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Hanover Ins. v. Urban Outfitters, 2-12-CV-03961 (E.D. Pa. Aug. 19, 2013)

Hanover Ins. v. Urban Outfitters, 2-12-CV-03961 (E.D. Pa. Aug. 19, 2013)

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Published by: Charles Colman Law, PLLC on Aug 20, 2013
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08/14/2014

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IN THE UNITED STATES DISTRICT COURTFOR THE EASTERN DISTRICT OF PENNSYLVANIA _____________________________________ THE HANOVER INSURANCECOMPANY,Plaintiff,v.URBAN OUTFITTERS, et al.Defendants _____________________________________ URBAN OUTFITTERS et al.Third-Party Plaintiffsv.ONEBEACON AMERICA INSURANCECOMPANY,Third-Party Defendant. _____________________________________ :::::::::::::::::: :::CIVIL ACTION NO. 12-cv-3961O’NEILL, J. AUGUST 19, 2013
MEMORANDUM
 Now before me are: plaintiff The Hanover Insurance Company’s motion for judgment onthe pleadings (Dkt. No. 26), defendant and third-party plaintiff Urban Outfitters’s response (Dkt. No. 29), third-party defendant One Beacon America Insurance Company’s response (Dkt. No.30), Hanover’s reply brief (Dkt. No. 32), and Urban Outfitters’s surreply (Dkt. No. 33). For thefollowing reasons I will grant the motion.
BACKGROUNDI.
 
The Underlying Action
Case 2:12-cv-03961-TON Document 41 Filed 08/19/13 Page 1 of 12
 
2This suit stems from claims brought in the United States District Court of the District of  New Mexico by the Navajo Nation against Urban Outfitters and its wholly-owned and controlled subsidiaries, entities, and retail brands (collectively “Urban Outfitters”) for trademark infringement, trademark dilution, unfair competition, false advertising, commercial practiceslaws violations, and for violation of the Indian Arts and Crafts Act. See Dkt. No. 30 Ex. 1(Amended Complaint) ¶ 1.
1
The Navajo Nation allege they suffered, inter alia, “advertisinginjuries arising out of Urban Outfitters’s misappropriation of the Navajo Nation’s advertisingideas and styles of doing business” that include “advertising injuries and web-site injuries arisingout of [Urban Outfitters’s] infringement of title by falsely suggesting and misrepresenting that its products are Indian made, when they were not,” advertising injuries arising out of disparagementof the Navajo Nation’s products, advertising injuries arising out of [Urban Outfitters’s] use of the Navajo Nations’ advertising ideas, and advertising injuries and web-site injuries arising out of [Urban Outfitters’s] infringing upon the Navajo Nation’s identity, culture, and cache associated with being a producer of authentic Indian products. Am. Compl. ¶¶ 115-119. “The amended complaint alleges that the defendants’ advertising materials were improper either because (1)they used the “Navajo” or “Navaho” names, or (2) they falsely represented through the use of Indian identifiers, styles, designs, tribal patterns, or motifs that the products advertised were of genuine Indian or Native American origin.” Dkt. No. 32 p. 2. Hanover argues that these“common themes constitute the substance of all of the offending publications at issue in theunderlying litigation, and provide the factual basis for all of the Navajo Nation’s claims againstthe insureds.” Id.
1
All references to the “Amended Complaint” refer to the Amended Complaint in theunderlying action proceeding in New Mexico. See No. 12-195 (D.N.M), Dkt. No. 30, Amended Complaint.
Case 2:12-cv-03961-TON Document 41 Filed 08/19/13 Page 2 of 12
 
3
i.
 
Allegations with Respect to the Use of the Navajo Name
The amended complaint alleges that “[s]ince at least March 16, 2009, Urban Outfittershas advertised, promoted, and sold its goods under the ‘Navaho’ and ‘Navajo’ names and marks.Urban Outfitters offers these goods on the Internet and in stores across the United States, and they compete directly with the Navajo Nation’s goods.” Am. Compl. at ¶ 2. The amended complaint further asserts that “at least as early as March 16, 2009, Urban Outfitters started usingthe ‘Navajo’ and ‘Navaho’ names in its product line, or in connection with the sale of its goods,online, in its catalogs, and in its physical stores.” Id. at ¶ 37. “Urban Outfitters’s use hasincluded, and includes (but is not limited to): clothing, jewelry, footwear, handbags, caps,scarves, gloves, undergarments, and flasks.” Id. “These items sold under the ‘Navajo’ and ‘Navaho’ names and marks evoke the Navajo Nation’s tribal patterns, including geometric printsand designs fashioned to mimic and resemble Navajo Indian-made patterned clothing, jewelryand accessories.” Id. The Amended complaint further alleges that Urban Outfitters has sold and is selling over 20 products using the “Navajo” and “Navaho” trademarks in its retail stores, itscatalogs and its online stores. Id.; see also, id. at ¶ 41. Plaintiff attaches copies of screenshotsfrom online shopping websites, which are an “illustrative and not exhaustive” list of the morethan 20 items comprising the “Navajo Collection” sold at Urban Outfitters, as exhibits to theamended complaint. Id. Plaintiff asserts that Urban Outfitters, however, also sold its goods in physical stores and in catalogs, and “this has also infringed on the Navajo Nation’s marks.” Id.;see also id. at ¶ 77.
ii
.
Allegations with Respect to the Use of Indian Identifiers
Plaintiff also alleges that “Urban Outfitters’s display and sale of its goods in its stores and on the Internet in manners that falsely suggest they are the product of the Navajo Nation, a
Case 2:12-cv-03961-TON Document 41 Filed 08/19/13 Page 3 of 12

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