Free Declaration - 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] Ira S. Sacks, Esq. Safia A. Anand, Esq. Melanie J. Sacks, Esq. Dreier LLP 499 Park Avenue New York, NY 10022 Telephone: 212-328-6100 Facsimile: 212-328-6101 [email protected] Attorneys for Defendant GTFM, LLC UNITED STATES DISTRICT COURT DISTRICT OF ARIZONA MEADOWLARK LEMON, a married man, Plaintiff/Counterdefendant vs. HARLEM GLOBETROTTERS INTERNATIONAL, INC., et al., Defendants/Counterclaimants ) ) ) ) ) ) ) ) ) ) )

Case No. CV 04-0299 PHX-DGC Case No. CV 04-1023-PHX-DGC

REPLY DECLARATION OF IRA S. SACKS IN FURTHER SUPPORT OF GTFM, LLC'S MOTION FOR SUMMARY JUDGMENT
IRA S. SACKS declares as follows under penalty of perjury pursuant to 28 U.S.C. § 1746:

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1. ("GTFM"). Judgment. 2.

I am a partner in the firm of Dreier LLP, attorneys for defendants GTFM, LLC I submit this declaration in further support of GTFM's Motion for Summary

Other than as expressly stated, the matters set forth herein are based upon my

personal knowledge. 3. Upon examination of (i) Plaintiff Meadowlark Lemon's ("Lemon") Statement of

Contraverting Facts in support of his opposition to GTFM's motion for summary judgment ("Lemon SCF"); (ii) Lemon's Response to Defendant GTFM, LLC's Motion for Summary Judgment ("Lemon Br."); (iii) the Florida Plaintiffs' Statement of Facts Pursuant to Local Rule 1.10(1)(1) in support of Plaintiffs' Response to Defendants' Motion For Summary Judgment And Statement Of Contraverted Facts Asserted by FUBU ("Fl. Pl. SCF"); (iv) the Florida Plaintiffs' Response in Opposition to Defendant GTFM, LLC's Motion for Summary Judgment

14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Case 2:04-cv-00299-DGC Document 313 ("Fl. Pl. Br."); and (v) the evidentiary record, it is clear that the many of the Plaintiffs' assertions are without evidentiary support and/or are contrary to the evidentiary record, as described herein. 4. Lemon attempts to show the existence of secondary meaning in his name, but fails

to present any evidence of actual or likely consumer confusion. Lemon's assertion that "[I]t is clear that GTFM's use of [Lemon's] name and player number would cause the consumer to associate the clothing with [Lemon] as the source and/or sponsor" (Lemon Br. at 5) is mere supposition, and is not supported by any evidence. 5. The fact that Lemon is the only Harlem Globetrotter with the name "Meadowlark

Lemon" is irrelevant to proving secondary meaning. From this fact, Lemon concludes that "there is no other `Lemon' that consumers could possibly associate the `mark' with as the source or sponsor." Lemon Br. at 5. An opposition to summary judgment must rely on admissible fact, not argument, speculation or supposition. There is no evidence that consumers "associate" the name "Lemon" on the Globetrotters Apparel as indicating sponsorship by anyone.
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6.

Lemon asserts that he is a "well-known celebrity" (Lemon Br. at 6), and has

"submitted evidence of his celebrity status and notoriety, which is proof that his name, number and likeness have achieved secondary meaning" (Lemon SCF at ¶ 44; see also Lemon SCF at ¶ 45). This assertion is a misstatement of the record and of law. Lemon's cited evidence consists of the deposition testimony of HGI CEO Mannie Jackson, in which Jackson states that he considered all of the Plaintiffs to be "legends," and that he thought Lemon and Haynes were the best known Globetrotters (Jackson Tr. at 15, 138, 187), and the deposition testimony of Lawrence Blenden of GTFM, stating that he felt that Lemon was one of a few "old big names" of Globetrotters players (Blenden Tr. at 121). Jackson and Blenden, however, are not consumers of the Globetrotters Apparel and shed no light on the question of whether a "substantial segment of consumers and potential consumers" associated the Globetrotters Apparel with Plaintiffs. Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1354 (9th Cir. 1985). 7. Similarly, that "Meadowlark Lemon is on the `Legends' wall at the Globetrotters

office" (Lemon SCF at ¶ 64) is irrelevant to prove Lemon's fame among consumers at large or whether a "substantial segment of consumers and potential consumers" associated the Globetrotters Apparel with Plaintiffs. 8. Lemon also asserts that "[t]he public is very aware that celebrities, especially

sports celebrities, make profits from endorsing products such as clothing, etc. The concept of celebrity endorsement is common knowledge among consumers. Therefore, the use of

