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Case

Case
3:14-cv-00710-L
3:14-cv-00710-LDocument
Document
904 Filed
Filed05/12/15
02/21/14 Page
Page11ofof20
1 PageID 97
1456
AO 120 (Rev. 08/10)

REPORT ON THE
FILING OR DETERMINATION OF AN
ACTION REGARDING A PATENT OR
TRADEMARK

Mail Stop 8
Director of the U.S. Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450

TO:

In Compliance with 35 U.S.C. 290 and/or 15 U.S.C. 1116 you are hereby advised that a court action has been
filed in the U.S. District Court
on the following
Northern District of Texas, Dallas Division

G Trademarks or

G Patents.

DOCKET NO.

the patent action involves 35 U.S.C. 292.):

DATE FILED

3:14-cv-710-L

U.S. DISTRICT COURT

2/21/2014

Northern District of Texas, Dallas Division

PLAINTIFF

DEFENDANT

Gearbox Software LLC

PATENT OR
TRADEMARK NO.

Apogee Software Ltd et al

DATE OF PATENT
OR TRADEMARK

HOLDER OF PATENT OR TRADEMARK

1 2,435,065

3/13/2001

Gearbox Software LLC

2 2,578,916

6/11/2002

Gearbox Software, LLC

3 4,138,126

5/8/2012

Gearbox Software, LLC

4
5

In the aboveentitled case, the following patent(s)/ trademark(s) have been included:
DATE INCLUDED

11/17/2014

PATENT OR
TRADEMARK NO.

INCLUDED BY

Amendment
DATE OF PATENT
OR TRADEMARK

Answer

Cross Bill

Other Pleading

HOLDER OF PATENT OR TRADEMARK

Please see attached.

1
2
3
4
5

In the aboveentitled case, the following decision has been rendered or judgement issued:
DECISION/JUDGEMENT

Case Administratively Closed as of 5/11/2015.

CLERK

(BY) DEPUTY CLERK

s/C. Fisher

Karen Mitchell

DATE

5/12/2015

Copy 1Upon initiation of action, mail this copy to Director Copy 3Upon termination of action, mail this copy to Director
Copy 2Upon filing document adding patent(s), mail this copy to Director Copy 4Case file copy

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Case 3:14-cv-00710-L Document 90 Filed 05/12/15

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IN THE UNITED STATES DISTRICT COURT


NORTHERN DISTRICT OF TEXAS
DALLAS DIVISION
GEARBOX SOFTWARE, LLC,
Plaintiff,
v.
APOGEE SOFTWARE, LTD. d/b/a
3D REALMS ENTERTAINMENT and
INTERCEPTOR ENTERTAINMENT APS,
Defendants.

CIVIL ACTION
NO. 3:14-cv-00710-L

FIRST AMENDED COMPLAINT AND JURY DEMAND


Plaintiff Gearbox Software, LLC ("Plaintiff') files this First Amended Complaint against
Defendants Apogee Software, Ltd. d/b/a 3D Realms Entertainment and Interceptor
Entertainment ApS (collectively "Defendants"), alleges as follows, upon personal knowledge as
to its own actions and upon information and belief as to the actions of Defendants:

I. PARTIES
1.

Plaintiff Gearbox Software, LLC ("Gearbox") is a Texas limited liability company

with a principal place of business located at 101 East Park Boulevard, Suite 1200, Piano, Texas
75074.
2.

Upon information and belief, Defendant Apogee Software, Ltd. d/b/a 3D Realms

Entertainment ("3DR") is a Texas limited partnership with a principal place of business located
at 4809 Beltline Road, #111, Mesquite, Texas 75150.
3.

Upon information and belief, Defendant Interceptor Entertainment ApS

("Interceptor") is a Danish company with a principal place of business located at Oestre


Kanalgade 2, St., 9000 Aalborg, Denmark.

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II. JURISDICTION AND VENUE


4.

This is a civil action seeking damages and injunctive relief for trademark

infringement, unfair competition, copyright infringement, and breach of contract arising


under 15 U.S.C. 1114, 15 U.S.C. 1125(a), and 17 U.S.C. 101 et seq. Accordingly, the
Court has subject matter jurisdiction under 28 U.S.C. 1331 and 1338. In addition, the
Court has supplemental jurisdiction over all state law claims under 28 U.S.C. 1367.
5.

