Free Response in Opposition to Motion - District Court of Arizona - Arizona

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Joel L. Herz, Esq. State Bar No. 015105 Law Offices of Joel L. Herz 3573 East Sunrise Drive, Suite 215 Tucson, AZ 85718 Telephone: 520-529-8080 Facsimile: 520-529-8077 [email protected] Attorneys for Defendant GTFM, LLC UNITED STATES DISTRICT COURT DISTRICT OF ARIZONA MEADOWLARK LEMON, et al., Plaintiffs, vs. HARLEM GLOBETROTTERS INTERNATIONAL, INC., et al.; Defendants. Defendants GTFM, LLC ("GTFM" or "FUBU"), Harlem Globetrotters International, Inc. ("HGI") and Mannie L. and Catherine Jackson (collectively referred to as "Defendants') submit this opposition to Plaintiffs' Motion In Limine to Exclude Any Evidence of Whether Certain Items of HGI/FUBU Apparel are `Knock-Offs' ("Plaintiffs' Motion"). No counterfeit apparel should play any part in the trial of this matter. Samples of counterfeit apparel are irrelevant, and Defendants should be able to present evidence identifying any such counterfeit goods. Plaintiffs argue in their motion that Defendants have never disclosed any documentary evidence throughout this litigation relating to counterfeit FUBU/HGI apparel. That is true but misses the point. There are no such documents. On the contrary, such evidence at trial would be from the testimony of GTFM executives, DEFENDANTS' OPPOSITION TO PLAINTIFFS' MOTION IN LIMINE TO EXCLUDE ANY EVIDENCE OF WHETHER CERTAIN ITEMS OF HGI/FUBU APPAREL ARE `KNOCK-OFFS' Nos. CV-04-0299 PHX DGC and CV-041023 PHX DGC

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based on a review of the 133 sample garments that Plaintiffs have listed on their exhibit list (PX 201 ­ PX 333). What is more, to date, Defendants do not know if any of the 133 garments that Plaintiffs have attempted to offer into evidence are counterfeit because

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GTFM executives have never had the opportunity to examine them. After such examination, testimony regarding the authenticity of the goods will not involve expert testimony. See Plaintiffs' Motion, at 2. All authentic FUBU/HGI

Apparel has anticounterfeiting indicia which plainly indicate to one schooled in the
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indicia whether the goods are counterfeit.1 Thus, GTFM executives can testify as to whether FUBU/HGI Apparel is authentic based on knowledge of their own product line. The evaluation of whether products are ­ or are not ­ counterfeit is a required part of being an executive of an apparel company. The subject matter does not require scientific, technical or other specialized knowledge, only knowledge about the FUBU line, which GTFM executives have. The entire counterfeit goods issue has been injected into this matter by Plaintiffs' irrelevant frolic in the Philippines and Thailand.2 Mr. Phipps admits that there are a fair amount of counterfeits in both the Philippines and Thailand. See Phipps Tr., at 120, attached as Exhibit A. However, Mr. Phipps' associate sent a report on August 15, 2005

If, as this Court has previously held in the June 27, 2006 Order, Plaintiffs' damages are restricted to the nine styles set forth in the Phipps I Analysis (the "Sales Chart") and the HGI Letter, Defendants will not need to present evidence at trial as to counterfeit goods because those nine styles rely on evidence provided by GTFM, based on sales of authentic goods. GTFM cannot disclose the anticounterfeiting indicia in this filing because they are closely guarded trade secrets, but will do so under seal at trial if necessary. Publicly disclosing anticounterfeiting indicia teaches counterfeiters how to ply their trade.
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On November 15, 2006, Defendants filed a motion in limine for an order precluding Plaintiffs from offering any evidence relating to the Philippines and Thailand (Dkt # 510).

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stating that he found a shop in Bangkok ­ Rockie ­ that sold FUBU/HGI Apparel with no player number, observing that the items "appeared to be genuine [and] [t]hey were presented to [the] agent in a FUBU carry-bag ... the high quality of workmanship ...

