Trademark License Agreement
This Trademark License Agreement ("License Agreement") is
entered into this 4th day of November, 1997, by and between Namco Cybertainment,
Inc., a Delaware corporation, having its principal place of business at 000
Xxxxxxx Xxxxx, Xxxxxxxxxxx, Xxxxxxxx (Licensor") and Skyline Virtual Reality,
Inc., having its principal place of business at 000 Xxxxx Xxxxxx, Xxx Xxxx, Xxx
Xxxx, a Delaware corporation ("Licensee").
WHEREAS, Licensor is the owner of all right, title and
interest in and to U.S. federal trademarks listed on Schedule A, attached (the
"Marks");
WHEREAS, Licensee desires a license to utilize the Marks in
connection with the operation of an arcade business ("the Licensed Business")
located at 0000 Xxxxxxxx, Xxx Xxxx, XX (the "Location"); and
WHEREAS, Licensor, pursuant to the Purchase Agreement, dated
as of the date hereof, between Licensor, Licensee and Skyline Multimedia
Entertainment, Inc. (the "Purchase Agreement"), desires to permit Licensee to
use the Marks in connection with the Licensed Business;
NOW, THEREFORE, in consideration of the mutual covenants
herein contained and for other good and valuable consideration, receipt of which
is hereby mutually acknowledged, the parties hereto mutually agree as follows:
1. GRANT.
(a) On and subject to the terms and conditions of this Agreement,
Licensor hereby grants Licensee (and its Affiliates, such term being used herein
as defined in the Purchase Agreement) and Licensee hereby accepts, a
royalty-free, non-exclusive, non-transferable
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(except as provided herein), license to use the Marks solely and only upon and
in connection with the operation of the Licensed Business at the Location.
2. TERM AND TERMINATION.
(a) Term. The term of the license hereby granted shall be effective on
the 4th day of November, 1997 and shall continue until the 31st day of January,
2007, (or, if Licensee elects to extend the lease for the Location for one or
both of the two five year option periods specified therein, until the expiration
of such option period) unless sooner terminated in accordance with the
provisions hereof.
(b) Termination. If the Licensee, or a permitted transferee of the
Licensee, shall cease to operate the Licensed Business for a consecutive thirty
(30) day period during the Term (other than as necessary to effect major capital
improvements at the Location, in which case, Licensee shall be entitled to cease
to operate the Licensed Business for a period of 90 days), this license shall
immediately terminate; provided, however, that if the capital improvements or
reparations resulting from a force majeure event or imposed by the landlord is
financed by (i) the landlord of the Location, then the Licensee shall be
entitled to cease to operate the Licensed Business during the period in which
such capital improvements or reparations are effected, without regard to the
time periods specified above or (ii) the proceeds of insurance policies carried
by Skyline, the Licensee shall be entitled to cease to operate the Licensed
Business for a period of ninety (90) days from receipt of such proceeds, in each
such case, without termination of the license granted hereby.
(c) If the Licensee violates any of its material obligations or
breaches any of the material terms of the license, Licensor shall have the right
to terminate the license upon thirty
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(30) days written notice, and such notice of termination shall become effective
unless Licensee shall within that thirty (30) day period remedy its violation or
breach.
(d) Termination of the license under the provisions of this section
shall be without prejudice to any rights which Licensor may otherwise have
against Licensee.
3. RESERVATION AND OWNERSHIP OF RIGHTS.
(a) All rights not specifically granted to Licensee hereunder are
expressly reserved by Licensor. Licensee neither has nor under any circumstances
shall gain any ownership interest in the Marks in connection with the Licensed
Business. Nothing herein shall be construed to prevent Licensor from granting
any other licenses for the use of the Marks, nor from utilizing the Marks
themselves. Notwithstanding the foregoing, Licensor agrees not to operate a
business using the Marks which is competitive with the Business, or to license
any third party to operate such a business between 00xx Xxxxxx and 59th Street,
inclusive, in the Borrough of Manhattan for a period expiring on the earlier to
occur of (i) three (3) years from the date of this Agreement, (ii) the date of
termination of this Agreement, (iii) the date on which the Business is sold or
transferred to a party that is not an Affiliate of Licensee or there is a change
in control in the beneficial Ownership of 50% or more of the voting securities
of Licensee.
