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

3 4 5 6 7 8 9 10 11 12 Jackson, assured FUBU that it had the rights (DSOF ¶ 2), yet wrote Plaintiffs saying "if you don't want your 13 14 15 16 17 18 19 20 21 22 23 years earlier with other entities unrelated to HGI (the last one of which being extinguished by bankruptcy 24 25 26 proceedings). The evidence actually contradicts HGI'S assertion that they bought "everything." 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 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 determine whether FUBU (via HGI) acquired Plaintiffs' publicity rights in another way since there was not an express grant of authority by Plaintiffs. HGI'S evidence that HGI purchased Plaintiffs' rights is limited to a mere inference that HGI bought "all assets" in 1993, but HGI has proffered not one piece of direct evidence that HGI bought the player contracts that Plaintiffs entered into by FUBU. FUBU'S main defense is that they "relied on HGI'S representations and indemnification". (FUBU Memorandum, Document #186, p.5, line 12). FUBU'S relief is best left to indemnification from HGI, rather than summary judgment against Plaintiffs. First, the Court must determine, for purposes of FUBU'S Motion, whether there is any evidence that FUBU or HGI had the rights to Plaintiffs' names. There is absolutely not a shred of evidence proffered by FUBU that shows Plaintiffs were a party to any agreement to grant FUBU or HGI anything. Plaintiffs have moved this Court for Summary Judgment on liability on this issue. (Plaintiffs' Memorandum, Document #73 in Neal Case No. 1023). HGI, specifically Mannie

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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 A,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' Memorandum, Document #73, V(C), p.12) If the Court determines that the above evidence is insufficient to grant Plaintiffs' Summary Judgment Motion, then the Court should next look at the old player contracts, the related documents, and

7 8 9 10 11 12 13 14 15 16 17 unenforceable as there was no consideration and the terms are unconscionable. 18 19 20 21 22 23 24 25 26 27 28
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the testimony that is essential to ascertaining the intent of the real parties to these agreements. (Again, HGI was never a party to any "player contracts", even though HGI has misrepresented their status as a "party" in their Memorandum (Document #195). The 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. The course of dealing, as well as the Collective Bargaining Agreement (hereinafter "CBA", Exhibit 2A,B) confirms this understanding and defines "covered merchandise." This document alone would provide a jury with a reasonable evidentiary basis for finding for the Plaintiffs. The merchandise provision in the player contracts is superceded by the CBA and, even if it were not, is

FUBU'S lack of authority is one of the elements of trademark infringement:

1) the use in

commerce, 2) of a protectable mark, 3) without authority, and 4) causing damages. The evidence that Plaintiffs had a common law trademark interest in their unregistered marks has strong evidentiary support. The requisite intent to infringe by FUBU has evidentiary support in the facts surrounding the negotiation and execution of the 2002 licensing agreement with HGI. FUBU is a partnership between a hip-hop entrepreneur, Daymond Aurum, and sophisticated Manhattan lawyers, Bruce Weisfeld and Lawrence Blenden, who are no strangers to trademark litigation. (Exhibit 1F, Weisfeld Tr. 51). They, of all

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people, understood the risks of doing no due diligence before commercially exploiting a celebrity's mark.1 The evidence is clear that FUBU made no effort to confirm authority, except to rely on Mannie Jackson's representations and indemnification ­ little consolation to, or vindication of, Plaintiffs' rights ­ just theirs. (Id at 67-68). These New York garment trade lawyers staffs designed the "brand" around Plaintiffs who as "legends" (HGI'S and FUBU'S word) would help them tap the "retro craze". (Id at 107-108). In Weisfeld's deposition, when asked about the specific provision in the licensing agreement

7 8 9 10 11 12 13 14 15 16 between Plaintiffs' marks and marks used by FUBU. 17 18 19 20 21 22 23 24 25 26 27 28
FUBU'S crack that Plaintiffs' lawyers are "contingency lawyers driven by greed" should be stricken. The Plaintiffs, old and some nearly indigent clients, should not be ridiculed in the public court file because they cannot afford FUBU'S army of Manhattan litigators for whom litigation is just another business strategy (i.e. use the mark, litigate later and settle at a discount).
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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 have satisfied the elements of a trademark infringement claim. At a minimum there are material issues of fact that require denial of the Motion. FUBU'S Motion focuses on the assertion that two prerequisites for a Lanham Act claim under §43(a) have not been met. The first being that Plaintiffs' names have not acquired secondary meaning, and the second, that there is no evidence of likelihood of confusion

FUBU asserts that FUBU'S prominent display of Plaintiffs' names and numbers (and in Neal's case, his likeness) do not suggest "sponsorship or approval" and that §43(a) of the Lanham Act only prohibits "false endorsement of a celebrity image, not mere use of an image or name," (Motion, page 13, 1.18-1.22), citing Cairns v. Franklin Mint Co., 107 F.Supp.2d 1212, 1215 (C.D.Cal.2000) (emphasis added). But,

