Free Memorandum - District Court of Arizona - Arizona

Joel L. Herz, Esq. State Bar No. 015105 Law Offices of Joel L. Herz 3573 East Sunrise Drive, Suite 215 Tucson, AZ 85718 Telephone: 520-529-8080 Facsimile: 520-529-8077 Ira S. Sacks, Esq. Safia A. Anand, Esq. Dreier LLP 499 Park Avenue New York, NY 10022 Telephone: 212-328-6100 Facsimile: 212-328-6101 Attorneys for Defendant GTFM, LLC

UNITED STATES DISTRICT COURT DISTRICT OF ARIZONA

MEADOWLARK LEMON, a married man, Plaintiff/Counterdefendant vs. HARLEM GLOBETROTTERS INTERNATIONAL, INC., et al., Defendants/Counterclaimants

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Case No. CV 04-0299 PHX-DGC Case No. CV 04-1023-PHX-DGC

MEMORANDUM OF LAW IN SUPPORT OF GTFM, LLC'S MOTION FOR SUMMARY JUDGMENT

Case 2:04-cv-00299-DGC

Document 184

Filed 10/24/2005

Page 1 of 27

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TABLE OF CONTENTS MEMORANDUM OF LAW IN SUPPORT OF GTFM, LLC'S MOTION FOR SUMMARY JUDGMENT.................................................................................... 1 UNDISPUTED FACTS .................................................................................................................. 3 A. B. C. D. E. THE LICENSE AGREEMENT.......................................................................................... 3 THE SALE OF FUBU/HGI APPAREL ............................................................................. 5 THE ACTIONS .................................................................................................................. 6 THE PLAINTIFFS.............................................................................................................. 6 THE LACK OF EVIDENCE.............................................................................................. 7

ARGUMENT.................................................................................................................................. 9 I. II. A. B. THE SUMMARY JUDGMENT STANDARD.................................................................. 9 PLAINTIFFS' LANHAM ACT CLAIMS MUST BE DISMISSED ........................... 10 Plaintiffs' Alleged Trademarks Have Not Acquired Secondary Meaning ................... 11 Plaintiffs' Alleged Trademarks Do Not Function As Trademarks ............................... 13 PLAINTIFFS ARE NOT ENTITLED TO DISGORGE GTFM'S PROFITS.............. 14 Plaintiffs Are Not Entitled to Disgorge GTFM's Profits Under Federal Law.............. 15 Plaintiffs Are Not Entitled to Disgorgement Of GTFM's Profits Under Arizona Law 16

C. Plaintiffs Are Not Entitled To Disgorge GTFM's Profits Under A False Light Invasion of Privacy Theory................................................................................................................... 18 D. Plaintiffs Are Not Entitled To Disgorge GTFM's Profits Under A Common Law Right of Publicity Theory................................................................................................................. 19 IV. A. B. V. PLAINTIFFS' CLAIMS ARE BARRED BY LACHES.............................................. 21 Plaintiffs Unreasonably Delayed in Filing Suit ............................................................ 21 GTFM Was Prejudiced By Plaintiffs' Unreasonable Delay ......................................... 22 PLAINTIFFS HAVE FAILED TO PROVE "BUT FOR" CAUSATION ....................... 23

CONCLUSION............................................................................................................................. 25

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MEMORANDUM OF LAW IN SUPPORT OF GTFM, LLC'S MOTION FOR SUMMARY JUDGMENT Defendant GTFM, LLC ("GTFM") submits this memorandum of law in support of its motion for an order, pursuant to Fed.R.Civ.P. Rule 56, granting summary judgment and dismissing all claims against it. The question on this motion is whether plaintiffs ­ without any proof of consumer recognition or secondary meaning, without any actual injury, and without proof that a single consumer bought (or likely bought) any product because that product contained plaintiffs' names or likenesses ­ may obtain a multi-million dollar windfall by disgorging from GTFM all profits made on the sale of such products. The answer to that question is "no" as a matter of undisputed fact and law. Plaintiffs are former Harlem Globetrotters players. They assert claims under the Lanham Act and Arizona law as a result of the use of their names, alleged jersey numbers and/or likenesses (the "Alleged Trademarks") on apparel by GTFM under license from the Globetrotters. It is undisputed that plaintiffs do not license (and have not licensed since leaving the Globetrotters) the Alleged Trademarks. Plaintiffs have no evidence of public recognition of the Alleged Trademarks. It is also undisputed that plaintiffs do not seek to recover damages for

18 19 20 21 22 23 24 25 a separate prerequisite for protection under the Lanham Act. 26 27 28 Case 2:04-cv-00299-DGC Document 184 1 Filed 10/24/2005 Page 3 of 27 actual injury to them ­ because there was none, except conclusory claims of embarrassment that their names were used without their permission. The "only" recovery plaintiffs seek from GTFM is the disgorgement of all profits made on sales of alleged infringing goods. Each of those claims is unsupported as a matter of undisputed fact and controlling law. First, the federal Lanham Act claims must be dismissed because plaintiffs have completely failed to adduce any evidence of secondary meaning or likelihood of confusion, each

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Second, plaintiffs' efforts to disgorge all of GTFM's profits for sale of alleged infringing goods must be dismissed. Plaintiffs do not seek and have not identified any quantifiable

damages to them as a result of such sales. Moreover, plaintiffs do not seek (and have failed to establish) a reasonable royalty for the use of the Alleged Trademarks. Plaintiffs have bypassed any such damage claims because of greed ­ the potential recoveries would be too small to attract contingency counsel. Rather, the "only" recovery plaintiffs seek from GTFM is to have GTFM disgorge to plaintiffs all of GTFM's profits from the sale of alleged infringing merchandise, in the minimum amount of $1,832,304. Any recovery on a theory of unjust enrichment would be a windfall to plaintiffs, who have not suffered any measurable damages at all. Such a windfall is contrary to both federal and Arizona law. Plaintiffs cannot disgorge GTFM's profits under federal law because the Alleged