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indicated it was the genuine article." See Exhibit B attached hereto. That highlights the danger of this evidence. Not only are sales in Bangkok ­ particularly sales without player identifications ­ irrelevant, but sales of FUBU merchandise in Thailand are especially suspect. On May 17, 2005, GTFM put Rocky Trading Group Co., Ltd. on notice of its

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potential criminal counterfeiting activity. See Exhibit C attached hereto. Finally, Plaintiffs may only seek damages from Defendants with regard to products that were manufactured, sold, or legally licensed by Defendants. To allow Plaintiffs to seek damages with regard to counterfeit garments would give Plaintiffs the opportunity to recover from Defendants for wrongs allegedly done by someone else. This cannot be allowed. The authenticity of apparel ought not to be an issue in this case. But if Plaintiffs are permitted to parade a litany of garments before the jury, Defendants are entitled to examine those garments and inform the jury if any of them are counterfeit. Plaintiffs cannot be permitted to recover from Defendants for a counterfeiter's illicit conduct. Based on the foregoing, Defendants respectfully request that Plaintiffs' Motion be denied in its entirety. RESPECTFULLY SUBMITTED this 22nd day of November, 2006.

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By: s/ Ira S. Sacks_________________ By: s/ Edward R. Garvey____________ Ira S. Sacks, admitted pro hac vice Edward R. Garvey, admitted pro hac vice Safia A. Anand, admitted pro hac vice Christa Westerberg, admitted pro hac vice DREIER LLP GARVEY McNEIL &
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499 Park Avenue New York, NY 10022 Telephone: 212-328-6100 Facsimile: 212-328-6101 [email protected]

McGILLIVRAY, S.C. 634 W. Main St. #101 Madison, WI 53703 Telephone: 608-256-1003 Facsimile: 608-256-0933 [email protected] Ray K. Harris, # 007408 FENNEMORE CRAIG, P.C. 3003 N. Central Ave., Suite 2600 Phoenix, AZ 85012-2913 Telephone: 602-916-5000 Facsimile: 602-916-5999 [email protected] Attorneys for Defendants Harlem Globetrotters Int'l, Inc. and Mannie L. & Catherine Jackson

Joel L. Herz, Esq. State Bar No. 015105 Law Offices of Joel L. Herz 3573 East Sunrise Drive, Suite 215 Tucson, AZ 85718 Telephone: 520-529-8080 Facsimile: 520-529-8077 [email protected] Attorneys for Defendant GTFM, LLC

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CERTIFICATE OF SERVICE

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I hereby certify that on November 22, 2006, a true and correct copy of

Defendants' Opposition to Plaintiffs' Motion In Limine to Exclude Any Evidence of Whether Certain Items of HGI/FUBU Apparel are `Knock-Offs' was electronically transmitted to the Clerk's Office using the CM/ECF System for filing and transmittal of a Notice of Electronic Filing to the following CM/ECF registrants: Safia A Anand [email protected] Florence M Bruemmer [email protected] Edward R Garvey [email protected], [email protected], [email protected] Robert Williams Goldwater III [email protected] Ray Kendall Harris [email protected], [email protected] Joel Louis Herz [email protected], [email protected] Alec R Hillbo [email protected], [email protected] Brandon Scott Peters [email protected], [email protected], [email protected] Anders V Rosenquist , Jr [email protected] Ira S Sacks [email protected] Clay M Townsend [email protected], [email protected]; [email protected] Christa O Westerberg [email protected] 2. I hereby certify that on November 22, 2006, a true and correct copy of the attached

document was sent via U.S. Mail, postage paid thereon, to the following parties, at the addresses listed: Keith R. Mitnik Morgan & Morgan PA 20 N. Orange Ave. Suite 1600
Orlando, FL 32802

s/ Leslie Grant___________

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