LICENSE AGREEMENT
Exhibit 99.1
NOTE: CERTAIN MATERIAL HAS BEEN REDACTED FROM THIS DOCUMENT AND FILED SEPARATELY WITH THE SEC PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT UNDER RULE 24b-2. THE LOCATIONS OF THESE REDACTIONS ARE INDICATED THROUGHOUT THE DOCUMENT BY THE FOLLOWING MARKING: [***]
This License Agreement (the “License Agreement”) is made effective as of the 1st day of January, 2009 (the “Effective Date”), by and among, on the one hand, DreamWorks Animation LLC, a Delaware limited liability company
with offices at 0000 Xxxxxx Xxxxxx, Xxxxxxxx, Xxxxxxxxxx 00000 (“DWA”), and, on the other hand, XX XX Management, Inc., a Delaware corporation with offices at 00000 X. Xxxxxxx Xxxx, Xxxxx 000, Xxx Xxxxxxx, Xxxxxxxxxx 00000 (“Xxxxxxxxx Entity”), and, solely with respect to Paragraph 2(h) (Xxxxxxxxx Exclusivity) and the applicable provisions of Paragraph 11 (Miscellaneous), Xxxxxx Xxxxxxxxx, an individual with offices at 00000 X. Xxxxxxx Xxxx, Xxxxx 000, Xxx Xxxxxxx, Xxxxxxxxxx 00000 (“Xxxxxxxxx”),
and is made with reference to the following facts:
RECITALS
A. DWA is engaged in the business of producing and distributing various entertainment properties, including animated motion pictures, animated television programs and other entertainment-related goods and services, under and in connection with the trademark, service
xxxx and trade name DREAMWORKS and various other trademarks, service marks and trade names containing the term DREAMWORKS, including the trademark, service xxxx and trade name DREAMWORKS SKG in both word xxxx and design xxxx form (collectively the “DreamWorks Marks”). The trademark, service xxxx and trade name DREAMWORKS SKG in both word xxxx and design xxxx form as set forth in Schedule A are referred to in this License Agreement as the “Licensed Marks” (provided
that “Licensed Marks” will also include the word xxxx DREAMWORKS without the SKG component (the “Non-SKG Xxxx”) but only for use in certain contexts as set forth in Section 2(a)). As between the parties, DWA owns all right, title and interest in and to the DreamWorks Marks worldwide, together with all registrations of and applications to register the DreamWorks Marks and the goodwill of the business pertaining thereto.
X. Xxxxxxxxx Entity desires to sublicense Holding Company (as defined below) to use the Licensed Marks in connection with the production and distribution of certain non-animated motion pictures and related goods and services. DWA is willing to grant to Xxxxxxxxx
Entity the right to sublicense Holding Company to use the Licensed Marks on the terms and conditions set forth herein, and Xxxxxxxxx Entity is willing to accept such a license.
C. DWA acknowledges that Xxxxxxxxx Entity desires to sublicense the rights granted herein to use the Licensed Marks on the terms and conditions set forth herein to DreamWorks II Holding Co., LLC and its wholly-owned and controlled subsidiaries, which as of the Effective
Date consist of DreamWorks II Financial Services, Co., LLC, DreamWorks II Distribution Co., LLC, DreamWorks II Production Co., LLC, and DreamWorks II Development Co., LLC, and may in the future include additional wholly-owned and controlled subsidiaries of DreamWorks II Holding Co., LLC provided that Xxxxxxxxx Entity provides notice to DWA of any such additional wholly-owned and controlled subsidiaries (DreamWorks II Holding Co., LLC and all such wholly-owned and controlled subsidiaries are referred to collectively
herein as “Holding Company”), and the approved form for granting such sublicense is attached hereto as Schedule X.
X. Xxxxxxxxx Entity is, and will remain throughout the term of this License Agreement, wholly owned and controlled by Xxxxxxxxx; DreamWorks II Holding Co., LLC is, and will remain throughout the term of this License Agreement, jointly owned and controlled by Reliance
Big Entertainment (US), Inc. (“Reliance Entity”) and XX XX Management, LLC (and, as of the Effective Date, DreamWorks II Holding Co., LLC is owned fifty percent (50%) by Reliance Entity and fifty percent (50%) by XX XX Management, LLC); XX XX Management, LLC is, and will remain throughout the term of this License Agreement, managed by and more than seventy-five percent (75%) owned by XX XX Management, LP; Xxxxxxxxx Entity is, and will remain throughout the term of this License Agreement, the sole
general partner of XX XX Management, LP, and entities solely owned and controlled by Xxxxxxxxx are and will remain throughout the term of this License Agreement the sole owners of XX XX Management, LP; and DreamWorks II Financial Services, Co., LLC, DreamWorks II Distribution Co., LLC, DreamWorks II Production Co., LLC, and DreamWorks II Development Co., LLC and any other entities included in Holding Company (other than DreamWorks II Holding Co., LLC itself) are, and will remain throughout the term of this License
Agreement, wholly-owned and controlled by DreamWorks II Holding Co., LLC. Xxxxxxxxx Entity, XX XX Management, LP, XX XX Management, LLC, each entity included in Holding Company, and Reliance Entity are referred to collectively hereinafter as “Licensee-Related Entities.”
NOW, THEREFORE, in consideration of the foregoing recitals (which are hereby incorporated into this License Agreement) and the mutual covenants and promises set forth below, and for other good and valuable consideration (including the payment of $100 by Xxxxxxxxx Entity to DWA), DWA and Xxxxxxxxx Entity hereby agree as follows:
TERMS AND CONDITIONS
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1. |
Definitions. |
The following terms shall have the following meanings in this License Agreement:
“Animated Motion Picture” means any Motion Picture that is created predominantly by one or more non-live-action production methods (e.g., hand-drawn animation such as Prince of Egypt, CGI such as Shrek,
stop-motion such as Chicken Run and/or motion capture such as Polar Express) (each, an “Animation Method”). However, a Motion Picture that is created predominantly by one or more live-action production methods, but in which digital Animation Method(s) are used, in whole or in part, to create photorealistic characters that interact with live-action characters in a live-action
setting, will not be deemed an Animated Motion Picture and will be deemed either a Hybrid Motion Picture or a Live-Action Motion Picture as applicable. (Photorealistic characters include both “real world” characters modified by an Animation Method (e.g., Babe the pig in Babe) and characters that are invented but which are depicted in a “real world” manner by an Animation Method (e.g. Yoda in Star
Wars II: Attack of the Clones, Gollum in Lord of the Rings, the dinosaurs in Jurassic Park, the robots in I, Robot, and the toy soldiers in Small Soldiers).
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“Change of Control” means, with respect to any entity, any reorganization, merger, consolidation, or other transaction where more than fifty percent (50%) of the entity’s voting securities are owned by entities or persons different from the entities or persons owning such voting securities prior to such transaction;
any sale of all or substantially all of the business or assets of such entity; or the acquisition by any other entity or person directly or indirectly of more than fifty percent (50%) of the voting securities of the entity. However, the Reliance Entity will not be deemed to have undergone a Change of Control so long as Reliance-ADA Group Limited (the ultimate parent of the Reliance Entity) continues, directly or indirectly, to (a) be the single largest shareholder, (b) hold at least thirty three and
one third percent (33-1/3%) of the voting securities, and (c) have the legal authority to elect or otherwise direct the appointment of its management and a majority of its Board members, in each case with respect to the Reliance Entity.
“Completed Film” means a Licensee Live-Action Motion Picture or Licensee Hybrid Motion Picture that was produced (i.e., pre-production has commenced), acquired and/or released by Holding Company prior to expiration or termination of this License Agreement pursuant to Paragraph 3 below, or a Licensee Live-Action
Motion Picture or Licensee Hybrid Motion Picture that Holding Company executed a binding agreement to acquire or co-produce prior to expiration or termination of this License Agreement pursuant to Paragraph 3 below.
“Xxxxxx Xxxx” means any trademark, service xxxx or trade name of the Xxxx Disney Company or any of its affiliates or subsidiaries that includes any of the following: (a) any of the terms “Disney” or “Xxxx Disney”; (b) any acronym that references any of the terms “Disney” or “Xxxx
Disney”; or (c) any title, logo, scene, character or other excerpt from any Motion Picture that is exhibited or distributed under any trademark, service xxxx or trade name that includes the terms “Disney” or “Xxxx Disney” or any acronym that references any of the terms “Disney” or “Xxxx Disney.” For avoidance of doubt, TOUCHSTONE is not a Xxxxxx Xxxx.
“Domestic Territory” means the territorial United States and its possessions, territories and commonwealths, including, without limitation, the U.S. Virgin Islands, Puerto Rico, Guam, and the U.S. Trust Territories of the Pacific Islands, including, without limitation, the Carolina Islands, the Xxxxxxxx Islands
and the Mariana Islands, Saipan and American Samoa; the Dominican Republic, the British Virgin Islands, Nassau, Bahamas, Bermuda, Saba Island, St. Eustatius Island, St. Kitts Island, St. Maarten Island, and Freeport; the Dominion of Canada and its possessions, territories and commonwealths; and all Army, Navy, Air Force, Red Cross and other national or governmental installations, diplomatic posts, camps, bases, and reservations of the above-mentioned countries, as well as oil rigs (including Aramco sites) and
maritime facilities (and other commercial and/or industrial installations of the above-mentioned countries and territories), wherever any of the aforementioned facilities or installations are located, to the extent that sales are made and/or servicing thereof is performed within the geographical areas set forth above, and all airlines and ships flying the flag of, or having the registry of, or whose principal office is located in the United States, Canada or Bermuda, and other possessions, territories and commonwealths
within the Domestic Territory.
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“DWA Event Picture” means any Animated Motion Picture or Hybrid Motion Picture produced, acquired, and/or released by DWA or any of its affiliates or subsidiaries (alone or with others) that (i) is rated “G,” “PG” or “PG-13” (or a materially equivalent rating in the event of
any changes to the ratings system); and (ii) is scheduled to be released for Theatrical Exhibition on not less than two thousand (2,000) screens in the Domestic Territory (irrespective of the anticipated theatrical release pattern in the International Territory).
“DWA Registered Territory” means each jurisdiction in which DWA possesses DWA Registered Trademark Rights as of the Effective Date of this License Agreement, and any additional jurisdiction in which DWA obtains DWA Registered DWA Trademark Rights in the manner set forth in Paragraph 2(g).
“DWA Registered Trademark Rights” means those trademark rights with respect to the Licensed Marks that DWA has secured with issued and subsisting registrations in each jurisdiction where DWA has filed applications to register (or otherwise obtains registrations of) such Licensed Marks.
“Exhibit” means transmit, broadcast, display, exhibit or perform. “Exhibiting” and “Exhibition” shall have correlative meanings.
“Greenlight Authority” means the personal authority required to cause Holding Company to undertake any of the following activities: (a) with respect to any Motion Picture, the financing and production of such Motion Picture, or (b) only with respect to Motion Pictures initially produced for Theatrical Exhibition,
the acquisition of such Motion Picture, or (c) only with respect to Television Motion Pictures, the procurement of financing of such Television Motion Picture from a third party. For avoidance of doubt, the term “Greenlight Authority” as used in this License Agreement refers to the authority without which Holding Company cannot undertake the above activities, but does not include the authority to direct the activities of any other party whose approval may also be required to cause Holding
Company to undertake such activities (i.e., Greenlight Authority is necessary, but not necessarily sufficient, to cause Holding Company to undertake such activities).
“Hybrid Motion Picture” means a Motion Picture that is predominately live-action, but in which at least two of the four characters with the most screen time, or a majority of the characters with speaking roles, are created (non-photorealistically) by an Animation Method (Who
Framed Xxxxx Rabbit, Looney Tunes – Back in Action and Space Jam are examples of Motion Pictures that meet this condition).
“International Territory” means each country around the world that is not included in the Domestic Territory.
“Licensed Domain Names” means the domain name xxxxxxxxxxxxxxxxx.xxx and such other domain names as may be agreed to in writing by DWA from time-to-time pursuant to Paragraph 8(d).
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“Licensed Goods” means those goods set forth on Schedule B attached hereto, as Schedule B may be amended from time to time with the mutual agreement of the parties.
“Licensed Marks” has the meaning set forth in the recitals.
“Licensed Services” means those services set forth in Schedule C attached hereto, as Schedule C may be amended from time to time with the mutual agreement of the parties.
“Licensee Hybrid Motion Picture” means a Hybrid Motion Picture that meets all three of the following conditions: (i) Xxxxxxxxx personally has exercised Greenlight Authority on an individual and specific basis with respect to such Hybrid Motion Picture, (ii) such Hybrid Motion Picture is produced, acquired or financed
by Holding Company either alone or jointly with a third party, and (iii) such Hybrid Motion Picture is not released or marketed as a Xxxx Disney picture or using any Xxxxxx Xxxx (other than to the extent expressly permitted under Paragraph 6(f)).
“Licensee Live-Action Motion Picture” means a Live-Action Motion Picture that meets all three of the following conditions: (i) Xxxxxxxxx personally has exercised Greenlight Authority on an individual and specific basis with respect to such Live-Action Motion Picture, (ii) such Live-Action Motion Picture is
produced, acquired or financed by Holding Company either alone or jointly with a third party, and (iii) such Live-Action Motion Picture is not released or marketed as a Xxxx Disney picture or using any Xxxxxx Xxxx (other than to the extent expressly permitted under Paragraph 6(f)).
“Live-Action Motion Picture” means a Motion Picture that is not an Animated Motion Picture or a Hybrid Motion Picture.
“Live Stage Performance” means the presentation of literary material (e.g., a screenplay, play or other written material) upon the spoken stage with live performers appearing and speaking in the immediate presence of the viewing audience; provided, however, that the presentation of literary material upon the spoken
stage with live performers appearing and speaking, whether or not in the immediate presence of a viewing audience, for the primary purpose of photographing and recording such presentation for use in or in connection with a Motion Picture or for the promotion or publicity of a Motion Picture shall not be deemed a Live Stage Performance.
“Major Release” means any theatrical Motion Picture rated “G,” “PG,” “PG-13” or “R” (or a materially equivalent rating in the event of any changes to the ratings system) that is scheduled to be released for Theatrical Exhibition on not less than two thousand (2,000)
screens in the Domestic Territory (irrespective of the anticipated theatrical release pattern in the International Territory).
“Motion Picture” means any audiovisual product of every kind and character whatsoever, whether produced by means of any photographic, electrical, electronic, mechanical or other process or device now known or hereafter devised, in which pictures, images, and visual and aural representations are recorded or otherwise
preserved for Exhibition by any means or media now known or hereafter devised in such manner as to appear to be in motion or sequence, including computer-generated pictures and graphics; provided, however, that Video Games will not be deemed to be Motion Pictures.
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“Permitted Dubbed Version(s)” means any Live-Action Motion Picture(s) which has been dubbed into Hindi, Bengali, Telugu, Marathi, Tamil, Urdu, Gujarati, Kannada, Malayalam, Oriya, Punjabi, Assamese, and other languages that are consented to by DWA in its sole discretion, and which does not have a soundtrack in
any language other than any of such languages.
“Release Date” means, with respect to any Motion Picture, the date (if any) on which such Motion Picture is widely released for Theatrical Exhibition.
“Reliance Expatriate Territory” means Africa or any political subdivision thereof, the Middle East or any political subdivision thereof, Indonesia, Malaysia, Singapore, the United States, Canada, and the United Kingdom.
“Similar Theatrical Motion Picture” means any Motion Picture released for Theatrical Exhibition that is rated “PG” or a less restrictive rating (or a materially equivalent rating in the event of any changes to the ratings system).
“Television Motion Picture” means any Motion Picture, including television series, produced or distributed for initial Exhibition on television, including broadcast, cable, Internet, satellite and all other forms of television Exhibition.
“Term” means the term of this License Agreement as set forth in Paragraph 3(a).
“Theatrical Exhibition” means, with respect to any Motion Picture, the Exhibition of such Motion Picture in commercial motion picture theatres or other venues where members of the general public view such Motion Picture for an admission fee.
“Video Game” means any and all (a) interactive software games and other software-based products for all platforms, including, without limitation, video game consoles (e.g., the Microsoft Xbox 360, the Nintendo Wii, and the Sony Playstation 3), handheld gaming platforms (e.g., the Nintendo DS and the Sony PSP),
online platforms (e.g., massively multiplayer online games, casual games, streaming games, and downloaded games), wireless platforms, personal computers, and all successor platforms of any of the foregoing; (b) video game prequels, sequels, expansion packs, premium modules, add-ons, episodic content, mission packs, spin-offs, conversions, and ports related to any such interactive software games; and (c) related documentation in print or electronic form, including, without limitation, strategy books, guides and
hint books.
“Weekend” means the period Wednesday through Sunday, inclusive.
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2. Grant of Rights; Amendment; Etc.