Plaintiffs' names, numbers and likenesses convey to consumers, not only an endorsement of the Harlem Globetrotters, but a separate endorsement of FUBU. Plaintiffs acknowledge past association with the Harlem Globetrotters, but none with FUBU. The FUBU licensing agreement specifically states FUBU'S

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desire to combine their FUBU marks with those of Harlem Globetrotters former players. (Exhibit 6). 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). 1. PLAINTIFFS' UNREGISTERED MARKS ARE PROTECTED 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. HGI asserts that "Plaintiffs licensed the right to Defendants." (HGI Memorandum, Document #195, III). 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 that employed Plaintiffs years ago.) HGI makes a weak argument that Plaintiffs entered into licensing

7 8 9 10 11 12 13 14 15 16 17 A,B,C,D,E,F: Player Contracts ­ none of which are with FUBU or HGI). 18 19 20 21 22 23 24 25 26 27 take reasonable precautions to prevent a mistake. Yarmouth-Dion, Inc. v. D'ION Furs, Inc., 835 F.2d 990 (2d 28
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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

Second, Plaintiffs names 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. FUBU'S reliance on Yellow Cab Company of Sacramento v. Yellow Cab of Elk Grove, Inc., 419 F.3d 925 (9th Cir. 2005) actually bolsters Plaintiffs, as the Yellow Cab court held that secondary meaning is a fact issue for the jury (reversing the trial courts' summary judgment on the issue of whether the weak "generic" term "yellow cab" had acquired "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

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Cir. 1987), also cited by FUBU. 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). a) 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. Plaintiffs need not prove this with self-serving, expensive surveys - HGI and FUBU themselves made the association and provide the evidence. b) 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. (DSOF¶36-40, 49, 59, 62, 63, 68, 69, 77, 78) c) The length and manner of Plaintiffs' marks are some of the most sustained and intense in sports marketing. (Id). d) 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. Globetrotters. FUBU cites to the four prong test in Japan Telecom v. Japan Telecom America, Inc., 287 F.3d 866 (9th Cir. 2002). Yellow Cab at FN3 notes that in Japan Telecom the only evidence of likelihood of confusion was a "few misdirected mailings which were ambiguous as to secondary meaning." FUBU asserts in their Motion that Plaintiffs have "failed to adduce any evidence," and (almost comically), that "Plaintiffs do not have any public recognition". (FUBU Memorandum, Document #186, p.12, 1.2). (Emphasis added). But, Uses included utilizing their names and likenesses for appearances, endorsements, charitable events and performing for other basketball teams besides the Harlem

Plaintiffs' public recognition is evidenced by the numerous FUBU style numbers bearing Plaintiffs' marks on the FUBU garments, hangtags, or both. (Exhibit 13A).

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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. FUBU seeks to overly complicate "secondary meaning". "Secondary meaning has been defined as `association,' nothing more." Carter-Wallace, Inc. v. Proctor and Gamble, Co., 434 F.2d 794 (9th Cir. 1970). FUBU harps that Plaintiffs were "not engaged in the licensing of their names". (FUBU

Memorandum, p.7, line 18). But whether or not Plaintiffs chose to continue marketing their marks is their choice and legally irrelevant. This "fact" is immaterial for the purposes of summary judgment and should be given little weight. Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986). It is FUBU and HGI themselves that are the font of evidence of "public recognition" and that Plaintiffs' names have acquired the necessary secondary meaning. From all the approximately "600" former players, (Exhibit 1A, Jackson Tr. 262), FUBU chose Plaintiffs over all the others. FUBU chose to prominently feature Plaintiffs' names, nicknames and player numbers on their clothing. FUBU's decision was because Plaintiffs are well known sports celebrities (Exhibit 1G, Blenden Tr. 24). Even if FUBU'S assertion that Plaintiffs' personal names are "descriptive marks" is correct (FUBU

18 19 20 21 22 23 24 25 26 27 closely associated with, and used in combination with, their names. But, Plaintiffs assert their numbers, 28
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Memorandum, p. 10, line 25), the Ninth Circuit has held that a name can acquire secondary meaning from "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]. Counsel for FUBU admits that their own valuable mark "FUBU the Collection" is an unregistered common law mark owned by his client, GTFM, Inc., and was used, according to FUBU CEO Aurum's ESPN interview on untold millions of clothing sales. (Exhibit 28). Surely FUBU believes that it owns a protectable mark, even if unregistered. FUBU maintains that Plaintiffs have no protectable mark in their player numbers even though

