Who Owns the Duke?
The battle for the trademark to Duke Kahanamoku’s name has been far less dignified than the man himself.
Charlie Carr, dressed in shorts, an aloha shirt and a pair of beach slippers, sits on a picnic bench overlooking the ocean at Ali‘i Beach Park on O‘ahu, remembering the moment when he finally and fully understood his predicament.
Eight years ago, he watched Mahina Paoa Rapu, a relative of legendary Duke Paoa Kahanamoku, unwrap a tiny moai, a replica of the large Tiki-like statues that sit on her native island of Rapa Nui. “It was carved from the femur bone of [Rapu’s] grandfather,” says Carr. “It was extremely sacred and she was showing me, ‘This is how I take care of my bones.’” He remembers that she asked about Kahanamoku: “What are you doing with [his] bones?”
photo: Big Bamboo
Carr does not possess Kahanamoku’s bones, but he does share something of great commercial value—trademark rights to his name. Watching Duke’s distant relative with her family relic, Carr realized that when he bought into the Kahanamoku name, his venture was not solely about commerce. He had become a unwelcome caretaker of Duke Kahanamoku’s legacy. And he was not the only one.
How Carr, a California resident, acquired the rights and why he possesses only half of them is part of a little-known, 13-year-long trademark war that still entangles Carr, the Duke Kahanamoku Foundation controlled by the Outrigger Canoe Club, a Waikiki restaurant, several large clothing manufacturers, a Delaware bankruptcy court and various Kahanamoku family members.
The trademark conflict has run hot and cold over the years, alternating between episodes of frenzied litigation and long periods of inactivity. The latest skirmish involves two issues: whether a small California-based corporation—engaged to market the Duke’s trademark and manage the income—has done an adequate job, and whether Kahanamoku family members have a right to use the Kahanamoku name for commercial purposes.
More significant, though, is the anger that the war has aroused among those who perceive it as an appalling exploitation of a revered cultural icon. To some, the carving up of Duke’s trademark represents not only the buying and selling of a name, but of Hawai‘i itself.
Last year, the surf industry generated $3.4 billion in sales. Whoever controls the Duke trademark stands to reap hundreds of thousands, if not millions, of dollars from clothing manufacturers, restaurants, surfboard makers and other commercial entities that are eager to ride the wave of surfing’s growing popularity. Among them have been a large Waikiki, hotel that inquired about naming one of its towers after Duke, and the makers of Monopoly, who canceled plans to use Kahanamoku’s name in its Surfing Monopoly game for fear of getting sucked into the trademark dispute’s vicious undertow.
A full-blooded Hawaiian, Duke Kahanamoku was born in 1890, the oldest of six brothers and three sisters. Credited as the father of surfing, and winner of five Olympic swimming medals, he became known worldwide after he won his first gold medal and broke the world record for the 100-meter freestyle at the 1912 Olympics. When the 1916 Olympiad was canceled during World War I, he raised money for the Red Cross by giving surfing and swimming exhibitions from the Atlantic seaboard to Australia, attracting thousands wherever he went. While on tour, he became one of the first American athletes to challenge the color barrier.
“The Olympic team was in Georgia, and the kids all stayed in a good hotel and were treated like kings and queens,” says Fred Van Dyke, a well-known surfer and a friend of Kahanamoku. “But Duke couldn’t stay in the hotel because of his dark skin and he couldn’t eat at the table with them, so it was a real bad situation. He was hurt, very badly hurt.”
Despite the poor treatment, Kahanamoku exemplified sportsmanship and kindness, to the point of even encouraging those competing against him. “This bloke, this old guy, he taught me how to beat him,” said Johnny Weissmuller in 1951. He competed against Kahanamoku, then 34, at the 1924 Olympics and went on to fame as the best-known movie Tarzan. He later recounted Kahanamoku’s words on the Olympic starting block: “The most important thing in this race is to get the American flag up there three times.” That year, Weissmuller took the gold, Kahanamoku the silver, and Duke’s brother, Sam, the bronze.
