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 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 DEFENDANTS FUBU THE COLLECTION, LLC'S AND GTFM OF ORLANDO, LLC d/b/a FUBU COMPANY STORE'S RENEWED MOTION FOR SUMMARY JUDGMENT Case No. CV 04-299 PHX-DGC and CV 04 1023 PHX-DGC

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") submits this Response to Defendants FUBU the Collection and GTFM of Orlando, LLC d/b/a FUBU Company Store's (hereinafter collectively as "Defendants") Motion for Summary Judgment pursuant to Rule 56 of the Federal Rules of Civil Procedure. Plaintiff asserts that there are disputed material facts regarding whether this Court has personal jurisdiction over Defendant; and therefore, Summary Judgment is inappropriate. I. FACTUAL BACKGROUND. A. Undisputed Facts. On October 12, 2005, plaintiffs moved to dismiss FUBU the Collection, LLC and GTFM of Orlando, LLC without prejudice pursuant to Fed.R.Civ.P. Rule 41(a)(2). (Defendants' SOF ¶ 1). On October 18, 2005, Defendants filed a partial opposition to the Plaintiff's Motion to Dismiss the Defendants Without Prejudice asking (a) that the claims against them be dismissed with prejudice and (b) plaintiffs be ordered to pay the Defendants costs, disbursements and attorney's fees to date, or (c) plaintiffs be enjoined from re-filing these claims against the Defendants. (Defendants' SOF ¶ 2). Since the beginning of this litigation and throughout the discovery period, Defendants have explained that this Court does not have personal jurisdiction over them. (Defendants' SOF ¶ 4). On or about July 12, 2004, Defendants filed their first Motion for Summary Judgment requesting that this Court dismiss them for lack of personal jurisdiction. (Defendants' SOF ¶ 6). Daymond Aurum is the Co-Founder of the FUBU band and the CEO of FUBU the Collection, LLC. (Defendants' SOF ¶ 7). FUBU the Collection, LLC is a limited liability company organized under the laws of the state of New York. (Defendants' SOF ¶ 8). GTFM of Orlando, LLC was the shell company operating the FUBU Company Store in Orlando, which has since been closed. (Defendants' SOF ¶ 12). In an order dated October 4, 2004, Defendants First Motion for Summary Judgment was denied without prejudice. (Defendants' SOF ¶ 15). On October 1 and October 19, 2004 that Plaintiff and the

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Florida Plaintiffs finally amended their Complaints to add GTFM, LLC, as a defendant in these actions. (Defendants' SOF ¶ 17). As discovery continued in these actions, FUBU the Collection, LLC and GTFM of Orlando continued to maintain that there was no personal jurisdiction over them and FUBU the Collection, LLC continued to maintain that it was otherwise an improper party in this action. (Defendants' SOF ¶ 18). Defendants have submitted amended disclosures pursuant to Rule 26 of the Federal Rules of Civil Procedure stating that they have no documents in this action. (Defendants' SOF ¶ 20). B. Disputed & Additional Facts. The following disputed material facts and additional facts show that Defendants are not entitled to summary judgment. Revenue from the licensing agreement using Plaintiffs' names clearly went to FUBU the Collection, LLC. (SOCF ¶ 22-23, 36, 41). The corporate representative for FUBU the Collection, LLC could not even give a ballpark estimate of the amount paid to FUBU the Collection, LLC or of even the gross moneys earned from the licensing deal, and therefore it is apparent that FUBU the Collection, LLC benefited financially from the licensing deal. (SOCF ¶ 36-37). FUBU the Collection's retail stores were making sales of infringing garments and hangtags bearing Plaintiffs' names in Manila, Phillipines as late as August 2005 that were never disclosed by the FUBU Defendants. (SOCF ¶ 38). Defendants' counsel represented that the unreported Philippines sales were either "unauthorized" or "transshipped from a USA retailer" but provided no evidence of such to Plaintiffs. (SOCF ¶ 39). However, the Philippines retailer indicated "FUBU the Collection" on its bags, receipts and signs and FUBU the Collection's counsel acknowledges that FUBU the Collection is a "common law mark" owned by the FUBU Defendants. (SOCF ¶ 40).