Defendants are subject to personal jurisdiction in this district because they reside in

or have substantial contact with this district. By actively pursuing business transactions with
3DR, a resident of this district, for, inter alia, rights to federally-registered trademarks,
copyrights and other intellectual property owned by Gearbox, another resident of this district,
Interceptor has subjected itself to the personal jurisdiction of this district. In addition,
Interceptor's officers were served with process while present in this district and Defendants have
appeared in this matter through counsel
6.

Venue is proper in this district pursuant to 28 U.S.C. 1391 (b) and (c) because a

substantial part of the events or omissions giving rise to this action occurred in this district, and
because Defendant 3DR resides in this district.

III. FACTUAL BACKGROUND


Nature of the Case
7.

This case stems from efforts to illegally exploit Gearbox's intellectual property

rights in the Duke Nukem video game franchise. Specifically, Defendants Interceptor and 3DR
have colluded to misappropriate and make infringing use of the Duke Nukem trademarks and
copyrights owned by Gearbox. Gearbox secured its rights on February 2, 2010, upon the
execution of an Asset Purchase Agreement ("APA") in which 3DR transferred all Duke Nukem

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intellectual property ("Duke IP") to Gearbox, and Gearbox then licensed back certain limited
rights to 3DR. The APA also specifically required 3DR or its licensees to seek the permission of
Gearbox before making use of the Duke Nukem marks after February 2, 2010.
8.

Recentlyand without consulting the Duke IP's actual owner, Gearbox

Interceptor announced its intent to develop a Duke Nukem game based upon the various
characters, content and intellectual property owned by Gearbox; the proposed game is entitled
"Duke Nukem: Mass Destruction." Apparently, after selling its Duke Nukem IP rights to
Gearbox in 2010, 3DR sought to privately convince others that the sale never happened. The
result is the unauthorized development effort that reportedly exists between 3DR and Interceptor.
9.

By attempting to license the unlicensable, assign the unassignable, and effectively

re-sell the exclusive rights that Gearbox already purchased in 2010, 3DR breached the terms of
its APA with Gearbox, as well as Gearbox's exclusive, federally-protected intellectual property
rights. Unfortunately, the 3DR-Interceptor maneuver has left Gearbox with little choice but to
bring these claims.

Important Background Facts


Gearbox Bails Out 3DR - The APA
10.

"No good deed goes unpunished." 3DR's actions illustrate the point, given the

exceptional amount of support that Gearbox extended to 3DR, its ownership, and the Duke
Nukem franchise that Gearbox must protect.
11.

It is worth remembering: Prior to Gearbox's involvement, 3DR languished for over

twelve unsuccessful years trying to get the Duke Nukem Forever ("DNF") videogame off the
ground, and was famously incapable of achieving its goal. As a result of its own failings, 3DR
ultimately found itself mired in protracted litigation with its publisher, Take-Two Interactive

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Software, Inc. ("Take 2"). Indeed, by 2009, Take 2 was asserting its own claims against 3DR
(e.g., for repayment of funds owed to Take 2,. for delivery of a DNF videogame and related
source code, etc.). As of 2010, 3DR's problems were increasing, not decreasing.
12.

Desperate for helpand on the verge of even further ruin, now that 3DR could no

longer fund either development or litigation3DR effectively asked its friends at Gearbox for a
life preserver. Specifically, 3DR asked Gearbox to rescue 3DR from the Take 2 litigation and, if
possible, to complete the technological jigsaw puzzle of a videogame that 3DR had been calling
DNF. Because Gearbox had personal ties to 3DR, Take 2, and its fellow Duke Nukem fans,
Gearbox agreed to help.
13.

Gearbox's bailout package for 3DR was memorialized in a February 2010 Asset

Purchase Agreement ("APA"), wherein Gearbox acquired the Duke Nukem intellectual property
rights (the "Duke IP"). Gearbox soon discovered that 3DR's work product was sorely deficient;
the mountain of problems subsequently uncovered by Gearbox cannot be captured in this single
pleading.
14.

