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Title: IN THE ******* COURT OF THE STATE OF WASHINGTON
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Case: 1:12-cv-05750 Document #: 1 Filed: 07/23/12 Page 1 of 26 PageID #:1

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Brian J. Laurenzo, # 6197605
BRICK GENTRY P.C.
6701 Westown Parkway, Suite 100
West Des Moines, IA 50266
Tel: 515-274-1450
Fax: 515-274-1488
Attorney for Plaintiff
Slep-Tone Entertainment Corporation

Mark Gross, #6197703
GROSS & BOYLE, LLC
15 Salt Creek Lane, Suite 207
Hinsdale, IL 60521
Tel: 630-887-7373
Fax: 630-887-7171
Attorney for Plaintiff
Slep-Tone Entertainment Corporation

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UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION

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SLEP-TONE ENTERTAINMENT
CORPORATION,

No. 1:12-cv-5750

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Plaintiff,

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COMPLAINT

v.
TONY DEADAM; DANIEL ROBERTO;
RINGSIDE, INC.; SHANAHAN’S PUB, INC.;
PATRICK JESSE; JOSEPH MARANTO; PETE
GARCIA; KIM BRYAN; CINDY FONTANA;
MIKE FONTANA; BOB WELNINSKI; MATT
MARQUARDT; DELTA DISC JOCKEYS, LLC;
GARY ECKLUND; JOHN MASON; JESSE LYNN;
GARY DELONG; RYAN SALVINO;
ARROWSOUND ENTERTAINMENT; and DON
WILSON

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Defendants.

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The Plaintiff, Slep-Tone Entertainment Corporation (“Slep-Tone”), by and through its
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attorneys, hereby complains of the Defendants, and for its complaint alleges as follows:
INTRODUCTION

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Slep-Tone is the manufacturer and distributor of karaoke accompaniment tracks sold
under the name “Sound Choice.” Slep-Tone was founded 25 years ago by Kurt and Derek
Slep, two brothers with a vision to nurture the development of karaoke in America as a
COMPLAINT – Page 1

Case: 1:12-cv-05750 Document #: 1 Filed: 07/23/12 Page 2 of 26 PageID #:2

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participatory entertainment phenomenon. During that time, Sound Choice came to be
recognized as one of the leading producers of high-quality karaoke accompaniment tracks.

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The company invested over $18 million to re-record and replicate the authentic sound of
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popular music across different eras and genres of music.
The Sleps’ dedication to producing music of the highest quality and the most

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authentic character led its music to become the staple of almost every karaoke show in the
country. As karaoke grew in popularity, Sound Choice became the brand that nearly every

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karaoke fan wanted to sing and that nearly every karaoke jockey (“KJ”) wanted in his or her
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library.
KJs play karaoke songs using compact discs containing files written in one of two

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special encoded formats, either “CD+G” (“compact disc plus graphics”) or “MP3G” (“MP3 1
plus graphics”), in which the disc contains the music and the lyrics, which will display on a

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screen. In recent years, computer technology, cheap file memory devices, and the internet
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have made it possible for karaoke discs to be decoded and “ripped” (copied) to a user’s hard

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drive and easily copied and distributed between KJs. This technology has proven irresistible

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to KJs, many of whom have used this opportunity to copy one purchased disc to several

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different computer based systems, copy a singer’s personal discs if they use them during a

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show, “swap” song files among each other, download them from illegal file-sharing sites and
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build libraries of tens of thousands of karaoke songs without paying for them. Whereas in

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the past a KJ would buy multiple copies of an original disc if he or she desired to operate

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multiple systems, now they simply “clone” their songs for multiple commercial systems or

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MP3 is an acronym standing for “Moving Picture Experts Group Audio Layer 3.” MP3G is a far newer format
than CD+G and is significantly more portable than CD+G. The Plaintiff has only recently begun distributing its
karaoke tracks in this format, and only under tight contractual controls that require user registration and audits,
confine possession to professional karaoke operators, include serialization of licensed discs, and prohibit file
sharing under pain of forfeiture of license rights.

COMPLAINT – Page 2

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even their entire karaoke song libraries to start a new operation. Additionally, many KJs or
operators starting in the business simply buy computer drives pre-loaded with thousands of

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illegally copied songs.
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These practices have become so widespread that Slep-Tone has been driven nearly

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out of business. At its peak, the Sound Choice family of companies employed 75 individuals

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and produced as many as 5 new karaoke discs per month. Today, the enterprise employs

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only 7 individuals. Sound Choice Studios which was responsible for production of new

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material, was driven out of business and the assets sold to ex-employees because the
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companies lost money on every recent new karaoke disc. The most recent new disc did not

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produce enough revenue even to cover the production and licensing costs associated with

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it—yet the songs from that disc can be found on as many as 30,000 karaoke systems around

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the United States. Because its primary purpose was to record new music for Karaoke and it

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could no longer profitably produce new music, it was shut down. In the future Sound Choice
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will have to subcontract to the ex-employees if/when it is able to profitably release new titles
again.
For KJs, karaoke is a commercial enterprise. KJs who legitimately acquired all of
their music at great cost are being forced by illicit competition to produce shows for lower

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and lower fees. Illegitimate competitors offer libraries of tens of thousands of songs, which
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would have cost $50,000 to $100,000 or more to acquire legitimately, but produce shows for

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one-third the rates a legitimate KJ can offer. The result is significant financial pressure on

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once-legitimate KJs to skirt or ignore the law and become pirates, simply to stay in business.