14 15 16 17 18 19 20 21 find highly offensive. 22 23 24 25 26 27 28 Case 2:04-cv-00299-DGC Document 184 2 Filed 10/24/2005 Page 4 of 27 Plaintiffs' attempt to disgorge GTFM's profits on their common law right of publicity claim is also unavailing. Even if Arizona had such a cause of action ­ which it does not ­ and even if plaintiffs had established the elements of such a claim ­ which they have not ­ plaintiffs Trademarks are not protectible under the Lanham Act. Similarly, plaintiffs cannot disgorge GTFM's profits under Arizona state law because they have failed to prove impoverishment or lack of a legal remedy. Indeed, the undisputed evidence is to the contrary. Plaintiffs' effort to disgorge GTFM's profits on their false light invasion of privacy claim is also baseless on the undisputed record here. There is no record evidence that GTFM

knowingly or recklessly published false information or innuendo that a reasonable person would

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would only be entitled to a reasonable royalty from GTFM. Plaintiffs do not seek (and have failed to establish the value of) such a royalty. Further, plaintiffs' claims against GTFM are barred by laches. GTFM entered into a license agreement with Harlem Globetrotters International, Inc. ("HGI") on June 1, 2002 (the "License Agreement"). Prior to entering into the License Agreement, GTFM was aware that HGI had been using and licensing the rights to the names and likenesses of its team members for decades without objection, for various projects, including movies, cartoons, television shows, endorsements, trading cards, books and programs. Plaintiffs waited until 2004 to challenge HGI's right to use their names and likenesses. Had GTFM been aware that a dispute existed as to whether HGI owned the rights to the former players' names and likenesses, GTFM would not have entered into the License Agreement or would have done so in a different fashion. Finally, plaintiffs' claims fail because there is no evidence of "but for" causation ­ there

14 15 16 17 18 19 20 21 22 23 of any and all players who have played for the Harlem Globetrotters, or who hereafter play 24 25 26 27 28 Case 2:04-cv-00299-DGC Document 184 for the Globetrotters during the Term, other than Wilt Chamberlain and Magic Johnson ("Globetrotters Players")" (hereafter referred to as the "Licensed Property"). (Sacks Decl. Ex. A, § 1.3(b)). 3 Filed 10/24/2005 Page 5 of 27 A. is no evidence that a single consumer bought ­ or was likely to have bought ­ any of the alleged infringing merchandise because of the use of plaintiffs' names, numbers or likenesses. Again, plaintiffs seek a windfall. Instead they should reap the whirlwind. UNDISPUTED FACTS THE LICENSE AGREEMENT

GTFM entered into the License Agreement with HGI on June 1, 2002. 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

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In the License Agreement, HGI makes certain representations, warranties and covenants to GTFM regarding the Licensed Property. Specifically, HGI represents, warrants and covenants the following: 1. 2. 3. There will be no claim from any player relating to the sublicense of rights under the License Agreement (Sacks Decl. Ex. A, § 1.9(a)(vii)); HGI is and will be the sole owner of the Licensed Property throughout the term of the Agreement (Sacks Decl. Ex. A, § 1.9(a)(ii)); 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 player agreements remain in full force and effect and 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 (Sacks Decl. Ex. A, § 1.9(a)(vii)); and 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. (Sacks Decl. Ex. A, § 1.9(a)(viii)).

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Moreover, HGI indemnified GTFM for any breach of the representations and warranties in the License Agreement. Specifically, Section 5.1 of the License Agreement provides that HGI shall "indemnify and hold [GTFM] and its sublicensees harmless from and against all out-ofpocket losses, including the payment of claims, damages . . . liability, costs, liabilities, fines and judgments, and expenses, including reasonable attorneys' fees and disbursements, arising out of

22 23 24 25 26 27 28 Case 2:04-cv-00299-DGC Document 184 4 Filed 10/24/2005 Page 6 of 27 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...." (Sacks Decl. Ex. A, § 5.1).

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B.

THE SALE OF FUBU/HGI APPAREL

Pursuant to the License Agreement, GTFM (and its licensees) manufactured and sold products bearing the Harlem Globetrotters' trademarks (the "FUBU/HGI Apparel"). (Weisfeld Decl. ¶4). Some of the FUBU/HGI Apparel contained plaintiffs' Alleged Trademarks (the "Alleged Infringing Goods"). (Weisfeld Decl. ¶5). 1 GTFM paid HGI a royalty of ten percent (10%) of the first ten million dollars ($10 million) of Net Sales and eight percent (8%) of the Net Sales thereafter. (Sacks Decl. Ex. A, § 2.1). GTFM did not enter into the License Agreement blindly. GTFM was aware that HGI had been using and licensing the rights to the names and likenesses of players and former players for decades and was not aware of any complaints regarding such uses. When deciding whether to enter into the License Agreement, GTFM relied on the representations and indemnification provisions of the License Agreement, and the fact that no player had ever sued the Globetrotters for misuse of their names and/or likenesses.2 (Weisfeld Tr. 65-68; Weisfeld Decl. ¶9). The License Agreement expired on November 30, 2004 and permitted GTFM a one hundred eighty (180) day sell-off period. (Sacks Decl. Ex. A, §§ 1.1, 6.3). GTFM is not currently manufacturing and/or selling any Alleged Infringing FUBU/HGI Apparel and will not do so in the future. (Weisfeld Decl. ¶6).

An insignificant number of styles containing plaintiffs' likenesses and/or images ­ as opposed to plaintiffs' names and/or alleged jersey numbers ­ were manufactured and/or sold. Plaintiffs' expert was unable to identify any such styles and only identified styles that used the plaintiffs' names and/or alleged jersey numbers. (Sacks Decl. ¶3). Upon being told that HGI owned the right to the use of the names and likenesses of all Harlem Globetrotter players and former players, GTFM asked to see the player contracts. They were told that, because of the Globetrotters' bankruptcy, the contracts could not be located. GTFM went forward because of the representations and indemnities in the License Agreement to protect GTFM. (Weisfeld Tr. 66-68).
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C.

THE ACTIONS

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).3 The 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. D. THE PLAINTIFFS

The plaintiffs are all former players for the Harlem Globetrotters for some portion of the years 1946 thru 1991. Specifically, Meadowlark Lemon ("Lemon") played from 1955­79

(Lemon Tr. 90-91, 112);4 Fred "Curly" Neal ("Neal") played from 1963-85 (Neal Tr. 21, 24); Marques Haynes ("Haynes") played from 1946-53 and again from 1972-79 (Haynes Tr. 15-17); Robert "Showboat" Hall ("Hall") played from 1947-74 (Hall Tr. 10, 15); Larry "Gator" Rivers ("Rivers") played from 1973-1985 (Rivers Tr. 12, 27); Dallas "Big D" Thornton ("Thornton") played from 1969-84 (Thornton Tr. 9, 29); and James "Twiggy" Sanders ("Sanders") played from 1974-84 and again from 1985-91 (Sanders Tr. 31-32, 53).