Undeterred, Gearbox kept its part of the bargain in support of 3DR, Duke and their

exceptionally patient fans:

In June of 2011, while 3DR quietly enjoyed freedom from its

crushing debts and litigation with Take 2, Gearbox delivered the videogame to those DNF fans
who had patiently waited over a dozen years for 3DR's delivery of its product.
15.

As it turns out, 3DR was the ultimate beneficiary of its so-called "deal among

friends." After all: 3DR was freed from the litigation it could no longer afford to fight, 3DR's
principals received a generous financial guarantee, and DNF was finally shipped. None of this
was likely to occur in the absence of Gearbox's prompt, generous support.

FIRST AMENDED COMPLAINT AND JURY DEMAND Page 4 of 19

And, for those

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disappointed by the DNF content that 3DR bungled between 1997-2009, 3DR's misery now had
the company of its rescuer, Gearbox.

3DR Sues Gearbox - Then Apologizes


16.

For reasons that remain somewhat inexplicable, 3DR took aim against Gearbox in a

lawsuit following DNF's release filed in Dallas County in 2013. In it pleadings, 3DR insisted
that it was owed even more than it had already received (e.g., additional royalties, etc.). Of
course, once Gearbox demonstrated the reality of 3DR's fiction, 3DR quickly dropped its suit
with no money "owed" or changing hands. Indeed, 3DR expressly released any claims it had
concerning its audit rights under the parties' agreements.
17.

Upon dismissal, Scott Miller issued a public apology to Gearbox, stating, "In all

sincerity, we regret the misunderstanding that instigated our lawsuit.

Now that we better

understand - and appreciate - the actual nature of our business matters, we have voluntarily
withdrawn our claims against Gearbox, with our genuine apologies..."

A copy of 3DR's

apology to Gearbox is attached as Exhibit A. Gearbox graciously accepted the apology.

Interceptor Announces Its Own, Unauthorized Duke Nukem Game


18.

On February 1, 2014, Interceptor announced that it would be releasing its own

version of a Duke Nukem game entitled "Duke Nukem: Mass Destruction." This infringement
of Gearbox's intellectual property rights was announced online, with a stated release date of
February 25, 2014.1 According to Interceptor's proclamations, the project has been in
development since September, 2013.2 It appears that Interceptor has even created a Facebook

https://www.psu.com/a021917/Duke-Nukem-founder-working-on-top-secret-new-PS4-+-PC-title-(describing the
"new videogame" revealed by Interceptor Entertainment's CEO, Frederik Schreiber); see also,
http://www.neogaf.com/forum/showthread.php?t=761603.
2 http://www.eurogamer.net/articles/2014-02-03-duke-nukem-mass-destruction-teased-for-pc-ps4 (stating "the game
has [only] been in development since September [2013]").
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page for "Duke Nukem: Mass Destruction." These announcements are attached to the
Complaint, collectively, as Exhibit B.
19.

On February 13, 2014, Gearbox, through its counsel, issued a cease and desist letter

to 3DR (via Scott Miller, a 3DR principal). The letter demanded that 3DR and its abettors halt
all unauthorized exploitations of Gearbox's Duke Nukem intellectual property. The letter is
attached hereto as Exhibit C, and states in part:
According to various news outletsas well as your own admissions within
certain correspondenceyou and 3DR are colluding with other, equally-unauthorized
parties to develop a new video game based upon the Duke Nukem IP. No developer
reveres Duke Nukem and its fans more than Gearbox; it's why Gearbox committed so
much to rescuing Duke back in 2010. As you well know: 3DR's rights were reduced
under the terms of that rescue, not expanded. The Gearbox rightsand 3DR
restrictionsimposed by the Asset Purchase Agreement ("APA") and all related
contracts executed between the parties (collectively, the "Duke IP Terms") are
unwavering, and they are explicit on this point: 3DR's actions breach the Duke IP Terms.

3DR's Under Oath Admission of Unauthorized Use


20.

