There have been some interesting developments in the story of Café Roubaix and their troubles with bicycle corporate giant Specialized. As I stated a few days ago, the little bike shop in Alberta has been threatened with legal action from Specialized over the shop's use of the name "Roubaix" which Specialized apparently owns as intellectual property. The story has gone viral on the internet and social media, and shop owner Dan Richter has seen an outpouring of support from people across the continent while Specialized has seen a mighty backlash in bad publicity. The story has even been picked up on national broadcast news -- I heard Richter being interviewed on NPR on Tuesday.
Since the story originally broke in the Calgary Herald on Dec. 7, several things have happened.
On Dec. 9, according to Bikeretailer.com, Advanced Sports International (ASI) which owns the brand Fuji, claimed that it owns the worldwide rights to the name Roubaix, and that Specialized overstepped its bounds in trying to enforce a trademark on the name. According to ASI, they have been licensing the Roubaix name to Specialized since 2003. Apparently, Specialized did not have the right, under that agreement, to register the Roubaix name as a trademark in Canada. “We are in the process of notifying Specialized that they did not have the authority, as part of our license agreement, to stop Daniel Richter … from using the Roubaix name.”
Further, ASI stated, “While ASI does have the authority to object to Mr. Richter’s use of the name and while we at ASI understand the importance of protecting our bicycle model names, we believe that Mr. Richter did not intend for consumers to confuse his brick-and-mortar establishment or his wheel line with our Roubaix road bike. And we believe consumers are capable of distinguishing his bike shop and wheel line from our established bikes.”
Well, there's a position that seems to make some sense.
Then, on Dec. 10, the Calgary Herald reported that Richter received a call, not from Specialized's lawyers, but from Specialized president Mike Sinyard himself. "I had a great conversation with Mike Sinyard today, and I am happy to let everyone know that things will be working out fine," Richter wrote. "We thank you for your continued support. You have all been so very awesome to us!" After all the negative publicity, Specialized released a statement saying, "We are working hard with Mr. Richter to find a resolution we are both happy with to make this situation right. While we and Mr. Richter can’t yet share specifics, we both look forward to sharing an update soon.”
So it looks like the little shop will likely get to keep its name after all. Good news!
Nevertheless, it still troubles me that a big corporation like Specialized, or even ASI, or Trek for that matter, can copyright something like the name of a city or other geographic place, and expect to be able to enforce it. In other situations, they have trademarked common words, like "Epic" and again used their legal might to enforce their "rights." Where does it stop?
Specialized has a bit of a history with this sort of thing, it seems. Back in 2006, they sued a small Portland bicycle company, Mountain Cycle, for their use of the name "Stumptown" on their cyclocross bike. Too similar to Stumpjumper, they said. Never mind that there are a number of locations around the country known as Stumptown, including Portland (going back to the mid-1800s), where the name is used for a wide array of businesses. Mountain Cycle ended up going out of business. At least the name "Stumpjumper" is something relatively original that Specialized can claim to have created. But what was the likelihood that anyone would have confused the two names?
Then there was the case in 2011 where Specialized sued a small wheel-building business (also in Portland) called Epic Wheel Works. Being too small to fight, they changed their name -- but seriously -- how does anyone even get to trademark the word "Epic"? Look out Odysseus and all you other "Epic Heroes." And no more "epic" adventures for anyone who wants to push their limits, either. Ridiculous.
What's next? Can they trademark a person's name? Not that anyone's likely to trademark or copyright my name -- but what about something like "Retrogrouch"? I wouldn't deign to try to trademark it myself, considering that the term has been around for over 20 years and wasn't coined by me. But apparently, that is no legal impediment. Part of me thinks I should do it before someone else does (and then tries to sue me) but there's no way I could afford the legal expense to try to defend it. And apparently, THAT is the real standard -- it's not only who can file the trademark, but who has the legal budget to then defend it against court challenges. That seems to be the strategy Specialized is following.
I'm lucky that Brooks Saddles doesn't take this approach. I'd be in trouble using my own name, or using a little thumbnail picture of a Brooks saddle as my little Google/Blogspot icon.
Trademarking something original -- something you've actually created -- and something that isn't part of the common lexicon or common experience -- that makes sense. There's only one "Coke" or "Coca-Cola" and anyone trying to cash in using that name or something confusingly similar is obviously in violation of trademark law (unless Coca-Cola wants to start going after drug dealers for trademark infringement). That's what the legal profession calls a "strong" trademark. But the name of a city famous for its bicycle race? Or a common word like "Epic"? Heck, even the word "specialized" for that matter.
I'm glad this looks like it will work out for Café Roubaix -- and I'm not feeling too bad for Specialized for the public relations mess this created for them.