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. PLAINTIFFS' REPLY TO GTFM, LLC'S OBJECTIONS TO PLAINTFFS' STATEMENT OF FACTS AND FURTHER STATEMENT OF FACTS Case Nos.: CV 04 0299 PHX DGC and CV-04-1023 PHX DGC

HARLEM GLOBETROTTERS INTERNATIONAL, 11 INC., an Arizona corporation; HARLEM GLOBETROTTERS INTERNATIONAL 12 FOUNDATION, INC., an Arizona corporation; 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 COLLECTION, LLC, a New York limited liability company, GTFM of Orlando, LLC; and GTFM, LLC, 12 herinafter FUBU. Plaintiffs' Reply will be cited as "PSFDSOF". 13 14 15 16 17 18 19 20 21 2) 22 evidence. Therefore, Plaintiffs cannot form a reply. Nevertheless, Plaintiffs assertion is further 23 24 25 26 27 28
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Counter-defendant.

Pursuant to LCR.56.1a, 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 submit their Reply to Defendants FUBU'S Objections, FUBU THE

REPLY TO FUBU'S OBJECTIONS TO PLAINTIFFS' STATEMENT OF FACTS (FUBU DSOF) Plaintiffs reply to FUBU'S Objections to Plaintiffs' Statement of Facts and state as follows:

1)

FUBU DSOF ¶1: Plaintiffs' PSOF ¶1 is a stipulation to FUBU's statement in their Motion for Summary Judgment (Doc.#180). Apparently FUBU disputes its own allegation.

FUBU DSOF ¶2: FUBU is not clear as to what Plaintiffs "mischaracterize" as to the underlying

supported by PSOF¶68, 75.

3)

Undisputed as to the date of Exhibit 5A. The Asset Purchase Agreement was executed August 1, 1993. (Exhibit 5D).

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4)

FUBU DSOF ¶4: FUBU is not specific as to what allegations it disputes, but admits to the parties and date of the asset purchase agreement. (Exhibit 5D).

5)

FUBU DSOF ¶5: Plaintiffs admit that their description of the asset purchase agreement is a summary description. Plaintiffs' assertion that Plaintiffs are not listed is undisputed by HGI.

6 (HGI RNSOF¶5, Doc#266). 7 8 9 10 11 12 13 14 15 16 9) 17 Jackson has testified that the clothing has sold in as many as thirty countries, stating "I'd say it's 18 19 20 21 22 23 24 25 26 (Exhibit 13) with numerous exhibits of clothing bearing hang tags. (Exhibits 1, 3, 8, 9, 10, 12, 27 14, 23, 28, 30, 31, 40, 42, 47, 50, 53, 54, 61, 64-67, 84, 89, include digital images). Additionally, 28
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6)

FUBU DSOF ¶6: HGI does not dispute that Plaintiffs never entered into any agreements with HGI. (HGI RNSOF¶6, Doc#266; PSOF¶61, 62).

7)

FUBU DSOF ¶7: Plaintiffs' assertion is regarding the HGI/ FUBU licensing agreement.

8)

Plaintiffs do not dispute that the assertions are excerpts from the licensing agreement.

FUBU DSOF ¶9: Plaintiffs' assertion is further supported by Exhibit 13. Additionally, HGI's

close to being accurate. Yes.", when asked about thirty countries world-wide. (Exhibit 1A, Jackson Tr.125; Exhibit 26 reflects sales in numerous states. Schedules attached to Exhibit 6, of the Licensing Agreement, list numerous countries where trademark protection was being verified.)