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COMPLAINT – Page 3

Case: 1:12-cv-05750 Document #: 1 Filed: 07/23/12 Page 4 of 26 PageID #:4

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Slep-Tone has been forced to undertake this litigation in order to ensure that it survives and
continues to produce the high-quality karaoke music its fans demand and to level the playing

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field for the legitimate KJs.
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JURISDICTION AND VENUE

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1. This is an action for trademark infringement and unfair competition arising under §§
32 and 43 of the Trademark Act of 1946, 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. §

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1331, in that this is a civil action arising under the laws of the United States.
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2. This Court further has jurisdiction pursuant to 28 U.S.C § 1338(a), in that this civil

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action arises under an Act of Congress relating to trademarks, and, as to the Plaintiff’s

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Lanham Act unfair competition claim, pursuant to 28 U.S.C. § 1338(b), in that the

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claim is joined with a substantial and related claim under the trademark laws of the

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United States.
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3. This Court has supplemental jurisdiction over the subject matter of the Plaintiff’s

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state-law claims pursuant to 28 U.S.C. § 1367(a), in that those claims are so related to

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the Plaintiff’s federal claims that they form part of the same case or controversy.

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4. Venue is proper in this judicial district pursuant to 28 U.S.C. § 1391(b), because all of

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the defendants reside in this State and at least one of the defendants resides in this
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judicial district, and venue is proper in the Eastern Division because a substantial part

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of the events or omissions giving rise to the claim occurred within this division.

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THE PLAINTIFF

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5. Plaintiff SLEP-TONE is a North Carolina corporation having its principal place of

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business at 14100 South Lakes Drive, Charlotte, North Carolina.
COMPLAINT – Page 4

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THE DEFENDANTS
6. Defendant TONY DEADAM is an individual who does business as “Out of Focus

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Entertainment Productions” and who conducts his business activities at least in
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Orland Park, IL and Tinley Park, IL. Defendant TONY DEADAM is engaged in the

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business of providing karaoke entertainment, and he conducts his business at multiple

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venues in this State.

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7. Defendant DANIEL ROBERTO is an individual who does business as “Party Out of

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Bounds” and who conducts his business activities at least in Elk Grove, IL.
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Defendant DANIEL ROBERTO is in the business of providing karaoke
entertainment.
8. Defendant RINGSIDE INC. is an Illinois corporation having its principal place of
business in Elk Grove, IL. Defendant RINGSIDE INC. operates an eating and

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drinking establishment known as “Ringside Sports Club – Pizza – Restaurant – OTB”
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at which karaoke entertainment is provided.
9. Defendant SHANAHAN’S PUB, INC. is an Illinois corporation having its principal
place of business in West Chicago, IL. Defendant SHANAHAN’S PUB, INC.
operates an eating and drinking establishment known as “Shanahan’s Pub” at which

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karaoke entertainment is provided.
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10. Defendant PATRICK JESSE is an individual who does business as “P.A.T.

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Entertainment” or “Party All the Time”. Defendant PATRICK JESSE is engaged in

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the business of providing karaoke entertainment and conducts his business at least in

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Chicago Ridge, IL.

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COMPLAINT – Page 5

Case: 1:12-cv-05750 Document #: 1 Filed: 07/23/12 Page 6 of 26 PageID #:6

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11. Defendant JOSEPH MARANTO is an individual who, upon information and belief,
does business as “John’s Pizza” in Addison, IL. Defendant JOSEPH MARANTO

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was formerly the president and agent of the Illinois corporation “John’s Pizza
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Maranto, Inc.” which was involuntarily dissolved. Karaoke entertainment is provided
at “John’s Pizza”.
12. Defendant PETE GARCIA is an individual who does business as “IVP Karaoke”.
Defendant PETE GARCIA is engaged in the business of providing karaoke

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entertainment and conducts his business at least in Hickory Hills, IL.
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13. Defendant KIM BRYAN is an individual who does business as “Kim’s Karaoke”.

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Defendant KIM BRYAN is engaged in the business of providing karaoke

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entertainment and conducts her business at least in Johnsburg, IL, Fox Lake, IL,

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Barrington, IL, Crystal Lake, IL, and McHenry, IL.

