PORT ALLEN — Nite Owl T-shirts owner Rita Peeters says the Westside company’s most widely distributed design began as a gift from a friend. Called “Kimo’s Hawaiian Rules,” the list of 10 sayings was handed over to Nite Owl for
PORT ALLEN — Nite Owl T-shirts owner Rita Peeters says the Westside company’s most widely distributed design began as a gift from a friend.
Called “Kimo’s Hawaiian Rules,” the list of 10 sayings was handed over to Nite Owl for reproduction in 1991 by Kimo Krogfoss, philosophy professor and frequent visitor to Kaua‘i.
Since then, the copyrighted “rules” have been printed in a variety of styles, though its island message of optimism remains the same, always ending in the trademarked phrase “No Rain — No Rainbows.”
It’s one of the two most popular shirts that Nite Owl makes, Peeters said. So popular, in fact, that other companies have lifted the idea and printed it as their own.
Years ago it happened on O‘ahu; now Peeters says it’s happening in her own backyard.
Paradise Sportswear Hawaii, creator of the ubiquitous Red Dirt Shirt, sells designs featuring “Red Dirt Rules” on its Web site and in its stores.
Paradise Sportswear began printing its “Red Dirt Rules” in 2004, according to Melissa Rivera, Paradise Sportswear’s office manager. The idea, she said, came from a former employee who no longer works for the company.
Paradise Sportswear President Randy Williams declined to comment for this report.
Side-by-side, “Red Dirt Rules” and “Kimo’s Hawaiian Rules” are almost identical, save for small changes to the phrasing and punctuation.
There are even similarities in the graphics. The Red Dirt version features a petroglyph border, which is strikingly similar to Nite Owl’s original design from 16 years ago.
Adding insult to injury, the two companies occupy opposite sides of the same Port Allen warehouse and both feature the “rules” in their neighboring outlet stores.
The “rules” in their entirety have been copyrighted since the first printing in 1991. The tagline, “No Rain — No Rainbows,” was registered Sept. 26, 2000, as a trademark with the U.S. Patent and Trademark Office.
Since then, Peeters said she successfully sued an individual who was printing the “rules” on O‘ahu and Maui, recovering her court costs and retribution pay for lost revenue.
When she noticed that Paradise Sportswear was carrying a similar design about two years ago, she said she tried to contact Williams. To date, she said he has not returned her calls.
Nite Owl’s Art Director David Christy, however, has talked with Williams.
About a year ago, Christy said he stopped Williams in the parking lot to discuss the “rules” shirt.
According to Christy, Williams said an artist working for them had presented the idea, and the company was not aware that it was plagiarized.
But nothing has happened since, and the shirts are currently available at Paradise Sportswear’s Kaua‘i, Maui and O‘ahu retail stores.
Christy said the issue of copyright infringement really hits home with him. As a professional T-shirt designer, he copyrights all his work and knows the rules.
“It upsets me,” he said. “I know what the issues are and I’m personally sensitive to my intellectual property.”
He noted that, as neighbors, the Nite Owl and Paradise Sportswear staffs maintain a good relationship — even sharing paint or materials in a pinch.
According to the Patent and Trademark Office, a trademark is a “word, phrase, symbol or design” or combination thereof used by a party to identify and distinguish its products from those of others. For example, Peeters said Nite Owl prints the “No Rain — No Rainbows” phrase on cards, pens, shirts and caps, and is working to develop it further.
Copyrights, however, protect an author’s right to distribute and reproduce an original work — and derivatives, or variations on the original — according to the U.S. Copyright Office. The “rules” themselves fall into this category, as they are one of many Nite Owl designs.
According to Ruth Nyblod, spokesperson for the Patent and Trademark Office, trademark protection is only enforceable by lawsuit. Trademarks must be officially registered with the government. With copyrights, however, the presence of a copyright mark on the work is enough to hold up in court.
Attorney Steve Lieberman of Greenberg & Lieberman, a Washington, D.C.-based firm specializing in intellectual property lawsuits, said there are a lot of factors that go in to determining whom and what is protected by a trademark or copyright, including:
• When the material was registered in relation to its first use.
• Whether an infringement is occurring within the same field/industry.
• Whether a registered trademark is being used properly, i.e. to identify a brand/company and not as a product.
Lieberman noted that registering intellectual property with the correct office offers the most protection.
Both Peeters and Christy said they would like to see the issue resolved through discussions with Williams.
Christy suggested some sort of licensing agreement that honors Nite Owl and allows Paradise Sportswear to continue printing its design — “a peaceful resolution that ends with a handshake,” he said.
“I’d be happy if it just stopped,” Peeters noted. “If (Williams) refuses, that’s another story.”
Nite Owl got its start in 1985. Today, the majority of business comes from wholesale accounts; there is one retail shop at the Port Allen factory and purchases can be made online at the company’s Web site.
As for Nite Owl’s future, Peeters said she is not concerned.
“As far as longevity of a busin ess, honesty will prevail,” Peeters said.