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Each of the plaintiffs testified as to their alleged harm and the uses by the Globetrotters of their name and likeness over the years. That testimony is set forth in detail in the statement of specific facts, filed herewith. The evidence regarding Meadowlark Lemon is illustrative, indeed the broadest of any of the plaintiffs: Lemon testified that he has been harmed by the Alleged Infringing Goods because he did not get paid and therefore he was embarrassed. (Lemon Tr. 191). However, the Globetrotters

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None of the plaintiffs' names, alleged jersey numbers, likenesses and/or images are registered trademarks.

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

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Case 2:04-cv-00299-DGC

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have used Lemon's name and likeness on a variety of merchandise, television shows, cartoons and books, both during and after his time as a Globetrotter. (Lemon Tr. 96, 123-31, 185, 227-29, 212-14; Sacks Decl. Exs. P, Q, R). Lemon's picture is still in the Harlem Globetrotters program that is distributed to thousands of people every year, and he has never asked the Globetrotters to stop using his name or likeness in the program. (Lemon Tr. 186). Prior to this lawsuit, Lemon never took any steps to ask the Globetrotters to stop using his name, image and/or likeness throughout the decades. (Lemon Tr. 191). Lemon does not license his name, alleged jersey number, likeness and/or image. (Lemon Tr. 150-151). Moreover, he has not submitted any evidence of lost profits as a result of the FUBU/HGI Apparel. (Lemon Tr. 155). To the contrary, the evidence illustrates that the

Globetrotters sent Lemon a check for FUBU/HGI styles that included his name and/or likeness. (Lemon Tr. 164; Sacks Decl. Ex. Y).

14 15 16 17 18 19 20 21 22 In an effort to estimate their alleged damages, plaintiffs submitted an expert report. 23 24 25 26 27 28 Case 2:04-cv-00299-DGC Document 184 7 Filed 10/24/2005 Page 9 of 27 (Sacks Decl. Ex. DD). That expert report is revealing in what it does not do: o It does not even attempt to establish that plaintiffs have consumer recognition in E. THE LACK OF EVIDENCE There is no record evidence that plaintiffs' Alleged Trademarks have acquired secondary meaning, resulted in likely consumer confusion or that plaintiffs are entitled to the windfall of disgorging GTFM's profits. Rather, plaintiffs have all conceded that they were not engaged in the licensing of their names, alleged jersey numbers, likenesses and/or images; and that their damage as a result of GTFM's activities was that they were embarrassed or upset that the line was marketed without their knowledge.

their names, numbers or likenesses

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o

It does not even attempt to establish that consumers were likely confused in

purchasing the Alleged Infringing Goods o It does not even attempt to establish that a single consumer bought (or likely

bought) a single piece of Alleged Infringing Goods because of plaintiffs' names, numbers or likenesses o It does not even attempt to estimate the income plaintiffs lost as a result of

GTFM's conduct o o It does not even attempt to estimate what a reasonable royalty would be It does not analyze plaintiffs' alleged damages by individual plaintiff, but only in

the aggregate. (Sacks Decl. ¶11). Rather, the report goes for the gusto. It seeks to disgorge all profits earned by GTFM from the sale of Alleged Infringing Goods, in the minimum amount of $1,832,304, despite the

14 15 16 17 18 19 20 21 Lanham Act. 22 23 24 25 26 27 28 Case 2:04-cv-00299-DGC Document 184 8 Filed 10/24/2005 Page 10 of 27 registered. (Abalos Tr. 44). Plaintiffs have failed to adduce any evidence establishing that their Alleged Trademarks have any public recognition, let alone secondary meaning. (Sacks Decl. ¶¶ 6-7). Plaintiffs' expert report does not determine any loss inflicted on plaintiffs as a result of the (Sacks Decl. ¶8). Plaintiffs concede that the Alleged Trademarks are not total absence of actual injury to plaintiffs, and the lack of secondary meaning or likely confusion among consumers. (Expert Report, pg. 16). Plaintiffs' expert report also seeks statutory

damages pursuant to the Lanham Act, despite the fact that such damages are only available with respect to counterfeits of registered marks and knowledge that the Alleged Trademarks are not registered. (Expert Report, pg. 17; Abalos Tr. 44). Plaintiffs have failed to establish that the Alleged Trademarks are protectible under the

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sale of the FUBU/HGI Apparel. Plaintiffs' expert report seeks solely disgorgement of GTFM's profits. (Abalos Tr. 55-57, 59-61; Sacks Decl. ¶11). That greed is dispositive and fatal. Plaintiffs have not submitted any consumer surveys or consumer testimony as to the plaintiffs' public recognition and have done no investigation as to plaintiffs' reputation and/or notoriety. (Abalos Tr. 66-67, 166-68; Sacks Decl. ¶7). Moreover, 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. (Abalos Tr. 65-66, 158-61, 199-201; Sacks Decl. ¶8). Additionally, plaintiffs failed to

investigate whether purchasers of the FUBU/HGI Apparel were likely to be confused as to the source or sponsorship of the merchandise. (Abalos Tr. 66; Sanders Tr. 60, 106-07; Rivers Tr. 66-68, 83; Hall Tr. 34-35, 56; Neal Tr. 137-38; Haynes Tr. 40-41; Lemon Tr. 155; Thornton Tr. 81; Sacks Decl. ¶9).

