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

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Morgan & Morgan, P. A.th 20 N. Orange Avenue, 16 Floor Orlando, FL 32801 Clay M. Townsend, Esquire Bar No.: 023414 Brandon S. Peters, Esquire Bar No.: 022641 Keith R. Mitnik, Esquire Bar No.: 436127 Attorneys for Plaintiffs UNITED STATES DISTRICT COURT DISTRICT OF ARIZONA

MEADOWLARK LEMON, a married man, 10 Plaintiff, 11 vs. 12 13 14 15 16 17 18 19 HARLEM GLOBETROTTERS INTERNATIONAL, INC., an Arizona corporation; HARLEM GLOBETROTTERS INTERNATIONAL PLAINTIFFS NEAL, RIVERS, THORNTON, FOUNDATION, INC., an Arizona corporation; HALL, HAYNES AND SANDERS' MANNIE L. JACKSON and CATHERINE RESPONSE AND MEMORANDUM OF LAW JACKSON, husband and wife; FUBU THE IN OPPOSITION TO DEFENDANTS COLLECTION, LLC, a New York limited liability HARLEM GLOBETROTTERS, INC., company doing business in Arizona; GTFM, LLC, a HARLEM GLOBETROTTERS New York limited liability company doing business in INTERNATIONAL AND MANNIE AND Arizona; CATHERINE JACKSONS MOTION FOR SUMMARY JUDGMENT Defendants. Case Nos.: CV 04 0299 PHX DGC and CV-04-1023 PHX DGC

FRED "CURLY" NEAL, LARRY "GATOR" 20 RIVERS, DALLAS "BIG D" THORNTON, ROBERT "SHOWBOAT" HALL, MARQUES 21 HAYNES and JAMES "TWIGGY" SANDERS, 22 23 Plaintiffs, vs.

HARLEM GLOBETROTTERS INTERNATIONAL, an Arizona corporation; HARLEM 24 INC., GLOBETROTTERS INTERNATIONAL 25 FOUNDATION, INC., an Arizona corporation; MANNIE L. JACKSON and CATHERINE 26 JACKSON, husband and wife; FUBU THE COLLECTION, LLC, a New York limited liability company, GTFM of Orlando, LLC; and GTFM, LLC, a

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1 New York limited liability company doing business in Arizona, 2 Defendants. 3 HARLEM GLOBETROTTERS INTERNATIONAL, INC., an Arizona corporation, 4 Counter-claimant, 5 vs. 6 MEADOWLARK LEMON, a married man, 7 8 9 10 11 12 13 14 15 16 17 18 19 In support hereof, Plaintiffs rely on Plaintiffs' Statement of Facts in support of Plaintiffs' Motion for 20 21 22 23 24 25 26 27 28 Summary Judgment. (Memorandum Documents #__). Plaintiffs have supplemented those for this PLAINTIFFS FRED "CURLY" NEAL; LARRY "GATOR" RIVERS; DALLAS "BIG D" THORNTON; ROBERT "SHOWBOAT" HALL; MARQUES HAYNES; and JAMES "TWIGGY" SANDERS, (hereinafter "PLAINTIFFS"), by and through their undersigned attorneys, hereby file their Response in Opposition to Defendants' Harlem Globetrotters International, Harlem Globetrotters International Foundation, Inc., and Mannie and Catherine Jacksons' (hereinafter collectively "HGI") Motion for Summary Judgment. FACTS PLAINTIFFS' RESPONSE IN OPPOSITION TO DEFENDANTS' MOTION FOR SUMMARY JUDGMENT Counter-defendant.

Response. There are numberous material issues of disputed facts which Plaintiffs have identified, addressed and attached as an exhibit thereto. (PSOF¶__, "Disputed Facts Asserted by HGI and FUBU). Many "facts" argued by FUBU and HGI are simply immaterial to the Summary Judgment discussion (i.e. the adequacy of Plaintiffs' damages expert). Plaintiffs are retired basketball players who enjoyed distinguished careers both with, and without, the Harlem Globetrotters. They stopped playing with the Harlem

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Globetrotters years before, in some cases decades before, Mannie Jackson bought the team in 1993. (PSOF¶__). SUMMARY OF ANALYSIS First, the Court must determine whether HGI had the rights to Plaintiffs' names. There is

absolutely not a shred of evidence that HGI has proffered showing that HGI was a party to any argument to grant HGI anything. Plaintiffs have moved this Court for Summary Judgment on the issues of liability on

7 8 9 10 11 12 13 14 15 16 17 assets of the "Harlem Globetrotters" in 1993, neither do the reams of detailed documents related to the 18 19 20 21 22 23 24 25 26 27 likenesses for commercial promotion, which the use of pictures in programs for sale at games was granted 28 bankruptcy of the predecessor corporation to HGI. Plaintiffs provide a detailed memorandum as to the effects of the bankruptcy and the HGI purchase agreements of 1993 in their Motion for Summary Judgment. If the Court determines that the above evidence is not sufficient to grant Plaintiffs' motion, then the Court should next look at the old player contracts, and the related documents and the testimony that is essential to ascertaining the intent of the real parties to these agreements. (Again, HGI was never a party even though HGI has misrepresented their status as a "party" in their Memorandum, page__). The evidence is overwhelming that players go paid for endorsements and use of their names and this issue. Next, the Court must determine whether, since there was not express grant of authority to HGI by Plaintiffs, HGI acquired Plaintiffs' publicity rights in another way. HGI'S evidence of a purchase of Plaintiffs rights is limited to a mere inference that HGI bought "all assets" in 1993, but has proffered not one piece of direct evidence that HGI bought the player contracts that Plaintiffs entered into years earlier with other entities unrelated to HGI. The last one of which being extinguished by bankruptcy proceedings. If HGI had any evidence, they would have presented it to the Court. 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 asst scheduled that memorialized HGI'S purchase of the

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to the team owners. The course of dealing (numerous exhibits of payments to Plaintiffs separate from the player contract salary) as well as Collective Bargaining Agreement that confirms this understanding and defines "covered merchandise." The 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 weren't, is unenforceable as there was no consideration and the terms are unconscionable.

