Free Reply to Response 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 Plaintiffs UNITED STATES DISTRICT COURT DISTRICT OF ARIZONA MEADOWLARK LEMON, a married man, Plaintiff, vs. Case Nos.: CV 04 0299 PHX DGC and CV-04-1023 PHX DGC

HARLEM GLOBETROTTERS INTERNATIONAL, PLAINTIFFS NEAL, RIVERS, THORNTON, 11 INC., an Arizona corporation; HARLEM HALL, HAYNES AND SANDERS' REPLY TO GLOBETROTTERS INTERNATIONAL DEFENDANT GTFM LLC'S RESPONSE TO 12 FOUNDATION, INC., an Arizona corporation; MOTION FOR SUMMARY JUDGMENT MANNIE L. JACKSON and CATHERINE 13 JACKSON, husband and wife; FUBU THE COLLECTION, LLC, a New York limited liability 14 company doing business in Arizona; GTFM, LLC, a New York limited liability company doing business in 15 Arizona; 16 17 FRED "CURLY" NEAL, LARRY "GATOR" 18 RIVERS, DALLAS "BIG D" THORNTON, ROBERT "SHOWBOAT" HALL, MARQUES 19 HAYNES and JAMES "TWIGGY" SANDERS, 20 vs. 21 HARLEM GLOBETROTTERS INTERNATIONAL, 22 INC., an Arizona corporation; HARLEM GLOBETROTTERS INTERNATIONAL 23 FOUNDATION, INC., an Arizona corporation; MANNIE L. JACKSON and CATHERINE 24 JACKSON, husband and wife; FUBU THE 25 COLLECTION, LLC, a New York limited liability company, GTFM of Orlando, LLC; and GTFM, LLC, a 26 New York limited liability company doing business in Arizona, Defendants. Plaintiffs, Defendants.

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1 HARLEM GLOBETROTTERS INTERNATIONAL, INC., an Arizona corporation, 2 Counter-claimant, 3 vs. 4 MEADOWLARK LEMON, a married man, 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
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Counter-defendant.

PLAINTIFFS' REPLY TO DEFENDANT GTFM LLC'S RESPONSE TO MOTION FOR SUMMARY JUDGMENT
PLAINTIFFS FRED "CURLY" NEAL; LARRY "GATOR" RIVERS; DALLAS "BIG D" THORNTON; ROBERT "SHOWBOAT" HALL; MARQUES HAYNES; and JAMES "TWIGGY" SANDERS, (hereinafter collectively the "PLAINTIFFS"), by and through their undersigned attorneys, hereby file their Reply to Defendant GTFM LLC'S (hereinafter collectively "GTFM") Response to Plaintiff Neal's Motion for Summary Judgment.

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1 2 3 4 5 6 I. 7 8 9 10 11 12 13 14 15 16 17 IV. 18 19 20 21 22 23 24 25 26 27 28 V. III. 1. 2. 3. 4. 5. 6. II. STATEMENT OF FACTS

TABLE OF CONTENTS 1 2 2 2 2 4 4 5 6 6 6 7 7 9 10 10 11 11

Plaintiffs Have Demonstrated Use of Their Likenesses and/or Images Plaintiffs Have Adduced Evidence of Secondary Meaning in Their Numbers Plaintiffs Do Not Lack Evidence SUMMARY JUDGMENT AS TO ALL PARTIES SUMMARY JUDGMENT FOR PLAINTIFFS IS PROPER ON LANHAM ACT CLAIMS A. B. Plaintiffs Have Adduced Evidence of Secondary Meaning Plaintiffs Have Adduced Evidence of Likelihood of Confusion Strength of Plaintiffs' Marks Relatedness of the Goods Similarity of Marks Evidence of Actual Confusion GTFM'S Intent Marketing Channels Used, Likely Degree of Purchaser Care and Likelihood of Expansion of Product Line

SUMMARY JUDGMENT FOR PLAINTIFFS IS PROPER ON PLAINTIFFS' UNJUST ENRICHMENT CLAIMS SUMMARY JUDGMENT FOR PLAINTIFFS IS PROPER ON PLAINTIFFS RIGHT OF PUBLICITY CLAIMS SUMMARY JUDGMENT IS PROPER ON PLAINTIFFS' FALSE LIGHT INVASION OF PRIVACY CLAIMS

CONCLUSION INDEX OF FACTS: 1. 2. 3. 4.

