Free Response in Opposition to Motion - District Court of Arizona - Arizona

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Anders Rosenquist, Jr. #002724 Florence M. Bruemmer #019691 Rosenquist & Associates 80 E. Columbus Phoenix, Arizona 85012 Attorneys for Plaintiff

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF ARIZONA Case No. CV 04-299 PHX-DGC and CV 04 1023 PHX-DGC

MEADOWLARK LEMON, a married man, Plaintiff, vs. HARLEM GLOBETROTTERS INTERNATIONAL, INC., an Arizona corporation; HARLEM GLOBETROTTERS INTERNATIONAL FOUNDATION, INC., an Arizona corporation; MANNIE L. JACKSON and CATHERINE JACKSON, husband and wife; FUBU THE COLLECTION, LLC, a New York limited liability company doing business in Arizona; GTFM, LLC, a New York limited liability company doing business in Arizona; Defendants.

PLAINTIFF MEADOWLARK LEMON'S RESPONSE TO DEFENDANT GTFM, LLC'S MOTION FOR SUMMARY JUDGMENT

HARLEM GLOBETROTTERS INTERNATIONAL, INC., an Arizona corporation, Counter-claimant, vs. MEADOWLARK LEMON, a married man, Counterdefendant.

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Plaintiff, Meadowlark Lemon (hereinafter "Plaintiff"), through undersigned counsel, respectfully submits his Response to GTFM, LLC's (hereinafter "GTFM") Motion for Summary Judgment pursuant to Rule 56 of the Federal Rules of Civil Procedure. Plaintiff asserts that based upon the undisputed facts in this case as set forth in this Response and in Plaintiff's Motion for Summary Judgment, Plaintiff is entitled to summary judgment on all counts enumerated in the Complaint. Therefore, Plaintiff

respectfully requests that GTFM's Motion for Summary Judgment be denied and that summary judgment instead be awarded to Plaintiff and against GTFM as requested in Plaintiff's Motion for Summary Judgment and for the additional reasons set forth below. The following Memorandum of Points and Authorities, Statement of Contraverting Facts ("SOCF") incorporated by reference, and Plaintiff's Motion for Summary Judgment submitted on October 28, 2005 support this motion. MEMORANDUM OF POINTS AND AUTHORITIES UNDISPUTED FACTS. Plaintiff agrees with the following undisputed facts asserted by GTFM. GTFM entered into the License Agreement with HGI on June 1, 2002. (GTFM's Statement of Facts ("GTFM SOF") ¶ 1). Among other rights licensed to GTFM, HGI licensed to GTFM "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 ("Globetrotter Players") (hereinafter referred to as the "Licensed Property"). (GTFM SOF ¶ 1). In the Licensed Agreement,

HGI makes certain representations, warranties and covenants to GTFM regarding the Licensed Property. (GTFM SOF ¶ 2). Specifically, HGI represents, warrants and covenants the following: 1. There will be no claim from any player relating to the sublicense of rights under the License Agreement; 2. HGI is and will be the sole owner of the Licensed Property throughout the term of the Agreement; 3. HGI is a party to a contract with each and every past and present Globetrotter Player by which each such player has granted HGI in perpetuity the rights to the Licensed Property and the unlimited right to sublicense such rights to third parties. Further, HGI represents that the Case 2:04-cv-00299-DGC -2Document 247 Filed 11/23/2005 Page 2 of 18