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14. Defendants CINDY FONTANA and MIKE FONTANA, who on information and
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belief are a married couple, are individuals who do business as “Be A Star Tonight

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Entertainment”. Defendants CINDY FONTANA and MIKE FONTANA are engaged

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in the business of providing karaoke entertainment. Defendants CINDY FONTANA

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and MIKE FONTANA conduct their business at least in Gilberts, IL and Crystal

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Lake, IL.
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15. Defendant BOB WELNINSKI is an individual who does business as “Soundwave

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Entertainment”. Defendant BOB WELNINSKI is engaged in the business of

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providing karaoke entertainment. Defendant BOB WELNINSKI conducts his

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business at least in Round Lake, IL.

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COMPLAINT – Page 6

Case: 1:12-cv-05750 Document #: 1 Filed: 07/23/12 Page 7 of 26 PageID #:7

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16. Defendant MATT MARQUARDT is an individual who does business as “Near Dark
Entertainment”. Defendant MATT MARQUARDT is engaged in the business of

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providing karaoke entertainment. Defendant MATT MARQUARDT conducts his
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business at least in Tinley Park, IL, Orland Hills, IL, Homer Glen, IL, and Mokena,
IL.
17. Defendant DELTA DISC JOCKEYS, LLC is an Illinois limited liability company
having its principal place of business in Rockford, IL. Defendant DELTA DISC

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JOCKEYS, LLC is engaged in the business of providing karaoke entertainment.
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Defendant DELTA DISC JOCKEYS, LLC conducts its business at least in Rockford,

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IL, Algonquin, IL, McHenry, IL, Crystal Lake, IL, Woodstock, IL, Arlington

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Heights, IL, and Delavan, WI. Defendant DELTA DISC JOCKEYS, LLC, upon

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information and belief, is principally owned, directed, and operated by Defendants

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GARY ECKLUND and JOHN MASON.
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18. Defendant GARY ECKLUND is an individual and a member of or close associate of

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a business enterprise known as DELTA DISC JOCKEYS, LLC. Defendant GARY

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ECKLUND is a resident of Winnebago County, IL and engages in significant

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business activities, including providing karaoke entertainment services, in at least

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Rockford, IL, Algonquin, IL, McHenry, IL, Crystal Lake, IL, Woodstock, IL,
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Arlington Heights, IL, and Delavan, WI.
19. Defendant JOHN MASON is an individual and a member of or close associate of a

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business enterprise known as DELTA DISC JOCKEYS, LLC. Defendant JOHN

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MASON is a resident of Winnebago County, IL and engages in significant business

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activities, including providing karaoke entertainment services, in at least Rockford,
COMPLAINT – Page 7

Case: 1:12-cv-05750 Document #: 1 Filed: 07/23/12 Page 8 of 26 PageID #:8

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IL, Algonquin, IL, McHenry, IL, Crystal Lake, IL, Woodstock, IL, Arlington
Heights, IL, and Delavan, WI.

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20. Defendant JESSE LYNN is an individual who does business as “Kidron Music”.
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Defendant JESSE LYNN is engaged in the business of providing karaoke

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entertainment. Defendant JESSE LYNN conducts business in at least Lake Villa, IL,

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Waukegan, IL, Gages Lake, IL, Vernon Hills, IL, and Aurora, IL.

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21. Defendants GARY DELONG and RYAN SALVINO upon information and belief are

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partner-owners of the defendant partnership ARROWSOUND ENTERTAINMENT.
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Defendants GARY DELONG, RYAN SALVINO, and ARROWSOUND

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ENTERTAINMENT are engaged in the business of providing karaoke entertainment.

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Defendants GARY DELONG, RYAN SALVINO, and ARROWSOUND

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ENTERTAINMENT conduct business in at least Palatine, IL, Villa Park, IL, and

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Wauconda, IL.
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22. Defendant DON WILSON is an individual who does business as “Fun Times DJ”.

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Defendant DON WILSON is engaged in the business of providing karaoke

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entertainment. Defendant DON WILSON conducts his business in at least Ingleside,

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IL, Waukegan, IL, Pell Lake, WI, and Trevor, WI.

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BACKGROUND FACTS
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23. The term “karaoke” means “empty orchestra” in Japanese. Karaoke entertainment

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has grown into a multi-million dollar business in the United States.

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24. Slep-Tone is one of the leading United States manufacturers of karaoke

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accompaniment tracks.

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COMPLAINT – Page 8

Case: 1:12-cv-05750 Document #: 1 Filed: 07/23/12 Page 9 of 26 PageID #:9

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25. Slep-Tone’s manufacturing process involves re-recording popular songs in the style
of a particular performer, but without the lead vocals, and synchronizing the music to

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a display of the lyrics in a manner that gives cues to the performer as to what and
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when to sing.
26. Karaoke compact disc plus graphics or MP3 plus graphics recordings contain recreated arrangements of popular songs for use as accompaniment tracks.
27. Typically, the lead vocal tracks in an accompaniment track are omitted so that a

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karaoke participant can sing along, as though he or she were the lead singer. In other
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situations, the lead vocal track by a sound-alike artist might be included, and some

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formats allow the lead vocal to be selectively muted upon playback so that the

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accompaniment track may be listened to either with or without the lead vocals.