[Lemon's] name in conjunction with a clothing line, especially sports apparel such as basketball jerseys, implies to the public that [Lemon] is endorsing, or has given approval, to the product." Lemon Br. at 6. Again, such perambulations cannot substitute for evidence that any particular member of the public ­ much less the required "substantial segment of consumers and potential consumers" ­ were likely confused as to the source of the Globetrotters Apparel. 9. Lemon "affirmatively asserts that he has rights to his player number (36) which

he wore as a Harlem Globetrotter player and was retired when he was inducted into the Basketball Hall of Fame." Lemon SCF ¶ 33; see ¶¶ 57-59 (citing Ex. A thereto, Lemon Aff., at
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¶¶ 2-3; Ex. D, Vaughn Tr., at 38). Again, that argument is not supported by evidence. Lemon has no evidence that a "substantial segment of consumers and potential consumers" associate the number "36" on apparel as indicating sponsorship by Lemon. Lemon's own declaration (and the testimony of the Globetrotters' director of alumni relations) ­ two individuals intimately involved with the Globetrotters organization ­ do not constitute evidence regarding the views of the required "substantial segment of consumers and potential consumers" of Globetrotters Apparel. 10. The Florida Plaintiffs state that "the length and manner of Plaintiffs' marks are

some of the most sustained and intense in sports marketing", citing GTFM's own statement of facts regarding the Globetrotters use of the names and/or likenesses of various Florida Plaintiffs over many years. See GTFM SOF ¶¶ 36-40, 49, 59, 62-63, 68-69, 77-78. That evidence, however, does not refer to Plaintiffs' own use of the Alleged Trademarks. Rather, each prior placement of Plaintiffs' Alleged Trademarks was by the Globetrotters, and not by the individual Plaintiffs. 11. The Florida Plaintiffs also assert that "Plaintiffs' public recognition is evidenced

by the numerous FUBU style numbers bearing Plaintiffs' marks on the FUBU garments, hangtags, or both" and that "[i]t is FUBU and HGI themselves that are the font of evidence of `public recognition' and that Plaintiffs' names have acquired the necessary secondary meaning." Fl. Pl. Br. at 5. That argument is circular reasoning and not evidence. It asserts that GTFM would not have used the names if the names did not have secondary meaning. That argument vitiates the requirement to prove secondary meaning. It is contrary to law. 12. Applying similarly circular logic, the Florida Plaintiffs argue that "FUBU would

not have launched a clothing line using Plaintiffs' marks if FUBU's lawyers could not have legally protected their investment. Presumably, FUBU would have spent a large amount of money litigating the protectibility of their purportedly licensed mark, `Curly Neal 22' on FUBU clothes". Fl. Pl. Br. at 8. There is no evidence supporting this presumption. There is no evidence that GTFM viewed the Plaintiffs names as important to their marketing program or the
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style of the apparel. There is no evidence that GTFM required any assurance regarding Plaintiffs names other than what HGI provided in the License Agreement. 13. The Florida Plaintiffs contend that "Plaintiffs' numbers have become equivalent

to their identities", but cite no evidence to that effect. Furthermore, the fact that "Globetrotter alumni director Govonor Vaughn could not name any other players in the history of the Globetrotters that had worn Plaintiffs' numbers" has no bearing as to whether a "substantial segment of consumers and potential consumers" of Globetrotters Apparel associate the numbers as indicating sponsorship of the apparel by Plaintiffs. Moreover, it just shows that Vaughn does not track numbers as important, since many other players have done so. (HGI SOF ¶¶ 8-10, 12; Sacks Decl. in support of GTFM's SJ Motion, dated Oct. 24, 2005 ("Sacks Oct. Decl."), Ex. O). 14. Lemon's statement that "the Globetrotters only used Plaintiff's name and likeness

to endorse companies while he was a player and the Globetrotters have not done so since Plaintiff left the organization" (Lemon SCF ¶ 39) is rebutted by the fact that Lemon agreed with ¶¶ 28-30 of GTFM's SOF. Lemon SCF ¶¶ 22-24. 15. Lemon's assertion that "he does currently license his name, jersey number,

likeness and/or image" is supported only by his own vague declaration to that effect, and there is no specificity ­ or even a single example ­ in the record as to what, if any, products or services Lemon provides through such licensing. Lemon SCF ¶ 41, citing Ex. A thereto (Lemon Decl.) at ¶ 12. 16. The Florida Plaintiffs state that "[m]arket investigation confirms shirts made with