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when used in context with the Harlem Globetrotters have secondary meaning. (For example, the number "3" means little to most people, but in the NASCAR context it is associated with Dale Earnhart. It is "his" number.) Plaintiffs' numbers have become equivalent to their identities. FUBU tags and garments place the number with the name. (Exhibit 12 and 13A). Player's numbers naturally become closely associated with the player name, which is why certain numbers are retired ­ they are too closely associated with the player to conceive of any one else's use. Marques Haynes' number has been retired by the Globetrotters. (Exhibit 1D,

7 8 9 10 11 12 13 14 15 16 17 appropriated his identity by using a phrase associated with him (i.e. "Here's Johnny"). White at [3], citing 18 19 20 21 22 23 24 25 26 27 Blenden said FUBU owners Aurum and Weisfeld, a lawyer, approved the hangtags. Id at 127-129. It is 28
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Vaughn Tr. 38). 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. Id at 36-39. In addition to the Lanham Act protections, the combination of Plaintiffs' names and numbers is a protectable right of publicity. The Ninth Circuit has recognized that a right of publicity is had in one's identity or persona and that this issue may reach a jury. White v. Samsung Electronics America, Inc., 971 F.2d 1395 (9th Cir. 1992) at [2]. The White court noted that appropriation of the incidents of identity are enough to take a right of publicity claim to the jury, citing Carson v. Here's Johnny Portable Toilets, Inc., 698 F.2d 831 (6th Cir. 1983), where defendants did not use Carson's name, likeness, voice, signature, or photograph, but had

Carson. This view of protectable marks was broadened to contemplate commercial interests which the right of publicity was designed to protect. 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), and that the former players fit their specific goal of tapping into the "retro craze". The two hangtag designs 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).

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important to note that Plaintiffs' numbers were also used on non-traditional, non-athletic garments, such as tee shirts, skirts and dresses. (Exhibit 13). The only conceivable enhancement these numbers could provide for such garments is the association with Plaintiffs ­ a Globetrotter garment bearing the number "22" would be indicative of Fredric "Curly" Neal. It was FUBU'S and HGI'S decision to place a "22" on their "Curly" Neal products, not the consuming public's. FUBU did not even conduct a marketing survey to test the viability of Plaintiffs' names, (Exhibit 1G, Blenden Tr. 121), because presumably "they were familiar

7 8 9 10 11 12 13 14 15 16 17 The use of Plaintiffs' names, numbers and images by HGI, and their licensee FUBU, was 18 19 20 21 22 23 24 25 26 27 28
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names". Id at 24. (FUBU asserts Plaintiffs are remiss for conducting no surveys to prove Plaintiffs' claims). FUBU should be estopped from asserting that Plaintiffs' marks were neither protected nor protectable. FUBU would not have launched a clothing line using Plaintiffs' marks if FUBU'S lawyers could not have legally protected their investment. Presumably, FUBU would have spent a large amount of money litigating the protectability of their purportedly licensed mark, "Curly Neal 22" on FUBU clothes, just as FUBU did for their "05" mark. (See GTFM case discussion, supra.). Now that Plaintiffs assert a right, FUBU asserts that the Lanham Act provides no protection ­ an assertion they should be estopped from making. 2. UNAUTHORIZED USE BY THE DEFENDANTS

unauthorized by Plaintiffs. (PSOF¶17, 18, 33). HGI concedes that likenesses were "used on the jerseys," but that it "was de minimus," as if that makes it okay. It is also false. Market investigation confirms shirts made with "Curly" Neal's face (Exhibit 13), and Jackson crowed about a $100 million dollar deal. 3. IN COMMERCE The use of Plaintiffs' names was "in-commerce" with total FUBU/Globetrotter clothing sales ranging from $30 million to $100 million, depending on who you believe. (Exhibit 1A, Jackson Tr. 121122). 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). FUBU does not contest this fact.

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4.

LIKELIHOOD OF CONFUSION HGI'S and FUBU'S use is likely to cause confusion. FUBU posits the eight factor test for this

element, which 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 summary judgment is not appropriate. FUBU misconstrues the test. Subsets of the eight factors are

7 8 9 10 11 12 13 14 15 16 17 Corporation, 85 F.3d 407 (9th Cir. 1996)[12]. (Using seven factors). 18 19 20 21 22 23 24 25 26 27 28 Recently, in M2 Software, Inc. v. Madacy Entertainment, 421 F.3d 1073 (9th Cir. 2005), the Ninth Circuit 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
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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. Fewer then eight factors may satisfy the test to determine association. Abdul-Jabbar v. General Motors

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evidence on the record would permit a rational fact-finder to find a likelihood of confusion. Century 21's six factor test did not include "degree of purchaser care" or "expansion in product lines" factors. See Interstellar FN3. The District 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,

