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' OPPOSITION TO PLAINTIFFS' MOTION IN LIMINE TO EXCLUDE ANY OF DEFENDANTS' EVIDENCE OF WHY CONSUMERS MAY HAVE PURCHASED THE HGI/FUBU APPAREL Nos. CV-04-0299 PHX DGC and CV-041023 PHX DGC

Defendants GTFM, LLC ("GTFM" or "FUBU"), Harlem Globetrotters International, Inc. ("HGI") and Mannie L. and Catherine Jackson submit this opposition to Plaintiffs' Motion In Limine to Exclude Any of Defendants' Evidence of Why Consumers May Have Purchased the HGI/FUBU Apparel ("Plaintiffs' Motion"). Contrary to the suggestion in Plaintiffs' Motion, the issue of why consumers purchased FUBU/HGI Apparel is directly relevant to Plaintiffs' claims and Defendants' defenses. To succeed on their right of publicity claim, Plaintiffs must prove all four of the following elements: 1) whether Defendants' used Plaintiffs' identity, 2) whether Defendants' use was to their commercial advantage, 3) whether Plaintiffs consented to Defendants' use, and 4) whether Plaintiffs were injured by Defendants' use. Order, June 27, 2006 at 13 (Dkt. # 425). Moreover, it is also settled that Defendants may establish

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that sales were made for reasons other than Plaintiffs' names, as well as deductions for costs related to manufacturing and sale. See id. at pg. 17; Restatement (Third) of Unfair Competition § 49.

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To prove the second and fourth elements of the right of publicity tort, each Plaintiff must prove "but for" causation ­ that is, that Defendants' profits would not have occurred if Defendants had not used Plaintiffs' names and/or likenesses and that Plaintiffs were injured as a result of that use. McClaran v. Plastic Industries, Inc., 97 F.3d 347,

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361 (9th Cir. 1996)(plaintiff failed to prove damage as a result of the infringement); Maier Brewing Co. v. Fleischmann Distilling Corp., 390 F.2d 117, 124 (9th Cir. 1968)(if purchasers bought goods for any reason other than a response to plaintiff's symbol, plaintiff is not entitled to damages);Restatement (Third) of Unfair Competition § 49, Comment (d) Reporter's Notes (stating that disgorgement of profits in a right of publicity case follows trademark law principles). Gucci America, Inc. v. Daffy's, Inc., 354 F.3d 228, 242 (3d Cir. 2003) is illustrative. There, the Third Circuit held that the record did not establish what

percentage of Daffy's sales, if any, were a result of the use of Gucci's trademarks, as opposed to the styling, quality and pricing of the goods. The Court observed: We understand, of course, that "Gucci" suggests a certain level of quality and prestige. It is therefore certainly possible that the instant sales were the direct result of the exploitation of that brand name. However, it is also quite possible that the purchasers were motivated by the opportunity of purchasing what appeared to be an attractive handbag of exceedingly high quality at the very favorable price afforded by Daffy's "discount." To the extent that consumers were motivated by obtaining such a bargain, the fact that they were also obtaining a "genuine Gucci" may have been only an incidental factor in their purchase, or no factor at all...Since Gucci is "only entitled to those profits attributable to the
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unlawful use of its mark," the record would not support awarding Gucci lost profits... 354 F.3d at 242 (citations omitted). Plaintiffs argue in their motion that Defendants have never disclosed any documentary evidence throughout this litigation to support a position that consumers purchased the HGI/FUBU apparel because it said "Harlem Globetrotters" or "FUBU".

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That is incorrect and also misstates Defendants' anticipated testimony. GTFM executives will testify at trial, both from their experience with consumers of their products and from the sales data that was produced during discovery, that consumers purchased the FUBU/HGI Apparel for reasons other than Plaintiffs' names

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and/or alleged likenesses (with the possible exception ­ to a limited degree ­ of Meadowlark Lemon). This is not expert testimony. Rather it is based on knowledge by GTFM executives of their own product line and the sales detail reports GTFM produced in this case. The evaluation of why products are ­ or not ­ selling and the evaluation of sales data 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. Moreover, on August 2 and 3, 2005, Plaintiffs deposed the executives that will testify. Thus, Plaintiffs will not be prejudiced by their testimony.

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Finally, Plaintiffs' oft-repeated false allegation that "Defendants testimony is that Plaintiffs' names were used on hang tags for marketing" must be debunked. See

Plaintiffs' Motion, at 2. To the contrary, Bruce Weisfeld testified that "I guess all hang tags are marketing tools ... I think to the kids who would be buying the product, they

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probably never heard of [the Plaintiffs] ... [a]ll Harlem Globetrotters garments would have some tag, but not necessarily these tags". See Weisfeld Tr., pgs. 58-60, attached hereto as Exhibit A. Consistent with that testimony, FUBU has stated throughout this

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litigation that the notion that a consumer bought FUBU/HGI Apparel because of a hangtag, as opposed to the color, style or price of, or the FUBU or Globetrotters marks on, the apparel is absurd. Based on the foregoing, Defendants respectfully request that Plaintiffs' Motion be

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denied in its entirety. RESPECTFULLY SUBMITTED this 22nd day of November, 2006. 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 & 499 Park Avenue McGILLIVRAY, S.C. New York, NY 10022 634 W. Main St. #101 Telephone: 212-328-6100 Madison, WI 53703 Facsimile: 212-328-6101 Telephone: 608-256-1003 [email protected] Facsimile: 608-256-0933 [email protected] 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 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

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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 of Defendants' Evidence of Why Consumers May Have Purchased the HGI/FUBU Apparel 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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