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player agreements remain in full force and effect that there have been no claims from any Globetrotter Player relating to the grant of merchandising by any Globetrotter Player in connection with the Licensed Property; 4. "The execution, delivery and performance by [HGI] of this Agreement and the use by [GTFM] and/or its sublicensees of the Licensed Property, and enjoyment of other rights granted hereunder and the granting of [GTFM] hereunder, does not now, and will not in the future, violate any property or contractual rights of any third party, whether a Globetrotter Player or otherwise...". (GTFM SOF ¶ 2). HGI indemnified GTFM for any breach of the representations and warranties in the License Agreement. (GTFM SOF ¶ 3). Specifically, Section 5.1 of the License Agreement states that HGI shall "indemnify and hold [GTFM] and its sublicensees harmless from and against all out-of-pocket losses, including the payment of claims, damages...liability, costs, liabilities, fines and judgments, and expenses, including reasonable attorney's fees and disbursements, arising out of or relating to (a) any claim by a third party that [GTFM's] and/or Sublicensees' use of the Licensed Property...violates the rights of a third party, including any claim by a past...Globetrotter Player..." (GTFM SOF ¶ 3). Pursuant to the License Agreement, GTFM (and its licensees) manufactured and sold products bearing the Harlem Globetrotter's trademarks. (GTFM SOF ¶ 4). The line included jeans, denim shorts, jerseys, tank tops, jumpsuits, dresses, skirts, shorts, hats, sneakers, pants and shirts made by GTFM and licensees of GTFM. (GTFM SOF ¶ 4). Pursuant to the License Agreement, some of the FUBU/HGI Apparel contained the plaintiffs' names, alleged jersey numbers, and alleged likenesses and/or images (the "Alleged Infringing Goods"). (GTFM SOF ¶ 5). Pursuant to the License Agreement GTFM paid HGI royalty of ten percent (10%) of the first tem million dollars ($10 million) of Net Sales and eight percent (8%) of the Net Sales thereafter. (GTFM SOF ¶ 6). The License Agreement expired on November 30, 2004 and permitted GTFM a one hundred eighty (180) day sell-off period. (GTFM SOF ¶ 7). On October 1, 2004, Meadowlark Lemon filed a complaint in the District of Arizona naming GTFM as a defendant. (GTFM SOF ¶ 10). On October 14, 2004, plaintiffs Fred "Curly" Neal, Larry "Gator" Rivers, Dallas "Big D" Thorton, Robert "Showboat" Hall, Marques Haynes, and James "Twiggy" Sanders (collectively referred to as the "Florida Plaintiffs") filed a similar complaint in the Case 2:04-cv-00299-DGC -3Document 247 Filed 11/23/2005 Page 3 of 18

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District Court of Florida naming GTFM as a defendant. (GTFM SOF ¶ 11). Plaintiffs have brought claims against GTFM for federal unfair competition/false designation of origin and misappropriation under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125 (a). (GTFM SOF ¶ 12). Plaintiffs have also brought claims against GTFM for the common law invasion of the right of publicity, unjust enrichment and false light invasion of privacy. (GTFM SOF ¶ 13). Meadowlark Lemon played for the Harlem Globetrotters from 1955-79. (GTFM SOF ¶ 14). Attached as exhibits to the License Agreement are several contracts in which the Globetrotters licensed the rights to use the names and likenesses of their players, including an agreement between Abe Saperstein Productions, Inc. and CBS, dated January 17, 1970, which resulted in Harlem Globetrotters cartoon and used the name and likenesses of several of the plaintiffs. (GTFM SOF ¶ 24). Other agreements attached to the License Agreement that licensed the right to use the names and likenesses of the Harlem Globetrotters include: (i) an agreement between HGI and Walt Disney Theatrical

Productions Ltd. for a musical stage play, dated September 16, 1997; (ii) an agreement between HGI and Columbia Pictures for a movie entitled "The Harlem Globetrotters Story" dated March 30, 1994; and (iii) an agreement between Buena Vista Theatrical Group Ltd. and HGI for a musical stage play, dated February 2, 2001. (GTFM SOF ¶ 25). Plaintiff testified that he has been harmed by the Alleged Infringing Goods because GTFM used his name and likeness without his authority, he was not properly compensated for the use of his name and likeness, and he was embarrassed that GTFM was putting his name on clothing that Plaintiff did not approve of. (GTFM SOF ¶ 26). Plaintiff's name and/or likeness was used by the Globetrotters on numerous products, including Iron-On Transfers, a Kirschner LP, a Harlem Globetrotters thermos, a comic book entitled "The Roamin' Gladiators", a pinball machine advertisement and a book entitled "Harlem Globetrotters" by George Vecsey with photos courtesy of the Harlem Globetrotters. (GTFM SOF ¶ 28). Plaintiff's caricature was used in a cartoon that ran on CBS from 1970 to 1973 and he appeared on a television show entitled the Wide World of Sports. (GTFM SOF ¶ 29). Plaintiff's picture is still in the Harlem Globetrotters program that is distributed to thousands of people every year; -4Document 247

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however, he has never asked the Globetrotters to stop using his name or likeness in the program. (GTFM SOF ¶ 30). The Globetrotters sent Plaintiff a check for FUBU/HGI styles that included his name and/or likeness. (GTFM SOF ¶ 34). In an effort to estimate damages, plaintiffs submitted an expert report.

