Gibson Guitar Corporation v. Wal-Mart Stores, Inc. et al

Filing 19

Gibson Guitar Corporation v. Wal-Mart Stores, Inc. et al

Doc. 19

IN THE UNITED STATES DISTRICT COURT FOR THE MIDDLE DISTRICT OF TENNESSEE NASHVILLE DIVISION Gibson Guitar Corp., Plaintiff, v. Wal-Mart Stores Inc., Target Corporation, Kmart Corporation, Sears, Roebuck & Co., Amazon.com, Inc., GameStop Corp., Toys-R-Us, Inc., Harmonix Music Systems, Inc., MTV (a division of Viacom International, Inc.), and Electronic Arts, Inc., Defendants. ) ) ) ) ) ) ) ) ) ) ) ) ) )

Civil Action No. 3:08-0279

Judge Wiseman Magistrate Judge Griffin

______________________________________________________________________________ AMENDED COMPLAINT AND DEMAND FOR JURY TRIAL ______________________________________________________________________________ Plaintiff, Gibson Guitar Corp., complaining of the Defendants herein, demands a jury trial and alleges as follows: THE PARTIES 1. Plaintiff, Gibson Guitar Corp. ("Gibson" or "Plaintiff"), is a corporation

organized and existing under the laws of the State of Delaware, having its principal place of business at 309 Plus Park Boulevard, Nashville, TN 37217. 2. Upon information and belief, Defendant Wal-Mart Stores Inc. ("Wal-Mart") is a

corporation organized under the laws of the State of Delaware, having its principal place of business at 702 SW Eighth Street, Bentonville, Arkansas 72716.

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3.

Upon information and belief, Defendant Target Corporation ("Target") is an

entity existing under the laws of the State of Minnesota, with its principal place of business at 1000 Nicollet Mall, Minneapolis, Minnesota 55403. 4. Upon information and belief, Defendant Kmart Corporation ("Kmart") is a

corporation organized under the laws of the State of Michigan, with a principal place of business at 3100 W Big Beaver Road, Troy, Michigan 48084. 5. Upon information and belief, Defendant Sears, Roebuck & Co. ("Sears") is a

corporation organized under the laws of the State of New York, with a principal place of business at 3333 Beverly Rd, B2-130B, Hoffman Estates, Illinois, 60179. 6. Upon information and belief, Defendant Amazon.com, Inc. ("Amazon") is a

corporation organized under the laws of the State of Delaware, with a principal place of business at 1200 12th Avenue South, Suite 1200, Seattle, WA 98144. 7. Upon information and belief, Defendant GameStop, Corp. ("GameStop") is a

corporation organized under the laws of the State of Delaware, with a principal place of business at 625 Westport Parkway, Grapevine, TX 76051. 8. Upon information and belief, Defendant Toys-R-Us, Inc. ("Toys-R-Us") is a

corporation organized under the laws of the State of Delaware, with a principal place of business at 1 Geoffrey Way, Wayne, New Jersey 07470. 9. Wal-Mart, Target, Kmart, Sears, Amazon, GameStop, Toys-R-Us are collectively

referred to herein as the "Retail Defendants."

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10.

Upon information and belief, Defendant Harmonix Music Systems, Inc.

("Harmonix") is a corporation organized under the laws of the State of Delaware, with a principal place of business at 625 Massachusetts Avenue, Cambridge, MA 02139. 11. Upon information and belief, Defendant MTV Networks ("MTV") is a division of

Viacom International, Inc., which is a corporation organized under the laws of the State of Delaware, with a principal place of business at 1515 Broadway, New York, NY 10036. 12. Upon information and belief, Defendant Electronic Arts, Inc. ("EA") is a

corporation organized under the laws of the State of Delaware, with a principal place of business at 209 Redwood Shores Parkway, Redwood City, California 94065. 13. Wal-Mart, Target, Kmart, Sears, Amazon, GameStop, Toys-R-Us, Harmonix,

MTV, and EA are collectively referred to herein as "Defendants." JURISDICTION AND VENUE 14. This Court has subject matter jurisdiction over this action under 28 U.S.C.

