Free Objection - District Court of Arizona - Arizona

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Joel L. Herz, Esq. State Bar No. 015105 Law Offices of Joel L. Herz 3573 East Sunrise Drive, Suite 215 Tucson, AZ 85718 Telephone: 520-529-8080 Facsimile: 520-529-8077 Ira S. Sacks, Esq. Safia A. Anand, Esq. Dreier LLP 499 Park Avenue New York, NY 10022 Telephone: 212-328-6100 Facsimile: 212-328-6101 Attorneys for Defendant GTFM, LLC UNITED STATES DISTRICT COURT DISTRICT OF ARIZONA MEADOWLARK LEMON, a married man, Plaintiff/Counterdefendant vs. HARLEM GLOBETROTTERS INTERNATIONAL, INC., et al., Defendants/Counterclaimants ) ) ) ) ) ) ) ) ) )
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Case No. CV 04-0299 PHX-DGC Case No. CV 04-1023-PHX-DGC

GTFM, LLC'S OBJECTIONS TO PLAINTIFFS' STATEMENT OF FACTS AND FURTHER STATEMENT OF FACTS PURSUANT TO LOCAL RULE 56.1 Pursuant to Local Rule 56.1(a), defendant GTFM, LLC ("GTFM") submits this statement of (i) specific objections to Plaintiffs Fred "Curly" Neal, Larry "Gator" Rivers, Dallas "Big D" Thornton, Robert "Showboat" Hall, Marques Haynes and James "Twiggy" Sanders' (collectively referred to as "Plaintiffs") Statement of Facts ("Plaintiffs' Statement of Facts"); and (ii) material facts as to which there exists a genuine issue to be tried in opposition to Plaintiffs' Motion For Summary Judgment (the "Motion"). Indeed, those facts are undisputed in GTFM's favor and 1 Document 263 Filed 11/28/2005 Page 1 of 21

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support why the Motion should be denied and GTFM's Motion for Summary Judgment, dated October 24, 2005, should be granted. Objections to Plaintiffs' Statement of Facts Pursuant to Local Rule 56.1(a), GTFM specifically objects to the following alleged facts submitted in support of Plaintiffs' Motion. 1. GTFM disputes the allegations set forth in paragraph 1 of Plaintiffs' Statement of

Facts, except admits that the Plaintiffs were employed by various Harlem Globetrotter entities in various positions and that the License Agreement was effective June 1, 2002. 1, 15-20; HGI SOF ¶ 7). 2. GTFM disputes the allegations set forth in paragraph 2 of Plaintiffs' Statement of (GTFM SOF ¶¶

Facts because Plaintiffs' mischaracterize the underlying evidence. 3. GTFM disputes the allegations set forth in paragraph 3 of Plaintiffs' Statement of

Facts and states the Assignment and Assumption Agreement between Harlem Globetrotters, Inc. and IBC was dated June 7, 1993. (Plaintiffs' Exhibit 5(A)). 4. GTFM disputes the allegations set forth in paragraph 4 of Plaintiffs' Statement of

Facts, except admits that the Asset Purchase Agreement was dated as of August 1, 1993 by and between Harlem Globetrotters International, Inc., Mannie Jackson Associates, Inc. and Harlem Globetrotters, Inc. 5. GTFM disputes the allegations set forth in paragraph 5 of Plaintiffs' Statement of

Facts because it is an incomplete description of the Asset Purchase Agreement.

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6.

GTFM disputes the allegations set forth in paragraph 6 of Plaintiffs' Statement of

Facts and states that Plaintiffs entered into player contracts with HGI and/or its predecessors. (HGI SOF ¶¶16-17, 19-22; HGI Exs. 8, 12, 16, 22-23, 37).1 7. GTFM disputes the allegations set forth in paragraph 7 of Plaintiffs' Statement of

Facts and states that the allegations are unclear as to the "Agreement" to which it refers. 8. GTFM disputes the allegations set forth in paragraph 8 of Plaintiffs' Statement of

Facts because it is an incomplete description of the License Agreement, except admits that HGI and GTFM entered into an Agreement on June 1, 2002, wherein HGI licensed to GTFM, among other rights, "the name, professional name, nickname recorded voice, biographical material, signature facsimile, portraits, pictures and likeness of any and all players who have played for the Harlem Globetrotters, or who hereafter play for the Globetrotters during the Term, other than Wilt Chamberlain and Magic Johnson". (GTFM SOF ¶ 1).2 9. GTFM disputes the allegations set forth in paragraph 9 of Plaintiffs' Statement of

Facts, except admits that the FUBU/HGI Apparel, some of which contained plaintiffs' names and/or alleged jersey numbers, was offered for sale and sold in interstate commerce in the United States and overseas. GTFM states further that the cited evidence does not support Plaintiffs' allegations.

