Courthouse News Service

Transcription

1 Case 2:33-av Document 5109 Filed 03/03/2009 Page 1 of 21 RONALD S. BIENSTOCK, ESQ. BIENSTOCK & MICHAEL, P.C. Continental Plaza 411 Hackensack Avenue, 7 th Floor Hackensack, New Jersey Telephone: (201) Facsimile: (201) Attorney for Plaintiff PEAVEY ELECTRONICS CORPORATION UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW JERSEY PEAVEY ELECTRONICS ) CORPORATION, a Delaware ) Corporation, ) ) Plaintiff, ) ) ) CASE NO.: v. ) ) BEHRINGER INTERNATIONAL ) GMBH, a German Corporation,, ) BEHRINGER SPEZIELLE ) STUDIOTECHNIK GMBH, ) a German Corporation,, ) BEHRINGER HOLDINGS (PTE) ) LTD., a Singapore Company, ) RED CHIP COMPANY LTD., ) a British Virgin Islands corporation, ) BEHRINGER USA,, INC., ) a Washington Corporation, ) ) Defendants. ) ) COMPLAINT AND DEMAND FOR JURY TRIAL Courthouse News Service Plaintiff PEAVEY ELECTRONICS CORPORATION ( Peavey ), by its undersigned counsel, alleges and hereby complains against BEHRINGER INTERNATIONAL GMBH ( Behringer Int l ), BEHRINGER SPEZIELLE STUDIOTECHNIK GMBH ( Behringer GMBH ), BEHRINGER HOLDINGS (PTE) LTD ( Behringer Holdings ), RED CHIP - 1 -

2 Case 2:33-av Document 5109 Filed 03/03/2009 Page 2 of 21 COMPANY LTD. ( Red Chip ), and BEHRINGER USA, INC. ( Behringer USA ) (collectively Defendants ) as follows: NATURE OF THE ACTION 1. This is an action at law for federal and common law trademark infringement, false designation of origin, trademark dilution and unfair competition arising under the laws of the United States for Peavey s United States Trademark Registration No. 3,186,341 (the 341 Mark ). 2. This is also an action for patent infringement arising under the patent laws of the United States, Title 35, United States Code, for Peavey s United States Patent Nos. 5,737,428 and D572,302 (the 428 Patent and the 302 Patent, respectively). THE PARTIES 3. Peavey is a corporation organized and existing under the laws of Delaware with its principle place of business at 5022 Hartley Peavey Drive, Meridian, MS 39305, and is doing business in this district. 4. Peavey is one of the largest, most diversified, independently owned suppliers of musical instruments and professional sound equipment in the world. Peavey is a major manufacturer of guitars, amplifiers, speakers, mixers, professional audio equipment, other electronic audio-enhancement equipment, and related products. Peavey distributes and sells its products worldwide, in interstate commerce and in this district

3 Case 2:33-av Document 5109 Filed 03/03/2009 Page 3 of Upon information and belief, Defendants manufacture, offer for sale, sell, and/or distribute amplifiers, speakers, mixers, professional audio equipment, other electronic audioenhancement equipment, and related products. 6. Upon information and belief, Behringer Int l and Behringer GMBH are companies organized and existing under the laws of Germany with their principal place of business at Hanns-Martin-Schleyer-Str , Willich, Nordrhein-Westfalen, Germany, and each conducts business themselves, or through their agents, in this district. Behringer Int l and Behringer GMBH promote, advertise, distribute and sell their products worldwide, including in the state of New Jersey. Behringer Int l and Behringer GMBH products, including those at issue here, have been purchased and sold in the state of New Jersey and in this judicial district. 7. Upon information and belief, Behringer Holdings is a company organized and existing under the laws of Singapore, with its principal place of business at 1 Kim Seng Promenade #08-08, Great World City West Tower, Singapore , and conducts business itself, or through its agents, in this district. 8. Upon information and belief, Red Chip is a corporation organized and existing under the laws of the British Virgin Islands, with a principal place of business at Trident Chambers Wickhams Cay, P.O. Box 146, Road Town, Tortola, British Virgin Islands, and conducts business itself, or through its agents, in this district. 9. Upon information and belief, Behringer USA is a company organized and existing under the laws of the State of Washington with a principal place of business at North Creek Parkway, Suite 200, Bothell, WA 98011, and conducts business itself, or through its agents, in this district