§§1331, 1338(a) and 35 U.S.C. §271 et seq. 15. This Court has personal jurisdiction over Wal-Mart by reason of its presence in

the State of Tennessee, its sufficient contacts to the State of Tennessee and/or because Wal-Mart has committed and continues to commit, has contributed and continues to contribute to, and has induced and continues to induce acts of patent infringement in this district and throughout the United States as alleged in this Complaint. Venue in the Middle District of Tennessee is proper under 28 U.S.C. §§ 1391(b), 1391(c) and 1400(b).

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16.

This Court has personal jurisdiction over Target by reason of its presence in the

State of Tennessee, its sufficient contacts to the State of Tennessee and/or because Target has committed and continues to commit, has contributed and continues to contribute to, and has induced and continues to induce acts of patent infringement in this district and throughout the United States as alleged in this Complaint. Venue in the Middle District of Tennessee is proper under 28 U.S.C. §§ 1391(b), 1391(c) and 1400(b). 17. This Court has personal jurisdiction over Kmart by reason of its presence in the

State of Tennessee, its sufficient contacts to the State of Tennessee and/or because Kmart has committed and continues to commit, has contributed and continues to contribute to, and has induced and continues to induce acts of patent infringement in this district and throughout the United States as alleged in this Complaint. Venue in the Middle District of Tennessee is proper under 28 U.S.C. §§ 1391(b), 1391(c) and 1400(b). 18. This Court has personal jurisdiction over Sears by reason of its presence in the

State of Tennessee, its sufficient contacts to the State of Tennessee and/or because Sears has committed and continues to commit, has contributed and continues to contribute to, and has induced and continues to induce acts of patent infringement in this district and throughout the United States as alleged in this Complaint. Venue in the Middle District of Tennessee is proper under 28 U.S.C. §§ 1391(b), 1391(c) and 1400(b).

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19.

This Court has personal jurisdiction over Amazon by reason of its presence in the

State of Tennessee, its sufficient contacts to the State of Tennessee and/or because Amazon has committed and continues to commit, has contributed and continues to contribute to, and has induced and continues to induce acts of patent infringement in this district and throughout the United States as alleged in this Complaint. Venue in the Middle District of Tennessee is proper under 28 U.S.C. §§ 1391(b), 1391(c) and 1400(b). 20. This Court has personal jurisdiction over GameStop by reason of its presence in

the State of Tennessee, its sufficient contacts to the State of Tennessee and/or because GameStop has committed and continues to commit, has contributed and continues to contribute to, and has induced and continues to induce acts of patent infringement in this district and throughout the United States as alleged in this Complaint. Venue in the Middle District of Tennessee is proper under 28 U.S.C. §§ 1391(b), 1391(c) and 1400(b). 21. This Court has personal jurisdiction over Toys-R-Us by reason of its presence in

the State of Tennessee, its sufficient contacts to the State of Tennessee and/or because Toys-RUs has committed and continues to commit, has contributed and continues to contribute to, and has induced and continues to induce acts of patent infringement in this district and throughout the United States as alleged in this Complaint. Venue in the Middle District of Tennessee is proper under 28 U.S.C. §§ 1391(b), 1391(c) and 1400(b).

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22.

This Court has personal jurisdiction over Harmonix by reason of its presence in

the State of Tennessee, its sufficient contacts to the State of Tennessee and/or because Harmonix has committed and continues to commit, has contributed and continues to contribute to, and has induced and continues to induce acts of patent infringement in this district and throughout the United States as alleged in this Complaint. Venue in the Middle District of Tennessee is proper under 28 U.S.C. §§ 1391(b), 1391(c) and 1400(b). 23. This Court has personal jurisdiction over MTV by reason of its presence in the