7 8 9 10 11 12 13 14 15 16 17 "arbitrary" (common words arranged in an arbitrary way that is non-descriptive), and have acquired 18 19 20 21 22 23 24 25 26 27 28
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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 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). FUBU asserts that Plaintiffs' names are descriptive and have no protection. But Plaintiffs' marks are also fanciful: "Curly", "Gator", "Big D", "Showboat", and "Twiggy". They are used both alone and in combination with their real names, "Neal", "Rivers", "Thornton", "Hall", and "Sanders", which make them arbitrary. 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

secondary meaning. McCarthy acknowledges that ordinary descriptive words, when combined (such as with numbers), present an arbitrary composite mark. J. Thomas McCarthy in McCarthy on Trademarks and Unfair Competition §7:15 (4thEd. 2005). The problems that a hypothetical "Mr. Neal" may have in protecting his hypothetical mark "Neal's Café" are not a problem for "Curly Neal 22" on a basketball jersey. "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. FUBU entered this related field by incorporating basketball, athletic motifs and the Harlem Globetrotters. A proper analysis of this factor does not "overemphasize the differences", but

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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. If there is virtual identity of the marks and, if they are used with identical services (comedic basketball), "likelihood of 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). Even though Plaintiffs are not, strictly speaking, "competitors" with FUBU, similarities in services could still result in consumer confusion. Brookfield at [32]

7 8 9 10 11 12 13 14 15 16 17 marks. Brooksfield at [27]-[31]. 18 19 20 21 22 23 24 25 26 27 28
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citing American International Group, Inc. v. American National Bank, 926 F.2d 829, 832 (9th Cir. 1991). 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]. 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

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. Regardless, Plaintiffs address this factor. 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], (where there was no direct evidence of actual confusion, surveys of consumers showed a likelihood), also citing Clicks Billiards and Levi Srauss.

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Again, FUBU'S authority, Yellow Cab at [22][23], holds that while evidence of actual confusion is relevant to the issue of likelihood of confusion, the "absence of such evidence need not create an inference that there is no likelihood of confusion." Plaintiffs (like Vanna White and the "Vanna White" robot in White v. Samsung, 971 F.2d 1395 (9th Cir. 1992)) do not need a survey to show likelihood of confusion as to the origin of the clothes in the sense that consumers believe Plaintiffs actually made them, rather than HGI and FUBU. Likelihood of confusion here

7 8 9 10 11 12 13 14 15 16 17 (9th Cir. 1990). 18 19 20 21 22 23 24 25 26 27 are not only similar (Factor two of the test), the marks are identical. 28
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means that a consumer is likely to believe that Plaintiffs endorsed or are associated with the "goods". Celebrities generally license or endorse merchandise, not manufacture it. A survey of thousands of people on the street is an unnecessary evidentiary exercise as FUBU's intent is clear. Self-serving surveys conducted by paid "experts" often make the challenge of evaluating the evidence more difficult due to the endless disputes over methodology, expert qualifications and the like. In White, summary judgment was denied even though there 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

In addition, surveys may be given no weight at all by the court. In Thane, even though the court found evidence of actual confusion derived from the consumer survey, other factors "taken all together" such as similarity of mark and relatedness of the products ("Trek" v. "Orbitrek" and bicycles v. exercise machines) - were so weak that a jury could not reasonably find likelihood of confusion. The strength of the other factors is compelling as evidence of "actual confusion" is not always reliable. The Thane court noted that even the extensive (and expensive) survey conducted by plaintiff had been criticized for its methodology by defendants. In Plaintiffs case, some factors, like "similarity", are simply beyond dispute. The mark "Haynes" as Plaintiff's name and the mark "Haynes" on the FUBU jersey

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FUBU recently and successfully sued to protect their unregistered mark "05" used on sports jerseys, arguing that "05" had acquired secondary meaning. In that case, FUBU counsel presented NO evidence of actual confusion to the court (FUBU in yet another inconsistency complains that it should be fatal to Plaintiffs in the case at bar that they do not have more evidence of actual confusion). GTFM, Inc. and GTFM, LLC v. Solid Clothing Inc., 215 F.Supp. 273 (S.D.N.Y. 2002). At [11] the court stated "GTFM has presented no survey evidence and only one anecdote in support of actual confusion" and that "it is well

7 8 9 10 11 12 13 14 15 16 17 product field. Plaintiffs have some evidence of "actual confusion". (Exhibit 32, Rivers Affidavit at 10-15, 18 19 20 21 22 23 24 25 26 27 consumer to distinguish between a product with a genuine mark and a product with an infringing mark is a 28
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established that `actual confusion' need not be shown to prevail under the Lanham Act." (Emphasis added.) Plaintiffs agree with FUBU'S argument made in the GTFM case, as well as to FUBU'S cite to §7:15 of J. McCarthy that numbers used in combination with words present an "arbitrary" mark. 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]. Surely, FUBU would agree, given their position in the GTFM case, that Plaintiffs' numbers have at least acquired secondary meaning when exploited within the limited context of, or association with, Plaintiffs and the Harlem Globetrotters. See Gallo at [16][17][18] for a discussion of secondary meaning in a particular