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It is also obvious that Defendants had a hand in developing, creating, producing, manufacturing, marketing, promoting, and/or widespread distribution of the HGI/GTFM Apparel. (SOCF ¶ 21-22, 4145). FUBU the Collection, LLC participated in the design and marketing of the clothing line. (SOCF ¶ 41). Daymond Aurum is CEO of FUBU the Collection, LLC and he is in charge of marketing, looking over distribution, and product placement on artists. (SOCF ¶ 42). Before entering into the contract with HGI, Mr. Aurum, on behalf of FUBU the Collection, LLC, attended meetings regarding the formulation of the clothing line, and approved the idea of the Harlem Globetrotters clothing line because he though it would be a good next step to FUBU's Platinum Line. (SOCF ¶ 43). Mr. Aurum, on behalf of FUBU the Collection, LLC, determined styles of the clothing in the line and marketing as far as what type of advertising should be done. (SOCF ¶ 44). Furthermore, samples of the clothing line would be looked at by Mr. Aurum, on behalf of FUBU the Collection, LLC, and he would approve or disapprove the various styles. (SOCF ¶ 45). Retailers are still selling the Platinum FUBU Harlem Globetrotters clothing line bearing Plaintiff's name. (SOCF ¶ 46). For example, infringing clothes bearing Plaintiff's name and likeness were purchased as recently as September of 2005. II. FUBU THE COLLECTION AND GTFM OF ORLANDO HAVE ALREADY BEEN DISMISSED AS DEFENDANTS IN THIS LAWSUIT. Plaintiff is unsure why Defendants have filed this renewed Motion for Summary Judgment because Plaintiffs have already moved to voluntarily dismiss (without prejudice) Defendants as parties to this litigation. Since Plaintiff has already moved to dismiss Defendants as parties to this litigation, it is unknown why Defendants have filed a Renewed Motion for Summary Judgment, which simply argues they should be dismissed as parties to this litigation. Although Defendants agree with Plaintiff regarding their dismissal, Defendants filed an objection to the Motion to Dismiss because Defendants wish to be dismissed with prejudice. Whether Defendants

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are dismissed with or without prejudice, all are in agreement that Defendants should be dismissed and therefore Defendants Renewed Motion for Summary Judgment is completely unwarranted. However, Plaintiff believes Defendants should be dismissed without prejudice for several reasons. First, FUBU the Collection asserts that Plaintiff has been aware for over one and a half years that there is no legal or factual support for keeping FUBU the Collection, LLC and GTFM of Orlando (hereinafter collectively as "Defendants") as parties in the lawsuit. However, Plaintiff asserts that it was not until after

completion of discovery that Plaintiff was able to come to the conclusion that a voluntary Motion to Dismiss FUBU the Collection, LLC and GTFM of Orlando, was warranted. Plaintiff's assertion is supported by the fact that the Defendants filed a Motion to Dismiss prior to the commencement of discovery, which was denied by the Court without prejudice to renewal after discovery. Additionally, on July 12, 2004, the Defendants filed a motion for summary judgment requesting that they be dismissed as parties to the lawsuit. Again, the Court denied the Motion for Summary Judgment without prejudice. Therefore, even the Court recognized that it could not be ascertained whether FUBU the Collection, LLC and GTFM of Orlando should remain as parties to this lawsuit until after the completion of discovery. It is clear that Plaintiff could not have made the decision whether to dismiss FUBU the Collection, LLC and GTFM of Orlando as defendants in this action until after the issue was explored in discovery and the Defendants connection with HGI could be fully ascertained. Once discovery and depositions were complete, Plaintiff promptly filed his voluntary Motion to Dismiss without prejudice. Second, based on the reasons set forth in Plaintiff's Voluntary Motion to Dismiss Without Prejudice Pursuant to Fed.R.Civ.P. Rule 42(a)(2), and the fact that the testimony of witnesses may change at trial which could bring forth facts not produced during discovery, the Defendants should be dismissed without prejudice. It is quite possible that facts could come to light at trial that would point to FUBU the Collection, LLC as the primary organization responsible for the claims asserted in this matter.