Three days after receiving the cease and desist letter from Gearbox, 3DRthrough

its principals, Scott Miller and George Broussardexecuted a declaration in which 3DR
admitted that neither 3DR nor anyone else possessed the right to develop and publish the "Duke
Nukem: Mass Destruction" game (the "3DR Declaration"). As such, 3DR promised to "refrain
from any acts that use or violate the Duke IP, which exclusively belongs to Gearbox."
Significantly, paragraph 5 of the 3DR Declaration states:
I am aware that Exhibit 2.2 of the APA states that "all future development in the
Duke IP" is a development right exclusively held by Gearbox. As such, only Gearbox
has possessed the right to use the Duke IP in the development of any and all new Duke
Nukem games, ancillary projects and materials since February 2010. Because such rights
belong to Gearbox alone, development efforts such as 3DR's "Duke Nukem: Mass
Destruction" effort with others was not only unauthorized, but a material infringement of
the Gearbox's rights. I apologize to Gearbox for the infringement and breach represented
by my efforts.

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(Emphasis added.)
The signed 3DR Declaration, dated February 16, 2014, is attached hereto as Exhibit D.
21.

Given that 3DR has admitted i) the unlawful nature of the development and planned

distribution of "Duke Nukem: Mass Destruction," and ii) the exclusivity of Gearbox's Duke IP
property rights, there can be no doubt that Interceptor's efforts remain unlawful.
22.

Ambitions aside, Interceptor cannot exploit rights it never lawfully possessed; this

necessarily includes the rights that 3DR now admits 3DR didn't have (i.e., because they
exclusively belonged to Gearbox, not 3DR). Unfortunately for Interceptorand any others who
have relied upon 3DR's personal assurances in lieu of federal registrations and the likethe
3DR Declaration makes it clear: 3DR no longer owns the unrestricted rights to Duke Nukem IP,
and 3PR has no right or ability to make any agreements in violation of Gearbox's exclusive
rights.
23.

The declarations in Exhibit D prove that 3DR knew it was prohibited from crafting

unauthorized deals for things like "Duke Nukem: Mass Destruction." As 3DR has now admitted,
3DR possessed no authority to license Interceptor to do such work, and any continuation thereof
represents an unlawful infringement of Gearbox's rights.
24.

On information and belief, and based on the announcements attached as Exhibit B,

Interceptor's new game "Duke Nukem: Mass Destruction" will make unlawful use of Gearbox's
IP, including characters, marks, and copyrights in violation of Gearbox's rights under the APA,
and federal trademark and copyright law.

Gearbox's Trademark Rights and Copyright Registrations


25.

Gearbox holds a valid, incontestable trademark registration for the DUKE

NUKEM mark, U.S. Trademark Registration No. 2,578,916. Gearbox's ownership of an


incontestable registration for the DUKE NUKEM mark constitutes conclusive evidence of the
FIRST AMENDED COMPLAINT AND JURY DEMAND Page 7 of 19

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validity of the mark and its exclusive right to use the registered mark. In addition, Gearbox
holds a trademark registration for the mark DUKE NUKEM FOREVER, U.S. Trademark
Registration No. 4,138,126 and a design mark used in conjunction with its DUKE NUKEM
game, U.S. Trademark Registration No. 2,435,065. These registrations, and relevant assignment
documents, are attached hereto as Exhibit E and incorporated by reference. In addition to its
registered trademarks, as a result of its use and promotion of the DUKE NUKEM mark, Gearbox
has established valuable recognition for and goodwill in the DUKE NUKEM mark as well as
significant common law trademark rights. (The above-referenced marks shall be collectively
referred to as the "DUKE NUKEM marks.")
26.

Gearbox holds multiple U.S. Copyright Registrations covering its DUKE

NUKEM game, including U.S. Copyright Registration No. PA 1-782-911; U.S. Copyright
Registration No. PA 1-812-111; U.S. Copyright Registration No. PA 1-814-677. The
registrations are attached hereto as Exhibit F and incorporated by reference. In addition,
Gearbox holds U.S. Copyright Registrations covering other Duke Nukem works for which
recordations of transfer to Gearbox have been duly filed with the U.S. Copyright Office,
including U.S. Copyright Registration No. PA 795-737; U.S. Copyright Registration No. PA
801-076; U.S. Copyright Registration No. PA 795-738; and U.S. Copyright Registration No. PA
801-077. (The above-referenced copyright registrations in addition to the additional Copyrights
transferred under the APA shall be referred to collectively as the "Duke Nukem Copyrights.")