PSOF ­ Plaintiffs' Statement of Facts 1-74 and Plaintiffs Response to HGI's SOF 75-120 (Doc. 314) PRASOF ­ Plaintiffs Reply to HGI's Additional Statement of Facts 1-32 (Doc. 311). PRGO ­ Plaintiffs' Reply to HGI's General Objections 1-20, and PRRNSOF ­ Plaintiffs' Reply to HGI's Response to Neal Plaintiffs' Statement of Facts 1-48 (Doc. 310). PSFDSOF ­ Plaintiffs' Reply to FUBU's (GTFM) Objections to Plaintiffs' Statement of Facts 1-43, and Further Statement of Facts (1)-(41) (Doc. 308).

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STATEMENT OF FACTS The assertions of fact, contraverted facts, additional facts, and objections to statements of fact are voluminous. Within this maze a clear path emerges that leads to factual conclusions which are either undisputed, or which are not susceptible of any reasonable dispute. Summary judgment is appropriate on several claims, or, at a minimum, elements of those claims. Trial is necessary as to damages. It is undisputed that FUBU is a large international corporation comprised of Samsung America,

7 8 9 10 11 12 13 14 15 16 17 PSOF ¶¶12-13)(hereinafter "FFSOF"). 18 19 20 21 22 23 24 25 26 It is undisputed that FUBU, as part of their "due diligence," asked to see player contracts of Harlem Globetrotters' players. (FFSOF ¶13). It is undisputed that "because of the bankruptcy, the contracts could not be located." (Id. at 13, 14). It is undisputed that FUBU did not contact Plaintiffs directly to ascertain whether HGI or FUBU had the right to use Plaintiffs' names or likenesses. (Id. at 17). It is undisputed that FUBU asserts that "Aurum had no obligation to contact any of the former Harlem Globetrotters about their approval." (Id. at 19). FUBU the Collection, LLC, and New York attorneys Weisfeld and Blenden. (PSOF ¶120). Samsung does the logistics. (Ex. 1F, Weisfeld Tr. 50). "FUBU" means "for us, by us," and GTFM means "get the fashion money." (Ex. 1E, Aurum Tr. 59, 61, 65). GTFM, LLC is also owned by rap star LLCoolJ., although FUBU executives Weisfeld, Blenden and Aurum did not disclose it under oath or under the rules regarding such disclosure. (Ex. 17). See Plaintiffs discussion in their Response to FUBU's Renewed Motion for Summary Judgment. (Doc. 253). It is undisputed that FUBU "apparel, some of which contained Plaintiffs' names and/or alleged jersey numbers, was for sale and sold in interstate commerce in the United States and overseas," pursuant to a licensing agreement with HGI. (FUBU's Objections and Further Statement of Facts, Doc. 263, ¶¶8-9;

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It is undisputed that FUBU went forward with the apparel because of HGI's representations and indemnification even though HGI could not produce the contracts requested by FUBU in its "due diligence." (Id. at 14). It is undisputed that FUBU admits that all Plaintiffs' contracts with HGI predecessors of Plaintiffs' contracts terminated years earlier some in 1974--twenty-eight years before the Licensing Agreement. (Id. at

It is undisputed that FUBU admits that Plaintiffs received payment for endorsements. (Id. at 40,47). Plaintiffs Have Demonstrated Use Of Their Likenesses and/or Images Contrary to FUBU's assertions, Plaintiffs have demonstrated that FUBU used likenesses and images of at least Plaintiffs Neal and Lemon. (Ex. 13A, Items 11, 71, 73, 77, 80, 84 and digital images; PSFDSOF ¶¶17-18, Doc. 308). FUBU used Plaintiffs to advertise their products. (PSOF ¶118; PSFDSOF ¶17-18, Doc. 308). Plaintiffs Have Adduced Evidence of Secondary Meaning in Their Numbers Plaintiffs "alleged" jersey numbers were associated with Plaintiffs by FUBU in their own marketing. (Ex. 12, hangtag; Ex. 13A schedule of merchandise and digital images, especially Item 43). Plaintiffs chose their numbers while with the Globetrotters, some using the same numbers since high school, and Haynes'

