PDF Archive

Easily share your PDF documents with your contacts, on the Web and Social Networks.

Send a file File manager PDF Toolbox Search Help Contact



Doc08 Expressway SC Answer Counter Claim 06 28 12 .pdf



Original filename: Doc08-Expressway-SC-Answer-Counter-Claim-06-28-12.pdf
Title: Microsoft Word - NY1 Answer and Counterclaim
Author: James M Harrington

This PDF 1.5 document has been generated by PScript5.dll Version 5.2.2 / Acrobat Distiller 10.1.3 (Windows), and has been sent on pdf-archive.com on 05/07/2012 at 23:37, from IP address 75.95.x.x. The current document download page has been viewed 958 times.
File size: 62 KB (25 pages).
Privacy: public file




Download original PDF file









Document preview


Case 7:12-cv-00834-KMK Document 8

Filed 06/28/12 Page 1 of 25

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

EXPRESSWAY MUSIC, INC.,
Plaintiff,
v.

7:12-cv-00834-KMK

SLEP-TONE ENTERTAINMENT
CORPORATION,
Defendant.

ANSWER AND
COUNTERCLAIM

The Defendant, Slep-Tone Entertainment Corporation (“Slep-Tone”), by its
counsel, hereby answers the Complaint (Doc. 1) of Plaintiff Expressway Music,
Inc. (“EM”), in like-numbered paragraphs as follows:

PARTIES
1.

Upon information and belief, admitted.

2.

Admitted, except that Slep-Tone’s ZIP code is 28273.

3.

(Paragraph 3 was omitted in the Complaint.)

JURISDICTION AND VENUE
4.

Slep-Tone admits the existence of an actual and justiciable

controversy but denies that EM is entitled to the relief it seeks.
1

Case 7:12-cv-00834-KMK Document 8

Filed 06/28/12 Page 2 of 25

5.

Admitted.

6.

Slep-Tone consents to personal jurisdiction over it in this Court in this

matter, and the allegations of paragraph 6 are therefore moot.
7.

Slep-Tone consents to personal jurisdiction over it in this Court in this

matter and consents to venue in this Court in this matter, and the allegations of
paragraph 7 are therefore moot.

FACTUAL ALLEGATIONS
8.

Slep-Tone is without sufficient information, despite reasonable

inquiry, to admit or deny these allegations, and they are therefore denied.
9.

Slep-Tone admits that it is the manufacturer and distributor of karaoke

accompaniment tracks under the trademark SOUND CHOICE. Slep-Tone admits
that it sells compact discs containing karaoke accompaniment tracks with the intent
that the compact discs be used in connection with commercial karaoke services.
Otherwise, denied.
10.

Slep-Tone is without sufficient information to determine whether EM

has purchased any significant number of Slep-Tone’s karaoke accompaniment
tracks or the volume of those sales, if any, and those allegations are therefore
denied. Slep-Tone admits that its tracks are designed to display images, text, and
logos on screens for viewing by patrons during karaoke entertainment programs.
2

Case 7:12-cv-00834-KMK Document 8

11.

Filed 06/28/12 Page 3 of 25

Slep-Tone is without sufficient information to assess EM’s purposes

and motives in making the purchases it made, if any; therefore, denied.
12.

Admitted.

13.

Admitted.

14.

Admitted.

15.

Admitted.

16.

Admitted.

17.

Admitted.

18.

Admitted.

19.

Slep-Tone admits that there is an actual and justiciable controversy

between it and EM.

COUNT I
Slep-Tone’s responses to the allegations in paragraphs 1 through 19 are
likewise incorporated by reference.
20.

Slep-Tone admits that its prior infringement claims and related claims

against EM were based upon EM’s use of unauthorized counterfeits of karaoke
accompaniment tracks bearing Slep-Tone’s federally registered trademarks to
provide karaoke entertainment services.
21.

Denied.
3

Case 7:12-cv-00834-KMK Document 8

22.

Filed 06/28/12 Page 4 of 25

Denied.

WHEREFORE, Slep-Tone prays that EM’s requested relief be denied in its
entirety.

COUNTERCLAIM
The Defendant and Counterclaim Plaintiff, Slep-Tone Entertainment
Corporation (“Slep-Tone”), by its undersigned counsel, hereby counterclaims of
the Defendant, Expressway Music, Inc. (“EM”), and for its counterclaim alleges:
1.

