Free Memorandum - District Court of Arizona - Arizona

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MEMORANDUM OF LAW In support hereof, Plaintiffs rely on Plaintiffs' Statement of Facts and Controverted Facts Asserted by HGI. First, the Court must determine, for purposes of HGI'S Motion, whether there is any disputed evidence that HGI had the rights to Plaintiffs' names, and if so, their Motion must be denied. There is absolutely not a shred of evidence proffered by HGI that shows Plaintiffs were a party to any agreement to

7 8 9 10 11 12 13 14 15 16 17 by purchase since there was not an express grant of authority by Plaintiffs. HGI'S evidence that HGI 18 19 20 21 22 23 24 25 26 purchased Plaintiffs' rights is limited to a mere inference that HGI bought "all assets" in 1993. Neither Plaintiffs' contracts nor their names appear anywhere in the reams of legal documents and scheduled assets that memorialized HGI'S purchase of the assets of the "Harlem Globetrotters" in 1993. (Exhibit grant HGI anything. Plaintiffs have moved this Court for summary judgment on liability on this issue. (Plaintiffs' Memorandum Doc. 73 in Neal Case No. 1023, hereinafter "Plaintiffs Memo. Doc. 73"). HGI, specifically Mannie Jackson, assured FUBU that it had the rights (FUBU DSOF ¶2), yet wrote Plaintiffs saying "if you don't want your name and likeness to be included in future retail items, please send your notice of exclusion from the program." (Exhibit 9, HGI Letter). This revealing passage, when posed to FUBU counsel Blenden in his deposition, seemed a shock considering FUBU had spent a fortune designing and producing clothing which highlighted Plaintiffs. FUBU counsel Blenden denied ever discussing the option (or right) of Plaintiffs to remove their names. (Exhibit 1G, Blenden Tr. 141). Next, the Court must consider the disputed evidence that HGI acquired Plaintiffs' publicity rights

5A,B,C,D). Neither do the reams of detailed documents related to the bankruptcy of the predecessor corporation to HGI provide any evidence. (Exhibit 4A,B,C). Plaintiffs provided an analysis as to the effects of the bankruptcy and the HGI purchase agreements of 1993 in their pending Motion for Summary Judgment. (Plaintiffs' Memo. Doc. 73, at §V ¶(C) p.12). If HGI bought the contracts, then the Court should next look at the old player contracts, together with the pending extrinsic evidence of the related

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documents, and the testimony that is essential to ascertaining the intent of the real parties to these agreements. The extrinsic evidence is overwhelming that players were routinely paid for endorsements and use of their names and likenesses for commercial promotion, while the use of pictures in programs for sale at games was granted to the team owners. (Exhibit 45; PSOF ¶¶ 47, 48, 66, 68). Additionally, the player contracts called "standard" by HGI clearly state that endorsements require the approval of the player.

7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 (PSOF¶60,61,63). It is noteworthy that Plaintiffs' individual marks were used, not just as part of the team. 27 28 1. PLAINTIFFS' UNREGISTERED MARKS ARE PROTECTED
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(PSOF¶80-86; Exhibit 3F, River's Contract ¶12(a)). The course of dealing, as well as the Collective Bargaining Agreement (hereinafter "CBA", Exhibit 2A,B) evidences this understanding. This document alone would provide a jury with a reasonable evidentiary basis for finding for the Plaintiffs. The requisite intent to infringe by HGI has evidentiary support in the facts surrounding the negotiation and execution of the 2002 licensing agreement with FUBU. In Weisfeld's deposition, when asked about the specific provision in the licensing agreement regarding HGI'S rights to players' names, (Exhibit 1F, Weisfeld Tr. 105), he stated it meant "current players". Weisfeld could not name any "current players", and did not even know if they used any. He easily named some of the Plaintiffs. (Exhibit 1F, Weisfeld Tr. 105-106).

I. LANHAM ACT CLAIMS
Plaintiffs acknowledge past association with the Harlem Globetrotters, but none with FUBU. The FUBU licensing agreement with HGI specifically states FUBU'S desire to combine their FUBU marks with those of Harlem Globetrotters former players. (Exhibit 6, ¶ 1.4). The resulting designs and garments closely associate the Plaintiffs' "brands" with the FUBU and HGI "brands," clearly suggesting an endorsement of FUBU by the Plaintiffs. In fact, FUBU'S various marks ("FUBU the Collection", "05", "Platinum FUBU", "FUBU") appear more times on some garments than Plaintiffs' marks. (Exhibit 13A, 43,44,45). HGI granted this endorsement of FUBU products to FUBU without permission from Plaintiffs.

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The Lanham Act at §43(a) provides protection for unregistered marks, which can be "names, symbols, (or a) combination thereof," and nicknames. First, Plaintiffs own their own names. Plaintiffs never signed any agreements with FUBU (or HGI) ever. (PSOF¶62,63). HGI asserts that "Plaintiffs licensed the right to Defendants." (HGI Memo., Doc. 195, § III, p. 19). This is patently false, as there is not a scintilla of record evidence that Plaintiffs ever entered into any licensing transactions with HGI. (HGI in their brief use "HGI" and "Harlem Globetrotters" interchangeably, but HGI is not related to the entities

7 8 9 10 11 12 13 14 15 16 17 courts' summary judgment on the issue of whether the weak "generic" term "yellow cab" had acquired 18 19 20 21 22 23 24 25 26 27 28
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that employed Plaintiffs years ago, and HGI conspicuously avoids focusing on the fact that Jackson only bought the team in 1993 in their Statement of Facts). HGI makes a weak argument that Plaintiffs entered into licensing agreements decades earlier, but any prior contracts of Plaintiffs are immaterial and irrelevant as they were entered with companies unrelated to HGI, the last one of which ending in bankruptcy. (Exhibits 3 A,B,C,D,E,F: Player Contracts ­ none of which are with FUBU or HGI). Second, Plaintiffs names, nicknames, and numbers, individually and combined, are protectable marks because they have acquired secondary meaning. Even if Plaintiffs' names are unregistered trademarks, they are afforded protection. Yellow Cab Company of Sacramento v. Yellow Cab of Elk Grove, Inc., 419 F.3d 925 (9th Cir. 2005). The Yellow Cab court held that secondary meaning is a fact issue for the jury (reversing the trial

"secondary meaning"). Historically, senior users of personal names had an equitable priority over junior users who did not legally bear that name, but under the Lanham Act, once an individual's name has acquired a secondary meaning in the marketplace, a secondary user must take reasonable precautions to prevent a mistake. Yarmouth-Dion, Inc. v. D'ION Furs, Inc., 835 F.2d 990 (2d Cir. 1987). FUBU took no precautions, relying instead on HGI'S indemnification. (Exhibit 1F, Weisfeld Tr. 67). (DSOF ¶22). (Exhibit 1A, Jackson Tr. 262-263). Plaintiffs satisfy the four factors used to evaluate the sufficiency of evidence of secondary meaning described in Japan Telecom, Inc. v. Japan Telecom America, Inc., 287 F.3d 866, 873 (9th Cir. 2002).