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and Halls' numbers were retired by the Globetrotters. (PSOF ¶¶ 70,77-78; PSFDSOF ¶¶ (2)-(3), Doc. 308). Plaintiffs Do Not Lack Evidence Plaintiffs have produced voluminous evidence such that no reasonable person could dispute their fame and sports celebrity (which is why FUBU used Plaintiffs' marks in the first place). FUBU's refusal to stipulate to Plaintiffs' fame squanders the energies of this Court. (PSOF ¶¶1,106-107,109,114; Ex. 46 Plaintiffs' Profiles; Ex. 44-45,65-68,82). See also Plaintiffs' Reply to FUBU's position. (PSFDSOF, ¶10, Doc. 308). I. SUMMARY JUDGMENT AS TO ALL PARTIES

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"FUBU" is comprised of GTFM, LLC, FUBU the Collection, LLC and GTFM of Orlando, LLC. Notwithstanding the evidence herein, Plaintiffs presented a proposed stipulation to all counsel to dismiss GTFM of Orlando, LLC and FUBU the Collection, LLC Without Prejudice in accordance with Fed.R.Civ.P 41(a)(1). GTFM of Orlando, LLC and FUBU the Collection, LLC have stipulated to the dismissal but insist on Dismissal with Prejudice, and motions are pending. Summary judgment lies against GTFM, LLC, and so it may also lie against the other parties as both direct and indirect infringers, under the law of vicarious

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liability. FUBU's corporate structure and operating agreement reveal that FUBU the Collection, LLC had a marketing role (also supported by the former content of FUBU's and HGI's own websites) (Ex. 27, P. 26, ¶ 6.5). "Fubu.com" and "Harlemglobtrotters.com" revealed that "FUBU the Collection" did indeed market, promote, and distribute the infringing products. FUBU the Collection, LLC is the alter ego of GTFM, LLC. FUBU the Collection's CEO is the same as GTFM, LLC's. (Ex. 31). a. GTFM of Orlando, L.L.C. distributed FUBU/Harlem Globetrotter garments for their owner, GTFM, L.L.C. (Ex. 26; Ex. 1G, Blenden Tr. 88-89). b. GTFM of Orlando, L.L.C. is owned and controlled by GTFM, L.L.C. and Sumsung America and has offices at the same New York address. (Ex. 1G, Blenden Tr. 88-89; Ex. 31). FUBU the Collection, L.L.C. is a party to an operating agreement with GTFM, L.L.C. and has functions other than as a mere member of GTFM, L.L.C. (Ex. 27 FUBU Operating Agreement, § 6.5). FUBU the Collection, LLC the entity has performance obligations under the Agreement to conduct marketing, not just Aurum as FUBU counsel Sacks asserts. (Id.) d. e. FUBU the Collection, L.L.C. owns 49% of GTFM, L.L.C.'s Class A Units. (Id. at P.6.5) "FUBU the Collection" is an unregistered name or trade name in the United States used by various entities, and a registered name in the Philippines, where the Securities and Exchange Commission lists six (6) retail outlets in the country. In the Philippines, the trade name is used on bags, receipts, and signs (this information was not disclosed by the FUBU

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defendants, but recently discovered by the Plaintiffs). (Ex. 13A, Phipps Investigation, Items 43-45; Ex. 28, Sacks e-mail). Additionally, there is evidence that FUBU the Collection, LLC is the alter ego of GTFM, LLC. FUBU the Collection, LLC received 40% of the proceeds from the sale of infringing Globetrotter merchandise, though Aurum couldn't say how much--not even a "ballpark." (Ex. 1E, Aurum Tr. 51). SUMMARY JUDGMENT FOR PLAINTIFFS IS PROPER ON LANHAM ACT CLAIMS Plaintiffs Have Adduced Evidence of Secondary Meaning

FUBU refuses to stipulate to Plaintiffs' fame, despite the overwhelming evidence. Mannie Jackson estimated 10% of total estimated sales of $60 million were derived from apparel bearing Plaintiffs' marks. (Ex. 1A, Jackson Tr. 122, 137). FUBU's Weisfeld testified "Legends" hangtags bearing Plaintiffs marks