This is an action for trademark and trade dress infringement and

federal unfair competition, brought by Slep-Tone against EM, in which EM is
accused of committing piracy of and counterfeiting karaoke accompaniment tracks
comprising trademarks and trade dress belonging to Slep-Tone.
2.

EM is specifically accused of making or acquiring and of using

unauthorized counterfeit duplicates of karaoke accompaniment tracks that have
been marked with Slep-Tone’s registered trademarks, and/or that exhibit SlepTone’s proprietary and distinctive trade dress, and that have been marked with
other manufacturers’ words, names, and symbols, and of deriving commercial
benefit therefrom.

4

Case 7:12-cv-00834-KMK Document 8

Filed 06/28/12 Page 5 of 25

JURISDICTION AND VENUE
3.

This is an action for trademark infringement and unfair competition

arising under §§ 32 and 43 of the Trademark Act of 1946 (“the Lanham Act”), 15
U.S.C. §§ 1114 and 1125. This Court has exclusive jurisdiction over the subject
matter of this action pursuant to 28 U.S.C. § 1331, in that this is a civil action
arising under the laws of the United States.
4.

This Court further has jurisdiction pursuant to 28 U.S.C § 1338(a), in

that this civil action arises under an Act of Congress relating to trademarks, and, as
to the Lanham Act unfair competition claim, pursuant to 28 U.S.C. § 1338(b), in
that the claim is joined with a substantial and related claim under the trademark
laws of the United States.
5.

Venue is proper in this judicial district pursuant to 28 U.S.C. §

1391(b), because the sole defendant resides in this State and judicial district.

THE PARTIES
6.

Slep-Tone is a North Carolina corporation having its principal place

of business at 14100 South Lakes Drive, Charlotte, NC 28273.
7.

EM is a New York corporation having its principal place of business

at 315 Madison Avenue, Suite 1303, New York, NY 10017.

5

Case 7:12-cv-00834-KMK Document 8

Filed 06/28/12 Page 6 of 25

BACKGROUND FACTS
8.

Karaoke entertainment is a multi-million dollar business in the United

States. The premise of karaoke entertainment is that participants sing along to
prerecorded popular-music accompaniment tracks consisting of instrumental and
vocal backing and a synchronized display of lyrics.
9.

Slep-Tone is one of the leading U.S. manufacturers of karaoke

accompaniment tracks.
10.

The karaoke manufacturing process involves re-recording popular

songs in the style of a particular performer, but without the lead vocals, and
synchronizing the music to a display of the lyrics in a manner that gives cues to the
performer as to what and when to sing.
11.

Slep-Tone sells or licenses its accompaniment tracks for commercial

use only on compact discs, primarily in one of two formats known as “CD+G” and
“MP3+G.” The “G” in each format name refers to the encoding of the recording
with graphical data to provide a synchronized video display of the lyrics to the
song.
12.

The graphics data is also utilized to mark the accompaniment tracks

with Slep-Tone’s trademarks and to cause the trademarks to be displayed upon
playback.

6

Case 7:12-cv-00834-KMK Document 8

13.

Filed 06/28/12 Page 7 of 25

The graphics data also causes Slep-Tone’s distinctive trade dress,

comprising the non-functional elements of changing-color lyrics, singing cues, the
particular typeface and layout of the lyrics, and logos and other graphical elements,
to be displayed.
14.

Slep-Tone also physically marks its original storage media and

associated packaging with its trademarks.
15.

Slep-Tone caters a substantial portion of its business to professional

providers of karaoke entertainment services, who are known in the industry as
“karaoke jockeys” or “KJs.” (Those terms are analogous to the more familiar
terms “disc jockey” and “DJ.”) KJs are also referred to as “karaoke operators” or
“karaoke hosts.”
16.

The services provided by KJs typically include providing the karaoke

music and equipment for playback (referred to herein as a “karaoke system”),
entertaining the assembled crowd, and organizing the karaoke show by controlling
access to the stage, setting the order of performance, and operating the karaoke
equipment.
17.

These services may be provided at public-access establishments, such

as bars, restaurants, social clubs, and other venues, or at festivals and public
gatherings. They may also be provided for private parties, such as weddings,
reunions, bar or bat mitzvahs, and other private events.
7

Case 7:12-cv-00834-KMK Document 8

18.

