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

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Morgan & Morgan, P. A.th 20 N. Orange Avenue, 16 Floor Orlando, FL 32801 Clay M. Townsend, Esquire Bar No.: 023414 Brandon S. Peters, Esquire Bar No.: 022641 Keith R. Mitnik, Esquire Bar No.: 436127 Attorneys for Neal Plaintiffs UNITED STATES DISTRICT COURT DISTRICT OF ARIZONA MEADOWLARK LEMON, et al. Plaintiffs, vs. PLAINTIFFS' JOINT RESPONSE TO DEFENDANTS' IN LIMINE MOTION TO EXCLUDE EVIDENCE RELATING TO SHOES Case Nos.: CV 04 0299 PHX DGC and CV-04-1023 PHX DGC

HARLEM GLOBETROTTERS 11 INTERNATIONAL, INC., et al.; 12 13 14 15 Shoes ("Motion"), and state as follows: 16 Defendants.

Plaintiffs Neal, Rivers, Thornton, Hall, Haynes, Sanders, and Lemon (collectively referred to as "Plaintiffs"), hereby file this Response to Defendants' In Limine Motion to Exclude Evidence Relating to

Defendants' Motion is calculated to exclude evidence related to FUBU shoes, but this evidence is 17 18 19 20 21 22 23 24 25 flea markets or road side stands but at legitimate FUBU retailers. 26 money to document sales (use) by dispatching its investigators not only to find garments, but to Madison, Plaintiffs diligently expended time and relevant to the Pooley elements which Plaintiffs must prove (i.e. use, advantage and injury). The shoe exhibits sold in the same stores as infringing merchandise is relevant to Defendants' USE of Plaintiffs' names to differentiate FUBU products with Plaintiffs' names from FUBU products without Plaintiffs' names--a differentiation that provided FUBU a marketing commercial ADVANTAGE. How can FUBU credibly assert that Plaintiffs' names conferred NO advantage to the FUBU brand as otherwise used standing alone on their different products--products such as FUBU The Collection shoes? The sales of shoes and other FUBU branded merchandise documented by Plaintiffs' investigators did not take place at

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Wisconsin to testify as to what was located. (¶22, Doc. #314, PSOF). The Defendants efforts to exclude this shoe evidence not only should be denied, the Motion itself is frivolous. Plaintiffs' investigator Phipps identified a pair of FUBU shoes on the Merchandise Schedule of related items obtained during investigation. Plaintiffs have never asserted that this pair of shoes bore Plaintiffs' names or identities. While most items listed are infringing, Plaintiffs' Merchandise Schedule does

6 not state that every item on the schedule is an "infringing item." The relevance of the shoes is, like other 7 8 9 10 11 12 13 14 15 16 than the presence of Plaintiffs' identities. FUBU will no doubt attempt to have FUBU witnesses testify to 17 this effect. 18 19 20 21 22 23 24 25 26 merchandise. These efforts, as documented by Phipps' affidavits and deposition testimony, included visiting 27 several authorized FUBU retailers and observing all sorts of related sports and retro clothing merchandise. 28 "HGI/FUBU/Plaintiffs" goods suggests the marketing purposes behind using Plaintiffs' identities. The presence of FUBU branded merchandise without Plaintiffs' identities that is being sold in the same stores and off the same racks as HGI/FUBU branded merchandise bearing Plaintiffs' identities is relevant to the different types of FUBU merchandise available at authorized FUBU retailers. The shoes in question were purchased from Bealls, which is the same Bealls that infringing merchandise bearing Plaintiffs' identities were purchased from. Additionally, the shoes exhibit is simply a part of Plaintiffs' investigator Phipps' endeavor, and he may testify as to what efforts he undertook to discover infringing Thus, the presence of strictly FUBU merchandise at the same locations as FUBU merchandise that may not bear Plaintiffs' identities, to Defendants' "use" and to "injury." That is, Defendants vigorously assert that Plaintiffs bear a burden of proving that sales of infringing merchandise must be attributable to the presence of Plaintiffs' identities on the infringing merchandise. Although Plaintiffs clearly do not bear the burden of proving attribution as one of the elements of a right of publicity claim, and have briefed the law on this issue extensively, this Court in its Order of 6/27/06 stated that, pursuant to the Restatement 2nd of Unfair Competition § 49, Defendants will bear the burden of reducing profits to the extent they may not be attributable to the use of Plaintiffs' identities. In fact, Defendants have repeatedly argued that consumers purchased infringing merchandise because of the "FUBU" brand rather