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IV. CAUSES OF ACTION


COUNTI
Trademark Infringement Under the Lanham Act
15U.S.C. 1114
27.

Gearbox realleges and incorporates by reference the allegations set forth in

paragraphs 1 through 26 above.


28.

Defendants' wrongful and unauthorized use in commerce of the DUKE NUKEM

marks to promote, marker or sell their products and services constitutes trademark infringement
under 15 U.S.C. 1114 as it is likely to cause confusion, mistake or deception.
29.

Defendants' activities were committed, willfully, knowingly, maliciously, and in

conscious disregard of Plaintiff s legal rights.


30.

Gearbox has no adequate remedy at law. Defendants' conduct has caused, and if

not enjoined, will continue to cause immediate and irreparable damage to Gearbox's trademark
rights, business, reputation, and goodwill in a manner that cannot be adequately calculated or
compensated in money damages alone.
31.

Due to Defendants' violations of the Lanham Act, Gearbox is entitled to injunctive

relief, actual, compensatory, and punitive damages in an amount to be determined at trial along
with its attorneys' fees and costs under 15 U.S.C. 1117 as this is an exceptional case due to
Defendants' willful conduct.

COUNT II
Contributory Trademark Infringement Under the Lanham Act Against Defendant 3DR
15 U.S.C. 1114
32.

Gearbox realleges and incorporates by reference the allegations set forth in

paragraphs 1 through 31 above.


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33.

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3DR, without any authority to do so and in breach of its agreement with Gearbox,

provided Gearbox's DUKE NUKEM product to Interceptor, and thus induced the direct
infringement by and/or acted in concert with Interceptor to infringe Gearbox's trademark rights
in the DUKE NUKEM marks in connection with Interceptor's "Duke Nukem: Mass Destruction"
videogame.
34.

As a result of Defendant's action, Gearbox has been damaged in an amount to be

proven at trial. Gearbox is entitled to recover Defendants' profits, its actual damages, and costs
of this action. Gearbox is further entitled to recover treble damages and attorneys' fees under 15
U.S.C. 1117 as this is an exceptional case due to Defendants' willful conduct.

COUNT III
False Designation of Origin Under the Lanham Act
15 U.S.C. 1125(a)
35.

Gearbox realleges and incorporates by reference the allegations set forth in

paragraphs 1 through 34 above.


36.

The DUKE NUKEM marks are distinctive marks that are associated with Gearbox

and exclusively identify Gearbox's business, products, and services.


37.

Defendants have used, and continue to use, the DUKE NUKEM marks in

connection with goods or services, in commerce, in a manner that is likely to cause confusion,
mistake or deception as to the origin, sponsorship or approval of such goods or services.
38.

As a result of Defendants' acts, Gearbox has been damaged in an amount to be

proven at trial. Plaintiff is entitled to recover Defendants' profits, its actual damages, and costs
of this action. Plaintiff is further entitled to recover treble damages and attorneys' fees under 15
U.S.C. 1117 as this is an exceptional case due to Defendants' willful conduct.

COUNT IV

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Unfair Competition/False Advertising Under the Lanham Act


15 U.S.C. 1125(a)
39.

Gearbox realleges and incorporates by reference the allegations set forth in

paragraphs 1 through 38 above.


40.

Defendants have used and continue to use the DUKE NUKEM marks in connection

with goods or services in a manner that constitutes false and misleading descriptions or
representations of fact in commercial advertising or promotion, thereby misrepresenting the
nature, characteristics, and qualities of their goods, services or commercial activities.
Defendants' use of the DUKE NUKEM marks has deceived or has the capacity to deceive a
substantial segment of potential consumers.
41.