Filed 06/28/12 Page 8 of 25

KJs are usually compensated by the establishments in which they

provide these services, for public shows, or by the organizer, for private events at
which they perform.
19.

A significant component of the service being provided is access to a

catalog of karaoke accompaniment tracks so that singers may select a song with
which they are familiar.
20.

In order to provide that access, a KJ must purchase, license, or

otherwise acquire copies of the accompaniment tracks.
21.

Those accompaniment tracks may be acquired legitimately by

purchasing or licensing original media, or they may be acquired illegitimately by
obtaining non-original media from an illicit source.
22.

In some cases, KJs who have acquired legitimate original media make

duplicates of the content of those media to non-original media such as computer
hard drives, an activity known as “media-shifting.”
23.

In many cases, media-shifting also involves converting the compact

disc files to a different format, such as from CD+G format to MP3+G format or
another format; this is referred to as “format-shifting.”
24.

Both media-shifting and format-shifting involve the creation of

duplicates of the original materials stored on the compact discs.

8

Case 7:12-cv-00834-KMK Document 8

25.

Filed 06/28/12 Page 9 of 25

Slep-Tone does not wholly authorize media-shifting or format-

shifting, but Slep-Tone does authorize media-shifting and format-shifting with
respect to those rights it controls (including copyright and trademark rights) and
not with respect to rights controlled by third parties, if any.
26.

The authorization Slep-Tone does provide requires the would-be

media-shifter or format-shifter to meet several criteria.
27.

The most important of these criteria is the requirement to maintain

one-to-one correspondence between the KJ’s original media and the shifted
duplicates. One-to-one correspondence means that each duplicate individual
karaoke track stored on a non-original medium is uniquely represented on an
original medium that the KJ owns and possesses.
28.

The KJ must also notify Slep-Tone of the tracks the KJ wishes to shift

and must submit to an audit of the KJ’s systems and original media holdings for
the purpose of verifying compliance with Slep-Tone’s media-shifting policy.
29.

The failure to obtain authorization from Slep-Tone to conduct a

media-shift or format-shift of its karaoke accompaniment tracks means that the
resulting duplicates are unauthorized even if the KJ is in compliance with the oneto-one correspondence requirement.

9

Case 7:12-cv-00834-KMK Document 8

30.

Filed 06/28/12 Page 10 of 25

The failure to maintain one-to-one correspondence after receiving

authorization from Slep-Tone automatically and immediately voids that
authorization.
31.

KJs who acquire or make unauthorized duplicates of Slep-Tone’s

karaoke accompaniment tracks do so wholly without authorization, right, or
license, whether the KJ acquires the duplicates from an illicit source or made the
duplicate himself or herself.
32.

Upon information and belief, EM is in possession of unauthorized

media-shifted and format-shifted duplicates of Slep-Tone’s karaoke
accompaniment tracks.
33.

EM’s unauthorized duplicates carry Slep-Tone’s federally registered

trademarks and distinctive trade dress.
34.

EM has used media-shifted and format-shifted karaoke

accompaniment tracks marked with Slep-Tone’s federally registered trademarks
and distinctive trade dress for commercial purposes—to wit, to provide karaoke
entertainment services to or for the benefit of EM’s customers.
35.

Without exception, EM’s media-shifting and format-shifting activities

and the commercial services that are enabled by those activities have been
undertaken without any form of permission or authorization granted by Slep-Tone.

10

Case 7:12-cv-00834-KMK Document 8

36.

Filed 06/28/12 Page 11 of 25

An unauthorized duplicate of a karaoke accompaniment track that

carries Slep-Tone’s marks or trade dress—whether or not that track exists in oneto-one correspondence with a track on an original medium—is a counterfeit.
37.

To consumers of the services provided by EM using counterfeit

materials, the counterfeits are in many cases virtually indistinguishable from
genuine materials despite being degraded in quality through one or many instances
of copying.
38.

Slep-Tone pays statutory and negotiated royalties to the owners of

copyright in the musical works that underlie their karaoke accompaniment tracks,
as a condition of legitimately creating, copying, distributing, selling, and licensing
original media containing karaoke accompaniment tracks.
39.

Because EM has made or obtained counterfeits of Slep-Tone’s

accompaniment tracks instead of using original media, EM’s commercial use of
those tracks is also commercial use of the musical works underlying them—
counterfeits and unauthorized uses made without paying royalties to the owners of
copyright in those underlying musical works.
40.