Duke Kahanamoku’s humility impressed everyone he met, but it was a single act of bravery that endeared him to the entire nation. While picnicking on the beach at Corona del Mar, California, he witnessed a 40-foot fishing vessel capsize offshore. He immediately paddled his surfboard through the large waves and rescued eight people. His heroism made national headlines and contributed to the mystique of the handsome Hawaiian who seemed to perform miracles in the water.
In the 1920s, he dabbled in Hollywood as a supporting actor before returning to Hawai‘i, where in 1940 he met and married Nadine Alexander, a dance instructor from the Mainland. He was able to glide gracefully between the Hawaiian friends of his youth and his affluent friends at Hawai‘i’s Outrigger Canoe Club, where his wife felt most comfortable.
In later years, Hawai‘i dubbed him its official “Ambassador of Aloha,” and faded photographs show him sharing a pineapple with Amelia Earhart, handing a canoe paddle to Joe DiMaggio, dancing hula with Great Britain’s Queen Mother and shaking hands with President John F. Kennedy.
“He represented the image of aloha,” says Steve Pezman, publisher of Surfer’s Journal magazine. “He traveled the world and introduced that concept to other cultures. He was in many ways pure of heart—a very simple, loving person who had this huge bunch of charisma that became commodified by everyone around him.”
Honolulu disc jockey Kimo McVay initiated the trademarking of Duke’s name in 1962, when he and the veteran surfer teamed to open Duke Kahanamoku’s restaurant and nightclub in Waikiki, hiring a young Don Ho to entertain. By trademarking the name, Kahanamoku and McVay prevented others from capitalizing on it unless they paid Kahanamoku a licensing fee—similar to the lucrative fees that today’s trademark owners stand to collect.
|Charlie Carr maintains that he rightfully bought the trademark to Duke Kahanamoku’s name. photo: Jeff Mailes|
Confusion over the trademark’s ownership began five years after Kahanamoku’s death when, in 1973, his widow sold the clothing trademark to Los Angeles-based Catalina Swimwear. Whether Catalina actually used the trademark remains a point of confusion among the parties. Nadine believed that because Catalina failed to create a Duke line of clothing within two years, it legally “abandoned” the trademark, in which case it reverted to her. In 1986, she gave the trademark to the Outrigger Canoe Club to run a nonprofit foundation in her husband’s name.
Carr claims that Catalina never abandoned the trademark, which it agreed to sell to him in 1993 when he offered the financially struggling swimwear company $10,000. Catalina, however, went bankrupt before the deal could be consummated, and Carr ended up in a bankruptcy court battling Catalina’s creditors, some of whom also were vying for the name, including Warnaco (makers of Speedo, Calvin Klein and Chaps Ralph Lauren). Carr persuaded the judge to honor Catalina’s agreement to sell him the trademark, and he purchased it through the court.
Outrigger then sued Carr, claiming that he had bought an abandoned trademark and that Outrigger was the true owner. It was around this time that Carr realized just how forceful an opponent Outrigger could be.
At The Outrigger Canoe Club, members dine at its terraced restaurant in beach slippers and aloha shirts. The club’s casual and relaxed atmosphere and lack of ornate facilities belie the fact that its membership includes some of Hawai‘i’s richest and most powerful families.
Kahanamoku was one of the only Hawaiians granted membership in the early days, and although the club has long since abandoned its race-based exclusionary policy, most of its members today are Caucasian, or part-Caucasian.
Although the Outrigger Duke Kahanamoku Foundation is a separate entity from Outrigger Canoe Club, the foundation’s bylaws require that two-thirds of the foundation board members be Outrigger Canoe Club members. The foundation has net assets of $1,239,507, and last year earned $299,199 from investment income, trademark income, fundraising and donations. It awarded $76,547 in scholarships and grants, and spent $93,710 in operating and fund-raising expenses, which included paying $36,859 for a foundation coordinator, and $22,698 in trademark-related legal fees.
The foundation runs events such as Duke’s OceanFest, held each August on Duke’s birthday, which brings in funding from large corporations like Hawaiian Airlines and Corona. The foundation also runs the annual Duke Kahanamoku Boys & Girls Club Duke Sports and Fitness Day, when children from low-income families are taught ocean sports and water safety skills.