As a result of Defendants' acts, Gearbox has been damaged in an amount to be

proven at trial. Gearbox is entitled to recover Defendants' profits, its actual damages, and costs
of this action. Gearbox is further entitled to recover treble damages and attorneys' fees under 15
U.S.C. 1117 as this is an exceptional case due to Defendants' willful conduct.

COUNT V
Copyright Infringement
42.

Gearbox realleges and incorporates by reference the allegations set forth in

paragraphs 1 through 41 above.


43.

Gearbox is, and at all relevant times has been, the owner of the Duke Nukem

Copyrights, which are registered with the U.S. Copyright Office in accordance with the
Copyright Act. In addition, as a result of the transfer of all Duke Nukem IP to Gearbox under
the APA, Gearbox owns all copyrights to the protectable elements of all works in the Duke
Nukem Universe, including all characters. These Duke Nukem Copyrights cover, among other

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things, the audiovisual material and the names, characters, themes, and depictions of the
character "Duke Nukem."
44.

Among the exclusive rights granted to Gearbox under the Copyright Act are the

rights to reproduce, prepare derivative works, and distribute copies of the protected materials
covered by the Duke Nukem Copyrights.
45.

Interceptor, without permission or consent of Gearbox, has used and continues to

use material covered by the Duke Nukem Copyrights in the development, creation, sale,
promotion, and distribution of its videogame entitled, "Duke Nukem: Mass Destruction." On
information and belief, "Duke Nukem: Mass Destruction" is identical and/or substantially similar
to the materials protected by the Duke Nukem Copyrights and constitutes an unauthorized
derivative work. In addition, Interceptor intends, without permission or consent of Gearbox, to
shortly distribute Gearbox's copyrighted material worldwide, further compounding the injury to
Plaintiff. Through its copying, distribution, and use, Interceptor has violated Gearbox's
exclusive rights in the Duke Nukem Copyrights as provided by the Copyright Laws of the United
States, 17 U.S.C. 101, et seq.
46.

SDR, Gearbox's licensee, without permission or consent of Gearbox, has used and

continues to use Gearbox's copyrighted material in a manner outside the narrow permission
granted by Gearbox in the APA. In doing so, 3DR has violated Gearbox's exclusive rights.
47.

Defendants' foregoing acts of infringement have been willful and intentional, in

disregard of and with indifference to the rights of Gearbox.


48.

As a result of Defendants' infringement of Gearbox's copyrights, Gearbox is

entitled to maximum statutory damages pursuant to 17 U.S.C. 504(c) for each infringement of
Gearbox' s copyrighted material.

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49.

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Alternatively, Gearbox is entitled to recover its actual damages as well as the

Defendants' profits for each act of infringement, pursuant to 17 U.S.C. 504(b).


50.

Gearbox is further entitled to its attorneys' fees and costs pursuant to 17 U.S.C.

51.

The conduct of the Defendants is causing and, unless enjoined and restrained by the

505.

Court, will continue to cause Gearbox immediate and irreparable harm that cannot be fully
compensated by monetary damages. Gearbox has no adequate remedy at law for Defendants'
infringement and, therefore, pursuant to 17 U.S.C. 502 and 503 Plaintiff is entitled to
injunctive relief prohibiting Defendants from further infringing Plaintiffs copyrights.

COUNT VI
Contributory Copyright Infringement Against Defendant 3DR
52.

Gearbox realleges and incorporates by reference the allegations set forth in

paragraphs 1 through 51 above.


53.

Through its development and promotion of Duke Nukem: Mass Destruction,

Interceptor directly infringed Gearbox's copyrights and is liable for copyright infringement.
54.

3DR, with knowledge of Interceptor's infringing activities, induced, caused,

and/or materially contributed to Interceptor's infringement of Gearbox's copyrights. 3DR


substantially participated and continues to participate in Interceptor's infringement, including,
but not limited to, 3DR's former CEO, Scott Miller, assisting Interceptor in its infringement by
acting as an advisor regarding the development of the Duke Nukem: Mass Destruction game.
55.

As a result of 3DR's actions, Gearbox has been damaged. 3DR's actions were

willful and intentional, in disregard of and with indifference to the rights of Gearbox.

