The Explainer: Living by Annika’s Rule

“It’s my responsibility and I accept that.”
Specialized CEO Mike Sinyard

Yup, that’s right. After days of near complete radio silence from Morgan Hill, the chief bigwig at Specialized personally traveled to Cochrane, Alberta, and put in an order for a healthy dose of crow at the Café Roubaix.

I, for one, say good on ‘im for that.

In a video posted on the shop’s Facebook Page (which as of this morning has 14,593 “likes,” by the way) Sinyard did about the only thing he could have in light of the complete PR meltdown his company suffered after news of Specialized’s heavy-handed approach to the small shop’s use of the “Roubaix” name, a trademark (which, as it turns out, Specialized doesn’t actually own, but uses with the permission of Fuji’s parent company, but I digress).

At this point, this is no longer a story about intellectual property and trademark law. It’s a story about public relations, knowing when and how to use the “big club” and how, in this modern media environment, the big guy is almost always at a huge disadvantage in bar fight.

Take some time to watch the video. It’s interesting for a lot of reasons, not least of which is that Sinyard kinda looks like he’s starring in one of those forced confessional videos the North Koreans stage before releasing – or executing – a prisoner.

The dynamic is clear. Sinyard is obviously tense and uncomfortable. He’s lost the fight (one he may not have even known he was in until it was too late) and he’s doing his best to retrieve even a shred of goodwill. In contrast, Café Roubaix owner Dan Richter, looks completely at ease. He should. He’s just played the role of David to Sinyard’s Goliath … and we all know how that one turned out.

There’s already been plenty of talk about the social media firestorm that a small news item in the Calgary Herald under the headline “War veteran forced to change bike shop’s name after threat from U.S bike giant Specialized.” Twenty-five years ago, that would have been it. The story would popped up in the Saturday paper. It would have pissed off a few cyclists in and around Calgary. Maybe someone, somewhere along the way someone would have faxed a clipping to a buddy in the U.S. and it would have slowly made its way around cycling circles and been fodder for a bit of back-and-forth on a club ride or two.

Not today. That story got posted last Saturday morning. By Saturday evening it was being Tweeted, Facebooked, blogged and otherwise distributed around that global neural network known as the InterTubes. Hell, it even woke me up enough to write an Explainer Column for the first time in months. I would bet that by Monday, anyone with a love of bikes and web access knew what a @#$%ing bully Specialized was. And therein lies the rub. Specialized, or more specifically its lawyers, are operating as if this were still the 20th (or maybe 19th) century.

“We take care of all of our trademarks, because we do have a lot of – you know – fake product out there on the market; actually it’s huge,” Sinyard explained to Richter. “So we always have our outside attorneys just monitoring things and when it goes, they just go off.”

Sinyard quickly added that he wasn’t blaming the “outside attorneys” because he correctly recognized that “it’s my responsibility.”

As part of that responsibility one would hope that the company’s entire approach to trademarking and trademark enforcement be put under internal review. It probably ain’t such a good idea to allow your attorneys to “just go off.”  To continue in that pattern would be a disaster for the company.

Goodwill ain’t cheap
Part of the fall-out from the Café Roubaix debacle is that all of the company’s past and current sins were dredged up for public discussion as well. The whole saga of Specialized v. Volagi, et. al., was brought up, probably right around the time that controversy from a couple of years ago was finally being forgotten by cycling’s cognoscenti. Other examples of Specialized’s strongarm treatment of small companies found their way into news stories about the Café Roubaix fight, including attempts to keep Portland’s Mountain Cycles from using the name “Stumptown” (despite that being a common nickname for Portland and not an allusion to the Stumps that Specialized jumps) and an effort to force Epic Wheel Works from using the word “Epic” in its brand name.

Okay, let’s just ignore the arrogance of a company that trademarks words like “Roubaix,” “stump” and “epic” and go straight to Specialized’s position that it must “vigorously defend” its trademarks or risk losing them. I don’t necessarily buy that argument, but if it is the case it’s become readily apparent that using the big stick ain’t always the right approach.