State of Tennessee, its sufficient contacts to the State of Tennessee and/or because MTV has committed and continues to commit, has contributed and continues to contribute to, and has induced and continues to induce acts of patent infringement in this district and throughout the United States as alleged in this Complaint. Venue in the Middle District of Tennessee is proper under 28 U.S.C. §§ 1391(b), 1391(c) and 1400(b). 24. This Court has personal jurisdiction over EA by reason of its presence in the State

of Tennessee, its sufficient contacts to the State of Tennessee and/or because EA has committed and continues to commit, has contributed and continues to contribute to, and has induced and continues to induce acts of patent infringement in this district and throughout the United States as alleged in this Complaint. Venue in the Middle District of Tennessee is proper under 28 U.S.C. §§ 1391(b), 1391(c) and 1400(b). GENERAL ALLEGATIONS 25. Plaintiff Gibson is engaged in the business of developing, manufacturing and

selling, musical instruments and related equipment and systems, including but not limited to electric guitars and acoustic guitars under the famous trademark GibsonŽ as well as other trademarks. 6
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26.

Gibson has been is the business of making guitars for over one hundred years.

Gibson guitars are sold worldwide, have worldwide recognition and have won awards for their design. 27. Gibson is also is engaged in the business of developing, manufacturing and

selling, selling music playing devices, systems and amplifiers, under various trademarks, but most notably, under the famous WurlitzerŽ trademark. 28. Gibson is the sole owner of United States Patent No. 5,990,405, entitled "System

And Method For Generating And Controlling A Simulated Musical Concert Experience," which issued on November 23, 1999 (the `405 Patent). 29. The inventors of the `405 Patent are Don R. Auten, of Nashville, Tennessee,

Richard T. Akers of Antioch, Tennessee, and Richard Gembar of Mount Juliet, Tennessee. 30. The `405 Patent is directed to systems and apparatuses for electronically

simulating participation in a musical performance. A copy of the `405 Patent is attached hereto at Exhibit 1 and is incorporated by reference. THE INFRINGING PRODUCTS AT ISSUE 31. Defendants have and continue to manufacture and/or sell products that infringe,

contribute to the infringement of, and/or have no other substantial non-infringing uses, and/or induce the infringement of at least claims 1, 13-15, 25 and 28 of the `405 Patent.

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The Guitar HeroŽ Series of Products 32. Upon information and belief, Defendant Harmonix created, developed, sold

and/or induced the sale of a series of video games under the tradename, "Guitar HeroŽ," including but not limited to "Guitar HeroŽ" (Version I), "Guitar HeroŽ II," and "Guitar HeroŽ Encore: Rock the 80s." 33. Upon information and belief, a third party created, developed, sold and/or induced

the sale of "Guitar HeroŽ III, Legends of Rock." 34. Upon information and belief, "Guitar HeroŽ III, Legends of Rock" shares at least

some of the technology used in the "Guitar HeroŽ" (Version I), "Guitar HeroŽ II," and "Guitar HeroŽ Encore: Rock the 80s" products. The series of video games sold under the tradename, "Guitar HeroŽ" including but not limited to "Guitar HeroŽ" (Version I), "Guitar HeroŽ II", "Guitar HeroŽ Encore: Rock the 80's," and "Guitar HeroŽ III, Legends of Rock" are collectively referred to herein as the "Guitar HeroŽ Video Games." 35. The Guitar HeroŽ Video Games were designed for use with various video game

consoles, including but not limited to NintendoŽ WiiTM, Sony PlaystationŽ 2, Sony PlaystationŽ 3, and XBOX360Ž. 36. Among the products sold by the Retail Defendants that infringe, contribute to the

infringement of and/or induce the infringement of the `405 Patent are the Guitar HeroŽ Video Games. 37. Various Guitar HeroŽ components, including but not limited to guitar style

instruments, are sold separately and together with a one or more versions of the Guitar HeroŽ Video Games.

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38.