At one such event, former foundation president Gretchen Duplanty, who runs a successful Honolulu real estate school, tugs at the brim of her straw hat to shield her eyes from the ocean’s glare, as she watches a child from the Boys and Girls Club being lifted from a canoe and placed back into his wheelchair. “That’s the first time in his life that he’s ever been in a canoe. Isn’t that wonderful? This is my way of giving back,” she says, explaining that her own son has received several foundation scholarships.
The practice of awarding some foundation money to children of Outrigger members is one reason that Cameron Kahanamoku, a great-nephew of Duke Kahanamoku, joined Carr in fighting Outrigger for control of the trademark. Outrigger wasn’t doing anything about helping the Hawaiian children, he says. “Charlie and I had complained to Outrigger that they were using [the foundation] to give scholarships to the rich kids who didn’t need them.”
Current foundation president Jim Fulton says the foundation has recently tightened its policy of awarding grants to Outrigger members. “There was an application filed last year by an Outrigger Canoe Club member, and this person couldn’t show need,” says Fulton. “So we rejected the application, even though both the daughter and the parents had previously received money from the foundation.”
The foundation, however, continues to award annual grants to Outrigger Canoe Club to pay for Outrigger’s yearly canoe regatta and paddleboard race. Whereas most grants are in the $500 to $1,000 range, Outrigger receives $6,500. The grant application requires that recipients demonstrate financial need, but when asked whether Outrigger qualifies in that regard, Fulton admits that Outrigger is not financially needy. Members pay as much as $13,000 to join. “That’s been grandfathered in for a long time. It’s the way we’ve always done it,” he says. “Plus after we fund the race, Outrigger members donate back to the foundation, they re-donate the money.” Fulton, who is not an Outrigger member, defends Outrigger’s stewardship of the foundation by pointing out that the volunteer board is working hard toward increasing its annual scholarships to $200,000 in the next two years. “What have other people done to support the character and the sportsmanship of Duke?” he asks.
Cameron Kahanamoku says he told Carr in 1980 that he wanted to do something to honor his Hawaiian heritage and Carr suggested that they make careers for themselves by creating a Duke line of clothing. Eventually, they also agreed to form the Kahanamoku Family Foundation, which would distribute a portion of trademark proceeds to Kahanamoku family members (many of whom live on modest incomes) and fund scholarships to improve arts education for low-income Hawaiian children.
It took several years to obtain the trademark, and it took until 1995 for Carr and Cameron to sign their first licensing agreement with Authentic Fitness, a clothing manufacturer willing to pay at least $75,000 per year in licensing fees for use of Duke’s name. They wound up spending the money on legal costs.
Outrigger “barraged me … to bury me in paper,” says Carr, explaining that the battle cost him $250,000 and was complicated further when Outrigger, believing it had the right to do so, granted permission to a California company named TS Restaurants in 1989 to open a restaurant on Kaua‘i and subsequently, another in Waikiki, using Duke’s name. Carr claims that agreement hindered a deal he was making with another restaurant. TS Restaurants then became ensnared in the fracas, according to co-owner Sandy Saxten.
“When we first opened up, we didn’t know or care about trademarks,” Saxten says. “We’d gotten the blessing of Outrigger, and then all of a sudden, when Charlie started asserting a lot of rights, everybody just got real legal.” Saxten was forced to spend $25,000 in legal fees. Duke’s Waikiki, owned by TS Restaurants, has since become one of Waikiki’s most popular dining spots.
During this time, Outrigger spent $160,000 in legal fees. Fulton maintains that Carr has been overestimating the name’s commercial value and therefore has been willing to continue fighting for the rights. “Charlie’s [commercial] expectations are what created this whole problem.”
The sentiment is shared by many at Outrigger, including foundation board member Pamai Tenn, who, until Nadine Kahanamoku’s death in 1997, was one of her closest friends. Despite the foundation’s own decision to license Kahanamoku’s name to a restaurant, Tenn fears that Carr’s commercial approach may damage Kahanamoku’s legacy. “Every mistake they [Charlie Carr and those with him] make is going to be hard work for us to make it right.”