14 15 16 17 18 19 20 21 22 complaint, unsupported conjecture or conclusory statements. Hernandez v. Spacelabs Medical 23 24 25 26 27 28 Case 2:04-cv-00299-DGC Document 184 Inc., 343 F.3d 1107, 1112 (9th Cir. 2003). Rather, the non-movant must offer admissible evidence to meet its burden of proof. Fed.R.Civ.P. Rule 56(e). Importantly, where (as here) the non-movant bears the burden of proof at trial, the movant may satisfy its burden by pointing out an absence of evidence to support an essential element of the non-movant's case. Celotex Corp. 9 Filed 10/24/2005 Page 11 of 27 I. As we shall now further demonstrate, plaintiffs' claims against GTFM must be dismissed on summary judgment. ARGUMENT THE SUMMARY JUDGMENT STANDARD

As this Court is well aware, summary judgment is proper where no reasonable trier of fact could find for the opposing party. Anderson v. Liberty Lobby, Inc., 477 U.S. 272, 249-50 (1986). It is also well-settled that the non-moving party may not rely on allegations in the

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v. Catrett, 477 U.S. 317, 322-25 (1986); Orr v. Bank of America, NT & SA, 285 F.3d 764, 781-82 (9th Cir. 2002). A review of the record evidence makes plain that no reasonable trier of fact could find for plaintiffs against GTFM in this action. II. PLAINTIFFS' LANHAM ACT CLAIMS MUST BE DISMISSED

Plaintiffs' claims for federal unfair competition/false designation of origin and misappropriation under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), must be dismissed because plaintiffs have completely failed to adduce any evidence of secondary meaning or likelihood of confusion, both prerequisites to protection under the Lanham Act,. Plaintiffs bear the burden of proof in this Lanham Act action. Yellow Cab Co. of Sacramento v. Yellow Cab of Elk Grove, Inc., 419 F.3d 925, 928 (9th Cir. 2005). To state a claim under § 43(a) in connection with an unregistered mark, a plaintiff must show, inter alia,

14 15 16 17 18 19 20 21 descriptive term can be protected as a valid trademark only with a showing of secondary 22 23 24 25 26 27 28 Case 2:04-cv-00299-DGC Document 184 10 Filed 10/24/2005 Page 12 of 27 meaning." Filipino Yellow Pages, Inc. v. Asian Journal Publications, Inc., 198 F.3d 1143, 1151 (9th Cir. 1999); Yellow Cab Co. of Sacramento, 419 F.3d at 927. Personal names are descriptive marks and therefore must acquire secondary meaning to be afforded protection under the Lanham Act. E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1291 (9th Cir. 1992); that the mark has acquired secondary meaning and that the defendant has created a likelihood of confusion as to the origin of the product. Toho Co., Ltd. v. Sears, Roebuck & Co., 645 F.2d 788, 790 (9th Cir. 1981); Kendall-Jackson Winery, Ltd. v. E. & J. Gallo Winery, 150 F.3d 1042, 1047 (9th Cir. 1998). The requirement of proof of secondary meaning applies with even more force to plaintiffs' Alleged Trademarks because not only are they unregistered, they are descriptive. "A

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Yarmuth-Dion, Inc. v. D'ion Furs, Inc., 835 F.2d 990, 993 (2d Cir. 1987). The same is true with respect to numbers as trademarks. "Numbers, like any symbol, are capable of being descriptive of the goods on which they are used, and thus require proof of secondary meaning for protection or registration." 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 7:15 (4th ed. 2005); 555-1212.com, Inc. v. Communication House Int'l, Inc., 157 F.Supp.2d 1084, 1089-90 (N.D. Cal. 2001). It is undisputed that plaintiffs have failed to adduce evidence of secondary meaning or likely confusion. A. Plaintiffs' Alleged Trademarks Have Not Acquired Secondary Meaning

All of plaintiffs' Lanham Act claims must be dismissed for lack of proof of secondary meaning. "Secondary meaning is the consumer's association of the mark with a particular source or sponsor." E. & J. Gallo Winery, 967 F.2d at 1291. Courts look to a number of factors

14 15 16 17 18 19 20 21 Certain evidence is insufficient to establish secondary meaning and withstand summary 22 23 24 25 26 27 28 Case 2:04-cv-00299-DGC Document 184 11 Filed 10/24/2005 Page 13 of 27 judgment, such as conclusory testimony from a plaintiff or other biased source, because such evidence has very limited probative value. Filipino Yellow Pages, Inc., 198 F.3d at 1152 (founder's/president's declaration was insufficient to establish secondary meaning and withstand summary judgment). in evaluating the sufficiency of evidence of secondary meaning, including: (1) whether actual purchasers of the product bearing the claimed trademark associate the trademark with the producer; (2) the degree and manner of advertising under the claimed trademark; (3) the length and manner of use of the claimed trademark, and (4) whether use of the claimed trademark has been exclusive. See Japan Telecom, Inc. v. Japan Telecom America, Inc., 287 F.3d 866, 873 (9th Cir. 2002); Filipino Yellow Pages, 198 F.3d at 1151.

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Here, plaintiffs have failed to adduce any evidence that their Alleged Trademarks have acquired secondary meaning. (Sacks Decl. ¶¶6-7). Plaintiffs have not submitted any evidence to establish that actual purchasers of the FUBU/HGI Apparel associate the names, alleged jersey numbers, likenesses and/or images with plaintiffs, rather than with FUBU and/or HGI. (Sacks Decl. ¶¶8-9). Indeed, plaintiffs have not demonstrated that any consumers of the FUBU/HGI Apparel associated the Alleged Infringing Goods with the plaintiffs or that the consumers even knew who the plaintiffs were. (Sacks Decl. ¶¶6-9, 11). Similarly, plaintiffs have not submitted any consumer surveys or consumer testimony as to plaintiffs' public recognition and have done no investigation as to the plaintiffs' reputation and/or notoriety. (Abalos Tr. 66-67, 166-68; Sacks Decl. ¶7). Moreover, plaintiffs' expert did not express any opinion 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

14 15 16 17 18 19 20 21 recognition. Plaintiffs have conceded that they do not advertise their Alleged Trademarks and 22 23 24 25 26 27 28 Case 2:04-cv-00299-DGC Document 184 12 Filed 10/24/2005 Page 14 of 27 have not licensed their names or likenesses since they ceased playing for the Globetrotters. (Lemon Tr. 150-51, Neal Tr. 103-04; Haynes Tr. 13-14; Hall Tr. 13-14; Rivers Tr. 18-19; Thornton Tr. 81-82, 122-23; Sanders Tr. 27-28). them. (Abalos Tr. 65-66, 158-61, 199-201; Sacks Decl. ¶¶8, 11). Additionally, plaintiffs failed to investigate whether purchasers of the FUBU/HGI Apparel were likely to be confused as to the source or sponsorship of the merchandise. (Abalos Tr. 66; Sanders Tr. 60, 106-07; Rivers Tr. 66-68, 83; Hall Tr. 34-35, 56; Neal Tr. 137-38; Haynes Tr. 40-41; Lemon Tr. 155; Thornton Tr. 81; Sacks Decl. ¶9). To the contrary, the evidence illustrates that the plaintiffs do not have any public