Slep-Tone and its affiliated enterprises have spent millions of dollars

building and maintaining studios, hiring artists, building distribution facilities,
paying royalties and licensing fees, building companies that are capable of reliably

11

Case 7:12-cv-00834-KMK Document 8

Filed 06/28/12 Page 12 of 25

producing high-quality karaoke versions of current and historical musical hits, and
building brands that are the most recognizable brands in the karaoke industry.
41.

Upon information and belief, even if EM has acquired some

legitimate original media, EM has not acquired sufficient legitimate original media
to account for one-to-one correspondence between its original media holdings and
its non-original media.
42.

Consequently, Slep-Tone and its licensors have been deprived of

revenue to which they would have rightfully been entitled, and which they would
have received, if EM had acquired legitimate original media on the scale EM has
used and is using pirated, counterfeit media.
43.

Piracy of the type in which EM is believed to be engaged has

contributed to the loss of dozens of jobs as Slep-Tone has been forced, over the
course of the last five to seven years, to curtail its operations—particularly
including the production of new material—in the face of increasing piracy rates.
44.

A lawfully operating karaoke entertainment company that wished to

outfit multiple systems with Slep-Tone’s karaoke tracks, to the same extent and for
the same number of systems as EM has outfitted, would find it necessary to spend
tens of thousands of dollars to acquire that material—assuming, of course, that it
could even be acquired, since many tracks have been discontinued and are no
longer available in the primary market.
12

Case 7:12-cv-00834-KMK Document 8

45.

Filed 06/28/12 Page 13 of 25

By eliminating much or substantially all of the cost of acquiring music

for its multiple systems, EM enjoys an artificially low overhead, a condition that
creates an unfair advantage over legitimate operators who purchase Slep-Tone’s
media.
46.

Moreover, EM’s use of piracy allows it to obtain significantly more

tracks than a lawfully operating KJ can obtain, because EM does not have to pay
premium prices for rare tracks in the secondary market.
47.

EM therefore finds it easier to turn a profit, to enjoy higher profits, or

to make lower bids for its customers’ karaoke business than would an otherwise
similarly situated but lawful KJ.
48.

EM’s conduct works to create market conditions that tend to reward

piracy by increasing pirates’ profits; to punish lawful conduct by exerting unfair
downward pressure on the fees paid to legitimate KJs by the consumers of their
services; to encourage the proliferation of piracy as formerly legitimate hosts turn
to piracy simply to compete; and to deprive Slep-Tone of the sustaining revenue
necessary to ensure continued operations and the recording of new tracks.
49.

Because of piracy, it is nearly impossible for non-pirate KJs to

compete against pirate KJs, who are able to provide less expensive karaoke
services and a greater number of tracks due to their lower overhead costs.

13

Case 7:12-cv-00834-KMK Document 8

50.

Filed 06/28/12 Page 14 of 25

In Slep-Tone’s experience, even when pirate karaoke operators have

been forced through legal action or agreement to destroy their counterfeits of SlepTone’s tracks, the pirate karaoke operators continue to engage in unfair
competition using pirated materials belonging to other manufacturers.
51.

This unfair competition harms Slep-Tone, despite the elimination of

counterfeits of Slep-Tone’s tracks, because the continuing piracy of other
manufacturers’ tracks exerts pressure upon Slep-Tone’s customers and potential
customers to commit piracy of Slep-Tone’s tracks.

THE RIGHTS OF THE COUNTERCLAIM PLAINTIFF
52.

Slep-Tone is the owner of U.S. Trademark Registrations No.

1,923,448 and No. 4,099,045, both for the trademark SOUND CHOICE.
53.

Slep-Tone is also the owner of U.S. Trademark Registrations No.

2,000,725 and No. 4,099,052, both for a display trademark as follows:

54.

For the entire time its marks (“the Sound Choice Marks”) have been

federally registered, Slep-Tone has provided the public, including EM, with notice

14

Case 7:12-cv-00834-KMK Document 8

Filed 06/28/12 Page 15 of 25

of their federal registrations through the consistent display of the symbol ® with its
marks as used.
55.