The most accurate description of the 55-year-old Carr is one that he uses himself: “I was born with the gift of gab and a can-do attitude.” But now Carr is wondering whether different choices could have averted the clash with Outrigger. “I’ve stepped on toes,” he says. “But I don’t want to draw any more blood. I’ve suffered a ton. I’ve lost a lot.”
|Jo-Anne Kahanamoku-Sterling has given up hope of ever owning the Kahanamoku name. photo: Robbyn Peck|
What he has lost, he says, is his business reputation in Hawai‘i. Carr has learned the hard way what it means to stir the waters. He says he once insulted a billionaire Outrigger member who was involved in the lawsuit, and he continues to pay a price for it. “Those few handful of [Outrigger] people are very powerful,” Carr says.
Overwhelmed at the legal costs—and at a time when Authentic Fitness was in financial trouble—Carr in 1997 agreed to participate in settlement talks with Outrigger. He brought several Kahanamoku family members with him to the bargaining table, including Cameron Kahanamoku and Jo-Anne Kahanamoku-Sterling, Duke’s niece and president of the Kahanamoku Family Foundation.
Sitting across from them were Outrigger’s representatives, including Stuart Ho, son of developer Chinn Ho; Gulab Watumull, a wealthy businessman and philanthropist who helped fund the University of Hawai‘i’s East-West Center; and Robert “Rab” Guild, whose wife’s family is heir to Hawai‘i’s $2-billion Campbell Estate. Guild attempted to mediate.
But this was no simple business dispute. Underneath the surface was an undercurrent of long-standing ethnic tension. Relations between Outrigger and the Kahanamoku family have been strained since 1911. Unwelcome at Outrigger, Hawaiians living in Waikiki, at the time formed a “club” of their own a few hundred yards down the beach beneath a hau tree (today known as Hui Nalu), and some of Duke’s brothers occasionally beat up Outrigger members. Cameron Kahanamoku’s tone is matter-of-fact when he recalls Outrigger’s insistence on controlling Duke’s name.
“You have to look at who Outrigger is—the old school of boys. It’s a very conservative social group attitude where if you’re not at their level, they really won’t deal with you. That’s kind of how the Kahanamokus have been treated over the years.”
Ironically, Cameron Kahanamoku is descendant on his mother’s side from one of the Outrigger’s Caucasian founders.
Outrigger members have pointed out that since Duke never had children, none of the Kahanamokus involved in the dispute are direct descendants. The Kahanamokus, however, are acutely aware that it was not Duke but Nadine Kahanamoku who gave the trademark to Outrigger after Duke’s death.
“Our family name has been given out, and everybody has it but us,” says Didi Robello, a grand-nephew of Duke and a second-generation Waikiki, beach boy who runs the Aloha Beach Services concession stand at the Waikiki, Sheraton Moana Hotel. “We’re all being used. We’re being exploited, and that’s why a lot of times I don’t want anything to do with [the trademark war].” Robello is irritated that Kahanamoku family members are occasionally invited to be shown off at public events (some money-making) that honor Duke, and are then ignored. “If I show up, they usually say, ‘Ah thanks, I’m glad you came. Here’s a T-shirt. Bye.’”
Around the negotiating table that day in 1997, Carr insisted that the Kahanamokus be made part-owners of the trademark. Outrigger refused, and after several hours of heated exchange, Jo-Anne Kahanamoku-Sterling gave up hope of ever owning the name. Afraid of a legal battle that would pit the family’s relatively small resources against Outrigger’s, she politely thanked Carr for his efforts and then broke down and wept.
Now in her 70s, Kahanamoku-Sterling lives in Kona where she works as an artist and volunteers to help preserve native Hawaiian sacred sites. “In a way I understand,” she says slowly, referring to Outrigger’s insistence on leaving the family out. “We were kind of notorious and rebellious when we were young. [Outrigger] had received serious input from Duke and especially from Nadine,” who she says was not very involved with the family.
