Navajo Nation v. Urban Outfitters, Inc.

191 F. Supp. 3d 1238, 2016 U.S. Dist. LEXIS 66085, 2016 WL 7427157
CourtDistrict Court, D. New Mexico
DecidedMay 19, 2016
DocketCiv. No. 12-195 BB/LAM
StatusPublished

This text of 191 F. Supp. 3d 1238 (Navajo Nation v. Urban Outfitters, Inc.) is published on Counsel Stack Legal Research, covering District Court, D. New Mexico primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Navajo Nation v. Urban Outfitters, Inc., 191 F. Supp. 3d 1238, 2016 U.S. Dist. LEXIS 66085, 2016 WL 7427157 (D.N.M. 2016).

Opinion

MEMORANDUM OPINION AND ORDER DENYING DEFENDANTS’ MOTION FOR PARTIAL SUMMARY JUDGMENT ON IACA DAMAGES (DOC. 231)

BRUCE D. BLACK, SENIOR UNITED STATES DISTRICT JUDGE

This matter comes before the Court upon Defendants’ Motion for Partial Summary Judgment on- Damages Available under the Indian Arts and Crafts Act (“Motion for Partial Summary Judgment”), and supporting sealed memorandum brief, both filed on December 3, 2014 by Defendants Urban Outfitters, Inc.; Urban Outfitters Wholesale, Inc.; Anthropologie, Inc.; and Free People of PA LLC. (Docs. 231 and 232). On January 5, 2015, Plaintiffs filed a response along with a sealed expert report, and on February 3, 2015, the moving Defendants filed a reply. (Docs. 273, 275, and 312). Having reviewed the Motion for Partial Summary Judgment, the briefing, and the relevant admissible evidence, the [1240]*1240Court denies the Motion for Partial Summary Judgment.

Plaintiff the Navajo Nation is a sovereign Indian Nation and federally acknowledged Indian Tribe. It is undisputed that the Navajo Nation has marketed and retailed clothing, housewares, and jewelry using its “Navajo” name and trademarks since at least 1943. Plaintiff Diñé Development Corporation (“DDC”) is a corporation formed under the laws of the Navajo Nation and wholly owned by the Navajo Nation. DDC owns, and. is authorized to issue, licenses, of the “Navajo” trademark. Plaintiff Navajo.Arts and Crafts Enterprise (“NACE”) is a wholly owned instrumentality of the Navajo Nation. NACE also owns, and -is authorized to issue, licenses for the “Navajo” trademark as well as those of many other Indian tribes. The Court refers to these Navajo entities, collectively, as “Plaintiffs.”

Defendant Urban Outfitters (“UO”) sells products including women’s and men’s fashion apparel, footwear and accessories, as well as apartment wares and gifts. Defendant Anthropologie, Inc. (“Anthropolo-gie”) sells women’s apparel and accessories, as well as shoes, home furnishings, gifts, and decorative items. Defendant Free People of PA, LLC (“Free People”) sells women’s apparel, intimates, shoes, accessories, and gifts. The Court refers to UO, Anthropologie, and Free People, collectively,, as “Defendants,” ..

Plaintiffs filed the instant lawsuit, seeking damages, inter alia, under the Indian Arts and Crafts Act (“IACA”). Plaintiffs allege that Defendants violated the IACA by deceptively marketing their products to suggest they were Indian made when, in fact, they were not. Plaintiffs primarily allege that Defendants misused the terms “Navajo,” “Zia,” “Zuni,” “Pueblo,” “Apache,” “Cheyenne,” “Hopi,” and “Crow?’ in connection with certain clothing and apparel items which were not of Indian origin.

IACA Damages Language

In its current form, the IACA authorizes the following:

A person specified in subsection (d) may, in a civil action in a court of competent jurisdiction, bring an action against a person who, directly or indirectly, offers or displays for sale or sells a good, with or without a. Government trademark, in a manner 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.

25 U.S.C. § 305e(b). Defendants do not contest that Plaintiffs are persons authorized to bring suit under subsection (d) of the IACA.

The IACA further provides that the authorized entities may recover the greater of:

(A) treble damages; or
(B) in the case of each aggrieved individual Indian, Indian tribe, or Indian arts and crafts organization, not less than $1,000 for each day on which the offer or display for sale or sale continues.

Id. at § 305e(b)(2),

Positions of the Parties

Defendants move for summary judgment on the proper computation of damages under the IACA. Normally, motions for summary judgment are not appropriate for determining the proper standard to measure damages. See In re Methyl Tertiary Butyl Ether (MTBE) Products Liability Litigation, 517 F.Supp.2d 662, 665-66 (S.D.N.Y. 2007) (summary judgment addresses claims not remedies). However, with multiple Daubert motions and the admission of substantial trial evidence turning on the issue of IACA damages, a [1241]*1241resolution of that issue now may. save considerable juror and judicial resources. The Court, however, declines Plaintiffs’ invitation to determine punitive damages in the absence of any uncontested evidence in the record. See Morin v. Aetna Cas. and Sur. Co., 478 A.2d 964, 967 (R.I. 1984) (summary judgment not proper vehicle for awarding punitive damages).

Plaintiffs maintain that, for purposes of computing IACA damages, § 305e(b) clearly references “good” or “product” in the singular. Plaintiffs, therefore, argue that damages should be calculated at the rate of $1,000 per product type, per day that the product type is sold or displayed, per Defendant.

Defendants, on the other hand, concentrate on the second part of the § 305e(a)(2)(B) damages calculation. They argue that the statute simply states that damages are to be calculated for each plaintiff according to the number of days that the “offer or display for sale or sale continues.” Consequently, Defendants contend that damages should be calculated at $1,000 per day, per Defendant.

Both Plaintiffs and Defendants contend that if Congress had intended to allow damages based on the theory advanced by the other party it would have said so explicitly in the IACA. Plaintiffs and Defendants also rely on different cases from the Northern District of Illinois interpreting the standard for assessing damages under the IACA.

Statutory Interpretation

Plaintiffs argue in favor of the interpretation of the IACA set forth in Native American Arts, Inc. v. Bundy-Howard, Inc., 168 F.Supp.2d 905 (N.D. Ill. 2001). In deciding whether the IACA statutory damages provision was unconstitutionally vague, Judge Shadur reasoned:

It is sufficiently plain from the use of the words “good” and “product” that the $l,000-per-day damages floor applies to each different type of product rather than to each item of inventory ..... Had Congress instead intended to impose the potentially astronomical liability of $1,000 per day for each individual piece of a falsely suggestive product offered for sale or sold, it would surely have specified such extraordinary exposure explicitly-—and it did not.

Id. at 912-13.

Judge Shadur then specifically rejected the argument advanced by Defendants herein and by the Movants in Bundy-Howard:

On the flip side of that coin, Movants’ speculation that perhaps $1,000 per day may be assessed only once no matter how many types of 'products violate the Act cannot withstand scrutiny either. Section 306e[ (b) ] uses the words “good” and -“product” in singular form. It could scarcely be more evident that Movants can expect damages to be assessed for each separate “good” or “product,” rather than suffering a single assessment for all goods or products collectively. This common sense view comports with the manner in which other statutes have been read.

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Cite This Page — Counsel Stack

Bluebook (online)
191 F. Supp. 3d 1238, 2016 U.S. Dist. LEXIS 66085, 2016 WL 7427157, Counsel Stack Legal Research, https://law.counselstack.com/opinion/navajo-nation-v-urban-outfitters-inc-nmd-2016.