4 Case 2:33-av Document 5109 Filed 03/03/2009 Page 4 of Upon information and belief, Behringer Holdings is affiliated with and/or controls Behringer USA. Behringer Holdings and Behringer USA offer for sale, sell, import and/or distribute products which infringe ( Defendants Infringing Products ) the 341 Mark, the 428 Patent and the 302 Patent (collectively, Peavey s Intellectual Property ) in this district, among others. 11. Upon information and belief, Behringer Int l is affiliated with and/or controls Behringer USA. Behringer Int l and Behringer USA offer for sale, sell, import and/or distribute Defendants Infringing Products in this district, among others. 12. Upon information and belief, Red Chip is, and has been, an intellectual property holding company for companies including, not limited to, Behringer USA and Behringer Int l (collectively the Behringer Group ). 13. Upon information and belief, intellectual property owned by Red Chip, which is incorporated on and apart of Defendants Infringing Products, are offered for sale, sold, imported and/or distributed in this district, among others, by the Behringer Group. JURISDICTION AND VENUE 14. This action arises under the federal Trademark Act, 15 U.S.C et seq., the U.S. Patent Act, 35 U.S.C. 271 et seq., and related state statutes and the common law. This Court has jurisdiction under Section 39 of the Lanham Act, 15 U.S.C. 1121, and pursuant to 28 U.S.C and 1338 (a) and (b). The Court has supplemental jurisdiction over all state and common law claims under 28 U.S.C Venue is proper in this judicial district under 28 U.S.C 1391 and 28 U.S.C. 1400(b)

5 Case 2:33-av Document 5109 Filed 03/03/2009 Page 5 of This Court has personal jurisdiction over each Defendant because each of the named Defendants has, directly or indirectly, conducted and/or solicited business within the State of New Jersey, and within this judicial district, and/or otherwise purposefully availed itself of the benefits of this forum. The claims set forth herein arise out of activities relating to such actual and/or solicited business activities and/or benefits. FACTS COMMON TO ALL COUNTS Defendants Documented Practice of Copying Other Companies Products 17. Upon information and belief, Defendants have a long-established and documented (i.e., Mackie Designs, Inc. v. Behringer Spezielle Studio-Technick Gmbh, Case No. C R; Mesa Boogie, Ltd. v. Behringer USA and Behringer Holdings, Case No. 3:05-cv JL) history of intentionally copying the products of other companies. It is clear that Defendants do this in order to avoid the time-consuming and expensive tasks of developing such original products themselves. Such copying obviously results in the Defendants improperly trading off of and benefiting from other companies which have spent substantial sums of money in order to develop, manufacture, market and sell their products. As fully set forth below, Peavey has been the target of one of the Defendants most concerted copying efforts. Peavey s Intellectual Property and Defendants Infringing Products The 341 Mark 18. Peavey has acquired trademark rights to the 341 Mark, both at common law and further by virtue of registration with the United States Patent and Trademark Office, U.S. Trademark Registration No. 3,186,

6 Case 2:33-av Document 5109 Filed 03/03/2009 Page 6 of The 341 Mark registration covers musical instruments, namely, guitars, in International Class 15, and consists of a two-dimensional configuration of a guitar headstock. 20. Peavey has continuously and extensively used its registered and common law 341 Mark in commerce since By way of example, Peavey has used the 341 Mark on electric guitar models, including, but not limited to, the T-60, T-25, T-30, T-15, T-27, Peavey Cropper Classic, and electric bass guitar models such as the T Peavey has extensively advertised and promoted the 341 Mark. Moreover, Peavey has invested substantial time, energy and resources in the development of the 341 Mark. 22. As a result of Peavey s continuous and exclusive use of the 341 Mark, the 341 Mark has acquired a high degree of secondary meaning and goodwill. Further the 341 Mark has become famous within the meaning of 15 U.S.C (c). 23. Upon information and belief, Defendants manufacture, offer for sale, sell, import and distribute in the United States, as well as in this district, among other things, products which incorporate the 341 Mark, including, but not limited to: BEHRINGER METALIEN iaxe629- MA USB GUITAR, BEHRINGER iaxe629 METALIEN USB GUITAR, BEHRINGER iaxe629-bkls METALIEN USB GUITAR, BEHRINGER METALIEN GUITAR PACK GPK833BK, and BEHRINGER METALIEN GUITAR PACK GPK836BK (collectively, Defendants 341 Infringing Products ). 24. Defendants are not now, and never have been, authorized by Peavey to use the 341 Mark, nor have Defendants ever been entitled to use the 341 Mark in connection with any product, business, or service. 25. Upon information and belief, Defendants 341 Infringing Products are likely to cause confusion, mistake or deception to consumers. Specifically, consumers in the relevant - 6 -