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a)

b)

c) 6 7 8 9 10 d)

Association, meaning that the product (i.e. clothes bearing Plaintiffs' names) associates Plaintiffs' trademark with the producer (HGI and FUBU). HGI and FUBU made the decision that these former players were relevant, recognizable and marketable in the year 2002 and prominently featured them on tens of thousands of garments. (Exhibits 12, 13A, 9D, 24, 64). The degree and manner of advertising of Plaintiffs' marks (i.e. their names) is extensive and sophisticated - decades of promotion of Plaintiffs' names worldwide on television, movies, cartoons, posters, programs, endorsements and personal appearances. (FUBU DSOF ¶¶36-40, 49, 59, 62, 63, 68, 69, 77, 78). The length and manner of Plaintiffs' marks are some of the most sustained and intense in sports marketing. (Id.) (Exhibits 46, 44, 46, 47, 66, 67, 68). Use of Plaintiffs' marks has been exclusive to themselves and to a limited number of users ­ the Harlem Globetrotters organization prior to HGI being one of the few. Plaintiffs have used their names for decades without interruption or cease and desist demands from either HGI or any predecessor entities. (PSOF ¶72). Uses included utilizing their names and likenesses for appearances, endorsements, charitable events and performing for other basketball teams besides the Harlem Globetrotters. (PSOF ¶106,107,109,111 and Exhibit 46, Player Profiles). Yellow Cab at FN3 notes that in Japan Telecom the only evidence of likelihood of confusion was a "few

11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 From the approximately "600" former players, (Exhibit 1A, Jackson Tr. 262), HGI chose to prominently feature Plaintiffs' names, nicknames and player numbers on their clothing. (Exhibit 12; Exibit 13A). HGI'S decision was because Plaintiffs are well known sports celebrities (Exhibit 1G, Blenden Tr. 24). Mannie Jackson personally recommended and approved the designs (Exhibit 1A, Jackson Tr. 250-251). Even if HGI'S assertion that Plaintiffs' personal names are "generic or descriptive" is correct (HGI Memo., Doc. 195, p. 5, line 10), the Ninth Circuit has held that a name can acquire secondary meaning from
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misdirected mailings which were ambiguous as to secondary meaning." Plaintiffs' public recognition is evidenced by the numerous FUBU style numbers bearing Plaintiffs' marks in numerous ways: garments, two styles of hangtags, garment emblems, and on the FUBU website (Exhibit 13A) and their past and current publicity. (Exhibits 12, 13A). Whether a symbol or device has acquired a secondary meaning is a question of fact. Transgro Inc., citing American Scientific Chemical, Inc. v. American Hospital Hopitality Supply Corporation, 690 F.2d 791 (9th Cir. 1970). It is the function of the jury to weigh conflicting evidence and judge the credibility of witnesses. Transgro, Inc. v. Ajac Transmission Parts Corporation. "Secondary meaning has been defined as `association,' nothing more." Carter-Wallace, Inc. v. Proctor and Gamble, Co., 434 F.2d 794 (9th Cir. 1970).

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"long, continued use of the mark (and) the mark's widespread national recognition." E&J Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280 (9th Cir. 1992) at [14][15][16]. Plaintiffs assert their numbers, when used in context with the Harlem Globetrotters have secondary meaning. Hangtags and garments place Plaintiffs' numbers with the names. (Exhibit 12, 13A, and 13B). So did HGI's bobbleheads for Haynes and Neal. (Exhibit 48). Evidence of the profound association of Plaintiffs' names and numbers is shown by Globetrotter alumni director Govonor Vaughn, who in deposition could not name any other players in the history of the Globetrotters that had worn Plaintiffs' numbers. (Exhibit 1D, Vaughn Tr. 36-39). Weisfeld testified that all Globetrotter garments had tags, but could not say if they all bore the "Legends of the Hardwood" tag (Exhibit 1F, Weisfeld Tr. 57-60). The two hangtag designs and the garment emblem used by HGI and FUBU are not just a list of Plaintiffs' names, but of their names combined with their numbers and nicknames, all under the title "Legends of the Hardwood". (Exhibit 12). This hangtag's purpose was to market FUBU clothing, much of which bore Plaintiffs' names with their respective numbers. (Exhibit 1G, Blenden Tr. 124-125; PSOF¶54,55 and Exhibit 13A). Blenden said FUBU owners Aurum and Weisfeld, a lawyer, approved the hangtags. Id. at 127-129. FUBU did not even

17 18 19 20 21 22 23 24 25 26 27 ranging from $30 million to $100 million, depending on who you believe. (Exhibit 1A, Jackson Tr. 12128
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conduct a marketing survey to test the viability of Plaintiffs' names, (Exhibit 1G, Blenden Tr. 121), because presumably "they were familiar names". Id. at 24. It should also be noted that FUBU garments not otherwise bearing Plaintiffs' names bear the "Legends of the Hardwood" emblem on the garment, not as a hangtag, (and are still being sold on eBay). (Exhibit 13B). 2. UNAUTHORIZED USE BY THE DEFENDANTS The use of Plaintiffs' names, numbers and images by HGI, and their licensee FUBU, was unauthorized by Plaintiffs. (PSOF¶17,18,33,61-67). 3. IN COMMERCE The use of Plaintiffs' names was "in-commerce" with total FUBU/Globetrotter clothing sales

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122). FUBU'S Weisfeld says it may be $20 million. (Exhibit 1F, Weisfeld Tr. 86-87). The use was also clearly interstate according to HGI statements. (Exhibit 9C; 64). HGI does not contest this fact. 4. LIKELIHOOD OF CONFUSION This element boils down to a question of whether reasonable people would believe, based on the evidence, that Plaintiffs' marks (their names) are likely to be associated with HGI/FUBU'S products ­ clothes bearing Plaintiffs' names, numbers and likenesses. At a very minimum, this is a jury question and

7 8 9 10 11 12 13 14 15 16 17 Recently, in M2 Software, Inc. v. Madacy Entertainment, 421 F.3d 1073 (9th Cir. 2005), the Ninth Circuit 18 19 20 21 22 23 24 25 26 27 28 also stated at [5]: "Some Sleekcraft factors `are much more important than others, and the relative importance of each individual factor will be case specific.' Brookfield, 174 F.3d at 1054. In essence, `(t)he test for likelihood of confusion is whether a `reasonably prudent consumer' in the marketplace is likely to be confused as to the origin of the good or service bearing one of the marks.' Dreamworks Prod. Group, Inc., 142 F.3d at 1129." Furthermore, it is not error for this Court to choose a different test than Sleekcraft's eight factors. Interstellar Starship Services, Limited v. Epix Incorporated, 184 F.3d 1107 (9th Cir. 1999), where the district court used the six factor test of Century 21 Real Estate Corporation v. Sandlin, 846 F.2d 1175 (9th Cir. 1988), as long as evidence on the record would permit a rational fact-finder to find a likelihood of confusion. The District
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summary judgment is not appropriate. Subsets of the eight factors are adequate, and depending on the case, some factors may be irrelevant or not addressed at all, but may still be sufficient to avoid summary judgment. Plaintiffs satisfy the likelihood of confusion test of AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 (9th Cir. 1979), after the factors are balanced. The Ninth Circuit recently observed that "trial courts disfavor deciding trademark cases in summary judgments because the ultimate issue is so inherently factual.....additionally, the question of likelihood of confusion is routinely submitted for jury determination as a question of fact." Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252 (9th Cir. 2001), citing Levi Strauss and Co. v. Blue Ball, Inc., 778 F.2d 1352 (9th Cir. 1985), and 5 McCarthy § 32:119.