(GTFM SOF ¶ 82). The Expert Report seeks to disgorge all gross profits earned by GTFM from the sale of Alleged Infringing Goods in the minimum amount of $1,832,304. (GTFM SOF ¶ 83). The Alleged Trademarks are not registered. (GTFM SOF ¶ 85). Plaintiffs' expert did not express any opinions or conduct any research as to whether any consumers bought any FUBU/HGI Apparel because any players' names, numbers, images and/or likenesses were on them. (GTFM SOF ¶ 88). These undisputed facts, along with the additional facts contained in Plaintiff's Statement of Contraverting Facts ("SOCF") incorporated herein by reference, support this Response in opposition to GTFM's Motion for Summary Judgment and further support summary judgment in favor of Plaintiff and against GTFM. II. DISMISSAL OF PLAINTIFF'S LANHAM ACT CLAIMS IS NOT PROPER AND IN FACT PLAINTIFF IS ENTITLED TO SUMMARY JUDGMENT IN HIS FAVOR ON THOSE CLAIMS. GTFM asserts in its Motion that Plaintiff's Lanham Act claims must be dismissed because Plaintiff has "completely failed to adduce any evidence of secondary meaning or likelihood of confusion, both prerequisites to protection under the Lanham Act." First, Plaintiff has established the element of `secondary meaning.' As GTFM cites in its Motion, "secondary meaning is the consumer's association of the mark with a particular source or sponsor." (GTFM's Motion for Summary Judgment at 11; citing E. & J. Gallo Winery v. Gallo Cattle Company, 967 F.2d 1280, 1291 (9th Cir. 1992)). It is clear that GTFM's use of Plaintiff's name and player number would cause the consumer to associate the clothing with Plaintiff as the source and/or sponsor. (SOCF ¶ 45-47, 57, 59-65). Plaintiff is the only person named Meadowlark Lemon that has ever played for the Globetrotters and therefore there is no other "Lemon" that consumers could possibly associate the `mark' with as the source or sponsor. Plaintiff is a well-known celebrity and has used his -5Document 247

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name to promote his ministries and charities and his own basketball team. (SOCF ¶ 42, 80). The public is very aware that celebrities, especially sports celebrities, make profits from endorsing products such as clothing, etc. The concept of celebrity endorsement of goods is common knowledge among consumers. Therefore, the use of his name in conjunction with a clothing line, especially sports apparel such as basketball jerseys, implies to the public that Plaintiff is endorsing, or has given approval, to the product. Not only did GTFM use Plaintiff's name and player number on the clothing, but it was used in connection with the one team for which Plaintiff is most recognized, the Harlem Globetrotters. Because consumers associate Plaintiff's name and player number (the `mark') with Plaintiff as the source/sponsor, Plaintiff has proven the element of secondary meaning. Second, Plaintiff has also established the element of `likelihood of confusion.' Section 43(a) of the Lanham Act creates a civil cause of action for celebrities because they possess an economic interest in their identities akin to that of a trademark holder. Rosa Parks v. LaFace Records, 329 F.3d 437, 445 (6th Cir. 2003). Such a celebrity must show that the use of his name is likely to cause confusion among consumers as to the connection between the celebrity and the defendant's goods or services. Id. The test for trademark infringement, unfair competition or violation of section 43(a) of the Trademark Laws, 15 U.S.C. § 1125(a), is whether defendant's use of the name is likely to cause confusion with plaintiff's prior use of the name. New West Corp. v. NYM Co. of California, Inc., 595 F.2d 1194, 1198 (9th Cir. 1979). In determining the issue of likelihood of confusion, the factors that are relevant include: 1) similarity of the marks; 2) relatedness of the products; 3) intent of the defendant in selecting the mark; 4) strength of plaintiff's mark; and 5) actual confusion. See Golden Door, Inc. v. Odisho, 646 F.2d 347, 349-350 (9th Cir. 1980), White v. Samsung Electronics America, Inc., 971 F.2d 1395, 1400 (9th Cir. 1992). In cases involving confusion over endorsement by a celebrity plaintiff, "mark" means the celebrity's persona. Id. The "strength" of the mark refers to the level of recognition the celebrity enjoys among members of the society. Id. Also, when determining Defendant's intent, the relevant question is whether the Defendant intended to profit by confusing consumers concerning the endorsement of the product. Id. Therefore, to establish the `likelihood of confusion' element, Plaintiff must show that -6Document 247