Cites to "HGI SOF ¶ __" or "HGI Ex. __" are to the Statement of Undisputed Facts (and evidence relied upon therein) and to the Exhibits submitted by HGI therewith, respectively, in connection with HGI's motion for summary judgment.

Cites to "GTFM SOF ¶ __" are to the Statement of Undisputed Facts (and evidence relied upon therein) submitted by GTFM, LLC in connection with its motion for summary judgment.

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10.

GTFM disputes the allegations set forth in paragraph 10 of Plaintiffs' Statement

of Facts and states that the cited evidence does not support these allegations. 11. GTFM disputes the allegations set forth in paragraph 11 of Plaintiffs' Statement

of Facts and states that although much of the negotiation and due diligence concerning the License Agreement was done by GTFM's outside counsel (Blenden Tr. 17, 28-29, 86),3 GTFM was aware that HGI had been using and licensing the rights to the names and likenesses of players and former players for decades and was not aware of any complaints regarding such uses. Furthermore, when deciding whether to enter into the License Agreement, GTFM relied on the

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representations and indemnification provisions of the License Agreement, and the fact that no player had ever sued the Globetrotters for misuse of their names and/or likenesses. (GTFM SOF ¶¶ 21-25). GTFM disputes the allegations set forth in paragraph 12 of Plaintiffs' Statement

of Facts because it is an incomplete and misleading statement of the representations. 13. GTFM disputes the allegations set forth in paragraph 13 of Plaintiffs' Statement

of Facts, except admits that GTFM requested an indemnity provision in the License Agreement. Upon being told that HGI owned the right to the use of the names and likenesses of all Harlem Globetrotter players and former players, GTFM asked to see the player contracts. They were told that, because of the Globetrotters' bankruptcy, the contracts could not be located. GTFM

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References to "[Witness] Tr. ___" refer to deposition transcript pages from the deposition of the particular witness, attached to the Sacks Decl. as Exhibits E - M.

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went forward because of the representations and indemnities in the License Agreement to protect GTFM. (GTFM SOF ¶ 22 n.5). 14. GTFM disputes the allegations set forth in paragraph 14 of Plaintiffs' Statement

of Facts and states that upon being told that HGI owned the right to the use of the names and likenesses of all Harlem Globetrotter players and former players, GTFM asked to see the player contracts. They were told that, because of the Globetrotters' bankruptcy, the contracts could not be located. GTFM went forward because of the representations and indemnities in the License Agreement to protect GTFM. (GTFM SOF ¶ 22 n.5).

10 11 12 13 14 entering into the License Agreement GTFM was aware that HGI had been using and licensing 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Case 2:04-cv-00299-DGC Document 263 5 Filed 11/28/2005 Page 5 of 21 16. GTFM disputes the allegations set forth in paragraph 16 of Plaintiffs' Statement the rights to the names and likenesses of players and former players for decades and was not aware of any complaints regarding such uses. Furthermore, when deciding whether to enter into the License Agreement, GTFM relied on the representations and indemnification provisions of the License Agreement, and the fact that no player had ever sued the Globetrotters for misuse of their names and/or likenesses. (Blenden Tr. 17, 28-29, 86; GTFM SOF ¶¶ 21-25). 15. GTFM disputes the allegations set forth in paragraph 15 of Plaintiffs' Statement

of Facts and states that GTFM relied upon its outside counsel to conduct its due diligence, relied upon the substantial representations and indemnities in the License Agreement, and upon

of Facts. Mr. Blenden merely testified that he does not recall whether he reviewed any player contracts. (Blenden Tr. pg. 36).

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17.

GTFM disputes the allegations set forth in paragraph 17 of Plaintiffs' Statement

of Facts, except admits that no one from GTFM contacted any players directly. 18. GTFM disputes the allegations set forth in paragraph 18 of Plaintiffs' Statement

of Facts. The presentation of the allegations set forth in paragraph 18 of Plaintiffs' Statement of Facts is misleading and immaterial for purposes of this Motion and distorts the evidence cited. 19. GTFM disputes the allegations set forth in paragraph 19 of Plaintiffs' Statement

of Facts and states that Mr. Aurum had no obligation to contact any of the former Harlem Globetrotters about their approval. 20. GTFM disputes the allegations set forth in paragraph 20 of Plaintiffs' Statement

of Facts and states that Daymond Aurum is CEO of GTFM, Inc., GTFM, LLC and FUBU The Collection, LLC, among others. GTFM states further that Mr. Aurum is in charge or marketing, looking over distribution and product placement on artists for GTFM, LLC, not FUBU The Collection, LLC. 21. GTFM disputes the allegations set forth in paragraph 21 of Plaintiffs' Statement

of Facts and states that some of the FUBU/HGI Apparel contained Plaintiffs' Alleged Trademarks. GTFM states further that (i) Plaintiffs have produced no evidence illustrating that their alleged jersey numbers, standing alone, have acquired secondary meaning, caused confusion or led consumers to believe that they approved of the product (HGI SOF ¶¶ 8-10, 12, 145-46, 149-52; GTFM SOF ¶¶ 86-91); (ii) Plaintiffs have failed to demonstrate that any of the

