1
Exhibit 10.25
INFOGRAMES
TRADEMARK LICENSE AGREEMENT
THIS TRADEMARK LICENSE AGREEMENT (the "Agreement"), effective as of May
10, 2000, is between Infogrames Entertainment S.A., a societe anonyme organized
under the laws of France, having its principal place of business at 00, xxx xx
xxx Xxxx 0000, Xxxxxxxxxxxx, 00000 Xxxxxx ("Infogrames"), and GT Interactive
Software Corp., a Delaware corporation, having its principal place of business
at 000 0xx Xxxxxx, Xxx Xxxx, X.X. 00000 ("Licensee"). For purposes of this
Agreement, the rights and obligations of Licensee hereunder shall be deemed to
include each of Licensee's subsidiaries and affiliates "controlled" by it, but
only for so long as each remains a subsidiary or affiliate, as the case may be,
controlled by Licensee. "Control" shall mean the possession, whether direct or
indirect, of the power to direct or cause the direction of the management and
policies of an entity, whether through the ownership of voting securities, by
contract, or otherwise.
W I T N E S S E T H:
WHEREAS, Infogrames is the owner of the Trademarks listed or described
on Schedule A hereto (collectively the "Trademarks") used in connection with its
business.
WHEREAS, Infogrames has the power and authority to grant to Licensee
the right and license to use the Trademarks pursuant to this Agreement;
WHEREAS, Infogrames is a majority shareholder of Licensee and is in the
business of, among other things, developing, publishing and distributing
software and providing products and services related to software;
WHEREAS, Licensee is also in the business of developing, publishing and
distributing software and providing products and services related to software
(the "Business"); and
WHEREAS, Licensee desires to obtain from Infogrames a license to use
the Trademarks for the Business, including but not limited to entertainment and
edutainment software for p.c. and video game consoles (collectively,
"Products").
NOW, THEREFORE, in consideration of the promises and mutual covenants,
agreements and obligations set forth herein, the sufficiency of which is hereby
acknowledged, the parties hereto agree as follows:
1. GRANT OF LICENSE.
2
Subject to the terms and conditions herein, Infogrames hereby grants to
Licensee, during the Term (as defined below), the royalty-free, non-exclusive
right and license to use the Trademarks in connection with the Business in the
Territory (as defined below), including, without limitation, in Licensee's own
name on all corporate materials and on all Products' packaging, marketing,
advertising and promotional materials and for identification purposes for
individuals who are associated with the Products and/or the Business.
The term "Territory" shall mean worldwide.
Licensee shall have no right to sublicense any of its rights under
this Agreement without the prior written consent of Infogrames,
which consent may be withheld in Infogrames's sole but reasonable
discretion.
To the extent Licensee sublicenses any of its rights under this
Agreement, it shall do so only pursuant to a written sublicense
agreement approved in advance in writing by Infogrames. Licensee
shall be responsible for any failure of its sublicensees to comply
with the requirements of the applicable sublicense agreement.
2. ACKNOWLEDGMENT OF OWNERSHIP.
2.1 Licensee recognizes and acknowledges the validity of
Infogrames's rights in the Trademarks and that Infogrames
is the owner thereof as so represented by Infogrames
herein. Licensee agrees not to challenge the validity of
or Infogrames' title to the Trademarks, and not to oppose
or petition to cancel any applications filed or
registrations received in respect of such rights.
Licensee's use of the Trademarks shall inure to the
benefit of Infogrames.
2.2 All rights and good will created by or arising from use of
the Trademarks by Licensee shall be and remain the sole
and exclusive property of Infogrames, and Licensee does
hereby waive and renounce any and all claims to such
Trademarks. Licensee further agrees not to perform any act
or omission materially adverse to the Trademarks.
2.3 Licensee shall not attempt to register or claim rights in
the Trademarks, alone or as part of its own trademark, in
the Territory or in jurisdictions foreign thereto.
