Free Statement - District Court of Arizona - Arizona

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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

Pursuant to Local Rule 1.10(l)(1) of the United States District Court for the District of Arizona, Defendant GTFM, LLC ("GTFM") submits this Statement of Specific Facts in support of its Motion for Summary Judgment. GTFM's Statement of Specific Facts Pursuant to Local Rule 1.10(l)(1) The following specific facts are not subject to legitimate dispute: 1. 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,

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Case 2:04-cv-00299-DGC

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nickname recorded voice, biographical material, signature facsimile, portraits, pictures and likeness of any and all players who have played for the Harlem Globetrotters, or who hereafter play for the Globetrotters during the Term, other than Wilt Chamberlain and Magic Johnson ("Globetrotters Players")" (hereafter referred to as the "Licensed Property"). (Sacks Decl. Ex. A, § 1.3(b)). 2. 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: a. 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)); b. 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));

14 15 16 17 18 19 20 21 merchandising by any Globetrotter Player in connection with the 22 23 24 25 26 27 28 Case 2:04-cv-00299-DGC Document 181 2 Filed 10/24/2005 Page 2 of 16 Licensed Property (Sacks Decl. Ex. A, § 1.9(a)(vii)); and d. "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] c. 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

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)). 3. HGI indemnified GTFM for any breach of the representations and warranties in

the License Agreement. Specifically, Section 5.1 of the License Agreement states that HGI shall "indemnify and hold [GTFM] and its sublicensees harmless from and against all out-of-pocket losses, including the payment of claims, damages . . . liability, costs, liabilities, fines and judgments, and expenses, including reasonable attorneys' fees and disbursements, arising out of or relating to (a) any claim by a third party that [GTFM's] and/or Sublicensees' use of the Licensed Property . . . violates the rights of a third party, including any claim by a past . . . Globetrotter Player...." (Sacks Decl. Ex. A, § 5.1). 4. Pursuant to the License Agreement, GTFM (and its licensees) manufactured and

sold products bearing the Harlem Globetrotters' trademarks. The line included jeans, denim shorts, jerseys, tank tops, jumpsuits, dresses, skirts, shorts, hats, sneakers, pants and shirts made by GTFM and licensees of GTFM (the "FUBU/HGI Apparel"). (Weisfeld Decl. ¶4). 5. Pursuant to the License Agreement, some of the FUBU/HGI Apparel contained

the plaintiffs' names, alleged jersey numbers,1 and alleged likenesses and/or images (the "Alleged Infringing Goods"). (Weisfeld Decl. ¶5).

Some of the FUBU/HGI Apparel contained numbers that had been used by plaintiffs when they played for the Globetrotters. Plaintiffs have no rights to the numbers that appeared on their jerseys while they were players. The jersey numbers to which the plaintiffs are claiming ownership are as follows: Meadowlark Lemon ­ 36; Larry "Gator" Rivers ­ 22; Dallas "Big D" Thornton ­ 10; Robert "Showboat" Hall ­ 46; Marques Haynes ­ 20; and James "Twiggy" Sanders ­ 42. However, with the exception of #46, all of these numbers were used by other Harlem Globetrotters players after plaintiffs stopped playing for the team. Attached hereto as Exhibit O to the Sacks Declaration is a list of Harlem Globetrotters who have used the above-listed numbers and the years those numbers were used.

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6.

Pursuant to the License Agreement 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). 7. 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). 8. GTFM is not currently manufacturing and/or selling any Alleged Infringing (Weisfeld Decl. ¶6). Nonetheless, retails

FUBU/HGI Apparel and will not do so in the future.

stores, which have no affiliation to GTFM or any other FUBU-related entity, continue to sell off the merchandise that they had previously purchased. (Weisfeld Decl. ¶7). 9. These retail sales do not have any impact on GTFM's present or future revenues

and such sales are not reported to GTFM, except to the extent that any such retailer may have requested a credit or offset against the merchandise, in which event GTFM's revenues would be

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An insignificant number of styles containing plaintiffs' likenesses and/or images 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, or the names and/or jersey numbers of other players. (Sacks Decl. ¶3).
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lowered. 2 (Weisfeld Decl. ¶7). 10. On October 1, 2004, Meadowlark Lemon filed a complaint in the District of

Arizona naming GTFM as a defendant (the "Second Amended Complaint"). (Sacks Decl. Ex. B). 11. On October 14, 2004, plaintiffs Fred "Curly" Neal, Larry "Gator" Rivers, Dallas

"Big D" Thornton, Robert "Showboat" Hall, Marques Haynes and James "Twiggy" Sanders

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(collectively referred to as the "Florida Plaintiffs") filed a similar complaint in the District of Arizona naming GTFM as a defendant (the "First Amended Complaint").3 (Sacks Decl. Ex. C). 12. 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). (First Amended Complaint; Second Amended Complaint). 13. 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. (First Amended Complaint; Second Amended Complaint). 14. Meadowlark Lemon ("Lemon") played for the Harlem Globetrotters from 1955­

79. (Lemon Tr. 90-91, 112).4 15. Fred "Curly" Neal ("Neal") played for the Harlem Globetrotters from 1963-85.