(a) DWA hereby grants to Xxxxxxxxx Entity, subject to and conditioned upon the terms and conditions set forth herein, and Xxxxxxxxx Entity hereby accepts, a non-assignable (except as set forth in Paragraph 11(c)), royalty-free right and license during the Term in the DWA
Registered Territory or, subject to the fifth sentence of this Paragraph 2(a), outside the DWA Registered Territory: (i) to use the Licensed Marks (either alone or with the words “Studios,” “Studio,” “Pictures,” “Films,” or “Television”) as part of Xxxxxxxxx Entity’s and its wholly-owned and controlled subsidiaries’ corporate names and trade names, including, without limitation, use of the trade names (but not including the Non-SKG Xxxx)
on stationery, business documents, and business cards; (ii) to use Licensed Marks (but not including the Non-SKG Xxxx, except as expressly set forth in the immediately following sentence) on and in connection with Licensed Goods and Licensed Services; (iii) to use the Licensed Domain Names in connection with websites dedicated exclusively to Licensed Goods and/or Licensed Services; and (iv) to use the Licensed Marks (but not including the Non-SKG Xxxx) in the other manners expressly set forth herein (provided
that Xxxxxxxxx Entity shall not and shall have no right to exercise the licenses granted in the preceding subsections (ii), (iii) and (iv) itself, and shall only have the right to grant Holding Company a Sublicense of such rights as set forth in Paragraph 2(f)). The license granted in the preceding sentence includes the right to use the Non-SKG Xxxx in presentation credits, one-sheet billing blocks, and press releases for Licensee Live-Action Motion Pictures and Licensee Hybrid Motion Pictures, and
in other contexts as may be approved by DWA in writing from time to time, and in other contexts in which the former DreamWorks Studios generally used the Non-SKG Xxxx in the ordinary course of business prior to the Effective Date. For avoidance of doubt, and notwithstanding anything to the contrary herein, (i) any use by Xxxxxxxxx Entity or any Sublicensee of the word “DreamWorks” as part of a logo or design xxxx must be accompanied with (and such logo or design xxxx must incorporate) “SKG”
as shown in the registrations listed on Schedule A, and (ii) neither Xxxxxxxxx Entity nor any Sublicensee shall have the right to use the Non-SKG Xxxx in any context(s) in which the former DreamWorks Studios generally used a trademark, service xxxx or trade name incorporating both “DreamWorks” and “SKG” in the ordinary course of business prior to the Effective Date. In addition, as part of the Holding Company Sublicense granted pursuant to Paragraph 2(f), Xxxxxxxxx Entity may
grant Holding Company a license to use the Licensed Marks (either alone or with the words “Studios,” “Studio,” “Pictures,” “Films,” or “Television”) as part of Holding Company’s corporate names and trade names, including, without limitation, use of the trade names (but not including the Non-SKG Xxxx) on stationery, business documents, and business cards. The use of the Licensed Marks in connection with words other than “Studios,”
“Studio,” “Pictures,” “Films,” or “Television” by Xxxxxxxxx Entity or Holding Company shall require the prior written consent of DWA. The right and license granted to Xxxxxxxxx Entity hereunder shall be exclusive only as to the use of the Licensed Marks on or in connection with (1) Licensed Goods which are based on and feature as the primary element of ornamentation and/or design (A) scenes and/or characters from Licensee Live-Action Motion Pictures or
(B) the title or logo of a Licensee Live-Action Motion Picture, and (2) the Licensed Services as applicable to Licensee Live-Action Motion Pictures. The right and license granted to Xxxxxxxxx Entity hereunder shall be non-exclusive in all other respects, including as to all other Licensed Goods and Licensed Services. As set forth above, the license granted to Xxxxxxxxx Entity hereunder includes the right to use and sublicense Holding Company to use the Licensed Marks outside the DWA Registered
Territory; provided, however, that notwithstanding anything to the contrary in this License Agreement or otherwise, DWA’s obligations hereunder with respect to the Licensed Marks, including DWA’s obligations with respect to maintenance and enforcement of the Licensed Marks and DWA’s indemnification obligations, shall apply only to use in the DWA
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Registered Territory within the DWA Registered Trademark Rights, and any other use or sublicensing of the Licensed Marks by Xxxxxxxxx Entity, including any use or sublicensing outside the DWA Registered Territory, shall be at Xxxxxxxxx Entity’s sole risk. For avoidance of doubt, Xxxxxxxxx Entity may also
permit (directly or through Holding Company) Reliance Entity and Disney (as defined in Section 2(f)) to display the Licensed Marks to reference Holding Company in connection with accurate descriptions of Holding Company’s relationship with Reliance Entity and/or Disney (as applicable) in Reliance Entity’s and Disney’s corporate documentation and corporate publicity including, without limitation, Reliance Entity’s and Disney’s contracts, annual reports, and communications to shareholders
and the general business community, and on the sections of Reliance Entity’s and Disney’s general corporate website(s) devoted to partner/alliance relationships; provided that, (x) for avoidance of doubt, Reliance Entity shall have no right to use any Licensed Xxxx as a trademark or service xxxx, or as a trade name other than in reference to Holding Company, and Disney shall have only those rights with respect to the Licensed Marks expressly granted under the Disney Distribution Agreement, and (y)
Xxxxxxxxx Entity shall ensure (and shall require Holding Company to ensure) that all display of Licensed Marks by Reliance Entity and/or Disney shall be in the same manner (including with respect to size, prominence and placement) as that used for Reliance Entity’s and Disney’s display of other partner trade names and logos.
(b) Notwithstanding Xxxxxxxxx Entity’s exclusivity as set forth above, DWA shall retain the right to use the Licensed Marks in connection with (i) Live-Action Motion Pictures intended for family audiences; (ii) live-action online/digital family content;
(iii) all services related to the production, distribution or other exploitation of Live-Action Motion Pictures intended for family audiences and live-action online/digital family content; and (iv) all other goods and services based on, incorporating or otherwise related to Live-Action Motion Pictures intended for family audiences and live-action
online/digital family content; provided, however, that DWA shall not use a trademark that combines the word “DreamWorks” with the words “Studios,” “Studio,” “Pictures,” “Films,” or “Television” unless DWA includes “Animation” or another word in between “DreamWorks” and any of “Studios,” “Studio,” “Pictures,” “Films,” or “Television” (e.g., DWA may
use “DreamWorks Animation Television” or “DreamWorks Family Television” but not “DreamWorks Television”). DWA shall retain the right to license others to use the Licensed Marks in connection with its distribution agreements (e.g., its Paramount distribution agreement), subdistribution agreements, and promotion agreements, and all services related to the production, distribution or other exploitation of DWA’s Live-Action Motion Pictures intended for family audiences
and live-action online/digital family content and all other goods and services based on, incorporating or otherwise related to Live-Action Motion Pictures intended for family audiences and live-action online/digital family content, but DWA will not sublicense any third party to use any Licensed Marks in connection with the production and distribution of such third party’s Live-Action Motion Picture intended for family audiences. DWA shall consult in good faith with Xxxxxxxxx Entity
prior to using the Licensed Marks in connection with a family-oriented Live-Action Motion Picture pursuant to this Paragraph 2(b).
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(c) Notwithstanding anything to the contrary herein, Xxxxxxxxx Entity acknowledges and agrees that the rights granted to Xxxxxxxxx Entity under this License Agreement are subject to the following preexisting rights of third parties (and that DWA shall not be in breach of
any of its representations, warranties or other obligations under this License Agreement as a result of such preexisting rights): (i) UMG Recordings, Inc. has been granted an exclusive license to use “DreamWorks Records” as more fully set forth in the License Agreement dated as of January 8, 2004, between DreamWorks LLC and UMG Recordings, Inc., and (ii) Paramount Pictures Corporation, as DreamWorks LLC’s successor-in-interest as a result of Paramount Pictures Corporation’s purchase of
DreamWorks LLC, shall have the right to use “DreamWorks” and/or the Licensed Marks as more fully set forth in the License Agreement dated as of October 27, 2004, between DreamWorks Animation LLC and DreamWorks LLC.
(d) Notwithstanding anything in this License Agreement to the contrary, the right and license granted to Xxxxxxxxx Entity hereunder does not include the right to (and Xxxxxxxxx Entity shall not) use or sublicense any third party to use the Licensed Marks in connection with:
(i) any Video Game for any online platform (or any online functionality included in any other platform) that (A) permits ten (10) or more users (in the aggregate including all rooms, worlds and areas associated with such Video Game) in different physical locations to interact in real time using animated avatars
in a virtual world, or (B) includes features of a persistent virtual world (i.e., a virtual world that continues to change and develop even while some users are not playing, or where user-initiated changes to the virtual world or to a user’s avatar persist beyond one play session (i.e., a single period of uninterrupted play)), including, without limitation, any “massively multiplayer online game” or other persistent or partially-persistent online game or community (including, by way of example
only and without limitation, games with interactive or persistent features or functionality similar to Second Life, World of Warcraft, Club Penguin or Webkinz) (collectively “Interactive/Persistent Online Games”) (provided that, for avoidance of doubt, clause (B) of this subsection (i) will not prohibit use or sublicensing of the Licensed Marks in connection with Video Games that permit the user to create an animated avatar which can be used more than once (such as the animated avatars users create
to play Wii) as long as enhancements, add-ons or modifications made to such avatar during play do not persist beyond one play session; or
(ii) Video Games for any online platform that are not Interactive/Persistent Online Games (“Non-Interactive/Persistent Online Games”) except solely in connection with the promotion of Theatrical Exhibition of a Licensee Live-Action Motion Picture or Licensee Hybrid Motion Picture during the period commencing
three (3) months before the initial Theatrical Exhibition of the Motion Picture and continuing through the initial video distribution window, but not longer than three (3) months after the initial home video (e.g., DVD, Blu-Ray disc) release of the Motion Picture; and provided further that Xxxxxxxxx Entity may only use (or sublicense) the Licensed Marks in connection with (A) such Non-Interactive/Persistent Online Games on online platforms that are solely promotional and non-income-producing (except that the
website that hosts the applicable Non-Interactive/Persistent Online Games may contain advertising), and (B) no more than two (2) Non-Interactive/Persistent Online Games for each Licensee Live-Action Motion Picture or Licensee Hybrid Motion Picture (provided that, for avoidance of doubt, this subsection (ii) will not prohibit use or sublicensing of the Licensed Marks in connection with Video Games for non-online platforms that include an element of online functionality as long as such Video Games for non-online
platforms are not Interactive/Persistent Online Games).
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(e) Holdbacks. Xxxxxxxxx Entity will ensure that Holding Company does not commence or authorize the commencement of the initial Theatrical Exhibition of any Similar Theatrical Motion Picture under any Licensed Marks in any territory during any Holdback Period in such territory. With
respect to each DWA Event Picture, the “Holdback Period” in each applicable territory (i.e., in the Domestic Territory and in each International Territory) is the period commencing on the first day of the Weekend prior to the Release Date of such DWA Event Picture in such territory and continuing throughout and including the Weekend following such Release Date (e.g., if the DWA Event Picture is being released on a (i) Friday, then the Holdback Period commences two Wednesdays before such Friday and
ends two Sundays after such Friday; (ii) Wednesday, then the Holdback Period commences on the Wednesday one week before such Wednesday and ends two Sundays after such Wednesday). In addition, Xxxxxxxxx Entity will ensure that Holding Company does not commence or authorize the commencement of the initial Theatrical Exhibition of any Major Release under any Licensed Marks in any territory (i.e., in the Domestic Territory and in each International Territory) on the same Weekend as the Release Date for
a DWA Event Picture in such territory. The holdback obligation described in the previous sentence is conditioned on DWA providing Xxxxxxxxx Entity at least twelve (12) months’ prior notice of the scheduled Release Date for a DWA Event Picture in the Domestic Territory and each International Territory. If DWA changes a Release Date after the date that is twelve (12) months before the scheduled Release Date in the applicable territory and Holding Company had already set the Release Date
for one of its Motion Pictures to comply with this Paragraph 2(e) based on the Release Date originally set forth in DWA’s notice, Xxxxxxxxx Entity shall not be obligated to require Holding Company to change such previously set Release Date to comply with the provisions of this Paragraph 2(e) based on DWA’s revised Release Date. In addition, Xxxxxxxxx Entity agrees that it will ensure that Holding Company consults in good faith with DWA prior to scheduling the initial Theatrical Exhibition
of a Motion Picture under any Licensed Marks that is rated “PG-13” (or a materially equivalent rating in the event of any changes to the ratings system) in the Domestic Territory and in each of the International Territories during the period one (1) Weekend on either side of the applicable Release Date of each DWA Event Picture in the Domestic Territory and in each of the International Territories, respectively; provided that, if Holding Company determines in its good faith business judgment after
such consultation with DWA to proceed with the initial Theatrical Exhibition of such Motion Picture during such period, Xxxxxxxxx Entity will not be deemed to have violated the provisions of this Paragraph 2(e). DWA acknowledges that in certain International Territories, such holdback restrictions may be inappropriate or impracticable to enforce due to differences in ratings’ categories and, accordingly, the parties will attempt to accomplish as closely as possible their agreement
with respect to the holdback restrictions as set forth in this Paragraph 2(e) in any such International Territory, taking into account such differences in ratings’ categories.
(f) Sublicenses. Xxxxxxxxx Entity shall have the right during the Term to sublicense, solely through a written sublicense in the form shown in Schedule D attached hereto, the rights granted herein with respect to the Licensed Marks only to Holding Company (the
“Holding Company Sublicense”). As set forth in Schedule D, Holding Company shall have the right to grant further sublicenses to (i) Xxxx Disney Company (“Disney”) for the distribution of Motion Pictures worldwide (the “Disney Distribution Agreement”); (ii) Reliance Big Entertainment Ltd. (“Reliance Big,” and together with Disney, the “Distributors”) for distribution of Motion Pictures in India and the Reliance Expatriate Territory (but with
respect to the Reliance Expatriate Territory only for Permitted Dubbed Versions) (the “Reliance Distribution Agreement,” and together with the Disney Distribution Agreement, the “Distribution Agreements”); and/or (iii) consumer products and promotional partner sublicensees, in each case subject to the terms and conditions set forth in this License Agreement (each, a “Consumer Products Sublicense”). Holding Company may also, with DWA’s prior written approval
in each case, enter into additional distribution agreements that contain sublicenses
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of the Licensed Marks, and any such additional approved distribution agreements shall be included in “Distribution Agreements” for all purposes under this License Agreement. DWA has pre-approved Paramount Pictures, Universal Pictures, Twentieth Century Fox, Columbia Pictures, and Warner Brothers
as distributors for purposes of the preceding sentence. The Distribution Agreements and each and every Consumer Products Sublicense shall contain at least the terms set forth in Schedule E and shall otherwise comply with the terms of this License Agreement (including, without limitation, Schedule D). Holding Company (if it is granted a sublicense by Xxxxxxxxx Entity) and all sublicensees of Holding Company are referred to in this License Agreement, individually and collectively, as “Sublicensees,”
and the Holding Company Sublicense and all sublicenses granted by Holding Company (including the Distribution Agreements and Consumer Products Sublicenses) are referred to in this License Agreement, individually and collectively, as “Sublicenses.” Without limitation of the foregoing, each and every Sublicense shall automatically terminate (except for the permitted continued use of the Licensed Marks as expressly set forth in Paragraph 3(c) below) upon any termination or expiration of this
License Agreement. Any changes to the form of Holding Company Sublicense shown in Schedule D, or any deviation from the terms set forth in Schedule E, shall require DWA’s prior written consent, including, without limitation, any changes to the provisions in any Sublicense related to automatic termination of such Sublicense. Xxxxxxxxx Entity agrees that the maximum length of the term of each Consumer Products Sublicense shall be consistent with and no longer than the average length
of the terms of the sublicense agreements (including any mandatory extensions thereof, if any) actually entered into by the prior DreamWorks LLC under the 2004 License Agreement in connection with the same or similar Licensed Goods. Xxxxxxxxx Entity agrees that each Sublicensee shall be a reputable company capable of performing the Licensed Services and/or producing the Licensed Goods bearing the Licensed Marks under its Sublicense of the same
general level of quality as under license agreements between DWA and third parties prior to the Effective Date of this License Agreement. Xxxxxxxxx Entity shall provide DWA with the names and addresses of all Sublicensees and the subject matter of each Sublicense. At DWA’s request, Xxxxxxxxx Entity shall provide DWA a copy of each Sublicense promptly following execution. Xxxxxxxxx Entity shall ensure that its Sublicensees comply with the terms of all Sublicenses, and any
breach of a Sublicense by a Sublicensee shall be deemed a breach by Xxxxxxxxx Entity of this License Agreement. DWA shall be an express third party beneficiary of all Sublicenses with respect to the provisions of such Sublicenses related to the Licensed Marks and shall have the right to enforce such provisions of all Sublicenses to the same extent as if DWA were a party to such Sublicenses. Without limitation of the generality of the foregoing, in the event that Xxxxxxxxx Entity or Holding Company
becomes aware that any Consumer Products Sublicensee has materially breached any provision of the applicable Consumer Products Sublicense related to the Licensed Marks, Xxxxxxxxx Entity shall promptly issue (or, as applicable, cause Holding Company to issue) a thirty (30) day termination notice to such Sublicensee, and if such Sublicensee does not cure such breach within thirty (30) days of such notice, Xxxxxxxxx Entity shall (or, as applicable, shall cause Holding Company to) immediately terminate the applicable
Consumer Products Sublicense. In the event that Xxxxxxxxx Entity or Holding Company becomes aware that any Distributor has materially breached the terms of any Distribution Agreement related to the Licensed Marks, Xxxxxxxxx Entity shall promptly issue (or cause Holding Company to issue) a notice to such Distributor specifying such breach and take appropriate steps to enforce the terms of the applicable Distribution Agreement and protect the Licensed Marks. If such Distributor does not cure
such breach of the Distribution Agreement within thirty (30) days of such notice,
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Xxxxxxxxx Entity shall (or shall cause Holding Company to) either immediately terminate such Distributor’s right to use the Licensed Marks, suspend such Distributor’s right to use the Licensed Marks until such time as the breach is cured, or meet in person with such Distributor in order to resolve such Distributor’s
non-compliance. If such Distributor still has not cured the breach of the Distribution Agreement within sixty (60) days of the original notice, Xxxxxxxxx Entity shall (or shall cause Holding Company to) either immediately terminate such Distributor’s right to use the Licensed Marks or suspend such Distributor’s right to use the Licensed Marks until such time as the breach is cured. If such Distributor still has not cured the breach of the Distribution Agreement within ninety
(90) days of the original notice, Xxxxxxxxx Entity shall (or shall cause Holding Company to) immediately terminate such Distributor’s right to use the Licensed Marks. Except as expressly set forth in this Paragraph 2(f), Xxxxxxxxx Entity and Holding Company shall have no right to sublicense any of the rights or licenses granted under this License Agreement, and any attempt by Xxxxxxxxx Entity or Holding Company to grant a Sublicense other than as expressly permitted by this Paragraph 2(f) shall
be void and shall convey no rights to the purported Sublicensee with respect to the Licensed Marks.
(g) Additions to DWA Registered Territory. This License Agreement shall be automatically amended to add jurisdictions to the DWA Registered Territory (with respect to the Licensed Goods and the Licensed Services for which DWA obtains trademark registrations in
the applicable jurisdictions only) in the event that DWA obtains additional trademark registrations in the Licensed Marks through new registrations in jurisdictions not already included on Schedule X. Xxxxxxxxx Entity may request in writing DWA’s agreement to amend the Licensed Goods in Schedule B to add goods and such agreement will not be unreasonably withheld (provided that Xxxxxxxxx Entity agrees that it will not be unreasonable for DWA to withhold DWA’s agreement to add (i) any goods
related to Animated Motion Pictures, (ii) any goods not based on and featuring as the primary element of ornamentation and/or design scenes and/or characters from Licensee Live-Action Motion Pictures or Licensee Hybrid Motion Pictures, or (iii) any goods with respect to which DWA has granted or commenced preparations to grant a license to use any Licensed Marks to a third party on an exclusive basis). Upon any amendment, Xxxxxxxxx Entity may cause all pertinent Sublicenses to be amended to reflect
any additions to Schedules A and/or B.