10)

FUBU DSOF ¶10: Plaintiffs' assertion that "much of the Harlem Globetrotters' apparel" had hang tags is supported. Additional support for this assertion is the investigation of Plaintiffs

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FUBU's Weisfeld stated that "all Harlem Globetrotter's garments would have some tag." (Exhibit 1F, Weisfeld Tr.60) and his statement that hangtags are "marketing tools." (Id. at 58)

FUBU DSOF ¶11: FUBU disputes Plaintiffs' assertion and states that due diligence was done by "outside counsel", but FUBU's Blenden stated that, even with outside counsel, he did not

6 know whether or not outside counsel had looked at any contracts. (Exhibit 1G, Blenden 7 8 9 10 11 12 13 14 15 16 13) 17 deposition (Exhibit 1A, Jackson Tr. 262). 18 19 20 21 22 23 24 25 26 went on to say that his reading of ¶7 of the Licensing Agreement did not relate to Plaintiffs: "I 27 would say we could use current players." (Exhibit 1F, Weisfeld Tr.104-105). When Blenden 28
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Tr.109). Additionally, Mannie Jackson testified that FUBU did no due diligence because of their "lack of interest in looking at 600 plus contracts stuffed away some place." (Exhibit 1A, Jackson Tr.262; also see PSOF ¶17, 19.)

12)

FUBU DSOF ¶12: Plaintiffs' assertion paraphrases FUBU's assertion in their Motion for Summary Judgment (Doc#180, P.14, Line 8 and Exhibit A to the Sacks Declaration Section 1.9(a)(8viii).

FUBU DSOF ¶13: Plaintiffs' assertion is based on the representation of Mannie Jackson in his

14)

FUBU DSOF ¶14: Plaintiffs' assertion is based on the sworn testimony of HGI's Lenihan (Exhibit 1C, Lenihan Tr.20-21).

15)

FUBU DSOF ¶15: While FUBU disputes Plaintiffs' assertion, FUBU offers no evidence that it's "outside counsel" conducted any due diligence at all related to the use of Plaintiffs' names and likenesses. In fact, when Weisfeld testified as to FUBU's use of outside counsel, Weisfeld

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was asked, "what, if anything, they [outside counsel] reviewed in regard to the player contracts", Blenden answered, "I couldn't say what Mr. Klein specifically reviewed." (Exhibit 1G, Blenden Tr.86).

FUBU DSOF ¶20: FUBU is not clear as to which of Plaintiffs' assertions are disputed. FUBU admits the assertions as to Daymond Aurum. The FUBU operating agreement (Exhibit 27, §6.5) is clear that FUBU the Collection, LLC has functions under the agreement.

FUBU DSOF ¶21: It is undisputed that "some" of the FUBU/ HGI apparel contained Plaintiffs' names, nicknames, and player numbers. (Weisfeld's Declaration, ¶5 cited in FUBU'S Motion for Summary Judgment). FUBU disputes that these constitute trademarks. Plaintiffs' assertion is supported by ample evidence that Plaintiffs' marks have acquired secondary meaning, (PSOF¶40, 54-57, 106, 107, 109, 111, 114, 118; Exhibits 44-46, 65-67), even though proof of secondary meaning is not required because Plaintiffs' marks are not generic. FUBU'S (ii) is patently false. Plaintiffs' investigation has produced several garments with the likeness of

17 Curly Neal. (Exhibit 13A, Items 11, 71, 73, 77, 84). As to (iii), Plaintiffs' assertion is supported 18 19 20 21 22 23 24 25 26 produce information that it clearly had. FUBU's Weisfeld testified that it could produce 27 information related to all styles sold, but never provided all styles. (Exhibit 1F, Weisfeld 28
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by ample evidence that Plaintiffs' marks have acquired secondary meaning due to their worldwide fame. (Exhibits 44-46, 65-67). Additionally, Plaintiffs provide evidence of actual

confusion. (PSOF¶116, 116).

18)

FUBU DSOF ¶22: Plaintiff has provided record evidence that Plaintiffs' likenesses and or images, in addition to names, nicknames, or numbers were manufactured and sold. (Exhibit 13). Any inability of Plaintiffs' expert to identify such styles was due to the refusal of FUBU to

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Tr.110). Plaintiffs' investigation reveals additional styles never reported by FUBU. HGI has sued FUBU for unpaid royalties. (Exhibit 1G, Blenden Tr.49). FUBU's assertion that

Plaintiffs' investigator located garments that "did not have the names or likenesses of any of the Plaintiffs" is patently false. Investigator Phipps and Gallo confirmed sales of garments bearing Curly Neal's player number "22" as well as "legends" hang tags that bear Plaintiffs' names,

6 nicknames, and numbers. 7 8 9 10 11 12 13 14 15 16 17 21) 18 19 20 21 22 23 24 25 26 HGI was actually 10%, not the 8% that Jackson reported to Plaintiffs. 27 28
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(Exhibit 13(5) and 13A, Items 43-45).