Exhibit 33, Thornton Affidavit at 11-13, and Exhibit 13 at 10). FACTOR 5) Marketing Channels Used: The FUBU licensing agreement governs the marketing channels for the Globetrotter line. (Exhibit 6). 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: The ability of a

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factor because, theoretically, a sophisticated consumer who sees "Showboat" Hall on, say, flea market flipflops, is less likely to be confused as to the false source or association with the atypical product. Here, high quality FUBU jerseys, which also bear the FUBU and the Harlem Globetrotters trademarks are highly likely to suggest that Plaintiffs are associated with, or have endorsed, the goods. When the clothes are sold at Macy's, Sear's, and even Marshall's as specified in the licensing agreement, a jury could conclude that the public, no matter how "sophisticated", could reasonably believe that Plaintiffs are associated. Hence the

7 8 9 10 11 12 13 14 15 16 17 Centaur Communications, Ltd v. A/S/M/ Communications, Inc., 830 F.2d 1217 (2nd Cir. 1987). To quote the 18 19 20 21 22 23 24 25 26 27 consideration)." Id at [42] citing Dreamworks and quoting Fleischmann Distilling. 28
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confusion. (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 and FUBU intended to use Plaintiffs' names, player numbers and, in Neal's case, likenesses. FUBU designed and made the garments and, under the licensing agreements, Jackson and HGI had approval authority (Exhibit 6 and DSOF¶ 4, 5).). The intended use was to, of course, make money. There is record evidence that the prominent use of Plaintiffs' names on FUBU hangtags was FUBU'S idea and was intended to suggest association, approval or endorsement by Plaintiffs. (Exhibit 1G, Blenden Tr. 126-127). Evidence of actual confusion is not required to prove the likelihood of confusion.

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 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

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Plaintiffs assert that this Court may consider FUBU'S and HGI'S lack of due diligence in the context of their experience and resources, and find both actual and constructive intent. FUBU'S reckless disregard of Plaintiffs' rights, given the knowledge and experience of these Manhattan lawyers, constitutes willful infringement. HGI and FUBU are large sophisticated corporations with extensive legal resources. FUBU should have viewed Plaintiffs' contracts before launching a huge undertaking. HGI did nothing to assure themselves or FUBU. The "intent" factor is so strong that where

7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 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. This is because likelihood of confusion is a given where it is clear that the defendant intended to use Plaintiffs' marks in marketing his goods to consumers, (i.e. a defendant desires and pursues the association). 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 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. Nor have they produced any evidence that the presence of marks like "22" and "Curly" on a jersey was an irrelevant factor in consumers' decisions to buy the garment. 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
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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 Media, Inc. at [24]. FUBU admits that they did not have Plaintiffs' consent to begin making infringing clothes. (Exhibit 1G, Blenden Tr. 47, 48, Exhibit 1F, Weisfeld Tr. 112). HGI asserts that they "believed" they had the right, (Motion, Document #, p. 18, line 8), even though Jackson bought the team in 1993 and never once made a

15 16 17 18 19 20 21 22 23 24 25 26 27 28 mark, and b) the profits must be shown with reasonable certainty. The first issue is argued herein. The second is not a basis for summary judgment. There are pending motions to strike Plaintiffs' expert, which
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phone call or had an attorney render an opinion to confirm authority before licensing to FUBU in 2002. According to FUBU, Plaintiffs' rights could not be confirmed, as player contracts were unavailable due to the bankruptcy. (Exhibit 1G, Blenden Tr. 36). That is, HGI never even possessed Plaintiffs' contracts in the first place. 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 FUBU and HGI assert that Plaintiffs are not entitled to profits because a) they have no protectable

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Plaintiffs have briefed in opposition. (Response, Document #220). In sum, FUBU'S arguments are directed to the weight of the expert's evidence, not its admissibility, and should not be considered for summary judgment. The Lanham Act at §35(a) provides that defendants' profits shall be awarded for violations of §43(a), which deems infringement of the infringer "willfully intended to trade on the owner's reputation". §43(c)(2). In a case where foreign wine producers failed to get a legal opinion as to likelihood of confusion

7 8 9 10 11 12 13 14 15 16 17 speculation in calculating damages." Id. at [31]. Plaintiffs agree with FUBU'S argument in the GTFM case. 18 19 20 21 22 23 24 25 26 27 NOT due to the misappropriation of Plaintiffs' marks. J. Thomas McCarthy, The Right of Publicity and Privacy, 28
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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. E&J Gallo Winery v. Consorzio del Gallo Nero, 782 F.Supp 472 (N.D. Calif. 1992). FUBU, despite its resources, conducted no due diligence. FUBU in the GTFM case argued to the New York court that FUBU was entitled to the infringers' profits under the §35(a) of the Lanham Act, including profits from sales of "unknown garments" and for sales where "the ability to identify style numbers and dates of sale rested exclusively with the defendant, who systematically obstructed the discovery process to prevent plaintiffs from gathering evidence regarding the defendants' sales and profits." GTFM at [29][30]. FUBU argued, and court agreed, that where it was difficult to determine how many units of apparel might have sold, the court "may engage in limited