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GTFM's use of his name, by licensing it to be used in a clothing line, is likely to cause confusion among consumers as to the connection between him and the goods. First, the "mark" used by GTFM and Plaintiff's "mark" are identical. GTFM used Plaintiff's name and retired player number. Most of the clothing or tags either had Plaintiff's entire name emblazoned across it, would have just his first or last name on it, or just his retired number. Second, GTFM's product, the sports apparel, is identical to Plaintiff's. GTFM used Plaintiff's name on sports apparel, including basketball apparel, which is the only sport that Plaintiff is famous for. Plaintiff continues, through his ministries and charities, to produce and distribute sports and basketball products with his name on it. Therefore, GTFM is marketing and selling the only product for which Plaintiff has any notoriety. Third, the intent of GTFM in selecting Plaintiff's name to use in the clothing line is clear: commercial profit. (SOCF ¶ 66-71.) GTFM used Plaintiff's name solely for its own profit. Fourth, the "strength" of Plaintiff's `mark,' which refers to the level of recognition he enjoys among members of the society, is very strong. Not only are the Harlem Globetrotters a well known team around the world, but Plaintiff is the most recognized player. (SOCF ¶ 61-65.) Lastly, the concept of celebrity endorsement of goods is common knowledge among consumers. The public is very aware that celebrities, especially sports celebrities, make profits from endorsing products such as clothing, etc. confusion is certain. Plaintiff has established the elements of `secondary meaning' and likelihood of confusion.' After evaluating the relevant factors regarding the elements of `secondary meaning' and `likelihood of confusion,' it is clear that GTFM's use of Plaintiff's name is likely to cause confusion among the public as to the connection between the Plaintiff and the clothing. Therefore, dismissal of Plaintiff's Lanham Act claims is not warranted and GTFM's request for summary judgment on this claim should be denied. Furthermore, Plaintiff has established that there is no issue as to any material fact regarding GTFM's use of Plaintiff's `mark' and the likely confusion that will result among the public as to the connection between Plaintiff and the clothing line, therefore it is Plaintiff that is entitled to summary judgment against GTFM as a matter of law. -7Document 247 Therefore, actual

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III.

PLAINTIFF IS ENTITLED TO DISGORGEMENT OF GTFM'S PROFITS. A. Plaintiff's Federal Lanham Act Claims. First, GTFM asserts that Plaintiff is not entitled to disgorge GTFM's profits under federal law

because Plaintiff has failed to prove that his `Alleged Trademark' is protectible under the Lanham Act and because Plaintiff has failed to establish GTFM's gross profits from the infringing activity with reasonable certainty. To the contrary, as set forth under Section II supra, Plaintiff has in fact established the required elements under the Lanham Act and that his name, image and likeness is protected. Furthermore, Plaintiff has also established GTFM's gross profits from the infringing activity with reasonable certainty. GTFM asserts that Plaintiffs have the burden of establishing GTFM's gross profits from the infringing activity with reasonable certainty. (GTFM's Motion for Summary Judgment at 15, citing Lindy Pen Co., Inc. v. Bic Pen Corp., 982 F.2d 1400, 1408 (9th Cir. 1993)). However, in the Lanham Act, and similar common law cases, plaintiff is not required to prove the amount of damages with mathematical certainty. U-Hall International, Inc v. Jartran, Inc., 601 F.Supp. 1140, 1150 (D. Arizona 1984), aff'd in part, rev'd in part on other grounds, 793 F.2d 1034 (9th Cir. 1986). GTFM cannot (or refused to) reliably quantify sales. (SOCF ¶ 72). Mannie Jackson first crowed that it was a "100 million dollar" deal, then that it was a "60 million dollar deal." (SOCF ¶ 71). In fact, HGI is currently suing GTFM in New York based on GTFM failing to adequately disclose and calculate revenue of the clothing sales. Here the damages are clear even though the totals are not mathematically certain. The fact that the exact quantities, styles and countries of sales may never be known, common in the international garment industry, does not foreclose damages for Plaintiff. In this context, Plaintiff's entitlement to disgorgement of GTFM's profits should not be foreclosed because he encountered difficulties caused by GTFM. Plaintiff has provided a reasonable basis for his damage calculations that 1) there were infringements, and 2) profits were made that should be disgorged. Now GTFM should bear the risk of any uncertainty. The 9th Circuit has declined to second guess a jury's verdict resulting in an allegedly speculative measure of damages (used the evidence of royalty on one postcard times total -8Document 247