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56.

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Gearbox is entitled to maximum statutory damages pursuant to 17 U.S.C. 504(c)

for each infringement of Gearbox's copyrighted material.


57.

Alternatively, Gearbox is entitled to recover its actual damages as well as the

Defendants' profits for each act of infringement, pursuant to 17 U.S.C. 504(b).


58.

Gearbox is further entitled to its attorneys' fees and costs pursuant to 17 U.S.C.

59.

The conduct of 3DR is causing and, unless enjoined and restrained by the Court,

505.

will continue to cause Gearbox immediate and irreparable harm that cannot be fully compensated
by monetary damages. Gearbox has no adequate remedy at law for 3DR's contributory
infringement and, therefore, pursuant to 17 U.S.C. 502 and 503 Plaintiff is entitled to
injunctive relief prohibiting 3DR from further contributing to the infringement of Plaintiff s
copyrights.

COUNT VII
Common Law Trademark Infringement and
Unfair Competition Claim Under Texas Law
60. Gearbox realleges and incorporates by reference the allegations set forth in
paragraphs 1 through 59 above.
61. Defendants' unauthorized use of the DUKE NUKEM marks constitutes common
law trademark infringement and unfair competition, in violation of Texas law.

COUNT VIII
Breach of Contract Against Defendant 3DR (APA)
62. Gearbox realleges and incorporates by reference the allegations set forth in
paragraphs 1 through 61 above.

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63. Gearbox and 3DR entered into an Asset Purchase Agreement ("APA") on February
2, 2010.
64. Plaintiff performed its contractual obligations under the APA.
65. Under the express terms of the APA, 3DR retained the right "to create, sell, license,
and distribute consumer goods and sundries (other than videogame and videogame-related
products) bearing the names, characters, and themes directly relating to the motion pictures,
films, movies, videos, and television shows that are promoted in connection with such works. .
. ." (emphasis added).
66. 3DR licensed Duke Nukem materials to Interceptor for use with videogame and
videogame-related products, including Interceptor's "Duke Nukem: Mass Destruction," in
breach of the terms of the APA.
67. As a result of 3DR's breach, Gearbox has been damaged in an amount to be proven
at trial.
68. Gearbox is entitled to its attorneys' fees and costs pursuant to Chapter 38.001, et
seq. of the Texas Civil Practice and Remedies Code.

COUNT IX
Breach of Contract Against Defendant 3DR (Settlement Agreement)
69. Gearbox realleges and incorporates by reference the allegations set forth in
paragraphs 1 through 68 above.
70. Gearbox and 3DR entered into a Mediation Settlement Agreement on September
11, 2013 ("Settlement Agreement").
71. Gearbox performed its contractual obligations under the Settlement Agreement.

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72. Under the terms of the Settlement Agreement, 3DR is permitted to demand an audit
under the APA, but the scope of the audit is limited to matters and information arising on or
after September 11, 2013.
73. 3DR has demanded that Gearbox participate in an audit that includes information
regarding its development costs of Duke Nukem Forever. The development of Duke Nukem
Forever was completed before September 11, 2013.
74. 3DR's demand for a wide-ranging audit of materials and information dated before
September 11, 2013 constitutes a breach of the Settlement Agreement.
75. As a result of 3DR's breach, Gearbox has been damaged in an amount to be proven
at trial.
76. Gearbox is entitled to its attorneys' fees and costs pursuant to Chapter 38.001, et
seq. of the Texas Civil Practice and Remedies Code.

COUNT X
Request for Declaratory Relief
77.

Gearbox realleges and incorporates by reference the allegations set forth in

paragraphs 1 through 76 above.


78.

Pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. 2201 and 2202,

Gearbox seeks a declaration of its rights under the APA.


79.

This case presents an actual controversy within the Court's jurisdiction, as alleged

in the preceding paragraphs.


80.

