A Wisconsin judge recently granted Trek Winery's motion to dismiss a lawsuit filed by Trek Bicycle Corp.
-- When Andy and Liz Podshadley
trademarked their brand Trek Winery
in 2007, they were surprised to receive a letter from CBS Studios. The studios that control the long-lived and prosperous “Star Trek” franchise asked the Novato couple to find another name.
“We showed them our marketing materials and demonstrated that they had nothing to do with space travel or aliens,” Andy Podshadley
told Wines & Vines
recently. Rather, the name and image featuring a mountain crag were inspired by frequent wilderness expeditions the former Eagle Scout has led for local Boy and Girl Scout troops.
“We’re a backpacking, rock-climbing family,” he said. “I wanted a name to reflect the adventure of the wine experience.” CBS, perhaps recognizing the Podshadleys’ alliance with a useful and well-prepared demographic, backed down.
The Podshadleys continued to make, bottle and label 2,000-2,500 cases of wine annually at leased space in Novato’s Starry Night Winery
. They sold the wines in small local grocery chains and restaurants; some of their production went into custom-labeled bottlings for California wildlife associations and Novato school fundraisers (“School Fuel”).
Fast-forward to late 2008. The Podshadleys received a letter from Trek Bicycle Corp., the multi-national manufacturer based in Waterloo, Wisc. It, too, objected to the winery name. Given his successful experience with CBS, Podshadley asked the company to look at his materials; he was sure they’d relent.
Waterloo proved a tougher battle than Hollywood, however. As Podshadley recalled, the bike maker told the winemaker, “You can use the name IF you don’t print any T-shirts, hats or other memorabilia.” To a vintner with ambitions to open an urban winery/tasting room in downtown Novato, that restriction was a non-starter. He rejected the compromise.
One Monday shortly thereafter, Podshadley woke to e-mails and phone messages from “seven attorneys offering to work for us,” he recalled. Some of these were already embroiled in lawsuits involving Trek Bikes. Some even offered the winemaker a price break.
“This was the first I’ve heard about a lawsuit,” he told the lawyers. “You will when you get served,” he was warned. Sure enough, the next day he received “A 3-inch-thick lawsuit demanding all our profits, insisting that we unlabel all our wine and desist using our website,” Podshadley said, still indignant more than a year later. “I offered alternatives, but they weren’t having it,” he recalled.
The Podshadleys found an attorney with the San Francisco office of Steptoe & Johnson; coincidentally, he too was an Eagle Scout. Eventually, he passed the case along to the firm’s Washington, D.C., office, which was already dealing with the bicycle company. “They even flew out here and took my deposition for free,” Podshadley said. “William Pecau and Tom Pasternac were fantastic. They changed my view of attorneys. I’m going to be sending them wine for the rest of my life.”
Trek Bicycles had filed its suit with the U.S. District Court in Madison, Wis., near its home base, and an obvious inconvenience for the California winemaker. Trek Winery’s attorneys argued, however, that the winery had insufficient contacts with Wisconsin to meet the legal requirements for the district court to hear the case.
“I’d sent only three cases of wine to Wisconsin,” Podshadley said. “Two to my cousins. The other was a set-up. The wife of a Trek Bike employee had called us and ordered a case.” That was the basis of the Wisconsin suit. Last week, Judge Barbara Crabb granted the winery’s motion to dismiss for lack of jurisdiction.
“We went through six to eight months of serious stuff,” with the plaintiffs, Podshadley said, noting that, even with motivated attorneys, the suit cost him about $40,000 out of pocket. “We offered to negotiate, they would not do it.”
Although it’s conceivable that the manufacturer could re-file its case in Northern California, Podshadley is hoping it’s seen the error of its ways. “We got some publicity last fall from bicycle publications, and some readers called for a boycott of Trek Bikes.”
A spokesman for the bicycle maker told Bike Radar bikeradar.com, “We own the Trek trademark for Trek Travel that provides tours, in particular wine tasting tours, where this guy has his Trek Winery,” implying that the multi-national Goliath may not go down quietly.
Meanwhile, The Podshadleys are looking for investors for their proposed urban winery in downtown Novato in northern Marin County. They source their Cabernet Sauvignon, Cabernet Franc, Sangiovese, Syrah, Zinfandel, Chardonnay and Sauvignon Blanc grapes from grower Ray Teldelschi in Sonoma’s Dry Creek Valley. And Andy, part of the California wine industry for 19 years, with stints at Gloria Ferrer
, Clos du Bois
and Adobe Road
, has got a spot picked out and is actively pursuing his plans to build a winery and his brand. “We’ve got a great website all ready to go,” he said. “Thank god we did n’t put that site up a year and a half ago.”