Licensee acknowledges that Infogrames, as the owner of the
Trademarks, shall have the exclusive right to apply for,
and to extend, all registrations for the Trademarks
throughout the Territory. Licensee agrees to cooperate
with Infogrames with respect to the preparation of any
application for or extensions of any such registrations,
and shall execute any other documents Infogrames may
reasonably require to maintain the registrations in
effect. All expenses in connection with the registrations
shall be paid by Infogrames.
2
3
3. TERM.
Subject to the parties' right to terminate the license as detailed
in Section 4 below, the term of the license granted hereunder (the
"Term") shall be perpetual.
4. TERMINATION OF THE TERM.
4.1 Either party hereto shall have the right to terminate this
Agreement by the delivery to the other party of one (1)
year advance written notice of termination or such shorter
period as may be agreed to by the parties, or, in the case
of a breach of Section 6 below, Infogrames may terminate
with thirty (30) days advance written notice. If
termination is for breach of Section 6 below, such notice
shall be of no force or effect and the Agreement shall not
thereby be terminated if such breach shall have been cured
prior to the expiration of such 30-day period. If such
breach shall not have been cured within such 30 day
period, Licensee shall take all steps necessary as soon as
possible thereafter to cease all use of the Trademarks;
provided, however, that Licensee shall not be required to
recall any Products in connection with the termination of
its or any of its affiliates rights to use the Trademarks
hereunder.
4.2 If either party hereto shall file a voluntary petition
under any bankruptcy or insolvency law, or if any
involuntary petition is filed against either party hereto
under any bankruptcy or insolvency law and such petition
is not dismissed within sixty (60) days of such filing, or
if either party hereto shall make any assignment for the
benefit of its creditors or shall make any arrangement
pursuant to any bankruptcy or insolvency law, then the
other party hereto shall have the right to terminate the
Term by the delivery to such first party hereto of written
notice of termination. This notice shall state the basis
for such claim of a right to terminate the Term and shall
be effective immediately upon its delivery.
4.3 In the event that Infogrames' ownership interest, whether
direct or indirect, in Licensee shall at any time be less
than fifty percent (50%) or in the event that Infogrames
no longer controls the management and policies of
Licensee, Infogrames and Licensee shall enter into good
faith negotiations to provide for appropriate terms on
which Licensee will discontinue all use of the Trademarks
hereunder, and Infogrames will cooperate with Licensee in
connection with any corporate action necessary as a result
of any termination under this Section 4.3.
5. EFFECT OF TERMINATION OR EXPIRATION OF THE TERM.
Subject to the provisions of Section 4 above, upon termination of
this
3
4
Agreement, Licensee agrees to immediately cease use of the
Trademarks.
6. QUALITY CONTROL.
6.1 Licensee shall use the Trademarks in connection with the
Business, including but not limited to the Products and
any marketing, advertising, promotional and corporate
materials, only in the manner set forth in guidelines
provided to Licensee in writing by Infogrames, as the same
may be modified or amended from time to time (the
"Guidelines"), or as otherwise specified in writing by
Infogrames, and in compliance with all applicable laws,
rules, regulations, policies, requirements and the like of
federal, state, local and other governmental,
administrative or judicial authorities. Licensee
acknowledges that if the Products are of inferior quality,
the substantial goodwill which Infogrames possesses in the
Trademarks may be impaired. Licensee must obtain
Infogrames's prior written approval for any other use of
the Trademarks. Infogrames may withhold its approval in
its sole discretion.
6.2 Licensee shall, at its sole cost and expense, upon
reasonable request by Infogrames, supply to Infogrames
samples of the use of the Trademarks, including samples of
Products bearing the Trademarks and promotional and
written materials, for purposes of inspection to determine
if the Products and other materials meet the standards of
quality acceptable to Infogrames. Such right of inspection
to determine compliance with this Agreement and the
quality controls set forth herein shall only be undertaken
during business hours and without creating any
unreasonable disturbance to inspect the premises of
Licensee.