7 8 9 10 11 12 13 14 15 16 17 negotiation and execution of the 2002 licensing agreement with HGI. FUBU is a partnership between and 18 19 20 21 22 23 24 25 26 African-American hip-hip entrepreneur (Aurum) and sophisticated Manhattan lawyers (Weisfeld and Blenden), who are no strangers to trademark litigation. They, of all people, understood the risks of doing no due diligence before commercially exploiting a celebrity's mark. The evidence is clear that FUBU made no effort to confirm authority, except to rely on Mannie Jackson's indemnification ­ no consolation to or vindication of Plaintiffs' rights ­ just theirs. These garment trade lawyers designed the "brand" around Plaintiffs, who as "legends" (HIG'S and FUBU'S designations), did more to create the popularity of the Globetrotters brand than FUBU and Jackson ever could. Plaintiffs were, and always will be, the heart of the Harlem Globetrotters. HGI'S lack of authority, the evidence such described above 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. (IS THIS RIGHT, IT SEEMED BACKWARDS IN YOUR NOTES). The evidence that Plaintiffs had a common law trademark interest in their unregistered marks has strong evidentiary support. The rubics cube of the element of secondary meaning and likelihood of confusion become greatly simplified because of the strong evidence of HGI'S intent to use Plaintiffs' marks for their economic advantage. (The authorities holding that the element of intent, when satisfied, renders the complexities of analyzing secondary meaning and likelihood of confusion of little or no importance.) The requisite intent to infringe by FUBU has evidentiary support in the facts surrounding the

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I.

LANHAM ACT CLAIMS

Plaintiffs have satisfied the elements of a trademark infringement claim as described in HGI'S Memorandum on page 3, line 13. At a minimum there are material issues of fact that required denial of the Motion. FUBU'S Motion relies on their false assertion that two prerequisites for a Lanham Act claim under §43(a) have not been met. One, that Plaintiffs' names have not acquired secondary meaning, and two, there

6 7 8 9 10 11 12 13 14 15 16 resulting designs and garments closely associate the Plaintiffs' "brands" with the FUBU and HGI "brands", 17 18 19 20 21 22 23 24 25 26 HGI makes a weak argument that Plaintiffs entered into licensing agreements decades earlier, but any prior 27 28 contracts of Plaintiffs are immaterial and irrelevant as they were entered with companies unrelated to HGI, -2Created by Neevia docuPrinter LT trial Case 2:04-cv-00299-DGC Document 238-3version 11/21/2005 Page 5 of 35 Filed http://www.neevia.com clearly suggesting an endorsement of FUBU by the Plaintiffs. 1. PLAINTIFFS' OWNERSHIP OF UNREGISTERED MARKS ARE PROTECTED Section 43(a) of the Lanham Act provides protection for unregistered marks, which can be "names, symbols, (or a) combination thereof." First, Plaintiffs own their own names. Plaintiffs never signed any agreement with Mannie Jackson or HGI ever. HGI asserts at III of their Motion that "Plaintiffs licensed the right to Defendants." 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 Motion use "HGI" and "Harlem Globetrotters" interchangeably, but HGI is not related to the entities that employed Plaintiffs years ago.) is no evidence of likelihood of confusion between Plaintiffs' marks and marks used by FUBU. FUBU asserts that FUBU'S prominent display of Plaintiffs' names and numbers (and in Neal's case, his face) 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). Plaintiffs' names, numbers and likenesses convey to consumers, not only an endorsement of the Harlem Globetrotters, but separately, an endorsement of FUBU. Plaintiffs certainly know of and acknowledge past association with the Harlem Globetrotters, but never with FUBU. The FUBU licensing agreement specifically states

FUBU'S desire to combine their FUBU marks with those of the Harlem Globetrotters and the players. The

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the last one of which ending in bankruptcy. Second, Plaintiffs names and numbers, individually and combined, are protectable marks because they have acquired secondary meaning. That is, even though Plaintiffs' names are unregistered trademarks, they are afforded protection as their names have come to be associated with themselves to such an extent as they constitute a protectable trademark. FUBU'S reliance on Yellow Cab Company of Sacramento v. Yellow Cab of Elk Grove, Inc., 419 F.3d 925 (9th Cir. 2005) supports Plaintiffs' as the Yellow Cab court held that secondary meaning is a fact issue of the jury and reversed the

7 8 9 10 11 12 13 14 15 16 17 Plaintiffs satisfy the four factors used to evaluate the sufficiency of evidence of secondary meaning 18 19 20 21 22 23 24 25 26 27 28 -3Created by Neevia docuPrinter LT trial Case 2:04-cv-00299-DGC Document 238-3version 11/21/2005 Page 6 of 35 Filed http://www.neevia.com b) described in Japan Telecom, Inc. v. Japan Telecom America, Inc., 287 F.3d 866, 873 (9th Cir. 2002). a) Association ­ meaning, the product (i.e. clothes bearing Plaintiffs' names), associating 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 prove this with self-serving, expensive surveys ­ HGI and FUBU themselves made the association. 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. courts' summary judgemnet5, even 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 today's Lanham Act, once an individual's name has acquired a secondary meaning in the marketplace, a secondary user must take reasonable precautions to prevent a mistake. Yarmouth-Dion, Inc. v. D'ION Furs, Inc., 835 F.2d 990 (2d Cir. 1987), also cited by FUBU. The evidence is so overwhelming that this Court could lawfully take judicial notice that Plaintiffs' names have acquired secondary meaning: Plaintiffs are who they say they are and any use of their names is inherently suggestive of an association with or endorsement by them ­ even if FUBU makes and sells a jersey in the far away Philippines. (PSOF¶__, Plaintiffs' Profiles).

