Native American Arts v. Waldron Corporation ( 2005 )

In the
United States Court of Appeals
For the Seventh Circuit
____________
No. 04-3182
NATIVE AMERICAN ARTS, INC., et al.,
Plaintiffs-Appellants,
v.
THE WALDRON CORPORATION,
Defendant-Appellee.
____________
Appeal from the United States District Court
for the Northern District of Illinois, Eastern Division.
No. 01 C 2370—Samuel Der-Yeghiayan, Judge.
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ARGUED JANUARY 18, 2005—DECIDED MARCH 2, 2005
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Before POSNER, EASTERBROOK, and ROVNER, Circuit Judges.
POSNER, Circuit Judge. The Indian Arts and Crafts Act,
25 U.S.C. §§ 305 et seq., forbids (so far as bears on this
case) selling a good “in a manner that falsely suggests it
is . . . an Indian product.” § 305e(a). The principal plain-
tiff, Native American Arts (NAA), is a seller of goods
produced by Indians. It brought this suit for damages
against a non-Indian manufacturer of Indian-style jew-
elry that is advertised under such names as “Navajo,”
“Crow,” “Southwest Tribes,” and “Zuni Bear” and sold with
tags that give facts about the tribe. The ads identify the
2 No. 04-3182
designer of the jewelry as Trisha Waldron, who is not an
Indian. Neither the tags nor the ads contain any disclaimer
of authenticity. The case was tried to a jury, the verdict was
for the defendants, and the plaintiffs appeal.
Although the Indian Arts and Crafts Act dates back to
1935, this is—amazingly—the first reported appellate
case under it. Until 1990, the only sanction for violating
the false-advertising provision was criminal; and there were
no prosecutions—zero. H.R. Rep. No. 400(II), 101st Cong.,
2d Sess. (1990), reprinted in 1990 U.S.C.C.A.N. 6391, 6392;
Jon Keith Parsley, Comment: “Regulation of Counterfeit
Indian Arts and Crafts: An Analysis of the Indian Arts and
Crafts Act of 1990,” 18 American Indian L. Rev. 487, 492-93
(1993); see also Indian Arts and Crafts Board, “Protection for
Products of Indian Art and Craftsmanship,” 61 F.R. 54551,
54551-52 (Oct. 21, 1996). In 1990, Congress authorized
government and private civil suits. 25 U.S.C. § 305e(c); H.R.
Rep. No. 400 (II), supra, 1990 U.S.C.C.A.N. at 6395-96, in
which hefty damages can be awarded. 25 U.S.C.
§§ 305e(a)(2), (b); William J. Hapiuk, Jr., Note: “Of Kitsch
and Kachinas: A Critical Analysis of the Indian Arts and
Crafts Act of 1990,” 53 Stan. L. Rev. 1009, 1025 (2001). There
have been some suits under the amended statute, but none
until this one that got beyond the district court level.
The plaintiffs’ principal argument is that the district judge
should not have held unconstitutional, and there-
fore refused to base an instruction to the jury on, a reg-
ulation that provides that “the unqualified use of the
term ‘Indian’ or . . . of the name of an Indian tribe . . . in
connection with an art or craft product is interpreted to
mean . . . that the art or craft product is an Indian product.”
25 C.F.R. § 309.24(a)(2). The plaintiffs say that because two
district judges to whom the case had previously been
No. 04-3182 3
assigned held the regulation constitutional, Judge Der-
Yeghiayan was bound by the doctrine of the law of the
case to hold likewise and his refusal to do so was a revers-
ible error. We agree that he should have adhered to his
predecessors’ ruling, because the ruling was correct and in
any event there was no reason to reexamine it. But his
failure to do so does not bind us. The doctrine of law of the
case limits reconsideration of rulings by the same or a lower
court; it does not limit reconsideration by a higher court of
rulings of a lower court. McMasters v. United States, 260 F.3d
814, 818 (7th Cir. 2001); Williams v. Commissioner, 1 F.3d 502,
503-04 (7th Cir. 1993); Milgard Tempering, Inc. v. Selas Corp.
of America, 902 F.2d 703, 715 (9th Cir. 1990).