Additionally, Phipps

testimony as to the findings of his company's agent in Bangkok, is not inadmissible hearsay.

19)

FUBU DSOF ¶23: Plaintiffs are unable to ascertain exactly what assertion FUBU disputes.

20)

FUBU DSOF ¶24: FUBU's response confirms Plaintiffs' assertion. The letter referenced in Plaintiffs' assertion has been authenticated and an exhibit at numerous depositions. (Plaintiffs Reply to HGI'S Objections: PRRNSOF ¶14, 15). The "misleading excerpt" is a verbatim quote from the letter to the Plaintiffs. (Exhibit 9A and B).

FUBU DSOF ¶25: Plaintiffs' assertion is not "misleading", and is an exact quote verified by Mannie Jackson in the referenced deposition transcript. Additionally, the quotes are material to the issue of damages given the wild variances in actual sales of FUBU garments in the documentary and testamentary evidence. (PSOF ¶25, 27, 28).

22)

FUBU DSOF

¶26: Plaintiffs' assertion is additionally supported by Plaintiffs' belief that the

only reason that they received the check from HGI was because of the demand letter. PSOF ¶24, Exhibits 33[28], 35[28], 36[25]). FUBU confirms in their response that the royalty rate to

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23)

FUBU DSOF ¶27: Plaintiffs deny that there is any misleading or distortion of the evidence cited. The Exhibit, which has been authenticated and confirmed in deposition, is quoted verbatim. (PRRNSOF ¶16).

24) 6 7 8 9 10 11 12 13 14 15 16 26) 25)

FUBU DSOF ¶28: Plaintiffs do not dispute FUBU's qualification. According to FUBU's Response, the asserted $22,661,645.50 is a net sale amount, not reflecting the actual gross retail sales, presumably a much higher number.

FUBU DSOF ¶29:

It is undisputed that revenues derived form the FUBU Licensing

Agreement were paid to and/or benefited Harlem Globetrotters International Foundation, Inc. (HGI RNSOF ¶27, 29).

FUBU DSOF ¶30: Plaintiffs' assertion is not misleading, nor does it distort the evidence. The deposition excerpt cited supports the assertion. It is material for purposes of Plaintiffs' Motion to the extent that it is further evidence that the Foundation is totally controlled by Jackson and

17 benefited him directly. 18 19 20 21 22 23 24 25 26 27 28
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27)

FUBU DSOF ¶31: Plaintiffs' reply to FUBU'S Response is the same as above at 26.

28)

FUBU DSOF ¶32: Undisputed.

29)

FUBU DSOF ¶33: Undisputed.

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30)

FUBU DSOF ¶34: Undisputed to the extent that Haynes' primary services in the 1980 contract involve services other than being a player. Neal continued to do exhibition performances under his last contract. (Exhibit 16).

31) 6 7 8 9 10 11 12 13 14 15 16 34) 17 18 19 20 21 22 23 24 25 26 27 28 36) 35) 33) 32)

FUBU DSOF ¶35: The Exhibit referenced in Plaintiffs' assertion supports the allegations.

FUBU DSOF ¶36: Plaintiff agrees that Hall's contract (Exhibit 3C) does not have a Paragraph 1(b). This was a typographical error. The Exhibit does have a Paragraph "16", which clearly states that the contract is governed by the laws of the State of Illinois.

FUBU DSOF ¶37: Plaintiff agrees that Thornton's contract (Exhibit 3D) does not have a Paragraph 1(b). This was a typographical error. The agreement has Paragraph "16" which states that the contract is governed by the laws of California.

FUBU DSOF ¶38: Plaintiff agrees that Rivers' contract (Exhibit 3F) does not have a Paragraph 1(b). This was a typographical error. The agreement has Paragraph "16" which states that the contract is governed by the laws of California.