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28. The “graphics” portion of a karaoke recording refers to the encoding of the recording

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with data to provide a contemporaneous video display of the lyrics to the song, in
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order to aid the performer.
29. This graphics data is also utilized to mark the accompaniment tracks with the Sound
Choice trademarks and to cause the Sound Choice trademarks to be displayed upon
playback.

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30. Entertainers who provide karaoke services in bars, restaurants, and other venues are
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known as karaoke jockeys (“KJs”), karaoke hosts, or karaoke operators. The services

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provided by KJs typically include providing the karaoke music and equipment for

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playback, entertaining the assembled crowd for warm-up purposes, and organizing

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the karaoke show by controlling access to the stage, setting the order of performance,

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and operating the karaoke equipment.
COMPLAINT – Page 9

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31. Typically, a KJ will maintain a printed catalog of songs available for performance in
order to aid participants in selecting a song to sing.

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32. Legitimate KJs purchase equipment and purchase or license compact discs containing
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accompaniment tracks and charge for the above-mentioned karaoke services.

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33. Many KJs, such as some of the present Defendants, obtain, copy, share, distribute

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and/or sell media-shifted copies of the accompaniment tracks via pre-loaded hard

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drives, USB drives, CD-R’s, or the Internet.

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34. Some KJs copy the accompaniment tracks from compact discs to computer hard
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drives or other media, an activity known as “media-shifting.”

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35. In many cases, media-shifting also involves converting the compact disc files to a

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different format, such as from CD+G format to MP3G format or WAV+G format;

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this is referred to as “format-shifting.”

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36. Both media-shifting and format-shifting involve the creation of copies of the original
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materials stored on the compact discs.
37. Upon information and belief, and based upon investigation of their activities, the
present Defendants are in possession of unauthorized media-shifted and formatshifted copies of karaoke accompaniment tracks which have been marked falsely with

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SLEP-TONE’s federally registered trademarks.
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38. SLEP-TONE does not authorize media-shifting or format-shifting of its

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accompaniment tracks for any commercial purpose. SLEP-TONE does, however,

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tolerate media-shifting and format-shifting under very specific conditions.

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39. SLEP-TONE’s conditions for tolerance of media-shifting and format-shifting include,
without limitation, that (a) that each media-shifted or format-shifted track must have
COMPLAINT – Page 10

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originated from an original, authentic compact disc; (b) that the tracks from the
original, authentic compact disc be shifted to one, and only one, alternative medium

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at a time; (c) that the KJ maintain ownership and possession of the original, authentic
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compact disc for the entire time that the media-shifted or format-shifted tracks are in

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existence; (d) that the original, authentic compact disc not be used for any

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commercial purpose while its content has been shifted; and (e) that the KJ notify

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SLEP-TONE that he or she intends to conduct or has conducted a media-shift or

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format-shift, and submits to a verification of adherence to SLEP-TONE’s policy.
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40. Media-shifting or format-shifting that occurs outside the conditions of tolerance
described above is entirely without authorization or tolerance.
41. Each of the Defendants has used media-shifted and/or format-shifted karaoke
accompaniment tracks marked with the SLEP-TONE’s registered trademarks for

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commercial purposes.
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42. Defendants display SLEP-TONE’s registered trademarks to their customers or

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potential customers for purposes of advertising to their customers the quality and

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superiority that is associated with SLEP-TONE products. In addition to displaying

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the marks for advertisement purposes, many of the Defendants, if not all, advertise

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that they use SOUND CHOICE® products by identifying SOUND CHOICE® as
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manufacturers of tracks listed in song lists and other publications.

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43. Defendants display the registered marks to attract more customers and retain loyal

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customers, all of whom recognize the quality and superiority of SLEP-TONE

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products. Defendants, both KJs and venues, directly benefit from the advertisement

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of SLEP-TONE’s registered trademarks.
COMPLAINT – Page 11

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44. Without exception, the Defendants’ media-shifting activities have been undertaken
outside the conditions of tolerance described above.

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45. A karaoke accompaniment track that exists outside the conditions of tolerance
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described above and that has been marked with SLEP-TONE’s federally registered
trademarks is a counterfeit.
46. SLEP-TONE and its affiliated companies pay statutory and negotiated royalties to the
owners of copyright in the underlying musical works for their activities in

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legitimately creating, copying, distributing, and selling compact discs containing
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karaoke accompaniment tracks.
47. Those persons, including the Defendants, who illegitimately obtain, copy, share,
distribute, and/or sell media-shifted copies of the Plaintiff’s accompaniment tracks do
not pay royalties to the owners of copyright in the underlying musical works.

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48. SLEP-TONE and its affiliated companies have spent millions of dollars building and
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maintaining studios, hiring artists, building a distribution facility, paying royalties to

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copyright owners, building a company that is capable of reliably producing high-

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quality karaoke versions of current and historical musical hits, and building a brand

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that is one of the pre-eminent brands in the industry.