It is noteworthy that FUBU has moved this Court to strike Plaintiffs' damages expert, asserting that the damages are "speculative," and has asserted in their Memorandum that profits may not be disgorged for Plaintiffs' claims under §43(a) of the Lanham Act. FUBU should be estopped from asserting such a position. FUBU should be sanctioned given their CEO'S testimony that even though garments bearing Plaintiffs' names were designed on elaborate "CADS" and assigned style numbers, he could not confirm whether the garment was EVER made. (Exhibit 1E, Aurum Tr. 67-68). So much for Plaintiffs' expert's report being "unreliable" and "speculative". Plaintiffs assert it is now FUBU'S burden to prove what amount, if any, of its gross revenues were

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§11.34 at 11-80 (2d Ed.2002). FUBU should bear the risk of uncertainty. The Ninth Circuit has declined to second guess a jury's verdict resulting in an allegedly speculative measure of damages, (using the evidence of a paid royalty on one postcard as a multiplier of the total number of issues sold), stating that it is the defendants (Hustler) that must bear the risk of uncertainty." Brewer v. Hustler Magazine, Inc., 749 F.2d 527 (9th Cir. 1984). The Lindy Pen court at [19][20][21] stated "once the Plaintiff demonstrates gross profits, they are

7 8 9 10 11 12 13 14 15 16 But the right is not unclear at all. 17 18 19 20 21 22 23 24 25 26 privacy. The Restatement also articulates the common law right of publicity. Restatement (Second) Torts § 27 28 652C (2005).
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presumed to be the result of the infringing activity, Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co., 316 U.S. 203, 206-207, 62 S.Ct. 1022, 1024-25, 86 L.Ed. 1381, 1385-86 (1942)," and that "the defendant thereafter bears the burden of showing which, if any, of its total sales are not attributable to the infringing activity, and, additionally any permissible deductions for overhead." 15 U.S.C. 1117(a).

II. COMMON LAW RIGHT OF PUBLICITY
Arizona provides a remedy for Plaintiffs. FUBU states it is "unclear whether Arizona even

recognizes a common law right of publicity," (Document #, p. 19, line 19), yet cites to Pooley v. National Hole in One Association, 89 F.Supp. 2d 1108 (D.Arizona 2001) and Pooley's citiation of the "Eastwood Test." Id.

In Godbehere v. Phoenix Newspapers, Inc., 162 Ariz. 335 (Arizona 1989), the Supreme Court recited a 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

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Additionally, in the absence of Arizona law to the contrary, courts follow the Restatement. See 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). FUBU'S assertion that this area is "unclear" is deceptive, given that the federal district court in

7 8 9 10 11 12 13 14 15 16 contracts are of no avail: 1) HGI did not buy the contracts; 2) they were extinguished in bankruptcy; 3) they 17 18 19 20 21 22 23 24 25 26 HGI continues to refer to Plaintiffs' contracts, and all player contracts as "standard". This is 27 28 patently false. It is clear that the player contracts are anything but standard ­ i.e. Haynes is not assignable
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Arizona has recognized a professional golfer's claim for invasion of the right of publicity in Pooley and cites the Restatement and Prosser. Furthermore, the Pooley court "applies the elements of Eastwood," the very case proferred as authority to this court by FUBU for the elements of the right of publicity. The Pooley court did not merely "interpret the Eastwood factors" as FUBU disinguously states (Motion, p. 19, line 26), the court "applied" the Eastwood elements. Pooley at [2].

III.
1. THE CONTRACTS

ESTOPPEL/LACHES

FUBU takes an untenable position in piggybacking HGI'S old player contracts as a defense. But the

do not say what HGI suggests they do; 4) they are subject to collective bargaining rights that supercede them; and 5) they are unenforceable and unconscionable under Arizona law, as well as under the law various jurisdictions in the choice of law provisions. Plaintiffs have moved for summary judgment on these issues. 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).