Various Guitar HeroŽ components, including but not limited to guitar style

instruments, are sold together with a one or more versions of the Guitar HeroŽ Video Games and marketed as a Guitar HeroŽ "bundle." 39. The Guitar HeroŽ Video Games and the Guitar HeroŽ components, whether sold

together with the Guitar HeroŽ Video Games or separately, are collectively referred to herein as the "Guitar Hero Products." 40. The Guitar Hero Products created and developed, and sold or caused to be sold by

Defendant Harmonix infringe, contribute to the infringement of and/or induce the infringement of the `405 Patent. 41. Upon information and belief, Defendants Harmonix sold or caused the sale of the

Guitar Hero Products in this district via several retailers of video games both with websites and physical stores located in Nashville, Tennessee and other cities in this district. 42. The Guitar Hero Products infringe, contribute to the infringement of and/or

induce the infringement of the `405 Patent. The Rock BandŽ Series of Products 43. Upon information and belief, Defendant Harmonix created, developed and/or has

sold and continues to sell a video game under the tradename "Rock BandTM." 44. Upon information and belief, the Rock BandTM video game was developed for use Sony

with various video game consoles, including but not limited to Nintendo WiiTM, PlaystationŽ 2, Sony PlaystationŽ 3, and XBOX360Ž. 45.

Among the products sold by the Retail Defendants that infringe, contribute to the

infringement of and/or induce the infringement of the `405 Patent are Rock BandTM video game. 9
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46.

Upon information and belief, various Rock BandTM components, including but not

limited to guitar style instruments, drums, and microphones, are sold separately and together with the Rock BandTM video game in a boxed set. 47. The Rock BandTM video game and the Rock BandTM components, whether sold

together with the Rock BandTM video game or separately, are collectively referred to herein as the "Rock Band Products." 48. The Rock Band Products created, developed and sold by Defendant Harmonix

infringe, contribute to the infringement of and/or induce the infringement of the `405 Patent. 49. Upon information and belief, Defendant MTV publishes, markets, sells, and/or

induces others to sell and use the Rock Band Products, which infringe, contribute to the infringement of and/or induce the infringement of the `405 Patent. 50. Upon information and belief, Defendant EA is the exclusive distributor of the

Rock Band Products and therefore sells and/or induces others to sell and use the Rock Band Products, which infringe, contribute to the infringement of and/or induce the infringement of the `405 Patent. 51. Upon information and belief, Defendants Harmonix, MTV and EA sold or caused

the sale of the Rock Band Products in this district via several retailers of video games both with websites and physical stores located in Nashville, Tennessee and other cities in this district. 52. The Rock Band Products infringe, contribute to the infringement of and/or induce

the infringement of the `405 Patent.

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Infringing Sales 53. The Guitar Hero Products and the Rock Band Products collectively referred to

herein as the "Infringing Products." 54. Upon information and belief, the Retail Defendants sold, offer for sale, and

continue to sell Infringing Products in this district at least via their websites. 55. Upon information and belief, Defendants Walmart, Target, Kmart, Sears,

GameStop and Toy-R-Us maintain physical stores that sold, offer for sale, and continue to sell Infringing Products in the United States including in Nashville, Tennessee and other cities in this district. Audio/Visual Gaming Products 56. The Retail Defendants also sell video displays, video game consoles, and audio

equipment that can be part of systems that infringe the `405 Patent. 57. Upon information and belief, the Retail Defendants sold and continue to sell the

Guitar Hero Products together with one or more of the following: video displays, video game consoles, and/or audio equipment. 58. Upon information and belief, the Retail Defendants also sold and continue to sell

the Rock Band Products together with one or more of the following: video displays, video game consoles, and/or audio equipment. 59. The Guitar Hero Products and/or the Rock Band Products sold together with video

displays, video game consoles, and/or audio equipment are collectively referred to herein as the "Audio/Visual Gaming Products."

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60.