(h) Xxxxxxxxx Exclusivity. During the Term, Xxxxxxxxx agrees to be exclusive to DWA with respect to the development, production, distribution and/or other exploitation (including, without limitation, Xxxxxxxxx’x personal directing, producing, writing, etc.
services) of Animated Motion Pictures (other than Motion Pictures based on the “Tintin” stories and characters created by the author Hergé); provided, however, that Xxxxxxxxx may render direction, production, writing or similar services with respect to an Animated Motion Picture fully-funded by Xxxxxxxxx, Reliance and/or a third party only (a “Xxxxxxxxx Animated Picture”), so long as such Xxxxxxxxx Animated Picture is exclusive to DWA with respect to all distribution and/or other
exploitation. Xxxxxxxxx and/or Xxxxxxxxx Entity may approach DWA for funding for an Animated Motion Picture, but regardless of whether Xxxxxxxxx and/or Xxxxxxxxx Entity approaches DWA for such funding, during the Term, neither Xxxxxxxxx nor Xxxxxxxxx Entity will (i) take such Animated Motion Picture to or set up such Animated Motion Picture with another person or entity, or (ii) unless otherwise agreed by DWA in writing, render any services on such Animated Motion Picture except in the event it is
fully-funded by Xxxxxxxxx, Reliance and/or a third party only as a Xxxxxxxxx Animated Picture as described in the immediately preceding sentence. If Xxxxxxxxx or Xxxxxxxxx Entity delivers (as
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such term is customarily understood with respect to distribution in the entertainment industry) a fully-financed and completed Xxxxxxxxx Animated Picture to DWA, DWA agrees to release such Animated Motion Picture on terms to be negotiated in good faith by the parties subject to any then-existing DWA distribution arrangement(s)
with a third party(ies) which are deemed pre-approved by Xxxxxxxxx and Xxxxxxxxx Entity; provided, however, that if the parties do not or cannot agree on such terms, such Xxxxxxxxx Animated Picture will not be distributed in any manner during the Term.
(i) Xxxxxxxxx Entity acknowledges that DWA has pre-existing contractual arrangements with its third party strategic partners McDonalds, Intel and Hewlett-Packard that may limit DWA’s ability to license the Licensed Marks to Xxxxxxxxx Entity, and to permit
Xxxxxxxxx Entity to grant Sublicenses with respect to the Licensed Marks, for certain uses, as described in Schedule X. Xxxxxxxxx Entity hereby agrees that the rights and license granted to Xxxxxxxxx Entity under this License Agreement shall be subject to the terms of DWA’s pre-existing contractual arrangements with its strategic partners as described in Schedule I, including any extensions and renewals of such arrangements (and that DWA shall not be in breach of any of its representations, warranties
or other obligations under this License Agreement as a result of such pre-existing contractual arrangements). In the event that Xxxxxxxxx Entity or any Sublicensee wishes to use any Licensed Marks for any Licensed Good or Licensed Service in a manner that would conflict with DWA’s pre-existing contractual arrangements, DWA will use reasonable commercial efforts to assist Xxxxxxxxx Entity to secure permission for such use from the applicable third party strategic partner.
3. Termination, Etc.
(a) The Term of this License Agreement shall commence on the Effective Date and, unless terminated sooner pursuant to Paragraph 3(b), shall continue thereafter until the first to occur of (a) the initial Release Date of the thirtieth (30th)
Motion Picture produced (or co-produced), acquired, distributed or released by or for Holding Company, or (b) the sixth (6th) anniversary of the Effective Date.
(b) This License Agreement may be terminated in its entirety by Xxxxxxxxx Entity at any time upon notice to DWA. This License Agreement may be terminated in its entirety by DWA (i) at any time on or after the fourth (4th)
anniversary of the Effective Date, provided that DWA gives Xxxxxxxxx Entity at least sixty (60) days’ prior notice of such termination, (ii) immediately upon notice to Xxxxxxxxx Entity in the event of a material breach by Xxxxxxxxx Entity that remains uncured for a period of thirty (30) days after DWA provides written notice to Xxxxxxxxx Entity of such claimed material breach, (iii) immediately upon notice to Xxxxxxxxx Entity in the event of a material breach by Xxxxxxxxx Entity of any provision
of Paragraphs 2(e), 6(a) or 6(d), or a material breach by Xxxxxxxxx of Paragraph 2(h), (iv) immediately upon notice to Xxxxxxxxx Entity in the event of a material breach by Xxxxxxxxx Entity of any provision of Paragraphs 6(b), 6(c), 6(e), 6(f) or 6(g) that remains uncured for a period of five (5) days after DWA provides written notice to Xxxxxxxxx Entity of such claimed material breach, (v) immediately upon notice to Xxxxxxxxx Entity in the event that Xxxxxxxxx ceases to have Greenlight Authority over each and
every Motion Picture financed, produced, acquired and/or released by Holding Company, (vi) immediately upon notice to Xxxxxxxxx Entity in the event that Xxxxxxxxx does not exercise Greenlight Authority during any period of twenty-four (24) consecutive months with respect to at least one Motion Picture for Theatrical Exhibition or one Television Motion Picture, in each case that is produced or acquired by Holding Company and is released under the Licensed Marks, (vii) immediately upon notice to Xxxxxxxxx Entity
in the event that Xxxxxxxxx dies or Xxxxxxxxx has a physical or mental incapacity that impairs his ability to exercise Greenlight Authority over each and every Motion Picture financed, produced, acquired and/or released by Holding Company for a period of three (3) months or longer, (viii) immediately upon notice to Xxxxxxxxx Entity in the event that that (A) any Licensee-Related Entity undergoes a Change of Control, (B) Xxxxxxxxx Entity is no longer solely and wholly owned and controlled by Xxxxxxxxx, (C) XX
XX Management, LLC is no longer managed by and more than seventy-five
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percent (75%) owned by XX XX Management, LP, (D) Xxxxxxxxx Entity is no longer the sole general partner of XX XX Management, LP, or entities solely owned and controlled by Xxxxxxxxx are no longer the sole owners of XX XX Management, LP; or (E) any of DreamWorks II Financial Services, Co., LLC, DreamWorks II Distribution
Co., LLC, DreamWorks II Production Co., LLC, or DreamWorks II Development Co., LLC is no longer solely and wholly owned and controlled by DreamWorks II Holding Co., LLC; (ix) immediately upon notice to Xxxxxxxxx Entity in the event that (A) Holding Company has not acquired funding of at least $325,000,000 by the initial official launch of Holding Company, (B) Reliance Entity does not fund Holding Company by the initial official launch of Holding Company, (C) Reliance Entity ceases to beneficially own at least
twenty-five percent (25%) of the outstanding equity securities of Holding Company, or (D) any entity or person other than Reliance Entity or XX XX Management, LLC becomes the beneficial owner of a ten percent (10%) or greater equity interest in Holding Company without the prior written approval of DWA, (x) immediately upon notice to Xxxxxxxxx Entity in the event that (A) any Licensee-Related Entity (other than Reliance Entity) files any petition under any bankruptcy, insolvency or similar laws, (B) any involuntary
petition under any bankruptcy or similar statute is filed against any Licensee-Related Entity (other than Reliance Entity) or a receiver or trustee is appointed to take possession of all or a substantial part of any Licensee-Related Entity’s (other than Reliance Entity’s) assets, (C) any Licensee-Related Entity (other than Reliance Entity) makes a general assignment for the benefit of creditors or becomes unable to meet its obligations as they mature, or (D) any Licensee-Related Entity’s (other
than Reliance Entity’s) financial condition becomes such as to materially impair or to be reasonably likely to materially impair its performance in accordance with the terms and conditions of this License Agreement. Xxxxxxxxx Entity shall promptly provide written notice to DWA of the occurrence of an event set forth in this Paragraph 3(b)(v) through (x). In the event of termination of this License Agreement in its entirety by DWA under this Paragraph, all Sublicenses shall automatically
terminate by their terms as required by Paragraph 2(f) above (other than as expressly set forth in Paragraph 3(c)), Xxxxxxxxx Entity will cease (and will cause all Sublicensees to cease) all further use of the Licensed Marks except as expressly permitted hereunder, and Xxxxxxxxx Entity will take such steps (and cause Holding Company to take such steps) as are necessary to change its corporate names and trade names to ones that do not include any Licensed Xxxx, to cease use of any domain names containing any Licensed
Xxxx, and to delete all listings of its corporate names and trade names in directories, databases, indices, and other public and private listings, all as soon after termination as commercially possible. In the event that the License Agreement expires pursuant to Paragraph 3(a) or terminates because DWA exercised its right to terminate pursuant to this Paragraph 3(b) other than for Xxxxxxxxx Entity’s material breach pursuant to any of Paragraphs 3(b)(ii)-(iv) (a “Non-Breach Termination”),
DWA agrees that Holding Company or Holding Company’s successor(s)-in-interest may use the Licensed Marks in connection with Completed Films, but only in the manner set forth in Paragraph 3(c) below, and provided that, notwithstanding anything to the contrary in this License Agreement, the parties acknowledge and agree that there shall not be more than thirty (30) Completed Films in the aggregate.
(c) Following any Non-Breach Termination, and subject to all of Xxxxxxxxx Entity’s obligations under this License Agreement and Holding Company’s obligations under the Holding Company Sublicense, Holding Company may (i) continue to exercise the rights and licenses
granted under the Holding Company Sublicense to use the Licensed Marks in connection with any of the following activities, to the extent such activities are included in Licensed Services: (1) distributing or exhibiting any Completed Film; (2) releasing or re-releasing any Completed Film; (3) editing any Completed Film for television Exhibition, DVD Exhibition, or Exhibition in any other media, now known or hereafter developed, or for purposes of territorial distribution, and dubbing or sub-titling any Completed
Film into a different language, or for reasons of public taste, or for legal reasons, including but not limited to a claim or the threat of a claim that such Completed Film without such editing might infringe the rights of any third party, and then releasing, distributing, and exhibiting such edited Completed Film; (4) using the Licensed Marks for attribution purposes only, solely to the extent necessary to indicate the fact that such Completed Film was produced and/or distributed by Holding Company, or (5) using
and authorizing the use of phrases such as “Based on the Film ________ Produced [or Presented] by DreamWorks Pictures [or
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DreamWorks Studios or DreamWorksFilms]” (provided that only one such construction may be used for all Completed Films) for attribution purposes only, solely to the extent required to indicate the relationship between a Completed Film and any sequel to or remake of a Completed Film, and provided that no Licensed Marks
are used in connection with such sequel or remake other than as required to indicate such relationship; (ii) for a period of six (6) months after the date of expiration or termination (the “Tail Period”), continue to enter into Consumer Products Sublicenses with respect to Licensed Goods based on and featuring as the primary element of ornamentation and/or design scenes and/or characters from a Completed Film; and (iii) for the remainder of the then-current term (without any extension or renewal)
of any Consumer Products Sublicenses entered into during the Term of this License Agreement or during the Tail Period, continue to distribute, advertise and promote Licensed Goods pursuant to such Sublicenses. Except as expressly set forth in this Paragraph 3(c), following any termination or expiration of this License Agreement, Xxxxxxxxx Entity and Holding Company shall immediately cease and cause their respective Sublicensees to cease all use of the Licensed Marks, including, without limitation,
all Exhibition of Motion Pictures under the Licensed Marks, all sales and distribution of any goods or services under the Licensed Marks, and all use of any domain names containing any Licensed Marks. The following sections of this License Agreement shall survive any termination or expiration: 1, 3(c), 6(a)-(e), 9(c), 9(d), 10 and 11. In addition, (A) all limitations, restrictions and other terms of this Agreement applicable to Xxxxxxxxx Entity’s or any Sublicensee’s
continued use of any Licensed Marks after expiration or termination pursuant to this Paragraph 3(c) shall survive during the period of such continued use, and (B) Xxxxxxxxx Entity shall remain responsible for enforcing the provisions of any Sublicenses applicable to the Licensed Marks to the extent that such provisions survive the termination or expiration of such Sublicenses.
4. Attribution Notice; Usage Guidelines.
Xxxxxxxxx Entity agrees that in connection with any use of the Licensed Marks under this License Agreement, it will comply with, and will cause all Sublicensees to comply with, such usage guidelines regarding the use and display of the Licensed Marks, including, without limitation, with respect to notices regarding DWA’s
ownership of the Licensed Marks, as DWA may reasonably require from time to time (provided that any changes that DWA makes to its usage guidelines in effect as of the Effective Date will be reasonable and will not materially impair Holding Company’s or its Sublicensees’ use of the Licensed Marks). Without limitation of Paragraph 2(f), Xxxxxxxxx Entity agrees that it will include (and will cause Holding Company to include) in any Sublicense a requirement that all Sublicensees will comply with such
guidelines and use such notices as may be reasonably required by DWA.
5. Further Assurances, Etc.
(a) DWA shall take such steps as DWA determines are reasonably necessary under the laws of the various jurisdictions in the DWA Registered Territory, as the DWA Registered Territory may be amended from time to time in the manner set forth in Paragraph 2(g), to
record this License Agreement, at DWA’s sole expense, in order to facilitate Holding Company’s and the other Sublicensees’ use of the Licensed Marks and enable DWA to enforce the Licensed Marks. If Xxxxxxxxx Entity or Holding Company has a bona fide intent to use or grant a Sublicense to use the Licensed Marks in a particular jurisdiction where applicable law requires recordal of trademark license agreements and DWA has not previously recorded this License Agreement in such jurisdiction,
then Xxxxxxxxx Entity may request that DWA record the License Agreement in such jurisdiction, and DWA will not unreasonably refuse such request. DWA shall have no obligation to record this License Agreement in any jurisdiction outside the DWA Registered Territory.
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(b) Xxxxxxxxx Entity will (and will require its Sublicensees to) execute such documents and to take such steps, at Xxxxxxxxx Entity’s sole expense, including, without limitation, by making available to DWA and its counsel documents, information, and witnesses,
as may be required by DWA to perfect, confirm, acknowledge, or record this License Agreement in any jurisdiction, to enforce the Licensed Marks as provided in Paragraph 8 below, or otherwise to effectuate the purposes of this License Agreement.
6. Acknowledgment of DWA’s Ownership of Licensed Marks, Etc.
(a) Xxxxxxxxx Entity acknowledges and agrees that DWA owns all right, title and interest in and to the Licensed Marks throughout the world, that Xxxxxxxxx Entity will acquire no ownership interest in or to the Licensed Marks under this License Agreement, and that Xxxxxxxxx
Entity’s interest in the Licensed Marks is limited solely to the license interest conferred by the license expressly granted under this License Agreement. There are no implied licenses under this License Agreement. Xxxxxxxxx Entity further acknowledges and agrees that all uses of the Licensed Marks by it under this License Agreement and by all Sublicensees under all Sublicenses inure and shall inure to the benefit of DWA and that all goodwill in the Licensed Marks is and shall be owned
by DWA.
(b) Xxxxxxxxx Entity agrees that it will not file, and that it will cause all Sublicensees not to file, any applications to register any Licensed Marks, or any other xxxx that consists of, colorably imitates, or is confusingly similar to any of the Licensed Marks or any
other DreamWorks Marks, in the DWA Registered Territory or in any jurisdiction outside the DWA Registered Territory. Xxxxxxxxx Entity agrees that it will not register, and that it will cause all Sublicensees not to register, any domain name that includes any Licensed Marks or that consists of, colorably imitates, or is confusingly similar to any of the Licensed Marks or any other DreamWorks Marks, in the DWA Registered Territory or elsewhere in the world.
(c) Xxxxxxxxx Entity agrees that, except as specifically permitted hereunder, it will make no use, and will cause all Sublicensees to make no use, of any xxxx that consists of, colorably imitates, or is confusingly similar to, any of the Licensed Marks or any other DreamWorks
Marks.
(d) Xxxxxxxxx Entity agrees that it will not challenge, or assist any third party, including, without limitation, any Sublicensee, to challenge, the validity of the Licensed Marks or any other DreamWorks Marks or DWA’s ownership thereof or the enforceability of DWA’s
rights therein. Xxxxxxxxx Entity agrees that it will include in each Sublicense a provision that each Sublicensee will not challenge, or assist any third party to challenge, the validity of the Licensed Marks.
(e) Xxxxxxxxx Entity agrees that it will not, and will cause all Sublicensees not to, alter or modify any Licensed Marks, or combine any Licensed Marks with any other trademark in a manner that creates or may reasonably be deemed to create a composite xxxx.
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(f) Without limitation of anything else in this Xxxxxxxxx 0, Xxxxxxxxx Entity shall not, and shall cause its Sublicensees not to, use or display any Licensed Xxxx with any Xxxxxx Xxxx, including, without limitation, by using or displaying any Licensed Xxxx on
or in any product, advertising or marketing material, packaging or label, signage or display on or in which any Xxxxxx Xxxx also appears. Notwithstanding the preceding sentence, Xxxxxxxxx Entity may permit Holding Company or Disney (if Disney is a Sublicensee) to display (i) a Xxxx Disney distribution credit in a form substantially similar to one of the following: “Distributed by XXXX DISNEY STUDIOS MOTION PICTURES” or “Distributed by XXXX DISNEY MOTION PICTURES” or “Distributed
by XXXX DISNEY STUDIOS” (each a “Disney Distribution Credit”), only in conjunction with the Touchstone logo in a manner substantially similar to that shown on the attached Schedule F (including with respect to the relative proportions of the Disney Distribution Credit and the Touchstone logo), on or in (A) Video game and DVD packaging that displays Licensed Marks as otherwise permitted under this License Agreement, and (B) paid advertising for Licensee Live-Action Motion Pictures and Licensee
Hybrid Motion Pictures marketed or distributed under Licensed Marks as otherwise permitted under this License Agreement, including in-theater “standees” for such Licensee Live-Action Motion Pictures and Licensee Hybrid Motion Pictures; (ii) a Disney Distribution Credit in the end of the end crawl of Licensee Live-Action Motion Pictures in a manner consistent with the use of such distribution credit in Touchstone Live-Action Motion Pictures released prior to the Effective Date (such as “Swing
Vote”); (iii) Disney Marks and Licensed Marks (as otherwise permitted under this License Agreement) in presentation booklets and similar marketing materials used to offer both Disney Motion Pictures and Licensee Live-Action Motion Pictures and/or Licensee Hybrid Motion Pictures to buyers and potential buyers of such Motion Pictures; and (iv) Disney Marks and Licensed Marks (as otherwise permitted under this License Agreement) on convention or tradeshow booth/suite signage displayed at, and marketing materials
distributed at, conventions or tradeshows where Disney showcases both Disney Motion Pictures and Licensee Live-Action Motion Pictures and/or Licensee Hybrid Motion Pictures.