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Court of Arizona (Ninth Circuit) has applied the Sleekcraft test, while noting the list is not exhaustive and that a balancing of the factors in appropriate. Urantia Foundation v. Maaherra, 895 F.Supp 1338 (D.Arizona 1995) at [15], denying summary judgment as the evidence raised genuine issue of material fact. Secondary meaning can be proved circumstantially without surveys and consumer testimony. Frosty Treats, Inc. v. Sony Computer Entertainment America, Inc., 426 F.3d 1001 (8th Cir. 2005). FACTOR 1) Strength of Plaintiffs' Marks: Fanciful, arbitrary and suggestive trademarks are

7 8 9 10 11 12 13 14 15 16 17 composite mark. J. Thomas McCarthy in McCarthy on Trademarks and Unfair Competition §7:15 (4thEd. 2005). 18 19 20 21 22 23 24 25 26 27 28
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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). Plaintiffs' marks are fanciful: "Curly", "Gator", "Big D", "Showboat", and "Twiggy". They were used by HGI and FUBU both alone and in combination with their real names, "Neal", "Rivers", "Thornton", "Hall", and "Sanders", which make them arbitrary. (Exhibit 12; Exhibit 13). Standing alone as mere names, they are not inherently as strong as a fanciful name, but have become so because they acquired secondary meaning due to worldwide fame. Combined, they are at least "arbitrary" (common words arranged in an arbitrary way that is non-descriptive), and have acquired secondary meaning. McCarthy acknowledges that ordinary descriptive words, when combined (such as with numbers), present an arbitrary

"Curly" Neal, and all Plaintiffs' names, are very strong marks. FACTOR 2) Relatedness of Goods to Plaintiffs' Marks: Both Plaintiffs and HGI are in the business of basketball. HGI licensed FUBU who 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 (9th Cir. 1999) at [32], citing Dreamworks, 142 F.3d at 1131. HGI did not use Plaintiffs' names on chess sets ­ confusion would be unlikely. If there is virtual identity of the marks and, if they are used with identical services (comedic basketball), "likelihood of

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confusion would follow as a matter of course". Brooksfield at [32] citing Lindy Pen Co., v. Bic Pen Corp, 796 F.2d 254, 256-257 (9th Cir. 1986). FACTOR 3) Similarity of Plaintiffs' Marks and Marks Used by FUBU/HGI: "Obviously the

greater the similarity between the two 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 (9th Cir. 2002) at [19].

7 8 9 10 11 12 13 14 15 16 17 In White v. Samsung, 971 F.2d 1395 (9th Cir. 1992)summary judgment was denied even though there 18 19 20 21 22 23 24 25 26 27 court stated "GTFM has presented no survey evidence and only one anecdote in support of actual 28
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Here, the marks are identical: "Curly" Neal the Plaintiff and real person is identical to "Curly" and "22" appearing on jerseys and hangtags. Curly Neal's actual face and body appear on FUBU tee shirts, as do caricatures of Neal. (Exhibit 25, Schedule of Plaintiffs' Marks, Exhibit 13A). This factor is so strong that it should be considered first, as the factors can be "taken out of order" where there is virtual identity of the marks. Brooksfield at [27]-[31]. After the consideration of the strength of just the first three factors, a strong likelihood of confusion may be shown sufficient to present a fact question to the jury. Brooksfield at [34]-[39]. FACTOR 4) Evidence of Actual Confusion: This element of analysis can be disposed of if intent (Factor 7) is shown. While not required, survey evidence may establish actual confusion. Thane International, Inc. v. Trek Bicycle Corporation, 305 F.3d 894 (9th Cir. 2002) at [14].

was no survey evidence presented by Vanna White of actual confusion as to her association with a robot. In White, the defendant's intent and the other factors in varying degree carried the day. White at [6]. The White court held "none of these tests is correct to the exclusion of the others," citing Eclipse Associates, Ltd. v. Data General Corp., 894 F.2d 1114, 1118 (9th Cir. 1990). In addition, surveys may be given no weight at all by the court. See Thane. FUBU recently and successfully sued to protect their unregistered mark "05" used on sports jerseys, arguing that "05" had acquired secondary meaning. While presenting NO evidence of actual confusion to the court. GTFM, Inc. and GTFM, LLC v. Solid Clothing Inc., 215 F.Supp. 273 (S.D.N.Y. 2002). At [11] the

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confusion" and that "it is well established that `actual confusion' need not be shown to prevail under the Lanham Act." (Emphasis added.) The GTFM court held that when all the factors were weighed together, "GTFM has shown that numerous ordinary prudent purchasers like those at issue here were likely to be confused by the defendant's use of "05" on clothing." Id. at [11]. See E&J at [16][17][18] for a discussion of secondary meaning in a particular product field. Plaintiffs have evidence of "actual confusion". (PSOF¶58; Exhibit 32, Rivers Aff. at 10-15; Exhibit 33, Thornton Aff.

7 8 9 10 11 12 13 14 15 16 17 suggest that Plaintiffs are associated with, or have endorsed, the goods. When the clothes are sold at JC 18 19 20 21 22 23 24 25 26 27 28
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at 11-13; and Exhibit 13 at 10). FACTOR 5) Marketing Channels Used: The HGI/FUBU licensing agreement governs the quality marketing channels for the Globetrotter line. (Exhibit 6, p.12, and Exhibit (h) thereto "Restricted Channels"). The designated retailers are marketing channels that would confuse a consumer that the clothes are authentic, and are legitimately endorsed by the sports celebrities whose names appear on the garments and the hangtags. If the FUBU clothes were being sold on a Manhattan sidewalk with plastic Louis Vuitton purses, a reasonable person would question, and not likely be confused by, the association. FACTOR 6) Type of Goods and Degree of Care Exercised by Purchaser: Here, high quality FUBU jerseys, which also bear the "FUBU" and the "Harlem Globetrotters" trademarks are highly likely to

Penney's, Burlington's, and even Marshall's (Exhibit 13), a jury could conclude that the public, no matter how "sophisticated", could reasonably believe that Plaintiffs are associated. (FUBU sales records evidence these named retailers and other "legitimate" outlets. (Exhibit 6). FACTOR 7) HGI/FUBU'S Intent in Selecting Plaintiffs' Marks: Where intent is shown, likelihood of confusion is readily drawn. It is undisputed that HGI intended to use Plaintiffs' names, player numbers and, in Neal's case, likenesses. Jackson and HGI had approval authority (Exhibit 6 and DSOF¶4, 5).). The intended use was to, of course, make money. (Exhibit 7). HGI asserts that because their intentions were not willfully malicious, that there is no intent. Such is not the standard.

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There is record evidence that the prominent use of Plaintiffs' names on hangtags were intended to suggest association, approval or endorsement by Plaintiffs. (Exhibit 1G, Blenden Tr. 126-127). Designs here also recommended and approved by Mannie Jackson personally. (Exhibit 1A, Jackson Tr. 250-251). To quote the Brookfield court: "A word of caution: this eight-factor test for likelihood of confusion is pliant." Plaintiffs need not show that their marks were adopted with the specific purpose of infringing the mark. "The intent prong is not so narrowly drawn." Brooksfield at [40], also stating the knowledge of the