(b) Licensee recognizes the value of the goodwill associated with the
Marks and acknowledges that the Marks and all rights therein and goodwill
pertaining thereto belong exclusively to Licensor. Licensee agrees, during the
Term of this Agreement or thereafter, not to attack or assist another in
attacking the ownership rights of Licensor in the Marks or the validity of the
license being granted herein.
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(c) Licensee agrees that its use of the Marks in connection with the
Licensed Business and all associated goodwill generated thereby, inures to the
sole benefit of Licensor in accordance with their rights in the Marks, and that
Licensee shall not at any time acquire any rights in the Xxxx for the Licensed
Business by virtue of any use it may make thereof.
4. QUALITY OF BUSINESS OPERATION AND APPEARANCE.
(a) Licensee agrees: (i) that the services offered pursuant to the
Licensed Business, including the physical facility, methods of operation, number
and quality of personnel of the Licensed Business, shall be of a standard and of
a style, appearance and quality at least equal to or better than that currently
in effect as determined by the Licensor in the exercise of its reasonable
discretion; (ii) that the services provided pursuant to the Licensed Business
will be provided in accordance with all applicable Federal, State and local laws
and regulations; (iii) that Licensee shall maintain all permits required by any
governmental authority with respect to the Licensed Business; and (iv) that the
Licensee shall not knowingly or recklessly take or neglect to take any actions
which will result in the Licensed Business reflecting adversely upon the good
name of Licensor or the Marks.
(b) Licensee agrees to permit reasonable inspection of Licensee's
operation for purposes of determining compliance with this Section 4, and to
supply Licensor with specimens of Licensee's use of the Marks upon reasonable
advance written request.
(c) Licensee agrees to use the Marks in connection with the Licensed
Business only in the form and manner and with appropriate legends as may be
deemed necessary by Licensor to preserve and protect its rights in the Marks.
Uses of the Marks by the Licensee which differ from those uses in effect with
respect to the Licensed Business as of the date hereof shall
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require the prior written approval of the Licensor, which approval shall be
deemed granted if Licensor fails to respond to a request by Licensee with
fifteen (15) days of receipt thereof by Licensor delivered in accordance with
this Agreement.
5. TRADEMARK PROTECTION AND INFRINGEMENT.
(a) Licensee agrees to assist Licensor in the protection of Licensor's
rights to the Marks in connection with the Licensed Business, and Licensor, if
it so desires, may commence or prosecute at Licensor's expense any claims or
suits in its own name and may if necessary join Licensee as a nominal party
plaintiff thereto, provided that Licensee's costs and expenses with respect
thereto shall be borne by Licensor. Licensee shall endeavor to notify Licensor
in writing of any infringements or imitations by others of the Marks which may
come to Licensee's attention as it relates to the Licensed Business, and
Licensor shall have the primary right in those instances, to determine whether
or not any action shall be taken on account of any such infringements or
imitations.
(b) In the event the use of the Marks referred to in this Agreement is
asserted by a third party to be an infringement upon rights of that third party
(and Licensor elects not to defend such claim of infringement), then, upon
written notice from Licensor, Licensee shall either (i) cease all further use of
the Marks in connection with the Licensed Business within thirty (30) days
without recourse against Licensor with respect thereto or (ii) without prejudice
to Licensor's ownership of the Marks, commence or defend an action with respect
to such alleged infringement (and Licensor shall cooperate with Licensee in the
defense or prosecution of such claim provided its reasonable costs and expenses
shall be reimbursed by Licensee) and
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in the event Licensee is successful in such claim, it shall be entitled to
retain any and all damages recovered thereunder.