Slep-Tone is the owner of distinctive and protectable trade dress

associated with its graphical displays (“the Sound Choice Trade Dress”). This
distinctive and protectable trade dress includes, at a minimum, (a) the use of a
particular typeface, style, and visual arrangement in displaying lyrics, (b) the use of
a particular type of changing-color lyrical display, synchronized to indicate the
timing of lyrics within the track, (c) the use of a particular style to indicate an entry
cue for the singer, to wit a series of vanishing rectangles to indicate the timing of
the cue, and (d) the Sound Choice Marks.
56.

Slep-Tone has used the Sound Choice Trade Dress continuously and

substantially exclusively for a period of decades.
57.

The individual and collected elements of the Sound Choice Trade

Dress have acquired secondary meaning as an indicator of Slep-Tone as the source
of any track to which it is applied, effectively functioning as a visual trademark.
58.

The Sound Choice Trade Dress serves to distinguish Slep-Tone’s

tracks from the tracks of its competitors, such that persons who are even minimally
frequent consumers of karaoke entertainment services such as those provided by
EM are capable of identifying a particular karaoke track as originating with Slep-

15

Case 7:12-cv-00834-KMK Document 8

Filed 06/28/12 Page 16 of 25

Tone simply by examining the Trade Dress, whether or not the Sound Choice
Marks are also displayed.
59.

The elements of the Sound Choice Trade Dress represent specific

design choices by Slep-Tone; they are only one of many ways to convey the
information necessary to permit a karaoke singer to be appropriately supported in
his or her performance.
60.

No competitor of Slep-Tone is required to use any element of the

Trade Dress in order to accomplish the functions necessary to provide effective
cueing, prompting, and accompaniment to a karaoke singer.

ACTIVITIES OF EXPRESSWAY MUSIC, INC.
61.

EM has possessed, used, and displayed unauthorized counterfeit

goods bearing the Sound Choice Marks and the Sound Choice Trade Dress during
the performance of karaoke entertainment services.
62.

EM has knowingly benefitted from the possession, use, and display of

unauthorized counterfeit goods bearing the Sound Choice Marks and the Sound
Choice Trade Dress during the performance of karaoke entertainment services.
63.

EM has provided karaoke entertainment services in connection with

the Sound Choice Mark and the Sound Choice Trade Dress without authorization
or tolerance from Slep-Tone and has advertised EM’s provision of or availability
16

Case 7:12-cv-00834-KMK Document 8

Filed 06/28/12 Page 17 of 25

to provide karaoke services in connection with which unauthorized counterfeit
tracks bearing the Sound Choice Marks and the Sound Choice Trade Dress would
be used or have been used.
64.

EM’s activities are not isolated or sporadic occurrences, but are

instead regular activities undertaken over a period of years and repeated on each
occasion on which EM provided karaoke entertainment services.
65.

EM’s activities are of a commercial nature, in that they engaged in the

activities with the transfer of money or other things of value from one party to
another as a significant motivation for providing the services.
66.

EM has been offered the opportunity to submit to an audit of its

karaoke systems for the purposes of verifying its compliance with Slep-Tone’s
media-shifting policy, a necessary condition for compliance with that policy,
which opportunity EM declined.
67.

EM’s piracy of accompaniment tracks is not limited to Slep-Tone’s

tracks, but extends additionally to the piracy of other manufacturers’
accompaniment tracks, utilizing the words, names, symbols, and other devices
associated with those manufacturers without authorization.
68.

EM knew, or should have known under the circumstances, that it was

obtaining and using counterfeit karaoke tracks.

17

Case 7:12-cv-00834-KMK Document 8

Filed 06/28/12 Page 18 of 25

DAMAGES
69.

EM’s unauthorized use of Slep-Tone’s trademarks and trade dress has

damaged Slep-Tone.
70.

Based upon the estimated minimum cost of acquiring, through

legitimate means, a single set of copies of Slep-Tone’s materials equivalent to the
material EM has pirated, EM has damaged Slep-Tone in an amount of at least
$25,000 for each karaoke system EM operates.
71.

Because EM’s karaoke entertainment services are focused upon the

commercial private party market, EM’s revenues and profits are enhanced over
those of typical karaoke operators who focus on providing shows at public
establishments.
72.

EM’s illicit use of pirated Slep-Tone accompaniment tracks enables it

to enhance its other service offerings, such as DJ services, so as to gain business
not only from customers who are primarily seeking karaoke services but also from
customers who are seeking both DJ services and karaoke services.
73.