(Neal Tr. 21, 24). 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Case 2:04-cv-00299-DGC Document 181 5 Filed 10/24/2005 Page 5 of 16
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16.

Marques Haynes ("Haynes") played for the Harlem Globetrotters from 1946-53

and again from 1972-79. (Haynes Tr. 15-17). 17. Robert "Showboat" Hall ("Hall") played for the Harlem Globetrotters from 1947-

74. (Hall Tr. 10, 15). 18. Larry "Gator" Rivers ("Rivers") played for the Harlem Globetrotters from 1973-

1985. (Rivers Tr. 12, 27).

GTFM was not added as a party until October 2004. The original complaints were filed separately in February 2004, by Lemon in Arizona and by the Florida Plaintiffs in Florida. The Florida Action was transferred to the District of Arizona and the two cases were consolidated for all purposes on June 18, 2004. (Sacks Decl. Exs. D and E).

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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19.

Dallas "Big D" Thornton ("Thornton") played for the Harlem Globetrotters from

1969-84. (Thornton Tr. 9, 29). 20. James "Twiggy" Sanders ("Sanders") played for the Harlem Globetrotters from

1974-84 and again from 1985-91. (Sanders Tr. 31-32, 53). 21. 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. ¶8). 22. When deciding whether to enter into the License Agreement, GTFM relied on the (Weisfeld Decl.

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.5 (Weisfeld Tr. 65-68; Weisfeld Decl. ¶9).

14 15 16 17 18 19 20 21 agreement between Abe Saperstein Productions, Inc. and CBS, dated January 17, 1970, which 22 23 24 25 26 27 28 Case 2:04-cv-00299-DGC Document 181 6 Filed 10/24/2005 Page 6 of 16
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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23.

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). 24. Attached as exhibits to the License Agreement are several contracts in which the

Globetrotters licensed the rights to use the names and likenesses of their players, including an

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resulted in a Harlem Globetrotters cartoon and used the name and likenesses of several of the plaintiffs. (Sacks Decl. Ex. A). 25. Other agreements attached to the License Agreement that licensed the right to use

the names and likenesses of the Harlem Globetrotters include: (i) an agreement between HGI and Walt Disney Theatrical Productions Ltd. for a musical stage play, dated September 16, 1997; (ii) an agreement between HGI and Columbia Pictures for a movie entitled "The Harlem Globetrotters Story", dated March 30, 1994; and (iii) an agreement between Buena Vista Theatrical Group Ltd. and HGI for a musical stage play, dated February 2, 2001. (Sacks Decl. Ex. A). 26. 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). 27. Over the last fifty years, the Globetrotters used Lemon's name and likeness to

14 15 16 17 18 19 20 21 (Lemon Tr. 123-31, 212-14; Sacks Decl. Exs. P and R). 22 23 24 25 26 27 28 Case 2:04-cv-00299-DGC Document 181 7 Filed 10/24/2005 Page 7 of 16 29. Lemon's caricature was used in a cartoon that ran on CBS from 1970 to 1973 and endorse companies such as Burger King, Footlocker and Uniroyal. (Lemon Tr. 96; Sacks Decl. Exs. P and Q). 28. Lemon's name and/or likeness was used by the Globetrotters on numerous

products, including Iron-On Transfers, a Kirschner LP, a Harlem Globetrotters Thermos, a comic book entitled "The Roamin' Gladiators", a pinball machine advertisement and a book entitled "Harlem Globetrotters" by George Vecsey with photos courtesy of the Harlem Globetrotters.

he appeared on a television show entitled the Wide World of Sports. (Lemon Tr. 185, 227-29).

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30.

Lemon's picture is still in the Harlem Globetrotters program that is distributed to

thousands of people every year; however, he has never asked the Globetrotters to stop using his name or likeness in the program. (Lemon Tr. 186). 31. 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). 32. Lemon does not license his name, alleged jersey number, likeness and/or image.