7 8 9 10 11 12 13 14 15 16 17 viewed Plaintiffs' contracts before launching a huge undertaking. HGI did nothing to assure themselves or 18 19 20 21 22 23 24 25 26 27 28 FUBU. (PSOF ¶15-18,60,64,65,67). The "intent" factor is so strong that where intent is shown, inference of likelihood of confusion is readily drawn, and the burden may be shifted to an infringer to show that there was no confusion. The Ninth Circuit in HMH Publishing Co., Inc. v. Brincat, 504 F.2d 713 (9th Cir. 1974), stated: "As a general rule, the plaintiff in an action for trademark infringement is not required to prove the defendant's intent. However, where such intent has been shown, the `inference of likelihood of confusion is readily drawn,' Fleischmann Distilling Corp. v. Maier Brewing Co., supra, 314 F.2d at 158, because the alleged infringer has indicated by his actions an expectation that such confusion will indeed be created. See, e.g. National Van Lines v. Dean, 237 F.2d 688, 692 (9th Cir., 1956). In effect, such a finding shifts the burden to the defendant to show that his efforts have
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adoption can be "actual or constructive". Id. at [41] citing Official Airlines Guides, 6 F.3d at 1394, and Fleischmann Distilling, 314 F.2d 149 at 157. "Intent to confuse consumers is not required for a finding of trademark infringement," and "this factor is only relevant to extent that it bears upon the likelihood that consumers will be confused by the alleged infringers mark (or to the extent the court wishes to consider it as an equitable consideration)." Id. at [42] citing Dreamworks and quoting Fleischmann Distilling. FUBU'S reckless disregard of Plaintiffs' rights, given the knowledge and experience of these Manhattan lawyers, constitutes actual and constructive intent. HGI and FUBU are large sophisticated corporations with extensive legal resources. (PSOF ¶20,23 and Exhibit 6, 9D, 27). FUBU should have

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proven unsuccessful. My-T-Fine Corp. v. Samuels, 69 F.2d 76, 77 (2d Cir. 1934). See also National Lead Co. v. Wolfe, 223 F.2d 195 (9th Cir. 1955). 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. In Fuddruckers, Inc. v. Doc's B.R.Others Inc., 826 F.2d 837, (9th Cir. 1987) the court noted: "FN11. We have said that evidence of intent to exploit the plaintiff's goodwill shifts the burden to the defendant to prove no likelihood of confusion. HMH Publishing Co. v. Brincat, 504 F.2d at 713, 720 (9th Cir. 1974). However, this formulation has not been repeated in later cases. It may be that the shifting burden only applies when the evidence demonstrates that the defendant intended to exploit, rather than merely to copy. See Toho Co. v. Sears, Roebuck and Co., 645 F.2d at 788, 791 n.2 (9th Cir. 1974)." A trademark infringement plaintiff can prevail without proving intent to deceive, but if plaintiff can prove intent, the courts can then presume that the public will be deceived. Airline Guides, Inc. Where an infringer chooses a mark he knows to similar be to another, one can infer an intent to confuse. See Entrepreneur Media, Inc. at [22][23], citing Official Airlines Guides, Inc. In Entrepreneur, the court found relevant but limited evidence of intent favorable, but placed the intent factor fourth in importance and concluded that a determination on the merits could provide strong evidence of likelihood of confusion, and could overcome other weak factors. Fact issues thus existed as to likelihood of confusion. See Entrepreneur

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Media, Inc. at [24]. HGI and FUBU admit that they did not have, nor did they seek, Plaintiffs' consent to begin making infringing clothes. (Exhibit 1G, Blenden Tr. 47, 48; and Exhibit 1F, Weisfeld Tr. 112). HGI asserts that they "believed" they had the right, (Memo., Doc. 195, p. 18, line 4), even though Jackson bought the team in 1993 and never once made a phone call or had an attorney render an opinion to confirm authority before licensing to FUBU in 2002. (PSOF ¶60,64,67). According to FUBU, Plaintiffs' rights could not be

confirmed, as player contracts were unavailable due to the bankruptcy. (Exhibit 1F, Weisfeld Tr. 68).

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FACTOR 8) Likelihood of Expansion of Product Channels: This factor is of low relevance to the analysis and should be given no weight either way, although it could be argued that FUBU's actions appropriated other potential opportunities that may have been available to Plaintiffs. 5. DISGORGEMENT OF PROFITS HGI asserts that Plaintiffs are not entitled to profits because there was no intent to willfully infringe. The Lanham Act at § 35(a), 17 U.S.C.A. § 1125(a), provides that defendants' profits shall be awarded for

7 8 9 10 11 12 13 14 15 16 17 In a case where foreign wine producers failed to get a legal opinion as to likelihood of confusion 18 19 20 21 22 23 24 25 26 27 28 before using the name "Gallo" in connection with U.S. wine sales, this failure to conduct legal due diligence as to the status of the infringed mark constituted willful infringement. See E&J Gallo Winery. HGI and FUBU, despite their resources, conducted no due diligence. Govonor Vaughn states: "I'm certain that they were not asked" (for permission to do the FUBU deal)(Exhibit 1D, Vaughn Tr. 62-63), and no one ever asked him to dig up a player contract. (Id. at 55). Lindy Pen at [10] equates willful infringement with bad faith (in that case holding no willful infringement because the trademark was weak due to an obscure name and there was strong evidence that the infringement was unintentional). Id. at [10]. In Maier Brewing Co. v. Fleischmann Distilling Corp., 390 F.2d 117 (9th Cir. 1968), cited by HGI at [6], states that if the infringement is "entirely innocent," an infringer may
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violations of § 43(a), 17 U.S.C.A. § 1117(a). Willfulness is not a prerequisite only a factor that must be taken into consideration on the issue of awarding profits. See Lindy Pen. The district Court in Lindy Pen gave plaintiffs the opportunity to prove its damages on lost profits and unjust enrichment. [12][13][14] Lindy Pen. Thus, while willfulness is not a prerequisite to the recovery of profits for infringement it is an equitable consideration. But first, the jury must resolve the factual issue of whether or not the infringement was willful. Nike, Inc. v. Top Brand Company, Ltd., 2005 WL 1654859 (S.D.N.Y.) (finding at ¶*7 willfulness where defendant "believed" he was dealing with authorized licensees, failed to "identify the purported licensees," took no steps to verify, i.e. no due diligence). In Nike, the court granted plaintiffs summary judgment due to the presumption of confusion arising from the evidence of intent.

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escape an accounting of profits and at [7]: "it seems scarcely equitable...for an infringer to reap the benefits of a trade-mark he has stolen, force the registrant to the expense and delay of litigation, and then escape payment of damages on the theory that the registrant suffered no loss."

II. COMMON LAW RIGHT OF PUBLICITY
In Godbehere v. Phoenix Newspapers, Inc., 162 Ariz. 335 (Arizona 1989), the Supreme Court recited a

6 7 8 9 10 11 12 13 14 15 16 Additionally, in the absence of Arizona law to the contrary, courts follow the Restatement. See 17 18 19 20 21 22 23 24 25 26 27 28 If there is any argument that Plaintiffs are estopped by old player contracts, such arguments would be for the predecessor entities that were the actual parties to the contracts--not HGI.
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scholarly history of the right of privacy and states that Arizona recognized a right of publicity in a plaintiff's claim for unauthorized use of this photograph in the case of Reed v. Real Detective Publishing Co., 63 Ariz. 294 (1945). The Godbehere court also cited to the court of appeals recognition of "the Restatement's four part classification of the tort" in Rutledge v. Phoenix Newspapers, Inc., 148 Ariz. 555 (Ct. App. 1986). (The fourth part, of course being the right of publicity - appropriation of name or likeness for the defendant's advantage.) Prosser on Privacy, 48 Calif.L.Rev. 383 (1983), also cited in Godbehere at 338. The Godbehere court states that Restatement §625E is recognized in Arizona for articulation of the tort of false light invasion of privacy. The Restatement also articulates the common law right of publicity. Restatement (Second) Torts § 652C (2005).

