Legal fight boils over name use of Kapalua
What's in a name? A snarl of controversy if the name is Kapalua.
Maui Land & Pineapple Co. Inc., the real estate and agriculture company that began developing the West Maui resort area three decades ago, says the name Kapalua is similar to Disneyland: a trade name. And the company claims to have the exclusive right to use it.
In an attempt to guard the name, Maui Land & Pineapple has embarked on an aggressive legal campaign, slapping lawsuits on small businesses that employ the word Kapalua. At stake is whether Kapalua ultimately is treated like a commonplace name, such as Diamond Head or Honolulu, or whether it is in fact a protected trademark, such as Coca-Cola, which only Maui Land & Pineapple is entitled to use. A federal judge, it appears, will have to decide.
Although at least one recent suit over the name has been settled, two more are pending in federal District Court in Honolulu.
In one of the suits, Maui Land & Pineapple alleges that Oregon-based Golf Getaways Ltd. infringed on Maui Land & Pineapple's trademarks, committed cyberpiracy and engaged in unfair trade practices by using the name Kapalua in the Internet address of a Golf Getaways affiliate, Kapaluagolf.com. Maui Land & Pineapple has filed a similar suit against Ridge Realty Rentals LLC, a Hawaii company that manages vacation rentals in Kapalua.
To Bernie Reumann, president of Golf Getaways, the situation is baffling. As a packager of golf vacations, Reumann said that before the suit he frequently sent customers to Maui Land & Pineapple's resort and golf course at Kapalua in exchange for commissions.
"We sent them a lot of business," said Reumann. "We did this for many, many years."
But Reumann said the relationship took an abrupt turn after Maui Land & Pineapple sued him with little warning. Maui Land & Pineapple claims that Reumann's use of the name Kapalua, as well as the resort's butterfly logo on its Web site, has caused "irreparable harm, damage and injury to (Maui Land & Pineapple's) goodwill and business reputation."
The complaint asks the court to force Golf Getaways to quit using the name Kapalua. Reumann said he has already quit using the butterfly and that Maui Land & Pineapple is simply trying to bully smaller companies into giving up something they have the right to use.
"It's really an attitude of 'We're going to hurt you, and it's going to cost you money to fight us and we've got more bucks than you do,'" he said.
Already one company has caved. Sullivan Properties Inc., which manages vacation rentals on Maui, relinquished the Kapalua.com Internet domain as part of its settlement with Maui Land & Pineapple.
Teri Freitas Gorman, a spokeswoman for Maui Land & Pineapple, said the company is merely enforcing its rights, as any other company would.
"Some people think Kapalua is a place name, but it's the name of a resort area that was developed," she said.
Seth Reiss, a Honolulu intellectual-property lawyer who is not involved in the matter, said such disputes are typically complex, fact-intensive cases that turn on several issues. One question, he said, is whether the place name in dispute was coined by the trademark claimant, which in this case would be Maui Land & Pineapple, or whether it always referred to a geographic area. But even if the place name was coined, Reiss said, the name might not be protected if the trademark owner failed to police the trademark and thereby let it go into the public domain.
Gorman said that Maui Land & Pineapple has always policed the trademark; however, she said that David Cole, who took over as chief executive in 2003, has brought "a whole new level of attention to matters such as this."
Maui Land & Pineapple's claims over the Kapalua name have caused tension not just with small businesses, but also with at least one big-name tenant. When Maui Land & Pineapple applied to the U.S. Patent & Trademark Office to register Kapalua as a trademark for a wide range of "resort services," the application drew a strong reaction from Ritz-Carlton Hotel Co., which manages the posh Ritz-Carlton, Kapalua, resort on property owned by Maui Land & Pineapple.
In an opposition filed with the Patent & Trademark Office in August 2004, Ritz-Carlton asserted that the office should not grant Maui Land & Pineapple's request because "Kapalua is known and has been known for many years as a geographic area located on the western end of the island of Maui." Ritz-Carlton further claimed that it and many other companies used the name Kapalua for years with no objections from Maui Land & Pineapple.
Ritz-Carlton also accused Maui Land & Pineapple of fraud, alleging the company had made "a number of willfully and materially false representations before the (Patent & Trademark) office in connection with the application."
Ritz-Carlton's attorney on the matter, Douglas Bush, could not be reached for comment. Gorman said the Ritz-Carlton has permission to use the name Kapalua as part of Maui Land & Pineapple's lease with the resort's owner, Gencom Group.
Supporting the contention that Kapalua was a place name before Maui Land & Pineapple began developing the resort, lawyers for Kapaluagolf.com and Ridge Realty point to maps from 1956 and 1957 showing the name identifying the area of what is now the resort.
"They're welcome to use the name Kapalua, but they certainly don't have the exclusive rights to it," Joachim Cox, an attorney for the defendants, said of Maui Land & Pineapple.