`Curly' Neal's face". Fl. Pl. Br. at 8. The Florida Plaintiffs further assert that "Curly Neal's actual face and body appear on FUBU tee shirts, as do caricatures of Neal." Fl. Pl. Br. at 11. There is no evidence in the record to this effect. Although the cited exhibits (Ex. 13 to Fl. Pl. SCF) contains pictures of apparel, some of which bear images of an unidentified individual(s) or caricature(s), no evidence has been submitted illustrating that the images are, in fact Neal. 17. Lemon's assertion that "the `mark' used by GTFM and Plaintiff's `mark' are

identical" is unsupported. Lemon Br. at 7. There is no evidence that Lemon ever used his name
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and/or player number as a source identifier ­ a trademark ­ on goods or services sold or advertised to the public. 18. Similarly, the Florida Plaintiffs' various assertions that the "marks are identical:

`Curly' Neal the Plaintiff and real person is identical to `Curly' and `22' appearing on jerseys and hangtags" (Fl. Pl. Br. at 11); and that "[t]he mark `Haynes' as Plaintiff's name and the mark `Haynes' on the FUBU jersey are not only similar . . . the marks are identical" are misplaced. The Florida Plaintiffs provide no evidence indicating that Neal, Haynes, or any other Plaintiffs used the cited marks at all as a source identifier ­ a trademark ­ on goods or services sold or advertised to the public. 19. Lemon's statement that "GTFM's product, the sports apparel, is identical to

[Lemon's]" has no evidentiary support. Lemon also baldly states that he "continues . . . to produce and distribute sports and basketball products with his name on it." Lemon has not specified the "sports and basketball products" on which he has done so. Moreover, that is not what GTFM sold ­ GTFM sold apparel, not sports and basketball products. 20. The Florida Plaintiffs' observation that "Plaintiffs numbers were also used on

non-traditional, non-athletic garments, such as tee shirts, skirts and dresses" (Fl. Pl. Br. at 8) actually supports GTFM's motion. As pointed out immediately above, GTFM was in the apparel business, not the sports and basketball products business. 21. The Florida Plaintiffs state that "Both Plaintiffs and HGI are in the business of

basketball. FUBU entered this related field by incorporating basketball, athletic motifs and the Harlem Globetrotters." Fl. Pl. Br. at 10. This statement mischaracterizes the nature of GTFM's Globetrotters Apparel, which is fashion, and not athletic, apparel. As the Florida Plaintiffs themselves concede, "Plaintiffs are not, strictly speaking, `competitors' with FUBU." Fl. Pl. Br. at 11. 22. Lemon provides no evidentiary support for his assertion that GTFM used his

name with the intent of profiting. Lemon Br. at 7. The authority cited in support of this proposition consists of documents showing the amount of GTFM's sales of Globetrotters
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apparel. Lemon SCF ¶¶ 66-70. The mere fact that GTFM sold the Globetrotters Apparel for profit does not prove that GTFM did so with the intent to profit by using Lemon's Alleged Trademark. The Globetrotters Apparel had numerous FUBU trademarks; it had numerous

Globetrotter trademarks; it was retro style, which was hot at the time; it had particular styling; it had particular colors; and it had particular pricing. And some had Plaintiffs' Alleged

Trademarks. There is no evidence that GTFM made or intended to make a nickel ­ or that any consumer bought (or likely bought) Globetrotters Apparel ­ because of Plaintiffs' Alleged Trademarks. 23. Lemon states that he "has submitted evidence on whether purchasers of the