12 13 14 15 16 17 18 19 20 21 22 Arbitrary or fanciful marks are entitled to protection regardless of whether they have acquired 23 24 25 26 27 28
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were marketing tools and Plaintiffs' names were used to tap into the "retro craze" (Ex. 1G, Weisfeld Tr. 5960; PSOF ¶93). FUBU/HGI does not dispute that Plaintiffs played from 1947 (Hall) to 1992 (Sanders) and their employment ended prior to HGI's purchase of the team and prior to the FUBU Licensing Agreement. (FFOSF ¶1; HGI RNSOF ¶¶1,6). Fed.Rules Evid.Rule 201, allows judicial notice because Plaintiffs'

celebrity is not subject to reasonable dispute, and this fact is "generally known within the territorial jurisdiction of the trial court." Plaintiffs' long history of sports celebrity status is irrefutable. (PSOF ¶114; Ex. 46 Plaintiff's Profiles; and Exhibits 44-45, 46A-F, 65-66, 68)(for more record evidence of Plaintiffs' celebrity status, see Ex. 32-37; Plaintiffs' Affidavits; Ex. 44-45, 65-68).

secondary meaning. Frosty Treats, Inc. v. Sony Computer Entertainment America, Inc., 426 F.3d 1001 (8th Cir. 2005); Yellow Cab Company of Sacramento v. Yellow Cab of Elk Grove, Inc., 419 F.3d 925 (9th Cir. 2005). Plaintiffs' marks are not merely generic or descriptive (Ex. 25, Schedule of Plaintiffs' Marks), and HGI/FUBU used Plaintiffs' fanciful marks on clothes and hangtags: "Curly", "Showboat", "Twiggy", etc.

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(Ex. 12; Ex. 13A). Although Marques Haynes did not use a nickname, it is not reasonably disputed that he, and all Plaintiffs, are famous and have acquired secondary meaning. Plaintiffs' nicknames are original and well known. (PSOF ¶78). Plaintiffs have shown that HGI and their licensee, FUBU, placed Plaintiffs names on hangtags entitled "Legends of the Hardwood" (Ex. 12) and this alone is irrefutable evidence of their celebrity status. (PSOF ¶82). HGI does not dispute the apparel was sold in interstate commerce. (HGI RNSOF ¶10). FUBU does not dispute that apparel bearing Plaintiffs' marks was sold in interstate

7 8 9 10 11 12 13 14 15 16 17 1194 at [8] (9th Cir. 1979), or it has been worded "the average customer would be likely to believe that the 18 19 20 21 22 23 24 25 26 27 Distilling Corp. v. Maier Brewing Co., 314 F.2d 149 (C.A.Cal. 1963). As to FUBU's assertion that Plaintiffs 28
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commerce. (FFSOF ¶8-9). Plaintiffs have evidence that their names are strong marks. (PSOF ¶148). Personal names may acquire secondary meaning with widespread public recognition. E&J Gallo Winery v. Gallo Cattle Company, 967 F.2d 1280 at [15] (9th Cir. 1992). In Plaintiffs' Exhibit 9C, Mannie Jackson wrote to all alumni, waxing on about talent, brands and Halls of Fame, all while mentioning Haynes, Neal, Sanders and Hall by name. (See Ex. 9C, Alumni Letter by M. Jackson). B. Plaintiffs Have Adduced Evidence of Likelihood of Confusion All that likelihood of confusion boils down to after weighing the factors is "whether a reasonable consumer of average intelligence and experience would be confused," and believe there is some association between FUBU's products and Plaintiffs. NatWest Corporation v. Nym Company of California, Inc., 595 F.2d

infringers product had some connection with the product of the Plaintiff." HMH Publishing Co. Inc. v. Lambert, 482 F.2d 595 (9th Cir. 1973). Plaintiffs proffer irrefutable evidence as to HGI's and FUBU's total lack of authority and their intent to "profit by confusing customers concerning the endorsement of the product." (Plaintiffs Memo, P.3, Lines 25-26, and P.4, Lines 3-4, citing to PSOF ¶¶6,8,40,44-45.) Plaintiffs assert in their Memo that HGI/FUBU intended to exploit their names for profit and that HGI/FUBU used their names as identical marks on the FUBU clothing line. (PSOF ¶¶115-120). As to "likelihood of confusion," the legal standard is that likelihood of confusion is presumed when an infringer intends to use Plaintiffs marks. Fleischmann