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c)

The length and manner of Plaintiffs' marks are some of the most sustained and intense in sports marketing (Exhibit "", Plaintiffs' Profiles). Use of Plaintiffs' marks has been exclusive to themselves and to a limited number of users ­ the Harlem Globetrotters entities prior to HGI being one of the few Plaintiffs have used their names for decades without interruption or cease and desist demands from HGI or any predecessor entities. Uses included utilizing their names and likenesses for appearances, endorsements, charitable events, performing for other basketball teams besides the Harlem Globetrotters. FUBU cites to a four prong test laid out in Japan Telecom v. Japan Telecom America, Inc., 287 F.3d 866

d)

(9th Cir. 2002). Yellow Cab at FN3 notes that in Japan Telecom the only evidence was a "few misdirected mailing which were ambiguous as to secondary meaning." FUBU asserts in their Motion (Motion page 12, 1.1), that Plaintiffs have "failed to adduce any evidence," and (almost comically), that "plaintiffs do not have any public recognition" (Motion page 12, 1.2). Plaintiffs have discovered evidence of ____ FUBU style numbers bearing Plaintiffs' marks on the garments, the hangtags or both. (PSOF¶__). FUBU'S Motion should be denied as there is a dispute of material fact as to FUBU'S "two prerequisites." 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) (Headnote 1690). It is the function of the jury, not of the Court, to weigh conflicting evidence and judge the credibility of witnesses. Transgro, Inc. v. Ajac Transmission Parts Corporation, (don't have full cite). 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) (Headnote 1032). FUBU harps that Plaintiffs were "not engaged the licensing of their names". (FUBU Memorandum, p. 7, line 18). But, whether or not Plaintiffs were to continue marketing their marks is irrelevant. Some celebrities cease to care. This "fact", despite FUBU'S rantings, is immaterial for the purposes of summary judgment, and, like other assertions (i.e. Plaintiffs' expert report), should not be considered. Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986). It is FUBU and HGI themselves that are the font of evidence that -4Created by Neevia docuPrinter LT trial Case 2:04-cv-00299-DGC Document 238-3version 11/21/2005 Page 7 of 35 Filed http://www.neevia.com

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Plaintiffs indeed have had, and still have "public recognition," and thus their names have acquired the necessary secondary meaning. Of the estranged 500 former players, (Jackson Tr. p.__), FUBU chose Plaintiffs over all the others. FUBU chose to prominently feature Plaintiffs' names and player numbers on their clothing (Weisfeld Tr. p.__, Blenden Tr. p.__). This decision was because Plaintiffs are well known sports celebrities (Weisfeld Tr. p.__, Blenden Tr. p.__). Even assuming that Plaintiffs' personal names are "descriptive marks" (FUBU Memorandum, p. 10,

7 8 9 10 11 12 13 14 15 16 17 example, the number "3" means little to most people, but in the NASCAR context it is equivalent to `the 18 19 20 21 22 23 24 25 26 27 identities. 28 -5Created by Neevia docuPrinter LT trial Case 2:04-cv-00299-DGC Document 238-3version 11/21/2005 Page 8 of 35 Filed http://www.neevia.com holy grail' as has an association with Dale Earnhart, because it was his number.) Plaintiffs' numbers have become equivalent to their identities. After all, Plainitiffs are basketball players and players' 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 and Meadowlark Lemon's numbers have been retired by the Globetrotters. (Vaughn Tr.__). The 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. (Vaughn Tr.__). Plaintiffs' numbers intertwined with Plaintiffs' line 25), it is clear under the Ninth Circuit authority on which FUBU relies that a name acquires 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 himself admits that their own valuable mark "FUBU the Collection" is an unregistered common law owned by his sophisticated client, Defendant GTFM, Inc., and is used, according to their website, in untold millions in clothing sales. (Exhibit ""). One would guess FUBU believes it owns a protectable mark. FUBU maintains that Plaintiffs have no protectable mark in their player numbers even though closely associated with, and used in combination with, their names. Plaintiffs believe that their numbers, which when used in this context with Harlem Globetrotters, have secondary meaning. (For

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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 court pointed out that appropriation of the incidents of identity are enough to take a right of publicity claim to the jury, noting 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 appropriate his identity by using a phrase associated with him, (i.e. "Here's Johnny"). White at [3], citing Carson. This view of protectable mark was broadened to contemplate commercial interstate which the right of publicity was denied to protect. 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 ""). This hangtag was to market FUBU clothing, much of which bore Plaintiffs' names with their respective numbers. It is important to note that Plaintiffs' numbers were used on non-traditional, nonathletic garments, such as tee shirts, skirts and dresses. (Exhibit ""). The only conceivable enhancement these numbers could provide for such garment is the association with Plaintiffs ­ a Globetrotter garment bearing the number "22" would be indicative of Fredric "Curly" Neal. Why else would merchants in the

18 19 20 21 22 23 24 25 26 27 28 -6Created by Neevia docuPrinter LT trial Case 2:04-cv-00299-DGC Document 238-3version 11/21/2005 Page 9 of 35 Filed http://www.neevia.com huge market of athletic team garments place the number as well as the name on the jersey? Buyers want a "32" on their Shaq O'Neal garment just as buyers want a "22" on their `Curly' Neal jersey. Lastly, 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 protected their investment. That is, it is inconsistent and hypocritical to argue "HGI and FUBU are selling millions in clothing bearing protectable unregistered marks," then argue the same marks are not susceptible of protection when Plaintiffs assert a right to them. Presumably, FUBU would have spent a lot of money litigating the protectability of "Curly Neal 22" on FUBU clothes, just as they did for the "OJ"

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mark. Now that Plaintiffs assert a right, they assert that the Lanham Act provides no protection ­ an assertion they should be estopped from making. 2. UNAUTHORIZED USE BY THE DEFENDANTS The use of Plaintiffs' names, numbers and images by HGI, and their licensee FUBU, was unauthorized by Plaintiffs. 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. FUBU records show at least _____ tee shirts alone made