(Lemon Tr. 150-151). 33. Lemon has not submitted any evidence of lost profits as a result of the

FUBU/HGI Apparel. (Lemon Tr. 155). 34. The Globetrotters sent Lemon a check for FUBU/HGI styles that included his

name and/or likeness. (Lemon Tr. 164; Abalos Tr. 245-46; Sacks Decl. Ex. Y). 35. Neal testified that he has been harmed by the Alleged Infringing Goods because it

14 15 16 17 18 19 20 21 38. 22 23 24 25 26 27 28 Case 2:04-cv-00299-DGC Document 181 8 Filed 10/24/2005 Page 8 of 16 to Mannie Jackson in 2002. (Neal Tr. 82-83; Sacks Decl. Ex. U). 39. Neal was also featured in a television series entitled the Harlem Globetrotters Neal's name and likeness was also used on trading cards, a pack of which he gave is embarrassing that the Globetrotters did not ask his permission. (Neal Tr. 132). 36. Neal's name and/or likeness appeared in the Harlem Globetrotters season

programs, books and posters. (Neal Tr. 32-33, 75-76, 78, 81, 83; Sacks Decl. Exs. P, R-U). 37. Neal's image was sometimes used to promote merchandise, including Wilson

balls and Boeing airplanes, in Globetrotters' programs. (Neal. Tr. 76-78; Sacks Decl. Exs. T and V).

Popcorn Machine and the Wide World of Sports. Moreover, his name and likeness was used on pinball machines, iron-on transfers, LPs, a thermos and comic books. (Neal Tr. 79-87).

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40.

Neal's likeness was also used in cartoons that ran on CBS, including Scooby Doo

in the 1970s, the Super Globetrotters in 1979 and Godzilla Globetrotters Adventure in 1979. (Neal Tr. 88-89; Sacks Decl. Ex. X). 41. In 2003, Neal knew that the Globetrotters were marketing bobble-head dolls with

his likeness; however, when he spoke to Mannie Jackson, the CEO of the Harlem Globetrotters, he only asked how many had been sold and accepted a check for the dolls. (Neal Tr. 72-73; Sacks Decl. Ex. Z). 42. 43. Neal did not request that HGI stop using his name and likeness. (Neal Tr. 74). Neal concedes that since he left the Globetrotters, he has not had any individual

licensing agreements. (Neal Tr. 103-04). 44. Neal admitted that he did not lose any opportunities because of the Alleged

Infringing Goods and he has not endorsed any clothing items since he left the Globetrotters. 14 15 16 17 18 19 20 21 47. 22 23 24 25 26 27 28 Case 2:04-cv-00299-DGC Document 181 9 Filed 10/24/2005 Page 9 of 16 marketing bobble-head dolls with his likeness within the last few years, he did not ask the Harlem Globetrotters to stop using his name or likeness on those dolls, either verbally or in writing. (Haynes Tr. 101-04, 111-13; Sacks Decl. Ex. AA). Even though Haynes was at HGI when he learned that the Globetrotters were (Neal Tr. 137). 45. Neal was paid for the FUBU/HGI Apparel by the Harlem Globetrotters. (Abalos

Tr. 245-46; Sacks Decl. Ex. Y). 46. Haynes testified that he has been harmed by the Alleged Infringing Goods

because it is embarrassing and insulting that they did not ask his permission; however, he never asked HGI to stop using his name or likeness. (Haynes Tr. 71-73, 80).

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48.

Haynes did not object because he knew that, throughout the decades, his name

and likeness was used by the Globetrotters on programs, books and to endorse products such as Coca-Cola as early as the 1950s. (Haynes Tr. 58, 61-70; Sacks Decl. Exs. R, V-W, CC). 49. Haynes appeared on television shows for the Globetrotters, including The

Popcorn Machine and Wide World of Sports. (Haynes Tr. 61-70). 50. Since he left the Globetrotters, Haynes has not had any individual licensing

agreements, has not endorsed any produces or services and does not personally sell any merchandise containing his name or likeness. (Haynes Tr. 13-14). 51. Haynes could not point to the loss of any money as a result of the FUBU/HGI

Apparel. (Haynes Tr. 76). 52. Haynes received compensation from the Globetrotters as a result of the

FUBU/HGI Apparel. (Abalos Tr. 245-46; Sacks Decl. Ex. Y). 14 15 16 17 18 19 20 21 reputation has not suffered. (Hall Tr. 52). 22 23 24 25 26 27 28 Case 2:04-cv-00299-DGC Document 181 10 Filed 10/24/2005 Page 10 of 16 57. Hall has never contacted the Globetrotters and asked them to stop using his name 53. Hall testified that he has been harmed by the Alleged Infringing Goods because

he was upset that he was not notified about the clothing line. (Hall Tr. 52). 54. Since he left the Globetrotters, Hall has not had any individual licensing

agreements or any offers from companies wanting to use his name or likeness. (Hall Tr. 13-14). 55. 56. Hall has not done any appearances since he left the Globetrotters. (Hall Tr. 14). Hall has not lost any money as a result of the FUBU/HGI Apparel and his

or picture or to change the way they were being used, even when he saw his picture in books after he left the team. (Hall Tr. 49-50)

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58.

