Exhibit 4.11
ASSIGNMENT AND LICENSE AGREEMENT
ASSIGNMENT AND LICENSE AGREEMENT, dated as of July 29, 1997 (this
"Agreement") among Discovery Zone, Inc., a Delaware corporation, DZ Party,
Inc., a Delaware corporation, Discovery Zone Limited, a Canadian corporation,
Discovery Zone (Puerto Rico) Inc., a Puerto Rican corporation (individually
and collectively, "DZ") and Discovery Zone Licensing, Inc., a Nevadian
corporation ("DZIP").
W I T N E S S E T H
WHEREAS, DZ owns all right, title and interest in and to the patents
and patent applications on Schedule A (the "Patents"), the trademarks,
service marks and applications therefor on Schedule B (the "Marks"), the
copyright registrations and applications therefor on Schedule C (the
"Copyrights"), and other intellectual property, whether registered or not,
including but not limited to trade dress and trade secrets used in DZ's
business, and all goodwill and common-law rights symbolized by and associated
with any of the foregoing (individually and collectively, the "Intellectual
Property"); and
WHEREAS, DZ desires to transfer to DZIP, and DZIP desires to acquire
from DZ, all of the rights of DZ in and to the Intellectual Property in
exchange for DZIP maintaining the Intellectual Property and DZIP granting to
DZ a non-exclusive, perpetual, royalty-free, worldwide right and license to
exploit the Intellectual Property subject to DZIP's review and control.
NOW, THEREFORE, in consideration of the premises and the mutual
covenants and agreements herein contained, and for other good and valuable
consideration, the receipt and sufficiency of which are hereby acknowledged, the
parties hereby agree as follows:
1. Assignment to DZIP. DZ hereby assigns and transfers to DZIP all
right, title and interest in and to the Intellectual Property, together with all
of the goodwill of the business symbolized by the Marks and the Intellectual
Property, all common-law rights associated therewith, all registrations and
applications for registration of the Intellectual Property, and all
improvements, derivatives and other future developments of the Intellectual
Property. DZIP shall promptly record this assignment of the Intellectual
Property, at its expense, with the U.S. Patent and Trademark Office, the
Copyright Office of the U.S. Library of Congress, and equivalent foreign offices
with regard to foreign rights. DZIP shall use its reasonable best efforts to
preserve the secrecy of pending U.S. patent applications, if any, by filing
separate assignment agreements limited to the rights being recorded (or a
suitably redacted copy of this Agreement) with any government office, in the
Unites States or abroad, that will maintain a copy of such recordation document
as a public record. The parties shall cooperate with each other to execute and
deliver such other documents, instruments of transfer or assignment, and to do
all such further acts and things as may be reasonably required to secure for
DZIP, its successors and assigns, the entire right, title, and interest in and
to the Intellectual Property and to enforce such rights against third parties.
2. License to DZ. DZIP hereby grants to DZ a non-exclusive, perpetual,
royalty-free, worldwide right and license to exploit the Intellectual Property,
including but not limited to, the right
to make, use and sell products and services covered by the Patents, the right
to use the Marks, and a right to reproduce, distribute, perform, display and
prepare derivatives of the Copyrights, in any and all mediums whatsoever.
3. Ownership and Use of the Marks. DZ acknowledges that DZIP owns each
of the Marks and all of the worldwide rights in and to the Marks. DZ further
acknowledges that any and all goodwill arising from DZ's use of the Marks
shall inure solely to the benefit of DZIP, and DZ shall not assert any claim
to such goodwill. DZ shall use the Marks in a manner that is consistent
with, and does not detract from, the goodwill associated with the Marks. DZ
agrees to cooperate with DZIP in maintaining DZIP's control of the nature and
quality of the goods and services on which and with which the Marks are used,
to permit reasonable inspection of DZ's operations, and to supply DZIP with
samples showing DZ's use of the Marks, all as reasonably requested by DZIP.
DZIP may terminate the license granted to DZ under Paragraph 2 with respect
to all or any of the Marks for any violation of this Paragraph 3 that is not
cured by DZ within thirty (30) days of DZIP's written notice to DZ. Upon
termination of DZ's license to any of the Marks, DZ shall promptly cease use
of such terminated xxxx and shall return or destroy all goods bearing such
terminate xxxx. DZ acknowledges that any failure to cease use of such
terminated xxxx and to return or destroy all goods bearing such terminated
xxxx shall result in irreparable harm and injury to DZIP.
4. Prosecution and Maintenance of the Intellectual Property. DZIP shall
prosecute applications for registration of the Intellectual Property and shall
maintain any registrations already obtained for the Intellectual Property. DZIP
shall be solely responsible for any costs thereof, including attorneys fees.