7 Case 2:33-av Document 5109 Filed 03/03/2009 Page 7 of 21 market are likely to believe that Defendants 341 Infringing Products are authorized, sponsored or otherwise approved by Peavey when in fact they are not. Such confusion is likely to occur within this district, among others. 26. Peavey has been and continues to be injured by Defendants unlawful acts within this district, among others. 27. Upon information and belief, Defendants have performed the acts complained herein willfully and with knowledge of the fact that they would cause confusion, mistake or deception on the part of consumers; further, Defendants actions were undertaken with the intent to dilute and unfairly trade upon Peavey s goodwill in the 341 Mark. Peavey s 302 Patent 28. The United States Patent and Trademark Office duly and legally issued patent number D572,302, entitled Guitar Headstock, on July 1, 2008, to Hartley Peavey ( HP ) (founder and CEO of Peavey), who subsequently assigned the 302 Patent to Peavey. HP assigned all right, title and interest in the 302 Patent to Peavey, including the right to sue for all past, present and future acts of infringement. 29. The 302 Patent is an ornamental design for a guitar headstock. 30. Peavey has complied with 35 U.S.C. 287, and has placed notice of the 302 Patent on all products that incorporate the 302 Patent. 31. Peavey has used, and continues to use, the 302 Patent as a component on electric guitar and electric bass models. 32. Upon information and belief, Defendants manufacture, offer for sale, sell, import and/or distribute in the United States, including in this district, among other things, products which incorporate the 302 Patent, including, but not limited to: BEHRINGER METALIEN - 7 -

8 Case 2:33-av Document 5109 Filed 03/03/2009 Page 8 of 21 iaxe629-ma USB GUITAR, BEHRINGER iaxe629 METALIEN USB GUITAR, BEHRINGER iaxe629-bkls METALIEN USB GUITAR, BEHRINGER METALIEN GUITAR PACK GPK833BK, and BEHRINGER METALIEN GUITAR PACK GPK836BK. 33. Defendants are not now, and never have been, authorized by Peavey to use the 302 Patent, nor have Defendants ever been entitled to use the 302 Patent in connection with any product, business, or service. 34. To date, Defendants continue to make, use, sell and offer to sell products which incorporate the 302 Patent. 35. Upon information and belief, Defendants have been aware of the existence of the 302 Patent, making the acts of infringement set forth above deliberate and willful, thus rendering this case exceptional under 35 U.S.C The acts of infringement set forth above will cause Peavey irreparable harm for which it has no adequate remedy at law, unless the Defendants are preliminarily and permanently enjoined by this Court. Peavey s 428 Patent 37. This case also involves a patented feature for audio mixers (referred to herein as mixers ). In general, a mixer or mixing system electronically blends, routes and enhances sound from a number of different sources and produces a combined sound output. Mixers are used in a wide variety of applications. For example, an audio mixer is an important part of any professional audio system, as well as of any sophisticated recording system. Mixers are also used in live presentations, for example at concerts or in sports arenas

9 Case 2:33-av Document 5109 Filed 03/03/2009 Page 9 of Since at least 1972, Peavey has and continues to develop, manufacture, sell and support high-quality, reasonably priced audio mixers, mixing systems and related products. Peavey has sold thousands of audio mixers to consumers worldwide. 39. On April 7, 1998, the United States Patent and Trademark Office duly and legally issued to John H. Roberts ( Roberts ) United States Patent No. 5,737,428, entitled Circuit For Providing Visual Indication of Feedback. Roberts subsequently assigned all right, title and interest in the 428 Patent to Peavey, including the right to sue for all past, present and future acts of infringement. 40. Claims covered under the 428 Patent include a circuit which provides for the visual indication of undesirable feedback in an audio circuit. This visual indication allows an audio engineer or performer to quickly and accurately locate the frequency of the feedback and adjust the mixer, thereby eliminating such undesirable feedback. 41. Peavey has complied with 35 U.S.C. 287, and has placed notice of the 428 Patent on all products that incorporate the 428 Patent. 42. Peavey s 428 Patent is a feature for electronic mixers which Peavey calls a Feedback Locating System or FLS (the Feedback Locating System ) ( FLS is a registered trademark of Peavey, U.S. Trademark Registration No. 2,063,984). Peavey s current models which include the Feedback Locating System are the XR8600, XR8300, QF215, QF131 and the Escort Upon information and belief, Defendants manufacture, use, sell, and/or import into the United States products which infringe one or more claims of the 428 Patent by incorporating the Feedback Locating System feature, which Defendants describe as a Feedback - 9 -