24 25 26 27 28 Case 2:04-cv-00299-DGC Document 263 styles at issue used their likenesses and/or images, as opposed to their names or alleged jersey numbers (Sacks Decl. ¶ 3); and (iii) Plaintiffs have not adduced any evidence that they have any secondary meaning in their identities or that there is likely confusion, and therefore their names 6 Filed 11/28/2005 Page 6 of 21

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cannot serve as trademarks. (HGI SOF ¶¶ 93-96, 111, 113, 132, 134, 137, 143, 145-153, 155; GTFM SOF ¶¶ 86-91; Sacks Decl. ¶ 4). 22. GTFM disputes the allegations set forth in paragraph 22 of Plaintiffs' Statement

of Facts. In GTFM's Summary Judgment Motion, it stated that "[a]n insignificant number of styles containing plaintiffs' likenesses and/or images ­ as opposed to plaintiffs' names and/or alleged jersey numbers ­ were manufactured and/or sold. Plaintiffs' expert was unable to identify any such styles and only identified styles that used the plaintiffs' names and/or alleged jersey numbers." (GTFM SJ Motion pg. 5 n.1). GTFM states further that on

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References to "Blenden Oct. 17 Decl." refer to the Declaration of Lawrence Blenden, dated October 17, 2005 and filed with the FUBU Defendants' Partial Opposition to Plaintiffs' Motion to Dismiss FUBU The Collection, LLC and GTFM of Orlando, LLC d/b/a FUBU Company Store Without Prejudice on October 18, 2005. A copy of that declaration is attached to the accompanying Sacks Declaration as Exhibit C.
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September 19, 2005, it was brought to GTFM's attention by the plaintiffs that alleged FUBU/HGI merchandise was being sold in the Philippines; however, GTFM did not receive any royalties or royalty reports as a result of such sales. (Blenden Oct. 17 Decl. ¶¶ 3-4).4 Moreover, this Court has already ruled that all discovery on foreign sales is closed. (Sacks Decl. Ex. A). Furthermore, one of Plaintiffs' investigators conceded that the alleged FUBU/HGI apparel that he found overseas did not have the names and/or likenesses of any of the plaintiffs and the other investigator conceded that he had no direct knowledge of any alleged apparel overseas; thus, his testimony is inadmissible hearsay. (Gallo Tr. 28-29, 31-32; Phipps Tr. 58-59, 120-21). 23. GTFM disputes the allegations set forth in paragraph 23 of Plaintiffs' Statement

of Facts and states that Mr. Syracuse is the chief financial "officer" of HGI and is responsible for

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the financial integrity of HGI's assets and accounting records. (Plaintiffs' Exhibit 1(B), pgs. 9, 11). 24. GTFM disputes the allegations set forth in paragraph 24 of Plaintiffs' Statement

of Facts and a misleading excerpt from the letter, a copy of which was not sent to GTFM. 25. GTFM disputes the allegations set forth in paragraph 25 of Plaintiffs' Statement

of Facts. The presentation of the allegations set forth in paragraph 25 of Plaintiffs' Statement of Facts is misleading and immaterial for purposes of this Motion and distorts the evidence cited. 26. GTFM disputes the allegations set forth in paragraph 26 of Plaintiffs' Statement

of Facts, except admits that the License Agreement stated that GTFM was to pay HGI royalties at the rate of 10% for the first $10 million of net sales and at a rate of 8% thereafter. 27. GTFM disputes the allegations set forth in paragraph 27 of Plaintiffs' Statement

of Facts. The presentation of the allegations set forth in paragraph 27 of Plaintiffs' Statement of 16 17 18 19 20 21 22 23 24 25 26 27 28 Case 2:04-cv-00299-DGC Document 263 8 Filed 11/28/2005 Page 8 of 21 FUBU/HGI Apparel to the Harlem Globetrotters International Foundation, Inc. for the men's and boy's line to be $22,661,645.50 before subtracting the sample shipments. (Sacks Decl. Ex. B). 29. GTFM disputes the allegations set forth in paragraph 29 of Plaintiffs' Statement Facts is misleading and distorts the evidence cited. 28. GTFM disputes the allegations set forth in paragraph 28 of Plaintiffs' Statement

of Facts and states that the royalty analysis from GTFM as of November 2003 shows net sales

of Facts, except admits that HGI paid some of the royalties it received from GTFM for the

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30.