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number of issues sold), stating that it is the defendant (Hustler) "that must bear the risk of uncertainty." Brewer v. Hustler Magazine, Inc., 749 F.2d 527 (9th cir. 1984). GTFM cannot dismiss Plaintiff's damage calculation and entitlement to disgorgement of GTFM's profits if GTFM is the cause of a deficiency in the factual basis. A wrongdoer cannot escape damages because he succeeds in hiding or confusing the damages, then calling them speculative. It was GTFM that continually refused to reliably quantify sales for Plaintiff. (SOCF ¶ 72-73). Therefore, because of GTFM's refusal to reliably quantify sales, Plaintiffs' expert was unable to completely calculate compensation based solely on individual Plaintiffs. (SOCF ¶ 73). In this case, the damages for historical sales are reasonably documented. Plaintiffs' expert opines as to direct damages, not speculative future profits that Plaintiffs could have, or may have, enjoyed if they made their own deals with GTFM or someone else. It is clear that damages may be proved for a direct injury that a plaintiff can prove, as well as any lost profits plaintiff would have earned but for the infringement. See Lindy Pen Co., v. Bic Pen Corp., 982 F.2d 1400 (9th Cir. 1993). The Lindy Pen court also noted that proof of actual damage is often difficult. Id. Similarly, the 9th circuit has noted that California statutes provide for actual damages and any profits which require "proof only of the gross revenue"... "and the person who violated this section is required to prove his or her deductible expenses." Cal. Civ. Code § 3344(a) (1997), Solana v. Playgirl, Inc., 292 F.3d 1078 (9th Cir. 2002). Therefore, Plaintiff is entitled to a disgorgement of GTFM's profits as a matter of law. It is now GTFM's burden to prove what amount, if any, of its gross revenues were not due to the misappropriation of Plaintiff's marks. J. Thomas McCarthy, The Right of Publicity and Privacy, §11.34 at 11-80 (2d Ed. 2002). B. Plaintiff's Unjust Enrichment Claim Under Arizona Law. Second, GTFM asserts that Plaintiff is not entitled to disgorgement of GTFM's profits under Arizona law because Plaintiff has failed to meet the elements required for recovery on a theory of unjust enrichment under Arizona law. However, Plaintiff has met all elements required for recovery on a -9Document 247

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theory of unjust enrichment under Arizona law and therefore is also entitled to disgorgement of GTFM's profits under this theory of recovery. To recover such damages, the party must prove the following elements of unjust enrichment: 1) the other party was unjustly enriched at the expense of claimant, 2) the claimant provided a benefit to the other party, and 3) the claimant conferred this benefit under circumstances that would render inequitable the other party's retention of the benefit without payment. Western Corrections Group, Inc. v. Tierney, 208 Ariz. 583, 590, 96 P.3d 1070, 1077 (2004). GTFM had no right to use, or license for use, Plaintiff's name and likeness as HGI and GTFM did by entering into the contract. (SOCF ¶ 74-77). Plaintiff was and is the only person who has the authority to use and consent to the use of his name and likeness in connection with any product. (SOCF ¶ 42, 74-77). However, GTFM exploited Plaintiff's protected right to the exclusive use of his name and likeness as if it were a trademark, by placing Plaintiff's name on a clothing line. Furthermore, Plaintiff gained his celebrity status and entry into the Basketball Hall of Fame through his own hard work and sacrifices. Plaintiff's status in the community is what it is today because of Plaintiff's athletic ability, goodwill, well-known reputation, ministry, and work with charities. (SOCF ¶ 80). GTFM exploited Plaintiff's celebrity and goodwill status, and profited by doing so. It is through Plaintiff's celebrity status that Plaintiff conferred a benefit on GTFM. (SOCF ¶ 57-65). It is also through Plaintiff's status in the community that GTFM was able to make a profit on the clothing that displayed Plaintiff's name and likeness. Therefore, Plaintiff provided a benefit to GTFM. Plaintiff conferred this benefit to GTFM under circumstances that would render inequitable GTFM's retention of the benefit without payment because it is Plaintiff, not GTFM, that is entitled to the profits from the sale of the clothing bearing his name and likeness. (SOCF ¶ 42, 74-77). GTFM had no authority to use Plaintiff's name and likeness and, to make matters worse, never used due diligence when entering into the contract with HGI, choosing instead to solely rely on the baseless assertions of HGI and an indemnification agreement. (SOCF ¶ 37-39, 81-90, 93). Therefore, it would be inequitable