10 Case 2:33-av Document 5109 Filed 03/03/2009 Page 10 of 21 Detection System ( Feedback Detection System ) (Defendants also refer to this feature as FBQ ). 44. Upon information and belief, Defendants Feedback Detection System achieves the same results as Peavey s Feedback Locating System, and both incorporate one or more claims of the 428 Patent. 45. Upon information and belief, Defendants manufacture, use, sell and/or import into the United States the following products which infringe on one or more claims of the 428 Patent by way of the Feedback Detection System feature: a. STUDIO MIXERS: EURODESK SX2442FX, EURODESK SX3242FX. b. PREMIUM MIC/ LINE MIXER SERIES: XENYX 1832FX, XENYX 1222FX. c. POWERED MIXERS: EUROPOWER PMP980S, EUROPOWER PMP960M, EUROPOWER PMP 1280S, EUROPOWER PMP 5000, EUROPOWER PMP 3000, EUROPOWER PMP 1000, EUROPOWER PMP 518M. d. PORTABLE PA SYSTEM: EUROPORT EPA 900. e. EQUALIZERS AND MULTIPROCESSORS: ULTRAGRAPH PRO FBQ6200, ULTRAGRAPH PRO FBQ1502, ULTRAGRAPH DIGITAL DEQ1024, ULTRAGRAPH DIGITAL DEQ3102, MINIFBQ FBQ800. f. ACOUSTIC/PERFORMANCE AMPLIFICATION: ULTRACOUSTIC ACX1800, ULTRACOUSTIC ACX900, ULTRACOUSTIC ACX450. g. BASS AMPLIFICATION: ULTRABASS BXL3000A, ULTRABASS BXL1800A, ULTRABASS BXL900A, ULATRABASS BXL450A,

11 Case 2:33-av Document 5109 Filed 03/03/2009 Page 11 of 21 ULTRABASS BXL3000, ULTRABASS BXL1800, ULTRABASS BXL900, ULTRABASS BXL450, ULTRABASS BXR 1800H. h. KEYBOARD AMPLIFICATION: ULTRATONE K900FX, ULTRATONE K450FX, ULTRATONE K3000FX, ULTRATONE K1800FX. i. DISCONTINUED MODELS: EURORACK UB1222FX-PRO, EURORACK UB1832FX-PRO, EUROPOWER PMH5000, EUROPOWER PMH3000, EUROPOWER PMH1000, EUROPOWER PMH 880S, EUROPOWER PMH660M, EUROPOWER PMH518M. 46. To date, Defendants continue to make, use, sell and offer to sell products which incorporate Peavey s 428 Patent. COUNT ONE FEDERAL TRADEMARK INFRINGEMENT 47. Peavey repeats and realleges each and every allegation in paragraphs 1 through 46, inclusive, of this Complaint with the same force and effect as if set forth herein. 48. Defendants, without Peavey s consent, have and do manufacture, advertise, distribute, sell and offer for sale Defendants 341 Infringing Products in interstate commerce throughout the United States, thereby infringing Peavey s 341 Mark. 49. Upon information and belief, the aforesaid acts were undertaken willfully and with the intent of causing confusion, mistake or deception as to the source, origin or sponsorship of Defendants 341 Infringing Products, and to falsely mislead consumers into believing that Defendants 341 Infringing Products originate from, are affiliated with or connected with, or are licensed, sponsored, authorized, approved or sanctioned by, Peavey, all to the detriment and damage of Peavey s reputation, goodwill and sales