GTFM disputes the allegations set forth in paragraph 30 of Plaintiffs' Statement

of Facts. The presentation of the allegations set forth in paragraph 30 of Plaintiffs' Statement of Facts is misleading and immaterial for purposes of this Motion and distorts the evidence cited. 31. GTFM disputes the allegations set forth in paragraph 31 of Plaintiffs' Statement

of Facts. The presentation of the allegations set forth in paragraph 31 of Plaintiffs' Statement of Facts is misleading and immaterial for purposes of this Motion and distorts the evidence cited. 32. GTFM does not dispute the allegations set forth in paragraph 32 of Plaintiffs'

Statement of Facts. 33. GTFM has no knowledge of the allegations set forth in paragraph 33 of Plaintiffs'

Statement of Facts. 34. GTFM disputes the allegations set forth in paragraph 34 of Plaintiffs' Statement

of Facts and states that the contract referred to in Plaintiffs' Statement of Facts is not a player 16 17 18 19 20 21 22 23 24 25 26 27 28 Case 2:04-cv-00299-DGC Document 263 in the Agreement, only in the exhibits attached thereto and that the portions of the Agreement that Plaintiffs cite to do not state that the contract is governed by the laws of Illinois. 9 Filed 11/28/2005 Page 9 of 21 Inc., and was governed by Illinois law. 36. GTFM disputes the allegations set forth in paragraph 36 of Plaintiffs' Statement contract. It was a contract with Harlem Globetrotters, a division of IBC. (Plaintiffs' Ex. 3(A)). 35. GTFM disputes the allegations set forth in paragraph 35 of Plaintiffs' Statement

of Facts, except admits that the last contract terminated in 1980, was with Harlem Globetrotters,

of Facts, except admits that the last contract terminated in 1974 and was with Harlem Globetrotters, Inc. GTFM also states that Plaintiffs' Exhibit 3(C) does not have a paragraph 1(b)

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37.

GTFM disputes the allegations set forth in paragraph 37 of Plaintiffs' Statement

of Facts, except admits that the last contract terminated in 1982 and was with Harlem Globetrotters, Inc. and GTFM states that Plaintiffs' Exhibit 3(D) does not have a paragraph 1(b) and that the portions of the Agreement that Plaintiffs cite to do not state that the contract is governed by the laws of California. 38. GTFM disputes the allegations set forth in paragraph 38 of Plaintiffs' Statement

of Facts, except admits that the last contract terminated in 1985 and was with Harlem Globetrotters, Inc. and GTFM states that Plaintiffs' Exhibit 3(F) does not have a paragraph 1(b)

10 11 12 13 14 of Facts, except admits that the last contract terminated in 1992, was with Harlem Globetrotters, 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Case 2:04-cv-00299-DGC Document 263 10 Filed 11/28/2005 Page 10 of 21 41. GTFM disputes the allegations set forth in paragraph 41 of Plaintiffs' Statement and appearances, but not for merchandise. (Sanders Tr. 43-44, 71-74, 82, 85, 120-21; Neal Tr. 78-89; Rivers Tr. 27-30, 58-59, 65, 68-69; Thornton Tr. 84-85, 95-96, 101-07; Haynes Tr. 58-70; Hall Tr. 40-41, 47-48). GTFM states further that the allegations set forth in paragraph 40 of Plaintiffs' Statement of Facts are immaterial on their face to claims against GTFM. Inc., and was governed by Minnesota law. 40. GTFM disputes the allegations set forth in paragraph 40 of Plaintiffs' Statement and that the portions of the Agreement that Plaintiffs cite to do not state that the contract is governed by the laws of California. 39. GTFM disputes the allegations set forth in paragraph 39 of Plaintiffs' Statement

of Facts, except does not dispute that Plaintiffs sometimes received payments for endorsements

of Facts. The Globetrotters used and licensed Plaintiffs' names and likenesses in various ways