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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. 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

7 8 9 10 11 12 13 14 15 16 17 specific player contracts assigned. (Exhibit 5A,B,C,D). 18 19 20 21 22 23 24 25 26 27 28
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would expect a check as well. (Exhibit 1M, Dunbar Tr. 96). So much for HGI'S assertions that players are not entitled to monies from merchandise sales. 2. FUBU SHOULD BE ESTOPPED FROM ASSERTING CONTRACTS AS A DEFENSE It is HGI that should be estopped from asserting any authority under old player contracts to use Plaintiffs marks as: A: HGI DID NOT BUY THE CONTRACTS Plaintiffs have briefed this issue, including the extensive documentary evidence, in their Motion for Summary Judgment. HGI has no evidence that Plaintiffs' contracts were purchased in 1993 ­ they are not referenced in any document related to the sale, and in fact are conspicuously absent from the schedules of

For all of Mannie Jackson's emphasis on controlling the "brand", (Exhibit 18, "Bringing a Dying Brand Back to Life"), 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: 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 have presented evidence that the final bankruptcy order extinguished any purported rights

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in any executory contracts not specifically scheduled, and as such, Plaintiffs' contracts were never mentioned. C: FUBU HAS UNCLEAN HANDS FUBU has, under oath, misrepresented material facts and frustrated Plaintiffs' discovery. Plaintiffs recently learned that Weisfeld, Aurum and Blenden were deceitful in deposition. They failed to disclose an important stockholder in GTFM, LLC and GTFM, Inc. (the purported entity that "only" holds trademarks),

7 8 9 10 11 12 13 14 15 16 17 FUBU has not referenced these agreements once to this Court. Mannie Jackson, despite his 18 19 20 21 22 23 24 25 26 27 28 · · 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 Collective Bargaining Agreements granted rights to Plaintiffs for minimum royalty payments: · · The Collective Bargaining Agreement binds all successors and assigns (CBA Preamble). The company recognizes the Association as the exclusive collective bargaining representative. (Article 2.1). 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)
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as required under Rules 7.1 and 26, Fed. R. Civ. P. In sworn testimony, FUBU executives each listed the stockholder owners of GTFM, LLC (Samsung, one of the largest corporations in the world, Aurum via FUBU the Collection, LLC, Weisfeld, Blenden and Aurum), and never mentioned L.L. Cool J. (James Todd Smith), famous hip-hop artist and partner in FUBU. (Exhibit 1G, Blenden Tr. 9, Exhibit 1F, Weisfeld Tr. 63, Exhibit 1E, Aurum Tr. 50-51). L.L. Cool J. is suing FUBU in New York, including FUBU the Collection, LLC, the entity that attorney Sacks called an improper party in his threat of sanctions against Plaintiffs, for failure to pay him royalties and dividends. (Exhibit 17). FUBU'S only motive for this misrepresentation would be to conceal a very damaging witness. D: THE COLLECTIVE BARGAINING AGREEMENT SUPERCEDED THE CONTRACTS

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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. (Exhibits 3E). A collective bargaining agreement with respect to terms and conditions of employment prevails over individual contracts between employers and employees concerning these subjects. Hendrick v. Airline Pilots Association, Inc., 696 F.2d 673 (9th Cir. Cal 1993). Summary judgment is appropriate where no discovery would alter the undisputed fact that a collective bargaining agreement is binding and created rights beyond individual contracts. See Hendricks. E: HGI ABANDONED THE MARKS

21 22 23 24 25 26 27 28 HGI asserts that Plaintiffs abandoned their marks by granting a "naked license" and not monitoring quality control. But, it is HGI'S purported license in Plaintiffs' rights that were abandoned. 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.
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2002). The first predecessor to HGI (Harlem Globetrotters, Inc., a Delaware corporation) never used Plaintiffs' marks at all on any clothing merchandise. The second predecessor to HGI, International

Broadcasting Corporation ("IBC"), never used Plaintiffs' marks at all on any clothing merchandise. Additionally, a final bankruptcy order was issued involving IBC that extinguished any purported executory licensing agreements with the Plaintiffs. Plaintiffs' trademarks (names and numbers) were not listed on the intellectual property schedules of all trademarks owned by IBC when it sold them to Harlem Globetrotters,

7 8 9 10 11 12 13 14 15 16 17 "trash that's sold inside the arena". (Exhibit 1A, Jackson Tr. 258-259). 18 19 20 21 22 23 24 25 26 27 at bar, photographs and caricatures were used on Globetrotter clothing in combination with Plaintiffs' legal 28
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Inc., Delaware or in the later sale to HGI. (See Plaintiffs' extensive brief on the bankruptcy issue in their Memorandum, Document #73). None of the other numerous predecessors to HGI ever used Plaintiffs' marks on such a clothing merchandise deal. Even Mannie Jackson concedes he never used Plaintiffs' marks on any merchandise as he wanted to focus on the overall brand, not individuals - an admission of the abandonment of their marks. Jackson concedes 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

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. 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 in the uniform as it "confused the public as to association", a demand promptly withdrawn as to Rivers. (Exhibits 20 and 23, Exhibit 1C, Rivers Tr. 74). HGI hangs most of their defense on Plaintiffs conceding the use of their names and photos in programs. The soft sand of these positions totally collapses with a reading of the Collective Bargaining Agreement's "covered merchandise" provision ­ a fact completely ignored by HGI and FUBU. In the case