12 Case 2:33-av Document 5109 Filed 03/03/2009 Page 12 of Defendants acts alleged herein constitute infringement of Peavey s registered 341 Mark, in violation of 15 U.S.C et seq. 51. Defendants unlawful actions have caused and are continuing to cause actual damages to Peavey in an amount which is difficult to quantify, but are believed to be in excess of one million dollars. 52. Defendants have engaged in and continue to engage in these activities knowingly and willfully, without Peavey s authorization or consent, so as to justify the assessment of treble damages and attorney s fees under 15 U.S.C Defendants acts of trademark infringement are causing immediate and irreparable injury to Peavey and, unless enjoined by this Court, will continue to cause Peavey to sustain irreparable damage, loss and injury, for which Peavey has no adequate remedy at law. COUNT TWO FEDERAL TRADEMARK DILUTION 54. Peavey repeats and realleges each and every allegation in paragraphs 1 through 53, inclusive, of this Complaint with the same force and effect as if set forth herein. 55. Prior to Defendants use of the 341 Mark, Peavey s 341 Mark had become distinctive and famous, within the meaning of 15 U.S.C (c). 56. Upon information and belief, Defendants are and have been engaged in the commercial use of the 341 Mark in interstate commerce. 57. Defendants actions are diluting the distinctive quality of the famous 341 Mark, and are injuring the business reputation of Peavey, in violation of Peavey s rights under 15 U.S.C (c)

13 Case 2:33-av Document 5109 Filed 03/03/2009 Page 13 of Defendants unauthorized use of the 341 Mark dilutes, blurs, and tarnishes the distinctiveness of the 341 Mark, and was done with the willful intent to trade on Peavey s reputation and/or to cause dilution of the 341 Mark. 59. Defendants unlawful actions have caused and are continuing to cause actual damages to Peavey in an amount which is difficult to quantify, but are believed to be in excess of one million dollars. 60. Defendants have engaged in and continue to engage in these activities knowingly and willfully, without Peavey s authorization or consent, so as to justify the assessment of treble damages and attorney s fees under 15 U.S.C Defendants acts of dilution, unless enjoined by this Court, will continue to cause Peavey to sustain irreparable damage, loss and injury, for which Peavey has no adequate remedy at law. COUNT THREE FEDERAL PATENT INFRINGEMENT (THE 428 PATENT) 62. Peavey repeats and realleges each and every allegation in paragraphs 1 through 61, inclusive, of this Complaint with the same force and effect as if set forth herein. 63. Defendants have infringed, and continue to infringe, on the 428 Patent by making, using, selling and/or offering to sell products that infringe the 428 Patent, in violation of 35 U.S.C Upon information and belief, Defendants have been aware of the existence of the 428 Patent, making the acts of infringement set forth above deliberate and willful, thus rendering this case exceptional under 35 U.S.C By reason of the acts of infringement by Defendants, Peavey has suffered, is suffering, and will continue to suffer damages in an amount to be proven at trial. Past and

14 Case 2:33-av Document 5109 Filed 03/03/2009 Page 14 of 21 continuing infringement by Defendants irreparably injured Peavey and will continue to irreparably injure Peavey absent injunctive relief. 66. The acts of infringement set forth above will cause Peavey irreparable harm for which it has no adequate remedy at law, unless the Defendants are preliminarily and permanently enjoined by this Court. COUNT FOUR FEDERAL PATENT INFRINGEMENT (THE 302 PATENT) 67. Peavey repeats and realleges each and every allegation in paragraphs 1 through 66, inclusive, of this Complaint with the same force and effect as if set forth herein. 68. Defendants have infringed, and continue to infringe, on the 302 Patent by making, using, selling and/or offering to sell products that infringe the 302 Patent, in violation of 35 U.S.C Upon information and belief, Defendants have been aware of the existence of the 302 Patent, making the acts of infringement set forth above deliberate and willful, thus rendering this case exceptional under 35 U.S.C By reason of the acts of infringement by Defendants, Peavey has suffered, is suffering, and will continue to suffer damages in an amount to be proven at trial. Past and continuing infringement by Defendants irreparably injured Peavey and will continue to irreparably injure Peavey absent injunctive relief. 71. Upon information and belief, Defendants will continue infringing the 302 Patent unless enjoined by this Court

