SpeedPlay Inc. vs. Toronto Cycles Productions Inc.

POST DATE: February 06, 2018
 A Demand letter SpeedPlay has served to it's own customers

We represent Speedplay, Inc. (“Speedplay”) with regard to its intellectual property matters.

I have reviewed various postings on the Internet which you have made, including (They name this WW post as well as eBay auctions here)

It appears that you are offering products for sale or actually selling products that infringe upon one or more of Speedplay's intellectual property or other legal rights, including, but not limited to, "(My ebay auctions listed individually here)"

It is clear that despite referring to Speedplay as "(Brand X - lollipop shaped pedals)" in your offerings, you are selling and offering to sell a material component part of one or more inventions patented by Speedplay--namely, its patented Speedplay bicycle pedals, covered by at least U.S. Patent Nos. 7,174,807, 6,494,117, and 5,546,829. These cleat/pedal systems cannot be made without the material component of the part you are selling, i.e., the uniquely shaped bowties, spindles, and bowtie bolts, that work together with the rest of the cleat/pedal systems. These parts fit into the pedal and become a complete, unique Speedplay pedal. That unique pedal is then used with the unique Speedplay cleat system. Moreover, the parts cannot be used with any other brand of pedal parts and the pedals cannot be used with any other brand of cleat systems. Finally, there is no substantial non-infringing use of the product you are selling and offering for sale. This violates 35 U.S.C. Section 271(c).

In addition, one of your customers could buy this component part from you and, buying component parts from others, essentially build and sell a patented Speedplay product. This violates 35 U.S.C. Section 271(b).

In addition, a customer's replacement and use of your non-conforming "after-market" parts would void the Speedplay warranty on its pedal system and your failure to advertise that fact causes your advertisement of your parts to be misleading in violation of numerous state and federal statutes.

Finally, we do not believe the evidence would show that you have sufficiently tested or constructed the replacement parts for safety and reliability such that consumers using the products would be safe. Customers using such replacement parts on their bicycles might assume they would be as safe as using OEM parts on a Speedplay pedal system and we do not believe this to be true. We have examined your parts and find that the screws that you sell (and perhaps manufacture) do not meet either manufacturing or safety requirements specified by Speedplay. You do not explain this deficiency or difference in your advertising of your product.

As a result, we believe your advertising not only to be misleading, but to be in violation of numerous state and federal consumer safety laws. Customers who were to purchase and use your replacement parts in Speedplay pedals, and then have their pedals damaged or worse, be injured, may make claims against or sue Speedplay, which would necessitate Speedplay defending those claims and seeking indemnity from you including its attorneys' fees and costs.

We demand that you immediately cease and desist from selling, offering for sale, or advertising your after-market products on the Internet or otherwise in any manner that violates Speedplay's trademark, patent, and other intellectual property rights, as well as statutory and common law rights, including consumer rights to safety and protection. We also insist that you take down from eBay or any other Web sites all references to Speedplay or its products as currently referenced. If you fail to do so, Speedplay will seek all appropriate remedies available to it under the appropriate federal and state statutes and common law. Regardless of whether you choose to cease and desist in your present conduct, we also demand that you now preserve and maintain all copies of any paper or electronic records or documents relating to this dispute, including e-mails, letters, communications, memoranda, and Web sites and eBay pages and caches, including all metadata, that relate to or concern any manufacture, distribution, licensing, advertising, marketing, attempted sale, or sale of any titanium, aluminum, steel, or other replacement or "after-market" part for any Speedplay product (or any other purported substitute for a Speedplay product in whole), including communications you or your company (if any) have had with any manufacturer, distributer, wholesaler, or seller of titanium, aluminum, steel, or any other replacement or "after-market" party for any Speedplay or "Speedplay-type" product (or any other purported substitute for a Speedplay product in whole) since August 1, 2009.

This letter is not intended to be, and should not be construed as, a complete statement of the facts or of our rights and remedies, all of which are expressly reserved.

(Speedplay lawyer info and signature) 

POST DATE: February 06, 2018
The February 06, 2018 demand letter
We are legal counsel to Speedplay, Inc. (“Speedplay”) and are writing further to your January 2011 exchange with our client’s U.S. counsel. Speedplay is the owner of numerous trademark registrations for SPEEDPLAY around the world, including, without limitation, SPEEDPLAY, Canadian Registration No. TMA976173, SPEEDPLAY, U.S. Registration No. 2039206, SPEEDPLAY, German Registration No. 2903885, SPEEDPLAY, Japan Registration No. 2648687, SPEEDPLAY, CTM Registration No. 3109832, SPEEDPLAY, Australia Registration No. 1,032,669, SPEEDPLAY, China Registration No. 6959826, SPEEDPLAY, Taiwan Registration No. 1357968, SPEEDPLAY, Korea Registration No. 40-840779 and SPEEDPLAY, Hong Kong Registration No. 303276874 (the “SPEEDPLAY Trademarks”).
Speedplay has invested significantly in the development and protection of the SPEEDPLAY Trademarks. Our client considers the SPEEDPLAY Trademarks to be of material importance to its business, and actively takes steps to enforce its rights. As a result of extensive use and publicity, the SPEEDPLAY Trademarks have become well known and have attracted considerable reputation and goodwill.
   Furthermore, and as previously communicated, Speedplay is the owner of at least U.S. Patent Nos. 7,174,807 and 6,494,117 (the “SPEEDPLAY Patents”), which cover Speedplay Zero bicycle pedals and/or parts. Furthermore, our client is the owner of numerous patents worldwide for its pedals and/or parts, including, without limitation, in China, European Union, Taiwan and Japan.
Please note that the SPEEDPLAY Trademarks provide our client with the exclusive right to use the trademarks in connection with the goods identified in the registrations. 
    Our client’s exclusive rights are deemed infringed where an unauthorized person sells, distributes or advertises goods or services in association with a confusing trademark or trade name. Furthermore, our client may enforce its trademark rights in circumstances when a third party has directed public attention to its goods, services or business in such a way as to be likely to cause confusion.