6.3 Licensee shall not use the Trademarks in any advertising
or promotional material or in connection with the Products
or conduct any activities with respect to the Business in
a manner which is reasonably likely to adversely affect or
detract from the Trademarks or Infogrames; provided,
however, that Licensee shall not be in breach of this
Section 6.3 if Infogrames has approved such use pursuant
to Section 6.2.
6.4 Licensee agrees that whenever it uses any of the
Trademarks which are registered, it shall do so in
connection with the registration symbol "(R)". Licensee
also agrees that whenever it uses any of the Trademarks
which are not registered, it shall apply any marking that
Infogrames reasonably requests (for example, "TM").
6.5 Should Licensee fail to comply with any one or more of the
provisions of this Section 6, or fail, to the reasonable
satisfaction of Infogrames, to meet the standard of
quality with respect to the Products and other
4
5
materials established by Infogrames, Infogrames shall have
the right to terminate this Agreement in accordance with
the provisions of Section 4.1.
7. REPRESENTATIONS AND WARRANTIES.
7.1 Each party represents and warrants that it is in
possession of the full right, power and authority to enter
into this Agreement.
7.2 Licensee represents and warrants that all activities
conducted in connection with the Business by Licensee and
its employees, officers, directors, and sublicensees, if
any, shall be in material compliance with and shall not
violate in any material respect any laws, rules,
regulations, policies, requirements and the like of
federal, state, local and other governmental,
administrative or judicial authorities.
8. INDEMNIFICATION AND HOLD HARMLESS.
8.1 Infogrames shall have no obligation to indemnify or hold
Licensee harmless from and against, and shall not be
responsible or liable for, any claims, liabilities,
damages, losses, costs, attorneys fees, etc., with respect
to any action, inaction or activities by Licensee, its
sublicensees, and/or one or more third parties concerning,
either directly or indirectly, the subject matter of this
Agreement. Notwithstanding the foregoing, Infogrames shall
indemnify, defend and hold harmless Licensee from and
against any claim, demand, proceeding or action for
infringement, by use of the Trademarks, of third party
intellectual property rights, provided that the Trademarks
are used in accordance with the provision of this
Agreement, and further provided that the Licensee gives
Infogrames prompt written notice of any such claim,
demand, proceeding or action.
8.2 Licensee shall be solely responsible and liable for, with
no liability or responsibility on the part of Infogrames
or any third party engaged by Infogrames, and shall
indemnify and hold Infogrames harmless from and against
any and all claims, demands, liabilities, damages, losses,
costs, expenses, reasonable counsel fees and settlements,
which Infogrames or its officers, directors, employees,
agents, attorneys, affiliates, etc. may sustain:
(a) Arising from any and all unauthorized action,
inaction, activities, products or services,
including, but not limited to, the Products
provided by Licensee, its sublicensees or third
parties;
(b) Resulting from any breach or default in the
performance or observance of any of the covenants
or obligations of Licensee hereunder or of
Licensee's sublicensees under the applicable
5
6
sublicense agreements;
(c) Arising from any of Licensee's or its
sublicensees' obligations or liabilities; or
(d) Arising from any product liabilities relating to
the Products.
9. ENFORCEMENT AND PROTECTION.
9.1 Infogrames shall endeavor to investigate unauthorized uses
or misuses by third parties of the Trademarks, or
variations thereof, brought to its attention by Licensee.
However, Infogrames shall not be required to bring suit or
take action with respect to such unauthorized use or
misuse by third parties.
9.2 Licensee shall immediately notify Infogrames of any
unauthorized use or misuse of the Trademarks or variations
thereof as comes to Licensee's attention, with Infogrames
having the sole right and discretion to take action in
respect to the unauthorized use or misuse of the
Trademarks; provided, however, that to the extent
Infogrames declines to take action with respect to any
unauthorized use or misuse of the Trademarks and such
unauthorized use or misuse materially adversely affects
Licensee's Business or any Product published or developed
by Licensee, Licensee shall have the right to take action
with respect to such unauthorized use or misuse.