The plaintiffs do not put all their eggs in a basket with no
bottom; they also challenge the soundness of Judge Der-
Yeghiayan’s ruling that the “unqualified use” regulation
infringes freedom of speech and is also unconstitutionally
vague and overbroad. He indeed was wrong. If he were
right, trademark law would be unconstitutional. In effect
the regulation makes “Indian” the trademark denoting
products made by Indians, just as “Roquefort” denotes a
cheese manufactured from sheep’s milk cured in limestone
caves in the Roquefort region of France. 3 J. Thomas McCar-
thy, McCarthy on Trademarks and Unfair Competition § 19:91,
p. 19 (4th ed. 2004 supp.). A non-Indian maker of jewelry
designed to look like jewelry made by Indians is free to
advertise the similarity but if he uses the word “Indian” he
must qualify the usage so that consumers aren’t confused
and think they’re buying not only the kind of jewelry that
Indians make, but jewelry that Indians in fact made. There
is no constitutional infirmity. San Francisco Arts & Athletics,
Inc. v. U.S. Olympic Committee, 483 U.S. 522, 531-41 (1987);
TE-TA-MA Truth Foundation— Family of URI, Inc. v. World
Church of Creator, 297 F.3d 662, 667 (7th Cir. 2002); Coca-Cola
4 No. 04-3182
Co. v. Purdy, 382 F.3d 774, 787-88 (8th Cir. 2004); Taubman
Co. v. Webfeats, 319 F.3d 770, 774-75 (6th Cir. 2003). But this
conclusion does less for the plaintiffs than they hoped.
The regulation is the work of a small office in the De-
partment of Interior called the Indian Arts and Crafts Board,
25 U.S.C. § 305, and a more substantial question than the
constitutional questions that bedazzled the district judge is
whether a regulation that “interpret[s]” “the unqualified use
of the term ‘Indian’ . . . or the unqualified use of the name
of an Indian tribe” to denote “an Indian product” is autho-
rized by the Indian Arts and Crafts Act, which so far as
relates to this issue merely authorizes the Department of the
Interior to define the term “Indian product.” § 305e(d)(2).
That is not an authorization to determine what representa-
tions convey the impression that a work is such a product.
There is no indication that Congress delegated to the
Department authority to determine what constitutes
sufficient proof of false advertising. Adams Fruit Co., Inc. v.
Barrett, 494 U.S. 638, 649-50 (1990); Commodity Futures
Trading Commission v. Zelener, 373 F.3d 861, 867 (7th Cir.
2004); Murphy Exploration & Production Co. v. U.S. Dept. of
Interior, 252 F.3d 473, 478-80 (D.C. Cir. 2001); Nagahi v. INS,
219 F.3d 1166, 1169-71 (10th Cir. 2000). The meaning of
“Indian product” is plausibly within the scope of knowl-
edge of an Indian Arts and Crafts Board—but not the
requisites for proving consumer confusion, especially when
it is not Indians, but non-Indians, who are the principal
consumers of faux Indian products, and especially since the
Board’s enforcement role is extremely limited. The Board
cannot conduct or initiate remedial proceedings; all it can
do is refer complaints to the FBI for investigation, and to the
Department of Justice for prosecution or civil action. 25
U.S.C. § 305d.
No. 04-3182 5
Well, it can do a little more; it can indicate the circum-
stances in which it will make such a reference. The analogy
is to the merger guidelines issued by the Department of
Justice, which describe the circumstances in which the
Department will challenge a merger as a violation of federal
antitrust law. The guidelines are statements of enforcement
policy. The Board is certainly free to announce the policy
that will guide it in deciding whether to refer matters to the
Department of Justice for possible action. The “qualified
use” regulation should be understood in this light rather
than as an attempt to tell the courts how to decide whether
consumers are likely to be confused.