5. Protection of the Intellectual Property. DZIP, at its expense
(including attorneys fees), may protect the Intellectual Property against
unauthorized uses or infringement. DZ, at its expense (including attorneys
fees), may commence an action against a third party that DZ believes is
infringing the Intellectual Property in the event that DZIP does not commence an
action against such third party within thirty (30) days of its receipt of
written notice from DZ of the allegedly infringing activities of such third
party.
6. Representations and Warranties. DZIP and DZ each represents and
warrants to the other that each is an entity duly organized, validly existing
and in good standing under the laws of each of their respective states of
organization, with sole right, power and authority to execute, deliver and
perform the respective obligations of each under this Agreement; that the
execution, delivery and performance of this Agreement do not conflict with,
violate or breach any agreement to which each is a party; that this Agreement
has been duly executed and delivered by each and is a legal, valid and binding
obligation enforceable against each by the other in accordance with its terms;
and that each shall execute any papers and do such other acts, as reasonably
requested by the other, to carry out this Agreement.
7. Counterparts. This Agreement may be executed in one of more
counterparts, each of which when executed shall be deemed to be an original but
all of which taken together shall constitute one and the same agreement.
8. Integration. This Agreement shall be binding on each of the parties
and their respective affiliates, successors, heirs and assigns, if any. This
Agreement contains the entire understanding and agreement between the parties on
the subject matter addressed herein.
There are no representations or warranties other than those contained in this
Agreement. No waiver or modification of this Agreement shall be valid unless
contained in writing signed by the parties.
IN WITNESS WHEREOF, the parties have executed this Agreement, as of
the date first written above, by their duly authorized officers.
Discovery Zone, Inc.
/s/ Xxxxxx X. Xxxxxx
-------------------------------------------
By: Xxxxxx X. Xxxxxx
Title: Senior Vice President, Chief Financial
and Administrative Officer
Sworn to and subscribed before me
this ____ day of July 1997.
-----------------------------------
Notary Public
IN WITNESS WHEREOF, I have executed this Assignment and License
Agreement, as of the date first written above.
DZ Party, Inc.
/s/ Xxxxxx X. Xxxxxx
-----------------------------------
By: Xxxxxx X. Xxxxxx
Title: Vice President, Secretary & Treasurer
Sworn to and subscribed before me
this 25 day of July 1997.
CTDL 086643824
8/13/97
/s/ Xxxxxxx Xxxxxxxx
-------------------------------
Notary Public
[SEAL]
IN WITNESS WHEREOF, I have executed this Assignment and License
Agreement, as of the date first written above.
Discovery Zone Limited
/s/ Xxxxxx X. Xxxxxx
---------------------------------
By: Xxxxxx X. Xxxxxx
Title: Vice President & Secretary
Sworn to and subscribed before me
this 28th day of July 1997.
CTDL 086643824
8/13/97
/s/ Xxxx X. Xxxxxxxx
----------------------------------
Notary Public
[SEAL]
IN WITNESS WHEREOF, I have executed this Assignment and License
Agreement, as of the date first written above.
Discovery Zone (Puerto Rico) Inc.
/s/ Xxxxxx X. Xxxxxx
----------------------------------
By: Xxxxxx X. Xxxxxx
Title: Senior Vice President & CFO
Sworn to and subscribed before me
this 25 day of July 1997.
CTDL 0866438245 8/13/97
/s/ Xxxxxxx Xxxxxxxx
----------------------------------
Notary Public
[SEAL]
IN WITNESS WHEREOF, I have executed this Assignment and License
Agree-ment, as of the date first written above.
Discovery Zone Licensing, Inc.
/s/ Xxxxxx X. Xxxxxx
------------------------------------
By: Xxxxxx X. Xxxxxx
Title: Vice President & Secretary
Sworn to and subscribed before me
this 25 day of July 1997.