Pooley, citing Aztlan Lodge No. 1, Free and Accepted Masons of Prescott v. Ruffner, 445 P.2d 611 (App. 1987). Pooley cited to both the Restatement of Torts and the Restatement of Unfair Competition. Pooley at [2]. There not only is no Arizona law to the contrary, Arizona specifically preserves common law rights of publicity in Section 44-1452, Arizona Statutes (2005). Conversely, the Rest. 2d. of Torts § 652(c) cites Pooley as "holding, inter alia, that plaintiff had adequately stated a claim for the right of publicity." (P. 20 case citations).

III.
1. THE CONTRACTS

ESTOPPEL/LACHES

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The applicability of decades old player contracts, if they are given any weight at all, to Plaintiffs' claims is a factual dispute for the jury. The evidence shows that Plaintiffs' player contracts were not the authority HGI relied on in entering the FUBU licensing agreement. The player contracts were not even looked at (Exhibit 1F, Weisfeld Tr. 68, Exhibit 1G, Blenden Tr. 47, 108-109). They were in storage due to previous bankruptcy (Exhibit 1F, Weisfeld Tr. 68). HGI continues to refer to Plaintiffs' contracts, and all player contracts as "standard". This is

7 8 9 10 11 12 13 14 15 16 17 would expect a check as well. (Exhibit 1M, Dunbar Tr. 96). Even HGI paid Plaintiffs Neal and Haynes for 18 19 20 21 22 23 24 25 26 27 any document related to the sale, and in fact are conspicuously absent from the schedules of specific player 28
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patently false. (PSOF ¶79, 80-86). It is clear that the player contracts are anything but standard ­ i.e. Haynes is not assignable and grants rights only for some deals made while employed, (Exhibit 3B), Neal's provides for a 75% royalty on merchandise (Exhibit 3A, B). Each Plaintiff contract contains different choice of law provisions which, even if Arizona law provides no remedy (which it does), provide a remedy to Plaintiffs. (Exhibit 3A,B,C,D,E and F, Players Contracts). See also Plaintiffs' Memorandum of Law as to the choice of law provisions in Plaintiffs' contracts (Plaintiffs' Memo. Doc. 73, § 5 ¶ B). As to the differing intent and understanding of the parties, even current HGI employee/coach Lou Dunbar (25 years with the Globetrotters) believes that, notwithstanding the language of his contract, if more styles were sold using his name than were reported to him on the HGI/FUBU sales report, then Dunbar

using their names and likenesses on bobblehead dolls in 2001-2002. (Exhibit 48; Exhibit 1(A), Jackson Tr. 176). The "standard" paragraph 12(a) states that "personal" endorsements are not required, distinguishes "personal" endorsements from "team" endorsements, and states that a player's consent is required. (PSOF¶80-85; Exhibit 3F, ¶12(a)). 2. HGI SHOULD BE ESTOPPED FROM ASSERTING CONTRACTS AS A DEFENSE A: HGI DID NOT BUY THE CONTRACTS HGI has no evidence that Plaintiffs' contracts were purchased in 1993 ­ they are not referenced in

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contracts assigned. (Exhibit 5A,B,C,D). For all of Mannie Jackson's emphasis on controlling the "brand", (Exhibit 18, "Bringing a Dying Brand Back to Life", DSOF ¶64), neither he nor his lawyers listed Plaintiffs' marks in the numerous, detailed schedules of intellectual property that emerged out of bankruptcy and that he later bought. Plaintiffs' contracts are conspicuously absent from the player contracts scheduled in Jackson's purchase. (Exhibit 5D). B: HGI'S PREDECESSOR/ASSIGNOR DID NOT OWN OR ASSIGN THE CONTRACTS:

7 8 9 10 11 12 13 14 15 16 17 until questioned at his deposition on May 9, 2005 (Jackson Tr. Id.), even though the contract was produced 18 19 20 21 22 23 24 25 26 27 D: THE COLLECTIVE BARGAINING AGREEMENT SUPERCEDED THE CONTRACTS 28
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HGI has presented no evidence in their Motion for Summary Judgment that Plaintiffs' contracts were ever part of a previous purchase from IBC of the Harlem Globetrotters, Inc., a Delaware corporation. In fact, Plaintiffs in their Motion for Summary Judgment have presented evidence that the final bankruptcy order extinguished any purported rights in any executory contracts not specifically scheduled, and as such, Plaintiffs' contracts were never mentioned. C: HGI HAS UNCLEAN HANDS Jackson testified he had never seen Curly Neal's contract when he bought the team in 1993, or when he licensed away Neal's name in 2002 (Exhibit 1A, Jackson Tr.91-92 ), and Jackson didn't know about the 25% royalty as it was the first time he had seen it. Jackson testified that he had never seen Neal's contract

by HGI counsel Garvey. Jackson asked his own attorney "have you seen it before, Ed?" (Id.) HGI conducted absolutely no due diligence relative to locating, interpreting, legally analyzing or discussing with Plaintiffs the contracts until the filing of their lawsuit. (PSOF¶16-19,60,64,65,67,120). HGI produced a revealing document in discovery that is fatal to their position that Plaintiffs are "not entitled to any money" under their "standard" contracts. It is a memo from an attorney for HGI'S predecessor regarding "Curly" Neal's endorsement money due from Proctor and Gamble in 1988 stating "we would get a piece of any endorsement after the date of his (Neal) signing the contract," and "he doesn't want to blow the $100,000 P-G money for the little difference we might have to give Curly." (Exhibit 50).

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Mannie Jackson, despite his experience and a battery of lawyers, testified that he never even saw the Collective Bargaining Agreements and had no understanding of them or their effect on Plaintiffs' rights or claims. (Exhibit 1A, Jackson Tr. 107-108). This testimony is not credible. The October 11, 1983 Collective Bargaining Agreement signed by Art Harvey and Dallas Thornton (Exhibit 28) granted rights to Plaintiffs for minimum royalty payments: The Collective Bargaining Agreement binds all successors and assigns (CBA Preamble). The Collective Bargaining Agreement automatically renews annually. (CBA Article 16.1). The Collective Bargaining Agreement is "minima" and supercedes the standard player contract. "(T)he provisions set forth in this Agreement are intended solely as minima, (and) no such term, condition or provision shall be inconsistent with and less favorable to the Employee concerned than a specific provision of this Agreement." (Article II, Section 2.1). The guaranteed royalties under CBA Article 14.12 (Merchandising Payments) state: "Notwithstanding the rights of the Company granted pursuant to an Employee's individual contract, the following shall apply with respect to the use of an Employee's name, nickname, signature facsimile, and identifiable portrait, picture, likeness or recorded voice, on articles of merchandise manufactured, or licensed for manufacture, by the Company, for sale to the public ("covered merchandise") (emphasis added). "Covered merchandise" exclusions are clear: "`Covered merchandise', as used herein, excludes publications, yearbooks, signed photographs, items of the type sold at games, television and radio programs, films, and the like." (CBA Article 14.12). (Emphasis added). The royalty rate (repeatedly called "speculative" by HGI and FUBU) is clear: "Employees shall be ... paid twenty-five percent (25%) of such `net merchandising revenues' (CBA Article 14.12). Some of Plaintiffs' player contracts specifically reference the Collective Bargaining Agreement, a fact which provides additional evidence of the Collective Bargaining Agreement's relevance (i.e., Sanders in 1989, Exhibit 3E(2)). Plaintiff Neal's pay stubs from the 1970's and 1980's reflect union dues still being deducted by the Harlem Globetrotters (Exhibit 40), and the union was involved in disputes with the Globetrotters on behalf of players (Neal Settlement, Exhibit 41). Some players received and still receive pensions (Exhibit 1S, Hall Tr. 16) originally established in the CBA (Exhibit 2A). HGI'S Dunbar (a union committee negotiator) doesn't know if the union was ever formally terminated (Exhibit 1M, Dunbar Tr. 44-