Moreover, by exerting illegitimate and unfair pressure on the market

for karaoke services in this area through the use of pirated material belonging to
Slep-Tone and other manufacturers, EM is partially responsible for the loss of
revenue that would otherwise have gone to legitimate operators, and in turn to

18

Case 7:12-cv-00834-KMK Document 8

Filed 06/28/12 Page 19 of 25

Slep-Tone, because the legitimate operators’ loss of revenues prevent them from
purchasing legitimate material from Slep-Tone.

FIRST CLAIM FOR RELIEF
TRADEMARK AND/OR TRADE DRESS INFRINGEMENT
74.

EM used and knowingly directly benefited from the use of a

reproduction, counterfeit, or copy of the Sound Choice Marks and of the Sound
Choice Trade Dress in connection with the provision of services including karaoke
services, by manufacturing or acquiring the reproduction, counterfeit, or copy of
the Sound Choice Marks or of the Sound Choice Trade Dress, or both, and by
displaying the reproduction, counterfeit, or copy of the Sound Choice Marks or of
the Sound Choice Trade Dress, or both, during the provision of those services.
75.

EM’s use of the Sound Choice Marks and of the Sound Choice Trade

Dress was “in commerce” within the meaning of the Trademark Act of 1946 as
amended.
76.

Slep-Tone did not license EM to manufacture or acquire

reproductions, counterfeits, or copies, or to use the Sound Choice Marks or the
Sound Choice Trade Dress in connection with the provision of their services.
77.

EM’s use of the Sound Choice Marks and the Sound Choice Trade

Dress is likely to cause confusion, or to cause mistake, or to deceive EM’s
customers and patrons into believing that EM’s services are being provided with
19

Case 7:12-cv-00834-KMK Document 8

Filed 06/28/12 Page 20 of 25

the authorization of Slep-Tone and that EM’s music libraries contain bona fide
Sound Choice accompaniment tracks.
78.

EM’s acts were willful, knowing, and intentional.

79.

Slep-Tone has been damaged by EM’s infringing activities.

80.

Unless enjoined by the Court, EM’s infringing activities as described

above will continue unabated and will continue to cause harm to Slep-Tone.

SECOND CLAIM FOR RELIEF
UNFAIR COMPETITION UNDER 15 U.S.C. § 1125(a)
81.

On each occasion when it caused a counterfeit of a Slep-Tone

accompaniment track to be played during a karaoke show, EM displayed the Sound
Choice Marks and the Sound Choice Trade Dress in connection with EM’s karaoke
services.
82.

The display of the Sound Choice Marks and the Sound Choice Trade

Dress is likely to cause confusion, or to cause mistake, or to deceive those present
during the display, in that those present are likely to be deceived into believing,
falsely, that Slep-Tone sponsored or approved EM’s services and commercial
activities.
83.

The display of the Sound Choice Marks and the Sound Choice Trade

Dress is also likely to cause confusion, or to cause mistake, or to deceive those
present during the display, in that those present are likely to be deceived into
20

Case 7:12-cv-00834-KMK Document 8

Filed 06/28/12 Page 21 of 25

believing, falsely, that the karaoke accompaniment tracks being played were
manufactured and sold by Slep-Tone and purchased by EM.
84.

EM’s use of Slep-Tone’s marks and trade dress in this fashion would

have inured to Slep-Tone’s benefit if EM had legitimately acquired bona fide
original media instead of counterfeiting media or acquiring counterfeit copies, in
that Slep-Tone would have received revenue from such sales.
85.

Because Slep-Tone has been denied this revenue, it has been damaged

by EM’s uses.
86.

On each occasion when it caused an accompaniment track pirated

from a manufacturer other than Slep-Tone to be played during a karaoke show, EM
displayed the words, names, and symbols of the other manufacturer in connection
with EM’s karaoke services.
87.

Upon information and belief, EM’s use of those words, names, and

symbols falsely designates the other manufacturer as the origin of the pirated track,
when in fact the pirated copy was made by EM or acquired as a counterfeit from
another person.
88.

The display of these false designations of origin is likely to cause

confusion, or to cause mistake, or to deceive those present during the display, in
that those present are likely to be deceived into believing, falsely, that the pirated

21

Case 7:12-cv-00834-KMK Document 8

Filed 06/28/12 Page 22 of 25

tracks are legitimate, authorized, and authentic materials that EM acquired in a
legitimate manner.
89.