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If Defendants are dismissed with prejudice and further facts come to light at trial that essentially `point the finger' at FUBU the Collection, LLC, Plaintiff would be barred from obtaining the appropriate relief from the true culpable party. Furthermore, unless FUBU the Collection, LLC and GTFM of Orlando can show that they will suffer some plain legal prejudice by the dismissal, the voluntary motion to dismiss without prejudice pursuant to Fed.R.Civ.P. Rule 41(a)(2) should be granted. See Smith v. Lenches, 263 F.3d 972, 975 (9th Cir. 2001) (a district court should grant a motion for voluntary dismissal without prejudice under Rule 41(a)(2) unless a defendant can show some plain legal prejudice as a result). Legal prejudice means prejudice to some legal interest, some legal claim, or some legal argument; however, uncertainty because a dispute remains unresolved or because the threat of future litigation causes uncertainty, does not result in plain legal prejudice. Id. at 976. Also, plain legal prejudice does not result merely because the defendant will be inconvenienced by having to defend a subsequent action or where a plaintiff would gain a tactical advantage by that dismissal. Id. FUBU the Collection, LLC and GTFM of Orlando have only stated that they may be financially harmed if required to defend a future lawsuit from Plaintiff, but have not shown that they will suffer some plain legal prejudice if the motion to dismiss without prejudice is granted. Third, FUBU the Collection, LLC and GTFM of Orlando should not be awarded their attorney's fees if they are dismissed without prejudice. As soon as discovery and depositions were complete, Plaintiff promptly filed his Motion to Dismiss without prejudice. Plaintiff did not unreasonably delay the filing of the Motion to Dismiss and filed the Motion as soon as Plaintiff, through discovery, was able to ascertain the Defendants connection to HGI and the merchandise. For the foregoing reasons, Defendants should be dismissed without prejudice, as requested in Plaintiff's voluntary motion to dismiss. However, if Defendants are not dismissed pursuant to Plaintiff's

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voluntary notice of dismissal, Defendants should not be awarded summary judgment for the reasons set forth below. III. EVEN IF FUBU THE COLLECTION AND GTFM OF ORLANDO ARE STILL DEFENDANTS IN THIS LAWSUIT, SUMMARY JUDGMENT IS NOT WARRANTED BECAUSE THERE ARE DISPUTED MATERIAL FACTS REGARDING PERSONAL JURISDICTION OVER DEFENDANTS. Defendants assert that they are entitled to summary judgment because the Court lack's personal jurisdiction over Defendants as Defendants have never had any contacts with Arizona. Further,

Defendants argue that the Defendants do not have anything to do with the HGI apparel. Plaintiff disputes several material facts regarding Defendant's involvement in the events leading to this controversy and its minimum contacts with the State of Arizona from those events. First, Defendants have made bald statements that the Court does not have personal jurisdiction over them, however, `FUBU the Collection' is attached to countless pieces of HGI merchandise. (SOCF ¶ 38, 40-45, 51). Based on this bald statement that there is no personal jurisdiction, the Defendants request summary judgment. However, Plaintiff has discovered that Defendants have withheld

information from Plaintiff, and failed to disclose information and documents obviously related to this controversy. (SOCF ¶ 38, 40, 53). Defendants encountered many difficulties when attempting to ascertain the role of Defendants FUBU the Collection and GTFM of Orlando through discovery. (SOCF ¶ 37-40). FUBU the Collection retail stores were making sales of infringing garments and hangtags bearing Plaintiffs' names in Manila, Phillipines as late as August 2005 that were never disclosed by the Defendants. (SOCF ¶ 38). FUBU's counsel represented that the unreported Philippines sales were either "unauthorized" or "transshipped from a USA retailer" but provided no evidence of such to Plaintiffs. (SOCF ¶ 39). The Philippines retailer indicated "FUBU the Collection" on its bags, receipts