“But I feel a great hurt,” Kahanamoku-Sterling says. “I feel as though it’s an ongoing thing of people coming to [Hawai‘i] and capitalizing on it.”
Fearful of tarnishing the name, Kahanamoku-Sterling chose not to pursue the trademark war at that time. “This is how my father and grandmother brought us up … to always be kind and respect the name.” Sterling’s brother, Bunny Kahanamoku asks, “If we should mar the name in any way, then what does any Hawaiian who comes after us have left in life?” Cameron Kahanamoku, Carr’s onetime partner, backed away as well. “True, it is our name, but to be involved with something that is so public and getting thrown around like that, it’s not worth it.”
Carr and Outrigger then agreed to split ownership.
Outrigger would receive 90 percent of restaurant-related income and 10 percent of clothing income, and vice versa for Carr. Saxten agreed to pay $80,000 per year to operate four Duke’s restaurants (in Waikiki, in Lihue, Huntington Beach and Malibu).
The trademark dispute is forcing difficult choices that Duke Kahanamoku never could have imagined. The Bishop Museum had to change its policy to fit the new trademark guidelines. “Anyone wanting to use the museum’s photos of Duke must obtain [trademark] permission,” explains archives manager DeSoto Brown. The policy has offended some patrons. “There was one person in particular who wanted to use a photograph and who was very angry and said, ‘How could this be?’”
Moreover, the trademark war has become even more complex. The latest snarl stemmed from a second agreement that Carr and the Outrigger Duke Kahanamoku Foundation made seven years ago. Suspicious that trademark income was not being accurately reported, both parties transferred their trademark rights to a California company they created called Malama Pono, which in Hawaiian means “to take care of in a righteous way.” Malama Pono’s responsibility is to market the trademark and collect and distribute the income to Carr and the foundation. An Oxnard, California businessman, Don Love, runs Malama Pono and has invested some of his own money, although he won’t say how much. Carr and the foundation have accused Love of not marketing the name as promised. (The only income Carr has received from Malama Pono is his 10 percent from the Duke’s restaurants, or $8,000 per year.)
In July 2005, Love sued Mark Gunter, a stepson of Duke nephew Sandy Kahanamoku, for trademark infringement. Gunter is not Hawaiian, but he is undeniably part of the Kahanamoku family. Last year Gunter and his sister, Julia Kahanamoku, opened a surfboard shop in El Segundo, California. Their boards have red and gold labels bearing the company name—“Kahanamoku Sons.”
‘“Cease and desist! Turn over all your surfboards!’ How ridiculous is that?” says Gunter. “This is my family name. We can’t even use Kahanamoku Sons?” Gunter and his sister, together with cousin Tracy Kahanamoku, and the Kahanamoku Family Foundation, have filed a counter lawsuit claiming that Malama Pono has no trademark rights at all.
In response, Love is offering a royalty-free license limited to selling only surfboards and surf shop related T-shirts, and both sides may opt to settle out of court. Gunter estimates he has paid $50,000 in legal fees.
In September, Love announced that Malama Pono reached an agreement with Hilo Hattie, which plans to open a chain of Duke Kahanamoku stores. “I don’t see this as any war at all,” he said. “It’s about consolidating everybody’s interests. It’s taken a while, but things are now starting to line up,” Love would not discuss the amount of income the deal will bring, only that it would be “substantial.”
In 2002, the U. S. Post Office created a stamp in Duke Kahanamoku’s honor, and its unveiling was celebrated by daylong festivities at Waikiki, Beach. On the surface, it looked as if one venture in Duke’s name might go untarnished.
But then Smithsonian Magazine ran a humorist’s column questioning the judgment of those who had decided to put Duke on a stamp. The author, who complained of “licking the man’s back” in order to affix her postage, managed to offend almost an entire state. “Who is this man?” she demanded to know. “And how did he get on my stamps?” Those who now gather behind his name could easily have told her. He was a champion among people whom he united with grace and aloha—an amazing feat of skill and love, and one that has yet to be repeated.
Patti Paniccia is an author and a freelance journalist in southern California, and a member of the bar in Hawai‘i and California. Her work has been published in a variety of national magazines, journals and newspapers.