7 8 9 10 11 12 13 14 15 16 17 element, which boils down to a question of whether reasonable people (i.e. a jury) would believe, based on 18 19 20 21 22 23 24 25 26 27 28 -7Created by Neevia docuPrinter LT trial Case 2:04-cv-00299-DGC Document 238-3 version 11/21/2005 Page 10 of 35 Filed http://www.neevia.com 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. Movants misconstrue the test. Subsets of the eight factors are adequate, and depending on the case, some factors may be irrelevant or not addressed at all, but may still be sufficient to avoid summary judgment. Plaintiffs satisfy the likelihood of confusion test cited to by HGI from AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 (9th Cir. 1979) after the factors are balanced. There is ample record evidence that the prominent use of Plaintiffs' names on HGI/FUBU clothes was FUBU'S marketing idea and was intended to suggest association, approval or endorsement by Plaintiffs. with Curly Neal's face. (Exhibit ""). This issue hinges entirely on the status and interpretations of the "contracts". 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 (Jackson Tr. P__: $100 million; Weisfeld Tr. P__: $30 million). It was also clearly interstate according to FUBU sales documents. (Exhibit ""). 4. LIKELIHOOD OF CONFUSION HGI'S and FUBU'S use is likely to cause confusion. HGI posits the eight factor test for this

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Evidence of actual confusion is not required to prove the likelihood of confusion. Centaur Communications, Ltd v. A/S/M/ Communications, Inc., 830 F.2d 1217 (2nd Cir. 1987) (Headnote 1086/Shepardize). 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. The eight factor test has apparently a variation of other decisions where fewer factors satisfy the test to determine association. Abdul-Jabbar v. General Motors Corporation, 85 F.3d 407 (9th Cir. 1996)[12]. (Using seven factors, and omitting factor eight (8) - the factor of likelihood of expansion of product lines in Sleekcraft), Park n' Fly, Inc. v. Dollar Park n' Fly, Inc., 782 F.2d 1508 (9th Cir. 1986). (Uing five factors)[2][3][4]. In Abdul-Jabbar, the court noted that the parties disputed the applicability of the factors, but held that a jury could reasonably conclude that most of the factors weighed in the plaintiff's favor, thus the Lanham Act claim was question for the jury. Abdul-Jabbar at [12]. Recently, in M2 Software, Inc. v. Madacy Entertainment, 421 F.3d 1073 (9th Cir. 2005), the Ninth Circuit articulated the test at [2][3][4]:

18 19 20 21 22 23 24 25 26 27 28 -8Created by Neevia docuPrinter LT trial Case 2:04-cv-00299-DGC Document 238-3 version 11/21/2005 Page 11 of 35 Filed http://www.neevia.com "The test of trademark infringement under state, federal, and common law is whether there will be a likelihood of confusion. See Cleary v. News Corp., 30 F.3d 1255, 1262-63 (9th Cir. 1994). To determine whether there is a likelihood of confusion between the parties' allegedly related goods and services, we consider the following eight Sleekcraft factors: (1) strength of the mark; (2) proximity of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to be exercised by the purchaser; (7) defendant's intent in selecting the mark; and (8) likelihood of expansion of the product lines. See AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979)." (Footnotes omitted).

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The court in M2 Software also stated at [5]: "Some Sleekcraft factors `are much more important than others, and the relative importance of each individual factor will be case specific.' Brookfield, 174 F.3d at 1054. In essence, `(t)he test for likelihood of confusion is whether a `reasonably prudent consumer' in the marketplace is likely to be confused as to the origin of the good or service bearing one of the marks.' Dreamworks Prod. Group, Inc., 142 F.3d at 1129." Furthermore, it is not error for this Court to choose a different test than Sleekcraft's eight factors. Interstellar Starship Services, Limited v. Epix Incorporated, 184 F.3d 1107 (9th Cir. 1999), where the district court used the six factor test of Century 21 Real Estate Corporation v. Sandlin, 846 F.2d 1175 (9th Cir. 1988), as long as evidence on the record would permit a rational fact-finder to find a likelihood of confusion. 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.

15 16 17 18 19 20 21 22 23 24 25 26 27 28 -9Created by Neevia docuPrinter LT trial Case 2:04-cv-00299-DGC Document 238-3 version 11/21/2005 Page 12 of 35 Filed http://www.neevia.com 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 can be proved circumstantially without surveys and consumer testimony. Frosty Treats, Inc. v. Sony Computer Entertainment America, Inc., 426 F.3d 1001 (8th Cir. 2005). FACTOR 1: Strength of Plaintiffs' Marks Fanciful, arbitrary and suggestive trademarks are 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). But FUBU asserts that Plaintiffs' names are descriptive and have no protection. 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

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"arbitrary" (i.e. common words arranged in an arbitrary way that is non-descriptive) and have acquired secondary meaning. (THESE LAST TWO SENTANCES I AM UNSURE IF THEY ARE IN THE RIGHT ORDER? CHECK EDITS) J. Thomas McCarthy in McCarthy on Trademarks and Unfair Competition §7:15 (4thEd. 2005), acknowledges that ordinary descriptive words, when combined (i.e. with numbers), present an arbitrary composite mark. The problems that any hypothetical "Mr. Neal" may have in his mark "Neal's Café" are not a problem for "Curly" Neal "22" on a basketball jersey. "Curly" Neal is a very strong

7 8 9 10 11 12 13 14 15 16 17 FACTOR 4: Evidence of Actual Confusion 18 19 20 21 22 23 24 25 26 27 28 -10Created by Neevia docuPrinter LT trial Case 2:04-cv-00299-DGC Document 238-3 version 11/21/2005 Page 13 of 35 Filed http://www.neevia.com The courts have held that this element of analysis if disposed of if intent (Factor 7) is shown. CITATION. 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, only surveys of consumers showing likelihood), also citing Clicks Billiards and Levi Srauss. Surveys utilized to show "actual confusion" are helpful to show that a consumer believes a product made by one company actually originated from another. (I.e. Trek bikes came from "Obitrek," or "Park n' Fly, Inc." is the same company as "Dollar Park n' Fly, Inc."). mark. FACTOR 2: The Proximity or Relatedness of Good to Plaintiffs' Marks FACTOR 3: The Similarity of the Plaintiffs' Marks and the Marks Used by HGI/FUBU "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.