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names, nicknames and player numbers, and should be afforded protection, as there is a false inference that Plaintiffs endorsed or approved the product. Cairns v. Franklin Mint Co., 107 F.Supp.2d 1212 (C.D.Cal. 2000). F: THE PROVISIONS ARE NOT AN ENFORCABLE LICENSING AGREEMENT AND ARE UNCONSCIONABLE Plaintiffs' Motion for Summary Judgment extensively briefed this issue. (Memorandum Document #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

12 13 14 15 16 17 18 19 20 21 22 There are disputed issues of material fact as to what license, if any, was granted to predecessors of 23 24 25 26 27 28 HGI by Plaintiffs. If a grant of license is found, there are still material issues of fact as to implementation, course of business (the parties performed differently than the clause), termination and abandonment of the purported grant. There are material issues of fact as to whether Jackson bought the contracts, and as to whether the contracts were extinguished by bankruptcy before Jackson bought them.
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disfavored and will be strictly construed.

Such covenants that are unreasonable as to time are

unenforceable. Bryceland v. Northey, 160 Ariz. 213, 772 P.2d 36 (Ariz.App., 1989). G: THERE IS A FAILURE OF CONSIDERATION No consideration was paid 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 consideration and the purported grant fails. HGI or FUBU never paid a dime to Plaintiffs for the valuable license in these men's names. Paragraph 12(a) specifically states that the player was not required to appear in "endorsements." Exhibit 33(F).

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3.

LACHES Plaintiffs learned of FUBU'S use of Plaintiffs' names in 2003. 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 attacking the infringing conduct. FUBU'S attempt to piggyback on HGI'S laches defense is nonsensical. HGI'S laches argument is that Plaintiffs never asserted their rights against HGI, while HGI infringed upon Plaintiffs' marks for years.

7 8 9 10 11 12 13 14 15 16 17 decades before Jackson purchased the Harlem Globetrotters. (Exhibit 21). Plaintiffs did not sit by and 18 19 20 21 22 23 24 25 26 27 28 By: ____/S/ Clay M. Townsend___________ CLAY M. TOWNSEND, ESQUIRE Florida Bar No.: 363375 KEITH MITNIK, ESQUIRE Florida Bar No.: 436127 BRANDON S. PETERS
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First, Plaintiffs did not believe there was an infringement claim against HGI before the FUBU deal. HGI acquired the Globetrotters in 1993, and never used Plaintiffs' names on a clothing line until the FUBU deal. (Exhibit 1A, Jackson Tr. 258-259). HGI made only permitted uses of Plaintiffs' names on "noncovered merchandise". Plaintiffs' claims arise from infringements in 2002 through 2004. 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. HGI'S use of Plaintiffs' photos from their playing days was permitted by Plaintiffs. 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

watch HGI'S predecessor companies exploit them. endorsements.

Plaintiffs were paid by the Globetrotters for

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. DATED this _23rd_day of November, 2005.

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Florida Bar No.: 965685 Morgan & Morgan, PA 20 N. Orange Avenue, 16th Floor Orlando, FL 32802 Telephone (407) 420-1414 Facsimile (407) 425-8171 Attorneys for Plaintiffs Fred Neal, Larry Rivers, Robert Hall, Dallas Thornton, Marques Haynes and James Sanders PLEASE TAKE FURTHER NOTICE that copies of the above-referenced documents have been

7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Safia A. Anand, Esquire Ira S. Sacks, Esquire DREIER, LLP 499 Park Avenue New York, NY 10022 Attorneys for Defendants GTFM, LLC, FUBU the Collection, LLC and GTFM of Orlando, LLC Certificate of Service
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served via first class mail upon the following attorneys: Joel L. Herz, Esquire LAW OFICES OF JOEL L. HERZ LaPolma Corporate Center 3573 E. Sunrise Dr., Suite 215 Tuscon, AZ 85718-3206 Attorney for Defendants GTFM, LLC, FUBU the Collection, LLC and GTFM Of Orlando, LLC Edward R. Garvey, Esq. and Christa Westerberg, Esquire GARVEY AND STODDARD 634 W. Main St. #101 Madison, WI 53703 Attorneys for Defendants Harlem Globetrotters Int'l, Inc., Harlem Globetrotters Int'l Foundation and Mannie L. & Catherine Jackson Anders Rosenquist, Jr., Esquire Florence M. Bruemmer, Esquire ROSENQUIST & ASSOCIATES 80 E. Columbus Phoenix, AZ 85012 Attorney for Plaintiff Lemon

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Vanessa Braeley, declares as follows: 1. I hereby certify that on November _23rd__, 2005, a true and correct copy of the Plaintiffs' Response to FUBU Defendants' Motion for Summary Judgment was electronically transmitted to the Clerk's Office using the CM/ECF System for filing and transmittal of a Notice of Electronic Filing to the following CM/ECF registrants: Safia Anand ­ [email protected] Florence M. Bruemmer ­ Fl