In a surprising move last week, Urban Outfitters and its subsidiaries (collectively “Urban Outfitters”) moved to withdraw their motion for partial summary judgment on the secondary liability claims being brought against them by the Navajo Nation (“the Nation”). You might recall that I informed you about the lawsuit and a pending summary judgment motion brought by the Nation in a post last month. The motion to withdraw had to be brought because the Nation refused to consent to Urban Outfitters’ voluntary withdrawal of the partial summary judgment motion.

The Nation is alleging that Urban Outfitters are liable for secondary liability for providing the premises, facilities and instrumentalities for infringement by third parties. Urban Outfitters’ actions in seeking to withdraw the motion do not mean that they believe the Nation will prevail on this claim. Rather, Urban Outfitters merely believes that there is now a fact issue that would preclude the court from granting the motion. Specifically, Urban Outfitters had initially brought the motion because the Nation had fully released them from liability with regard to products, sold by ONE 3 TWO, Inc., d/b/a OBEY clothing (“OBEY”). The Nation had not identified any other alleged third-party infringers at the time. However, in its opposition papers, the Nation identified New Name Inc., as a company that it alleged was distributing infringing products. Further, the Nation contended that Urban Outfitters are liable as principals for the infringing acts of their third party marketing affiliates (e.g., aiding and abetting these affiliates in purchasing the keyword “Navajo” and using the mark in ads and websites).

There will likely be more updates as the New Mexico District Court handling this case had 30 pending motions in the case as of June 18, 2015. Indeed, only last week, counsel for Urban Outfitters argued that its usage of the “Navajo” mark was fair use. Urban Outfitters’ own well-known house mark was what was drawing customers in, not the much smaller font “Navajo” that merely described the product being sold under the Urban Outfitters brand. There would be no confusion in the marketplace—consumers would know that the source was Urban Outfitters not the Nation.