Assuming that Specialized’s “outside attorneys” were legally correct in “just go(ing) off,” they sure-as-shit weren’t right, even when it came to their own client, Specialized. Think about how expensive it is for a company to generate interest and support among its customer base. That corporate “good will” is often one of a company’s most valuable assets. To generate that, a company has to spend millions on feel-good advertising and, in the case of a big bike manufacturer, sponsorship of teams, clubs and races. Think for a moment how many “I am Specialized” ads and how many pictures of a victorious Tom Boonen or other racer crossing the line on a Specialized it will take to offset the shit storm of this past weekend.

Basically, I am suggesting that when Specialized is in the market for “outside attorneys,” they look for someone with a bit of public relations experience as well. Failing that, at least hire someone who can think before they leap: “Sure, we can beat the livin’ shit out of this little guy, but it may not look so good if the video is then played on CNN, eh?”

Time to forgive … but not to forget
Personally, I think it’s time to cut Specialized a bit of a break here. To his credit, Mike Sinyard took the big step and personally visited and apologized to Dan Richter. I applaud him for that. I hope the decision has a ripple effect and causes the company to rethink its approach to other matters.

Toward that end, I offer something of a gift to Sinyard and to the staff and outside attorneys in his employ. To understand that gift, I think I need to offer a bit of background.

Just a few years ago, when I was in law school, my daughter, Annika, made a habit of producing covers for my course and exam outlines for every class I took over those three years. I have 34 of them and they are among my most treasured possessions. Annika was 10 when I graduated and she did her final drawings for the three elements of the bar exam, including something known as the “MPRE,” the Multi-state Professional Responsibility Exam. That’s the ethics test that you have to take in order to become licensed as an attorney. Now, ethics/lawyer jokes aside, I was especially touched by the beauty and elegance of what has since become known as “Annika’s Rule.”

Within the confines of a single sheet of paper – or more accurately, the lower left-hand corner of that page - Annika managed to sum up all of the ethics courses I took as a journalist, as a Senate staffer, as a law student and as a lawyer. It’s short, simple and to the point. It applies to law, business, parenting and life in general. It’s easy for anyone to comprehend and it’s a simple reminder that before you make a big decision you should ask yourself one question: “Would this violate Annika’s Rule?”

If so, don’t do it.

No, I don’t always succeed, but “Annika’s Rule” is prominently displayed in my office and I really do try to live by it.

Mike Sinyard, you made huge strides this week and I truly applaud your decision to visit Mr. Richter and to make amends. I hope it sets a pattern for the future of the company.

So, as a gesture of good will, Annika and I offer to you, Mike Sinyard and the rest of the crew at Specialized and all of your outside attorneys, full North American rights (including Canada, of course) to use the copyrighted image, the copyrighted text and our soon-to-be-trademarked moniker, “Annika’s Rule:”

Good luck. I think Annika would appreciate the gesture you made this week, Mike.

Now, keep it up.

_______________________________________________________________________

The Explainer is supposed to be a weekly feature on Red Kite Prayer (Pelkey gets sidetracked now and then).

If you have a question related to the sport of cycling, doping or the legal issues faced by cyclists of all stripes, feel free to send it directly to The Explainer at Charles@Pelkey.com. PLEASE NOTE: Understand that reading the information contained here does not mean you have established an attorney-client relationship with attorney Charles Pelkey. Readers of this column should not act upon any information contained therein without first seeking the advice of qualified legal counsel licensed to practice in your jurisdiction.

The Explainer: Because I @#$%ing hate bullies

I was once asked, by a curious high school student, why I went to law school.

Maybe my response wasn’t exactly appropriate, but my answer remains the same: “Because I @#$%ing hate bullies.”

Well, maybe that’s the answer to why — after so many months off — I am resurrecting “The Explainer.”