FUBU DSOF ¶39: FUBU is not clear as to what they dispute in Plaintiffs' assertion.

FUBU DSOF ¶40:Plaintiffs' assertion that Plaintiffs also received payments for "merchandise" is supported by the evidence. Converse shoes are merchandise. Plaintiffs reassert all the evidentiary citations in PSOF¶40, 68, 80 and Exhibits 46A-F, 48, 66.

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37)

FUBU DSOF ¶41: Disputed to the extent that HGI has not licensed Plaintiffs' names and likenesses, but undisputed that HGI has used at least Plaintiffs' names on programs sold at games. It is undisputed by the testimony of Mannie Jackson that Plaintiffs' names and

likenesses have not been used on any apparel similar to the FUBU deal since his purchase of the Globetrotters. (Exhibit 1A, Jackson Tr.249, 250). The use of Plaintiffs' marks on programs and

6 the type of things to be sold at games is not "covered merchandise" under the CBA, and 7 8 9 10 11 12 13 14 15 16 sales reports. 17 disclosure on September 29, 2005 reveals that Phipps' testimony as to recent purchases at JC 18 19 20 21 22 23 24 25 26 as provided in ¶18, which allows an assignment to another Harlem Globetrotters team. 27 Regardless, such assignment still requires Haynes' written consent. Haynes testified as to his 28
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Plaintiffs have agreed that limited use was permitted. (PSOF¶42, 71, 80, 87, 42). Plaintiffs' assertion is supported by the cited deposition excerpts. Additionally, the assertion is material to FUBU'S and HGI'S laches argument in defense of Plaintiffs' claims. (I.e. Plaintiffs did not sit by and watch HGI sell clothing with their names and likenesses).

38)

FUBU DSOF ¶43: Plaintiffs' assertion is supported by the evidence in deposition testimony cited. FUBU'S assertion that the retail stores "have no affiliation" is patently false. FUBU apparel was purchased at Marshalls and TJ Maxx, retailers which clearly appear on the FUBU (Exhibits 26, 64, 80, FUBU Sales Disclosure of 9/29/05) FUBU's recent

Penny's and Beall's, including style PT2621S was accurate. Style PT2621S (Item 89, Exhibit 13A) bears two (2) "Legends" hangtags, and was purchased at Beall's. FUBU disclosed this style after deposition testimony of Phipps' on 9/23/05. Plaintiffs assert that this has been consistent discovery practice of FUBU.

39)

FUBU DSOF ¶44:

Plaintiff Haynes disputes FUBU'S rendering of his agreement.

(See

PSOF¶81) The cited paragraph is clear that Haynes' services may not be assigned at all, except

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understanding, (Exhibit 1Q, Haynes Tr.102) and further has testified that, even if he permitted assignment, the assignees' rights would be limited to "commitments made by HGI prior to such termination." Id. page 90. Haynes is firm that HGI did not have the right to use his name or likeness in the FUBU deal. (PSOF¶81, 6, 61, 59).

FUBU DSOF ¶45: Plaintiffs' assertions are supported by evidence in testimony cited. Additionally, even though Neal's contract may be a "public relations" contract as opposed to a "player" contract, paragraph 16 of Exhibit 3A is clear that Neal's agreement supercedes any prior agreements with the Globetrotter's organizations.

FUBU DSOF ¶46: Plaintiffs' assertion is not misleading or distorted. Paragraph 12(a) of what HGI calls the "standard" contract (see Garvey Letter attaching Rivers' contract) appears to require the appearance of a player at the Globetrotters' behest. Paragraph 12(a) specifically states "for the purpose of enabling HGI and its licensees to exercise the rights hereby granted, players shall, during the terms of its license, participate in live and recorded radio and television

17 programs and commercial announcements, interviews and personal appearances, pose for 18 19 20 21 22 23 24 25 26 27 28
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pictures, record his voice, supply his biographical data and in any way engage in all means and media of advertising, publicity and promotion that will, in HGI'S reasonable opinion, contribute to the popularity, success and exploitation of the entertainments, products or services produced or presented as the affiliated companies and its and their successors, assigns and licensees." (Exhibits 3, 78). This term clearly attempts to impose an ongoing obligation to players to enable HGI'S use of their names and likenesses, purportedly in perpetuity, for no consideration at all.