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Finally, plaintiffs have not used the Alleged Trademarks as trademarks and their use of the Alleged Trademarks has not been exclusive. The evidence shows without dispute that the alleged jersey numbers have been used by numerous other Globetrotters throughout the years. (Sacks Decl. Ex. O). The Globetrotters used plaintiffs' names and likenesses ­ also not in a trademark sense ­ in programs, books, trading cards, movies, cartoons, television shows, posters and various other products while the plaintiffs were players and afterwards. (Sacks Decl. Exs. PX, AA-CC). That failure of proof of secondary meaning bars any relief under the Lanham Act. B. Plaintiffs' Alleged Trademarks Do Not Function As Trademarks The failure of proof of secondary meaning, standing alone, dooms plaintiffs Lanham Act claims, but there is more: plaintiffs' Alleged Trademarks do not function as trademarks. "As a general rule, a person's image or likeness cannot function as a trademark." ETW Corp. v. Jireh

14 15 16 17 18 19 20 21 Franklin Mint Co., 107 F.Supp.2d 1212, 1215 (C.D.Cal. 2000)(emphasis added)). To prevail on 22 23 24 25 26 27 28 Case 2:04-cv-00299-DGC Document 184 13 Filed 10/24/2005 Page 15 of 27 their Lanham Act claims, plaintiffs are required to show that, in selling the Alleged Infringing Goods, GTFM created a likelihood of confusion over whether plaintiffs were endorsing the Publishing, Inc., 332 F.3d 915, 922 (6th Cir. 2003)(photographs and images of Tiger Woods did not support trademark claim); Pirone v. MacMillan, Inc., 894 F.2d 579, 583 (2d Cir. 1990)(rejecting trademark claim based on Babe Ruth's likeness). Plaintiffs' names, images and likenesses are not protectible under the Lanham Act unless their use suggests sponsorship or approval. Section 43(a) of the Lanham Act only prohibits "false endorsement of a celebrity's image, not mere use of an image or name." Cairns v.

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Alleged Infringing Goods. White v. Samsung Electronics America, Inc., 971 F.2d 1395, 1399 (9th Cir. 1992).5 There is no such proof. Here, plaintiffs are not nearly as well-known as Babe Ruth or Tiger Woods. Apart from their own self-congratulatory and conclusory testimony of likely consumer confusion, plaintiffs have failed to produce a shred of evidence illustrating that any consumers likely thought that the plaintiffs were sponsoring or approving the FUBU/HGI Apparel. (Abalos Tr. 65-67, 158-161, 199-201; Sanders Tr. 60, 106-107; Rivers Tr. 66-68, 83; Hall Tr. 34-35, 56; Neal Tr. 137-138; Haynes Tr. 40-41; Lemon Tr. 155; Thornton Tr. 81; Sacks Decl. ¶¶6-9, 11). Plaintiffs' speculative deposition testimony as to consumer confusion is insufficient. Not only is that testimony speculative and/or rank hearsay, as noted above, testimony or declarations from a biased source is of very limited probative value and insufficient to establish consumer confusion so as to withstand summary judgment. Filipino Yellow Pages, 198 F.3d at 1152

14 15 16 17 18 19 20 21 Plaintiffs' profit disgorgement theory fails under federal law because plaintiffs have failed to 22 23 24 25 26 27 28 Case 2:04-cv-00299-DGC Document 184 14 Filed 10/24/2005 Page 16 of 27
"Likelihood of confusion exists when `customers viewing the mark would probably assume that the product or service it represents is associated with the source of a different product or service identified by a similar mark.'" Kendall-Jackson Winery, Ltd., 150 F.3d at 1048.
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(founder and president's declaration insufficient); Japan Telecom, Inc., 287 F.3d at 874 (declarations from business owners insufficient). The failure to prove that plaintiffs' images and likenesses are protectible under the Lanham Act is an independent reason why the Lanham Act claims must be dismissed. III. PLAINTIFFS ARE NOT ENTITLED TO DISGORGE GTFM'S PROFITS

Plaintiffs are not entitled to disgorge GTFM's profits under federal or Arizona law. First,

prove that plaintiffs' Alleged Trademarks are protectible under the Lanham Act and because they

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have failed to establish GTFM's gross profits from the infringing activity with reasonable certainty. Plaintiffs also are not entitled to disgorge GTFM's profits under Arizona law because they have failed to meet the elements required for disgorgement of profits under Arizona law. A. Plaintiffs Are Not Entitled to Disgorge GTFM's Profits Under Federal Law

Plaintiffs' profit disgorgement theory fails under federal law because, as shown in point II above, plaintiffs have failed to prove that the Alleged Trademarks are protectible under the Lanham Act. That alone bars federal relief, but again there is more: plaintiffs have failed to establish GTFM's gross profits from the infringing activity with reasonable certainty. An attempt to disgorge profits under federal law "is intended to award profits only on sales that are attributable to the infringing conduct." Lindy Pen Co., Inc. v. Bic Pen Corp., 982 F.2d 1400, 1408 (9th Cir. 1993). Plaintiffs have the burden of establishing the defendants' gross profits from the infringing activity with reasonable certainty. Id. (emphasis added). Plaintiffs have failed to establish GTFM's gross profits from the infringing activity with reasonable certainty. Abalos conceded as much. Specifically, she admitted that she determined the amount of damages by using sales of styles that included (i) non-plaintiffs' names, (ii)

18 19 20 21 22 23 24 25 bought these garments because of a hangtag. (Abalos Tr. 160-61). Furthermore, there is also no 26 27 28 Case 2:04-cv-00299-DGC Document 184 evidence of what percentage of garments contained hangtags with plaintiffs' names and/or 15 Filed 10/24/2005 Page 17 of 27 returns, (iii) samples, and (iv) styles that she was unable to determine had any link with any plaintiff. (Abalos Tr. 171-75; 181-219; 229-30). Moreover, Abalos sought to disgorge GTFM's profits for sales of styles that may have used hangtags that included plaintiffs' names and alleged jersey numbers, along with the FUBU and Harlem Globetrotters trademarks. (Abalos Tr. 186, 203-05, 208; Sacks Decl., Ex. EE). However, there is no evidence that such tags were, in fact, used on such styles or that consumers

