Goin' to Surf City? Two Coastal Towns Claim the TitleHuntington Beach Jousts With Santa Cruz, Calif.; A T-Shirt War Heats Up

BY ROBERT A. GUTH

SANTA CRUZ, Calif. -- GingerNoland, 72 years old, was surprised lastSeptember to get a letter from a South-ern California law firm threatening tosue her family business, which sells T-shirts and trinkets in this beach townabout 70 miles south of San Francisco.

The lawyers claimed that Noland'son the Wharf was violating a trademarkby printing the words "Surf City USA" ona $17 T-shirt. The rights to that combina-tion of words belong to the HuntingtonBeach Conference & Visitors Bureau,

the letter said. Thelawyers demandedthat the Nolandsstop selling theshirts by the end ofthe month.

Distressed, Ms.Noland turned toher elder son,Bruce, and asked:"What have youdone?"

What Mr. Noland had done wasstoke a long-simmering war betweenNorth and South, California-style. Hunt-ington Beach, with its warm weather,sandy beaches and steady waves, haslong argued that the Surf City title is itsexclusive property, granted to it by the1963 Jan & Dean song hit "Surf City."

Four hundred miles north, the mel-low college town of Santa Cruz is equallyadamant that it is the original Surf City.Its historical surfer pedigree dates to1885, when members of the Hawaiianroyal family surfed nearby.

At first, Ms. Noland planned to givein to the lawyers' demands. With an ail-ing 72-year-old husband to support andher own problem with cataracts, shedidn't want a fight. But Santa Cruzans,outraged by the legal threats, turned outto support the family. A local surfer-law-yer phoned Ms. Noland offering help,

free of charge. His firm, a Silicon Valleyintellectual-property specialist that hassuccessfully taken on such companies asMicrosoft Corp., answered the letter byfiling a lawsuit alleging that the Hunt-ington Beach Visitors Bureau trade-mark isn't enforceable outside the Hunt-ington Beach area.

"The real Surf City is widelyacknowledged to be Santa Cruz," saidthe Santa Cruz complaint. The judgehearing the case, filed with the U.S. Dis-trict Court in San Francisco, has threetimes turned down the HuntingtonBeach motion that the case be movedsouth. "It will be difficult for my client toget a fair trial in Northern California,"says Richard Sybert, an attorney atGordon & Rees in San Diego who is rep-resenting the Huntington Beach bureau.

The Nolands opened the first of foursurf shops in 1960 on the Santa Cruzwharf, where tourists stroll among sou-venir shops and fish stalls. Ms. Nolandand her husband, Ward, managed thebusiness. Their two sons helped outwhen they weren't out surfing them-selves. After Ward Noland was diag-nosed with Alzheimer's disease in 1994,Bruce, who is 48, stepped in.

By then, the Surf City spat wasbuilding. Despite two existing "surf cit-ies" in North Carolina and New Jersey, aHuntington Beach assemblyman in 1992tried to push through a state resolutionrecognizing his city as "Surf City Hunt-ington Beach." Waves of protest fromSanta Cruz helped entice a local repre-sentative to sink the resolution.

In 2004, the Huntington Beachbureau kicked off a "Surf City USA" pro-motion. That was the brainchild of DougTraub, the bureau's president, who envi-sions Huntington Beach as a tourist des-tination with Surf City USA events andgoods. His plan includes building a surfmuseum with a lighted 100-foot-tall glasssurfboard visible from miles away. Pass-

ing it, you'd get "a little flutter in yourheart and you'd say, 'Wow!'" Mr. Traubsays.

His first step was to file 12 trademarkapplications with the U.S. Patent andTrademark Office. So far HuntingtonBeach has been granted trademarksallowing it to advertise itself as "SurfCity USA" and to market scores of SurfCity USA branded goods and services,including clothing, volleyballs, bicycles,inflatable pools, handbags, software andconcerts. Pending applications coverSurf City manhole covers, parkingmeters and financial services.

In response, the then-mayor ofSanta Cruz parodied the "Surf City" songon local television, and challenged Hunt-ington Beach to a surf- off that woulddecide the rightful owner of the title. InAugust 2005, a Northern California statesenator submitted a state resolution tohave Santa Cruz designated "Surf CityUSA." Huntington Beach lobbied againstit, and the resolution died.

The Nolands fell into the froth whenBruce chose the words to print on a new

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Ginger Noland

San Jose

Los Angeles

San Francisco

Huntington Beach

San Diego

100 miles

100 km

CALIFORNIA

NEVADA

OREGON

Santa Cruz

T-shirt that reads, from top to bottom,"Surf City, Santa Cruz, California,USA." Mr. Noland says he didn't know atthe time that the Huntington Beachbureau had applied for a trademark,though he was aware of a "little fight."The shirts landed on shelves in August2005.

The Nolands had sold 319 of themwhen the legal notice arrived a yearlater, on Sept. 6. Ms. Noland told her sonto sell the remaining 85 shirts quickly.She then visited Santa Cruz's touristboard with her tale. On Sept. 22, theboard issued a news release detailingthe southern threat.

The next day, customers lined up infront of the store and by 11:45 a.m., theshirts were sold out. Mr. Noland rushedto order 1,800 more to sell before theHuntington Beach bureau's Sept. 29deadline; they sold out, too.

Ms. Noland, meanwhile, mulled aHuntington Beach settlement offer. Butthe legal lingo confused her, so shereturned a call from Ted Herhold, thelawyer offering free help. His firm,Townsend & Townsend & Crew, told hershe needn't settle. On Oct. 12, on behalfof the Nolands, the firm filed suit in theSan Francisco federal court.

The suit cites a 1927 newspaper arti-cle that refers to Santa Cruz as "SurfCity." The suit recounts how nephews ofQueen Kapiolani of Hawaii -- the unchal-lenged birthplace of surfing -- surfed theSan Lorenzo River on redwood boards in1885 and how the patron saint of surfing,Hawaii's Duke Kahanamoku, rode waveson Santa Cruz shores in 1912.

The Huntington Beach bureau fileda counterclaim declaring that "SantaCruz is a somewhat dated seaside townthat has no particular prominence insurfing culture." The claim asks thecourt to declare that the Nolandsinfringed Huntington Beach's trade-mark.

The two parties will try to resolvetheir differences with a court- appointedmediator on April 23. If a settlement isn'treached, the case will go to trial in Sep-tember next year.

Mr. Sybert, the Huntington Beachlawyer, says he believes the Nolands arepawns of a greater Santa Cruz effort tosqueeze publicity out of the case. Ms.Noland denies that and says she's gladshe decided to face down HuntingtonBeach. "I'm fighting the good fight foreveryone" in Santa Cruz, she says.

(See related letters: "Letters to theEditor: Uncool Beach Brawl" -- WSJApril 20, 2007)