15 Case 2:33-av Document 5109 Filed 03/03/2009 Page 15 of 21 COUNT FIVE FALSE DESIGNATION AND UNFAIR COMPETITION (FEDERAL) 72. Peavey repeats and realleges each and every allegation in paragraphs 1 through 71, inclusive, of this Complaint with the same force and effect as if fully set forth herein. 73. Defendants have been and continue to manufacture, advertise, distribute, sell and offer for sale Defendants Infringing Products in interstate commerce throughout the United States. 74. Defendants unlawful and improper actions in connection with Defendants Infringing Products, as set forth above, are likely to cause confusion, mistake or deception as to the source, origin or sponsorship of Defendants Infringing Products, and to falsely mislead the public and trade into believing that Defendants Infringing Products originate from, are affiliated or connected with, or are licensed, sponsored, authorized, approved or sanctioned by, Peavey, all to the detriment and damage of Peavey s reputation, goodwill and sales. 75. Defendants actions constitute false designation of origin and unfair competition in commerce, in violation of the Lanham Act, 15 U.S.C (a). 76. Defendants unlawful actions have caused and are continuing to cause actual damages to Peavey in an amount which is difficult to quantify, but are believed to be in excess of one million dollars. 77. Defendants have engaged in and continue to engage in these activities knowingly and willfully, without Peavey s authorization or consent, so as to justify the assessment of treble damages and attorney s fees under 15 U.S.C

16 Case 2:33-av Document 5109 Filed 03/03/2009 Page 16 of Defendants conduct is causing immediate and irreparable injury and, unless enjoined by this Court, will continue to cause Peavey to sustain irreparable damage, loss and injury, for which Peavey has no adequate remedy at law. COUNT SIX TRADEMARK INFRINGEMENT, UNFAIR COMPETITION AND MISAPPROPRIATION (COMMON LAW) 79. Peavey repeats and realleges each and every allegation in paragraphs 1 through 78, inclusive, of this Complaint with the same force and effect as if set forth herein. 80. Defendants have manufactured, advertised, offered for sale, sold, and distributed in commerce Defendants 341 Infringing Products, without Peavey s consent, thereby infringing the 341 Mark. 81. Defendants aforesaid actions, as set forth above, create a likelihood of confusion as to source, sponsorship or legitimacy of the Defendants 341 Infringing Products; misappropriate and trade upon the fine reputation of Peavey in the 341 Mark, thereby injuring the reputation and goodwill of Peavey; and unjustly divert from Peavey to Defendant the benefits arising therefrom. 82. Defendants unlawful actions constitute trademark infringement, unfair competition and misappropriation, as proscribed by common law. 83. Defendants acts of trademark infringement, unfair competition and misappropriation have caused and are continuing to cause actual damages to Peavey in an amount which is difficult to quantify, but are believed to be in excess of one million dollars

17 Case 2:33-av Document 5109 Filed 03/03/2009 Page 17 of Defendants have engaged and continue to engage in this activity knowingly and willfully, so as to justify the assessment of increased and punitive damages against it, in an amount to be determined at trial. 85. Defendants acts of trademark infringement, unfair competition and misappropriation, unless enjoined by this Court, will continue to cause Peavey to sustain irreparable damage, loss and injury, for which Peavey has no adequate remedy at law. COUNT SEVEN VIOLATION OF N.J.S.A. 56:4-1: TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION 86. Peavey repeats and realleges each and every allegation in paragraphs 1 through 85, inclusive, of this Complaint with the same force and effect as if set forth herein. 87. Defendants use of marks identical and/or confusingly similar to the 341 Mark falsely suggest an association with, or sponsorship, license or authorization from Peavey. 88. Defendants use of marks identical and/or confusingly similar to the 341 Mark was calculated to deceive or confuse the public and to enable Defendants to profit unjustly from the goodwill of Peavey and the 341 Mark. 89. Defendants aforesaid activities constitute infringement of a federally registered trademark, and unfair, unlawful, or fraudulent business practices in violation of N.J.S.A. 56: Defendants aforesaid violations of N.J.S.A. 56:4-1, have caused and are continuing to cause actual damages to Peavey in an amount which is difficult to quantify. 91. Defendants have profited by virtue of their wrongful acts