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42)

FUBU DSOF ¶47: It is unclear what FUBU disputes as to Plaintiffs' assertions which are supported by citations to evidence and deposition testimony.

43) 6 7 8 9 10 11 12 13 14

FUBU DSOF ¶48: Plaintiffs' assertion as to Dunbar's understanding of the "standard" player agreement is material to the issue of the Party's intent and understanding of the terms of the agreements. Dunbar testified that he was on the negotiating committee and was unaware of any formal action ever to disband the UBPA. Plaintiffs' assertion is supported by citations to Dunbar's deposition transcript. (Exhibit 1A, Dunbar Tr.37, 41, 45).

PLAINTIFFS' REPLY TO FUBU'S STATEMENT OF ADDITIONAL FACTS PURSUANT TO LCR 56.1(a) 1) Disputed. Plaintiffs Exhibit 13A Merchandise Schedule lists garments acquired, photographed, and

15 16 17 18 19 20 21 22 23 24 hangtags, etc.) It was HGI and FUBU that made, enforced and widely marketed the association 25 between Plaintiffs' names and numbers. Additionally, HGI representative Vaughn testified that he 26 27 28
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produced at deposition that bear likenesses of Curly Neal and Meadowlark Lemon. (Exhibit 13A, Items 11, 71, 73, 77, 80, 84 and digital images).

2) Plaintiffs have produced significant evidence illustrating that Plaintiffs' jersey numbers have acquired secondary meaning, including evidence that FUBU placed Plaintiffs' jersey numbers on various garments without Plaintiffs' name on the garment, but with an attached "Legends" hangtag which places the number next to Plaintiffs' name and nickname. (Exhibit 12; Exhibit 13A listing numerous Exhibits containing various combinations of Plaintiffs' names, numbers and "Legends"

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could not name any other players that used Plaintiffs' numbers despite the fact that he was the alumni director. (See PSOF¶70, 71, 53, 54, 55).

3) Plaintiffs have asserted evidence that Plaintiffs' numbers are associated with them, some since high school, and that their numbers also appear on HGI'S Legends Wall, at corporate headquarters.

6 (PSOF¶78, also citing to Vaughn's testimony). 7 8 9 10 11 12 13 14 15 16 6) Plaintiffs' acknowledge that FUBU will not stipulate to Plaintiffs' fame. FUBU, almost comically, 17 asserts that "Plaintiffs do not have any public recognition," (FUBU Memo, Doc#186, P.12, 1.2), 18 19 20 21 22 23 24 25 26 27 28
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4) See above Response. Additionally, Haynes' number was retired. (Exhibit 1Q, Haynes Tr.64).

5) Disputed. Plaintiffs have produced extensive evidence of secondary meaning in their identities, not the least of which is the choice by FUBU and HGI to utilize Plaintiffs in a worldwide campaign marketing Plaintiffs' names, nicknames, numbers and in some cases, likenesses. Exhibits 44-47, 65-68, 32-37). (PSOF¶114;

notwithstanding FUBU'S marketing Plaintiffs' marks on garments and "Legends" hangtags all over the world. (Exhibit 13).

7) Disputed. (PSOF¶115, 116, 117,). Additionally, Plaintiffs' Memorandum of Law asserts that likelihood of confusion is readily drawn where intent is shown, and when infringing marks are nearly identical. (Plaintiffs' Response to FUBU'S Motion for Summary Judgment, Doc#256, P.14, Factor 7).

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8) Undisputed. Plaintiffs' names are protected unregistered trademarks, as is "FUBU the Collection". (Exhibit 28).