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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." Here, 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 manufactured them, not HGI and FUBU. Likelihood of confusion

7 8 9 10 11 12 13 14 15 16 17 citing Eclipse Associates, Ltd. v. Data General Corp., 894 F.2d 1114, 1118 (9th Cir. 1990). 18 19 20 21 22 23 24 25 26 27 reliable. The Thane court noted that even the extensive (and expensive) survey conducted by plaintiff had 28 -11Created by Neevia docuPrinter LT trial Case 2:04-cv-00299-DGC Document 238-3 version 11/21/2005 Page 14 of 35 Filed http://www.neevia.com 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 ("Trek" v. "Orbitrek") and relatedness of the products (bicycles v. exercise machines) were so weak that a jury could not reasonably find likelihood of confusion. That is, evidence of confusion is to be balanced with other factors. Here, the dearth of "actual evidence" asserted by FUBU (Motion at p.__) is, even if true, only one factor which is far outweighed by the strength of the other factors (i.e. the marks are identical ­ "Haynes" name is "Haynes" on the FUBU jerseys). The strength of the other factors is compelling as evidence of "actual confusion" is not always here means that a consumer is likely to believe that Plaintiffs endorsed or are associated with the product. Celebrities generally license or endorse merchandise, not manufacture it. A survey of thousands of people on the street is an unnecessary exercise where it is clear that HGI and FUBU intended to a) use Plaintiffs' marks and b) convey to buyers an association with Plaintiffs as a positive marketing tool. 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. Defendant's intent and the other factors in varying degree carried the day. White at [6]. In fact, the White court stated "none of these tests is correct to the exclusion of the others,"

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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 are not only similar (factor two of the test), the marks are identical. FUBU themselves successfully sued to protect their unregistered mark "05" used on sports jerseys, arguing that "05" had acquired secondary meaning. FUBU counsel's (Sacks) former partner, (Gurky's firm) presented NO evidence of actual confusion to the court (FUBU in yet another inconsistency, complains that

7 8 9 10 11 12 13 14 15 16 17 Steelcraft factors were, but cited from Polaroid Corp. v. Polaroid Elec. Corp. 287 F.2d 492 (2d Cir. 1961), finding 18 19 20 21 22 23 24 25 26 27 product field. 28 -12Created by Neevia docuPrinter LT trial Case 2:04-cv-00299-DGC Document 238-3 version 11/21/2005 Page 15 of 35 Filed http://www.neevia.com that the eight relevant factors were "non-exhaustive", and that "no one factor is necessarily dispositive, and any one factor may prove to be so," and that "it is not a mechanical process, (but) rather a court should focus on the ultimate question of whether consumers are likely to be confused." Id at [11]. FUBU does not believe Plaintiffs' unregistered marks in the player numbers associated with them for decades should be provided the same protections that FUBU enjoyed and litigated in their "05" mark. Surely, FUBU would agree, given their position in the GTFM case, that Plaintiffs' numbers have 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 the court's decision of secondary meaning in a particular 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 established that `actual confusion' need not be shown to prevail under the Lanham Act." 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. Still, 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]. The factors used in the GTFM case are essentially the same as the eight

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FACTOR 5: Marketing Channels Used The FUBU licensing agreement governs the marketing channels for the Globetrotter line. (Exhibit ""). 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 off the back of a truck, a reasonable person would question, not be confused by, the association.

7 8 9 10 11 12 13 14 15 16 17 FACTOR 7: HGI/FUBU'S Intent in Selecting Plaintiffs' Marks 18 19 20 21 22 23 24 25 26 27 not have been hard: call Marques Haynes and ask, or get his contract out of the warehouse. But instead 28 -13Created by Neevia docuPrinter LT trial Case 2:04-cv-00299-DGC Document 238-3 version 11/21/2005 Page 16 of 35 Filed http://www.neevia.com 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 and Lemon's cases, likenesses. FUBU designed and made the garments and, under the licensing agreements, Jackson and HGI had approval authority (Weisfeld Tr.__). The intended use was to, of course, make money. HGI'S reckless disregard of Plaintiffs' rights, given the knowledge and experianc eo fhtese Manhatan lawyers, constitutes willful infringement. Their ill intent borders on fraud. 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 effort would FACTOR 6: Type of Goods and Degree of Care Exercised by Purchaser The ability of a consumer to distinguish between a product with a genuine mark and a product with an infringing mark is a factor as, theoretically, a sophisticated consumer who sees "Showboat" Hall on, say, flea market flip-flops, not likely to be confused as to the false source or association of the atypical product. Here, high quality FUBU jerseys, which also bear the Harlem Globetrotters logo are highly likely to believe that "Showboat" is associated with, or endorsed, the goods. When the clothes are sold at Macy's, Sears, and even Marshalls, the public, no matter how "sophisticated", reasonably believes that Plaintiffs are associated (hence the confusion) with the corporations. (FUBU sales records evidence these retailers and other "legitimate" outlets. Exhibit "").

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they chose to barrel ahead and, if Plaintiffs ever objected, just indemnify, hoping to buy off Plaintiffs with a small check AFTER they threatened to sue. FUBU has been a defendant numerous times in garment industry disputes as a trademark infringer ­ that is, use it and litigate later. The "intent" factor is so strong that where intent is shown, inference of likelihood of confusion is readily drawn, and the burden may be shifted to an infringer to show that there was no confusion. This is because likelihood of confusion is a given where it is clear that the defendant intended to use Plaintiffs'

7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -14Created by Neevia docuPrinter LT trial Case 2:04-cv-00299-DGC Document 238-3 version 11/21/2005 Page 17 of 35 Filed http://www.neevia.com 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 a "22" and "Curly" on a jersey was an irrelevant factor in consumers' decisions to buy 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). [FN12] [F12]. This shifting of the burden has been most succinctly stated in the following fashion: But when (the intent to confuse) appears, we think that it has an important procedural result; the late comer who deliberately copies the dress of his competitors already in the field, must at least prove that his effort has been futile...He may indeed succeed in showing that it was; that, however bad his purpose, it will fail in execution; if he does, he will win...But such an intent raises a presumption that customers will be deceived. My-T-Fine Corp. v. Samuels, supra 69 F.2d at 77."