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49. The widespread creation, distribution, and commercial use of counterfeit copies of
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SLEP-TONE’s karaoke discs, including by these Defendants, has denied SLEPTONE the benefit of its investments.
50. These counterfeits include SLEP-TONE’s registered trademarks, such that to the
consumers of the illegitimate KJs’ services, the counterfeits are virtually
indistinguishable from genuine SOUND CHOICE® materials.
COMPLAINT – Page 12

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51. For each of the several recent releases of new karaoke music by SLEP-TONE, dozens
of illegitimate copies of the contents of the disc have been created, on average, for

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each legitimate copy sold. SLEP-TONE, its affiliated companies, and its licensors
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have lost a considerable amount of money due to this widespread piracy.
52. Such widespread illegal copying of music has been made possible by improving and
ever cheaper computer technology and memory devices and the easy distribution of
digital content over the internet.

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53. Widespread pirating of songs has contributed to the loss of more than sixty-eight jobs
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at the Plaintiff’s location in Charlotte, North Carolina, as well as several consecutive
years of operating losses, as revenues do not cover fixed costs.
54. Legitimate KJs spend thousands of dollars acquiring SLEP-TONE’s accompaniment
tracks, an irreducible overhead cost that must be recovered over a significant number

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of engagements.
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55. Illegitimate KJs, including these Defendants, have an unfair advantage over

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legitimate KJs, because the illegitimate KJs are able to provide karaoke services with

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a considerably lower overhead cost and significantly more songs through the pirating

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of SLEP-TONE’s tracks.

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56. Piracy therefore unfairly increases the profits of illegitimate KJs and unfairly
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decreases the profits of legitimate KJs, a condition that pressures legitimate KJs to

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either commit piracy instead of doing business with SLEP-TONE and other karaoke

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music producers or lose their shows to KJs offering more songs at cheaper prices to

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the same venues.

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COMPLAINT – Page 13

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57. Because of piracy, it is nearly impossible for legitimate KJs to compete against illegal
KJs, who are able to provide less expensive karaoke services and a greater number of

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tracks due to their lower overhead costs.
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58. Even when illegitimate KJs have been forced through legal action or agreement to

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destroy their counterfeit copies of the Plaintiff’s tracks, the illegitimate KJs continue

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to engage in unfair competition using pirated materials belonging to other

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manufacturers.

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59. This unfair competition harms the Plaintiff, despite the elimination of counterfeit
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copies of the Plaintiff’s tracks, because the continuing piracy of other manufacturers’

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tracks exerts continuing pressure upon the Plaintiff’s customers and potential

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customers to commit piracy of Plaintiff’s tracks. Further the greater number of tracks

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on pirate systems makes it more difficult for legal hosts to get hired and thus have the

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revenue to purchase Plaintiff’s products.
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60. In order to build a large library of SLEP-TONE’s accompaniment tracks, a legitimate

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KJ could expect to spend approximately $25,000 for each karaoke system upon which

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that library would be used. For a comprehensive library of SLEP-TONE’s

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accompaniment tracks, that figure would rise to $40,000 or more.

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THE RIGHTS OF THE PLAINTIFF
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61. Plaintiff SLEP-TONE is the owner of U.S. Trademark Registrations No. 1,923,448
and No. 4,099,045, both for the mark SOUND CHOICE.
62. Plaintiff SLEP-TONE is also the owner of U.S. Trademark Registrations No.
2,000,725 and No. 4,099,052, both for the following mark:

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COMPLAINT – Page 14

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63. Plaintiff SLEP-TONE has, for the entire time its marks (“the Sound Choice Marks”)

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have been federally registered, provided the public, including the Defendants, with

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notice of its federal registrations through the consistent display of the symbol ® with

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its marks as used.

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64. Slep-Tone is the owner of distinctive and protectable trade dress associated with its
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graphical displays (“the Trade Dress”). This distinctive and protectable trade dress

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includes, at a minimum (a) the use of a particular typeface, style, and visual

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arrangement in displaying the lyrics; (b) the use of particular colors to display lyrics,

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namely white lyrics changing to violet lyrics, set against a black background; and (c)

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the use of a particular style in displaying entry cues for singers, namely a series of
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vanishing rectangles to indicate the cue.
65. The Trade Dress has been in use continuously and substantially exclusively by SlepTone since the onset of production on compact discs more than 20 years ago.
66. The individual and collected elements of the Trade Dress have acquired secondary

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meaning as an indicator of Slep-Tone as a source, effectively functioning as a visual
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trademark.