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while they were players and continue to do so today. (GTFM SOF ¶¶ 21, 24-25, 36-40, 48-49, 57, 59, 62-63, 68-69, 75, 77-78; HGI SOF ¶¶ 24-37, 39-40, 59). 42. GTFM disputes the allegations set forth in paragraph 42 of Plaintiffs' Statement

of Facts as unsupported by the evidence cited and states that these allegations are immaterial. 43. GTFM disputes the allegations set forth in paragraph 43 of Plaintiffs' Statement

of Facts, except admits that retails stores, which have no affiliation to GTFM or any other FUBU-related entity, continue to sell merchandise that they had previously purchased. These retail sales do not have any impact on GTFM's present or future revenues and such sales are not reported to GTFM, except to the extent that any such retailer may have requested a credit or offset against the merchandise, in which event GTFM's revenues would be lowered. (Weisfeld Decl. ¶ 7).5 44. GTFM disputes the allegations set forth in paragraph 44 of Plaintiffs' Statement

of Facts. Haynes' contract states that "HGI shall have the right to sell, assign and transfer this Agreement or to loan Marques' services to any basketball team operating under the name Harlem Globetrotters owned and operated by HGI or any successor to the business of HGI...This Agreement may not be sold, assigned or transferred nor may Marques' services be loaned, except as provided in this paragraph 18, without prior written consent of Marques." (Plaintiffs' Exhibit 3(B) ¶18)(emphasis added). Moreover, Haynes' contract states that HGI may use Marques' interviews, appearances, pictures, names, facsimiles of his signature and/or his

References to "Weisfeld Decl. __" refer to the Declaration of Bruce Weisfeld, which was filed in support of GTFM's Motion for Summary Judgment, filed October 28, 2005 and attached to the accompanying Sacks Decl. as Exhibit D.

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likeness "in any manner it may desire for the advertising and promotion of any of HGI's athletic teams or other activities or the advertising and promotion of the sale of any commercial products or services by HGI or by any other person, firm or corporation which may be licensed or otherwise authorized by HGI...The authorization granted in this paragraph ... shall not terminate upon the termination of this Agreement or Marques' employment hereunder no matter what the reason, but shall continue in full force and effect thereafter ...to the extent they are put to the same uses as they were put prior to such termination." (Plaintiffs' Exhibit 3(B) ¶15(a)). 45. GTFM disputes the allegations set forth in paragraph 45 of Plaintiffs' Statement

10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Case 2:04-cv-00299-DGC Document 263 12 Filed 11/28/2005 Page 12 of 21 47. GTFM disputes the allegations set forth in paragraph 47 of Plaintiffs' Statement 46. GTFM disputes the allegations set forth in paragraph 46 of Plaintiffs' Statement of Facts and states that paragraph 9 of Plaintiffs' Exhibit 3(A) does not state that the rights granted to HGI are only for the term of the contract. GTFM states further that paragraph 11 of Exhibit 3(A) states that "if Neal appears in a non-Globetrotter advertisement, C&R and HG will divide the compensation such that 75% shall be paid to C&R and 25% to HG." (Plaintiffs' Exhibit 3(A) ¶11)(emphasis added). Moreover, Plaintiffs' Exhibit 3(A) is not a player contract, rather it is an agreement to engage "C&R to have Neal render services as a spokesperson for HG." (Plaintiffs' Exhibit 3(A) ¶1)(emphasis added).

of Facts and states that the presentation of the allegations set forth in paragraph 46 of Plaintiffs' Statement of Facts is misleading and distorts the evidence cited.

of Facts, except admits that Plaintiffs sometimes received payments for endorsements and appearances, but not for merchandise. (Sanders Tr. 43-44, 71-74, 82, 85, 120-21; Neal Tr. 78-

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89; Rivers Tr. 27-30, 58-59, 65, 68-69; Thornton Tr. 84-85, 95-96, 101-07; Haynes Tr. 58-70; Hall Tr. 40-41, 47-48). 48. GTFM disputes the allegations set forth in paragraph 48 of Plaintiffs' Statement

of Facts and states that the presentation of the allegations set forth therein are misleading and immaterial for purposes of this Motion and distorts the evidence cited. GTFM states further that Plaintiffs' Exhibit 1(A), pgs. 37, 41 and 45, do not support Plaintiffs' allegations that "Dunbar was also on the UBPA negotiation committee that secured additional merchandising rights supplemental to individual contracts and there is no evidence that formal actions was (sic) ever

10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Case 2:04-cv-00299-DGC Document 263 13 Filed 11/28/2005 Page 13 of 21 1. Plaintiffs have failed to demonstrate that any of the styles at issue used their likenesses and/or images, as opposed to their names or alleged jersey numbers. Therefore, alleged infringement of Plaintiffs' images and/or likenesses is not at issue in this case and that portion of their claims should be dismissed. (Sacks Decl. ¶ 3). Plaintiffs Have Not Demonstrated Any Use of Their Likenesses and/or Images Pursuant to Rule 56.1(a), GTFM provides the following statement of facts setting forth those material facts, which are, at the very least, in dispute, and therefore why the Motion should be denied. Indeed, since many of these facts are undisputed in GTFM's favor, GTFM's pending Motion for Summary Judgment, dated October 24, 2005, should be granted. taken to disband the UBPA." GTFM's Statement Pursuant to Local Civil Rule 56.1(a)