(g) For avoidance of doubt, Paragraph 6(f) will not prevent Holding Company and its Sublicensees from selling Licensed Goods that bear Licensed Marks in retail stores owned and operated by the Xxxx Disney Company, or retail stores and online portals and catalogs
operated under Disney Marks, provided that such Licensed Goods (and any related advertising or marketing material, packaging and label, signage and display, and other material) do not bear, display or otherwise use any Xxxxxx Xxxx, except to the extent expressly permitted under Paragraph 6(f). In addition, Paragraph 6(f) will not prevent Holding Company from exhibiting, advertising, marketing or promoting Licensee Live-Action Motion Pictures and Licensee Hybrid Motion Pictures on ESPN, the Disney Channel,
ABC or ABC Family as otherwise permitted by this License Agreement.
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7. Quality Control.
(a) Xxxxxxxxx Entity agrees to consult (and to cause Holding Company to consult) in good faith with DWA prior to the use of the Licensed Marks in connection with any Licensed Goods and Licensed Services. Without limitation of the foregoing, Xxxxxxxxx Entity shall not (and
shall cause Holding Company not to) use any Licensed Marks in connection with any Television Motion Pictures without DWA’s approval in advance in writing, such approval not to be unreasonably withheld. For avoidance of doubt, if DWA approves a television series, such approval shall apply to all episodes in such series, provided that the foregoing shall not limit Xxxxxxxxx Entity’s or Holding Company’s quality control obligations with respect to all episodes in such series, nor shall
it limit DWA’s rights to inspect and approve such quality as set forth in Paragraph 7(d).
(b) Xxxxxxxxx Entity agrees that it will use, and will cause all Sublicensees to use, the Licensed Marks only in connection with Licensed Goods and Licensed Services of such quality as will protect and enhance the goodwill, image and reputation adhering to the Licensed Marks,
and, without limiting the generality of the foregoing, of a quality at least equal to that of similar goods and services provided or sold by DWA and DWA’s other licensees. Licensed Goods and Licensed Services that are of a quality at least equal to that of similar goods and services provided or sold by DWA and DWA’s other licensees will be deemed to have met the foregoing quality requirement.
(c) Xxxxxxxxx Entity agrees to conform its uses, and to cause all Sublicensees to conform their uses, of the Licensed Marks under this License Agreement to the usage guidelines set forth in Schedule G attached hereto, which Schedule G may be amended by DWA from time to time
through written notice to Xxxxxxxxx Entity in the manner set forth in Paragraph 11(a) below (and provided that Xxxxxxxxx Entity and its Sublicensees will be given a reasonable period of time in which to apply any such changes). In the event that Xxxxxxxxx Entity wishes to use or permit any Sublicensee to use the Licensed Marks in a manner that deviates from the usage guidelines set forth in Schedule G attached hereto, Xxxxxxxxx Entity shall seek approval from DWA in writing for such use.
(d) DWA shall have the right to inspect and approve the quality of all Licensed Goods and Licensed Services in connection with which Xxxxxxxxx Entity or any Sublicenses uses any Licensed Marks, and Xxxxxxxxx Entity shall not (and shall ensure that its Sublicensees do not)
use any Licensed Xxxx in connection with any Licensed Goods or Licensed Services that have been disapproved by DWA. As requested by DWA, Xxxxxxxxx Entity agrees to submit to DWA for review and approval a sample of any Licensed Goods in connection with which Xxxxxxxxx Entity or any Sublicenses is using or intends to use any Licensed Marks, and a sample of any materials and information regarding any Licensed Services in connection with which Xxxxxxxxx Entity or any Sublicensee is using or intends to
use any Licensed Marks, which approval shall not be unreasonably withheld by DWA. DWA’s failure to disapprove a sample in writing within 10 business days of receipt shall be deemed approval. DWA agrees to specify in writing the reasons for its disapproval of any such sample in the applicable disapproval notice. For avoidance of doubt, DWA’s inspection and approval rights as set forth in this Paragraph 7(d) are only to allow DWA to ensure that the Licensed Goods and
Licensed Services meet the quality standards set forth in this License Agreement, and do not give DWA creative control over Holding Company’s Motion Pictures. In addition, Xxxxxxxxx Entity and Holding Company will not be required to submit Motion Pictures intended for initial Theatrical Exhibition for approval by DWA, [***].
NOTE: CERTAIN MATERIAL HAS BEEN REDACTED FROM THIS DOCUMENT AND FILED SEPARATELY WITH THE SEC PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT UNDER RULE 24b-2. THE LOCATIONS OF THESE REDACTIONS ARE INDICATED THROUGHOUT
THE DOCUMENT BY THE FOLLOWING MARKING: [***]
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(e) Xxxxxxxxx Entity shall ensure that once DWA has approved any sample pursuant to Paragraph 7(d), the applicable Licensed Goods and Licensed Services will not thereafter materially deviate from the sample approved by DWA.
(f) Xxxxxxxxx Entity shall, and shall cause each Sublicensee to, (a) conduct its business in accord with the highest business and ethical standards (provided that a Sublicensee shall be deemed to have satisfied this standard if it complies with standards at least equivalent
to those that DWA requires of its own third party licensees), and in a manner that reflects positively on the Licensed Marks; (b) not derogate DWA’s rights in the Licensed Marks or the value of the Licensed Marks; (c) take no action that would interfere with, diminish or tarnish those rights or value; (d) not engage in any unfair, anticompetitive or unlawful business practices in connection with any use of the Licensed Marks or the manufacturing, sale, marketing and distribution of any Licensed Goods or
the performance of any Licensed Services under the Licensed Marks; (e) not use the Licensed Marks or conduct its business in any manner that infringes or misappropriates any third party’s trademark, copyright, patent, trade secret, privacy or publicity right, or other intellectual property or proprietary right, or that is defamatory or obscene; and (f) comply with all applicable local, state and federal laws, regulations, rules, and ordinances governing its business in connection with any use of the Licensed
Marks or the manufacturing, sale, marketing and distribution of any Licensed Goods or the performance of any Licensed Services under the Licensed Marks. Xxxxxxxxx Entity shall, and shall cause each Sublicensee to reasonably cooperate with and assist DWA to monitor and ensure Xxxxxxxxx Entity’s and each Sublicensee’s compliance with this Paragraph 7(f).
8. Enforcement; Expansion of Rights; Etc.
(a) Xxxxxxxxx Entity agrees to advise DWA promptly and in writing of any instances of possible infringement or dilution of, or unfair competition or cybersquatting regarding, the Licensed Marks in the DWA Registered Territory or elsewhere in the world that come to the attention
of Xxxxxxxxx Entity or Holding Company (collectively “Infringements”). Upon receipt of such notification or at any time, DWA may take such action as it deems appropriate to protect the Licensed Marks, after consultation in good faith with Xxxxxxxxx Entity if the Infringement is in the DWA Registered Territory and within the scope of the DWA Registered Trademark Rights and relates to goods or services within the field of use of Xxxxxxxxx Entity’s license hereunder (provided
that the final decision of whether or not to take such action shall be in DWA’s sole discretion), including, without limitation, criminal, civil, or administrative proceedings and litigation, through counsel of DWA’s choice, which counsel shall be reasonably acceptable to Xxxxxxxxx Entity if the Infringement is in the DWA Registered Territory and within the scope of the DWA Registered Trademark Rights and relates to goods or services within the field of use of Xxxxxxxxx Entity’s license hereunder. DWA
shall have the sole right (but no obligation) to take any such action and shall have the sole right to control any litigation or other proceeding. Where litigation or other proceeding by DWA involves an Infringement, the attorneys’ fees and other expenses of such litigation or other proceeding (collectively “Expenses”), and any sums obtained by way of judgment or settlement from such litigation or other proceeding (a “Recovery”), shall be allocated as follows: (i) if the
Infringement involves only the Licensed Marks and only Licensed Goods or Licensed Services as to which Xxxxxxxxx Entity has an exclusive license of the Licensed Marks, and Xxxxxxxxx Entity has agreed that such action should be taken, Xxxxxxxxx Entity shall reimburse DWA for all documented Expenses and shall keep any Recovery (and DWA agrees that any such reimbursed Expenses allocable to
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attorneys’ fees or other third party professional services shall be charged at hourly rates that do not deviate materially from the hourly rates that DWA pays to the applicable service providers in matters undertaken on its own behalf); and (ii) if the Infringement involves any DreamWorks Marks other than the Licensed
Marks and/or any Licensed Goods or Licensed Services as to which Xxxxxxxxx Entity has a non-exclusive license of the Licensed Marks, or if Xxxxxxxxx Entity does not agree that such action should be taken, DWA shall bear all Expenses and shall keep any Recovery. Where litigation by DWA against an Infringement also includes claims by Xxxxxxxxx Entity based upon Xxxxxxxxx Entity’s intellectual property rights or other rights unrelated to the Licensed Marks (e.g., Xxxxxxxxx Entity’s rights
in a Motion Picture), each of DWA and Xxxxxxxxx Entity shall bear its own Expenses and shall keep any Recovery that pertain to the claims asserted by it, unless DWA and Xxxxxxxxx Entity elect to assert their respective claims through the same counsel, in which case they shall agree in good faith regarding the allocation of Expenses and Recovery. Nothing in this License Agreement imposes any obligations on DWA with respect to any infringement or dilution of, or unfair competition or cybersquatting regarding,
the Licensed Marks outside the DWA Registered Territory or outside the scope of the DWA Registered Trademark Rights.
(b) Xxxxxxxxx Entity agrees (and will cause its Sublicensees to agree) at DWA’s request to be and, as necessary, to remain, the sole party or a joint party with DWA, and otherwise to cooperate with and assist DWA, in any litigation or other proceeding involving a claim
based upon the Licensed Marks, including, without limitation, in the event that the substantive law of a particular jurisdiction requires Xxxxxxxxx Entity or any Sublicensee to be a party, whether because the status of the recordation of an assignment, this Licensed Agreement or any related documents in that jurisdiction as of the time of the commencement of such litigation or other proceeding does not permit DWA to proceed without Xxxxxxxxx Entity or such Sublicensee joining as a party, or for any other reason. The
allocation of Expenses and Recovery in litigation or other proceeding, in which Xxxxxxxxx Entity or any Sublicensee must be a joint party with DWA, or a sole party, shall also be governed by Paragraph 8(a) above to the extent applicable.
(c) DWA and Xxxxxxxxx Entity agree that in connection with any litigation or other proceeding by DWA to which sub-Paragraph 8(a)(i) above applies, DWA shall not compromise the litigation in a manner that affects Xxxxxxxxx Entity’s rights hereunder without good faith
consultation with Xxxxxxxxx Entity, and that in any other litigation by DWA, including, without limitation, any litigation to which sub-Paragraph 8(a)(ii) above applies, DWA may prosecute and compromise the litigation in its sole discretion.
(d) Xxxxxxxxx Entity may request DWA to file applications to register the Licensed Marks for the Licensed Goods and Licensed Services in countries outside the DWA Registered Territory, to register the Licensed Marks in jurisdictions in the DWA Registered Territory for goods and
services in addition to the Licensed Goods and Licensed Services, and to register domain names containing the Licensed Marks. In response to any such request, DWA shall decide whether to file such applications for trademark and service xxxx registration, and to register such domain names, in the exercise of its reasonable business judgment. The attorneys’ fees and expenses in connection with the filing and prosecution of such applications that DWA agrees to file, or the registration
of such domain names that DWA agrees to register, shall be shared equally by DWA and Xxxxxxxxx Entity. DWA agrees to prosecute any such applications for trademark or service xxxx registration and to maintain all existing and future registrations of the Licensed Marks and domain name registrations, unless DWA decides in its reasonable business judgment to abandon any such applications or not to renew any such registrations (and DWA will not abandon any such application or
20
fail to renew any such registration in any jurisdiction in the DWA Registered Territory where Xxxxxxxxx Entity is then using the applicable Licensed Xxxx for the applicable Licensed Goods or Licensed Services without good faith consultation with Xxxxxxxxx Entity). Nothing in this License Agreement imposes any
obligations on DWA with respect to prosecution or maintenance of any applications or registrations for Licensed Marks outside the DWA Registered Territory or outside the scope of the DWA Registered Trademark Rights (other than to exercise its reasonable business judgment in considering requests for additional filings as expressly set forth above). Without limitation of Paragraph 6(a), DWA will own all domain names that incorporate any DreamWorks Marks, including the Licensed Domain Names. DWA
will use commercially reasonable efforts to cause the Licensed Domain Names to resolve to such websites as are directed by Xxxxxxxxx Entity, provided that the use of any DreamWorks Marks on such websites and any materials displayed on or otherwise made available through such websites complies with the terms of this License Agreement.
9. Representations and Warranties.
(a) DWA represents and warrants to Xxxxxxxxx Entity that: (i) it has the right, power, and authority to enter into and fully perform its obligations under this License Agreement; and (ii) this License Agreement is a binding agreement as to DWA that is enforceable against
DWA according to its terms.
(b) Xxxxxxxxx Entity represents and warrants to DWA that: (i) Xxxxxxxxx Entity will throughout the Term of this License Agreement maintain sufficient control over all Sublicensees to fulfill Xxxxxxxxx Entity’s obligations to cause all Sublicensees to comply with the
Sublicenses and otherwise take or refrain from taking the actions specified hereunder; (ii) Xxxxxxxxx Entity’s and its Sublicensees’ use of the Licensed Marks, and the conduct of its and their business under the Licensed Marks, shall be in accordance with all applicable laws, (iii) Xxxxxxxxx Entity has the right, power, and authority to enter into and fully perform its obligations under this License Agreement; and (iv) this License Agreement is a binding agreement as to Xxxxxxxxx Entity that is enforceable
against Xxxxxxxxx Entity according to its terms.
(c) The Licensed Marks are provided to Xxxxxxxxx Entity “as is” without any warranty express or implied, and DWA hereby specifically disclaims any warranties, express or implied, including, without limitation, the warranties of merchantability, fitness for a
particular purpose, title and non-infringement of third-party rights, and any warranties that may arise due to course of performance, course of dealing or usage of trade, related to the Licensed Marks or, except as expressly set forth in Paragraph 9(a) above, any other subject matter of this License Agreement.
21
(d) In no event shall DWA be liable for any indirect, special or consequential damages, or damages for loss of profits, loss of goodwill or otherwise, arising from or relating to this License Agreement or the Licensed Marks, even if DWA is expressly advised of the possibility
of such damages. DWA’s total liability arising from or relating to this License Agreement or the subject matter hereof shall not exceed two hundred fifty thousand dollars ($250,000). The foregoing limitation of liability and exclusion of certain damages shall apply regardless of the failure of essential purpose of any remedies available to either party.
10. Indemnification.
(a) DWA agrees to indemnify, defend, and hold harmless Xxxxxxxxx Entity from and against any claim, demand, cause of action, or suit for trademark, service xxxx, or trade name infringement, or for dilution, cybersquatting, or unfair competition that is asserted against Xxxxxxxxx
Entity by a third party solely to the extent based on Xxxxxxxxx Entity’s or any Sublicensee’s use of the Licensed Marks for Licensed Goods or Licensed Services in the DWA Registered Territory and within the scope of the DWA Registered Trademark Rights as expressly permitted under this License Agreement (each a “Trademark Claim”), subject to the limitation of liability in Paragraph 9(d). Xxxxxxxxx Entity agrees that upon receipt of notice of any Trademark Claim, it will promptly tender
such Trademark Claim in writing to DWA in the manner set forth in Paragraph 11(a) below, and DWA agrees that it will defend Xxxxxxxxx Entity against such Trademark Claim at DWA’s expense and through counsel of DWA’s choosing. DWA may defend or compromise any Trademark Claim and agrees to pay any judgment or settlement on any Trademark Claim (in each case, subject to the limitation of liability set forth in Paragraph 9(d)), provided that DWA will not agree to any settlement that affects
Xxxxxxxxx Entity’s rights hereunder without good faith consultation with Xxxxxxxxx Entity. Xxxxxxxxx Entity agrees that it will cooperate fully with, and will cause all applicable Sublicensees to cooperate fully with, DWA and its counsel in DWA’s defense of any Trademark Claim. DWA agrees to carry such insurance as may be reasonable to insure the fulfillment of DWA’s indemnity obligations with respect to Trademark Claims. In the event of any Trademark Claim,
DWA may, in its discretion (i) procure for Xxxxxxxxx Entity the right to continue using and/or sublicensing (as applicable with respect to the claim at issue) the Licensed Marks that are allegedly infringing, (ii) provide Xxxxxxxxx Entity with substitute marks that do not infringe any third party trademarks, or (iii) if neither (i) nor (ii) is feasible using commercially reasonable efforts, terminate Xxxxxxxxx Entity’s license with respect to the applicable Licensed Marks in the relevant jurisdiction and
for the relevant Licensed Goods or Licensed Services, as DWA deems necessary to avoid any further infringement or alleged infringement. Under no circumstances shall DWA be obligated to defend, indemnify or hold harmless Xxxxxxxxx Entity with respect to continued use of any Licensed Xxxx after DWA has taken any of steps (i), (ii) or (iii) as described in the preceding sentence. Xxxxxxxxx Entity agrees that, notwithstanding anything to the contrary in this License Agreement, in the event that
Xxxxxxxxx Entity seeks indemnification from DWA with respect to any claim for which Holding Company or another Sublicensee has sought indemnification from Xxxxxxxxx
22
Entity under any Sublicense, as a condition to any obligation of DWA to provide such indemnification hereunder, Xxxxxxxxx Entity shall give DWA the option (to be exercised in DWA’s sole discretion) to assume and control the defense and settlement of such claim through counsel of DWA’s choosing. In
such circumstances, DWA may fulfill any obligations it may have to Xxxxxxxxx Entity under this Paragraph 10(a) by doing either of the following in DWA’s sole discretion: (1) permitting Xxxxxxxxx Entity to control the defense and settlement of the claim against the Sublicensee, and reimbursing Xxxxxxxxx Entity for the reasonable costs of such defense and for any judgment or settlement amounts paid by Xxxxxxxxx Entity as otherwise required by this Paragraph 10(a), subject to the limitation of liability
set forth in Paragraph 9(d) (and provided that any such settlement is approved by DWA), or (2) assuming control of the defense and settlement of the claim against the Sublicensee, and paying any such judgment and settlement amounts itself, subject to the limitation of liability set forth in Paragraph 9(d). DWA’s right to control the defense and settlement of such claim shall continue until such time as DWA gives notice to Xxxxxxxxx Entity that DWA’s aggregate costs of such defense (including,
without limitation, attorneys’ fees), and any judgment or settlement amounts, equal or exceed the amount of DWA’s limitation of liability set forth in Paragraph 9(d) and that DWA, therefore, has fulfilled its entire indemnification obligation to Xxxxxxxxx Entity (such notice, a “Limitation Notice”). Upon receipt of a Limitation Notice with respect to any claim, Xxxxxxxxx Entity may assume control of the defense and settlement
(and DWA shall have no further obligation to indemnify or defend XX XX with respect to such claim); provided, however, that DWA shall retain the right (but not the obligation) to participate in the defense and settlement of the claim with counsel of its choice at its own expense, and to control any aspects of such defense and settlement that relate to, or that have the potential to impact, DWA or any DreamWorks Marks (or DWA’s rights therein or ownership thereof), including, without limitation, the scope,
validity or enforceability of any DreamWorks Marks (collectively, “DWA-Controlled Matters”), and Xxxxxxxxx Entity shall not file any papers or otherwise take any position in the defense of the claim or enter into any settlement with respect to any DWA-Controlled Matters without DWA’s prior written approval. Xxxxxxxxx Entity shall ensure that each Sublicense in which any indemnification related to the Licensed Marks
is provided to the applicable Sublicensee requires such Sublicensee to agree that DWA may, at its option, assume and control the defense and settlement of such claim through counsel of DWA’s choosing as described above.