The Audio/Visual Gaming Products sold by the Retail Defendants infringe,

contribute to the infringement of and/or induce the infringement of the `405 Patent. 61. Upon information and belief, the Retail Defendants sold and continue to sell the

Audio/Visual Gaming Products into this district at least via their websites. 62. Upon information and belief, Defendants Walmart, Target, K-mart, GameStop

and Toy-R-US maintain physical stores that sold and continue to sell the Audio/Visual Gaming Products in the United States including in Nashville, Tennessee and other cities in this district. COUNT I FOR PATENT INFRINGEMENT 63. Plaintiff Gibson repeats and realleges each and every allegation of paragraphs 1-62,

as though fully set forth herein. 64. Upon information and belief, Defendants have either directly infringed,

committed contributory infringement of, or induced infringement of, and continue to directly infringe, commit contributory infringement of, or induce infringement of the `405 Patent. 65. The aforesaid past acts and continuing acts of Defendants constitute willful

infringement and/or if continued will constitute willful infringement of the `405 patent. 66. The aforesaid past acts and continuing acts of Defendants are in violation of 35

U.S.C. §271 et seq. of the Patent Act. 67. Gibson has been damaged and will continue to be damaged by the aforesaid

infringement unless Defendants are enjoined, preliminarily and permanently, from selling and offering for sale infringing products or otherwise inducing or contributing to the infringement of the `405 Patent. Gibson has no adequate remedy at law.

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WHEREFORE, plaintiff prays for the following relief: a) That the Defendants be adjudged to have infringed United States Patent No. 5,990,405; b) That such infringement be deemed willful where appropriate; c) that Defendants, their respective officers, agents, servants, employees and attorneys and all persons in active concert or in participation with them who receive actual notice of the order by personal service or otherwise, be preliminarily and permanently enjoined and restrained from infringing, contributing to infringement and inducing others to infringe the subject patent; d) that Plaintiff be awarded its damages by reason of Defendants infringement of the subject patent; e) that this case be deemed an exceptional case under 35 U.S.C. § 285 and plaintiff be awarded attorney fees and treble damages; f) that Plaintiff be awarded its costs and expenses including reasonable attorney fees; and g) that Plaintiff have such other and further relief which the Court may deem just or proper under the circumstances.

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DEMAND FOR JURY TRIAL Pursuant to Rule 38 of the Federal Rules of Civil Procedure, Plaintiff Gibson hereby demands a trial by jury of all issues so triable.

Dated: Nashville, Tennessee April 4, 2008 Respectfully submitted,

/s/ Douglas R. Pierce Douglas R. Pierce, BPR No. 10084 KING & BALLOW 1100 Union Street Plaza 315 Union Street Nashville, Tennessee 37201 [phone]

OF COUNSEL:

STROOCK & STROOCK & LAVAN LLP Matthew W. Siegal Angie M. Hankins Richard Eskew Jason M. Sobel 180 Maiden Lane New York, New York 10038-4982 212-806-5400 Attorneys for Plaintiff Gibson Guitar Corp.

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CERTIFICATE OF SERVICE I hereby certify that on this the 4th day of April 2008, a true and correct copy of the foregoing Amended Complaint was served by U.S. mail postage prepaid and properly addressed on: 1. Wal-Mart Stores, Inc. c/o: C T Corporation System 800 S. Gay Street Suite 2021 Knoxville, TN 37929-9710 2. Target Corporation Registered Agent: C T Corporation System 800 S. Gay Street Suite 2021 Knoxville, TN 37929-9710

3.

Amazon.com, Inc. c/o: Corporation Service Company 2908 Poston Avenue Nashville, TN 37203 GameStop, Inc. c/o: C T Corporation System 800 S. Gay Street Suite 2021 Knoxville, TN 37929-9710

4. Toys-R-Us, Inc. c/o: The Prentice-hall Corporation Systems, Inc. 2908 Poston Avenue Nashville, TN 37203 6. K-Mart Corporation c/o: C T Corporation System 800 S. Gay Street Suite 2021 Knoxville, TN 37929-9710

5.

/s/ Douglas R. Pierce

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