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Plaintiffs Have Not Adduced Any Evidence of Secondary Meaning in Their Numbers 2. Plaintiffs have produced no evidence illustrating that their alleged jersey

numbers, standing alone, have acquired secondary meaning, caused confusion or led consumers to believe that they approved of the product. (HGI SOF ¶¶ 8-10, 12, 145-46, 149-52; GTFM SOF ¶¶ 86-91). 3. With the exception of the number worn by Hall, the Globetrotters have recycled

the alleged jersey numbers since plaintiffs left the team. (HGI SOF ¶¶ 8-10, 12). 4. At least two plaintiffs, Rivers and Haynes, had multiple player numbers during

their time as Globetrotters. (HGI SOF ¶ 11; GTFM SOF ¶ 66 n.6). Plaintiffs' Failure to Prove Secondary Meaning or Likely Confusion 5. Plaintiffs have not adduced any evidence that they have any secondary meaning

in their identities (among consumers of the FUBU/HGI Apparel or otherwise). (HGI SOF ¶¶ 96, 111, 113, 132, 134, 137, 143, 146, 148; GTFM SOF ¶¶ 86-88, 90-91). 6. 7. The parties have not stipulated to Plaintiffs' fame. (Sacks Decl. ¶ 4). Plaintiffs have adduced no evidence of likely confusion. (HGI SOF ¶¶ 93-96,

145, 147-153, 155; GTFM SOF ¶¶ 86-91). 8. 9. Plaintiffs' names are not registered trademarks. (GTFM SOF ¶ 85). Plaintiffs have failed to adduce any evidence that their names have acquired

secondary meaning. (HGI SOF ¶¶ 96, 111, 113, 132, 134, 137, 143, 146, 148; GTFM SOF ¶¶ 86-88, 90-91). 14 Document 263 Filed 11/28/2005 Page 14 of 21

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10.

Plaintiffs do not have any evidence of public recognition linking them with the

Apparel and they have not procured testimony of actual consumers of the Apparel stating that they associate the Apparel with Plaintiffs. (HGI SOF ¶¶ 93-96, 145; GTFM SOF ¶¶ 86-91). 11. Plaintiffs have not produced any evidence indicating that their names were used

by them for advertising the FUBU/HGI Apparel or that consumers mistakenly believed that they were connected with the FUBU/HGI Apparel. (HGI SOF ¶¶ 93-96, 145, 147-153, 155; GTFM SOF ¶¶ 86-91). 12. Plaintiffs have not submitted any surveys or consumer testimony to show that (HGI SOF ¶¶ 93-96, 145,

consumers thought that these products were associated with them. 149-152, 155). 13.

Plaintiffs lack any evidence that the Apparel is likely to or has caused consumer

confusion. (HGI SOF ¶ 95). 14. Plaintiffs do not endorse or license, and have not endorsed any products or

licensed their names for use on products or services. (HGI SOF ¶¶ 111, 113, 132, 134, 137, 143, 147; GTFM SOF ¶¶ 43, 50, 54, 64, 71, 79). 15. Plaintiffs do not license and have not licensed their names to clothing

manufacturers. (HGI SOF ¶¶ 111, 113, 132, 134, 137, 143, 145-48, 150-52, 155; GTFM SOF ¶¶ 43, 50, 54, 64, 71, 79). 16. Plaintiffs do not contend that they sold any goods with their Alleged Trademarks,

much less goods similar to the FUBU/HGI Apparel. (HGI SOF ¶ 147).

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17.

The FUBU/HGI Apparel prominently featured the Globetrotters' name and

trademarks, as well as the FUBU trademarks. (HGI SOF ¶ 77, 155; GTFM SOF ¶ 4). 18. Consumers likely believed that the Globetrotters endorsed the FUBU/HGI

Apparel, and not that Plaintiffs did so. (Sacks Decl. ¶ 5). 19. There is no evidence that the limited styles that had Plaintiffs' names sold because

of the strength of their names, instead of as a result of the FUBU and Harlem Globetrotters' marks. (HGI SOF ¶ 155). 20. The License Agreement expired on November 30, 2004 and permitted GTFM a

one hundred eighty (180) day sell-off period. (GTFM SOF ¶ 7). 21. GTFM is not currently manufacturing and/or selling any Alleged Infringing