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for GTFM to retain the benefit that Plaintiff conferred on it. For that reason, Plaintiff is entitled to a disgorgement of GTFM's profits under a theory of unjust enrichment. Furthermore, GTFM's assertion that Plaintiff has an adequate legal remedy is clearly erroneous. GTFM asserts that Plaintiff had an adequate legal remedy available to him ­ he could have attempted to register the Alleged Trademarks, federally or under Arizona law. However, Plaintiff's name, image and likeness is protected like a trademark whether or not he registered the `mark.' Section 43(a) of the Lanham Act creates a civil cause of action for celebrities because they possess an economic interest in their identities akin to that of a trademark holder. Rosa Parks v. LaFace Records, 329 F.3d 437, 445 (6th Cir. 2003). Therefore, whether or not Plaintiff registered his `mark' is of no consequence to his claim of unjust enrichment. As previously stated, Plaintiff is entitled to a disgorgement of GTFM's profits under a theory of unjust enrichment. C. Plaintiff's False Light Invasion of Privacy Claim. Third, GTFM asserts that Plaintiff is not entitled to disgorgement of GTFM's profits under a false light invasion of privacy claim because Plaintiff has not met the elements necessary to prove such a claim. However, Plaintiff has established that he has met all elements for such a claim under Arizona law. One who gives publicity to a matter concerning another that places the other before the public in a false light is subject to liability to the other for the invasion of his privacy if: 1) the false light in which the other was placed would be highly offensive to a reasonable person, and 2) the actor had knowledge of or acted in reckless disregard as to the falsity of the publicized matter and the false light in which the other would be placed. Godbehere v. Phoenix Newspapers, Inc., 162 Ariz. 335, 338,

783 P.2d 781, 784 (1989). A false light cause of action arises either when something untrue has been published about the individual or when the publication of true information creates a false implication about the individual. Id. at 341, 783 P.2d at 787 (emphasis added).

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When GTFM using Plaintiff's name on its clothing line for commercial profit, GTFM created a false implication about Plaintiff. Specifically, that he endorsed the clothing line and the FUBU brand on which his name was featured. Also, by featuring Plaintiff's name and likeness on the clothing line, GTFM placed Plaintiff in a false light by holding out to the reasonable person that Plaintiff was involved in the commercial exploitation of his name and likeness purely for profit. Instead, Plaintiff dedicates his life to his ministry and charities and provides free basketballs, autographs, and shirts to the needy each year. (SOCF ¶ 80). Lastly, GTFM's conduct would be offensive to the reasonable person because GTFM literally `stole' Plaintiff's identity by using his name and likeness when GTFM did not have the authority to do so. By creating a false implication about Plaintiff that a reasonable person would find offensive, GTFM became liable to Plaintiff for false light invasion of privacy. Plaintiff has established that he has met all of the elements required to succeed on a claim for false light invasion of privacy. Therefore, not only is Plaintiff entitled to disgorgement of GTFM's profits under such a theory, Plaintiff is also entitled to summary judgment on this claim. D. Plaintiff's Common Law Right of Publicity Claim. Fourth, GTFM asserts that Plaintiff is not entitled to disgorge GTFM's profits under a common law right of publicity claim because it is unclear whether Arizona recognizes such a claim, and if it is recognized, Plaintiff has not proven the required elements. However, it is clear that Arizona recognized a common law right of publicity claim in Pooley v. National Hole-In-One Association, 89 F.Supp.2d 1108 (D.Ariz. 2000), as GTFM cites in its Motion. In Pooley, the District Court of Arizona set forth the elements that a Plaintiff must establish to be successful on a common law right of publicity claim as: 1) Defendant's use of Plaintiff's identity; 2) the appropriation of Plaintiff's name or likeness to Defendant's advantage, commercially or otherwise; 3) lack of consent; and 4) resulting injury. Id. Not only does Arizona recognize the claim of common law right of publicity, but it is clear that Plaintiff has met all of the elements. First, GTFM used Plaintiff's identity by emblazoning Plaintiff's Case 2:04-cv-00299-DGC -12Document 247 Filed 11/23/2005 Page 12 of 18

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name and likeness across clothing that was manufactured and sold by the company.

(SOCF ¶ 91-92).

It is undisputed that GTFM manufactured and sold clothing which prominently displayed Plaintiff's name and/or number. (SOCF ¶ 91-92). GTFM clearly profited from the sale of clothing bearing Plaintiff's name and/or number. Net sales on men's and boy's clothing line alone for the first two years was $22.6 million. (SOCF ¶ 68). GTFM did not gain the right to use Plaintiff's name and likeness by entering into the agreement with HGI. GTFM did not contact Plaintiff directly to get his consent to use his name and likeness on the clothing. (SOCF ¶ 93). Furthermore, as discussed supra, GTFM did not use due diligence when it entered into the contract with HGI. (SOCF ¶ 37-39, 81-90, 93). Although GTFM had never before entered into a contract with HGI, GTFM merely believed the assertions of Mannie Jackson that he owned the rights to use Plaintiff's name and likeness, and never looked at Plaintiff's player contract nor did GTFM ask for further proof of Mr. Jackson's assertions. (SOCF ¶ 37-39, 81-90, 93). Nor did GTFM ever contact Plaintiff to confirm HGI's right to license Plaintiff's name and likeness. (SOCF ¶ 93). Fourth, Plaintiff has been injured by GTFM's use of his name and likeness. Plaintiff was not