(b) Xxxxxxxxx Entity agrees to indemnify, defend, and hold harmless DWA, and to obligate each Sublicensee to indemnify, defend, and hold harmless DWA, from and against any claim, demand, cause of action, or suit that is asserted against DWA by a third party arising out of
or relating to (i) any Licensed Goods or Licensed Services, including, without limitation, Xxxxxxxxx Entity’s or any Sublicensee’s manufacture, advertisement, promotion, marketing, offering for sale, sale, or distribution of any Licensed Goods, or Xxxxxxxxx Entity’s or any Sublicensee’s advertisement, promotion, marketing, offering for sale, sale, or rendition of any Licensed Services, unless such claim, demand, cause of action, or suit is a Trademark Claim for which DWA is required to
indemnify Xxxxxxxxx Entity pursuant to Paragraph 10(a), (ii) any Sublicense, unless such claim, demand, cause of action, or suit is a Trademark Claim for which DWA is required to indemnify Xxxxxxxxx Entity pursuant to Paragraph 10(a), or (iii) Xxxxxxxxx Entity’s or any Sublicensee’s use of any Licensed Xxxx outside the DWA Registered Territory or outside the scope of the DWA Registered Trademark Rights or any use other than as expressly permitted by this License Agreement or other breach of this License
Agreement (each a “Licensee Claim”). Licensee Claims include, without limitation, all claims, demands, causes of action, or suits for copyright infringement, libel, violation or infringement of the right of publicity, violation or invasion of the right of privacy, disparagement, theft of ideas, patent infringement, breach of contract, negligence, strict liability, and product liability arising out of or relating to Licensed Goods or Licensed Services, including, without limitation, Xxxxxxxxx
Entity’s or any Sublicensee’s manufacture, advertisement, promotion, marketing, offering for sale, sale, or distribution of Licensed Goods, and Xxxxxxxxx Entity’s or any Sublicensee’s advertisement, promotion, marketing, offering for sale, sale, or rendition of Licensed Services (except where such claims, demands, causes of action, or suits are based solely upon Xxxxxxxxx Entity’s or any Sublicensee’s use of the
23
Licensed Marks as expressly permitted under this License Agreement in the DWA Registered Territory and within the scope of the DWA Registered Trademark Rights). DWA agrees that, upon receipt of any Licensee Claim for which it wishes to receive indemnification hereunder, it will promptly tender such claim in
writing to Xxxxxxxxx Entity in the manner set forth in Paragraph 11(a) below, and Xxxxxxxxx Entity agrees that it will defend DWA against such Licensee Claim at Xxxxxxxxx Entity’s expense and through counsel of Xxxxxxxxx Entity’s choosing, provided that DWA may participate in the defense using counsel of its choice at its own expense. Xxxxxxxxx Entity may defend or compromise any Licensee Claim and agrees to pay any judgment or settlement on any Licensee Claim, provided that Xxxxxxxxx Entity
will not agree to any settlement that imposes any material obligations on DWA or affects any Licensed Marks or DWA’s rights therein without the approval of DWA, which approval shall not be unreasonably withheld. Xxxxxxxxx Entity shall maintain in full force and effect at all times while this License Agreement is in effect and for three years thereafter, (1) commercial general liability insurance, including products and completed operations coverage, broad form property damage, contractual liability,
bodily injury (including death), and personal and advertising injury liability, with minimum limits of $1,000,000 each occurrence and $2,000,000 in the aggregate, and including a waiver of subrogation in favor of DWA; (2) umbrella excess liability insurance with minimum limits of $5,000,000 each occurrence and $5,000,000 in the aggregate; and (3) errors and omissions liability insurance with minimum limits of $10,000,000 each claim and $10,000,000 in the aggregate, covering all of Xxxxxxxxx Entity’s and
its subsidiaries’ and affiliates’ business activities in the field of entertainment. The general liability and errors and omissions liability policies shall name as additional insureds DWA and its parents, subsidiaries, affiliates, successors and assigns and the directors, officers, employees, agents and representatives of the foregoing. All coverage shall be primary and non-contributory, and must be underwritten by a carrier with a minimum Best’s Guide rating of A-, VII. Xxxxxxxxx
Entity shall deliver to DWA a certificate of insurance evidencing satisfactory coverage and indicating that DWA shall receive thirty (30) days unrestricted prior written notice of cancellation, non-renewal or any material change in coverage. For avoidance of doubt, Xxxxxxxxx Entity will be deemed to have met the above insurance requirements if it is designated as a named insured on insurance policies maintained by Holding Company that meet such requirements. Compliance herewith in no way
limits Xxxxxxxxx Entity’s indemnity obligations hereunder.
11. Miscellaneous
(a) Any notices required or which may be given hereunder shall be in writing and shall be delivered personally, or sent by certified mail, return receipt requested, by facsimile (with confirmation of receipt), or by e-mail (with confirmation of receipt), to the addresses
set forth above, or such other addresses as may be designated by the parties from time to time in writing under this License Agreement. All notices sent to DWA and Xxxxxxxxx Entity shall be sent to the attention of the General Counsel. All notices sent to Xxxxxxxxx may be sent to the address for Xxxxxxxxx Entity. All notices are effective upon confirmed receipt.
(b) The parties agree that any dispute to interpret or enforce, or otherwise arising out of or relating to, this License Agreement shall be determined by final and binding arbitration before JAMS according to the then most applicable JAMS Comprehensive Arbitration Rules
and Procedures (“JAMS”), provided always that: (a) the arbitration shall be conducted before a single neutral arbitrator with at least ten (10) years experience in the trademark licensing business, appointed by mutual agreement of the parties within five (5) business days from the date the notice of arbitration is delivered by the petitioning party; (b) the parties shall be entitled to discovery as provided in California Code of Civil Procedure
24
sections 1283.05 and 1283.1; (c) in deciding any such matter, the arbitrator shall follow the substantive law of the State of California or Federal Law as it would be applied by California courts; (d) the place of arbitration shall be Los Angeles, California, (e) nothing in this Paragraph 11(b) shall prevent
either from, without waiving its right to arbitration, seeking preliminary or interlocutory relief from a court of competent jurisdiction; (f) all arbitration proceedings (including any discovery and other evidence in connection therewith) shall be closed to the public and shall remain confidential; and (g) arbitration awards hereunder may be entered and enforced as provided in California Code of Civil Procedure sections 1285 et seq. If the arbitrator
is not selected by mutual consent within five (5) business days from the date the notice of arbitration is delivered by the petitioning party, the rules of JAMS with respect to the selection of an arbitrator shall apply. Notwithstanding the foregoing, before proceedings are initiated hereunder, the Parties or their designated representatives shall meet and in good faith attempt to resolve the dispute. Notwithstanding the foregoing, any disputes submitted to binding arbitration pursuant to
Paragraph 11(b), above, that affect the timely release of a motion picture for initial theatrical exhibition shall commence within seven (7) business days from the date the notice is delivered by the petitioning party and the arbitrator shall rule not later than ten (10) business days after the date the notice is delivered. The hearing shall be conducted by the arbitrator for as many days as the arbitrator determines to allow; provided, that the
hearing shall conclude, and the arbitrator shall rule, not later than ten (10) business days after the date the notice is delivered.
(c) With the express written consent of DWA, which consent shall not be unreasonably withheld, Xxxxxxxxx Entity may assign this License Agreement in its entirety only to another entity wholly owned and controlled by Xxxxxxxxx and for which Xxxxxxxxx has, and is able to exercise,
Greenlight Authority with respect to such entity’s activities related to the production, distribution and financing of Motion Pictures. Except as expressly set forth in the previous sentence, neither Xxxxxxxxx Entity nor Xxxxxxxxx shall have any right to assign, sell, transfer, delegate or otherwise dispose of, whether voluntarily or involuntarily, by operation of law or otherwise, this License Agreement or any rights or obligations under this License Agreement without DWA’s express written
consent, which DWA may withhold or deny in its sole discretion. Except as provided herein, any purported assignment, transfer, or delegation by Xxxxxxxxx Entity or Xxxxxxxxx shall be null and void. DWA may assign, sell, transfer, delegate or otherwise dispose of this License Agreement freely. Subject to the foregoing, this License Agreement shall be binding upon and shall inure to the benefit of the parties and their respective successors and permitted assigns. For
avoidance of doubt, nothing in this Paragraph 11(c) shall prevent Xxxxxxxxx Entity from granting Sublicenses as otherwise expressly permitted by this License Agreement.
(d) Notwithstanding anything in this License Agreement to the contrary, Xxxxxxxxx Entity and Xxxxxxxxx hereby irrevocably waive any right to seek and/or obtain equitable and/or injunctive relief related to DWA’s or any of its affiliates’ production, distribution,
license and/or other exploitation of any Motion Picture and/or other production, content, material, goods or services; and Xxxxxxxxx Entity’s and Xxxxxxxxx’x sole and exclusive remedy in connection therewith shall be an action for damages. The foregoing shall not prevent Xxxxxxxxx Entity from seeking injunctive relief against any sublicensee of DWA to whom DWA has granted a license to use the Licensed Marks in connection with non-family oriented Live-Action Motion Pictures in violation
of the exclusivity granted to Xxxxxxxxx Entity in this License Agreement.
25
(e) This License Agreement shall be governed by, and construed in accordance with, the laws of the State of California applicable to contracts made and to be performed therein and without regard to its conflicts of laws rules that would result in the application of the laws
of another jurisdiction.
(f) This License Agreement, together with the Schedules thereto, constitutes the entire agreement between DWA, Xxxxxxxxx Entity and Xxxxxxxxx with respect to its subject matter, and supersedes any prior agreement, understanding, representation, promise, or negotiations
between the parties, whether oral or written, express or implied.
(g) If any provision of this License Agreement is found to be unenforceable, the remainder shall be enforced as fully as possible and the unenforceable provision shall be deemed modified to the limited extent required to permit its enforcement in a manner most closely approximating
the intention of the parties as expressed herein.
(h) DWA, Xxxxxxxxx Entity and Xxxxxxxxx are not, and shall not be considered to be, joint venturers, partners, agents or employees of each other, and no party shall have the power to bind or obligate any other party except as specifically set forth in this License Agreement. Except
as expressly set forth herein or otherwise agreed to in writing by the parties, there shall be no liability on the part of one party hereto for any debts incurred by any other party.
(i) The subject headings of this License Agreement are included for purposes of convenience only, and shall not affect the construction or interpretation of any of its provisions.
(j) The waiver by any party of a breach of or a default under any provision of this License Agreement shall not be effective unless in writing and shall not be construed as a waiver of any subsequent breach of or default under the same or any other provision of this
License Agreement, nor shall any delay or omission on the part of any party to exercise or avail itself of any right or remedy that it has or may have hereunder operate as a waiver of any right or remedy.
(k) This License Agreement is made and entered into for the sole protection and benefit of the parties hereto and is not intended to convey any rights or benefits to any third party, nor will this License Agreement be interpreted to convey any rights or benefits to any person
or entity except the parties hereto.
[SIGNATURES ON NEXT PAGE]
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WHEREFORE, the parties have executed this License Agreement as of the Effective Date by the signature below of their duly-authorized representatives.