The Globetrotters sent Hall a check for the FUBU/HGI Apparel. (Abalos Tr. 245-

46; Sacks Decl. Ex. Y). 59. Hall appeared on the television show The Popcorn Machine, his name and

likeness was used to endorse products such as Coca-Cola in the 1950s and his name and likeness appeared on trading cards, posters, programs and books. (Hall Tr. 16-17, 39-44, 47; Sacks Decl. Exs. R, T, BB, CC). 60. Rivers testified that he has been harmed by the Alleged Infringing Goods because

he was embarrassed that HGI did not contact him. (Rivers Tr. 76-77). 61. Until this lawsuit, Rivers did not contact the Globetrotters to object to the way

they were using his name and likeness. (Rivers Tr. 71-72). 62. The Globetrotters used Rivers' name and likeness to promote merchandise,

including Converse tennis shoes, posters and programs which advertised various products, 14 15 16 17 18 19 20 21 Tr. 18-19). 22 23 24 25 26 27 28 Case 2:04-cv-00299-DGC Document 181 11 Filed 10/24/2005 Page 11 of 16 65. Rivers has not lost any business opportunities and his reputation has not suffered including Coca-Cola. (Rivers Tr. 27, 30, 59, 68-70; Sacks Decl. Ex. W). 63. Rivers also appeared in television shows and cartoons on behalf of the

Globetrotters beginning in 1973, including the Love Boat and the Scooby Doo cartoon. (Rivers Tr. 27-30). 64. Rivers has not gotten any offers for licensing endorsements for products, with the

exception of an advertisement he did in connection with the Globetrotters in the 1980s. (Rivers

as a result of the FUBU/HGI Apparel. In fact, Rivers testified 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).

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66.

Rivers received a check from the Globetrotters as compensation for the

FUBU/HGI Apparel. (Abalos Tr. 245-46; Sacks Decl. Ex. Y).6 67. Thornton testified that he has been harmed by the Alleged Infringing Goods

because he was embarrassed that he did not know about the merchandise. (Thornton Tr. 85-86). 68. The Globetrotters used Thornton's name and likeness on postcards and programs.

(Thornton Tr. 84-85, 100-01, 103-05; Sacks Decl. Exs. V-W). 69. Thornton appeared in television shows and movies on behalf of the Globetrotters,

including the pilot of The Popcorn Machine, White Shadow and the Gilligan's Island movie. (Thornton Tr. 101-103). 70. Thornton did not ask the Globetrotters to stop using his name or likeness.

(Thornton Tr. 70). 71. Since he left the Globetrotters, Thornton has not had any individual licensing

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Rivers claims that he has a right to the number 11 on jerseys because that is the number he wore while he was a Globetrotter; however, plaintiffs have produced a DVD in which Rivers is wearing the Harlem Globetrotters uniform with the number 14, not 11, during a game. Moreover, other Globetrotter players have worn the number 11 since Rivers retired. (Sacks Decl. ¶4; Sacks Decl. Ex. O).
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agreements with any products or companies. (Thornton Tr. 81-82, 122-123). 72. Thornton has not lost any business opportunities as a result of the FUBU/HGI

Apparel and he has never had a licensing agreement with his name or likeness with anyone since he left the Globetrotters. (Thornton Tr. 81). 73. Thornton received a check from HGI as compensation for the FUBU/HGI

Apparel. (Abalos Tr. 245-46; Sacks Decl. Ex. Y). Sanders testified that he has been harmed by the Alleged Infringing Goods

because it is embarrassing that he did not know about the merchandise. (Sanders Tr. 95).

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75.