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suffered no damages, Plaintiffs may obtain summary judgment as to FUBU's liability and leave to the fact finder the issue of damages. Some factors alone are so strong as to support summary judgment on main issues: Plaintiffs have protectable marks (secondary meaning) that were exploited in commerce, without authority, and there is a likelihood of confusion. 1. Strength of Plaintiffs' Marks: Plaintiffs are well known sports celebrities. It is because of

this fact that they were chosen from five hundred (600) former players to be featured on the clothes and the 7 8 9 10 11 12 13 14 15 16 17 Weisfeld approved these "Legends" hangtags. (Ex. 1G, Blenden Tr. 127-129). 18 19 20 21 22 23 24 25 26 27 that it may be considered first. Brooksfield at [27][31]. "Obviously the greater the similarity between the two 28
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hangtags used to market the clothes. Weisfeld named some Plaintiffs as being "more recognizable than current players." (Ex. 1F, Weisfeld Tr. 108). FUBU did not even conduct a marketing survey to test the reliability of Plaintiffs' names. (Ex. 1G, Blenden Tr. 121), as "they were familiar names." (Id. at 24). Fanciful, arbitrary and suggestive trademarks are considered inherently distinctive and are afforded the greatest protection, because their intrinsic nature serves to identify a particular source of the product. Official Airline Guides, Inc. v. Goss, 6 F.3d 1385 (9th Cir. 1993). Mere descriptive words, when combined, may constitute an arbitrary, composite mark. J. Thomas McCarthy, MCCarthy of Trademarks and Unfair Competition § 7:15 (4th Ed. 2005). "Legends" hangtags and FUBU apparel reinforced Plaintiffs' arbitrary composite marks--i.e., "Curly, Neal, 22." (Ex. 12; Ex. 12A, Item 43 digital image). FUBU's Aurum and

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Relatedness of the Goods: Both Plaintiffs and HGI are in the business of basketball.

FUBU entered this related field by incorporating basketball, athletic motifs and the Harlem Globetrotters. A proper analysis of this factor does not "overemphasize the differences", but focuses on whether the products are related to the same "industry generally". Brooksfield Communications, Inc., v. West Coast

Entertainment Corp., 174 F.3d 1036 at [32] (9th Cir. 1999); citing Dreamwerks Production Group, Inc. v. SKG Studio, 142 F.3d 1127, 1131 (9th Cir. 1998). 3. Similarity of the Marks: Plaintiffs' marks (Ex. 25) and their various combinations are

identical to those used by HGI and FUBU on their clothes. (Ex. 12-13; PSOF ¶70). This factor is so strong

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marks at issue, the greater the likelihood of confusion." GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199 (9th Cir. 2000) cited by Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135 at [19] (9th Cir. 2002). Here, the marks are identical. 4. Evidence of Actual Confusion: This element of analysis can be disposed of if intent is

shown. Evidence of actual confusion is not required to prove the likelihood of confusion. Centaur Communications, Ltd v. A/S/M/ Communications, Inc., 830 F.2d 1217 (2nd Cir.1987). In GTFM, Inc. and GTFM, LLC v. Solid Clothing Inc., 215 F.Supp. 273 (S.D.N.Y. 2002), at [11] the court stated "GTFM has presented no survey evidence and only one anecdote in support of actual confusion" and that "it is well established that `actual confusion' need not be shown to prevail under the Lanham Act." Regardless, Plaintiffs have provided some evidence of actual confusion. (PSOF ¶¶115-117; PSFDSOF ¶(12)). 5. GTFM's Intent: Proof of FUBU's intent is NOT necessary for summary judgment on the

issue of likelihood of confusion. A presumption of intentional infringement (relevant to disgorgement of profits) may be raised where there is evidence of an intent to capitalize on reputation or obtain an advantage from the other's good will. Urantia Foundation v. Maaherra, 895 F.Supp. 1338 at [13][14] (D.Ariz. 1995). Plaintiffs proffer compelling evidence of FUBU's intent to use their marks to promote and advertise the FUBU apparel. (PSOF ¶9,21,118,120; See also Ex. 24, FUBU CAD Drawings showing various uses of

