Fashion is, at its core, derivative. When it comes to intellectual property law, ‘derivative’ can sometimes be problematic. When a rich cultural history in the sense of tribal names, words and artistic designs is added to the mix, the results can be downright devastating, particularly where it involves the use of these cultural signs for commercial gain. Last Tuesday, the Navajo Nation filed a complaint against Urban Outfitters in relation to its use of the word ‘Navajo’ on some of its products.
The Navajo Nation is a sovereign Indian Nation, and federally-acknowledged Indian Tribe in the United States, with over 300,000 enrolled members. It owns, controls and exercises jurisdiction over a territory spanning more than 16,000 kilometres in northeastern Arizona, the southeastern portion of Utah and northwestern New Mexico.
The tribe has been known by the name ‘Navajo’ since at least 1849, with a trade mark first registered in 1943 for the sale of goods and services. The Navajo Nation currently holds 86 registered trade marks that include the word ‘Navajo’, for a variety of different classes of goods and services, including clothing, jewellery, homewares and accessories.
Urban Outfitters is an international retail company which markets and retails its merchandise online and in more than 200 stores located internationally and throughout the United States, including in New Mexico. Urban Outfitters also operates under the brands and wholly-owned subsidiaries ‘Anthropologie’ and ‘Free People’ (included as defendants to the action).
From around March 2009, Urban Outfitters began selling items in its product line, which featured the ‘Navajo’ and ‘Navaho’ names, in conjunction with geometric prints and designs “fashioned to mimic and resemble Navajo Indian and Tribal patterns, prints and designs.” In September 2011, Adrienne Keene reported in her blog, ‘Native Appropriations’, that Urban Outfitters featured 24 products with ‘Navajo’ in the name, including crop tees, feather earrings, socks, cuff bracelets, and most offensively, a hip flask and a pair of hipster panties. Lucky for us, Adrienne’s post includes pictures, so you can check them out for yourself here.
In October, Sasha Houston Brown, of the Santee Sioux Nation, standing in solidarity with the Navajo Nation, sent this open letter to Urban Outfitters, demanding that it remove and cease using the ‘Navajo’ name in selling its products. The open letter was sharp, but passionate: “plastic dreamcatchers wrapped in pleather hung next to an indistinguishable mass of artificial feather jewlery and hyper sexualized clothing featuring an abundance of suede, fringe and inauthentic tribal patterns.” While it was reported that Urban Outfitters then replaced the word ‘Navajo’ with the word ‘printed’ in its online collection, it appears Urban Outfitters continued to sell items under the ‘Navajo’ name in stores and under the ‘Free People’ brand.
Last Tuesday, the Navajo Nation filed a complaint in the New Mexico Registry of the District Court, alleging:
- trade mark infringement (in contravention of section 32 of the Lanham Act);
- trade mark dilution and unfair competition (in contravention of section 43 of the Lanham Act);
- violations of the Indian Arts & Crafts Act (which makes it illegal to sell arts or crafts in a way that falsely suggests they were produced by Native Americans); and
- violations of the New Mexico Unfair Practices Act.
The Navajo Nation alleges that “the fame or reputation of the Navajo name and marks is such that, when the Defendant uses the “Navajo” and “Navaho” marks with its goods and services, a connection with the Navajo Nation is falsely presumed.” The Navajo Nation is particularly concerned that:
- Urban Outfitters has used the ‘Navajo’ name in conjunction with an item with alcohol connotations, as the Navajo Nation has long banned the sale, manufacture and consumption of alcohol within its borders (stating this is ‘derogatory and scandalous’);
- Urban Outfitters is selling products of significantly lower quality than authentic products produced by the Navajo Nation, which will damage the reputation and trade marks of the Navajo Nation;
- Urban Outfitters is falsely suggesting that its products are manufactured or produced by the Navajo Nation, or are Indian arts and crafts; and
- in misspelling of the ‘Navajo’ name, in products labelled ‘Navaho’, Urban Outfitters has violated the Navajo Nation Code.
The Navajo Nation is seeking an order permanently enjoining Urban Outfitters from using the name ‘Navajo’ or variations of it on its products, as well as an account of profits (including treble profits as available under the Lanham Act and the Indian Arts and Crafts Act), treble damages, exemplary damages, costs and fees.
Commentators have suggested that Urban Outfitters may have some defences to rely on, including:
- that there was no likelihood of consumer confusion between an authorised Navajo item and those sold by Urban Outfitters; and
- in relation to the Indian Arts and Crafts Act allegations, that its items are not ‘handicrafts’.
However, the trade mark infringement seems relatively clear cut.
Cultural (in)sensitivity – What is it with fashion?!
After receiving the open letter, Urban Outfitters’ spokesman Ed Looram said “Like many other fashion brands, we interpret trends and will continue to do so for years to come…the Native American-inspired trend and specifically the term ‘Navajo’ have been cycling thru (sic) fashion, fine art and design for the last few years.”
Indeed, Urban Outfitters is by no means the only company to have released fashion lines ‘inspired’ by cultural dress – we need look no further than Karl Lagerfeld’s opulent annual Metiers D’Art show collections for Chanel, most recently drawing on developing nation India, having previously looked to Byzance, Shanghai and Moscow.