compensated for the use of his name and likeness although, had he consented to such use by entering into his own contract with GTFM, Plaintiff would have been entitled to compensation. GTFM kept all profits that Plaintiff would have been entitled to. (SOCF ¶ 21, 26, 66-71). Additionally, by entering into the licensing agreement, GTFM effectively took away Plaintiff's right to choose to endorse another product through his celebrity status. Plaintiff is still involved in the sports community through his ministries and charities, and produces his own products containing his name which GTFM directly competed with. (SOCF ¶ 42). Since Plaintiff has met all of the elements required to prevail on a common law right of publicity claim, not only would Plaintiff be entitled to a disgorgement of GTFM's profits, Plaintiff would also be entitled to a grant of summary judgment in his favor. IV. PLAINTIFF'S CLAIMS ARE NOT BARRED BY LACHES. -13Document 247 Filed 11/23/2005

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GTFM asserts that Plaintiff's claims are barred by laches because Plaintiff unreasonably delayed in filing suit and GTFM was prejudiced by that delay. However, Plaintiff did not delay in filing this lawsuit and asserting his rights immediately after discovering GTFM's infringing activities. Because Plaintiff did not delay in filing suit, there is no way that GTFM could be prejudiced. Plaintiff first became aware of HGI and GTFM's actions in producing a clothing line displaying his name and likeness in or about the end of 2003. This happened when Plaintiff witnessed many fans wearing the clothing at the ceremony in which Plaintiff was being inducted into the Basketball Hall of Fame where his player number "36" was retired. (SOCF ¶ 57, 95). Then, on December 23, 2003,

Plaintiff sent a letter to HGI and Mannie Jackson, requesting any and all documentation which they are relying on that gives Defendants or any other entity authorization to use Plaintiff's name, image, likeness, number, notoriety, and goodwill. (SOCF ¶ 96). Defendants did not respond to the inquiry at all which forced Plaintiff to file this lawsuit in early 2004. (SOCF ¶ 97). Therefore, it is clear that as soon as Plaintiff was aware of the infringement, he instituted legal action against both HGI and GTFM. GTFM claims that the Globetrotters have used Plaintiff's name and likeness "for decades" without objection by Plaintiff. However, GTFM fails to state how the Globetrotters have used

Plaintiff's name and the fact that prior uses of Plaintiff's name by the Globetrotters was completely unlike the sublicensing agreement undertaken by GTFM and HGI. GTFM's use of Plaintiff's name and likeness was a complete violation of Plaintiff's rights and is not legal. In fact, outside of the HGI/GTFM sublicensing agreement, HGI has never used Plaintiff's name and likeness on a clothing line. At no time from October 15, 1975 through October 14, 1980, was any clothing, especially sports ware, being sold with the individual player names on it. (SOCF ¶ 77). Aside from the FUBU clothing line, HGI has not been involved in utilizing Plaintiff's name and likeness. (SOCF ¶ 78). Not even the clothing sold in the arenas at Harlem Globetrotters events contains Plaintiff's name and likeness. (SOCF ¶ 79). To Plaintiff's knowledge, the Globetrotters have never before inappropriately sublicensed or used his name and likeness. Therefore, Plaintiff never had a reason to complain to HGI or any other company about the use of his name and likeness. As soon as Plaintiff became aware of HGI and -14Document 247 Filed 11/23/2005