Sanders never asked the Globetrotters to stop using his name or likeness after he

left the team, even though he was aware that they were using his pictures in programs. (Sanders Tr. 86-87). 76. After Sanders left the team the only thing he did to monitor whether the

Globetrotters were using his name or likeness was to check their website from time to time. (Sanders Tr. 86). 77. The Globetrotters have used Sanders' name and likeness on posters, programs,

figurines and in a cartoon entitled the Super Globetrotters, which first aired in 1979. (Sanders Tr. 71-74, 80-85; Sacks Decl. Exs. W-X). 78. Sanders appeared on Wide World of Sports, Gilligan's Island, White Shadow and

endorsed products such as Converse shoes for the Globetrotters. (Sanders Tr. 71-74). 79. In the last 15 years Sanders has not had any individual licensing agreements with

14 15 16 17 18 19 20 21 (the "Expert Report"). (Sacks Decl. Ex. DD). 22 23 24 25 26 27 28 Case 2:04-cv-00299-DGC Document 181 13 Filed 10/24/2005 Page 13 of 16 83. The Expert Report seeks to disgorge all gross profit earned by GTFM from the any products or companies. (Sanders Tr. 27-28). 80. Sanders has not lost any money or business opportunities as a result of the

FUBU/HGI Apparel. (Sanders Tr. 97-98). 81. Sanders received compensation from the Globetrotters for the line. (Abalos Tr.

245-46; Sacks Decl. Ex. Y). 82. In an effort to estimate their alleged damages, plaintiffs submitted an expert report

sale of Alleged Infringing Goods in the minimum amount of $1,832,304, despite the total absence of actual injury to plaintiffs, secondary meaning or likely confusion among consumers. (Expert Report, pg. 16).

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84.

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. (Expert Report, pg. 17). 85. 86. The Alleged Trademarks are not registered. (Abalos Tr. 44). Plaintiffs have not submitted any evidence that (i) their names, alleged numbers,

images or likenesses have achieved secondary meaning or (ii) act as a source identifier. (Sacks Decl. ¶ 6). 87. Plaintiffs have not submitted any consumer surveys or consumer testimony as to

10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Case 2:04-cv-00299-DGC Document 181 consumer recognition in their names, numbers or likenesses; it does not even attempt to establish 14 Filed 10/24/2005 Page 14 of 16 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). 90. Plaintiffs have failed to establish that the Alleged Trademarks are protectible the 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). 88. 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). 89. Plaintiffs did not 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;

under the Lanham Act. Plaintiffs have not submitted any evidence as to whether any consumers bought (or likely bought) any FUBU/HGI Apparel because any players' names, numbers, images and/or likenesses were on them. (Sacks Decl. ¶8). 91. Plaintiffs' Expert Report does not even attempt to establish that plaintiffs have

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that consumers were likely confused in purchasing the Alleged Infringing Goods; 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; it does not even attempt to estimate the income plaintiffs lost as a result of GTFM's conduct; 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). 92. Abalos stated at her deposition that she determined the amount of damages by

using sales of styles that included (i) non-plaintiffs' names, (ii) returns, (iii) samples and (iv) styles that she was unable to determine had any link with any plaintiff. (Abalos Tr. 171-75; 181219; 229-30). 93. Abalos sought to disgorge GTFM's profits for sales of styles in her report because

those styles may have used hangtags that included plaintiffs' names and alleged jersey numbers, 14 15 16 17 18 19 20 21 Globetrotters marks ­ would be far higher than the reasonable royalty rate for plaintiffs' names, 22 23 24 25 26 27 28 Case 2:04-cv-00299-DGC Document 181 15 Filed 10/24/2005 Page 15 of 16 alleged jersey numbers, likenesses and/or images alone. (Abalos Tr. 31-32, 35). along with the FUBU and Harlem Globetrotters trademarks. (Abalos Tr. 186, 203-205, 208; Sacks Decl. Ex. EE). 94. There is no evidence that such tags were, in fact, used on such styles or that

consumers bought these garments because of a hangtag. (Abalos Tr. 160-61). 95. Abalos did not determine what a reasonable royalty rate was for the use of the

Alleged Trademarks, but stated that the 8-10% paid by GTFM to HGI ­ for rights including the

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96.

Plaintiffs have not offered any evidence as to the fair market value of the use of

their Alleged Trademarks; indeed, they specifically eschewed such a claim. (Abalos Tr. 31-33, 35-37, 55, 162-64, 236-38). 97. Plaintiffs' Expert Report does not determine any loss inflicted on plaintiffs as a

result of the FUBU/HGI Apparel and instead only seeks disgorgement of GTFM's profits. (Abalos Tr. 55-57, 59-61). 98. Plaintiffs have not adduced any evidence to suggest that GTFM willfully

infringed their rights. (Sacks Decl. ¶10). 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

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Case 2:04-cv-00299-DGC