Online retailer ASOS has developed its ASOS Africa line, reportedly even seen on Michelle Obama. The ASOS Africa line is produced in Kenya to support the work of a local organisation, and £5 from each sale is donated to that organisation. While ASOS might be assisting Kenyan communities, interestingly, a search on ASOS for ‘Navajo’ reveals 214 results, of which at least 18 feature the word ‘Navajo’ in the style name. These items are not only ASOS-branded, but from a variety of labels, including Ralph Lauren. One of the items is a set of ‘ASOS Navajo feather bracelets’. An additional 4 items feature the word ‘Navaho’ in the style name. Some items appear to have been renamed ‘Aztec’, and the remainder of the results appear to use the name ‘Aztec’. Presumably, as the Aztecs are an ancient civilisation, pre-dating the trade mark registration system in the United States, there are no surviving members who could claim a monopoly over using the word ‘Aztec’.
Australian labels Sportsgirl, Country Road, Cooper St, Samvara and Tigerlily, to name but a few, have previously featured items with the word ‘Navajo’ in the style-name, though it could be argued that the ‘Navajo’ name does not bring with it the same connotations in Australia as it might do in the United States. Interestingly, it was Rodarte, a United States label, which last month brought designs inspired by Aboriginal art to the catwalks of New York Fashion Week, see news report here.
The derivative nature of fashion, and the way it is sometimes blindsided to its ability to offend has been picked up on by comedians. Who can forget Zoolander’s ‘Derelicte’ range, and see also this parody video about the trend for Native American-inspired clothes (thanks to The Guardian’s Fashion Blog for the tip).
These examples raise complex questions about racial identity and what happens if elements of racial identity are commercialised in a way which might be regarded as ‘fashion’ to some, but ‘offensive’ to others. It is interesting, then, to look at instances such as this where it appears that ‘offensive’ could also translate into ‘unlawful’.
What if this happened in Australia?
Let’s imagine for a minute, that this situation was taking place in Australia.
If an Indigenous organisation, tribe or clan held a registered trade mark, it would be well protected under the provisions of the Trade Marks Act 1995 (Cth) (‘TMA’), as it, to the exclusion of all others, would be entitled to use its trade mark in relation to the goods and/or services for which it was registered.
However, it may struggle to obtain a trade mark registration, on the basis that the proposed trade mark was not capable of distinguishing the applicant’s goods and services (section 41 TMA), that the applicant was not the owner of the trade mark (section 58 TMA), that an opponent has used a similar trade mark earlier than the applicant and continues to use it (section 58A), that the applicant is not intending to use the trade mark (section 59), or that the trade mark contains a false geographical indicator (section 61).
The Indigenous organisation, tribe or clan could consider lodging an application for:
- a collective trade mark (Part 15 TMA), which is a sign used in relation to goods or services provided in the course of trade by members of an association, to distinguish its goods and services from those of non-members; or
- a certification mark (Part 16 TMA), which is a sign used to distinguish goods and services which possess a certain quality, accuracy or characteristics (including origin, material or mode of manufacture).
Even without a registered trade mark, an Indigenous holder of an unregistered trade mark would be able to seek protection from the common law of passing off, if:
- the business or its goods had acquired a certain goodwill and reputation;
- the actions of the defendant have caused, or will cause, a reasonable consumer to believe that the defendant’s goods are those of the plaintiff; and
- as a consequence of the defendant’s actions, the plaintiff is likely to suffer loss or damage in its trade or business.
The Australian Consumer Law (Schedule 2 to the Competition and Consumer Act 2010 (Cth)) (‘ACL’), also provides protection, in that it prohibits a person, in trade or commerce, from engaging in conduct that is misleading or deceptive (section 18 ACL). The ACL also prohibits a person from making false representations:
- that goods are of a particular standard, quality, value or grade (section 29(a) ACL);
- that goods possess sponsorship, approval, or performance characteristics (section 29(g) ACL); or
- in relation to the place of origin of goods (section 29(k) ACL).
We do not have any legislation equivalent or similar to the United States’ Indian Arts and Crafts Act, and indeed, there is no requirement in our trade mark registration system that prior informed consent be obtained before registration of an Indigenous word or symbol is accepted.
However, following a spate of incidents which involved the false labelling of art as authentic ‘Aboriginal’ art, the Australian Competition and Consumer Commission (‘ACCC’) has been quite active in this area.
In 2009, the ACCC successfully established that Australian Dreamtime Creations Pty Ltd, which dealt in Aboriginal art, misled consumers (in contravention of section 52 of the Trade Practices Act 1972, the predecessor to section 18 of the ACL) by representing that certain art that it promoted and sold was by an artist of Aboriginal descent named “Ubanoo Brown” when this was not the case. Justice Mansfield of the Federal Court stated “In general, my view, to a reasonable group of persons who buy or may buy Aboriginal art, to describe a painting as ‘Aboriginal art’ is to convey that it is painted by an Aboriginal person or a person of Aboriginal descent.” Indeed, the Court also quashed arguments by the respondents and stated that representations could be ‘false or misleading’ regardless of whether they related to fine art or to souvenirs. The judgment is available online here.
In March 2010, the ACCC raised concerns that a household goods wholesaler was falsely promoting rock art magnets as ‘Authentic Aboriginal Art’. The wholesaler withdraw the items from sale. In December 2010, the ACCC published the fact sheet “Your consumer rights: Indigenous art and craft – thinking of buying Indigenous art?” While it is very high level, it suggests that this is an area the ACCC is interested in, and willing to act if consumer deception takes place.
Our legal framework in Australia has similarities with that in the United States, but also significant differences. We eagerly await news of Urban Outfitters’ response, and whether the Navajo Nation may join any other fashion brands, who seem to have engaged in similar conduct, to its action.