18 Case 2:33-av Document 5109 Filed 03/03/2009 Page 18 of Defendants violations of N.J.S.A. 56:4-1, unless enjoined by this Court, will continue to cause Peavey to sustain irreparable damage, loss and injury, for which Peavey has no adequate remedy at law. COUNT EIGHT VIOLATION OF N.J.S.A. 56: : STATE TRADEMARK DILUTION 93. Peavey repeats and realleges each and every allegation in paragraphs 1 through 92, inclusive, of this Complaint with the same force and effect as if set forth herein. 94. Defendants use of marks identical and/or confusingly similar to the 341 Mark has reduced its selling power and diminished its ability to serve as source and product identifiers. 95. Defendants actions are diluting and are likely to continue diluting the distinctive quality of the famous 341 Mark, tarnish and reduce the reputation and standing of the 341 Mark, and are injuring the business reputation of Peavey, in violation of Peavey s rights under N.J.S.A. 56: Defendants aforesaid violations of N.J.S.A. 56: have caused and are continuing to cause actual damages to Peavey in an amount which is difficult to quantify, but are believed to be in excess of one million dollars. 97. Defendants have engaged and continue to engage in this activity knowingly and willfully, so as to justify the assessment of increased and punitive damages against it, in an amount to be determined at trial. 98. Defendants violations of N.J.S.A. 56: , unless enjoined by this Court, will continue to cause Peavey to sustain irreparable damage, loss and injury, for which Peavey has no adequate remedy at law

19 Case 2:33-av Document 5109 Filed 03/03/2009 Page 19 of 21 PRAYER FOR RELIEF WHEREFORE, Peavey Electronics Corporation requests that this Court enter judgment against defendants Behringer International GmbH, Behringer Spezielle Studiotechnik GmbH, Behringer Holdings (PTE) Ltd., Red Chip Company Ltd., and Behringer USA, Inc. as follows: A. Preliminary and permanent injunctive relief, ordering that Defendants and their respective related persons, affiliates, officers, directors, shareholders, partners, members, principals, agents, servants, employees and attorneys (collectively, Defendants Affiliates ), and each of those persons acting in concert or participation with any of them, are enjoined and restrained from: i. Engaging in any conduct that infringes on Peavey s Intellectual Property; ii. Manufacturing, marketing, advertising, distributing or selling any products confusingly similar to the shape and appearance of the 341 Mark; iii. Using any other guitar headstock shapes which are likely to cause confusion or dilute the distinctiveness of the 341 Mark; iv. Engaging in any advertising that tends in a false or misleading manner to associate the 341 Mark and 302 Patent with Defendants; and v. Importing, making, using, selling, and/or offering for sale infringing products incorporating methods and/or claims in the 302 Patent. vi. Importing, making, using, selling, and/or offering for sale infringing products incorporating methods and/or claims in the 428 Patent. B. Preliminary and permanent injunctive relief ordering Defendants, in accordance with 15 U.S.C. 1118, to deliver to Peavey for destruction all goods and packaging in their possession or under their control using or bearing Peavey s Intellectual Property, and all

20 Case 2:33-av Document 5109 Filed 03/03/2009 Page 20 of 21 advertisements, labels, signs and other material in the possession or control of Defendants depicting, showing or using Peavey s Intellectual Property; C. Preliminary and permanent injunctive relief ordering Defendants, in accordance with 15 U.S.C. 1116, to file a verified report with this Court within thirty (30) days of the Court s entry of injunctive relief, specifying in detail the manner and form in which Defendants have complied with the injunction and order of this Court; D. That Defendants account for and pay over to Peavey profits realized by Defendants by reason of Defendants unlawful acts herein alleged and that the amount of disgorgement for infringement of the 341 Mark be increased by a sum not exceeding three times the amount thereof as provided by law and that the Court impose whatever temporary, preliminary and final equitable relief is necessary to achieve the foregoing, including, but not limited to, the imposition of a constructive trust; E. That this case be deemed an exceptional case under 15 U.S.C (a) and that Peavey be awarded its reasonable attorney fees and disbursements in this action and treble damages; F. Award Peavey recovery for Defendants profits and all damages sustained by Peavey under 15 U.S.C (a); G. Award Peavey damages or other monetary relief and compensating it under 35 U.S.C. 284 for Defendants infringement of the 428 Patent and 302 Patent; H. Award Peavey enhanced damages resulting from the knowing, deliberate, and willful conduct of the Defendants and finding this is an exceptional case and awarding Peavey its attorneys fees pursuant to 35 U.S.C. 284, 285;

21 Case 2:33-av Document 5109 Filed 03/03/2009 Page 21 of 21