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alleged jersey numbers on them. Thus, despite that total lack of evidence, plaintiffs have included sales and profits for styles that they admit may not have contained plaintiffs' Alleged Trademarks in their damages report because they may have had hangtags. (Abalos Tr. 186, 203205, 208). Such an estimate does not establish GTFM's profits with reasonable certainty. For both of those reasons, plaintiffs are not entitled to disgorgement of GTFM's profits under federal law. B. Plaintiffs Are Not Entitled to Disgorgement Of GTFM's Profits Under Arizona Law

Plaintiffs also are not entitled to disgorge GTFM's profits under Arizona law. Abalos characterized such recovery as the prevention of unjust enrichment. (Expert Report pg. 16; Abalos Tr. 161-66; 237-38). However, plaintiffs have failed to meet the elements required for recovery on a theory of unjust enrichment under Arizona law. To establish a claim for unjust enrichment under Arizona law, a party must prove each of the following elements: (1) an enrichment; (2) an impoverishment; (3) a connection between the enrichment and the impoverishment; (4) the absence of justification for the enrichment and the impoverishment; and (5) the absence of a legal remedy. Trustmark Insurance Co. v. Bank One, Arizona, NA, 48 P.3d 485, 491 (Ariz. Ct. App. 2002); City of Sierra Vista v. Cochise Enterprises, Inc., 697 P.2d 1125, 1131 (Ariz. Ct. App. 1984). Plaintiffs have failed to prove an impoverishment or the absence of a legal remedy. Impoverishment Plaintiffs have failed to prove any impoverishment. It is undisputed that plaintiffs did not suffer any loss of income as a result of GTFM's actions. That is fatal to proof of

impoverishment. Plaintiff is not impoverished where the plaintiff does not lose any money, even

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Case 2:04-cv-00299-DGC

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if plaintiff's hope of receiving future income is affected. See Carter v. Safeway Stores, Inc., 744 P.2d 458, 461 (Ariz. Ct. App. 1987); City of Sierra Vista, 697 P.2d at 1132; Stapley v. American Bathtub Liners, Inc., 785 P.2d 84, 88 (Ariz. Ct. App. 1989)(no impoverishment where plaintiffs did not incur additional expenses and were not deprived of funds that they might have otherwise received). Plaintiffs have admitted that they have not lost any income as a result of the FUBU/HGI Apparel. (Lemon Tr. 155; Neal Tr. 137; Haynes Tr. 76; Hall Tr. 52; Rivers Tr. 77; Thornton Tr. 81-82; Sanders Tr. 98). Indeed, Abalos indicated that the plaintiffs were not even impacted in the future value of their names and likenesses. (Abalos Tr. 55-57, 59-61, 164, 245). In fact, Rivers admitted that the "FUBU line could have possibly enhanced [his] name and stature...it's a world-wide company...and [he doesn't] think [he's] been hurt by that in that aspect." (Rivers Tr. 77). Thus, it is undisputed that plaintiffs were not impoverished. That is fatal to plaintiffs'

14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Case 2:04-cv-00299-DGC Document 184 17 Filed 10/24/2005 Page 19 of 27
A.R.S. § 44-1451 provides, in part, that "the owner of a mark registered under this article may proceed by civil action against any person who, without the consent of the registrant ...[u]ses in this state the registered mark or a mark similar to the registered mark on or in connection with any goods or services ... in any manner that is likely to cause confusion, cause a mistake or deceive a person..."
6

effort to disgorge GTFM's profits under Arizona law. Adequate Legal Remedy There is an independent reason why plaintiffs' effort to disgorge GTFM's profits under Arizona law fails: plaintiffs had an adequate legal remedy available to them. Plaintiff could have attempted to register the Alleged Trademarks, federally or under Arizona law.6 Therefore, plaintiffs are not entitled to disgorge GTFM's profits under Arizona law.

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C.

Plaintiffs Are Not Entitled To Disgorge GTFM's Profits Under A False Light Invasion of Privacy Theory

Plaintiffs are not entitled to disgorge GTFM's profits under their false light invasion of privacy claims for several reasons. First, as shown above, the remedy of disgorgement of alleged unjust enrichment is narrowly circumscribed under Arizona law. Plaintiffs cannot reap an unjust enrichment windfall without meeting the required elements of proof. They have not done so. That alone requires the rejection of plaintiffs' effort to disgorge GTFM's profits under any theory under Arizona law. And that is the sole remedy plaintiffs seek for any of their claims ­ other than a request for injunctive relief, which is now moot. (Expert Report pg. 16; Weisfeld Decl. ¶6). Second, plaintiffs have not met the requirements necessary to prove a false light invasion of privacy claim under Arizona law. In Arizona, the false light invasion of privacy tort protects against knowingly or recklessly publishing false information or innuendo that a reasonable person would find highly offensive. See Godbehere v. Phoenix Newspapers, Inc., 783 P.2d 781, 786 (Ariz. 1989). "The standards for proving false light invasion of privacy are quite

`stringent'". Id. There is no proof ­ or even an allegation ­ of such conduct here. 18 19 20 21 22 23 24 25 the measure, and `trivial indignities' are not actionable." Godbehere, 783 P.2d at 786. 26 27 28 Case 2:04-cv-00299-DGC Document 184 18 Filed 10/24/2005 Page 20 of 27 To establish a false light invasion of privacy tort, Plaintiffs must show that defendant (1) gave publicity to a matter concerning them that placed them in a false light to the public; (2) that the false light would be "highly offensive to a reasonable person" and (3) that Defendant had knowledge of or acted in reckless disregard as to the falsity of the publicized matter." Id. at 784 (quoting Restatement (Second) of Torts § 652(E) (1977)); Hart v. Seven Resorts, Inc. 947 P.2d 846, 854 (Ariz. Ct. App. 1997). "Thus, the plaintiff's subjective threshold of sensibility is not

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Here, at most, plaintiffs have claimed that they were embarrassed by the sale of the Alleged Infringing Goods because the Globetrotters did not consult them before using their names, jersey number, likeness and/or images. (Lemon Tr. 191; Neal Tr. 132; Haynes Tr. 71-73; Hall Tr. 52; Rivers Tr. 76-77; Thornton Tr. 85-86; Sanders Tr. 95). Although plaintiffs may have been embarrassed or even disappointed that the Globetrotters did not contact them, the Alleged Infringing Goods did not place plaintiffs in a false light that would be highly offensive to a reasonable person. Thus, plaintiffs are not entitled to disgorge GTFM's profits under their false light invasion of privacy theory. D. Plaintiffs Are Not Entitled To Disgorge GTFM's Profits Under A Common Law Right of Publicity Theory

Plaintiffs are not entitled to disgorge GTFM's profits under their common law right of publicity claims for several reasons. First, as with the false light claims, the remedy for

disgorgement of alleged unjust enrichment is narrowly circumscribed under Arizona law. Plaintiffs have not met the required proof. That alone requires the rejection of plaintiffs' effort to disgorge GTFM's profits under their common law right of publicity theory.