XX XX MANAGEMENT, INC. |
DREAMWORKS ANIMATION LLC |
||||
By: | By: | ||||
Name: | Name: | ||||
Position: | Position: |
XXXXXX XXXXXXXXX
(with respect to Paragraph 2(h) (Xxxxxxxxx Exclusivity) and the applicable provisions of Paragraph 11 (Miscellaneous) only) |
||||||
27
Schedule A
(Licensed Marks)
|
|||||
Trademark/Name |
App # |
Reg # |
Status |
Country Name |
Class |
DREAMWORKS SKG & DESIGN |
84633 |
35153 |
Registered |
African Union Territories (OAPI) |
09 Int. |
DREAMWORKS SKG & DESIGN |
84634 |
35154 |
Registered |
African Union Territories (OAPI) |
41 Int. |
DREAMWORKS SKG & DESIGN |
950051 |
48569 |
Registered |
Algeria |
09 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
2611 |
Registered |
Anguilla |
08 Int. | |
DREAMWORKS SKG & DESIGN |
3932 |
3932 |
Registered |
Antigua and Barbuda |
09 Int. |
DREAMWORKS SKG & DESIGN |
1957747 |
2152579 |
Registered |
Argentina |
09 Int. |
DREAMWORKS SKG & DESIGN |
1957748 |
2152582 |
Registered |
Argentina |
25 Int. |
DREAMWORKS SKG & DESIGN |
1957749 |
2152577 |
Registered |
Argentina |
28 Int. |
DREAMWORKS SKG & DESIGN |
1957750 |
2152575 |
Registered |
Argentina |
41 Int. |
DREAMWORKS SKG & DESIGN |
95020312 |
17415 |
Registered |
Aruba |
09 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
651016 |
651016 |
Registered |
Australia |
09 Int. |
DREAMWORKS SKG & DESIGN |
651017 |
651017 |
Registered |
Australia |
25 Int. |
DREAMWORKS SKG & DESIGN |
651018 |
651018 |
Registered |
Australia |
28 Int. |
DREAMWORKS SKG & DESIGN |
651019 |
651019 |
Registered |
Australia |
41 Int. |
DREAMWORKS SKG & DESIGN |
AM 390/95 |
162.163 |
Registered |
Austria |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
17530 |
17530 |
Registered |
Bahamas |
08 Int. |
DREAMWORKS SKG & DESIGN |
2341 |
81/9892 |
Registered |
Barbados |
09 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
81/9893 |
Registered |
Barbados |
09 Int. | |
DREAMWORKS SKG & DESIGN |
950060 |
8472 |
Registered |
Belarus |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
840519 |
573.939 |
Registered |
Benelux |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
26645 |
26645 |
Registered |
Bermuda |
09 Int. |
DREAMWORKS SKG & DESIGN |
26644 |
26644 |
Registered |
Bermuda |
41 Int. |
DREAMWORKS SKG & DESIGN |
150 |
70049-A |
Registered |
Bolivia |
09 Int. |
DREAMWORKS SKG & DESIGN |
149 |
70047-A |
Registered |
Bolivia |
41 Int. |
DREAMWORKS SKG & DESIGN |
5690 |
Pending |
Bouvet Island |
09 Int. | |
DREAMWORKS SKG & DESIGN |
818617217 |
818617217 |
Registered |
Brazil |
00 Int. |
DREAMWORKS SKG & DESIGN |
818.617.225 |
818617225 |
Registered |
Brazil |
00 Int. |
DREAMWORKS SKG & DESIGN |
818617233 |
818617233 |
Registered |
Brazil |
00 Int. |
28
DREAMWORKS SKG & DESIGN |
818617241 |
818617241 |
Registered |
Brazil |
00 Int. |
DREAMWORKS SKG & DESIGN |
818617250 |
818617250 |
Registered |
Brazil |
00 Int. |
DREAMWORKS SKG & DESIGN |
200003100 |
200003100 |
Registered |
Brazil |
09 Int. |
DREAMWORKS SKG & DESIGN |
29781 |
26826 |
Registered |
Bulgaria |
09 Int. |
DREAMWORKS SKG & DESIGN |
29782 |
4437 |
Registered |
Bulgaria |
41 Int. |
DREAMWORKS SKG & DESIGN |
5529 |
5527 |
Registered |
Cambodia |
09 Int. |
DREAMWORKS SKG & DESIGN |
5530 |
5528 |
Registered |
Cambodia |
41 Int. |
DREAMWORKS SKG & DESIGN |
787189 |
508558 |
Registered |
Canada |
09 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
787188 |
508556 |
Registered |
Canada |
00 Int. |
DREAMWORKS SKG & DESIGN |
299.866 |
456.074 |
Registered |
Chile |
41 Int. |
DREAMWORKS SKG & DESIGN |
299.864 |
788.653 |
Registered |
Chile |
09 Int., 25 Int., 28 Int. |
DREAMWORKS SKG & DESIGN |
95011131 |
934612 |
Registered |
China (Peoples Republic) |
09 Int. |
DREAMWORKS SKG & DESIGN |
95011130 |
921463 |
Registered |
China (Peoples Republic) |
25 Int. |
DREAMWORKS SKG & DESIGN |
95011129 |
925674 |
Registered |
China (Peoples Republic) |
28 Int. |
DREAMWORKS SKG & DESIGN |
95011128 |
935572 |
Registered |
China (Peoples Republic) |
41 Int. |
DREAMWORKS SKG & DESIGN |
95001428 |
175.812 |
Registered |
Colombia |
09 Int. |
DREAMWORKS SKG & DESIGN |
95001431 |
175.811 |
Registered |
Colombia |
25 Int. |
DREAMWORKS SKG & DESIGN |
95001430 |
175.81 |
Registered |
Colombia |
28 Int. |
DREAMWORKS SKG & DESIGN |
95001429 |
175.809 |
Registered |
Colombia |
41 Int. |
DREAMWORKS SKG & DESIGN |
93.116 |
94.02 |
Registered |
Costa Rica |
09 Int. |
DREAMWORKS SKG & DESIGN |
93.117 |
94.399 |
Registered |
Costa Rica |
25 Int. |
DREAMWORKS SKG & DESIGN |
93.112 |
94.393 |
Registered |
Costa Rica |
28 Int. |
DREAMWORKS SKG & DESIGN |
2007-14784 |
Pending |
Costa Rica |
41 Int. | |
DREAMWORKS SKG & DESIGN |
95-01/0121 |
Z950095 |
Registered |
Croatia |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
41910 |
41910 |
Registered |
Cyprus, Republic of |
09 Int. |
DREAMWORKS SKG & DESIGN |
41911 |
41911 |
Registered |
Cyprus, Republic of |
41 Int. |
DREAMWORKS SKG & DESIGN |
0-96272 |
191513 |
Registered |
Czech Republic |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
VA00.3271995 |
VR04.4161995 |
Registered |
Denmark |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
77387 |
Registered |
Xxxxxxxxx Xxxxxxxx |
00 Int. | |
DREAMWORKS SKG & DESIGN |
77722 |
Registered |
Xxxxxxxxx Xxxxxxxx |
00 Int. |
29
DREAMWORKS SKG & DESIGN |
53886/95 |
2362/96 |
Registered |
Ecuador |
09 Int. |
DREAMWORKS SKG & DESIGN |
53866/95 |
107/96 |
Registered |
Ecuador |
41 Int. |
DREAMWORKS SKG & DESIGN |
173824 |
Pending |
Egypt |
09 Int. | |
DREAMWORKS SKG & DESIGN |
173825 |
Pending |
Egypt |
41 Int. | |
DREAMWORKS SKG & DESIGN |
904/95 |
Pending |
El Salvador |
09 Int. | |
DREAMWORKS SKG & DESIGN |
903/95 |
71/160143144 |
Registered |
El Salvador |
41 Int. |
DREAMWORKS SKG & DESIGN |
9500187 |
21516 |
Registered |
Estonia |
09 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
163931 |
163931 |
Registered |
European Community |
09 Int., 16 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
26624 |
26624 |
Registered |
Fiji |
08 Int. |
DREAMWORKS SKG & DESIGN |
477/95 |
201785 |
Registered |
Finland |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
95554571 |
95554571 |
Registered |
France |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
395 02 232 |
395 02 232 |
Registered |
Germany |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
7945 |
7945 |
Registered |
Gibraltar |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
122621 |
122621 |
Registered |
Greece |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
111213 |
Registered |
Guatemala |
09 Int. | |
DREAMWORKS SKG & DESIGN |
111182 |
Registered |
Guatemala |
41 Int. | |
DREAMWORKS SKG & DESIGN |
56/152 |
Registered |
Haiti |
09 Int. | |
DREAMWORKS SKG & DESIGN |
260/105 |
Registered |
Haiti |
41 Int. | |
DREAMWORKS SKG & DESIGN |
7828/95 |
65.528-B |
Registered |
Honduras |
09 Int. |
DREAMWORKS SKG & DESIGN |
7827/95 |
3616 |
Registered |
Honduras |
41 Int. |
DREAMWORKS SKG & DESIGN |
95 01007 |
7267/1998 |
Registered |
Hong Kong |
09 Int. |
DREAMWORKS SKG & DESIGN |
95 01006 |
7266/1998 |
Registered |
Hong Kong |
25 Int. |
DREAMWORKS SKG & DESIGN |
95 01005 |
7265/1998 |
Registered |
Hong Kong |
28 Int. |
DREAMWORKS SKG & DESIGN |
95 01004 |
7264/1998 |
Registered |
Hong Kong |
41 Int. |
DREAMWORKS SKG & DESIGN |
M9500176 |
144 785 |
Registered |
Hungary |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
652792 |
652792 |
Registered |
India |
09 Int. |
DREAMWORKS SKG & DESIGN |
652799 |
652799 |
Registered |
India |
25 Int. |
DREAMWORKS SKG & DESIGN |
652798 |
652798 |
Registered |
India |
28 Int. |
DREAMWORKS SKG & DESIGN |
D95-2063 |
355251 |
Registered |
Indonesia |
09 Int. |
DREAMWORKS SKG & DESIGN |
98700991 |
Pending |
Indonesia |
25 Int. |
30
DREAMWORKS SKG & DESIGN |
98600990 |
Pending |
Indonesia |
28 Int. | |
DREAMWORKS SKG & DESIGN |
98500989 |
Pending |
Indonesia |
41 Int. | |
DREAMWORKS SKG & DESIGN |
95/0418 |
166048 |
Registered |
Ireland |
09 Int. |
DREAMWORKS SKG & DESIGN |
95/421 |
201087 |
Registered |
Ireland |
41 Int. |
DREAMWORKS SKG & DESIGN |
96517 |
96517 |
Registered |
Israel |
25 Int. |
DREAMWORKS SKG & DESIGN |
96516 |
96516 |
Registered |
Israel |
09 Int. |
DREAMWORKS SKG & DESIGN |
96519 |
96519 |
Registered |
Israel |
41 Int. |
DREAMWORKS SKG & DESIGN |
96518 |
96518 |
Registered |
Israel |
28 Int. |
DREAMWORKS SKG & DESIGN |
MI95C 000615 |
723035 |
Registered |
Italy |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
-87412 |
29392 |
Registered |
Jamaica |
09 Int. |
DREAMWORKS SKG & DESIGN |
466598 |
Pending |
Japan |
09 Int. | |
DREAMWORKS SKG & DESIGN |
467328 |
0000000 |
Registered |
Japan |
28 Int. |
DREAMWORKS SKG & DESIGN |
467694 |
0000000 |
Registered |
Japan |
41 Int. |
DREAMWORKS SKG & DESIGN |
466963 |
0000000 |
Registered |
Japan |
25 Int. |
DREAMWORKS SKG & DESIGN |
42745 |
42745 |
Registered |
Kenya |
09 Int. |
DREAMWORKS SKG & DESIGN |
298 |
298 |
Registered |
Kenya |
41 Int. |
DREAMWORKS SKG & DESIGN |
95-648 |
32945 |
Registered |
Korea, Republic of |
111 Int. |
DREAMWORKS SKG & DESIGN |
00-0000 |
000000 |
Registered |
Korea, Republic of |
43 Int. |
DREAMWORKS SKG & DESIGN |
00-0000 |
000000 |
Registered |
Korea, Republic of |
45 Int. |
DREAMWORKS SKG & DESIGN |
00-0000 |
000000 |
Registered |
Korea, Republic of |
39 Int. |
DREAMWORKS SKG & DESIGN |
00-0000 |
000000 |
Registered |
Korea, Republic of |
34 Int. |
DREAMWORKS SKG & DESIGN |
33917 |
Registered |
Kuwait |
09 Int. | |
DREAMWORKS SKG & DESIGN |
33918 |
Registered |
Kuwait |
41 Int. | |
DREAMWORKS SKG & DESIGN |
M-95-137 |
M 39 870 |
Registered |
Latvia |
09 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
66349 |
66349 |
Registered |
Lebanon |
09 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
M/95/00211 |
LS/M/95/0021 |
Registered |
Lesotho |
09 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
9289 |
9289 |
Registered |
Liechtenstein |
09 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
95-0296 |
27618 |
Registered |
Lithuania |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
014474-M-P |
14 474M |
Registered |
Macao |
09 Int. |
DREAMWORKS SKG & DESIGN |
014475-M |
14 475M |
Registered |
Macao |
41 Int. |
31
DREAMWORKS SKG & DESIGN |
95/00492-D |
1258 |
Registered |
Madagascar |
09 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
97-20848 |
97020848 |
Registered |
Malaysia |
41 Int. |
DREAMWORKS SKG & DESIGN |
95-01093 |
95001093 |
Registered |
Malaysia |
09 Int. |
DREAMWORKS SKG & DESIGN |
95-01095 |
95001095 |
Registered |
Malaysia |
25 Int. |
DREAMWORKS SKG & DESIGN |
95-01094 |
95001094 |
Registered |
Malaysia |
28 Int. |
DREAMWORKS SKG & DESIGN |
23914 |
23914 |
Registered |
Malta |
09 Int. |
DREAMWORKS SKG & DESIGN |
A/37 No. 28 |
A/37 No. 28 |
Registered |
Mauritius |
|
DREAMWORKS SKG & DESIGN |
222443 |
508324 |
Registered |
Mexico |
25 Int. |
DREAMWORKS SKG & DESIGN |
222441 |
519465 |
Registered |
Mexico |
09 Int. |
DREAMWORKS SKG & DESIGN |
22240 |
494658 |
Registered |
Mexico |
28 Int. |
DREAMWORKS SKG & DESIGN |
222442 |
494843 |
Registered |
Mexico |
41 Int. |
DREAMWORKS SKG & DESIGN |
16077 |
16077 |
Registered |
Monaco |
09 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
1849 |
1849 |
Registered |
Montserrat |
08 Int. |
DREAMWORKS SKG & DESIGN |
55783 |
46,Bd. |
Registered |
Morocco |
09 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
D-200574 |
8880 |
Registered |
Netherlands Antilles |
09 Int. |
DREAMWORKS SKG & DESIGN |
245090 |
245090 |
Registered |
New Zealand |
09 Int. |
DREAMWORKS SKG & DESIGN |
245091 |
245091 |
Registered |
New Zealand |
25 Int. |
DREAMWORKS SKG & DESIGN |
245092 |
245092 |
Registered |
New Zealand |
28 Int. |
DREAMWORKS SKG & DESIGN |
245093 |
245093 |
Registered |
New Zealand |
41 Int. |
DREAMWORKS SKG & DESIGN |
95-00468 |
29,383 C.C. |
Registered |
Nicaragua |
09 Int. |
DREAMWORKS SKG & DESIGN |
95-00469 |
29,388 C.C. |
Registered |
Nicaragua |
41 Int. |
DREAMWORKS SKG & DESIGN |
T9525697 |
54640 |
Registered |
Nigeria |
09 Int. |
DREAMWORKS SKG & DESIGN |
95.0242 |
172.343 |
Registered |
Norway |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
128549 |
128549 |
Registered |
Pakistan |
09 Int. |
DREAMWORKS SKG & DESIGN |
78971 |
78971 |
Registered |
Panama |
09 Int. |
DREAMWORKS SKG & DESIGN |
78904 |
78904 |
Registered |
Panama |
25 Int. |
DREAMWORKS SKG & DESIGN |
78903 |
78903 |
Registered |
Panama |
28 Int. |
DREAMWORKS SKG & DESIGN |
78970 |
78970 |
Registered |
Panama |
41 Int. |
DREAMWORKS SKG & DESIGN |
58582 |
58582 |
Registered |
Papua New Guinea |
09 Int. |
DREAMWORKS SKG & DESIGN |
58583 |
58583 |
Registered |
Papua New Guinea |
41 Int. |
32
DREAMWORKS SKG & DESIGN |
735-95 |
292076 |
Registered |
Paraguay |
09 Int. |
DREAMWORKS SKG & DESIGN |
736-95 |
292077 |
Registered |
Paraguay |
41 Int. |
DREAMWORKS SKG & DESIGN |
260653 |
16028 |
Registered |
Xxxx |
00 Int. |
DREAMWORKS SKG & DESIGN |
260752 |
18010 |
Registered |
Xxxx |
00 Int. |
DREAMWORKS SKG & DESIGN |
260753 |
17975 |
Registered |
Xxxx |
00 Int. |
DREAMWORKS SKG & DESIGN |
260654 |
5103 |
Registered |
Xxxx |
00 Int. |
DREAMWORKS SKG & DESIGN |
100006 |
4.1995E+10 |
Registered |
Philippines |
09 Int. |
DREAMWORKS SKG & DESIGN |
100007 |
4.1995E+10 |
Registered |
Philippines |
25 Int. |
DREAMWORKS SKG & DESIGN |
100008 |
4.1995E+10 |
Registered |
Philippines |
28 Int. |
DREAMWORKS SKG & DESIGN |
100009 |
4.1995E+10 |
Registered |
Philippines |
41 Int. |
DREAMWORKS SKG & DESIGN |
Z-142942 |
96641 |
Registered |
Poland |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
306 702P |
306 702 |
Registered |
Portugal |
09 Int. |
DREAMWORKS SKG & DESIGN |
306 703R |
306 703 |
Registered |
Portugal |
25 Int. |
DREAMWORKS SKG & DESIGN |
306 704S |
306 704 |
Registered |
Portugal |
28 Int. |
DREAMWORKS SKG & DESIGN |
306 705T |
306 705 |
Registered |
Portugal |
41 Int. |
DREAMWORKS SKG & DESIGN |
35844 |
35844 |
Registered |
Puerto Rico |
09 Int. |
DREAMWORKS SKG & DESIGN |
35845 |
35845 |
Registered |
Puerto Rico |
41 Int. |
DREAMWORKS SKG & DESIGN |
65571 |
65571 |
Registered |
Puerto Rico |
25 Int. |
DREAMWORKS SKG & DESIGN |
65570 |
65570 |
Registered |
Puerto Rico |
28 Int. |
DREAMWORKS SKG & DESIGN |
34891 |
22759 |
Registered |
Romania |
09 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
95700782 |
145905 |
Registered |
Russian Federation |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
28084 |
357/84 |
Registered |
Saudi Arabia |
09 Int. |
DREAMWORKS SKG & DESIGN |
28085 |
357/85 |
Registered |
Saudi Arabia |
25 Int. |
DREAMWORKS SKG & DESIGN |
28361 |
357/86 |
Registered |
Saudi Arabia |
28 Int. |
DREAMWORKS SKG & DESIGN |
28362 |
357/87 |
Registered |
Saudi Arabia |
41 Int. |
DREAMWORKS SKG & DESIGN |
Z-95-0017 |
40896 |
Registered |
Serbia (Old Code) |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
74/95 |
4152 |
Registered |
Seychelles |
09 Int. |
DREAMWORKS SKG & DESIGN |
75/95 |
4153 |
Registered |
Seychelles |
41 Int. |
DREAMWORKS SKG & DESIGN |
14090 |
Pending |
Sierra Leone |
09 Int. | |
DREAMWORKS SKG & DESIGN |
505/95 |
T95/00505J |
Registered |
Singapore |
09 Int. |
33
DREAMWORKS SKG & DESIGN |
506/95 |
T95/00506I |
Registered |
Singapore |
25 Int. |
DREAMWORKS SKG & DESIGN |
507/95 |
T95/00507G |
Registered |
Singapore |
41 Int. |
DREAMWORKS SKG & DESIGN |
508/95 |
T9500508E |
Registered |
Singapore |
28 Int. |
DREAMWORKS SKG & DESIGN |
POZ-0159-95 |
181641 |
Registered |
Slovakia |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
Z-9570048 |
9570048 |
Registered |
Slovenia |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
95/0518 |
95/00518 |
Registered |
South Africa |
09 Int. |
DREAMWORKS SKG & DESIGN |
95/0519 |
95/00519 |
Registered |
South Africa |
25 Int. |
DREAMWORKS SKG & DESIGN |
95/0520 |
95/00520 |
Registered |
South Africa |
28 Int. |
DREAMWORKS SKG & DESIGN |
95/0521 |
95/00521 |
Registered |
South Africa |
41 Int. |
DREAMWORKS SKG & DESIGN |
1942817 |
1942817 |
Registered |
Spain |
09 Int. |
DREAMWORKS SKG & DESIGN |
1942818 |
1942818 |
Registered |
Spain |
25 Int. |
DREAMWORKS SKG & DESIGN |
1942819 |
1942819 |
Registered |
Spain |
28 Int. |
DREAMWORKS SKG & DESIGN |
1942820 |
1942820 |
Registered |
Spain |
41 Int. |
DREAMWORKS SKG & DESIGN |
73275 |
Pending |
Sri Lanka |
09 Int. | |
DREAMWORKS SKG & DESIGN |
73276 |
Pending |
Sri Lanka |
41 Int. | |
DREAMWORKS SKG & DESIGN |
1395 |
Registered |
St. Helena |
09 Int., 25 Int., 28 Int., 41 Int. | |
DREAMWORKS SKG & DESIGN |
4259 |
4259 |
Registered |
St. Kitts and Nevis |
08 Int. |
DREAMWORKS SKG & DESIGN |
S42 |
S42 |
Registered |
St. Kitts and Nevis |
00 Int. |
DREAMWORKS SKG & DESIGN |
18/1995 |
18/1995 |
Registered |
St. Lucia |
09 Int. |
DREAMWORKS SKG & DESIGN |
17/1995 |
17/1995 |
Registered |
St. Lucia |
41 Int. |
DREAMWORKS SKG & DESIGN |
363477 |
81/1999 |
Registered |
St. Xxxxxxx and the Grenadines |
09 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
24222 |
24222 |
Registered |
Sudan |
09 Int. |
DREAMWORKS SKG & DESIGN |
24223 |
24223 |
Registered |
Sudan |
41 Int. |
DREAMWORKS SKG & DESIGN |
14238 |
14238 |
Registered |
Suriname |
09 Int. |
DREAMWORKS SKG & DESIGN |
135/95 |
135/95 |
Registered |
Swaziland |
09 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
95-00555 |
320 792 |
Registered |
Sweden |
09 Int., 16 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
2292/96 |
436.04 |
Registered |
Switzerland |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
8401696 |
714209 |
Registered |
Taiwan |
09 Int. |
DREAMWORKS SKG & DESIGN |
8401798 |
717094 |
Registered |
Taiwan |
28 Int. |
DREAMWORKS SKG & DESIGN |
84001797 |
706225 |
Registered |
Taiwan |
25 Int. |
34
DREAMWORKS SKG & DESIGN |
84001799 |
81039 |
Registered |
Taiwan |
41 Int. |
DREAMWORKS SKG & DESIGN |
280971 |
Kor41435 |
Registered |
Thailand |
09 Int. |
DREAMWORKS SKG & DESIGN |
280972 |
Kor43914 |
Registered |
Thailand |
25 Int. |
DREAMWORKS SKG & DESIGN |
Kor41941 |
Registered |
Thailand |
28 Int. | |
DREAMWORKS SKG & DESIGN |
280974 |
Bor4102 |
registered |
Thailand |
41 Int. |
DREAMWORKS SKG & DESIGN |
23491 |
Registered |
Trinidad and Tobago |
09 Int. | |
DREAMWORKS SKG & DESIGN |
580/95 |
160767 |
Registered |
Turkey |
09 Int., 25 Int., 28 Int. |
DREAMWORKS SKG & DESIGN |
3943 |
3943 |
Registered |
Xxxxxxx Xxxxxxxx xx Xxxxxxxx Xxxxxx |
00 Int. |
DREAMWORKS SKG & DESIGN |
95010140/T |
13239 |
Registered |