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67. The Trade Dress serves to distinguish Slep-Tone’s tracks from the tracks of its

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competitors, such that persons who are even minimally frequent consumers of

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karaoke entertainment services such as those provided by these Defendants are

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capable of identifying a particular karaoke track as originating with Slep-Tone simply
COMPLAINT – Page 15

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

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68. The elements of the Trade Dress represent specific design choices by Slep-Tone; they
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are but one of many ways to convey the information necessary to permit a karaoke
singer to be appropriately supported in his or her performance.
69. Slep-Tone’s many competitors are not required to use any element of the Trade Dress
to accomplish the cueing function, and indeed all of Slep-Tone’s known competitors

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are known to use other trade dress in accomplishing the cueing function.
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INVESTIGATION OF THE DEFENDANTS’ ACTIVITIES

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70. SLEP-TONE has conducted an extensive investigation of the operations of each of
the Defendants, including by attending one or more public karaoke shows put on by
each of the Defendants.

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71. Each of the Defendants has possessed, used, or authorized the use and display of
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17

unauthorized counterfeit goods bearing the Sound Choice Marks, or has provided,

18

advertised, or authorized from the provision of services in connection with the Sound

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Choice Marks without authorization or tolerance from—or indeed notice to—SLEP-

20

TONE.

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72. Each of the Defendants has provided services in connection with the Sound Choice
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Marks, and has advertised the Defendant’s provision of or availability to provide
karaoke services in connection with which the Sound Choice Marks have been used.

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73. Each of the Defendants has knowingly benefited from the possession, use, and

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display of unauthorized counterfeit goods bearing the Sound Choice Marks.

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COMPLAINT – Page 16

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74. The activities of each defendant are not isolated or sporadic occurrences, but are
instead regular activities undertaken over a long period of time, in some cases months

3

or years, depending upon when the activity was commenced.
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5

75. Each of the Defendants’ acts of infringement is of a commercial nature, in that they

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engaged in the acts with the transfer of money from one party to another as the

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principal motivation for providing the services.

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76. Each of the Defendants employs a library of karaoke music that contains

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unauthorized counterfeit goods bearing the Sound Choice Marks, including media10
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shifted karaoke tracks.
77. None of the Defendants have obtained the permission of SLEP-TONE to conduct
media-shifting of SLEP-TONE’s music from original discs to an alternative medium,
such as a computer hard drive.

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78. None of the Defendants have notified SLEP-TONE of their intent to conduct media16
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shifting of SLEP-TONE’s music for commercial purposes.
79. None of the Defendants have submitted to and passed an audit of their karaoke
systems for the purposes of verifying their compliance with SLEP-TONE’s mediashifting policy.

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80. The Defendants’ piracy of accompaniment tracks is not limited to SLEP-TONE’s
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tracks.
81. Each of the Defendants has committed acts of piracy of other manufacturers’

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accompaniment tracks, utilizing the words, names, symbols, and other devices

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associated with those manufacturers, upon information and belief without

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authorization.
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82. Each of the Defendants knew, or should have known under the circumstances, that
they were obtaining and using counterfeit karaoke tracks.

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JOINDER OF THESE DEFENDANTS IN THIS ACTION
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83. Each of the unauthorized counterfeit copies of SLEP-TONE’s karaoke tracks found in

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each of the Defendants’ libraries originated from a common source, namely, SLEP-

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TONE’s master karaoke recordings.

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84. Each of the Defendants’ physical ability to play unauthorized counterfeit copies of

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SLEP-TONE’s karaoke tracks is predicated upon access, either directly or through
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one or more intermediaries, to SLEP-TONE’s original karaoke recordings.
85. But for their direct or indirect access to those original recordings, none of these
Defendants would have been able to commit acts of infringement in the manner in
which these Defendants have done so.

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86. Though created through unauthorized duplication, the counterfeit karaoke tracks
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obtained or made by the Defendants all originated, directly or indirectly in an

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unbroken sequence, from the same ultimate source, namely, from compact discs sold

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by the Plaintiff and made from master recordings belonging to the Plaintiff, and not

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from original recordings made by others and labeled with the Sound Choice Marks.

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87. Upon information and belief, each of the Defendants has engaged in the sharing of
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karaoke accompaniment tracks with at least one other Defendant or with the same

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nonparty source as at least one other Defendant, such that their infringement is, at

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least in part, commonly enabled on a direct basis by the same primary source

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material.

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COMPLAINT – Page 18

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88. Upon information and belief, each of the KJ Defendants has sought to serve the same
consumers of karaoke services (namely, venues such as bars and restaurants) as other

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Defendants, such that the KJ Defendants’ activities are related by a common,
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collective, and linked purpose.
89. Additionally, the Defendants have collectively acted through pirated material to serve
the market for karaoke services in the Chicago, IL area in a manner that has
artificially and unfairly reduced the going rates for such services.

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90. Because of the reduced rates for services, the Plaintiff’s legitimate customers—and
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thus the Plaintiff—have received less revenue for their participation in that market

12

than that to which they would otherwise have received, but for the Defendants’

13

collective pirate action.

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91. As such, the Plaintiff’s right to relief, as stated in the paragraphs below, ultimately

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arises out of the same series of transactions and occurrences.
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92. This action raises substantial questions of law and fact common to all of the
defendants hereto.

