In an escalating international legal battle over rights to a 47-year-old fictional character and his mule, Costa Rica’s leading gourmet coffee exporter says allegations against it amount to a hill of beans.
The poncho-draped, sombrero-shaded Juan Valdez ranks among nifty marketing characters the likes of the Energizer Bunny, Cap’N Crunch and Mr. Clean. The Colombian National Coffee-Growers’ Federation (FEDECAFÉ), which contracted a company to create Valdez in 1959, say he’s worth millions.
That’s why the organization representing 560,000 Colombian coffee growers filed a $1 million suit against Costa Rican coffee company Café Britt for selling T-shirts in alleged violation of the federation’s rights to the Valdez name and image.
The T-shirts, which were being sold at a kiosk in the Juan Santamaría International Airport outside San José, and a shop in Heredia, north of San José, say “Juan Valdez drinks Costa Rican Coffee” on the front, and have the Britt logo on the back. The shirts were pulled from the shelves when the federation first contacted Café Britt in January.
But FEDECAFÉ decided that wasn’t enough, and insisted that Britt sign a lengthy contract promising to respect the federation’s industrial property rights. Britt refused to sign the contract, prompting the federation to file the lawsuit against Britt in Heredia in June.
In the increasingly surreal case’s latest development, a $200,000 counter lawsuit against FEDECAFÉ presented in September, Café Britt cites as evidence a report that a Costa Rican man named Juan Valdez declared in an affidavit that he does, in fact, drink Costa Rican coffee.
The coffee controversy, which has brought media attention to both parties, was reheated this week when Ricardo Obregón, commercial marketing manager for the Colombian Coffee Promoter (PROCAFECOL), which manages the Juan Valdez coffee shops, spoke at the 20th annual International Coffee Week (SINTERCAFÉ) conference in San José (see separate story). In his speech, Obregón publicly announced his company is looking for local partners to sell its coffee in Costa Rica.
The would-be-competitor’s call for associates left Café Britt president Steve Aronson, who was sitting in the audience, with a bitter taste in his mouth.
“The Colombians are going to regret they ever messed with us,” he said. “This is hardball.”
Café Britt’s counter suit argues that “Juan Valdez drinks Costa Rican Coffee” – which has been the title of a Harvard doctoral thesis and the text of a bumper sticker – is a commonly used phrase in Costa Rica, something along the lines of “pura vida,” and thus isn’t subject to property rights.
“We’re going to fight for anyone to be able to use that phrase all over Costa Rica,” said Café Britt’s lawyer, Victor Hugo Mora.
Denise Garnier, the Colombian federation’s lawyer in Costa Rica, questions the phrase’s popularity.
“Years ago, I saw a car with a bumper sticker that had that phrase on it once. That doesn’t make it a common saying,” she said.
Alfaro Lizano, executive manager of the government’s Costa Rican Coffee Institute (ICAFE), said the phrase doesn’t hold the status of a commonly used slogan in Costa Rica.
“It’s a joke within the industry, but not in the general population,” he said.
As to whether Costa Rican coffee is better than Colombian coffee, he said “the best coffee is the coffee that you like,” adding that coffee from different countries are often put together in blends.
Walking out of Mara’s café in downtown San José, customer Bernal Rodríguez said there’s no comparison between the Valdez phrase and “pura vida.”
“I’ve heard it, but nobody really uses it,” he said.
Others, such as SINTERCAFÉ clerk Ericka Brenes, say the saying is heard commonly in Costa Rican culture.
“I’ve always heard that, ever since I was little,” she said.
Britt’s lawyer Mora says the company will be submitting witnesses like Brenes who have been using the phrase for years.
Sitting at a table in the luxurious lobby of the Hotel Real Intercontinental in Escazú, where the conference took place this week, Aronson whipped out his cellular phone and pulled up a digital photo on the screen.
He had snapped a shot of a bumper sticker with the disputed slogan on a counter at an area coffee shop – more evidence that the slogan has pervaded Costa Rican culture, he said.
FEDECAFÉ’s allegations “have just become this ridiculous thing,” said the sprightly founder of Café Britt, a company that also sells coffee liqueur, espresso beans, nuts and souvenirs, and runs the popular Coffee Tour.
Aronson calls Costa Rica “the Bordeaux of coffee.”
“Juan Valdez is an expert cafetero, so it makes sense … that he would drink Costa Rican coffee,” he said with his tongue-incheek sense of humor in his Danny DeVitoesque New York accent.
Though Juan Valdez wasn’t available for an interview, he told The Tico Times in an email from FEDECAFÉ yesterday, “I’ve heard that Costa Rica produces a good coffee; but I’ve never been to Costa Rica and I’ve never had a cup of Costa Rican coffee.
“Because I was born in the Colombian coffee plantations, I drink Colombian coffee. I drink Colombian coffee because I’m proud to be Colombian, to be Juan Valdez and to promote Colombian coffee as the best coffee in the world,” the statement said.
Juan Valdez was born the offspring of a U.S. marketing group that FEDECAFÉ contracted in 1959 to come up with a promotional strategy for the Colombian coffee industry, which was struggling because of a world coffee price crisis in the 1950s. In June, FEDECAFÉ introduced the third actor to play Valdez, who has traveled throughout the United States, Europe and Asia with his mule in tow.
The name of “the ambassador of Colombian coffee,” which is trademarked in 120 countries, has been trademarked in Costa Rica since 1964, according to Garnier. The federation has applied to have the logo of Valdez
and his mule with a mountain in the background trademarked in Costa Rica as well.
Both the name and a logo similar to the Juan Valdez logo – only in the Britt version, Valdez and his mule are both sipping cups of joe – appear on the shirts that Café Britt distributed. Below the slogan it reads “100% Costa Rican Coffee,” which the suit alleges is a rip off of the “100% Colombian Coffee” slogan the federation uses to advertise its coffee.
Britt says it wasn’t using the logo or name to sell its coffee.
“They are attacking that we’re using Juan Valdez to fool the consumer … We don’t need Juan Valdez to sell our coffee,”Aronson said.
Britt and the Colombian Federation are also accusing each other of defamation, surrounding comments the federation made to the press leading up to the lawsuit.
In its counter suit, Britt is also accusing FEDECAFÉ of packaging coffee with packages “highly similar” to those used by Café Britt and that the federation has used the phrase “from the tree to your cup,” for advertising purposes, which is similar to the Café Britt slogan “from the plantation to your cup.”
Luis Fernando Samter, intellectual property expert for the federation, said he knows of no such packages, and says there is no comparison between using the Valdez name and a slogan similar to the Britt slogan.
“We’re talking about a notorious brand at the international level,” he said. “There has never been such a push in any Third World country to achieve the international recognition that the Juan Valdez name has achieved.”