24 25 26 27 28 45), stating "we didn't do anything to disband it." All Plaintiffs believe that the union merchandising terms were applicable. (Exhibit 32, Rivers Aff. 26; Exhibit 33, Thornton Aff. 20; Exhibit 34, Sanders Aff. 20; Exhibit 35, Neal Aff. 20; Exhibit 36, Hall Aff. 19; Exhibit 37, Haynes Aff. 18).
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The U.S. Supreme Court has held that individual contracts will not be excerpted from collective ones, nor can they subtract from, waive or limit the terms of collective ones. J. I. Case v. National Labor Relations Board, 321 U.S. 332 (1944). Under the Labor Management Relations Act to the extent that any independent agreement conflicts with the CBA, the terms of the CBA control. Brown v. Lucky Stores, 246 F.3d 1182 (9th Cir. 2001). At a minimum, the CBA is substantial evidence of the disputed fact of Jackson's belief as to Plaintiffs' publicity rights, and the parties intent as to the contracts--a fact issue for the jury.

7 8 9 10 11 12 13 14 15 16 17 on the overall brand, not individuals - an admission of the abandonment of their marks. Jackson concedes 18 19 20 21 22 23 24 25 26 27 in the uniform as it "confused the public as to association", a demand promptly withdrawn as to Rivers. 28
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(PSOF¶ 61, 65, 66, 67, 80). The court may expand by implication the provisions of the CBA's more readily than provisions in an ordinary contract. Dickerson v. DAW Forest Products Co., 827 F.2d 627 (9th Cir. 1987). E: HGI ABANDONED THE MARKS Even if HGI bought Plaintiffs' old player contracts in 1993, HGI (and the predecessor companies to HGI) abandoned any claim to purported license in Plaintiffs' marks. The Ninth Circuit has held that where a licensor fails to exercise quality control over licenses, the owner has abandoned the trademark and estopped from asserting rights to the trademark. Barcamaerica International USA Trust v. Tyfield Importers, Inc. 289 F.3d 589 (9th Cir. 2002). Mannie Jackson concedes he never used Plaintiffs' marks on any merchandise as he wanted to focus

that for a long period he didn't even own the merchandise business. Jackson testified that HGI didn't "actually own" the merchandising business until 1998 because it was sublicensed to Nice Man, "a company out of Minneapolis." Jackson confirms that Nice Man never used any of Plaintiffs' marks on clothing or "covered merchandise" as defined by the Collective Bargaining Agreement and just made the "trash that's sold inside the arena". (Exhibit 1A, Jackson Tr. 258-259). Not only did Plaintiffs not abandon their marks, they used them without ever being told to cease and desist by either HGI or any of their predecessors. (PSOF¶72). The only evidence that HGI or a

predecessor policed Plaintiffs are letters sent to Neal in 1995 and Rivers in 1990 telling them not to appear

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(Exhibits 20 and 23, Exhibit 1C, Rivers Tr. 74). Hall has had virtually no contact with the Globetrotters since 1974 and made no appearances with them (Exhibit 1S, Hall Tr. 29) and hasn't talked to Mannie Jackson since the 1980's (Id. at 60), and only heard from Jackson when he got the royalty check from FUBU sales (Id. at 61). F: THE PROVISIONS ARE NOT AN ENFORCABLE LICENSING AGREEMENT AND ARE UNCONSCIONABLE Plaintiffs' Motion for Summary Judgment extensively briefed this issue. (Plaintiffs' Memo., Doc. 73). Unconscionability is a species of voidness for public policy. Factors include weaknesses in the contracting process (gross disparity in the values exchanged, inequality in bargaining power, terms unreasonable favorable to the superior party). Fidelity & Deposit Co. of MD v. Curtis Day & Co., 1993 WL 128073 (N.D. Cal. 1993); Soltani v. Western & Southern Life Ins. Co, 258 F.3d 1038 (9th Civ. Cal). A restrictive covenant that tends to prevent an employee from a similar vocation after termination of employment is disfavored and will be strictly construed. Such covenants that are unreasonable as to time (i.e. perpetuity) are

unenforceable. Bryceland v. Northey, 160 Ariz. 213, 772 P.2d 36 (Ariz.App.1989). Plaintiffs, like all players, had grossly unequal footing and didn't have legal representation in negotiation (PSOF ¶ 79; Hall didn't have one for 27 years, Exhibit 15, Hall Tr. 16) and players were told "take it or leave it" (Exhibit 1K, Neal Tr. 28, Exhibit 1T, Sanders Tr. 119-120). G: THERE IS A FAILURE OF CONSIDERATION No consideration was paid by the predecessors of HGI for the purported license grant in paragraph 12(a) of the "standard contract". Paragraph 3 of the "standard contract" is clear that the salary paid was only for "services rendered during the term of employment". (Exhibit 3F). Thus, there is a failure of

23 24 25 26 27 28 consideration and the purported grant fails. Paragraph 12(a) specifically states that the player was not required to appear in "endorsements." Exhibit 33(F). It is important to note that Lou Dunbar's "standard" contract (produced to Plaintiffs AFTER Dunbar's deposition), changed the paragraph 12(a) language to read that the player salary shall be for "all services rendered AND ALL OF THE RIGHTS GRANTED TO
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HGI UNDER THIS AGREEMENT." (Exhibit 38, ¶3). No such language appears in the "standard" contract (again, according to HGI, the Rivers contract is "standard", Exhibit 3F). Haynes contract is clear that the salary is for "services rendered during the period of his employment." (Exhibit 3B, ¶3(a)). HGI concedes that Haynes "period of employment" ended in 1979--14 years before HGI even bought the Harlem Globetrotters (HGI DSOF¶7, 64). H: THE COURT MAY CONSIDER PLAINTIFFS' EXTRINSIC EVIDENCE

7 8 9 10 11 12 13 14 15 16 17 nonmovants position, summary judgment is inappropriate. Id. 18 19 20 21 22 23 24 25 26 27 28
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Even if Plaintiffs licensed their trademark rights and their right of publicity to the predecessors of HGI, and even if HGI then actually purchased these rights from the entity that emerged from bankruptcy, then HGI still could not sublicense the purported license to FUBU without express permission from the Plaintiffs. Miller v. Glenn Miller Productions, 318 F.Supp. 923 (C.D. Cal. 2004), holding that in interpreting the terms and scope of a licensing agreement extrinsic evidence may be considered as to "the intent of the parties as it existed at the time of the contracting", citing United States Cellular Invest. Co. of Los Angeles v. GTE Mobilnet, Inc., 281 F.3d 929, 934 (9th Cir. 2002). Extrinsic evidence includes testimony regarding the circumstances in which the contract was written, and the subsequent conduct of the parties. Id. at [5][6]. If ambiguities can be resolved consistent with the

This Court has held that in construing a contract under Arizona law, the court is not limited to the four corners of the document and "may consider surrounding circumstances, including negotiation, prior understandings, and, subsequent conduct..." Mauna Loa Vacation Ownership, L.P. v. Accelerated Assets, LLC, 2005 WL 2410676 (D. Ariz.). HGI has not produced one witness to support Mannie Jackson's

interpretations of purported grants of licenses in Plaintiffs' old player contracts. 3. LACHES FUBU signed the licensing agreement in 2002. (Exhibit 6). Plaintiffs demanded evidence of authority from HGI and FUBU in 2003 (Exhibit 11) and sued in 2004. There was no unreasonable delay in

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attacking the infringing conduct. HGI'S laches argument is that Plaintiffs never asserted their rights against HGI, while HGI infringed upon Plaintiffs' marks for years. First, Plaintiffs did not believe there was an infringement claim against HGI before the FUBU deal. (PSOF¶41,42,51,71). HGI acquired the Globetrotters in 1993, and never used Plaintiffs' names on a clothing line until the FUBU deal. (PSOF¶71; Exhibit 1A, Jackson Tr. 258-259). HGI made only permitted uses of Plaintiffs' names on "non-covered merchandise".