Page 2
In addition, the SPEEDPLAY Patents give Speedplay the exclusive right, privilege and liberty of making, using, selling and importing in the relevant countries, including the U.S., its unique pedal/cleat assemblies. In this regard, Speedplay’s patent rights furthermore enable it to exclude others from selling any parts or components that when incorporated into a pedal/cleat assembly would result in infringement of the SPEEDPLAY Patents.
   Our client has learned that your website located at www.torontocycles.com has once again misappropriated the SPEEDPLAY Trademarks, while also promoting the sale of goods in breach of Speedplay’s patent rights. In this regard, and as was the case previously, you continue to do business
both in Canada and the United States. As well, we understand that your business sells outside of North America. Without limitation, the trademark appears on the following webpages:
Be advised that your use of the SPEEDPLAY Trademark is likely to mislead and confuse the public into believing that you are in some way associated with, or sponsored by, our client. Under the circumstances, we have advised our client that your activities constitute trademark infringement,
passing-off and depreciation of goodwill contrary to Sections 20, 7 and 22 of the Canadian Trademarks Act and the common law. Furthermore, your use of the SPEEDPLAY Trademark constitutes a misappropriation of our client’s trademark rights in the U.S., as well in other countries where you may use the mark, including Japan, Germany, Taiwan, Hong Kong, China, Australia and Korea.
We add that your sale of spindles, bowties and other parts for Speedplay pedal assemblies to customers in the United States results in infringement of the SPEEDPLAY Patents as well as in other
jurisdictions where our client has rights. Such activities would render your business liable for damages or an accounting of profits, and a permanent an injunction, as well as associated legal costs. Our client is of course disappointed to learn of these developments given your 2011 agreement to cease all infringing activities. Under the circumstances, we respectfully require that you provide the following undertakings in
1. That you will permanently discontinue all worldwide use of SPEEDPLAY Trademarks, as well any trademark that is comprised of, contains, or is confusing with, the SPEEDPLAY Trademarks.
2. That your business shall permanently remove all references to the SPEEDPLAY Trademarks from its website.
3. That your business shall permanently discontinue all use of the SPEEDPLAY Trademarks in any promotional materials and advertisements, be it in hard copy or in digital form.
Page 3
4. That your business shall permanently discontinue all sales of all parts and components for any Speedplay pedal assemblies, including all spindles, bowties and other parts for Speedplay pedal assemblies as currently advertised on your website. Upon receipt of your response, we shall consider the issue of monetary damages with our client.
    Our client takes this matter extremely seriously. We look forward to receiving your response by the close of business on Monday February 12, 2018 so as to avoid the necessity of having to take further and more severe action to resolve this matter. This letter is without prejudice to any and all rights of actions arising from the aforementioned acts and our client reserves the right to pursue any legal remedies available to it to protect its intellectual property rights without further notice to you.
Yours very truly,
Eric Macramalla

POST DATE: February 03, 2018
    Since I have been having so many responses (It seems many customers and businesses have also been attacked) I have started a page on this topic on the blog. 
    I would like to state that this topic is not meant to devalue the products SpeedPlay offers, In fact these products have always been good. It's the behaviors of the corporation and Mr. Bryne that are so controversial. 
    The company does things that brings about it's own issues. Most notably the attacking anyone that offers parts or even makes repairs on these pedals all the while it's not possible to get parts for these pedals. The customer threads starting in 2011 are clear examples. I don't post on forums so have no involvement. Many customers have been kicked off eBay and have had to throw away pedals in disgust.
    For example: I had so many requests for the little 4mm torx end bolt that as a small business I couldn't ignore the need of this item. I also had a couple sets of pedals that I could not find parts for. All the while Speedplay is DEMANDING I don't touch this bolt. I am answering and caring for their customers, of which they simply attack if they try to sell a used pedal they cannot get parts for. This take a huge chunk of my time and are currently DEMANDING money for caring for their customers. 
    I gave up trying to make sense of this destructive behavior. Since the company chooses to repeatedly attack me thru lawyers I have decided to make it public interest. I suppose they could make me a dealer and actually carry their own items but not gonna happen. Good topic to talk about anyways as bolts stuff is boring.

POST DATE: February 01, 2018
Speedplay vs. Toronto Cycles
    It seems the time for Speedplay to launch legal claims again. Back in 2011 many companies and riders (Including myself) experienced Speedplay pushing legal claims on anybody making replacement parts or even selling used items on eBay.
    I just received a legal demand from Speedplay that all items related to them be removed. This includes bearings, bolts and all accessories.
Was wondering why is Speedplay the the only company that does this? I never heard about this with Shimano, Sram, Toyota, Honda or any company that makes replacement parts when those replacement parts are clearly aftermarket and in many cases items the original company does not produce.

Any thoughts on this? I can post the claim if your guys like.

Speedplay's Legal Goon Squad - Cyclingnews Forum

No comments:

Post a Comment

Note: Only a member of this blog may post a comment.