By now many of you have seen the story making its way around cycling-related social media about the Afghanistan war veteran in Cochrane, Alberta, who opened up a small bike shop over an ice cream parlor and his ensuing encounter with a @#$%ing bully.

If you haven’t read about Dan Richter and the Café Roubaix Bicycle Studio, do me a quick favor before you do. Without clicking on this link, answer the following very easy question:

What do you, oh velo-centric bike geeks among us, think of when you hear the word “Roubaix?”

I have to admit that my thoughts don’t automatically turn to the commune located in the Nord department of France between Lille and Tourconig. I don’t even think of the famous velodrome there in that little industrial town. No, the first thing that springs to mind for me is pavé, mud, brutal conditions and that great, great quote from Theo de Rooy after he dropped out of the 1985 edition of Paris-Roubaix:

“It’s bollocks, this race! You’re working like an animal; you don’t have time to piss; you wet your pants. You’re riding in mud like this; you’re slipping. It’s a piece of shit …” said de Rooy, quickly adding that he fully expected to do it again because “it’s the most beautiful race in the world.”

And that is what springs to my mind when I think of “Roubaix;” the most beautiful race in the world. It’s probably what came to Dan Richter’s mind when he decided to name his little bike shop after that iconic annual event.

What doesn’t come to my mind — and what probably didn’t come to Richter’s mind — is an admittedly nicely designed bicycle by that Morgan Hill, California, mega-corporation, otherwise known as “Specialized.”

Richter was notified earlier this year by “Specialized Canada” that his bike shop’s name infringes on Specialized’s Canadian trademark of the name “Roubaix.” Yup. Specialized’s engineers made a nice bike and after they did, the douchebags™ in the legal department went ahead and registered the name of that French city as their own. They couldn’t do it in the U.S., but they’re aggressively “protecting” the name up there in the Great White North.

You see, the brilliant legal minds at Specialized are asserting that Richter’s bike shop (which does not happen to carry Specialized product, by the way) would cause brand “confusion” among consumers and that’s why they had to take aggressive steps to “protect” their trademark.

Yup, they’re essentially claiming that a guy out for a walk in Cochrane, Alberta, will see the sign for the “Café Roubaix Bicycle Studio,” and immediately jump to the conclusion that it must be a part of the Specialized empire.

Richter has been correctly advised by his attorney that his is a battle he can win. Unfortunately, he is now poised to surrender to the corporate bully because, while they can afford a protracted legal battle, he can’t spring for the estimated $150,000 that it would cost him to fight the good fight.

Specialized is using the old “defend it or lose it” argument, saying that it must assert its “rights” to “their” trademark of Roubaix or risk losing it.

It’s a weak argument and one that I, quite uncomfortably, had to try and make myself many years ago (more on that later). It’s basically an argument that can be summed up as — and forgive me for using another technical legal term here — ”bullshit.”

Trademark owners are not required to object to each and every use of a name. What they are required to do is to work to avoid confusion. In other words, Specialized might appropriately object to a bicycle carrying the moniker “Roubaix,” since they have trademarked the name of their model, but that authority doesn’t extend to virtually every use of the name … even when it’s related to cycling. Frankly, even that might be a stretch. Specialized sure as heck isn’t the only bike manufacturer which tried to convey a message about ruggedness by embracing the Roubaix name for its product.

In bike racing circles, “Roubaix” is about as close to being a generic term for “brutally tough,” as you can get.

Trademark Bullies 
Even the U.S. Patent and Trademark Office appears to be annoyed at this sort of behavior. In its 2011 report to the Joint Judiciary Committee of Congress on the subject, the agency defines “trademark bullying” as “The extent to which small businesses may be harmed by litigation tactics, the purpose of which is to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner.”

Keep that word “reasonable” in mind. It pops up all over the legal profession (yeah, yeah, I know). It’s actually a pretty simple standard. Would a “reasonable” person make an error like the trademark holder is asserting would be the case? Honestly, a “reasonable” person probably doesn’t think of Specialized when someone utters the word “Roubaix.”