CTDL 086643824 8/13/97
/s/ Xxxxxxx Xxxxxxxx
--------------------------------------
Notary Public
[SEAL]
SCHEDULE A
PATENTS
ISSUED UTILITY PATENTS
TYPE INVENTOR NUMBER ISSUE DATE
---- -------- ------ ----------
US Lang 5,021,878 June 4, 1991
US Lang 5,142,803 September 1, 1992
US Xxxxxxx, et al. 5,167,595 December 1, 1992
US Lang 5,182,557 January 26, 1993
US Lang 5,198,893 March 30, 1993
US Xxxxxxxxxx 5,205,748 April 27, 1993
US Lang 5,289,273 February 22, 1994
US Xxxxxxxxx, et al. 5,353,822 October 11, 1994
US Xxxxxxx, et al. 5,372,550 December 13, 1994
US Xxxxxxxxxx, et al. 5,405,304 April 11, 1995
US Xxxxxxx, et al. 5,425,677 June 20, 1995
US Xxxxxxxxx, et al. 5,482,565 January 9, 1996
US Xxxxxx, et al. 5,499,641 March 19, 1996
UTILITY PATENT APPLICATIONS
TYPE INVENTOR NUMBER FILING DATE
---- -------- ------ -----------
US Xxxxxxx, et al. 08/348,363 November 30, 1994
PCT Xxxxxx, et al. WO95/19854 January 20, 1995
US Xxxxxxxxx, et al. 07/827,773 January 29, 1992
US Xxxxxxxxxx, et al. 07/845,119 March 3, 1992
US Xxxxxxx, et al. 07/845,130 March 3, 1992
US Xxxxxxx, et al. 07/845,301 March 3, 1992
US Xxxxxxxxxx 07/845,414 March 3, 1992
US Xxxxxxx, et al. 07/097,494 July 23, 1993
US Xxxxxx, et al. 08/184,513 January 21, 1994
US Xxxxxxxxxx, et al. 08/191,431 February 3, 1994
US Xxxxxxxxx, et al. 08/316,700 September 30, 1994
US Xxxxxx, et al. 08/472,086 June 7, 1995
US Xxxxxx, et al. 08/475,314 June 7, 1995
US Xxxxxx, et al. 08/475,317 June 7, 1995
US Lang 07/410,114 September 20, 1989
US Lang 07/595,381 October 10, 1990
US Lang 07/613,381 November 13, 1990
US Lang 07/805,113 December 10, 1991
US Lang 07/972,258 November 5, 1992
US Huffmann, et al. 08/791,873 January 31, 1997
US Huffmann, et al. 08/348,363 November 30, 1994
US Xxxxxx, et al. 08/472,086 June 7, 1995
US Xxxxxx, et al. 08/475,314 June 7, 1995
US Xxxxxx, et al. 08/475,317 June 7, 1995
US Xxxxxx, et al. 08/184,513 January 21, 1994
US Xxxxxxxxx, et al. 08/316,700 September 30, 1994
ISSUED DESIGN PATENTS
TYPE INVENTOR NUMBER ISSUE DATE
---- -------- ------ ----------
US Xxxxxx 07/518,837 March 31, 1992
US Xxxxxx 07/518,841 April 21, 1992
US Xxxxxx 07/522,964 July 21, 1992
US Xxxxxx 07/518,821 August 25, 1992
US Xxxxxx 07/518,839 August 25, 1992
US Xxxxxx 07/518,840 August 25, 1992
US Xxxxxx 07/532,978 November 3, 1992
US Xxxxxx 07/533,063 November 3, 1992
US Xxxxxx 07/532,977 November 3, 1992
US Xxxxxxx 07/828,590 September 14, 1993
US Xxxxxxxxxx 07/831,040 October 5, 1993
US Xxxxxx, et al. 07/828,594 October 5, 1993
US Xxxxxxx 07/828,589 October 5, 1993
US Xxxxxx, et al. 07/830,270 October 5, 1993
US Xxxxxx 07/830,269 October 5, 1993
US Xxxxxxx, et al. 07/828,595 October 12, 1993
US Xxxxxx, et al. 07/830,268 October 19, 1993
US Xxxxxxxxxx 07/830,272 November 23, 1993
US Xxxxxxxxxx, et al. 07/828,587 December 7, 1993
US Xxxxxxxxxx 07/834,507 January 25, 1994
US Xxxxxxxxxx 07/834,506 February 15, 1994
US Xxxxxx 07/828,588 August 23, 1994