7 8 9 10 11 12 13 14 15 16 17 the Harlem Globetrotters. (PSOF¶47; Exhibit 21). Plaintiffs did not sit by and watch HGI'S predecessor 18 19 20 21 22 23 24 25 26 27 publication of false information or innuendo satisfies the false light elements without finding that the 28
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In Glenn Miller, the plaintiffs were estopped because of the evidence of use of "Glenn Miller's Orchestra" since 1956 by the same company (GMP), noting cease and desist letters went only to non GMP parties. Here, HGI did not use Plaintiff's marks on anything since HGI bought the team in 1993 except permitted items "of the type to be sold at games." (Neal did send a cease and desist to HGI in 1995) (Exhibit 39). The other uses of Plaintiffs' names catalogued by HGI, (HGI'S Motion, page 15 at 1.6), were authorized by Plaintiffs, done with Plaintiffs' permission, or Plaintiffs were paid for their endorsements. (PSOF¶47). None of the deals (i.e. Scooby-Doo, Converse shoes, product endorsements) were done with HGI, but with other companies that owned the Harlem Globetrotters decades before Jackson purchased

companies exploit them. Plaintiffs were paid by the Globetrotters for endorsements. (PSOF¶66,87). The compelling evidence is seen in the Globetrotters 1985 letter to "Gator" Rivers promising in writing $30,000 for endorsements alone, including Converse. This was in addition to his player salary. (Exhibit 22, ¶3). The entire laches argument fails. IV. FALSE LIGHT-INVASION OF PRIVACY The plaintiff in a false light case must prove that the defendant published with knowledge of the falsity or reckless disregard for the truth. However, the element of "extreme and outrageous" conduct is not required. See Godbehere v. Phoenix Newspapers, Inc. Therefore, a jury could find that Defendant's

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conduct was extreme and outrageous, even when the publication of true information creates a false implication about the individual. Id. at 341, 783 P.2d at 787 (emphasis added). A: HGI and FUBU Are Liable To Plaintiffs For False Light Invasion Of Privacy.

First, there is substantial evidence that HGI's and FUBU's use of Plaintiffs' names created a false implication about Plaintiffs, specifically that they endorsed the clothing line on which their names and likenesses were featured. (PSOF¶53,55-58,70,73,115). This placed Plaintiffs in a false light by holding out to the reasonable person that Plaintiffs were involved in endorsement deals. Additionally, HGI's conduct would be offensive to the reasonable person because HGI literally `stole' Plaintiffs' identities by

9 10 11 12 13 14 15 16 17 18 19 Cir. 1985). The Restatement of Torts (Second), § 652(c) cites the illustration Id. Commonwealth (3), the 20 21 22 23 24 25 26 27 28
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licensing their names and likenesses to FUBU when HGI did not have the authority to do so. Plaintiffs were embarrassed and upset that after decades of service to the Globetrotters, they weren't asked for permission, not paid, and received numerous personal comments from people thinking Plaintiffs endorsed or benefited from the FUBU deal. (PSOF¶53,60,65,104). It is a jury question as to whether a reasonable person would find the false limitations that Plaintiffs endorsed and profited from the clothing line offensive. It is also the conduct of HGI which is offensive. The court in Goddbehere noted that true statements that are not "outrageous" may still be sufficiently offensive just because of how or where the publications occurred. A stripper's photos taken for Playboy but used in Hustler met the test. See FN2 of Godbehere citing Douglas v. Hustler Magazine, 769 F.2d 1128 (7th

example of liability for a spurious poem being published with a plaintiffs name. It wasn't necessary that the poem be "so bad as to subject B to liability for libel". The reckless disregard element is satisfied by the evidence that HGI and FUBU intentionally set out to create by innuendo an endorsement or association by Plaintiffs after HGI and made no effort to determine Plaintiffs' rights. HGI's allegedly mistaken "belief" that they had the rights is not innocent under the circumstances--it is outrageous given the ease with which such rights could have been confirmed.

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V. ALL HGI DEFENDANTS ARE PROPER PARTIES Mannie Jackson is a proper party: He was, and is, 100% owner of HGI. (Corporate Filing, Exhibit 59). Jackson says he is the "sole owner". (Exhibit 1A, Jackson Tr. 125). HGI is a Subchapter S corporation. (Exhibit 60). Jackson participated in the negotiation of the licensing agreement with FUBU. (HGI Rule 11 Memorandum, Doc. 216; Jackson Aff. at ¶9). FUBU relied on Jackson's name, reputation and representations PERSONALLY when deciding to enter the licensing agreement and to not perform any due diligence as to Plaintiffs' authority. (Exhibit 1F Weisfeld Tr. 68). Jackson negotiated and signed the licensing agreement (Exhibit 6) and he personally recommended and approved the designs. (Exhibit 1A, Jackson Tr. 250-251). Jackson sent the letters to Plaintiffs regarding the division of money to the Foundation. (FUBU Sales Report, Exhibit 9A; Exhibit 48). Jackson's daughter is the only employee of the Foundation and she is paid by the Foundation. (Exhibit 1A, Jackson Tr. 201, 203). Jackson himself made the decision to place merchandise revenue from the use of Plaintiffs' names on FUBU clothes and bobbleheads in the Foundation. (Exhibit 1A, Jackson Letter to Alumni; Exhibit 48; and Exhibit 1A, Jackson Tr. 175-176). HGI lawyer Garvey wrote to Plaintiffs' counsel admitting that Plaintiffs' names and likenesses were used to "fund the Harlem Globetrotters International Foundation." (Exhibit 63). Jackson set up the Foundation in "roughly 2002, 2000." (Exhibit 1A, Jackson Tr. 198). Jackson was given the personal benefit of a New York apartment in Trump Tower as part of the FUBU licensing agreement. (Exhibit 6, Article 10.4). Jackson's liability is, therefore, not strictly a function of piercing the veils of his alter ego corporations. Mannie Jackson is both directly liable and vicariously liable as an indirect, as well as a direct, infringer. Plaintiffs have never given HGI, or any of its individual Defendants, Jackson, or the Foundation, authority to use their names on a clothing line. (PSOF¶ 33,51,59,61). On September 21, 2005 (nine days before discovery cutoff), Mannie Jackson merged HGI into a recently formed Nevada corporation of the same name--" Harlem Globetrotters International, Inc," then sold HGI to HGI Holdings, Inc. on