In its report, the Patent and Trademark Office notes that many trademark owners “… mistakenly believe that to preserve the strength of their mark they must object to every third-party use of the same or similar mark, no matter whether such uses may be fair uses or otherwise non-infringing. They may lose sight of the fact that the effectiveness of enforcement is not measured by how frequently they enforce, but rather by the effect that taking or failing to take action has in the marketplace. ‘The real question is public perception of plaintiff’s mark, not a battle count of how often it has sued others.’”

Perception and the effect on the marketplace
Keep in mind that the quality of a brand comes down to perception. So basically, it’s a question of public relations and marketing. The problem is that companies tend to forget that lawyers – even when they’re technically correct – aren’t always right. They are known as “counselors” for a reason. Their advice should be considered as counsel, but not as the final word. There are other factors to consider when making a decision to go after a little guy.

The beauty is that a small business, while unable to mount a full-on legal fight, can take the issue to the court of public opinion. On that front, Specialized doesn’t stand a chance.

I know of what I speak.

Back in 1994, I left a fairly lucrative job as a press secretary in the leadership of U.S. Senate. It was a good gig and, in my mind, there was only one job that could be considered to be better. That job, too, came along when I was offered a chance to work at a nationally distributed cycling magazine with the likes of John Wilcockson, Graham Watson and Maynard Hershon. These were the guys whose work I’d followed religiously when I was a bike racer. Now I was allowed to join them at VeloNews. Suddenly, I had the chance to stop being a guy in a suit and maybe even be a guy covering things like the Tour de France. Obviously,  I jumped at it.

Unfortunately, because “press secretary” meant “PR specialist” to my boss, one of the first assignments I got at VeloNews was to try to deal with the public relations fallout from the magazine’s “cease and desist” letter sent to a small web-based cycling news service, known as “VeloNet.” Arguably, the lawyers were legally correct. The name “VeloNet” could have been easily confused for “VeloNews.” That doesn’t mean they were right. At the time, the site was just a small, volunteer-based effort and we probably would have been better off letting it go.

Despite the fact that were big enough to fire legal salvos across the little guy’s bow, we discovered we were at a distinct disadvantage. Instead of responding to the lawyerly prose of the C&D letter as we had expected, the wise folks at VeloNet simply went ahead and posted the damn thing. We looked like assholes. The response was fast, furious … and appropriate. We were quickly forced to backpedal, but the damage had been done. It took years to overcome the ill-will that move generated … if ever.

Meanwhile, the good folks at was once called VeloNet went ahead and changed the name anyway … to “CyclingNews.” (Yeah, they kicked our collective asses on that front, too.)

So where to fight?
Like Mr. Richter’s attorney said, this is probably a fight he could win in the courts. Unfortunately, that costs money, so he’s forced to surrender the legal battle.

Frankly, I think it’s time to take the fight to another battlefield.

Let’s start by visiting Mr. Richter’s online store at www.caferoubaix.ca and buying something!!! Actually buy a lot.

Then, for the time being, the next time you are in the market for a nicely built road bike, start by looking somewhere other than Specialized. There are plenty of good bikes out there on the market, many of which compare favorably to the Specialized Roubaix. Take, for example, the Fuji (wait for it) “Roubaix,” a label affixed to their downtube a dozen years before the Men from Morgan Hill declared Roubaix was theirs. Nonetheless, the Specialized Roubaix is a bike I enjoyed riding and would probably have enjoyed owning as well … but not for now. Why? Because I @#$%ing hate bullies. Until Specialized Canada stops listening only to its lawyers and stops being a @#$%ing bully, I’ll shop elsewhere.

Besides, if they continue this behavior and you do end up buying a Specialized, the first thing that will come to people’s minds when they see that red slash “S” logo is that it stands for “Shameless asshole.” Beware of using the term, though. I do believe that my good friend Patrick O’Grady already has that one trademarked.