The APA, by its terms, grants Gearbox exclusive ownership of the Duke IP

including the right to future product offerings. 3DR nevertheless contends that, under the terms
of the APA, Gearbox does not own the Duke IP. Gearbox's rights under the APA will remain in

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controversy absent a declaration from this Court. Declaratory relief will serve a useful purpose
in clarifying the rights of the parties under the APA, and thus allowing Gearbox to proceed with
development of its Duke Nukem videogames without fear of subsequent suit by 3DR or any
other entity wrongfully claiming rights to the Duke IP. Consequently, the Court may and should
declare Gearbox's rights under the APA.
81.

Accordingly, Gearbox seeks a declaration from the Court that, under the terms of

the APA: (1) Gearbox owns all rights to the Duke IP; (2) Gearbox owns all rights to future
development of the Duke Nukem franchise with the limited exception of "Duke Nukem
Survivor," which exception is limited to completion of the non-AAA platform game in
development at the time of the APA; (3) Gearbox owns all rights to the DUKE NUKEM
trademarks; and (4) Gearbox owns all rights to the Duke Nukem Copyrights,
82.

Gearbox further requests that the Court award such further necessary or proper

relief to which Gearbox may show itself entitled pursuant to 28 U.S.C. 2202.

V. JURY DEMAND
Pursuant to Fed. R. Civ. P. 38(b), Gearbox hereby demands a trial by a jury on all issues
so triable.

VI. PRAYER FOR RELIEF


WHEREFORE, Gearbox prays for the following relief:
1.

A preliminary and permanent injunction restraining the Defendants from:


(a) Directly or indirectly infringing Gearbox's copyrights in any manner,
including but not limited to, manufacturing, distributing, advertising, selling,
or offering for sale any products that infringe such copyrights;
and
(b) Directly or indirectly infringing Gearbox's registered or
common-law trademarks in any manner, including but not
limited to, manufacturing, distributing, advertising, selling, or

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offering for sale any products that infringe such trademarks;


and
(c) Using any word, term, name, symbol, or device, or any
combination thereof, on any product or its packaging or
labeling or using any false designation of origin, false, or
misleading description of fact, or false or misleading
representation of fact, which is likely to cause confusion, or to
cause mistake or to deceive as to the affiliation, connection, or
association of a defendant with Gearbox or as to the origin,
sponsorship, or approval of a defendant's goods by Gearbox;
and

2.

A recovery of statutory damages for each infringement of each of Gearbox's

copyrighted works pursuant to 17 U.S.C. 504 and/or recovery of its actual damages as
well as the Defendants' profits for each act of infringement, pursuant to 17 U.S.C.
504(b); and
3.

A recovery of compensatory damages and an increase in such award under

15 U.S.C. 1117; and


4.

An award to Gearbox of exemplary damages; and

5.

An award to Gearbox of its reasonable attorneys' fees and costs of the action; and

6.

A declaration that under the terms of the APA: (1) Gearbox owns all rights to the

Duke IP; (2) Gearbox owns all rights to future development of the Duke Nukem franchise with
the limited exception of "Duke Nukem Survivor," which exception is limited to completion of
the non-AAA platform game in development at the time of the APA; (3) Gearbox owns all
rights to the DUKE NUKEM trademarks; and (4) Gearbox owns all rights to the Duke Nukem
Copyrights,
7.

Such other and further relief, at law or in equity, to which it may be justly
entitled.

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Respectfully submitted,

s/ Michael E. Schonberg
Michael E. Schonberg
Texas State Bar No. 00784927
E-mail: mike.schonberg@tklaw.com
Megan Dredla Hoyt
Texas State Bar No. 24050530
E-mail: megan.hoyt@tklaw.com

THOMPSON & KNIGHT LLP


One Arts Plaza
1722 Routh Street, Suite 1500
Dallas, Texas 75201
Telephone: 214.969.1304
Fax: 214.880.3262
ATTORNEYS FOR PLAINTIFF
GEARBOX SOFTWARE, LTD.

CERTIFICATE OF SERVICE
On November 14, 2014,1 electronically submitted the foregoing document with the Clerk
of the Court for the U.S. District Court, Northern District of Texas, using the electronic case
filing system of the Court. I hereby certify that I have served all counsel of record electronically
or by another manner authorized by the Federal Rules of Civil Procedure.

s/ Michael E. Schonberg
Michael E. Schonberg

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