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DAMAGES
93. The Defendants’ unauthorized use of the Sound Choice Marks has damaged the

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Plaintiff both in the aggregate and individually.
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23

94. Individually, each of the Defendants has damaged the Plaintiff in an amount of at

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least $25,000 for each karaoke system the Defendant operates. This figure is based

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upon the estimated minimum cost of acquiring, through legitimate means, a single set

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of copies of the material that each of the Defendants has pirated.

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COMPLAINT – Page 19

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95. Upon information and belief, in the aggregate, by exerting illegitimate and unfair
pressure upon the market for karaoke services in this area through the use of pirated

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material belonging to the Plaintiff and to other manufactures, the Defendants have
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jointly cost the Plaintiff in excess of $500,000 in revenue from the legitimate sources
crowded out of the market by the Defendants’ piracy.

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FIRST CLAIM FOR RELIEF
TRADEMARK AND/OR TRADE DRESS INFRINGEMENT

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96. Plaintiff SLEP-TONE realleges each and every allegation set forth in the foregoing
paragraphs, as though fully set forth herein, and incorporates them herein by
reference.

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97. Each of the Defendants used, or authorized or directly benefited from the use of, a
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reproduction, counterfeit, or copy of the Sound Choice Marks, or of the Trade Dress,

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or both, in connection with the provision of services including karaoke services, by

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manufacturing or acquiring the reproduction, counterfeit, or copy of the Sound

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Choice Marks, or of the Trade Dress, or both and by displaying the reproduction,

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counterfeit, or copy of the Sound Choice Marks, or of the Trade Dress, or both during
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the provision of those services.
98. The Defendants’ use of the Sound Choice Marks, or of the Trade Dress, or both was
“in commerce” within the meaning of the Trademark Act of 1946 as amended.
99. Plaintiff SLEP-TONE did not license any of the Defendants to manufacture or
acquire reproductions, counterfeits, or copies, or to use the Sound Choice Marks, or

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the Trade Dress, or both, in connection with the provision of their services.
100.

The Defendants’ use of the Sound Choice Marks, or of the Trade Dress, or

both is likely to cause confusion, or to cause mistake, or to deceive the Defendants’
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customers and patrons into believing that the Defendants’ services are being provided
with the authorization of the Plaintiff and that the Defendants music libraries contain

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bona fide Sound Choice accompaniment tracks.
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101.

The acts of each of the Defendants were willful.

102.

The Plaintiff has been damaged by infringing activities of each of the

Defendants.
103.

Unless enjoined by the Court, the Defendants’ infringing activities as

9

described above will continue unabated and will continue to cause harm to the
10
11

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

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104.

Plaintiff SLEP-TONE realleges each and every allegation set forth in the

15

foregoing paragraphs, as though fully set forth herein, and incorporates them herein

16

by reference.

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105.

On each occasion when they caused a SLEP-TONE accompaniment track to

18

be played during a karaoke show, the Defendants displayed the Sound Choice Marks,
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or the Trade Dress, or both in connection with the Defendants’ karaoke services.
106.

The display of the Sound Choice Marks, the Trade Dress, or both 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 SLEPTONE sponsored or approved the Defendants’ services and commercial activities.

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107.

The display of the Sound Choice Marks, the Trade Dress, or both is also likely

to cause confusion, or to cause mistake, or to deceive those present during the

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display, in that those present are likely to be deceived into believing, falsely, that the
works being performed were sold by SLEP-TONE and purchased by the Defendants.

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108.

The Defendants’ use of the Sound Choice Marks, the Trade Dress, or both in

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5

this fashion would have inured to the benefit of the Plaintiff if the Defendants had

6

legitimately acquired genuine Sound Choice discs instead of counterfeiting them or

7

acquiring the counterfeit goods, in that the Plaintiff would have received revenue

8

from such sales.

9

109.

Because SLEP-TONE has been denied this revenue, it has been damaged by

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the Defendants’ uses.
110.

On each occasion when they caused an accompaniment track pirated from

another manufacturer to be played during a karaoke show, the Defendants displayed
the words, names, and symbols of the other manufacturer in connection with the

15

Defendant’s karaoke services
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111.

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

18

symbols falsely designates the other manufacturer as the origin of the pirated track,

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when in fact the pirated copy was made or acquired by the Defendants.

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112.

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

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or to cause mistake or to deceive those present during the display, in that those
22
23

present are likely to be deceived into believing, falsely, that the pirated tracks are

24

legitimate, authorized, and authentic materials that the Defendant acquired in a

25

legitimate manner.

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113.

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
COMPLAINT – Page 22

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present are likely to be deceived into believing, falsely, that the works being
performed were sold by those manufacturers and purchased by the Defendants.

3

114.

The Defendants’ use of the false designations of origin in this fashion

4
5

damages the Plaintiff by enabling the Defendants to provide karaoke services at a

6

lower cost than persons who acquire those materials legitimately, including the

7

Plaintiff’s legitimate customers.