US Xxxxxxxxxxx, et al. 29/010,728 May 9, 1995
US Xxxxxx, et al. 29/010,196 July 25, 1995
US Xxxxxx 07/933,529 ABANDONED
US Xxxxxxxxxx, et al. 08/191,431 ABANDONED
US Xxxxxxxxxx, et al. 29/011,036 ABANDONED
US Xxxxxx 07/696,068 ABANDONED
DESIGN PATENT APPLICATIONS
TYPE INVENTOR NUMBER FILING DATE
---- -------- ------ -----------
US Xxxxxxxxxx, et al. 07/828,587 January 30, 1992
US Xxxxxx 07/828,588 January 30, 1992
US Xxxxxxx 07/828,589 January 30, 1992
US Xxxxxxx 07/828,590 January 30, 1992
US Xxxxxx, et al. 07/828,594 January 30, 1992
US Xxxxxxx et al. 07/828,595 January 30, 1992
US Xxxxxx, et al. 07/830,268 February 4, 1992
US Xxxxxx 07/830,269 February 4, 1992
US Xxxxxx, et al. 07/830,270 February 4, 1992
US Xxxxxxxxxx 07/830,272 February 4, 1992
US Xxxxxxxxxx 07/831,040 February 4, 1992
US Xxxxxxxxxx 07/834,506 February 15, 1994
US Xxxxxxxxxx 07/834,507 January 25, 1994
US Xxxxxx, et al. 29/010,196 June 29, 1993
US Xxxxxxxxxxx, et al. 29/010,728 July 15, 1993
US Xxxxxxxxxx, et al. 29/011,036 July 23, 1993
US Xxxxxx 07/518,821 May 4, 1990
US Xxxxxx 07/518,839 May 4, 1990
US Xxxxxx 07/518,841 May 4, 1990
US Xxxxxx 07/522,964 May 15, 1990
US Xxxxxx 07/533,063 June 4, 1990
US Xxxxxx 07/532,977 June 4, 1990
US Xxxxxx 07/532,978
US Xxxxxx 07/698,068 May 10, 1991
US Xxxxxx 07/933,529 August 24, 1992
US Xxxxxx 07/518,837 May 4, 1990
SCHEDULE B
TRADEMARKS
TRADEMARK REGISTRATIONS
COUNTRY XXXX NUMBER CLASS
------- ---- ------ -----
Australia DISCOVERY ZONE 553185 41
Australia Discovery Zone Logo 553186 41
Bahrain DISCOVERY ZONE 1043 41
Benelux DISCOVERY ZONE 496168 41
Benelux Discovery Xxxx Xxxx 000000 00
Xxxxxx DISCOVERY ZONE 816689598 41
Canada DISCOVERY ZONE 404011 41
Canada Discovery Zone Logo 404010 41
Egypt DISCOVERY XXXX 00000 00
Xxxxxx DISCOVERY XXXX 0000000 00
Xxxxxx Discovery Zone Logo 1656500 41
Germany DISCOVERY ZONE 2073100 41
Germany Discovery Xxxx Xxxx 0000000 00
Xxxx Xxxx DISCOVERY XXXX X00000/0000 00
Xxxx Xxxx Discovery Xxxx Xxxx X00000/0000 00
Xxxx Xxxx DISCOVERY XXXX 00000/0000 00
Xxxx Xxxx Discovery Zone Logo B2686/1994 25
Israel DISCOVERY ZONE T/83162 00
Xxxxx XXXXXXXXX XXXX 000000 00
Xxxxx Discovery Zone Logo 619191 41
Japan DISCOVERY ZONE 2683485 17
Korea (South) Discovery Xxxx Xxxx 00000 000
Xxxxx (South) DISCOVERY XXXX 00000 000
Xxxxxx DISCOVERY XXXX 000000 00
Xxxxxx DISCOVERY XXXX 000000 00
Xxxxxx Xxxx DISCOVERY XXXX 000 00
Xxxxx Xxxxxx DISCOVERY XXXX 000/00 00
Xxxxx Xxxxxx Discovery Xxxx Xxxx 000/00 00
Xxxxx DISCOVERY XXXX 0 000 000/0 00
Xxxxx Discovery Xxxx Xxxx 0 000 000/0 00
Xxxxxxxxxxx DISCOVERY XXXX 000000 00
Xxxxxx DISCOVERY ZONE 81928 41
Taiwan Discovery Xxxx Xxxx 00000 00
Xxxxxx Xxxxxxx DISCOVERY ZONE 1461058 41
United Kingdom Discovery Zone Logo 1461054 41
United States Discovery Zone Logo 1,619,865 00
Xxxxxx Xxxxxx XXXXXXXXX XXXX 0,000,000 00
Xxxxxx Xxxxxx Discovery Zone Logo 1,620,069 00
Xxxxxx Xxxxxx XXXXXXXXX XXXX 0,000,000 00
Xxxxxx Xxxxxx Discovery Zone Logo 1,620,486 00