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As Defendants are trying to assert to the jury in the proposed joint voir dire that they are small corporations, the shoes are relevant to show that there are ongoing sales of products by FUBU, and the shoes are sold using the "FUBU The Collection" brand which is the same brand used in the Philippines store selling infringing garments. As to the licensing agreement documents between Anthony L, LLC and FUBU that Defendants'

6 object to, there is evidence suggesting infringing shoes could have been made pursuant to this agreement, 7 8 9 10 11 12 13 14 15 16 elements of Plaintiffs' right of publicity claims, and to Defendants defense that no one bought "Curly Neal" 17 jerseys because of Neal's name, but only because of FUBU's brand. Plaintiffs must show that Defendants 18 19 20 21 22 23 24 25 26 27 28 By: ____/S/ _______________________ CLAY M. TOWNSEND, ESQUIRE Florida Bar No.: 363375 KEITH MITNIK, ESQUIRE Florida Bar No.: 436127 BRANDON S. PETERS -3used their identities, and that Defendants derived some advantage, and that Plaintiffs were injured (i.e. that they were not compensated for the sale). Under F.R.E. 402.1 "all relevant evidence is admissible." Wherefore, Plaintiffs respectfully request the Court deny the Motion and permit all Plaintiffs' relevant evidence to be used at trial. DATED this 22nd day of November, 2006. and these are documents produced by FUBU that may be necessary at trial including for impeachment purposes. The crux of Defendants' attack on the shoes exhibit appears to be relevance. Relevance is simply an overly broad basis upon which to ask this Court to exclude these exhibits. Of course, Defendants have asked this Court to exclude virtually all of Plaintiffs' exhibits on the basis of relevance in its various In Limine Motions. However, under F.R.E. 401 relevant evidence is evidence tending to make the existence of any fact that is of consequence to the determination of the action more probable or less probable. Pierce Packing Co. v. John Morrell & Co., 633 F.2d 1362 (9th Cir. 1980). The shoes are relevant to several of the

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Florida Bar No.: 965685 Morgan & Morgan, PA 20 N. Orange Avenue, 16th Floor Orlando, FL 32802 Telephone (407) 420-1414 Facsimile (407) 425-8171 Attorneys for Plaintiffs Fred Neal, Larry Rivers, Robert Hall, Dallas Thornton, Marques Haynes and James Sanders ROSENQUIST & ASSOCIATES

7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Ira S. Sacks, Esq. Safia A. Anand, Esq. DREIER, LLP 499 Park Avenue New York, NY 10022 Attorneys for Defendants GTFM, LLC, FUBU the Collection, LLC and GTFM of Orlando, LLC Edward R. Garvey, Esq. and Christa Westerberg, Esq. GARVEY McNEIL & McGILLIVRAY, S.C. 634 W. Main St. #101 Madison, WI 53703 Attorneys for Defendants Harlem Globetrotters Int'l, Inc., Harlem Globetrotters Int'l Foundation and Mannie L. & Catherine Jackson PLEASE TAKE FURTHER NOTICE that copies of the above-referenced document have been served via first class mail on the following attorneys: Joel L. Herz, Esq. LAW OFFICES OF JOEL L. HERZ La Paloma Corporate Center 3573 E. Sunrise Dr., Suite 215 Tucson, AZ 85718-3206 Attorneys for Defendants GTFM, LLC, FUBU the Collection, LLC and GTFM Of Orlando, LLC By: ____/S/ Anders Rosenquist___________ Anders Rosenquist, Jr. Florence M. Bruemmer Attorneys for Plaintiff Meadowlark Lemon