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and signs and FUBU the Collection's counsel acknowledges that FUBU the Collection is a "common law mark" owned by the FUBU Defendants. (SOCF ¶ 40). Furthermore, Plaintiff has compelling evidence that Defendants are liable to Plaintiff. There is evidence indicating that Defendant has benefited from the use and exploitation of Plaintiff's name, jersey number, image and likeness. (SOCF ¶ 36-37, 42-46). Specifically, revenue from the licensing agreement using Plaintiffs' names clearly went to FUBU the Collection, LLC. (SOCF ¶ 36-37). The corporate representative for FUBU the Collection, LLC could not even give a ballpark estimate of the amount paid to FUBU the Collection, LLC or of even the gross moneys earned from the licensing deal. (SOCF ¶ 37). Moreover, because Defendant FUBU the Collection is a member of GTFM, the party that contracted with HGI for license to use Plaintiff's name, likeness, image and player number, Defendant is a third-party beneficiary to the contract between GTFM and HGI. (SOCF ¶ 56). Finally, Defendant has received proceeds and benefits from the willful, reckless and outrageous use and exploitation of Plaintiff's name, likeness, goodwill and notoriety in the District of Arizona. "[N]onresident defendants [must] have certain minimum contacts with the forum state, so that the exercise of personal jurisdiction does not offend traditional notions of fair play and substantial justice." International Shoe Co. v. Washington, 326 U.S. 310, 316, 66 S.Ct. 154, 158 (1945). A court may exercise specific jurisdiction where the defendant's contacts arise out of or have a substantial connection to the defendant's contacts with the forum." Id. In Doe v. American National Red Cross, 112 F.3d

1048, 1051 (9th Cir. 1997), enumerates a three-part test for specific jurisdiction: (1) invoking the benefit or protections of the forum state's laws; (2) the claim must arise out of the contacts; and (3) exercising jurisdiction must be reasonable. The merchandise that is the subject of this lawsuit has been developed, created, produced, manufactured, marketed, promoted, and/or distributed for widespread sale by Defendants. (SOCF ¶ 21-

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22, 41-45). FUBU the Collection, LLC participated in the design and marketing of the clothing line. (SOCF ¶ 41). Daymond Aurum is CEO of FUBU the Collection, LLC and he is in charge of marketing, looking over distribution, and product placement on artists. (SOCF ¶ 42). Before entering into the

contract with HGI, Mr. Aurum, on behalf of FUBU the Collection, LLC, attended meetings regarding the formulation of the clothing line, and approved the idea of the Harlem Globetrotters clothing line because he though it would be a good next step to FUBU's Platinum Line. (SOCF ¶ 43). Mr. Aurum, on behalf of FUBU the Collection, LLC, determined styles of the clothing in the line and marketing as far as what type of advertising should be done. (SOCF ¶ 44). Samples of the clothing line would be looked at by Mr. Aurum, on behalf of FUBU the Collection, LLC, and he would approve or disapprove the various styles. (SOCF ¶ 45). Pursuant to the facts set forth herein, it is clear that Defendants were intimately involved in the HGI/GTFM Apparel and are beneficiaries of sales to the Arizona public in the form of notoriety. Furthermore, Defendants have benefited financially from the sales of the HGI/GTFM apparel, which were sold worldwide, including in Arizona. (SOCF ¶ 36-37). Therefore, there are disputed issues of material fact regarding the exercise of personal jurisdiction over Defendants and summary judgment is not appropriate. IV. CONCLUSION First, Defendants' Renewed Motion for Summary Judgment, which requests dismissal of Defendants as parties to this lawsuit, is unnecessary since Plaintiff has already voluntarily dismissed Defendants. However, even if Defendants are not dismissed as parties, there continue to be disputed issues of material fact regarding whether this Court has personal jurisdiction over Defendants because of Defendants substantial, continuous and systematic contact with the Arizona forum, in the form of marketing, promotion, distribution and sales of products bearing the FUBU name and its possible

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"minimum contacts" related to this controversy. Therefore, summary judgment is not appropriate and Defendants should be dismissed without prejudice pursuant to Plaintiff's previously filed voluntary notice of dismissal.

DATED this

23rd day of November 2005.

By:

/s/ Anders Rosenquist ROSENQUIST & ASSOCIATES 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 DEFENDANTS FUBU THE COLLECTION, LLC'S AND GTFM OF ORLANDO LLC d/b/a FUBU COMPANY STORE'S RENEWED 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

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Attorneys for Plaintiffs Neal, Rivers, Thorton, Hall, Haynes and Sanders 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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