18 19 20 21 22 23 24 25 whether a right of publicity claim was properly pled. In rejecting the motion to dismiss, the 26 27 28 Case 2:04-cv-00299-DGC Document 184 Pooley court did not interpret the Eastwood factors or the common law right of publicity. 19 Filed 10/24/2005 Page 21 of 27 Second, it is unclear whether Arizona even recognizes a common law right of publicity. Indeed, we have found only one case in Arizona ­ a district court decision rejecting a motion to dismiss ­ that recognizes a common law claim for the invasion of the right of publicity by refusing to dismiss such a claim. Pooley v. National Hole-In-One Association, 89 F.Supp.2d 1108, 1112 (D. Ariz. 2000). The Pooley court denied the motion to dismiss and referenced the factors set forth in Eastwood v. Superior Court, 149 Cal.App.3d 409 (1983), to determine

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What is more, applying the Eastwood factors here shows that plaintiffs cannot disgorge GTFM's profits under a common law right to publicity theory. Under Eastwood, a plaintiff must prove the following elements: (1) the defendant's use of the 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. Pooley, 89 F.Supp.2d at 1112;

Eastwood, 149 Cal.App.3d at 417. Here, plaintiffs have failed to adduce any evidence of resulting injury. Plaintiffs have admitted that they have not lost any income as a result of the FUBU/HGI Apparel. (Lemon Tr. 155; Neal Tr. 137; Haynes Tr. 76; Hall Tr. 52; Rivers Tr. 77; Thornton Tr. 81-82; Sanders Tr. 97-98). Indeed, Rivers admitted that the "FUBU line could have possibly enhanced [his] name and stature...it's a world-wide company...and [he doesn't] think [he's] been hurt by that in that aspect." (Rivers Tr. 77). Even if plaintiffs could substantiate their common law right of publicity claims, they are

14 15 16 17 18 19 20 21 evidence as to the fair market value of the use of their Alleged Trademarks; indeed, they 22 23 24 25 26 27 28 Case 2:04-cv-00299-DGC Document 184 20 Filed 10/24/2005 Page 22 of 27 specifically eschewed such a claim. (Abalos Tr. 31-33, 35-37, 55, 162-64, 236-38). For all of the foregoing reasons, plaintiffs are not entitled to disgorgement of GTFM's profits under federal or Arizona law. not entitled to disgorge GTFM's profits on that theory. "The standard for measuring lost profits in a right of publicity case is the fair market value of the right to use plaintiff's name or likeness in the manner in which it was used by defendant." Clark v. America Online, Inc., No. CV-985650, 2000 WL 3353712, at *8 (C.D. Cal. 2000)(emphasis added); Waits v. Frito-Lay, Inc., 978 F.2d 1093, 1111 (9th Cir. 1992)(celebrity awarded the fair market value of his services on a voice misappropriation claim); White, 971 F.2d at 1399. Here, plaintiffs have not offered any

IV.

PLAINTIFFS' CLAIMS ARE BARRED BY LACHES

Plaintiffs' claims against GTFM also are barred by laches. "Laches is an equitable time limitation on a party's right to bring suit, resting on the maxim that one who seeks the help of a court of equity must not sleep on his rights." Jarrow Formulas, Inc. v. Nutrition Now, Inc., 304 F.3d 829, 835 (9th Cir. 2002)(citations omitted). "It is well established that laches is a valid defense to Lanham Act claims, including those for false advertising." Id.; Hot Wax, Inc. v. Turtle Wax, Inc., 191 F.3d 813, 820-21 (7th Cir. 1999); Conopco, Inc. v. Campbell Soup Co., 95 F.3d 187, 191 (2d Cir. 1996). To succeed on a laches defense, the party asserting laches must show that it suffered prejudice as a result of the plaintiff's unreasonable delay in filing suit. Jarrow Formulas, Inc., 304 F.3d at 835; Danjaq LLC v. Sony Corp., 263 F.3d 942, 951 (9th Cir. 2001). GTFM has established its laches defense as a matter of undisputed fact. A. Plaintiffs Unreasonably Delayed in Filing Suit

"A determination of whether a party exercised unreasonable delay in filing suit consists of two steps." Jarrow Formulas, Inc., 304 F.3d at 838. First, the length of delay is assessed,

which is measured from the time the plaintiff knew or should have known about its potential cause of action. Id. Second, a determination should be made as to whether the plaintiffs' delay was reasonable. "The reasonableness of the plaintiff's delay is considered in light of the time allotted by the analogous limitations period."7 Id. Courts should also consider whether the plaintiff has proffered a legitimate excuse for its delay. Id.

The Lanham Act does not contain a statute of limitations; Lanham Act claims are governed by the analogous state statute of limitations. See Jarrow Formulas, Inc., 304 F.3d at 836-37. Here, the applicable statute of limitations is A.R.S. § 12-542, the two-year statute of limitations governing tort claims and injuries done to the person of another. In re Dual-Deck Video Cassette Recorder Antitrust Litigation, MDL No. 765, 1990 WL 126500, at *21 (D. Ariz. 1990). However, even if the applicable statute of limitations is the four-year statute of limitations

7

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Here, the Globetrotters have used plaintiffs' names and likenesses for decades. (See Statement of Specific Facts, ¶¶ 27-31, 36-42, 46-49, 57, 59, 61-63, 68-70, 75, 77-78). Thus, it is clear that plaintiffs unreasonably delayed in filing suit against the Globetrotters for the misuse of their names and likenesses. The Globetrotters have been using the names and likenesses of the plaintiffs for decades, far longer than the applicable two-year (or even four-year) statute of limitations that Arizona law allows. Until the present suits were filed, the plaintiffs never complained to HGI about the use of their names or likenesses. (Lemon Tr. 191; Neal Tr. 74; Haynes Tr. 101-104, 111-113; Hall Tr. 49-50; Rivers Tr. 71-72; Thornton Tr. 70; Sanders Tr. 8687). B. GTFM Was Prejudiced By Plaintiffs' Unreasonable Delay