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the garment. (Again, it was FUBU and HGI that decided it was advantageous to display Plaintiffs' names on the clothes and hangtags.) The Ninth Circuit has also held, in applying the Sleekcraft eight factors test, that in order to raise the inference of a likelihood of confusion, a plaintiff must show that the defendant intended to profit by confusing customers. Toho Company, Ltd. v. Sears Roebuck and Company, 645 F.2d 788 (9th Cir. 1981) [1][2], FN2, citing HMH Publishing Company. In Fuddruckers, Inc. v. Doc's B.R.Others Inc., 826 F.2d 837, (9th Cir. 1987) the court noted: [16][17] "Evidence of actual confusion is persuasive proof that future confusion is likely. (cases cited). A showing that the defendant intended to adopt the plaintiff's trade dress is *846 also "entitled to great weight because a defendant is presumed able to accomplish this purpose." [FN11] Golden Door, 646 F.2d at 351 (citing AMF, 599 F.2d at 354); see M. Kramer Mfg. Co., 783 F.2d at 448 n. 24 (courts almost unanimously presume a likelihood of confusion based on a showing of intentional copying) (citing 2 McCarthy at §§23:34-35)); see also SnoWizard Manufacturing co. v. Eisemann Products Co., 791 F.2d at 704); but see Lois Sportswear, USA, Inc. v. Levi-Strauss and Co., 799 F.2d at 867, 875 (2d Cir. 1986) ("intent is largely irrelevant in determining if consumers likely will be confused as to source"). Fuddruckers presented credible evidence of both actual confusion and intent to copy. FN11. We have said that evidence of intent to exploit the plaintiff's goodwill shifts the burden to the defendant to prove no likelihood of confusion. HMH Publishing Co. v. Brincat, 504 F.2d at 713, 720 (9th Cir. 1974). However, this formulation has not been repeated in later cases. It may be that the shifting burden only applies when the evidence demonstrates that the defendant intended to exploit, rather than merely to copy. See Toho Co. v. Sears, Roebuck and Co., 645 F.2d at 788, 791 n.2 (9th Cir. 1974)." A trademark infringement plaintiff can prevail without proving intent to deceive, but if plaintiff can prove intent, the courts can then presume that the public will be deceived. Airline Guides, Inc. FUBU and HGI intended to use Plaintiffs' names, numbers (and in Neal's case, likeness). FUBU designed the

infringing goods, (PSOF¶__), and HGI had the right to approve them. (PSOF¶__). HGI actually had

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samples at their offices that had, at least, Meadowlark Lemon's name on the samples which HGI approved. (Vaughn Tr.__). 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. FUBU'S and HGI'S direct statements are relevant to their intent to use Plaintiffs' marks. In Entrepreneur, the court found relevant but limited evidence of intent favorable but placed the intent factor fourth in importance and concluded that a

7 8 9 10 11 12 13 14 15 16 17 (PSOF¶__). 18 19 20 21 22 23 24 25 26 27 28 -16Created by Neevia docuPrinter LT trial Case 2:04-cv-00299-DGC Document 238-3 version 11/21/2005 Page 19 of 35 Filed http://www.neevia.com 5. FACTOR 8: Likelihood of Expansion of Product Channels This factor is not relevant to the analysis and should be given no weight either way. DISGORGEMENT OF PROFITS FUBU and HGI assert that Plaintiffs are not entitled to profits because a) they have no protectable mark, and b) the profits must be shown with reasonable certainty. The first issue is argued infra. The second is not a ground for summary judgment. Also, there are pending motions as to striking Plaintiffs' expert, which Plaintiffs have briefed. In sum, FUBU'S arguments are directed to the weight of the expert's evidence, not its admissibility, and should not be so directed for summary judgment. Section 35(a) of the 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]. HGI and FUBU admit that they did not have Plaintiffs' consent to begin making infringing clothes. (PSOF¶__). HGI asserts that they "believed" they had the right, (Motion p. 18, line 8), even though Jackson bought the team in 1993 and never once made a phone call or had an attorney render an opinion to confirm authority before licensing to FUBU in 2002. (PSOF¶__). (HGI cites to testimony that Plaintiffs and Jackson were "friends"). According to FUBU, Plaintiffs' rights could not be confirmed as player contracts were unavailable due to the bankruptcy. (Weisfeld Tr.__). That is, HGI never even had Plaintiffs' contracts and recklessly looks at a "sample" contract, which was irrelevant to Plaintiffs' rights and understandings(??).

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Lanham Act 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). HGI and FUBU intended to trade on Plaintiffs' names and did. Furthermore, HGI'S and FUBU'S failure to do ANY due diligence as to Plaintiffs' legal rights makes their infringement willful. The evidence is clear that, despite numerous lawyers and accountants hired by Mannie Jackson, no one called Plaintiffs to confirm contracts, and no one looked at any contracts. In fact, according to attorneys for the seller ­

7 8 9 10 11 12 13 14 15 16 17 for sales where "the ability to identify style numbers and dates of sale rested exclusively with the defendant, 18 19 20 21 22 23 24 25 26 27 Plaintiffs' names were designed on elaborate "CADS" and assigned style numbers, he could not confirm 28 -17Created by Neevia docuPrinter LT trial Case 2:04-cv-00299-DGC Document 238-3 version 11/21/2005 Page 20 of 35 Filed http://www.neevia.com 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 speculation in calculating damages." Id. at [31]. Plaintiffs agree with FUBU'S argument in the GTFM case. 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 Section 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 Natwest Bank ­ the subject of Plaintiffs' player contracts never came up. (Horton Tr.__). Jackson's investors never brought them up, (Jackson Tr.__), even though Jackson wrote in a letter to Plaintiffs that the rights were important to the investors (PSOF¶__). Clearly this is not true. In a case where foreign wine producers failed to get a legal opinion as to likelihood of confusion 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 in the GTFM case argued to the New York court that FUBU was entitled to the infringers' profits under the Section 35(a) of the Lanham Act, including profits from sales of "unknown garments" and

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whether the garment was EVER made. (Weisfeld Tr.__). So much for Plaintiffs expert report being "unreliable" and "speculative".