18 19 20 21 22 23 24 25 26 27 for decades to suggest due diligence is simply fantasy. (FFSOF ¶11). FUBU admits that Plaintiffs received 28
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Plaintiff's marks). FUBU admits that they wanted to see the player contracts (probably a good start on due diligence)(FFSOF ¶13), but that "because of the Globetrotters' bankruptcy, the contracts could not be located." (Id.) FUBU never saw contracts and never contacted Plaintiffs. (PSOF ¶120). The Globetrotters' bankruptcy was in 1991-1993 (Ex. 72) and the HGI/FUBU Licensing Agreement was in 2002 (Ex. 6). FUBU's assertion it used "outside" counsel has no support. (PSFDSOF ¶¶15, (13), Doc. 308). FUBU (notwithstanding ten years since bankruptcy and no contracts to review), made no effort to inquire to Plaintiffs as to their rights. FUBU's statement they were aware that HGI had been licensing players names

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payments for endorsements and appearances. (FFSOF ¶47). FUBU said that, notwithstanding these red flags, "they went forward because of representations of Mannie Jackson." (FFSOF ¶14). How about obtaining the more reliable representations of Neal, Haynes, Thornton, Rivers, Sanders and Hall? They weren't hard to find--Jackson's Alumni Director Vaughn keeps them in his database and files and forwards them their fan mail. (Ex. 1D, Vaughn Tr. 13-24). It is undisputed that FUBU conducted no due diligence as to Plaintiffs' rights. (HGI RNSOF ¶¶16-

7 8 9 10 11 12 13 14 15 16 17 Corp. v. Maier Brewing Co., 314 F.2d 149 (9th Cir. 1963); HMH Publishing Co. Inc. v. Lambert, 482 F.2d 595 (9th 18 19 20 21 22 23 24 25 26 27 market those names" (Ex. 1A, Jackson Tr. 186) and he never asked FUBU to include individual names. (Id. 28
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17,19). FUBU asserts they had "no obligation to contact any of the former Harlem Globetrotter players about their approval" (FFSOF ¶19), and no one did. (Id. at ¶17). FUBU, who did another licensing deal using Muhammed Ali, was apparently more diligent in confirming authority from Ali. (Ex. 1F, Weisfeld Tr. 112). No intent need be shown to find infringement under the Lanham Act. Where intent is shown, likelihood of confusion is presumed. A look at the garments confirms that HGI and FUBU intended to, and did, use Plaintiffs' names, nicknames, and numbers on their merchandise. (PSOF ¶¶12-13). The law requires no malice. HGI'S alleged "belief" it had the right is irrelevant to this factor. (It may be relevant to the issue of disgorgement of profits as damages.) The case law is consistent: "where intent is shown, the inference of confusion is readily drawn." See Dreamwerks, 142 F.3d 1127 (9th Cir. 1998); Fleischmann Distilling

Cir. 1973).

Intent may be constructive and shown by the circumstances. Brooksfield Communications, Inc., v.

West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999); Official Airline Guides, Inc. v. Goss, 6 F.3d 1385 (9th Cir. 1993). Intent is an issue which arises again, but in the damages context--the province of the fact finder. To disgorge profits, most cases hold that intent is at least relevant, though not expressly required by § 43(a) of the Lanham Act. Intent may be shown circumstantially and be constructive, and need not be actual. This is because it is rare for malicious infringers to provide evidence of their malicious intent. They never admit it. Mannie Jackson's dissembling as to his intent is telling. In deposition Jackson states "he never intended to

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at 278). In his letter to Alumni, he states that "the younger guys are the most popular," (Ex. 9C), trying to discount Plaintiffs value. Yet, Jackson personally approved the designs using Plaintiffs' marks as the Licensing Agreement requires HGI's approval. (PSOF ¶120). FUBU had an obligation to ensure HGI's sublicense was approved. (HGI asserts it has a "license" to use Plaintiffs' marks). The law requires express authority between a licensor (Plaintiffs) and licensee (HGI) before the licensee may sublicense a right of publicity or a trademark. Miller v. Glenn Miller Productions,