FUBU/HGI Apparel and will not do so in the future. (GTFM SOF ¶ 8). GTFM's Intent in Entering Into the License Agreement 22. Plaintiffs have not adduced any evidence to suggest that GTFM willfully

infringed their rights. (GTFM SOF ¶ 98). 23. Much of the negotiation and due diligence concerning the License Agreement was

done by GTFM's outside counsel. (Blenden Tr. 17, 28-29, 86). 24. GTFM did not enter into the License Agreement blindly. GTFM was aware that

HGI had been using and licensing the rights to the names and likenesses of players and former players for decades and was not aware of any complaints regarding such uses. When deciding whether to enter into the License Agreement, GTFM relied on the representations and 16 Document 263 Filed 11/28/2005 Page 16 of 21

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indemnification provisions of the License Agreement, and the fact that no player had ever sued the Globetrotters for misuse of their names and/or likenesses. (GTFM SOF ¶¶ 21-25). 25. Upon being told that HGI owned the right to the use of the names and likenesses

of all Harlem Globetrotter players and former players, GTFM asked to see the player contracts. They were told that, because of the Globetrotters' bankruptcy, the contracts could not be located. GTFM went forward because of the representations and indemnities in the License Agreement to protect GTFM. (GTFM SOF ¶ 22 n.5). Plaintiffs Were Not Injured 26. Plaintiffs did not perform any services for GTFM, whether under an

unenforceable contract, in the absence of a contract, or otherwise, and they have not made any claims to the contrary. (Sacks Decl. ¶ 6). 27. Plaintiffs did not lose any income as a result of the FUBU/HGI Apparel. (GTFM

16 17 18 19 20 21 22 23 24 25 26 27 28 Case 2:04-cv-00299-DGC Document 263 17 Filed 11/28/2005 Page 17 of 21 29. Rivers admitted that the "FUBU line could have possibly enhanced [his] name SOF ¶¶ 44, 51, 56, 65, 72, 80, 91, 97; HGI SOF ¶¶ 103-04). 28. Plaintiffs received checks in connection with the sale of certain styles of

FUBU/HGI Apparel that included their names. (GTFM SOF ¶¶ 45, 52, 58, 66, 73, 81, 91).

and stature...it's a world-wide company...and [he doesn't] think [he's] been hurt by that in that aspect." (GTFM SOF ¶ 65).

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30.

Plaintiffs have not submitted any evidence to demonstrate that the Alleged

Infringing Goods placed them in a false light that would be highly offensive to a reasonable person. (Sacks Decl. ¶ 7). 31. Plaintiffs testified that they liked the FUBU/HGI Apparel and even purchased

some. (HGI SOF ¶ 92). 32. The only monetary recovery Plaintiffs seek from GTFM is disgorgement of

GTFM's profits. (HGI SOF ¶ 103; GTFM SOF ¶¶ 82-83). 33. Plaintiffs have not offered any evidence as to the fair market value of the use of

their Alleged Trademarks; indeed, they have specifically eschewed such a claim. (GTFM SOF ¶¶ 95-96). HGI's Use of Plaintiffs' Alleged Trademarks 34. All of the Plaintiffs signed player contracts, which authorized the Globetrotters to

use their names, photos, and likenesses for publicity and other purposes in perpetuity. (HGI SOF ¶ 15). 35. Haynes' 1975 contract states the Harlem Globetrotters have the right to use his

"name, facsimile of his signature and likeness to the extent they are put to the same uses as they were put prior to [the termination of the contract]." (HGI SOF ¶ 16; HGI Ex. 22 ¶ 15(a)). 36. The Globetrotters used and licensed Haynes' name and likeness in a variety of

ways while he was a player and still continue to do so. (HGI SOF ¶¶ 24-37, 39, 53, 59; GTFM SOF ¶¶ 48-49).

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37.

Plaintiff Hall signed a contract with the Globetrotters every year that he was a

player. His last contract, dated 1973, contains the following: Player further agrees that each such interview, appearance and picture and/or his name and/or facsimile of his signature and/or his likeness may be used by HGI in any manner it may desire for the advertising and promotion of the sale of any commercial products or services by HGI or by any other person, firm or corporation which may be licensed or otherwise authorized by HGI...The authorization granted in this paragraph by Player shall not terminate upon the termination of this agreement or Player's employment hereunder no matter what the reason, but shall continue in full force and effect thereafter. (HGI SOF ¶ 17; HGI Ex. 16 ¶ 12). 38. Plaintiff Neal signed player contracts with the Globetrotters through 1983. His