10. NOTICES AND OTHER COMMUNICATIONS.
Any notice or other communication required, contemplated or
permitted by this Agreement by any party, shall be in writing and
shall be either personally delivered or sent by Federal Express or
other reputable overnight courier for next business day delivery
with charges billed to or prepaid by shipper, or sent by certified
mail, return receipt requested, postage prepaid, at the addresses
set forth in the preamble of this Agreement.
Any notice personally served shall be deemed delivered on the date
of such service. Any notice sent by overnight courier as provided
above shall be deemed delivered on the first business day after
the date such notice was delivered to such overnight courier. Any
notice sent by certified mail as provided above shall be deemed
delivered on the third business day next following the postmark
date the notice bears.
11. INJUNCTIVE RELIEF.
Licensee acknowledges that Infogrames may be irreparably harmed by
any breach of this Agreement and that any monetary relief may be
inadequate to compensate Infogrames for any breach by Licensee.
Therefore, in addition to any monetary relief available to
Infogrames, Infogrames shall be entitled,
6
7
without the necessity of proving irreparable harm or posting any
bond, to injunctive relief against Licensee upon making an
adequate showing of a material breach of this Agreement by
Licensee.
12. ASSIGNMENT AND BINDING EFFECT.
This Agreement shall be binding upon and shall inure to the benefit
of the parties hereto and their respective assigns and successors
in interest, provided, however, that Licensee shall not assign or
otherwise transfer any of such rights, duties, obligations or
undertakings or any portion thereof, to any third party without the
prior written consent of Infogrames. Any attempted assignment or
transfer in violation of these provisions shall be invalid.
13. SEVERABILITY.
The invalidity, illegality or unenforceability of any provision
hereof shall not in any way affect, impair, invalidate or render
unenforceable this Agreement or any provision thereof.
14. FURTHER ASSURANCE.
Licensee agrees that it will, after the date hereof, from time to
time and without further consideration thereof, execute and deliver
such further instruments and take such further actions as may be
required to implement the transactions contemplated hereby.
Infogrames agrees that it will, after the date hereof, from time to
time and without further consideration therefor, execute and
deliver such further instruments and take such further actions as
may be required to implement the transactions contemplated hereby.
15. GOVERNING LAW AND JURISDICTION.
This Agreement shall be governed by and construed in accordance
with the laws of the State of New York applicable to agreements
made and to be performed wholly within such jurisdiction, without
regard to the conflicts of law principles thereof. All disputes
under this Agreement shall be resolved by the courts of the State
of New York, including the state and federal courts, and the
parties all consent to the jurisdiction of such courts, agree to
accept service of process by mail, and hereby waive any
jurisdictional or venue defenses otherwise available to it.
16. RELATIONSHIP OF THE PARTIES.
This Agreement shall not create a relationship of agent, employee,
or partner of or joint venturer with the other party. The
relationship between the parties with respect to the subject matter
covered hereby is one of licensor and licensee.
17. PARAGRAPH HEADINGS.
7
8
Paragraph and Section headings of this Agreement are for reference
and convenience only and shall have no bearing on the
interpretation of this Agreement.
18. ENTIRE AGREEMENT.
This Agreement (including schedules attached hereto) constitutes
the entire agreement between the parties regarding the subject
matter hereof. All prior agreements or arrangements, written or
oral, between the parties relating to the subject matter hereof are
hereby canceled and superseded.
* * * * *
8
9
IN WITNESS WHEREOF, the parties have caused this Agreement to be
duly executed the day and year first written above.
INFOGRAMES ENTERTAINMENT S.A.
By: /s/ Xxxxx Xxxxxxx
Name: Xxxxx Xxxxxxx
Title: President and Director General
GT INTERACTIVE SOFTWARE CORP.
By: /s/ Denis Guyennot
Name: Denis Guyennot
Title: President and Chief Operating Officer
9