As a result of plaintiffs' unreasonable delay, GTFM was prejudiced when it entered into the License Agreement. "A defendant may demonstrate prejudice by showing that it took

14 15 16 17 18 19 20 21 the License Agreement, GTFM relied on the representations and indemnities in the License 22 23 24 25 26 27 28 Case 2:04-cv-00299-DGC Document 184 22 Filed 10/24/2005 Page 24 of 27
of A.R.S. §12-550 (for all actions other than for recovery of real property), the delay here far exceeds the applicable limitations period.

actions or suffered consequences that it would not have, had the plaintiff brought suit promptly." Danjaq LLC, 263 F.3d at 955. This "economic prejudice is sufficient, standing alone, to support a claim of laches." Id. at 956. Here, GTFM did not enter into the License Agreement blindly. GTFM was aware that HGI has been using and licensing the rights to the names and likenesses of players for decades and was not aware of any complaints regarding such uses. When deciding whether to enter into

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Agreement, and the fact that no player had ever sued the Globetrotters for misuse of their names and/or likenesses. (Weisfeld Tr. 65-68; Weisfeld Decl. ¶¶8-9). If GTFM had been aware of any complaints by former players regarding HGI's use of their names and/or likenesses, GTFM would not have entered into the License Agreement or would have done an alternative line of clothing, which was free of infringement claims. (Weisfeld Decl. ¶10). See Jarrow Formulas, Inc., 304 F.3d at 839 (if plaintiff had filed suit earlier, defendant could have shaped an alternative identity for their product); Hot Wax, Inc., 191 F.3d at 813 ("The market position pursued by [the defendant] with respect to the products at issue was uncontested by [the plaintiff] for years and courts have held that investments to exploit such a position are sufficient prejudice to warrant the application of the doctrine of laches."); Conopco, Inc., 95 F.3d at 192-93 (finding prejudice because defendant may have chosen an alternative marketing position if the plaintiff had filed suit earlier).

14 15 16 17 18 19 20 21 22 infringement action "[d]amages are typically measured by any direct injury which a plaintiff can 23 24 25 26 27 28 Case 2:04-cv-00299-DGC Document 184 23 Filed 10/24/2005 Page 25 of 27 prove, as well as any lost profits which the plaintiff would have earned but for the infringement." Lindy Pen Co., 982 F.2d at 1407 (emphasis added); McClaran, 97 F.3d at 361 (plaintiff failed to prove damage as a result of the infringement); Maier Brewing Co. v. For the foregoing reasons, the claims against GTFM are barred by laches. V. PLAINTIFFS HAVE FAILED TO PROVE "BUT FOR" CAUSATION

Plaintiffs' claims against GTFM must be dismissed for the further reason that there is no proof of "but for" causation ­ that is, that GTFM's profits would not have occurred if GTFM had not used plaintiffs' Alleged Trademarks. "Trademark remedies are guided by tort law principles." McClaran v. Plastic Industries, Inc., 97 F.3d 347, 361 (9th Cir. 1996)(citing Lindy Pen Co., 982 F.2d at 1407). In a trademark

Fleischmann Distilling Corp., 390 F.2d 117, 124 (9th Cir. 1968)(if purchasers bought goods for any reason other than a response to plaintiff's symbol, plaintiff is not entitled to damages). Gucci America, Inc. v. Daffy's, Inc., 354 F.3d 228, 242 (3d Cir. 2003) is illustrative. There, the Third Circuit held that the record did not establish what percentage of Daffy's sales, if any, were a result of the use of Gucci's trademarks, as opposed to the styling, quality and pricing of the goods. The Court observed: We understand, of course, that "Gucci" suggests a certain level of quality and prestige. It is therefore certainly possible that the instant sales were the direct result of the exploitation of that brand name. However, it is also quite possible that the purchasers were motivated by the opportunity of purchasing what appeared to be an attractive handbag of exceedingly high quality at the very favorable price afforded by Daffy's "discount." To the extent that consumers were motivated by obtaining such a bargain, the fact that they were also obtaining a "genuine Gucci" may have been only an incidental factor in their purchase, or no factor at all...Since Gucci is "only entitled to those profits attributable to the unlawful use of its mark," the record would not support awarding Gucci lost profits... 354 F.3d at 242 (citations omitted). Here, the plaintiffs have failed to offer any evidence that any consumer purchased (or likely purchased) the Alleged Infringing Goods because of plaintiffs' Alleged Trademarks, rather than as a result of the FUBU or the Harlem Globetrotters names or trademarks, the quality of the goods, styling, pricing or other reasons. (Abalos Tr. 65-66, 158-161, 199-201; Sanders Tr. 60, 106-107; Rivers Tr. 66-68, 83; Hall Tr. 34-35, 56; Neal Tr. 137-138; Haynes Tr. 40-41; Lemon Tr. 155; Thornton Tr. 81; Sacks Decl. ¶¶8-9, 11). The failure to establish "but for" causation is yet another reason why plaintiffs' claims must be dismissed. 8

8

In their complaints, Plaintiffs seek punitive damages of not less than $1,000,000 and costs, including reasonable attorneys' fees and investigative fees, as well as injunctive relief. GTFM will not deal with these

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CONCLUSION For all of the foregoing reasons, GTFM respectfully requests that this Court enter an order granting summary judgment and dismissing all claims GTFM, LLC. DATED: October 24, 2005 ____/s/ Ira S. Sacks___________ Ira S. Sacks, Esq. Safia A. Anand, Esq. Dreier LLP 499 Park Avenue New York, NY 10022 Telephone: 212-328-6100 Facsimile: 212-328-6101 (Pro Hac Vice) Joel L. Herz, Esq. State Bar Number 015105 La Paloma Corporate Center 3573 E. Sunrise Dr., Suite 215 Tucson, Arizona 85718-3206 Telephone: 520-529-8080 Facsimile: 520-529-8077 Attorneys for Defendant GTFM, LLC

requests because the evidence is clear that plaintiffs' substantive claims are without merit. Moreover, the request for injunctive relief is moot because GTFM is not currently manufacturing or selling any Alleged Infringing Apparel and will not do so in the future. (Weisfeld Decl. ¶6). See Polo Fashions, Inc. v. Dick Bruhn, Inc., 793 F.2d 1132, 1135 (9th Cir. 1986)(cessation of unlawful conduct moots a request for injunctive relief).

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