8

115.

The consequential denial of revenue from a legitimate market for the

9

Plaintiff’s customers’ services prevents the Plaintiff’s customers from making
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purchases of material from the Plaintiff and is thus a denial of revenue to the Plaintiff.
116.

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

Defendant’s false designations of origin relating to other manufacturers.
117.

Unless enjoined by the Court, the Defendants’ unfair competition activities as

15

described above will continue unabated and will continue to cause harm to the
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17

Plaintiff.
THIRD CLAIM FOR RELIEF
UNDER THE ILLINOIS DECEPTIVE TRADE PRACTICES ACT

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118.

Plaintiff SLEP-TONE realleges each and every allegation set forth in the

21

foregoing paragraphs, as though fully set forth herein, and incorporates them herein

22

by reference.

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119.

Each Defendant has engaged in acts of infringement of the Sound Choice

Marks and the Trade Dress, in derogation of SLEP-TONE’s common-law and

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statutory rights in those marks.
120.

Each Defendant’s acts of infringement occurred during the conduct of trade or

commerce.
COMPLAINT – Page 23

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121.

Each Defendant’s acts of infringement constitute unfair or deceptive acts or

practices within the meaning of 815 ILCS 510/1 et seq.

3

122.

As a direct and proximate result of each Defendant’s acts of infringement,

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5

SLEP-TONE has suffered a pecuniary loss, to wit: the loss of revenue associated

6

with sales or distribution of compact discs to karaoke jockeys, commensurate with the

7

demand for the contents of those discs, which revenue would have been received but

8

for the Defendants’ acts in creating or acquiring counterfeits of SLEP-TONE’s

9

accompaniment tracks.
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123.

As such, SLEP-TONE has been damaged and is likely to be further damaged

12

by a deceptive trade practice of each Defendant within the meaning of 815 ILCS

13

510/3.

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PRAYER FOR RELIEF

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WHEREFORE, Plaintiff SLEP-TONE prays for judgment against each of the Defendants
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severally and that the Court:
A. Find that each of the Defendants has committed acts of infringement, including but
not limited to counterfeiting, of the federally registered Sound Choice Marks, of the
Trade Dress, or of both;

21

B. Find that each of the Defendants has engaged in unfair competition against Plaintiff
22
23

SLEP-TONE in violation of 15 U.S.C. § 1125(a).

24

C. Find that each of the Defendants has committed unfair and deceptive trade practices

25

under Illinois law and in violation of the Illinois Consumer Fraud and Deceptive

26

Business Practices Act;

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D. Enter judgment against each of the Defendants and in favor of SLEP-TONE;
COMPLAINT – Page 24

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E. Find the that Defendants’ activities were in all respects conducted willfully and for
profit;

3

F. Award to SLEP-TONE the Defendants’ profits and the damages sustained by SLEP4
5

TONE because of the Defendants’ conduct in infringing the Sound Choice Marks, the

6

Trade Dress, or both, or, in the alternative, statutory damages per trademark infringed

7

by counterfeiting in an amount up to two million dollars per mark infringed, per

8

Defendant and in any event in an amount not less than $25,000 for each Karaoke

9

system operated by the Defendants;
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11

G. Award to SLEP-TONE the Defendants’ profits and the damages sustained by SLEP-

12

TONE because of the Defendants’ acts of unfair competition under 15 U.S.C. §

13

1125(a) in an amount not less than $500,000, jointly and severally upon the collective

14

conduct of the Defendants;

15

H. Award to SLEP-TONE treble, punitive, or otherwise enhanced damages, as available,
16
17

for the Defendants’ acts of willful infringement;

18

I. Order all computer disks, drives, or other media belonging to any of the Defendants,

19

which media contain illegal counterfeits of the Sound Choice Marks, or of the Trade

20

Dress, or of marks belonging to other manufacturers, to be delivered up for

21

destruction;
22
23

J. Grant SLEP-TONE preliminary and permanent injunctive relief against further

24

infringement of the Sound Choice Marks and the Trade Dress by the Defendants;

25

K. Grant SLEP-TONE preliminary and permanent injunctive relief against further false

26

designations of origin by the Defendants with respect to words, names, and symbols

27

associated with other manufacturers;
COMPLAINT – Page 25

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L. Award SLEP-TONE its costs of suit and attorney’s fees, to the extent not awarded
above; and

3

M. Grant SLEP-TONE such other and further relief as justice may require.
4
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6

Respectfully submitted this the 23rd day of July 2012.

7

BRICK GENTRY P.C.

8

By__/s/Brian J. Laurenzo________________
BRIAN J. LAURENZO, # 6197605
6701 Westown Parkway, Suite 100
West Des Moines, IA 50266
Tel: 515-274-1450
Fax: 515-274-1488
brian.laurenzo@brickgentrylaw.com
Attorney for Plaintiff
Slep-Tone Entertainment Corporation

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COMPLAINT – Page 26


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