II. COMMON LAW RIGHT OF PUBLICITY
1) Arizona provides a remedy for Plaintiffs; 2) HGI asserts contract rights but ignores the choice of law provisions therein; 3) HGI moved these claims to Arizona for judicial purposes. FUBU states it is

6 7 8 9 10 11 12 13 14 15 16 part, of course being the right of publicity - appropriation of name or likeness for the defendant's 17 18 19 20 21 22 23 24 25 26 Section 44-1452, Arizona Statutes (2005). 27 28 -18Created by Neevia docuPrinter LT trial Case 2:04-cv-00299-DGC Document 238-3 version 11/21/2005 Page 21 of 35 Filed http://www.neevia.com advantage.) Prosser Privacy, 48 Calif.L.Rev. 383 (1983), also cited in Godbehere at 338. The Godbehere court states that Restatement §625E is recognized in Arizona for articulation of the tort of false light invasion of privacy. The Restatement also articulates the common law right of publicity. Restatement (Second) Torts §652C (year ­ check this). 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 "unclear whether Arizona even recognizes a common law right of publicity," (Motion, 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. But the right is not unclear at all. 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

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FUBU'S assertion that this area is "unclear" is deceptive, given that the federal district court in Arizona has recognized a professional golfer's claim for invasion of the right of publicity in Pooley and cites the Restatement and Prosser. And, more shockingly, 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 "interpret the Eastwood factors" as FUBU disinguously states (Motion, p. 19, line 26), the court "applied" the Eastwood elements. Pooley at [2].

7 8 9 10 11 12 13 14 15 16 HGI takes an untenable position in desperately asserting old player contracts as a defense. But the 17 18 19 20 21 22 23 24 25 26 The applicability of decade old player contracts to Plaintiffs' claims is a factual dispute for the jury. 27 28 The evidence shows that Plaintiffs' player contracts were not the authority HGI relied on in entering the -19Created by Neevia docuPrinter LT trial Case 2:04-cv-00299-DGC Document 238-3 version 11/21/2005 Page 22 of 35 Filed http://www.neevia.com contracts are of no avail: 1) HGI did not buy the contracts; 2) they were extinguished in bankruptcy; 3) they 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, and the law of various jurisdictions in the choice of law provisions. In sum, there are numerous issues of fact regarding their relevance and enforceability which preclude summary judgment. The evidence is so overwhelmingly 1. THE CONTRACTS Worse, FUBU asserts that Plaintiff cannot disgorge FUBU profits and cited to the requisite Pooley element of "resulting injury." But Pooley relies on the Restatement, which is clear that a plaintiff's injury is measured by either "pecuniary loss to the other caused by the appropriation or for the actor's own pecuniary gain resulting from the appropriation, whichever is greater," see §49 of the Restatement (Third) of Unfair Competition, defining damage relief for violations of §46 claim of right of publicity and cited by Pooley at [2]. FUBU'S Motion should be denied because their authorities actually support Plaintiffs' claims.

III.

ESTOPPEL/LACHES

favorable to Plaintiffs that Plaintiffs have moved for summary judgment. HGI should be estopped from asserting the contracts as a defense. At a minimum, there are numerous issues of material fact as to the applicability and interpretation of the contracts.

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FUBU licensing agreement. (PSOF¶__). The player contracts were not even looked at (Jackson Tr. p.__) as they were in storage due to previous bankruptcy (Blenden Tr. p.__). Jackson states they looked only at the "sample contracts" before entering into the FUBU deal exploiting Plaintiffs' names. (Jackson Tr. P.__). HGI continues to refer to Plaintiffs' contracts, and all player contracts as "standard". This is patently false. It is clear that the player contracts are anything but standard ­ i.e. Haynes is not assignable (Exhibit ""), Neal's provides for a 75% royalty on merchandise (Exhibit ""). Each Plaintiff contract

7 8 9 10 11 12 13 14 15 16 17 deposition and upon Jackson's sale of the Harlem Globetrotters. (Exhibit ""). 18 19 20 21 22 23 24 25 26 27 turn over any contracts, stating that Plaintiffs had "contractually granted HGI the perpetual and exclusive 28 -20Created by Neevia docuPrinter LT trial Case 2:04-cv-00299-DGC Document 238-3 version 11/21/2005 Page 23 of 35 Filed http://www.neevia.com 2. HGI 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 Platintiffs marks as: A: HGI DID NOT BUY THE CONTRACTS. Plaintiffs have briefed this issue in their Motion for Summary Judgment. (Memorandum Doc__). HGI has no evidence that Plaintiffs' contracts were purchased by him in 1993 ­ they are not referenced in any document related to the sale, and in fact are conspicuously absent from a schedule of specific player contracts assigned. (Before Plaintiffs sued HGI, HGI counsel Garvey wrote to Plaintiffs and refused to contains different choice of law provisions which, even if Arizona law provides no remedy (which it does), provide a remedy to Plaintiffs. If HGI relies on a purported grant of licenses in these contracts, HGI necessarily subjects itself to: a) the choice of law provision, and; b) the collective bargaining agreements granting guaranteed royalties to Plaintiffs and all Globetrotter players. 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 would "expect a check" as well. (Exhibit/Dunbar Tr.__). So much for HGI'S assertions that players are not entitled to monies from merchandise sales. Plaintiffs note that Dunbar was terminated after his

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right...: (Exhibit ""), but Plaintiffs never contracted with HGI for any purpose. Mannie Jackson proposed employment contracts to Neal and Lemon, (Exhibit ""), which were declined. For all of Mannie Jackson's emphasis on controlling the "brand", 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 "").