FUBU/HGI Apparel were likely to be confused as to the source or sponsorship of the merchandise," citing the Jackson and Blenden deposition testimony described in ¶ 6 herein. That testimony simply has no bearing on whether a "substantial segment of consumers and potential consumers" of Globetrotters Apparel were confused as to the source and/or sponsorship of the Globetrotters Apparel, and merely constitutes the opinions of two individuals who were involved in the Globetrotters Apparel regarding their personal awareness of Lemon and/or the Florida Plaintiffs. 24. Lemon again states the general proposition that "[t]he concept of celebrity

endorsement of goods is common knowledge among consumers. The public is very aware that celebrities, especially sports celebrities, make profits from endorsing products such as clothing, etc." Lemon Br. at 7. There is no evidence in support of this assertion. This statement also has no relevance to the likelihood of confusion inquiry. Whether the public generally knows that any celebrity may endorse goods or services fails to prove that a "substantial segment of consumers and potential consumers" of Globetrotters Apparel believe that is the case here. 25. Lemon further asserts that "Plaintiff has set forth ample proof that it is highly

likely that consumers purchased infringing clothing because it exhibited his name." Lemon Br. at 15. There is no citation to any evidence or authority for this statement, and there is no such evidence. Lemon makes the same statement, however, in ¶¶ 46-47 of his SCF, citing to the
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deposition testimony of Jackson and Blenden described in ¶ 6 herein. Jackson's and Blenden's statements that they considered Lemon to be one of the most famous Globetrotters are not evidence as to why a "substantial segment of consumers and potential consumers" of Globetrotters Apparel purchased the Globetrotters Apparel. 26. The Florida Plaintiffs' reference to another litigation, in which GTFM was

involved as a Plaintiff, is completely irrelevant. Fl. Pl. Br. at 13, 17. Making no effort to explain the facts and circumstances of that case, GTFM, Inc. v. Solid Clothing, Inc., 215 F.Supp.2d 273 (S.D.N.Y. 2002),1 the Florida Plaintiffs apparently assert that, because GTFM proved likelihood of confusion without use of a consumer survey, that "[s]urely, FUBU would agree . . . that Plaintiffs' numbers have at least acquired secondary meaning when exploited within the limited context of or association with, Plaintiffs and the Harlem Globetrotters." Id. In Solid, GTFM established likelihood of confusion by offering substantial evidence of use of the mark at issue, advertising expenditures, sales success, unsolicited media coverage and bad faith by defendant. There is no such evidence here. 27. The Florida Plaintiffs state that "Plaintiffs have some evidence of `actual

confusion'", citing the affidavits of two of the Plaintiffs themselves. Fl. Pl. Br. at 13, citing Ex. 32 and 33 to the Fl. Pl. SCF. Those declarations contain no details of who was actually confused or what they were confused about. 28. The Florida Plaintiffs further assert that "[t]here 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." Fl. Pl. Br. at 14, citing Blenden Tr. at 126-127. To the contrary, the cited deposition testimony makes absolutely no mention of the individual Plaintiffs, and in no way implies that FUBU intended to suggest that the individual

Plaintiffs incorrectly cited this case as GTFM, Inc. and GTFM, LLC v. Solid Clothing, Inc., 215F.Supp. 273 (S.D.N.Y. 2002).
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Plaintiffs endorsed the apparel. Blenden actually stated that ". . . [the use of the Plaintiffs' names] is just an informational piece of material about the Harlem Globetrotters . . . in an effort to inform the consumer about -- a little bit more about the Globetrotters than you would normally see from just playing ball." Blenden Tr. at 126-127, affixed to the Fl. Pl. SCF as Ex. 1(G) (emphasis added). If anything, GTFM intended to call to mind the Globetrotters team, not any individual members. 29. The Florida Plaintiffs further assert that "HGI and FUBU have presented no

evidence at all that consumers of the FUBU line believed that Plaintiffs had no association with or did not endorse the garments. Nor have they produced any evidence that the presences of marks like `22' and `Curly' on a jersey was an irrelevant factor in consumers' decisions to buy the garment." Fl. Pl. Br. at 15. This statement misrepresents the burden of proof in this matter, as it is the Plaintiffs ­ not HGI and/or GTFM ­ who bear the burden of proving consumer confusion. 30. That "[i]t could be argued that FUBU's actions appropriated other potential

opportunities that may have been available to Plaintiffs" is unsupported by the record. Fl. Pl. Br. at 16. In fact, Plaintiffs have not submitted any evidence of lost profits as a result of the GTFM/HGI Apparel. GTFM SOF ¶¶ 33, 44, 51, 56, 65, 72, 80. Moreover, Rivers testified that he actually felt that GTFM's use of his name may have enhanced his notoriety. GTFM SOF ¶ 65. 31. Lemon has not "submitted evidence of lost profits as a result of GTFM/HGI

apparel in his Expert Report", nor has he presented "evidence of actual injury". GTFM SOF ¶ 33. Moreover, Plaintiffs' expert admittedly failed to calculate actual damages, proceeding

instead on a theory of unjust enrichment and seeking complete disgorgement of GTFM's profits for the FUBU/HGI Apparel. GTFM SOF ¶ 97. 32. Similarly, Lemon's statement that "the Expert Report estimates the income

