On February 28th 2012, the Navajo Nation filed a lawsuit against Urban Outfitters Inc. and its subsidiaries in the District Court of New Mexico for ‘trademark infringement, trademark dilution, unfair competition and commercial practice laws violation and for the violation of The Indian Arts and Crafts Act’.
The basis of the Navajo Nation’s complaint was that Urban Outfitters made unauthorized use of the ‘NAVAJO’ name in association with various retail items, such as alcohol flasks, women’s clothing and undergarments. In an interview on npr.org given by Bill Donovan – contributor for the Navajo Times – it was revealed that use of the NAVAJO name was not the only discomfort felt by the Nation: the Nation’s traditional designs and patterns had also been used on some of the products.
The NAVAJO name has been used in commerce since 1849 by the Navajo Nation in conjunction with numerous products including ‘clothing, accessories, blankets, jewelry, foods, tools, decorations, crafts, gaming establishments, tourism, educational institutions, retail services, fairs and events, and a news publication.’ Furthermore, the Nation has used its registered NAVAJO trademark in association with similar products since 1943. (para 2) The Navajo Nation asserts that the unauthorized use of the NAVAJO name and traditional designs in association with the retail products sold by Urban Outfitters conjures up false affiliation, licensing, sponsorship or endorsement by the Nation, seeing as the Nation itself has endorsed various products lines (such as clothing) in the past.
The Navajo Nation was not solely concerned with the use of the NAVAJO name, they were also concerned with the manner in which the name was used. In the complaint, the Navajo Nation claimed that use of the NAVAJO name in association with certain items such as the alcohol flasks was ‘derogatory and scandalous’ since “…[t]he Navajo Nation has long banned the sale, manufacture, possession, transport, delivery, and consumption of alcohol within its borders.” (para 58) In the interview, Donovan explains that use of the name in association with items such as underwear and alcohol flasks was ‘tacky’ and that the “Navajo Nation has been very sensitive about people using their name to promote tacky products”.
Since the complaint, Donovan notes that Urban Outfitters has removed the NAVAJO name from their catalogue although they continue to sell the same items.
A recent New York Times article explores the contention surrounding the “uneasy cultural exchange” concerning the recent use of traditional and cultural Navajo influences by fashion designers, causing the pop culture phenomenon of what the author coined “Navajo Chic”. ‘Inspiration’ derived from indigenous groups in fashion is hardly new: There was a similar uproar in Canada leading to the 2010 Olympic Games hosted in Vancouver.
The Cowichan First Nation had been negotiating a deal with the Bay to knit authentic Cowichan sweaters for the upcoming Olympic Games. Instead, the Bay decided to contract with an external manufacturer to produce similar sweaters rather than the authentic ones produced by the Nation itself due to the fact that production of the authentic sweaters would take too long. An authentic Cowichan sweater is a unique hand made design that could take anywhere up to seventy five hours to knit, whereas the manufacturers would be able to produce a much higher volume in a shorter time frame.
The Bay deflected the allegations, asserting that they were not manufacturing or selling the sweaters as authentic Cowichan sweater designs – although the sweaters did show some similarities.
The Bay finally agreed to a last minute licensing deal allowing for the Nation to sell their authentic Cowichan sweaters at the First Nations Pavilion and at the Bay’s flagship store in Vancouver – blatantly a formality due to the fear of heightened tensions surrounding the controversy and circulating rumors of protest aimed at the torch relay.
The Cowichan sweater was officially recognized as an object of ‘national historic significance’ by the Federal Government of Canada in March 2012 – one of thirteen such items, or sites given this national recognition.
Unlike the Unites States, Canada does not have legislation equivalent to the Indian Arts and Crafts Act. Instead, Canadian First Nation groups rely on a mixture of intellectual property, traditional knowledge and other means to protect authentically made products.
Although these two situations are different, the overarching issues remain the same. The contention will continue to be a grey zone pending the outcome of the lawsuit between the Navajo Nation and Urban Outfitters, which once settled, will surely result in defined parameters for use of the NAVAJO name by the world of fashion.
Courtney Doagoo is a doctoral student at the University of Ottawa, Faculty of Law.