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Anders Rosenquist, Jr., Esq. Florence M. Bruemmer, Esq. ROSENQUIST & ASSOCIATES 80 E. Columbus Phoenix, AZ 85012 Attorney for Plaintiff Lemon Ray K. Harris, Esq. Fennemore Craig PC 3003 N. Central Avenue, Suite 2600 Phoenix, AZ 85012-2913 Attorneys for Defendants Harlem Globetrotters Int'l. Inc., Harlem Globetrotters Int'l Foundation, and Mannie L. & Catherine Jackson Certificate of Service Vanessa Braeley, declares as follows:

11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 1. I hereby certify that on November 22, 2006, a true and correct copy of Plaintiffs' Response to Defendants' In Limine Motion to Exclude Evidence Relating to Shoes 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], [email protected] Edward R. Garvey ­ [email protected] Robert Williams Goldwater, III ­ [email protected] Ray Kendall Harris ­ [email protected] Joel Louis Herz ­ [email protected], [email protected] Anders V. Rosenquist, Jr. - [email protected] Ira S. Sacks ­ [email protected] 2. I am and was at all times mentioned herein a citizen of the United States and a resident of Orange County, Florida, over 18 years of age and not a party to the within action or proceeding. My business address is 20 N. Orange Avenue, 16th Floor, Orlando, FL 32801, and I am employed as a legal assistant by Morgan & Morgan, P.A., Clay Townsend is an attorney admitted to practice in Florida and has been admitted pro hac vice in the District Court of Arizona, and directed that service be made. 3. I hereby certify that on November 22, 2006, a true and correct copy of Plaintiffs' Response to Defendants' In Limine Motion to Exclude Evidence Relating to Shoes was sent by postage-prepaid firstclass U.S. Mail to the following parties, at the addresses listed, to-wit: Joel L. Herz, Esq. LAW OFFICES OF JOEL L. HERZ

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 DATED: November 22, 2006.

La Paloma Corporate Center 3573 E. Sunrise Dr., Suite 215 Tucson, AZ 85718-3206 Attorney for Defendants, GTFM, LLC, FUBU the Collection, LLC and GTFM OF Orlando, LLC Ira S. Sacks, Esq. Safia Anand, Esq. DREIER LLP 499 Park Ave. New York, NY 10022 Attorneys for Defendants, GTFM, LLC, FUBU the Collection, LLC and GTFM of Orlando, LLC Edward R. Garvey, Esq. Christa Westerberg, Esq. GARVEY McNEIL & McGILLIVRAY, S.C. 634 W. Main Street, Ste. 101 Madison, WI 53703 Attorneys for Defendants Harlem Globetrotters Int'l. Inc., Harlem Globetrotters Int'l Foundation, and Mannie L. & Catherine Jackson Anders Rosenquist, Jr., Esq. Florence M. Bruemmer, Esq. ROSENQUIST & ASSOCIATES 80 E. Columbus Phoenix, AZ 85012 Attorney for Plaintiff Lemon Ray K. Harris, Esq. Fennemore Craig PC 3003 N. Central Avenue, Suite 2600 Phoenix, AZ 85012-2913 Attorneys for Defendants Harlem Globetrotters Int'l. Inc., Harlem Globetrotters Int'l Foundation, and Mannie L. & Catherine Jackson 3. I declare under the penalty of perjury under the laws of the United States that the foregoing is true and correct.

Signed: ____/S/Vanessa L. Braeley_________ Vanessa L. Braeley Legal Assistant to Clay Townsend MORGAN & MORGAN 20 N. Orange Avenue, 16th Floor

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Orlando, FL 32801 Attorneys for the Plaintiffs Curly Neal, Larry Rivers, Dallas Thornton, Marques Haynes, Robert Hall and James Sanders

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