7 8 9 10 11 12 13 14 15 16 17 were ever part of a previous purchase from IBC of the Harlem Globetrotters, Inc., a Delaware Corporation. 18 19 20 21 22 23 24 25 26 27 28 -21Created by Neevia docuPrinter LT trial Case 2:04-cv-00299-DGC Document 238-3 version 11/21/2005 Page 24 of 35 Filed http://www.neevia.com In fact, Plaintiffs have presented evidence that the final bankruptcy order extinguished any purported rights in any executory contracts not specifically scheduled, and as such, Plaintiffs' contracts were never mentioned. C: HGI HAS UNCLEAN HANDS HGI has unclean hands as it has from Plaintiffs' first inquiry to their Memorandum, asserted that all the contracts are "standard" which is simply false. Jackson testified he had never seen Curly Neal's contract when he bought the team in 1993, or when he licensed away Neal's name in 2002. (Jackson Tr.__). HGI conducted absolutely no due diligence relative to locating, interpreting, legally analyzing or discussing with Later in 2002, Jackson proposed an ambassador(??) contract to "Curly" Neal and snuck in the old 12(a) provision, which would have given HGI rights to Neal's name in perpetuity, but Neal caught it and refused to sign it. (Exhibit ""). Had Neal signed the contract, it would have been the ONLY grant of such rights by any of the Plaintiffs to HGI. There are no agreements between Plaintiffs and HGI. The prevision proposed to Neal is unconscionable and the effort tot have him agree to it was an underhanded attempt to steal a valuable brand at no cost. (Plaintiffs note that there was no consideration offered in the proposed agreement for Neal's name. Exhibit ""). B: HGI'S PREDECESSOR/ASSIGNOR DID NOT OWN OR ASSIGNE THE CONTRACTS HGI has presented no evidence in their Motion for Summary Judgment that Plaintiffs' contracts

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Plaintiffs terms thereof UNTIL the filing of their lawsuit, and attorney Garvey refused to produce any contracts to Plaintiffs, leaving Plaintiffs no choice but to sue. D: THE COLLECTIVE BARGAINING AGREEMENT SUPERCEDED THE CONTRACTS HGI has made the outrageous choice to not even mention these agreements to this Court ­ an omission of a determinative material fact which is sanctionable. (THIS WAS MOVED FROM PAGE 17 ­ IS THIS CORRECT?) The Collective Bargaining Agreements also 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: "This Agreement shall be automatically renewed from year to year for one (1) year periods after August 31, 1986 unless either party gives written notice." (CBA Article 16.1) · The Collective Bargaining Agreement is "minima" and supercedes the standard player contract. "(T)he provisions set forth in this Agreement are intended solely as minima, (and) no such term, condition or provision shall be inconsistent with and less favorable to the Employee concerned than a specific provision of this Agreement." (Article II, Section 2.1). · The guaranteed royalties under CBA Article 14.12 (Merchandising Payments) state: "Notwithstanding the rights of the Company granted pursuant to an Employee's individual contract, the following shall apply with respect to the use of an Employee's name, nickname, signature facsimile, and identifiable portrait, picture, likeness or recorded voice, on articles of merchandise manufactured, or licensed for manufacture, by the Company, for sale to the public ("covered merchandise") (emphasis added). · "Covered merchandise" exclusions are clear: "`Covered merchandise', as used herein,

excludes publications, yearbooks, signed photographs, items of the type sold at games, television and radio programs, films, and the like." (CBA Article 14.12) · The royalty rate (repeatedly called speculative by HGI) is clear: "(W)here merchandising agreement involves the use of the name, nickname, signature facsimile, and identifiable portrait, picture, likeness or recorded voice, of no more than two (2) Employees on all -22Created by Neevia docuPrinter LT trial Case 2:04-cv-00299-DGC Document 238-3 version 11/21/2005 Page 25 of 35 Filed http://www.neevia.com

26 27 28

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`covered merchandise' sold, or licensed for sale, pursuant there to, paymentof the aforesaid twenty-five percent (25%) of `net merchandising revenues' attributable to such agreement shall be made only to such Employee(s)." (CBA Article 14.12) HGI has completely ignored in their Memorandum the existence of Collective Bargaining Agreements which superceded "standard" player contracts and guaranteed 25% royalties to players. Jackson admitted that he knew about the agreements (Jackson Tr.__) but had never read or had no understanding of

7 8 9 10 11 12 13 14 15 16 17 "brands". When one even thinks of the Globetrotters, one thinks of Meadowlark and Curly ­ FUBU'S 18 19 20 21 22 23 24 25 26 27 2002). The first predecessor to HGI, Harlem Globetrotters, Inc., a Delaware Corporation, never used 28 -23Created by Neevia docuPrinter LT trial Case 2:04-cv-00299-DGC Document 238-3 version 11/21/2005 Page 26 of 35 Filed http://www.neevia.com witnesses could not name a single current player. (PSOF¶__). E: HGI ABANDONED THE MARKS 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. its effect on Plaintiffs' rights (Jackson Tr.__), even though Jackson's attorney Garvey was in possession of the Collective Bargaining Agreements. (Garvey actually produced copies pursuant to Plaintiffs' discovery requests). Some of Plaintiffs' player contracts specifically reference the Collective Bargaining Agreement, a fact which provides additional evidence of the Collective Bargaining Agreement's going relevance. (PSOF¶__). Apparently, the previous owners like Stan Greeson(??) were willing to do something that fellow former Globetrotter player Mannie Jackson was not: pay players something when the company makes money off of them. Jackson's emphasis on the total "brand" to the exclusion of other "stars" after he first bought the team changed in 2002 when FUBU'S marketing minds told him that Plaintiffs' names were also valuable

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Plaintiffs' marks at all on any clothing merchandise.

The second predecessor to HGI, International

Broadcasting Corporation (hereinafter "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 the Harlem Globetrotters, Inc., Delaware or in HG, Delaware sale to Defendant HGI. (See Plaintiffs'

7 8 9 10 11 12 13 14 15 16 17 Later in 2002 it was FUBU'S CEO's wife's idea to do a license and FUBU'S idea that Plaintiffs' 18 19 20 21 22 23 24 25 26 27 quality control. Mannie Jackson conceded that the purported perpetual grant of license in a player's name 28 -24Created by Neevia docuPrinter LT trial Case 2:04-cv-00299-DGC Document 238-3 version 11/21/2005 Page 27 of 35 Filed http://www.neevia.com marks were valuable as FUBU pitched the idea to Jackson. (Weisfield Tr.__). It is logically impossible for Plaintiffs to have abandoned their marks as HGI has asserted in their Memorandum p. ___). Plaintiffs own their own names over which they continued to "e