Tribe to Urban Outfitters: See you in court

By Alysa Landry
Special to the Times

WASHINGTON, August 15, 2013

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A trial may begin in two years for the federal lawsuit pitting the Navajo Nation against Urban Outfitters.

Pretrial events are scheduled throughout 2014, according to an Aug. 2 joint filing, with the trial set for after May 1, 2015. This comes after the two parties failed last month to reach a settlement in the tribe's lawsuit that alleges Urban Outfitters violated trademark laws when it used the name "Navajo" on products.

A U.S. District Court judge in New Mexico threw out all deadlines for discovery and responses to motions while settlement discussions took place. The parties determined that mediation was unsuccessful. No other mediation sessions are planned.

The lawsuit is on track for trial, said Brian Lewis, a Navajo Nation Department of Justice attorney who has headed the tribe's case since Urban Outfitters began marketing Navajo-themed items in 2011.

"Urban Outfitters engaged in intentional infringement and the Nation could not stand by and watch the intentional infringement of its intellectual property," he said. "The Navajo Nation simply seeks redress rather than to inflict harm in this matter and similar situations where the Nation has to go to court for relief."

The Nation filed a cease and desist letter in 2011, then sued Urban Outfitters in March 2012, objecting to the company's use of the word "Navajo" on merchandise including the now-infamous "Navajo hipster panties" and a liquor flask wrapped in what was described as "Navajo print fabric."

In September 2012, Urban Outfitters sought unsuccessfully to have the case moved from federal court in New Mexico to Philadelphia, arguing that the New Mexico court was inconvenient even to the tribe. In January, a District Court judge rejected that argument. The case will be heard in U.S. District Court in Albuquerque.

Because mediation hearings were confidential, the Nation cannot comment on what happened, Lewis said.

"Since no settlement was reached at that mediation, the lawsuit against the Urban Outfitters Corporation is proceeding," he said. "Accordingly, the Navajo Nation will pursue discovery and prepare its case for trial."

The Nation claims Philadelphia-based Urban Outfitters violated trademark laws and marketed items that were disrespectful to the Navajo culture.

The company claims American Indian-inspired prints have shown up in the fashion industry for years and that it's common for designers to borrow from other cultures. The company claims the term "Navajo" is generic and it is seeking a declaration of non-infringement and cancellation of the tribe's federal trademark registrations.

"The term 'navajo' is a common, generic term widely used in the industry and by customers to describe a design/style or feature of clothing and clothing accessories, and therefore, is incapable of trademark protection," the company said in court documents.

The company also asserts that it sells "hip clothing and merchandise" to "culturally sophisticated young adults" and in no way competes with Navajo arts and crafts, which generally are not sold in "specialty retail centers, upscale street locations and enclosed malls."

Urban Outfitters is an international retail company that markets and retails its merchandise in more than 200 stores and online. Its brands include Anthropologie and Free People.

The company did not respond to phone calls or email requests for comment this week.

As the Navajo Nation continues the legal battle for rights to its own name, it is garnering support from some unexpected allies. Tom Claffey, a Santa Fe-based author whose forthcoming novel is about a Navajo woman on the reservation, sent a letter to Urban Outfitters defending the Navajo Nation.

Claffey, who has never shopped at an Urban Outfitters store, called its Navajo product line "unforgivable" and "insensitive."

"These folks are just looking for a fast buck," he said during a phone interview. "They're just using the Navajo name."