23 24 25 26 27 28 September 27, 2005. (Exhibit 53). A corporate officer or director (i.e. Jackson) is, in general, personally liable for all torts which he authorizes or directs or in which he participates, notwithstanding that he acted as agent of the corporation and not on his own behalf. Where a corporation's principal plays an instrumental role in a manufacturer's
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success from which a claim of unfair competition arises, the principal can be personally liable. Transgo, Inc. v. Ajac Transmission Parts Corp., 768 F.2d 1001, 1021 [51][52] (9th Cir. 1985), cert. denied, 474 U.S. 1059, 106 S.Ct. 802, 88 L.Ed. 2d 778 (1986); Coastal Abstract Service, Inc. v. First American Title Insurance Company, 173 F.3d 725 (9th Cir. 1999). Additionally, the 9th Circuit has recognized that "where common ownership and management exists" vicarious liability may lie, and even more so, if an officer or director actually directs or controls the conduct. Holley v. Crank, 258 F.3d 1127 (9th Cir. 2001). HGI cites no law as to why Catherine Jackson is an improper party nor does HGI offer any rebuttal to the legal presumption that HGI assets acquired during marriage of Mannie and Catherine Jackson are not marital property. While she testified she didn't know if marital funds were used to buy the team in 1993 (C. Jackson Tr. 35-36, Exhibit 57), she stated in deposition "WE didn't even own the company back then." (C. Jackson Tr. 30, Exhibit 57, emphasis added). It is noteworthy that she said "we" instead of "Mannie." The recent events involving Mr. Jackson's paying himself a personal dividend in the millions, and the sale of 80% of HGI's assets for millions, combined with the changes in ownership and governance of HGI corporations support direct and vicarious liability of Mannie Jackson. (HGI Financial Statement/Press Release Exhibit B, HGI sale Exhibit 53). Catherine Jackson's Affidavit (HGI's Memorandum, Doc. 216, Exhibit E, C. Jackson Aff. 9/13/05)

18 19 20 21 22 23 24 25 26 27 incredibly, she doesn't even know who is on the board, nor does she attend meetings or look at reports. 28
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conveys her assurance that her husband Mannie owns and controls HGI, but is silent as to the ownership or control of a repository of FUBU royalties--the Foundation (HGI Memo. Doc.216, C. Jackson Aff., at ¶5). Ms. Jackson doesn't know much about the Foundation--neither does longtime alumni director, Governor Vaughn, or Coach Lou Dunbar: "I'm not quite sure exactly what it does," (Exhibit 1D Vaughn Tr. 6; Exhibit 1M Dunbar Tr. 82-83) or who it has helped--"none that I know of." (Exhibit 1D Vaughn Tr. 7). Ms. Jackson testified that she does various charity work for Arizona Foundation for Women, (Exhibit 57 C. Jackson Tr. 15), but when asked if she did any for the Foundation (again, wholly controlled by her husband supposedly to help old needy players) she answered "absolutely not," (Exhibit 57 C. Jackson Tr. 15) and,

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Had she looked at the reports, they would have shown that Ms. Jackson's charity--Arizona Foundation for Women was paid $4,500.00 from the Foundation in 2002 and 2003 according to Foundation cash disbursement report filed with the State of Arizona. (Exhibit 57, C. Jackson Tr. 37; Exhibit 57 and 62). Plaintiffs have never authorized the Foundation to use or license their names and likenesses. (PSOF¶61). The Foundation clearly was the recipient of revenues directly attributable to the sale of FUBU clothes bearing Plaintiffs' names. (FUBU Sales Report, Exhibit 9A,B,C; Exhibit 1B Syracuse Tr. 42, 86;

7 8 9 10 11 12 13 14 15 16 17 ego of the HGI corporations), and because of the community property laws of the State of Arizona. 18 19 20 21 22 23 24 25 26 27 28 Catherine Jackson has been married to Mannie Jackson twenty-seven years (C. Jackson Tr. 9, Exhibit 57), and was married at the time the Harlem Globetrotters were purchased. (C. Jackson Tr. 19-20, Exhibit 57). Joint returns have been filed since they were married. (C. Jackson Tr. 33, Exhibit 57). HGI, its stock and assets are part of the marital community under Arizona law, and in a judgment or an award of attorney fees against entities comprising the marital community, the spouse must be joined. In her absence, complete relief may not be afforded to those already parties. Weimer v. Maricopa County Community College District, 184 F.R.D. 309 (D.Ariz., 1998). Ms. Jackson is a proper party in that she has a right to challenge enforcement of a potential judgment against community property of Mannie Jackson (i.e. HGI). Gagan v. Sharar, 376 F.3d 987 (9th Cir.
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and Exhibit 1A Jackson Tr. 147-148). Yet, Plaintiffs, like HGI employees Vaughn and Dunbar, have no idea what the Foundation does with the money it makes off their names. (Exhibit 1R, Thornton Tr. 50; Exhibit 1T, Sanders Tr. 128; Exhibit 1Q, Haynes Tr. 107, 97, 98; and Exhibit 1K, Neal Tr. 161). Mannie Jackson could not name a single former Globetrotter player helped by the Foundation (Exhibit 1A, Jackson Tr. 199). The Foundation has controlled millions of dollars, 100% at the direction and control of Jackson. (Foundation Receipt Report, Exhibit 58). Regarding Ms. Jackson, besides the evidence of the direct benefits enjoyed by her and Mannie Jackson resulting from the infringing FUBU transactions, existing law provides a legal basis for Ms. Jackson being a proper party in this lawsuit--her status as the spouse of Mannie Jackson (the sole owner and alter

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2004) (recognizing spouse's right to challenge enforcement of judgments against community property in Arizona). VI. UNJUST ENRICHMENT Quantum meruit is the measure of damages imposed when a party prevails on a claim of unjust enrichment. Stapley v. Am. Bathtub Liners, Inc., 162 Ariz. 567, 568 (Ct. App. 1984). Plaintiffs have produced evidence that HGI and FUBU were enriched to the extent of the revenues derived from sales of garments

7 8 9 10 11 12 13 14 15 16 17 HGI and FUBU kept all the benefit of the FUBU endorsement some of which "might otherwise have 18 19 20 21 22 23 24 25 26 27 Motion for Summary Judgment. 28
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bearing Plaintiffs' names, nicknames, numbers and likenesses, the use of such marks conferred a benefit on HGI (i.e. royalties; Exhibit 9D, 64). FUBU reports reveal that garment sales were actually posted by Plaintiffs numbers, and CAD's bore Plaintiffs' names, nicknames and numbers. (Exhibit 24). There is no evidence of any contracts between HGI and Plaintiffs. (PSOF ¶65). Because HGI had no express authority to use Plaintiffs' marks it would be inequitable for HGI to retain the benefits. In Stapley at [6], no impoverishment was found because there was no evidence that the plaintiff was deprived of funds that he "might otherwise have received" (no history of rent payments yet plaintiff sought lost rents). Here, Plaintiffs have historically been paid for endorsements of products like Converse, Coca Cola, etc. In fact, even HGI paid Neal and Haynes 25% for bobblehead dolls. (Exhibits 45 and 48). But

(been) received" by Plaintiffs under their course of business with the predecessors to HGI. Quantum meruit as a measure of damages is available even if there is an unenforceable contract or in the absence of a contract. The main inquiry is whether the retention of benefits enjoyed by HGI's use of Plaintiffs' marks is inequitable. Western Corrections Group, Inc. v. Tierney, 208 Ariz. 583 (Ct. App. 2004) at [14][15][16]. HGI's "belief" that it had the rights to Plaintiffs' names is irrelevant as the result is the same. HGI's "belief" is not substantiated by a contract between HGI and Plaintiffs. (PSOF¶6,61,62,75). Additionally, HGI's "belief" is not so innocent given the complete lack of due diligence, the equivalent of intent. E&J. FOR ALL FOREGOING REASONS, Plaintiffs respectfully request that this Court deny the HGI

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DATED this _30th_day of November, 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) 420-1