Ukraine |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
14699 |
11308 |
Registered |
United Arab Emirates |
09 Int. |
DREAMWORKS SKG & DESIGN |
14700 |
11309 |
Registered |
United Arab Emirates |
41 Int. |
DREAMWORKS SKG & DESIGN |
2008007 |
2008007 |
Registered |
United Kingdom |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
74/620379 |
2416011 |
Registered |
United States of America |
09 Int., 41 Int. |
DREAMWORKS SKG (WITH COLOR DESIGN) |
78/943459 |
3482486 |
Registered |
United States of America |
41 Int. |
DREAMWORKS SKG & DESIGN |
275.57 |
375.293 |
Registered |
Uruguay |
09 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
861-95 |
P-189105 |
Registered |
Venezuela |
09 Int. |
DREAMWORKS SKG & DESIGN |
862-95 |
P-189106 |
Registered |
Venezuela |
25 Int. |
DREAMWORKS SKG & DESIGN |
863-95 |
P-189107 |
Registered |
Venezuela |
28 Int. |
DREAMWORKS SKG & DESIGN |
864-95 |
S-004021 |
Registered |
Venezuela |
41 Int. |
DREAMWORKS SKG & DESIGN |
3093 |
3093 |
Registered |
Western Samoa |
09 Int. |
DREAMWORKS SKG & DESIGN |
117/95 |
117/95 |
Registered |
Zambia |
09 Int. |
DREAMWORKS SKG & DESIGN |
57/95 |
Registered |
Zimbabwe |
09 Int. | |
DREAMWORKS SKG & DESIGN |
58/95 |
58/95 |
Registered |
Zimbabwe |
41 Int. |
35
Schedule B
(Licensed Goods)
All of the following merchandising and promotional items distributed and/or sold in connection with the Licensed Services:
Metal keys chains and statuettes featuring as the primary element of ornamentation and/or design scenes and/or characters from Licensee Live-Action Motion Pictures and Licensee Hybrid Motion Pictures;
Knives, spoons, and forks, all featuring as the primary element of ornamentation and/or design scenes and/or characters from Licensee Live-Action Motion Pictures and Licensee Hybrid Motion Pictures;
Pre-recorded videotapes and DVDs containing Licensee Live-Action Motion Pictures and Licensee Hybrid Motion Pictures, pre-recorded compact discs and audio tapes containing sound tracks from Licensee Live-Action Motion Pictures and Licensee Hybrid Motion Pictures, pre-recorded audio tapes containing music from Licensee Live-Action
Motion Pictures and Licensee Hybrid Motion Pictures;
Interactive Video Games, computer game cartridges, computer game cassettes, computer game tapes, Video Game cartridges, Video Game cassettes, and multimedia software for playing games, all based exclusively on scenes and/or characters from Licensee Live-Action Motion Pictures and Licensee Hybrid Motion Pictures and all subject
to Paragraph 2(d) of the License Agreement;
Electronic equipment, glasses and sunglasses, all featuring as the primary element of ornamentation and/or design scenes and/or characters from Licensee Live-Action Motion Pictures and Licensee Hybrid Motion Pictures;
Bicycles, scooters, and automobiles, all featuring as the primary element of ornamentation and/or design scenes and/or characters from Licensee Live-Action Motion Pictures and Licensee Hybrid Motion Pictures;
Clocks and watches, and jewelry, all featuring as the primary element of ornamentation and/or design scenes and/or characters from Licensee Live-Action Motion Pictures and Licensee Hybrid Motion Pictures;
36
Books, comic books, coloring books, loose-leaf binders, spiral-bound notebooks, note pads, writing pads, calendars, scrapbook albums, photograph albums, sticker albums, stickers, pencils, pens, playing cards, postcards, trading cards, greeting cards, painting sets, posters, cells,
and two-dimensional prints, credit cards; binders; vinyl character stickers; character stamps; address books, coin albums; scrap book albums; appointment books; blank bank checks; book covers; book marks, stationery boxes, checkbook covers; decals, desk sets; diaries; paper napkins and tablecloths; gift wrapping paper; paper party decorations; scrap books; stationery portfolios; and bumper stickers, all featuring as the primary element of ornamentation and/or design scenes and/or characters from Licensee Live-Action
Motion Pictures and Licensee Hybrid Motion Pictures;
Tote bags and umbrellas, handbags, wallets, all-purpose athletic bags; attaché cases; back packs; beach bags; umbrellas; beach umbrellas; book bags; business card cases; calling card cases; credit card cases; document cases; key cases; overnight cases; passport cases; purses; duffle bags; fanny packs; handbags; knapsacks;
luggage; school bags; school book bags, all featuring as the primary element of ornamentation and/or design scenes and/or characters from Licensee Live-Action Motion Pictures and Licensee Hybrid Motion Pictures;
Novelty items, ornamental novelty buttons and non-ornamental novelty pins; toy boxes and toy chests; and sleeping bags, all featuring as the primary element of ornamentation and/or design scenes and/or characters from Licensee Live-Action Motion Pictures and Licensee Hybrid Motion
Pictures;
Plastic squeeze bottles, beverage glassware, mugs, plates, figures, and figurines, all featuring as the primary element of ornamentation and/or design scenes and/or characters from Licensee Live-Action Motion Pictures and Licensee Hybrid Motion Pictures;
Sacks and bags made of canvas, all featuring as the primary element of ornamentation and/or design scenes and/or characters from Licensee Live-Action Motion Pictures and Licensee Hybrid Motion Pictures;
Blankets, comforters, bed linens, bed sheets, bedspreads, curtains, towels, bed pillow covers, napkins, tablecloths, potholders; oven mitts; kitchen towels and window coverings, all featuring as the primary element of ornamentation and/or design scenes and/or characters from Licensee Live-Action Motion Pictures and Licensee
Hybrid Motion Pictures;
Clothing, footwear and headwear, all featuring as the primary element of ornamentation and/or design scenes and/or characters from Licensee Live-Action Motion Pictures and Licensee Hybrid Motion Pictures;
37
Sporting goods and toys, including action figures and accessories therefore, bathtub toys, kites, board games, handheld units for playing electronic games, dies cast miniature toy vehicles, dolls, doll accessories, doll clothing, bean bag dolls, bendable play figures, flying disks, inflatable vinyl play figures, jigsaw puzzles,
marbles, plush toys, puppets, ride-on toys, skateboards, snowboards, balloons, roller skates, toy banks, water-squirting toys, stuffed toys and toy animals, toy vehicles, pinball machines, and model craft kits of toy figures, rubber action balls, action-type target games, electronic and non-electronic dart games, costume masks, face masks, and wind-up toys; and Christmas tree ornaments, all featuring as the primary element of ornamentation and/or design scenes and/or characters from Licensee Live-Action Motion
Pictures and Licensee Hybrid Motion Pictures.
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Schedule C
(Licensed Services)
The production, distribution and other exploitation of Licensee Live-Action Motion Pictures and Licensee Hybrid Motion Pictures, in all media now known or hereafter devised (including, without limitation, film, audio tapes, videotapes, CD-ROMs, DVDs and digital (e.g., Internet)
transmission), and other services directly related to and necessary for the production, distribution and other exploitation of Licensee Live-Action Motion Pictures and Licensee Hybrid Motion Pictures, but excluding Live Stage Performances and excluding any and all services related to the production, distribution or other exploitation of Animated Motion Pictures.
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Schedule D
(Form of Holding Company Sublicense)
This Sublicense Agreement (the “Sublicense Agreement”) is made effective as of the [_________] (the “Effective Date”), by and between XX XX Management, Inc., a Delaware corporation with offices at 00000 X. Xxxxxxx Xxxx, Xxxxx 000, Xxx Xxxxxxx, Xxxxxxxxxx 00000 (“XX XX”), and DreamWorks II
Holding Co., LLC, a __________ with offices at ____________ (“Holding Company”), and is made with reference to the following facts:
RECITALS
A DreamWorks Animation LLC (“DWA”) is engaged in the business of producing and distributing various entertainment properties, including animated motion pictures, animated television programs and other entertainment-related goods and services, under
and in connection with the trademark, service xxxx and trade name DREAMWORKS and various other trademarks, service marks and trade names containing the term DREAMWORKS, including the trademark, service xxxx and trade name DREAMWORKS SKG in both word xxxx and design xxxx form (collectively the “DreamWorks Marks”). The trademark, service xxxx and trade name DREAMWORKS SKG in both word xxxx and design xxxx form as set forth in Schedule A are referred to in this Sublicense Agreement
as the “Licensed Marks” (provided that “Licensed Marks” will also include the word xxxx DREAMWORKS without the SKG component (the “Non-SKG Xxxx”) but only for use in certain contexts as set forth in Section 2(a)). DWA owns all right, title and interest in and to the DreamWorks Marks worldwide, together with all registrations of and applications to register the DreamWorks Marks and the goodwill of the business pertaining thereto.
B. Pursuant to that certain License Agreement entered into by DWA and XX XX dated January 1, 2009 (the “DWA License Agreement”), DWA has granted XX XX the right to sublicense Holding Company the right to use the Licensed Marks in connection with the
production and distribution of certain non-animated motion pictures and related goods and services. XX XX now wishes to grant to Holding Company a sublicense to use the Licensed Marks on the terms and conditions set forth herein, and Holding Company is willing to accept such a sublicense.
C. The sublicense granted hereunder shall also extend to Holding Company’s wholly-owned and controlled subsidiaries, which as of the Effective Date consist of DreamWorks II Financial Services, Co., LLC, DreamWorks II Distribution Co., LLC, DreamWorks II Production
Co., LLC, and DreamWorks II Development Co., LLC, and may in the future include additional wholly-owned and controlled subsidiaries of Holding Company provided that Holding Company provides notice to XX XX (and XX XX provides notice to DWA) of any such additional wholly-owned and controlled subsidiaries.
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D. Holding Company is, and will remain throughout the term of this Sublicense Agreement, jointly owned and controlled by Reliance Big Entertainment (US), Inc. (“Reliance Entity”) and XX XX Management, LLC (and, as of the Effective Date, Holding Company
is owned fifty percent (50%) by Reliance Entity and fifty percent (50%) by XX XX Management, LLC); XX XX Management, LLC is, and will remain throughout the term of this Sublicense Agreement, managed by and more than seventy-five percent (75%) owned by XX XX Management, LP; XX XX is, and will remain throughout the term of this Sublicense Agreement, the sole general partner of XX XX Management, LP, and entities solely owned and controlled by Xxxxxx Xxxxxxxxx (“Xxxxxxxxx”) are and will remain throughout
the term of this Sublicense Agreement the sole owners of XX XX Management, LP; and DreamWorks II Financial Services, Co., LLC, DreamWorks II Distribution Co., LLC, DreamWorks II Production Co., LLC, and DreamWorks II Development Co., LLC and any other subsidiaries of Holding Company to which this sublicense is extended (collectively, the “Holding Company Subsidiaries”) are, and will remain throughout the term of this Sublicense Agreement, wholly-owned and controlled by Holding Company. Holding
Company, XX XX Management, LP, XX XX Management, LLC, each Holding Company Subsidiary, and Reliance Entity are referred to collectively hereinafter as “Licensee-Related Entities.”
NOW, THEREFORE, in consideration of the foregoing recitals (which are hereby incorporated into this Sublicense Agreement) and the mutual covenants and promises set forth below, and for other good and valuable consideration (including the payment of $100 by Holding Company to XX XX), XX XX and Holding Company hereby agree as
follows:
TERMS AND CONDITIONS
1. Definitions.
The following terms shall have the following meanings in this Sublicense Agreement:
“Animated Motion Picture” means any Motion Picture that is created predominantly by one or more non-live-action production methods (e.g., hand-drawn animation such as Prince of Egypt, CGI such as Shrek,
stop-motion such as Chicken Run and/or motion capture such as Polar Express) (each, an “Animation Method”). However, a Motion Picture that is created predominantly by one or more live-action production methods, but in which digital Animation Method(s) are used, in whole or in part, to create photorealistic characters that interact with live-action characters in a live-action
setting, will not be deemed an Animated Motion Picture and will be deemed either a Hybrid Motion Picture or a Live-Action Motion Picture as applicable. (Photorealistic characters include both “real world” characters modified by an Animation Method (e.g., Babe the pig in Babe) and characters that are invented but which are depicted in a “real world” manner by an Animation Method (e.g. Yoda in Star
Wars II: Attack of the Clones, Gollum in Lord of the Rings, the dinosaurs in Jurassic Park, the robots in I, Robot, and the toy soldiers in Small Soldiers).
“Change of Control” means, with respect to any entity, any reorganization, merger, consolidation, or other transaction where more than fifty percent (50%) of the entity’s voting securities are owned by entities or persons different from the entities or persons owning such voting securities prior to such transaction;
any sale of all or substantially all of the business or assets of such entity; or the acquisition by any other entity or person directly or indirectly of more than fifty percent (50%) of the voting securities of the entity. However, the Reliance Entity will not be deemed to have undergone a Change of Control so long as Reliance-ADA Group Limited (the ultimate parent of the Reliance Entity) continues, directly or indirectly, to (a) be the single largest shareholder, (b) hold at least thirty three and
one third percent (33-1/3%) of the voting securities, and (c) have the legal authority to elect or otherwise direct the appointment of its management and a majority of its Board members, in each case with respect to the Reliance Entity.
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“Completed Film” means a Licensee Live-Action Motion Picture or Licensee Hybrid Motion Picture that was produced (i.e., pre-production has commenced), acquired and/or released by Holding Company prior to expiration or termination of this Sublicense Agreement pursuant to Paragraph 3 below, or a Licensee Live-Action
Motion Picture or Licensee Hybrid Motion Picture that Holding Company executed a binding agreement to acquire or co-produce prior to expiration or termination of this Sublicense Agreement pursuant to Paragraph 3 below.
“Xxxxxx Xxxx” means any trademark, service xxxx or trade name of the Xxxx Disney Company or any of its affiliates or subsidiaries that includes any of the following: (a) any of the terms “Disney” or “Xxxx Disney”; (b) any acronym that references any of the terms “Disney” or “Xxxx
Disney”; or (c) any title, logo, scene, character or other excerpt from any Motion Picture that is exhibited or distributed under any trademark, service xxxx or trade name that includes the terms “Disney” or “Xxxx Disney” or any acronym that references any of the terms “Disney” or “Xxxx Disney.” For avoidance of doubt, TOUCHSTONE is not a Xxxxxx Xxxx.
“Domestic Territory” means the territorial United States and its possessions, territories and commonwealths, including, without limitation, the U.S. Virgin Islands, Puerto Rico, Guam, and the U.S. Trust Territories of the Pacific Islands, including, without limitation, the Carolina Islands, the Xxxxxxxx Islands
and the Mariana Islands, Saipan and American Samoa; the Dominican Republic, the British Virgin Islands, Nassau, Bahamas, Bermuda, Saba Island, St. Eustatius Island, St. Kitts Island, St. Maarten Island, and Freeport; the Dominion of Canada and its possessions, territories and commonwealths; and all Army, Navy, Air Force, Red Cross and other national or governmental installations, diplomatic posts, camps, bases, and reservations of the above-mentioned countries, as well as oil rigs (including Aramco sites) and
maritime facilities (and other commercial and/or industrial installations of the above-mentioned countries and territories), wherever any of the aforementioned facilities or installations are located, to the extent that sales are made and/or servicing thereof is performed within the geographical areas set forth above, and all airlines and ships flying the flag of, or having the registry of, or whose principal office is located in the United States, Canada or Bermuda, and other possessions, territories and commonwealths
within the Domestic Territory.
“DWA Event Picture” means any Animated Motion Picture or Hybrid Motion Picture produced, acquired, and/or released by DWA or any of its affiliates or subsidiaries (alone or with others) that (i) is rated “G,” “PG” or “PG-13” (or a materially equivalent rating in the event of
any changes to the ratings system); and (ii) is scheduled to be released for Theatrical Exhibition on not less than two thousand (2,000) screens in the Domestic Territory (irrespective of the anticipated theatrical release pattern in the International Territory).
“DWA Registered Territory” means each jurisdiction in which DWA possesses DWA Registered Trademark Rights as of the Effective Date of this Sublicense Agreement, and any additional jurisdiction in which DWA obtains DWA Registered DWA Trademark Rights in the manner set forth in Paragraph 2(g).
“DWA Registered Trademark Rights” means those trademark rights with respect to the Licensed Marks that DWA has secured with issued and subsisting registrations in each jurisdiction where DWA has filed applications to register (or otherwise obtains registrations of) such Licensed Marks.
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“Exhibit” means transmit, broadcast, display, exhibit or perform. “Exhibiting” and “Exhibition” shall have correlative meanings.