Post Script: The above is apparently not the only example.

The Explainer is supposed to be a weekly feature on Red Kite Prayer (Pelkey gets sidetracked now and then).

If you have a question related to the sport of cycling, doping or the legal issues faced by cyclists of all stripes, feel free to send it directly to The Explainer at Charles@Pelkey.com. PLEASE NOTE: Understand that reading the information contained here does not mean you have established an attorney-client relationship with attorney Charles Pelkey. Readers of this column should not act upon any information contained therein without first seeking the advice of qualified legal counsel licensed to practice in your jurisdiction.

The Explainer: “Awareness” in other shapes and colors.

Yup, it’s me and I’m kinda sorta back to doing the Explainer column, after having dropped off the map while I was doing Live Updates and such. This week’s is not a normal Explainer column, though. That will be back on Saturday and I will happily field questions related to cycling, legal issues related to cycling or anything that catches my eye. (Please send your questions to Charles@Pelkey.com and I will try to answer as many as I can and include one or more in the next column)

But for now, you’ll have to bear with me and let me rant about one particular subject. I just needed to get something off my chest, so to speak.

More than just a parade of pink
Okay, it’s National Breast Cancer Awareness Month. For the most part, we are all quite aware … with one lone exception. In an effort to increase “awareness” this annual parade of pink ribbons generates a host of news stories about breast cancer, early detection etc. More often than not, those stories include the phrase “women with breast cancer.”

Ninety-nine percent of the time that is an accurate statement. There were approximately 180,000 women diagnosed with breast cancer in the U.S. in 2011. That year, there were 1800 MEN diagnosed as well.

I know.

I was one of them.

Obviously, we men are far less likely to get breast cancer than women. It’s logical to refer to it as a “women’s disease,” but it is not that exclusively. We are mammals. We all have “breast” tissue, including ducts, nipples etc. In men it’s generally useless tissue – tits on a boar, if you will – but it can be subject to the same cancers suffered by women, albeit far less frequently.

According to a study presented earlier this year at the American Society of Breast Surgeons conference, when men are diagnosed with breast cancer, it is often deadlier. That’s largely because men (and even their health care providers) tend to ignore those early symptoms that trigger alarm bells when it comes to female patients.

Because of that lack of “awareness,” men tend to be diagnosed later than women (even though our tumors are actually detectable at an earlier stage) and as a result have larger tumors, are more likely to have had the cancer spread and live, on average, two fewer years than women who are diagnosed.

I was lucky. I found an aggressive 2.3cm, grade 3 tumor when it was just at Stage 2b. A failed lumpectomy, a bilateral mastectomy and five months of chemo later, I’m as good as new (albeit sans nipples).

We caught that sucker in time. Other men, like my late uncle weren’t quite as lucky. Many ignore indicators, thinking that a bump is merely a cyst. Worse still is when medical professionals tell them it’s nothing to worry about. Get a second opinion.

I’m not asking you to donate money. I am not begging you to participate in a walkathon or a 5k. You don’t have to wear a ribbon, a pin or a wristband. Nope, I am not asking you to do any of that. Instead, let’s truly honor National Breast Cancer Awareness Month simply by becoming aware.

Be aware that now and then, in those rare cases, this also happens to men.

Don’t panic if you find a lump, but please, please, please don’t ignore it by thinking that breast cancer is only something that affects women.

Just be aware.

The Explainer is a weekly feature on Red Kite Prayer. If you have a question related to the sport of cycling, doping or the legal issues faced by cyclists of all stripes, feel free to send it directly to The Explainer at Charles@Pelkey.com. PLEASE NOTE: Understand that reading the information contained here does not mean you have established an attorney-client relationship with attorney Charles Pelkey. Readers of this column should not act upon any information contained therein without first seeking the advice of qualified legal counsel licensed to practice in your jurisdiction.

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