9) Disputed. Plaintiffs have supplied extensive evidentiary support as to the secondary meaning acquired by their names. (PSOF¶1, 9, 22, 56, 57, 58, 70, 78, 88, 98, 106, 107, 109, 111, 114, 116,

6 117, 118; Exhibits 7, 9, 12, 13, 21, 24, 25, 32-37, 44-49, 65-68). 7 8 9 10 11 12 13 14 15 16 12) Disputed. Plaintiffs' investigation surveyed the market for garments utilizing Plaintiffs' names, 17 nicknames, numbers and likenesses. (Exhibit 13) Exhibit 13 contains statements from retailers. 18 19 20 21 22 23 24 25 26 names through the Harlem Globetrotters organization to clothing manufacturers like Converse. 27 (PSOF¶40; Exhibit 45, 66). 28
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10) See Plaintiffs' Reply to 9 above. (Specifically, PSOF¶58, 115-119). It is well established that actual confusion need not be established to prevail under the Lanham Act. (Plaintiffs' Response to FUBU'S Motion for Summary Judgment, Doc#256, P.13, Factor 4, Line 5-7).

11) Disputed. FUBU'S own Weisfeld has testified that the "Legends" hangtags bearing Plaintiffs' names, nicknames and numbers were marketing tools. (PSOF¶56, 57, 58, 70, 98).

Additionally, Plaintiffs have testified as to their experience with persons who "thought these products were associated with them". (PSOF¶58, 115, 116).

13) Disputed. (See Plaintiffs' Reply to #10, #11, #12. Also see PSOF¶115).

14) Disputed, (PSOF¶106, 107, 109, 111, 113), as to endorsements done prior to leaving the Harlem Globetrotters. (PSOF¶40, 66, 87; Exhibits 40, 45, 66, 15). Plaintiffs in the past licensed their

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1 2 3 4 5 6 16) Undisputed that the goods were not similar to the FUBU clothing since no similar use had been 7 8 9 10 11 12 13 14 15 16 tools". (Id. PSOF¶93 citing to Weisfeld's statement that Plaintiffs' names were used to tap into the 17 "retro craze"; Exhibit 1G, Weisfeld Tr.59-60). 18 19 20 21 22 23 24 25 26 45. Plaintiffs dispute FUBU'S assertion. 27 28
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15) Disputed. Plaintiffs were paid for endorsement deals on goods bearing their names and numbers negotiated with the union and the Harlem Globetrotters organizations. (PSOF¶40 and other citations above.)

made since Mannie Jackson bought the Globetrotters in 1993. (PSOF¶71).

17) Undisputed.

18) Disputed. FUBU has provided no evidentiary support for this assertion.

19) Disputed. FUBU made the decision that Plaintiffs' names had marketability in placing them on the garments. (PSOF¶10, 54, 98). FUBU'S Weisfeld stated that the "Legends" hangtags "are marketing

20) Unknown to Plaintiffs.

21) Plaintiffs' investigation confirmed that sales by retailers known as "FUBU the Collection" and marketing this name on bags, receipts, and hangtags took place as late as September of 2005 in Manila, Philippines. FUBU Counsel Sacks has stated that "FUBU the Collection" is owned by GTFM, Inc. (Exhibit 28). The Manila purchases are documented at Exhibit 13 and 13A Items 43-

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22) Plaintiffs have ample evidence that FUBU willfully utilized Plaintiffs marks. (Plaintiffs' Response to FUBU'S Motion for Summary Judgment, Doc#256, P.14, Factor 7 and Section 5, P.16; PSOF¶120). Failure to conduct any reasonable due diligence may constitute willful infringement under the law. (Plaintiffs' Memo SJ Doc#279).

23) Disputed. Deposition testimony of FUBU executives confirms that they have no idea of what due 7 8 9 10 11 12 13 14 15 16 opposed to "using" names and likenesses for certain purposes. Regardless of FUBU'S assertion, 17 there is no record evidence that FUBU had confirmed that HGI had used Plaintiffs names and 18 19 20 21 22 23 24 25 26 27 28
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diligence was done, if any, by outside counsel. (PSOF ¶120). Additionally, HGI'S Jackson said "there was a lack of interest in looking at six hundred (600) plus contracts." (Exhibit 1A, Jackson Tr.262). FUBU'S Blenden, when asked what outside counsel had done reviewing Plaintiffs'

contracts, stated "I couldn't say what ­ I couldn't say what Mr. Klein specifically reviewed." (Exhibit 1G, Blenden Tr.86).

