and replace those archaic ones that are caricatures of a Native American.

Eric Abeita is a member of the Isleta Pueblo and is entering his third year at the University of New Mexico School of Law. Eric is a recipient of the 2014 Procopio Native American Internship.

Procopio trademark attorney Megan E. McCarthy is preparing a more thorough analysis of the 177 page Blackhorse case which will be posted here in the near future. Please check back for Megan’s analysis.
[1] See the NCAI ad at http://www.youtube.com/user/NCAI1944.

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.