But suppose we are wrong and the regulation governs
suits to enforce the Indian Arts and Crafts Act; the next
question would be the meaning of “unqualified use” and
the bearing of that meaning on jury instructions, the closing
arguments, and the jury’s verdict. Perhaps the most natural
meaning of “unqualified use of the term ‘Indian’ ” or of the
name of an Indian tribe is using the word or the name to
denote an Indian product without including a disclaimer,
such as “Indian style,” or, more emphatically, if rather off-
putting, “not manufactured by Indians.” A common
dictionary definition of “unqualified” is “not modified by
reservations or restrictions.” The OED gives a colorful
example: “His ardour did not precipitate him into any
unqualified declaration of his passion.” The defendant did
not include a disclaimer, so if “unqualified use” means what
we have just suggested and governs the meaning of “falsely
suggests,” the plaintiffs were entitled to summary judgment
on liability. They did not move for summary judgment,
however, and at argument their lawyer told us that while a
disclaimer would be the best method of qualifying the use
of the term Indian or the name of a tribe, it is not the only
6 No. 04-3182
one that would satisfy the regulation; other contextual
references could do so as well.
If this is right—and his concession makes it right for this
case—then it is unclear how the regulation should be
worked into jury instructions. The plaintiffs think that every
statutory provision or regulation applicable to a case should
have its own instruction, and in the language of the statute
or regulation, to boot. That might be the correct approach if
only lawyers and judges were eligible to be jurors. In
instructing laypersons on the law, the judge should extract
from the relevant legal sources the essential rules or princi-
ples that the jury is to apply to the facts and should state
those rules and principles in simple, everyday, nonlegalistic
language.
The instruction that the plaintiffs proposed, faithful to the
regulation but opaque to a layperson, would have required
the jury to return a verdict for them if it found either that
the defendant had failed to qualify its use of the names of
Indian tribes in its ads and labels or that it had otherwise
falsely suggested that its products were Indian products. We
expect that the jury would have been confused by such a
regulation, especially when it was explained to them that
the required qualification of the use of the name could
consist of any pertinent contextual elements, such as the
picture of Trisha Waldron that appears in some of the
advertising or the type of store in which her jewelry is sold.
The instruction might have said that the name of a tribe
suggests an Indian product unless the context rebuts the
suggestion. But the difference between this formula and the
statutory “falsely suggests,” which were it not for the
regulation would allow a jury to award a verdict to a
defendant even if the name of the tribe was not qualified, is
probably too fine to sway a jury.
No. 04-3182 7
In any event the regulation (always assuming, contrary to
our earlier ruling, that the regulation governs in litigation)
would be pertinent only in a case in which there was no
context: a case for example in which Waldron sold an
unadvertised product labeled simply “Navajo Bracelet,”
with no mention of the manufacturer or even identification
of the outlets in which the bracelet was sold—with nothing
but the name and the price. There was plenty of context in
this case. The question the jury had to answer was not what
the names of the various items of jewelry meant but what
the entire sales package, including advertising, labeling, and
place of sale, suggested to the average consumer. In such a
case, asking whether the defendant falsely suggested that it
was selling Indian products, and asking whether it failed to
qualify its use of the names of Indian tribes, come to the
same thing. See Sullivan v. CBS Corp., 385 F.3d 772, 776-
79 (7th Cir. 2004); Packman v. Chicago Tribune Co., 267 F.3d
628, 643 (7th Cir. 2001); Fisons Horticulture, Inc. v. Vigoro
Industries, Inc., 30 F.3d 466, 473 (3d Cir. 1994); Restatement
(Third) of Unfair Competition § 21 (1995).
So there was no error in the instructions. The other
arguments made by the plaintiffs either are rendered
academic by our ruling on the adequacy of the instructions
or lack sufficient merit to warrant discussion.
The judgment for the defendant is
AFFIRMED.
8 No. 04-3182
A true Copy:
Teste:
_____________________________
Clerk of the United States Court of
Appeals for the Seventh Circuit
USCA-02-C-0072—3-2-05