The display of the false designations of origin is also likely to cause

confusion, or to cause mistake, or to deceive those present during the display, in
that those present are likely to be deceived into believing, falsely, that the works
being performed were sold by those manufacturers and purchased by EM.
90.

EM’s use of the false designations of origin in this fashion damages

Slep-Tone by enabling EM to provide karaoke services at a lower cost than persons
who acquire those materials legitimately, including Slep-Tone’s legitimate
customers.
91.

The consequential denial of revenue from a legitimate market for

Slep-Tone’s customers’ services prevents Slep-Tone’s customers from making
purchases of material from Slep-Tone and is thus a denial of revenue to Slep-Tone.
92.

Because Slep-Tone has been denied this revenue, it has been damaged

by EM’s false designations of origin relating to other manufacturers.
93.

Unless enjoined by the Court, EM’s unfair competition activities as

described above will continue unabated and will continue to cause harm to SlepTone.

22

Case 7:12-cv-00834-KMK Document 8

Filed 06/28/12 Page 23 of 25

PRAYER FOR RELIEF
WHEREFORE, Slep-Tone prays for judgment against EM and that the
Court:
A.

Find that EM has committed acts of infringement, including but not

limited to counterfeiting, of the federally registered Sound Choice Marks and of
the Sound Choice Trade Dress;
B.

Find that EM has engaged in unfair competition against Slep-Tone in

violation of 15 U.S.C. § 1125(a);
C.

Enter judgment against EM and in favor of Slep-Tone on all counts;

D.

Find that EM’s activities were in all respects conducted willfully and

for profit;
E.

Award to Slep-Tone EM’s profits and the damages sustained by Slep-

Tone because of EM’s conduct in infringing the Sound Choice Marks and the
Sound Choice Trade Dress, or, in the alternative, statutory damages per trademark
infringed by counterfeiting, and in any event in an amount not less than $25,000
for each karaoke system operated by EM;
F.

Award to Slep-Tone EM’s profits and the damages sustained by Slep-

Tone because of EM’s acts of unfair competition under 15 U.S.C. § 1125(a), in an
amount not less than $100,000;

23

Case 7:12-cv-00834-KMK Document 8

G.

Filed 06/28/12 Page 24 of 25

Award to Slep-Tone treble, punitive, or otherwise enhanced damages,

as available, for EM’s acts of willful infringement;
H.

Order all computer disks, drives, or other media belonging to EM,

which media contain counterfeits of goods bearing Slep-Tone’s marks or trade
dress or bearing marks belonging to other manufacturers, to be delivered up for
destruction;
I.

Grant Slep-Tone preliminary and permanent injunctive relief against

further infringement of its marks and trade dress by EM;
J.

Grant Slep-Tone preliminary and permanent injunctive relief against

further false designations of origin by EM with respect to words, names, and
symbols associated with other manufacturers;
K.

Award Slep-Tone its costs of suit and attorney’s fees, to the extent not

awarded above; and
L.

Grant Slep-Tone such other and further relief as justice may require.

///

24

Case 7:12-cv-00834-KMK Document 8

Filed 06/28/12 Page 25 of 25

Respectfully submitted this the 28th day of June, 2012.
HARRINGTON LAW, P.C.
By:
s/James M. Harrington
James M. Harrington, pro hac vice
N.C. State Bar No. 30005
jharrington@harringtonlawpc.com
Attorney for Slep-Tone Entertainment Corporation
HARRINGTON LAW, P.C.
PO Box 403
Concord, North Carolina 28026-0403
Telephone: 704-315-5800
Facsimile: 704-625-9259

CERTIFICATE OF SERVICE
I hereby certify that the foregoing paper is being filed on the date indicated
below using the Clerk’s CM/ECF system, which will send a Notice of Electronic
Filing to counsel of record:
Edward P. Bakos – ebakos@bakoskritzer.com

Date: June 28, 2012

s/ James M. Harrington

25


Related documents


PDF Document slep s answer
PDF Document panama 206 consent judgment
PDF Document doc199 harrington findings of fact 7 13 12 main
PDF Document doc198 harrington statement of facts 7 13 12
PDF Document panama 201 judgment
PDF Document panama 142 1


Related keywords