Fashion Law Center Legal Editorial
Urban Outfitters’ controversial “Navajo Hipster Panty”
In its recent lawsuit against Urban Outfitters for the unauthorized use of the Navajo Nation’s trademarks, the Navajo Nation risks winning a limited or even counter-productive victory. The underlying issue in this case is too important (the global exploitation of the intellectual property of indigenous peoples) to be fully resolved in a courtroom.
Urban Outfitters has certainly been guilty of a major public relations gaffe and it seems likely that they have committed trademark infringement and dilution as well, among other things. However, a court victory by the Navajo Nation will do little to address the broader problem, which is that corporations profitably exploit the cultural heritage of indigenous peoples but then do nothing to compensate or reward those indigenous peoples.
Both Urban Outfitters and the Navajo Nation would be wise to resolve this conflict amicably and with a mutual commitment to productive cooperation, such as in a long-term sponsorship or partnership. Urban Outfitters, in particular, should consider the downside of continuing on an adversary path and risking a consumer backlash or boycott.
The basic facts are simple. The Navajo Nation, a semi-sovereign state located in north-western New Mexico, is the owner of the “Navajo” trademark for certain classes of products. Beginning in March 2009, Urban Outfitters advertised a wide range of products bearing the name Navajo or Navajo, such as for example:
- Navajo Nations Crew Pullover
- Truly Deeply Madly Navajo Print Tunic
- Navajo Print Fabric Wrapped Flask
- Navajo Hipster Panty
- Obey Navajo Shirt
The reference to the Navajo Hipster Panty and the Navajo Flask were considered particularly scandalous and offensive by the Navajo Nation, as was UO’s use of the ambiguous misspelling, “Navaho.” The appropriation of Native American designs is far from new. Since the 1970s a number of American designers, most notably Ralph Lauren, have made use of Native American design motifs and themes in their fashions. What was notable about Urban Outfitters usage is that they specifically referenced the Navajo tribe by name and used it on a broad range of articles (over 20 items).
Upon receiving a “cease and desist” letter from the Navajo Nation in October 2011, Urban Outfitters promptly removed all references to the word Navajo on its website, replacing these with the word “Printed” or some other reference. The Navajo Nation now alleges that Urban Outfitters continued to use the word Navajo on the items in its retail stores and on its Free People website, though it remains to be seen to what extent Urban Outfitters will challenge these allegations.
In order to prevail on the infringement portion of the lawsuit, the Navajo Nation will have to establish that Urban Outfitters created a likelihood of consumer confusion as to whether their items were manufactured or authorized by the Navajo Nation. In order to prevail on the “dilution” claim, the Navajo Nation must establish that the Navajo marks are “famous” and that Urban Outfitters diluted the value of those trademarks by “blurring” or “tarnishing” them.
Although the Navajo Nation’s case seems strong, one has to consider the broader strategic and cultural implications. Let us say that in the end Navajo Nations obtains a court victory and a substantial money judgment against Urban Outfitters. What then?
Certainly, a chastened Urban Outfitters would be much more cautious as regards potential unauthorized use of Native American-inspired designs. However, it might even become reticent to use any Native American-themed products at all. Other risk-averse companies might become equally wary of using Native American designs or even legitimate products. Unscrupulous companies might become adept at phrasing the names of their Navajo-inspired products in a legally-acceptable way, by referring to them as “tribal” or “Native American-inspired.”
These outcomes would do nothing to address the unfortunate situation as regards the unfair appropriation of Native American cultural intellectual property (or similar exploitation in other countries).
When the U.S. Congress passed the Indian Arts and Crafts Act in 1990, it noted that a significant portion of the national market for “Indian” products was made up of counterfeit goods, and cited estimates that in the one billion dollar market for Indian goods, as much as $500 million was being satisfied by non-Indian goods. Congress concluded that the influx of fake Indian products had “reduced demand for the real thing, driven down the price of authentic Indian wares, tainted consumer confidence in the integrity of the market, and dissuaded young Indians from learning and practicing time-honored ways of artisanship.” Native American Arts, Inc. v Contract Specialties, 754 F.Supp. 386 at 388 (2010).
Native American groups in the U.S. and Canada have been active in defending their rights. For example, a single Illinois-based Native American-owned organization, Native American Arts, Inc., has filed between 90 and 120 court actions since 2000.
Despite this, the careless, stereotypical and/or unattributed use of Native American design themes has become commonplace in fashion. On her BEYOND BUCKSKIN blog dealing with Native American fashion, Dr. Jessica Metcalfe lists a number of egregious examples of the ever-recurring “tribal trend” in American fashion. At the same time, many authentically native-American designers go unappreciated, and Native Americans, like indigenous peoples and their descendents around the globe, fail to fully profit from the products and designs inspired by their cultures.
Unfortunately, laws and international treaties will be forever inadequate to deal with the unfair exploitation of our indigenous cultural heritage. The United Nations has undertaken nearly a dozen efforts, most notably in the 2007 U.N. Declaration on the Rights of Indigenous Peoples, to protect the cultural patrimony of cultural peoples. Virtually all of these efforts have concluded that existing legal protection mechanisms are insufficient for the protection of indigenous cultural intellectual property.
Perhaps the best long-term answer can be found in the current trend, so popular among large apparel brands today, of corporate social responsibility. If Urban Outfitters were to establish a true social partnership with the Navajo Nation it could produce a win-win situation for both sides. For Urban Outfitters, such a partnership would offer redemption from its current image as an insensitive purveyor of knockoffs. For the Navajo Nation, a partnership would offer possibilities for unrecognized Navajo designers to receive global distribution through a successful brand. Internships and job opportunities for Navajo youth could also be explored.
Apparel corporations must learn to add respect for indigenous culture to their list of social responsibility “commandments.” Luxury brands, in particular, which vaunt their commitment to the global war against counterfeiting and design piracy, should in particular refrain from unfair exploitation of indigenous themes.
Just as codes of conduct and ethical best practice have been drafted for so many areas of corporate activity, it is time for apparel, jewelry and home products corporations, to adopt a self-regulatory code of conduct for the use of indigenous and native designs.
Prof Guillermo C. Jimenez, Esq.
March 14, 2012