7 8 9 10 11 12 13 14 15 16 17 "not interested in looking" at contracts, and Plaintiffs names were never even brought up. (HGI RNSOF 18 19 20 21 22 23 24 25 26 27 confusion may be shown with fewer than eight factors and it is not error to choose a different test than 28
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318 F.Supp. 923 (C.D.Cal. 2004). HGI had no express authority and FUBU admits it never obtained any. (FFSOF ¶14,17,19). Plaintiffs will never know the total profits made off their names. The law wisely does not require specificity of profits as a measure of damages because the behavior of many infringers makes ascertainment nearly impossible. I.e., infringers will say foreign sales are only "a few" in Japan (Ex. 1F, Weisfeld Tr. 40), even though there are Philippines sales (Ex. 13), and maybe as many as thirty countries (Ex. 1A, Jackson Tr. 122). (See also PSFDSOF ¶¶38, (21), Doc. 208, as to ongoing discovery of styles). Willful intent may be shown by a lack of due diligence. E&J Gallo Winery v. Consorzio del Gallo Nero., 782 F.Supp. 472 (N.D.Cal. 1992)(failure to get a legal opinion as to likelihood of confusion). HGI does not dispute that not even a sample player contract was attached to the Licensing Agreement and FUBU was

¶¶7,13,14). It is undisputed that neither HGI nor FUBU contacted any Plaintiff (Id. at 17,18) and FUBU's Blenden (a lawyer) never saw Plaintiffs' contracts (Id. at 1b). FUBU admits these due diligence failures which recklessly disregarded Plaintiffs. (FFSOF ¶¶11, 13-17, 19). There is record evidence that the prominent use of Plaintiffs' names on FUBU hangtags was FUBU'S idea and was intended to suggest association, approval or endorsement by Plaintiffs. (Exhibit 1G, Blenden Tr. 126-127). 6. Marketing Channels Used, Likely Degree of Purchaser Care and Likelihood of Expansion of

Product Line: The FUBU licensing agreement governs the marketing channels for the Globetrotter line. (Ex. 6). These factors are of lesser importance and addressed in Plaintiffs' Memo, Doc. 279. Likelihood of

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"Sleekcraft." Interstellar Starship Services, Limited v. Epix Incorporated, 184 F.3d 1107 (9th Cir. 1999), and M2 Software, Inc. v. Madacy Entertainment, 421 F.3d 1073 (9th Cir. 2005). III. SUMMARY JUDGMENT FOR PLAINTIFFS IS PROPER ON PLAINTIFFS' UNJUST ENRICHMENT CLAIMS

HGI/FUBU were unjustly enriched at Plaintiffs' expense. (Plaintiffs' Memo, P.5, Line 27; Ex. 6, and 9C at P.2, Line 9 describing the 10% royalty on the first $10 million in revenue to be paid to HGI, and (Ex. 9C) Jackson's letter as to the tremendous success of the FUBU deal). FUBU's use of Plaintiffs' marks conferred a benefit upon FUBU which would be inequitable to retain to the exclusion of Plaintiffs. Plaintiffs would have "otherwise received" endorsement money under prior dealings with the Globetrotters. The fact that Plaintiff Rivers received additional publicity from FUBU marketing is not "fatal" to his claim. The benefit Plaintiffs are entitled to is money FUBU kept--not publicity that Plaintiffs already have. (Plaintiffs' Memo,

12 13 14 15 16 17 Association, 89 F.Supp.2d 1108 (D.Ariz.1989). Plaintiffs' Memo at P.5 Line 4-6 makes clear again that it is 18 19 20 21 22 23 24 25 26 27 undisputed that HGI themselves paid Plaintiffs 8% for apparel (HGI RNSOF ¶24) and 25% for 28
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P.2, Lines 9-10, references the hangtags bearing the Plaintiffs' names; Exhibit 12). IV. SUMMARY JUDGMENT FOR PLAINTIFFS IS PROPER ON PLAINTIFFS RIGHT OF PUBLICITY CLAIMS

The elements of the right of publicity claim are easily made. All that need be shown is appropriation for a commercial advantage of a plaintiff's name or likeness without consent. Pooley v. National Hole in One

undisputed that no contracts existed and no direct express authority was given to HGI or FUBU. (HGI RNSOF ¶6)(see also PSOF ¶¶59-64,67). It is also undisputed that there was no contact by HGI or HGI'S licensee, FUBU. (HGI RNSOF ¶¶17-19; PSOF ¶18; Plaintiffs' Memo, Doc. 279, P.5, Lines 9-10; FFSOF ¶¶17,19). FUBU asserts that Plaintiffs have no injury as the "only" injury is that they were not compensated for the use of their names and likenesses. But, this is all the injury that need be shown and is the typical injury for rights of publicity claims. (PSOF ¶104, disputing HGI'S SOF ¶103). Additionally, disgorgement of profits is not Plaintiffs only remedy. Other measures of damages are available to fact finders. A reasonable royalty for the use of their names and likenesses, can be derived. It is