6. INDEMNIFICATION.
Licensee shall defend, indemnify and hold Licensor and its
subsidiaries, affiliates, officers, directors, shareholders, agents, employees
and representatives harmless against any claims, demands, causes of action,
loss, damage and judgments (collectively, "Losses") arising out of Licensee's
operation of the Licensed Business, except for Losses resulting from Licensor's
negligence or wilful misconduct.
7. EFFECT OF TERMINATION.
Upon any termination or expiration of this Agreement, Licensee shall
immediately cease all use of the Marks in connection with the Licensed Business
and shall immediately remove the Marks from the premises and all materials used
in the operation of the Licensed Business, including but not limited to, all
literature, signage or advertising materials relating to the Licensed Business.
All such materials existing at the time of termination or expiration of this
Agreement shall be destroyed by Licensee, with written confirmation of such
destruction being provided to Licensor within 60 days from the termination or
expiration of this Agreement.
8. NOTICES
All notices and statements to be given shall be given or made at the
respective addresses of the parties as follows, unless notification of a change
of address is given in writing, and the date of mailing shall be deemed the date
the notice or statement is given:
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Licensor: Namco Cybertainment, Inc.
000 Xxxxxxx Xxxxx
Xxxxxxxxxxx, Xxxxxxxx 00000
Licensee: Skyline Virtual Reality, Inc.
000 Xxxxx Xxxxxx, Xxxxx 000
Xxx Xxxx, Xxx Xxxx 00000
9. NO JOINT VENTURE
Nothing herein contained shall be construed to place the parties in the
relationship of partners or joint venturers, and Licensee shall have no power to
obligate or bind Licensor in any manner whatsoever.
10. NO ASSIGNMENT OR SUBLEASE BY LICENSEE
(a) This Agreement and the rights and obligations of Licensee hereunder
may be assigned by Licensee to any Affiliate of Licensee and, with the prior
written consent of Licensor, which consent may be withheld by Licensor in its
sole and absolute discretion, to a transferee of the Licensed Business. Prior to
the effectiveness of any proposed assignment, the transferee must execute an
instrument in which such transferee agrees to comply with and be bound by the
terms and conditions of this Agreement as if such transferee were an original
signatory hereof. A transfer of beneficial ownership of 50% or more of the
voting securities of Licensee shall be deemed an assignment, which unless such
transfer is to an Affiliate, shall require the consent of Licensor.
(b) Licensor may assign this license, along with the Marks, in which
event Licensor or its assignee shall furnish written notice of the assignment to
Licensee.
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11. NO WAIVER
None of the terms of this Agreement can be waived or modified except by
an express agreement in writing signed by both parties. There are no
representations, promises, warranties, covenants or undertakings other than
those contained in this Agreement, which represents the entire understanding of
the parties. The failure of either party hereto to enforce, or the delay by
either party in enforcing, any of its rights under this Agreement shall not be
deemed a continuing waiver or a modification thereof and either party may,
within the time provided by applicable law, commence appropriate legal
proceeding to enforce any or all of such rights. No person, firm, group or
corporation other than Licensee and Licensor shall be deemed to have acquired
any rights by reason of anything contained in this Agreement.
12. GOVERNING LAW
This Agreement shall be governed by and construed in accordance with
the laws of the State of New York, without regard to the conflict of laws
principles of that State.
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IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly executed as of the day and year first above written.
Licensor: NAMCO CYBERTAINMENT, INC.
By: _________________________
Title:
Licensee: SKYLINE VIRTUAL REALITY, INC.
By: _________________________
Title:
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SCHEDULE A
XS TOO MUCH IS NOT ENOUGH
SERIAL NO.: 75-193,933
XS
SERIAL NO.: 75-193,932
XS TOO MUCH IS NOT ENOUGH and Design
SERIAL NO.: 75-193,931
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