Of Honey and Vinegar.

Riding bicycles happens to be a very important hobby of mine, and there are times when it overlaps with my professional interests.? In the world of cycling, there is a very large bicycle manufacturer known as Specialized?.? Specialized was started in this country only a few decades ago, as the vision of one man who was literally working out of his van.? It is the prototypical American success story.? And yet as Specialized has grown, in some ways it has lost sight of the entrepreneurial start that it had.

Over the years, Specialized has attracted some bad press in the bike world by engaging in what some would call heavy-handed efforts to protect its intellectual property.? Specialized makes a bicycle model called the Epic?, and has vigorously pursued just about any company that makes a bike-related item that has Epic in or near the title.? They successfully forced the name change of a one-person wheel-building shop known as Epic Wheel Works (changed to Sugar Wheel Works?).? They also forced the name change of a one-person bike gear company known as Epic Bags (changed to Relevate Designs?).? A Portland, Oregon bike shop that started marketing a bike known as the Stumptown (Stumptown being a nickname for Portland) was threatened with a lawsuit as Specialized made a bicycle known as the Stumpjumper.? There are other stories as well—and what they collectively show is a very large corporate brand (Specialized) engaging in aggressive legal activity directed at much smaller companies, and often at sole proprietorships.??

In a world of social media and increasing interconnectedness, each time Specialized reached out to threaten a lawsuit against an entrepreneur, there was just a little more public backlash.? That backlash about a decade ago, when Specialized went after a Canadian bike shop known as Café Roubaix?.? One of the most famous bike races in the world is known as the Paris-Roubaix—an incredibly punishing race between those two towns, much of which is run on cobbled streets that brutalize the participants.? A few years ago, a Canadian soldier returning home from service in Afghanistan, who had left the service as a result of a service-related disability, came home and decided to open a bike shop.? Ever a fan of the Paris-Roubaix, he named his bike shop Café Roubaix.? That’s where the trouble started.

You see, Specialized makes a bike called the Roubaix.? You can see where this is headed.

Specialized engaged in their usual course of conduct.? They became aware of Café Roubaix, and started sending threatening letters that suggested that Café Roubaix needed to immediately close and rebrand, or the full force of a half-billion dollar a year corporate giant would come crashing down upon them.? The owner of Café Roubaix realized that he could never take on the legal fight that Specialized was proposing.? The letter from Specialized’s attorneys spoke in legalease and had the very professional sounding threats that we, as attorneys, are often immune to.? To the owner of the bike shop, the threats were not another day at the office—they threatened his existence.? And thus, he turned to the most powerful weapon he had available: Facebook.

The owner of the shop went to the web and started talking about what Specialized was doing to him.? Within hours, the story had spread across the internet, and people who had never heard of Café Roubaix before were buying t-shirts and crowd-funding a legal defense fund.? Editorials sprung up about how ham-handed Specialized’s approach to intellectual property was.? Perhaps most amusingly, another bike company (Fuji?) pointed out that they had made a bike called the Roubaix before Specialized had.? (As it rather humorously turns out, Fuji licensed use of the Roubaix name to Specialized--it wasn't even Specialized's own idea).? The result of Specialized’s overzealous efforts was a public relations train wreck.? A shocking number of people publicly stated that they would never again buy a Specialized bike because of the actions of the company’s lawyers.? Specialized may have been protecting their intellectual property, but they were ensuring that they would have a good IP claim to products that would stop selling.

Out of this crisis, the Founder and President of Specialized was forced to get on a plane and fly to Canada to talk to Café Roubaix directly.? On a video that was widely circulated in the aftermath, the Specialized President apologized for the dispute and the poor treatment that Café Roubaix received, and pledged to change the company’s approach to the issues.? The video ended with an awkward hug between the companies’ respective representatives.? The Specialized cease and desist letter: 1) did not accomplish their goal of protecting intellectual property; 2) gave great publicity to a company that they were trying to force into changing its name; 3) made Specialized look terrible; and, 4) potentially hurt their sales. The backlash was pretty extensively covered in the bike world, including articles from a variety of publishers (including this one, this one and this one).

There has been a fair amount of ink spilled on this topic, including a good explainer on the trademark considerations that companies should have when considering intellectual property enforcement activity. But the implications go beyond just considering intellectual property.

This debacle rings in the back of my head as I write letters from time to time.? I will be zealously representing a client, facing off against someone who has engaged in some clearly defined wrong, and the words of my letter will be excoriating.? As my fingers tap out venom into the keyboard, I think of Specialized, and my sense of self-preservation kicks in.? I tone down the letter, or perhaps pick up the phone, and I deliver the message in a different and probably more effective way.? We all work in a world that requires us to have the confidence that we are correct—and thus, the belief that those we oppose are incorrect.? This confidence can inspire us to be aggressive in a fashion that those outside the legal world are not accustomed to.? It can lead us to our very own Café Roubaix debacles.

To contrast with that story, we begin our discussion of bourbon—ahem—whiskey.? Many are familiar with Jack Daniels Whiskey?, the very widely circulated Tennessee whiskey.? The Jack Daniels brand is owned by Jack Daniels Properties, Inc. (JDPI), which is responsible for the iconic design of the bottle and label.? It seems that back in 2012, an author published a book called “Broken Piano for President”, and the cover design almost exactly mimicked the Jack Daniels label.? JDPI became aware of the issue and reached out to the author to discuss the issue.? Rather than sending a burning cease and desist letter, their approach was quite different.

You see, Jack Daniels' attorney was representing a part of a nearly four billion dollar per year company and was engaging a single author with a book in limited circulation.? There was a huge, unilateral power advantage in her favor.? Nonetheless, she had an incredibly deft touch.? She noted that the company was flattered by the comparison, but had a reasonable obligation to protect its branding.? Rather than asking that all copies of the book be pulled from circulation, she asked that the cover be redesigned with any future reprinting, and even offered to contribute towards the cost of a cover redesign.?

"We are certainly flattered by your affection for the brand, but while we appreciate the pop culture appeal of Jack Daniel's we also have to be diligent to ensure that Jack Daniel's trademarks are used correctly..."

The result of this evenhanded, non-threatening letter?? 1) Jack Daniel's intellectual property was protected; 2) they received favorable coverage in the media; and, 3) they potentially improved their sales. At the time, a number of mainstream media sources picked up the story and gave kudos to Jack Daniels for their kindness and thoughtfulness. Those publications included Forbes and The Atlantic, among others.

There’s a lesson here for all of us.? Even when we’re right—even when we’re clearly right and our opposition is clearly wrong, and we’re getting frustrated because why can’t they just see that they’re wrong…even then, very rarely will open hostility accomplish our objectives.?

But there is a much better reason to consider civility in your business discussions: it works.? Perhaps a better way of saying that would be as follows: it works, and even if it doesn’t work, you don’t come off looking like a bully.? When you next find yourself in a position of advantage, don’t abuse it.? Consider that your interests are not always best served by aggressive hostility—but may be best served by a deft touch and a small gesture of kindness.? Take a breath, consider your options, and see if a more considerate approach will work to accomplish your objectives.