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GTFM's illegal use of his name and likeness, Plaintiff immediately instituted legal action. For those reasons, a defense of laches cannot stand and therefore Plaintiff's claims are not barred by that defense. V. PLAINTIFF HAS ESTABLISHED PROOF THAT INFRINGING GOODS WERE LIKELY PURCHASED BECAUSE OF GTFM'S USE OF PLAINTIFF'S NAME, IMAGE AND LIKENESS AND THEREFORE PLAINTIFF HAS PROVEN "BUT FOR" CAUSATION. GTFM asserts that Plaintiff has failed to offer any evidence that any consumer purchased (or likely purchased) the `Alleged Infringing Goods' because of Plaintiff's name, image and likeness, rather than as a result of the FUBU or Harlem Globetrotters names or trademarks, the quality of the goods, styling, pricing or other reasons. However, Plaintiff has set forth ample proof that it is highly likely that consumers purchased infringing clothing because it exhibited his name. As GTFM states in its Motion, Plaintiff does not have to set forth conclusive proof, but only has to show that a consumer likely purchased the clothing because it bore his name and likeness. (GTFM's Motion for Summary Judgment at 24). Meadowlark Lemon is the single most recognized Harlem Globetrotter. (SOCF ¶ 57-65). The clothing bearing Plaintiff's name, likeness, and player number sold very well, and was the highest selling of all players. (SOCF ¶ 61). At his deposition Larry Blenden, an executive of GTFM, named Plaintiff as one of the most famous past Harlem Globetrotters players. (SOCF ¶ 62). When Mr. Jackson purchased the Globetrotters, he considered Meadowlark Lemon to be a legend of the Harlem Globetrotters. (SOCF ¶ 63). The best-known Globetrotters ever are

Meadowlark Lemon and Marques Haynes and Meadowlark Lemon is on the "Legends" wall at the Globetrotters office. (SOCF ¶ 64). All people deposed in this case mentioned Meadowlark Lemon as the most famous, or one of the most famous, Globetrotter. From the evidence presented by Plaintiff, and based on his reputation in the sports community, it is clear that consumers likely purchased the FUBU clothing because it bore Plaintiff's name and likeness. Therefore, Plaintiff has established "but for" causation and his claims should not be dismissed. VI. CONCLUSION

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For the foregoing reasons, GTFM is not entitled to summary judgment. Instead, Plaintiff has demonstrated through this Response, the Statement of Contraverting Facts, and Plaintiff's own Motion for Summary Judgment that he will prevail on his claims as a matter of law and is entitled to disgorgement of GTFM's profits. Therefore, it is Plaintiff that is entitled to summary judgment against GTFM.

DATED this 23rd day of November 2005. ROSENQUIST & ASSOCIATES

By:

/s/Anders Rosenquist Anders Rosenquist, Jr. Florence M. Bruemmer Attorneys for Plaintiff

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CERTIFICATE OF SERVICE Florence M. Bruemmer declares as follows: 1. I am and was at all times mentioned herein a citizen of the United States and a resident of Maricopa County, Arizona over the age of 18 years of age and not a party to the action or proceeding. I am an attorney with Rosenquist & Associates. 2. I hereby certify that on November 23rd , 2005, a true and correct copy of the foregoing PLAINTIFF MEADOWLARK LEMON'S RESPONSE TO GTFM, LLC'S MOTION FOR SUMMARY JUDGMENT was sent by postage-prepaid first-class mail, addressed to: Joel L. Herz, Esq. Law Offices of Joel L. Herz 3573 East Sunrise Drive, Suite 215 Tuscon, Arizona 85718 Telephone: (520) 529-8080 Attorneys for Defendants FUBU the Collection, LLC GTFM of Orlando, LLC d/b/a FUBU Company Store Safia A. Anand, Esq. DREIR, LLP 499 Park Avenue New York, NY 10022 Attorneys for Defendants FUBU the Collection, LLC, GTFM of Orlando, LLC and GTFM, LLC Clay Townsend, Esq. Morgan, Colling & Gilbert, PA 20 N. Orange Avenue 16th Floor Orlando, FL 32802 Attorneys for Plaintiffs Neal, Rivers, Thorton, Hall, Haynes and Sanders Robert W. Goldwater, III, Esq. The Goldwater Law Firm, P.C. 15333 North Pima Road, #225 Scottsdale, Arizona 85260 Attorneys for Plaintiffs Neal, Rivers, Thorton, Hall, Haynes and Sanders

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Ray K. Harris Fennemore Craig 2003 North Central Avenue Suite 2600 Phoenix, Arizona 85012-2913 Attorneys for Defendants Harlem Globetrotters Int'l, Inc., Harlem Globetrotters Int'l Foundation, and Jackson Edward R. Garvey Christa Westerberg Garvey McNeil & McGillivray 634 West Mail Street Suite 101 Madison, WI 53703 Attorneys for Defendants Harlem Globetrotters Int'l, Inc., Harlem Globetrotters Int'l Foundation, and Jackson by placing same in a properly sealed, postage prepaid envelope and depositing same in a United States Postal Service mail box. 3. I declare under the penalty of perjury under the laws of the United States that the foregoing is a true and correct. Executed this 23rd day of November 2005, at Phoenix, Arizona.

/s/Florence M. Bruemmer Florence M. Bruemmer

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