last contract contains the following: Player hereby grants HGI the exclusive right throughout the world to use and license others to use Player's name, professional name, nickname, recorded voice, biographical material, signature facsimile, portraits and pictures and likenesses (i) for any entertainment, product, or service, produced or presented, as the case(s) may be, in whole or in part, by HGI, its parent, subsidiary and/or affiliated companies, and its and their successors, assigns and licensees; and (ii) for, or in connection with, the manufacture, production, distribution, sale, advertising and promotion of any and all articles of merchandise, including but not limited to publications, television and radio programs, films, souvenirs, novelties, toys, games, and the like, exploiting HGI and/or Player...the authorization granted in this paragraph by Player shall not terminate upon the termination of this contract or Player's employment hereunder no matter what the reason, but shall continue in full force and effect thereafter. (HGI SOF ¶ 19; HGI Ex. 37 ¶ 12(a)). 39. Plaintiff Thornton signed player contracts with the Globetrotters through 1981.

His last contract contains the following: Player hereby grants HGI the exclusive right throughout the world to use and license others to use Player's name, professional name, nickname, recorded voice, biographical material, signature facsimile, portraits (sic) and pictures and likenesses (i) for advertising purposes and purposes of trade, promotion and 19 Document 263 Filed 11/28/2005 Page 19 of 21

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publicity in connection with any entertainment, product or service, produced or presented, as the case(s) may be, in whole or in part, by HGI, its parents, subsidiary and/or affiliated companies, and its and their successors, assigns and licensees; and (ii) for, or in connection with, the manufacture, production, distribution, sale, advertising and promotion of any and all articles of merchandise, including but not limited to publications, television and radio programs, films, souvenirs, novelties, toys, games, and the like, exploiting HGI and/or Player...the authorization granted in this paragraph by Player shall not terminate upon the termination of this contract or Player's employment hereunder no matter what the reason, but shall continue in full force and effect thereafter. (HGI SOF ¶ 20; HGI Ex. 8 ¶ 12(a)). 40. Plaintiff Rivers signed player contracts with the Globetrotters through 1984. His

last contract contains the following: Player hereby grants HGI the exclusive right throughout the world to use and license others to use Player's name, professional name, nickname, recorded voice, biographical material, signature facsimile, portraits and pictures and likenesses (i) for advertising purposes and purposes of trade, promotion and publicity in connection with any entertainment, product or service, produced or presented, as the case(s) may be, in whole or in part, by HGI, its parents, subsidiary and/or affiliated companies, and its and their successors, assigns and licensees; and (ii) for, or in connection with, the manufacture, production, distribution, sale, advertising and promotion of any and all articles of merchandise, including but not limited to publications, television and radio programs, films, souvenirs, novelties, toys, games, and the like, exploiting HGI and/or Player...the authorization granted in this paragraph by Player shall not terminate upon the termination of this contract or Player's employment hereunder no matter what the reason, but shall continue in full force and effect thereafter. (HGI SOF ¶ 21; HGI Ex. 12 ¶ 12(a)).

20 21 22 23 24 25 26 27 28 Case 2:04-cv-00299-DGC Document 263 (a) Player hereby grants HG the exclusive right throughout the world to use, and license others to use, Player's name, professional name, nickname, recorded voice, biographical material, signature facsimile, portraits, pictures and likenesses 20 Filed 11/28/2005 Page 20 of 21 41. Plaintiff Sanders signed player contracts with the Globetrotters through the 199192 season. His last contract contains the following: Licensing Rights and Public Relations

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i. for advertising purposes and purposes of trade, promotion and publicity in connection with any entertainment, product, or service, produced or presented, in whole or in part, by HG, its parent, subsidiary and/or affiliated companies, and its and their successors, assigns, and licensees; and ii. for, or in connection with, the manufacture, production distribution, sale, advertising and promotion of any and all particles of merchandise, including but not limited to publications, television and radio programs, films, souvenirs, novelties, toys, games, and the like, exploiting HG and/or Player...the authorization granted in this paragraph by Player shall not terminate upon the termination of this contract or Player's employment hereunder, no matter what the reason, but shall continue in full force and effect thereafter. (HGI SOF ¶ 22; HGI Ex. 23 ¶ 12(a)). DATED: November 28, 2005 ____/s/ Ira S. Sacks___________ Ira S. Sacks, Esq. Safia A. Anand, Esq. Dreier LLP 499 Park Avenue New York, NY 10022 Telephone: 212-328-6100 Facsimile: 212-328-6101 (Pro Hac Vice) Joel L. Herz, Esq. State Bar Number 015105 La Paloma Corporate Center 3573 E. Sunrise Dr., Suite 215 Tucson, Arizona 85718-3206 Telephone: 520-529-8080 Facsimile: 520-529-8077 Attorneys for Defendant GTFM, LLC

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