Xxxxxx Xxxxxx XXXXXXXXX XXXX 0,000,000 00
Xxxxxx Xxxxxx Discovery Zone Logo 1,639,186 00
Xxxxxx Xxxxxx XXXXXXXXX XXXX 0,000,000 00
Xxxxxx Xxxxxx FUNBELIEVABLE FITNESS 1,708,767 00
Xxxxxx Xxxxxx XXXXXXXXXXXXX 0,000,000 00
Xxxxxx Xxxxxx Robot Design 1,816,211 00
Xxxxxx Xxxxxx X-XXX 0,000,000 00
Xxxxxx Xxxxxx WHERE KIDZ WANNA BE! 1,835,777 00
Xxxxxx Xxxxxx XX 0,000,000 00
Xxxxxx Xxxxxx DZ 1,850,362 00
Xxxxxx Xxxxxx XXXXXXXXX 0,000,000 00
Xxxxxx Xxxxxx DZ DINER 1,871,739 00
Xxxxxx Xxxxxx XXXXX XXX XXXX 0,000,000 00
Xxxxxx Xxxxxx KIDZ WATCH 1,953,607 00
Xxxxxx Xxxxxx CHICKEN DINOBITES 1,958,271 29
United States DISCOVERY ZONE ... 1,976,126 00
Xxxxxx Xxxxxx XXXXXXX XXXX 0,000,000 00
Xxxxxx Xxxxxx SKILL ZONE 1,991,069 41
United States TAKE ME HOME ZONE 1,992,959 00
Xxxxxx Xxxxxx XXXX XXXX 0,000,000 00
Xxxxxx Xxxxxx FUNSITTERS 2,000,077 00
Xxxxxx Xxxxxx XXXX XXXXX 0,000,000 00
Xxxxxx Xxxxxx IMAGINACTION 2,012,590 41
United Staes MEGA ZONE 2,020,317 00
Xxxxxx Xxxxxx THE FREEDOM YOU ... 2,025,727 42
APPLICATIONS FOR TRADEMARK REGISTRATION
COUNTRY XXXX NUMBER CLASS
------- ---- ------ -----
China DISCOVERY XXXX 000000 00
Xxxxxxxxx DISCOVERY XXXX 00000 00
Xxxxx Discovery Zone Logo 133794/1995 17
Korea (South) DISCOVERY XXXX 0000/00 000
Xxxxx DISCOVERY ZONE 9649 41
Ras-al-Khaimah DISCOVERY XXXX 0000 00
Xxxxxxxxxxx Discovery Xxxx Xxxx 0000/00 00
Xxxxxx Xxxx Xxxxxxxx DISCOVERY XXXX 0000 00
Xxxxxx Xxxx Xxxxxxxx Discovery Zone Logo 18716 00
Xxxxxx Xxxxxx XXXXXXXXX XXXX 00/000000 00
Xxxxxx Xxxxxx Discovery Zone Logo 74/712805 00
Xxxxxx Xxxxxx XXXXXXXXX XXXX 00/000000 00
Xxxxxx Xxxxxx SHIPWRECKED 75/001665 00
Xxxxxx Xxxxxx XXXXX XXXX 00/000000 00
Xxxxxx Xxxxxx TEKNO XXXX 00/000000 00
Xxxxxx Xxxxxx TEKNO ZONE 75/031321 00
Xxxxxx Xxxxxx XXXX XXXX 00/000000 00
Xxxxxx Xxxxxx NITE ZONE 75/045154 00
Xxxxxx Xxxxxx XXXX XXXX 00/000000 00
Xxxxxx Xxxxxx NITE ZONE 75/045156 16
United States DZ 75/067142 28
SCHEDULE C
COPYRIGHTS
COPYRIGHT REGISTRATIONS
COUNTRY TITLE NUMBER DATE
------- ----- ------ ----
US We Make Happy... TX3277072 March 9, 0000
XX Xxxxxxxx XX0000000 March 14, 0000
XX Xxxxxx/Xxxxxxxxxx Xxxxxx XX0000000 April 29, 1992
US 1991 Kids PA564669 March 9, 1992
US Discover an Investment ... TX3285922 March 9, 1992
US Let Your Kids Bounce ... TX3299596 March 9, 1992
US At Discovery Zone, Every ... TX3299592 March 9, 1992
US The Place For Kids ... XX0000000 March 9, 1992
US Let Your Kids ... TX3299593 March 9, 1992
US Bring Your Kids ... TX3299594 March 9, 0000
XX Xxxxxxxxx Xxxx XX0000000 March 9, 1992
US Fitness Fun ... TX3299597 March 9, 1992
US Tell Your Kids ... TX3299591 March 9, 1992
US Welcome to Discovery ... TX3276556 March 9, 1992
US The Perfect Destination ... TX3277110 March 9, 1992
US Discovery How Fit ... TX3299595 March 9, 0000
XX Xxxxxxxxx Xxxx ... XX0000000 July 11, 1991
APPLICATIONS FOR COPYRIGHT REGISTRATION
COUNTRY TITLE
------- -----
US Z-Bop - robot character
US Employee Handbook