Plaintiff lost as a result of GTFM's conduct, what a reasonable royalty rate would be, and damages by individual plaintiff as much as possible" is false. Lemon SCF ¶ 49; see also Lemon
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SCF at ¶ 42-44. The Expert Report contains no conclusions regarding the estimated lost income of any Plaintiff, including Lemon; it also fails to break out the damage calculations by plaintiff. Furthermore, Lemon's assertion that Abalos calculated a reasonable royalty rate is contradicted by his own statements in ¶¶ 52 and 53 of the Lemon SCF, wherein he states that "he was not required to determine what a reasonable royalty rate was for the use of Plaintiff's name, number and likeness as Plaintiff used a different methodology in computing the amount of damages." On the contrary, Plaintiffs have not offered any evidence as to the fair market value of the use of their Alleged Trademarks; indeed, they specifically eschewed such a claim. GTFM SOF ¶ 96. 33. It is not true that "GTFM cannot (or refused to) reliably quantify sales." Lemon

Br. at 8 (citing Lemon SCF at ¶ 72; see also Lemon SCF at ¶ 71). GTFM provided Plaintiffs with all available sales information. The total amount of GTFM's sale of Globetrotters Apparel using each Plaintiffs' name and/or number could have been determined with sufficient certainty from that data. See GTFM's Reply Memo of Law in further support of its Motion to Strike Plaintiffs' Expert Report ("Reply Memo to Strike"), at 5-8; see also Sacks Reply Decl. in support of Reply Memo to Strike ¶¶ 3-5. 34. Statements by Mannie Jackson to a member of the media assigning a dollar

amount to the value of the licensing "deal" with FUBU cannot be asserted by the Plaintiffs as the actual total sales of Globetrotters Apparel, particularly in light of the actual data produced by GTFM. Lemon Br. at 8; see also Lemon SCF at ¶ 70. 35. Similarly, the projected sales volume of the Globetrotters apparel is irrelevant.

Lemon SCF at ¶ 66. GTFM has provided the Plaintiffs with actual sales figures. 36. The Florida Plaintiffs again seek to incorporate baseless assertions regarding

GTFM's alleged discovery violations, stating that "FUBU has, under oath, misrepresented material facts and frustrated Plaintiffs' discovery. Plaintiffs recently learned that Weisfeld, Aurum and Blenden were deceitful in deposition. They failed to disclose an important

stockholder in GTFM, LLC and GTFM, Inc. . . ." Fl. Pl. Br. at 21. The Florida Plaintiffs'

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further conjecture that "FUBU's only motive for this misrepresentation would be to conceal a very damaging witness" is baseless and inflammatory. Fl. Pl. Br. at 21. 37. Those assertions are also riddled with falsities. In their deposition testimony,

Messrs. Aurum, Blenden and Weisfeld forgot to mention rapper LL Cool J (James Todd Smith, herein "Smith") as a minor non-voting member of GTFM, LLC. Plaintiffs never sought specific corporate records or membership in GTFM, LLC or served interrogatories seeking such information. The identity of members of GTFM, LLC is immaterial to this motion and this litigation. Indeed, Plaintiffs did not take discovery of Samsung ­ a 20% member in GTFM, LLC ­ despite the fact that Samsung was also in charge of all manufacturing and shipping of Globetrotters Apparel. 38. As we have previously shown (See the FUBU Defendants' Reply in further

support of their SJ Motion, at 15 n.5), Smith had nothing to do with the Globetrotters Apparel. As the complaint and answer in his lawsuit with FUBU The Collection, LLC makes plain, Smith acquired his small (less than 5%) non-voting interest in GTFM, Inc. and GTFM, LLC relatively recently in settlement of a dispute regarding a services contract. FUBU The Collection, LLC was sued because it is a party to the contract to deliver shares allegedly breached. I declare under penalty of perjury that the foregoing is true and correct. Dated: New York, New York December 9, 2005 ____/s/ Ira S. Sacks___________ Ira S. Sacks

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