24) Disputed. FUBU'S Statement of Facts provides no evidentiary basis for their belief that HGI had been "licensing the rights to names and likenesses of players and former players for decades," as

likenesses for endorsements. (PSOF ¶120). Due diligence would have easily confirmed that past uses were limited to small items sold at games, or were paid endorsements. (PSOF ¶51).

25) Disputed to the extent that FUBU asserts that FUBU "asked to see the player contracts." Actually, FUBU'S Weisfeld testified "I believe that we asked" during his deposition, where he also admitted that he did not see any player contracts, and he did not know if any were EVER looked at by FUBU. (Exhibit 1F, Weisfeld Tr.68).

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26) Plaintiffs involuntarily conferred the benefit of the value of their names and likenesses upon FUBU in the absence of a contract or any other express or implied agreement. Plaintiffs dispute FUBU'S assertion.

27) Disputed. Plaintiffs did not receive revenues that they otherwise should have, given that HGI and 6 FUBU made the apparel with their marks. 7 8 9 10 11 12 13 14 15 16 29) Plaintiffs object that this quote is taken out of context as Rivers complained throughout his 17 deposition about the "horrid" and "embarrassing" clothing. (PSOF¶104). 18 19 20 21 22 23 24 25 26 35(a) of the Lanham Act, §1117(a) U.S.C.A.). 27 28
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28) Undisputed that checks were received from HGI. (Exhibit 9A and 9B). Undisputed that it was in connection with the sale of "certain styles" rather than for "all styles." HGI'S Jackson had no explanation as to the reason that they were additional styles bearing Plaintiffs' names and marks in the marketplace that did not appear on the HGI/FUBU report to Plaintiffs. (Exhibit 1A, Jackson Tr.154-159). HGI only made these payments after Plaintiffs' threatened a lawsuit. (PSOF¶101, 100, 99, 26).

30) Disputed. (PSOF¶103, 73).

31) Disputed. Plaintiffs testified that they liked "some" of the apparel. However, some of the apparel was embarrassing, like the "horrid dresses." (PSOF¶50, 53, 104).

32) Disputed. The Lanham Act gives discretion to the court for damages other than profit. (Section

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33) Disputed. The Collective Bargaining Agreement stated that 25% was the royalty rate for Plaintiffs. (PSOF¶103; Exhibit 2B, Article 14.12).

34) Disputed. (PSOF¶75, 79-87).

35) Disputed to the extent that the quote is "prior to such termination." 7 8 9 10 11 12 13 14 15 16 38) Disputed that the excerpt is determinative of Plaintiffs' claims. (PSOF¶75, 79, 80). Additionally, 17 see (PSOF¶83, regarding Neal). 18 19 20 21 22 23 24 25 26 41) Disputed that the excerpt is determinative of Plaintiffs' claims. (PSOF¶75, 79, 80). Additionally, 27 see (PSOF¶86, regarding Sanders). 28
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36) Disputed. HGI has used Haynes' name and number in a very limited and permitted manner. (PSOF¶51). Additionally, HGI has never used Haynes' name in the manner it did with FUBU. (PSOF¶71).

37) Disputed that the excerpt is determinative of Plaintiffs' claims. (PSOF¶75, 79, 80). Additionally, see (PSOF¶82, regarding Hall).

39) Disputed that the excerpt is determinative of Plaintiffs' claims. (PSOF¶75, 79, 80). Additionally, see (PSOF¶84, regarding Thornton).

40) Disputed that the excerpt is determinative of Plaintiffs' claims. (PSOF¶75, 79, 80). Additionally, see (PSOF¶85, regarding Rivers).

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Respectfully submitted on this __9th_ day of December, 2005.

_______/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

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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 Certificate of Service Vanessa Braeley, declares as follows:

1. 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. 2. I hereby certify that on December _9th_, 2005, a true and correct copy of Plaintiffs' Reply 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 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.
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Inc., Harlem Globetrotters Int'l Foundation, and Mannie L. & Catherine Jackson Ray Harris, Esq. FENNEMORE CRAIG, P.C. 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 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 _9th___, 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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