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bobbleheads (Id. at 26); the CBA stated 25% and Neal's contract stated 25%. (PSOF ¶103). HGI asserts Jackson paid Plaintiffs 25% on the bobblehead dolls out of charity ­ this from the party who could not name a single old player that his Foundation helped with FUBU revenues. (PSOF ¶76, citing to Jackson's testimony and HGI RNSOF ¶30). V. SUMMARY JUDGMENT IS PROPER ON PLAINTIFFS' FALSE LIGHT INVASION OF PRIVACY CLAIMS FUBU asserts that the apparel was not highly offensive to a reasonable person, and that the offense must be that the information published was offensive "not the circumstances." Plaintiffs have shown that HGI/FUBU published their names (i.e. put them on clothes and tags) falsely implying an endorsement, and given HGI'S and FUBU's positions, it was in reckless disregard of Plaintiffs' rights. A reasonable person could find it offensive to have their celebrity status used in such a manner without permission. For

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evidence of "offense" see also PSOF ¶¶53, 104. The action "provides protection against wrongful conduct that falls short of `outrage' but nevertheless should be deterred." Outrage is not required. Godbehere v.

Phoenix Newspapers, Inc., 783 P.2d 781 at [5] (Ariz. 1989). FUBU conducted no due diligence, which was beyond reckless given their resources and those of their partner, Samsung America. (PSOF ¶120). If Mohammed Ali's name was put on red dresses would his offense be reasonable? Of course it would. Plaintiffs' Memo asserts at P.2 Line 10 that hangtags used on apparel used Plaintiffs' names as marketing tools and cites to Exhibit 12. Reckless disregard was asserted at P.2 Line 13 citing to SOF ¶11A, it is undisputed that there was no due diligence at all as to Plaintiffs' rights. (HGI RNSOF ¶¶13-14, 16-18)(See also PSOF ¶120).

Plaintiffs Motion for Summary Judgment should be granted against all the FUBU Defendants on, at a minimum, the elements of secondary meaning and likelihood of confusion; and as to Plaintiffs' common law rights of publicity claims; and as to Plaintiffs' unjust enrichment claims; and as to Plaintiffs' false light invasion of privacy claim.

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DATED this_13th_ day of December, 2005.

By:

____/S/ Clay M. Townsend___________ CLAY M. TOWNSEND, ESQUIRE Florida Bar No.: 363375 KEITH MITNIK, ESQUIRE Florida Bar No.: 436127 BRANDON S. PETERS 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

PLEASE TAKE FURTHER NOTICE that copies of the above-referenced documents have been served via first class mail upon 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 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

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Anders Rosenquist, Jr., Esq. Florence M. Bruemmer, Esq. ROSENQUIST & ASSOCIATES 80 E. Columbus Phoenix, AZ 85012 Attorney for Plaintiff Lemon Certificate of Service Vanessa Braeley, declares as follows: 1. I hereby certify that on December 13th, 2005, a true and correct copy of the Plaintiffs' Reply to Defendant GTFM LLC's Response to Motion for Summary Judgment 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 December 13th, 2005, a true and correct copy of Plaintiffs' Reply to Defendant GTFM LLC's Response to Motion for Summary Judgment postage paid thereon, was sent via U.S. Mail to the following parties, at the addresses listed, to-wit: Joel L. Herz, Esq. LAW OFFICES OF JOEL L. HERZ 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

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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 3. I declare under penalty of perjury under the laws of the United States that the foregoing is true and correct. DATED: December 13th, 2005. Signed: ____/S/Vanessa L. Braeley_________ Vanessa L. Braeley Legal Assistant to Clay Townsend MORGAN & MORGAN 20 N. Orange Avenue, 16th Floor Orlando, FL 32801 Attorneys for the Plaintiffs Curly Neal, Larry Rivers, Dallas Thornton, Marques Haynes, Robert Hall and James Sanders

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