“Greenlight Authority” means the personal authority required to cause Holding Company and the Holding Company Subsidiaries to undertake any of the following activities: (a) with respect to any Motion Picture, the financing and production of such Motion Picture, or (b) only with respect to Motion Pictures initially
produced for Theatrical Exhibition, the acquisition of such Motion Picture, or (c) only with respect to Television Motion Pictures, procurement of financing of such Television Motion Picture from a third party. For avoidance of doubt, the term “Greenlight Authority” as used in this Sublicense Agreement refers to the authority without which Holding Company or any Holding Company Subsidiary cannot undertake the above activities, but does not include the authority to direct the activities
of any other party whose approval may also be required to cause Holding Company or a Holding Company Subsidiary to undertake such activities (i.e., Greenlight Authority is necessary, but not necessarily sufficient, to cause Holding Company and the Holding Company Subsidiaries to undertake such activities).
“Hybrid Motion Picture” means a Motion Picture that is predominately live-action, but in which at least two of the four characters with the most screen time, or a majority of the characters with speaking roles, are created (non-photorealistically) by an Animation Method (Who
Framed Xxxxx Rabbit, Looney Tunes – Back in Action and Space Jam are examples of Motion Pictures that meet this condition).
“International Territory” means each country around the world that is not included in the Domestic Territory.
“Licensed Domain Names” means the domain name xxxxxxxxxxxxxxxxx.xxx and such other domain names as may be designated by XX XX from time to time (which Holding Company acknowledges and agrees will be subject to DWA’s approval as set forth in
the DWA License Agreement).
“Licensed Goods” means those goods set forth on Schedule B attached hereto, as Schedule B may be amended from time to time with the mutual agreement of the parties (which Holding Company acknowledges and agrees will be subject to DWA’s approval as set forth in the DWA License Agreement).
“Licensed Marks” has the meaning set forth in the recitals.
“Licensed Services” means those services set forth in Schedule C attached hereto, as Schedule C may be amended from time to time with the mutual agreement of the parties (which Holding Company acknowledges and agrees will be subject to DWA’s approval as set forth in the DWA License Agreement).
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“Licensee Hybrid Motion Picture” means a Hybrid Motion Picture that meets all three of the following conditions: (i) Xxxxxxxxx personally has exercised Greenlight Authority on an individual and specific basis with respect to such Hybrid Motion Picture, (ii) such Hybrid Motion Picture is produced, acquired or financed
by Holding Company or a Holding Company Subsidiary either alone or jointly with a third party, and (iii) such Hybrid Motion Picture is not released or marketed as a Xxxx Disney picture or using any Xxxxxx Xxxx (other than to the extent expressly permitted under Paragraph 6(f)).
“Licensee Live-Action Motion Picture” means a Live-Action Motion Picture that meets all three of the following conditions: (i) Xxxxxxxxx personally has exercised Greenlight Authority on an individual and specific basis with respect to such Live-Action Motion Picture, (ii) such Live-Action Motion Picture is
produced, acquired or financed by Holding Company or a Holding Company Subsidiary either alone or jointly with a third party, and (iii) such Live-Action Motion Picture is not released or marketed as a Xxxx Disney picture or using any Xxxxxx Xxxx (other than to the extent expressly permitted under Paragraph 6(f)).
“Live-Action Motion Picture” means a Motion Picture that is not an Animated Motion Picture or a Hybrid Motion Picture.
“Live Stage Performance” means the presentation of literary material (e.g., a screenplay, play or other written material) upon the spoken stage with live performers appearing and speaking in the immediate presence of the viewing audience; provided, however, that the presentation of literary material upon the spoken
stage with live performers appearing and speaking, whether or not in the immediate presence of a viewing audience, for the primary purpose of photographing and recording such presentation for use in or in connection with a Motion Picture or for the promotion or publicity of a Motion Picture shall not be deemed a Live Stage Performance.
“Major Release” means any theatrical Motion Picture rated “G,” “PG,” “PG-13” or “R” (or a materially equivalent rating in the event of any changes to the ratings system) that is scheduled to be released for Theatrical Exhibition on not less than two thousand (2,000)
screens in the Domestic Territory (irrespective of the anticipated theatrical release pattern in the International Territory).
“Motion Picture” means any audiovisual product of every kind and character whatsoever, whether produced by means of any photographic, electrical, electronic, mechanical or other process or device now known or hereafter devised, in which pictures, images, and visual and aural representations are recorded or otherwise
preserved for Exhibition by any means or media now known or hereafter devised in such manner as to appear to be in motion or sequence, including computer-generated pictures and graphics; provided, however, that Video Games will not be deemed to be Motion Pictures.
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“Permitted Dubbed Version(s)” means any Live-Action Motion Picture(s) which has been dubbed into Hindi, Bengali, Telugu, Marathi, Tamil, Urdu, Gujarati, Kannada, Malayalam, Oriya, Punjabi, Assamese, and other languages that are consented to by DWA in its sole discretion, and which does not have a soundtrack in
any language other than any of such languages.
“Release Date” means, with respect to any Motion Picture, the date (if any) on which such Motion Picture is widely released for Theatrical Exhibition.
“Reliance Expatriate Territory” means Africa or any political subdivision thereof, the Middle East or any political subdivision thereof, Indonesia, Malaysia, Singapore, the United States, Canada, and the United Kingdom.
“Similar Theatrical Motion Picture” means any Motion Picture released for Theatrical Exhibition that is rated “PG” or a less restrictive rating (or a materially equivalent rating in the event of any changes to the ratings system).
“Television Motion Picture” means any Motion Picture, including television series, produced or distributed for initial Exhibition on television, including broadcast, cable, Internet, satellite and all other forms of television Exhibition.
“Term” means the term of this Sublicense Agreement as set forth in Paragraph 3(a).
“Theatrical Exhibition” means, with respect to any Motion Picture, the Exhibition of such Motion Picture in commercial motion picture theatres or other venues where members of the general public view such Motion Picture for an admission fee.
“Video Game” means any and all (a) interactive software games and other software-based products for all platforms, including, without limitation, video game consoles (e.g., the Microsoft Xbox 360, the Nintendo Wii, and the Sony Playstation 3), handheld gaming platforms (e.g., the Nintendo DS and the Sony PSP),
online platforms (e.g., massively multiplayer online games, casual games, streaming games, and downloaded games), wireless platforms, personal computers, and all successor platforms of any of the foregoing; (b) video game prequels, sequels, expansion packs, premium modules, add-ons, episodic content, mission packs, spin-offs, conversions, and ports related to any such interactive software games; and (c) related documentation in print or electronic form, including, without limitation, strategy books, guides and
hint books.
“Weekend” means the period Wednesday through Sunday, inclusive.
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2. Grant of Rights; Amendment; Etc.
(a) XX XX hereby grants to Holding Company, subject to and conditioned upon the terms and conditions set forth herein, and Holding Company hereby accepts, a non-assignable (except as set forth in Paragraph 11(c)), royalty-free right and license during the Term in the DWA
Registered Territory or outside the DWA Registered Territory: (i) to use the Licensed Marks (either alone or with the words “Studios,” “Studio,” “Pictures,” “Films,” or “Television”) as part of Holding Company’s and the Holding Company Subsidiaries’ corporate names and trade names, including, without limitation, use of the trade names (but not including the Non-SKG Xxxx) on stationery, business documents, and business cards; (ii) to use Licensed
Marks (but not including the Non-SKG Xxxx, except as expressly set forth in the immediately following sentence) on and in connection with Licensed Goods and Licensed Services, (iii) to use the Licensed Domain Names in connection with websites dedicated exclusively to Licensed Goods and/or Licensed Services; and (iv) to use the Licensed Marks (but not including the Non-SKG Xxxx) in the other manners expressly set forth herein. The license granted in the preceding sentence includes the right to use the
Non-SKG Xxxx in presentation credits, one-sheet billing blocks, and press releases for Licensee Live-Action Motion Pictures and Licensee Hybrid Motion Pictures, and in other contexts as may be designated by XX XX from time to time (which Holding Company acknowledges and agrees will be subject to DWA’s prior approval pursuant to the DWA License Agreement), and in other contexts in which the former DreamWorks Studios generally used the Non-SKG Xxxx in the ordinary course of business prior to the Effective
Date. For avoidance of doubt, and notwithstanding anything to the contrary herein, (i) any use by Holding Company or any Sublicensee of the word “DreamWorks” as part of a logo or design xxxx must be accompanied with (and such logo or design xxxx must incorporate) “SKG” as shown in the registrations listed on Schedule A, and (ii) neither Holding Company nor any Sublicensee shall have the right to use the Non-SKG Xxxx in any context(s) in which the former DreamWorks Studios generally
used a trademark, service xxxx or trade name incorporating both “DreamWorks” and “SKG” in the ordinary course of business prior to the Effective Date. In addition, such license (together with all limitations, restrictions, requirements and obligations related to such license and/or the use of the Licensed Marks as set forth in this Sublicense Agreement) shall extend to the Holding Company Subsidiaries, provided that each such Holding Company Subsidiary agrees in writing to be bound by
the terms of this Sublicense Agreement (including with respect to all such limitations, restrictions, requirements and obligations). Holding Company shall ensure that each Holding Company Subsidiary complies with all of the terms and conditions of this Sublicense Agreement, and any breach of any such terms and conditions by any Holding Company Subsidiary shall be deemed a breach of this Sublicense Agreement by Holding Company. The use of the Licensed Marks in connection with words other
than “Studios,” “Studio,” “Pictures,” “Films,” or “Television” by Holding Company or any Holding Company Subsidiary shall require the prior written consent of XX XX (which Holding Company acknowledges and agrees will be subject to DWA’s prior written consent pursuant to the DWA License Agreement). The right and license granted to Holding Company hereunder shall be exclusive only as to the use of the Licensed Marks on or in connection
with (1) Licensed Goods which are based on and feature as the primary element of ornamentation and/or design (A) scenes and/or characters from Licensee Live-Action Motion Pictures or (B) the title or logo of a Licensee Live-Action Motion Picture, and (2) the Licensed Services as applicable to Licensee Live-Action Motion Pictures. The right and license granted to Holding Company hereunder shall be
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non-exclusive in all other respects, including as to all other Licensed Goods and Licensed Services. As set forth above, the license granted to Holding Company hereunder includes the right to use and sublicense Holding Company to use the Licensed Marks outside the DWA Registered Territory; provided, however,
that notwithstanding anything to the contrary in this Sublicense Agreement or otherwise, Holding Company acknowledges and agrees that DW II’s rights under the DWA License Agreement with respect to maintenance and enforcement of the Licensed Marks and indemnification from DWA apply only to use in the DWA Registered Territory within the DWA Registered Trademark Rights, and any other use or sublicensing of the Licensed Marks by Holding Company, including any use or sublicensing outside the DWA Registered Territory,
shall be at Holding Company’s sole risk. For avoidance of doubt, Holding Company may also permit Reliance Entity and Disney (as defined in Section 2(f)) to display the Licensed Marks to reference Holding Company in connection with accurate descriptions of Holding Company’s relationship with Reliance Entity and/or Disney (as applicable) in Reliance Entity’s and Disney’s corporate documentation and corporate publicity including, without limitation, Reliance Entity’s and
Disney’s contracts, annual reports, and communications to shareholders and the general business community, and on the sections of Reliance Entity’s and Disney’s general corporate website(s) devoted to partner/alliance relationships; provided that, (x) for avoidance of doubt, Reliance Entity shall have no right to use any Licensed Xxxx as a trademark or service xxxx, or as a trade name other than in reference to Holding Company, and Disney shall have only those rights with respect to the Licensed
Marks expressly granted under the Disney Distribution Agreement, and (y) Holding Company shall ensure that all display of Licensed Marks by Reliance Entity and/or Disney shall be in the same manner (including with respect to size, prominence and placement) as that used for Reliance Entity’s and Disney’s display of other partner trade names and logos.
(b) Notwithstanding anything in this Sublicense Agreement to the contrary, Holding Company’s exclusivity as set forth above shall not include (and Holding Company acknowledges and agrees that DWA retains pursuant to the DWA License Agreement) the right to use the Licensed
Marks in connection with (i) Live-Action Motion Pictures intended for family audiences; (ii) live-action online/digital family content; (iii) all services related to the production, distribution or other exploitation of Live-Action Motion Pictures intended for family audiences and live-action online/digital family content; and (iv) all other goods and services based on, incorporating or otherwise related to Live-Action Motion
Pictures intended for family audiences and live-action online/digital family content. Holding Company also acknowledges and agrees that DWA retains the right to license others to use the Licensed Marks in connection with DWA’s distribution agreements (e.g., its Paramount distribution agreement), subdistribution agreements, and promotion agreements, and all services related to the production, distribution
or other exploitation of DWA’s Live-Action Motion Pictures intended for family audiences and live-action online/digital family content and all other goods and services based on, incorporating or otherwise related to Live-Action Motion Pictures intended for family audiences and live-action online/digital family content (other than with respect to sublicensing third parties to use any Licensed Marks in connection with the production and distribution of such third party’s Live-Action Motion
Picture intended for family audiences).
(c) Notwithstanding anything to the contrary herein, Holding Company acknowledges and agrees that the rights granted to Holding Company under this Sublicense Agreement are subject to the following preexisting rights of third parties: (i) UMG Recordings, Inc. has been granted
an exclusive license to use “DreamWorks Records” as more fully set forth in the Sublicense Agreement dated as of January 8, 2004, between DreamWorks LLC and UMG Recordings, Inc., and (ii) Paramount Pictures Corporation, as DreamWorks LLC’s successor-in-interest as a result of Paramount Pictures Corporation’s purchase of DreamWorks LLC, shall have the right to use “DreamWorks” and/or the Licensed Marks as more fully set forth in the Sublicense Agreement dated as of October 27,
2004, between DreamWorks Animation LLC and DreamWorks LLC.
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(d) Notwithstanding anything in this Sublicense Agreement to the contrary, the right and license granted to Holding Company hereunder does not include the right to (and Holding Company shall not) use or sublicense any third party to use the Licensed Marks in connection with:
(i) any Video Game for any online platform (or any online functionality included in any other platform) that (A) permits ten (10) or more users (in the aggregate including all rooms, worlds and areas associated with such Video Game) in different
physical locations to interact in real time using animated avatars in a virtual world, or (B) includes features of a persistent virtual world (i.e., a virtual world that continues to change and develop even while some users are not playing, or where user-initiated changes to the virtual world or to a user’s avatar persist beyond one play session (i.e., a single period of uninterrupted play)), including, without limitation, any “massively multiplayer online game” or other persistent or partially-persistent
online game or community (including, by way of example only and without limitation, games with interactive or persistent features or functionality similar to Second Life, World of Warcraft, Club Penguin or Webkinz) (collectively “Interactive/Persistent Online Games”) (provided that, for avoidance of doubt, clause (B) of this subsection (i) will not prohibit use or sublicensing of the Licensed Marks in connection with Video Games that permit the user to create an animated avatar which can be used more
than once (such as the animated avatars users create to play Wii) as long as enhancements, add-ons or modifications made to such avatar during play do not persist beyond one play session; or
(ii) Video Games for any online platform that are not Interactive/Persistent Online Games (“Non-Interactive/Persistent Online Games”) except solely in connection with the promotion of Theatrical Exhibition of a Licensee Live-Action Motion Picture or Licensee Hybrid Motion Picture during the period commencing
three (3) months before the initial Theatrical Exhibition of the Motion Picture and continuing through the initial video distribution window, but not longer than three (3) months after the initial home video (e.g., DVD, Blu-Ray disc) release of the Motion Picture; and provided further that Holding Company may only use (or sublicense) the Licensed Marks in connection with (A) such Non-Interactive/Persistent Online Games on online platforms that are solely promotional and non-income-producing (except that the website
that hosts the applicable Non-Interactive/Persistent Online Games may contain advertising), and (B) no more than two (2) Non-Interactive/Persistent Online Games for each Licensee Live-Action Motion Picture or Licensee Hybrid Motion Picture (provided that, for avoidance of doubt, this subsection (ii) will not prohibit use or sublicensing of the Licensed Marks in connection with Video Games for non-online platforms that include an element of online functionality as long as such Video Games for non-online platforms
are not Interactive/Persistent Online Games).
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(e) Holdbacks. Holding Company shall not commence or authorize the commencement of the initial Theatrical Exhibition of any Similar Theatrical Motion Picture under any Licensed Marks in any territory during any Holdback Period in such territory. With respect to
each DWA Event Picture, the “Holdback Period” in each applicable territory (i.e., in the Domestic Territory and in each International Territory) is the period commencing on the first day of the Weekend prior to the Release Date of such DWA Event Picture in such territory and continuing throughout and including the Weekend following such Release Date (e.g., if the DWA Event Picture is being released on a (i) Friday, then the Holdback Period commences two Wednesdays before such Friday and ends two Sundays
after such Friday; (ii) Wednesday, then the Holdback Period commences on the Wednesday one week before such Wednesday and ends two Sundays after such Wednesday). In addition, Holding Company shall not commence or authorize the commencement of the initial Theatrical Exhibition of any Major Release under any Licensed Marks in any territory (i.e., in the Domestic Territory and in each International Territory) on the same Weekend as the Release Date for a DWA Event Picture in such territory. The
holdback obligation described in the previous sentence is conditioned on DWA providing XX XX at least twelve (12) months’ prior notice of the scheduled Release Date for a DWA Event Picture in the Domestic Territory and each International Territory. If DWA changes a Release Date after the date that is twelve (12) months before the scheduled Release Date in the applicable territory and Holding Company had already set the Release Date for one of its Motion Pictures to comply with this Paragraph
2(e) based on the Release Date originally set forth in DWA’s notice to XX XX, Holding Company shall not be required to change such previously set Release Date to comply with the provisions of this Paragraph 2(e) based on DWA’s revised Release Date. In addition, Holding Company shall consult in good faith with DWA prior to scheduling the initial Theatrical Exhibition of a Motion Picture under any Licensed Marks that is rated “PG-13” (or a materially equivalent rating in the event
of any changes to the ratings system) in the Domestic Territory and in each of the International Territories during the period one (1) Weekend on either side of the applicable Release Date of each DWA Event Picture in the Domestic Territory and in each of the International Territories, respectively; provided that, if Holding Company determines in its good faith business judgment after such consultation with DWA to proceed with the initial Theatrical Exhibition of such Motion Picture during such period, Holding
Company will not be deemed to have violated the provisions of this Paragraph 2(e). XX XX acknowledges that in certain International Territories, such holdback restrictions may be inappropriate or impracticable to enforce due to differences in ratings’ categories and, accordingly, the parties will attempt to accomplish as closely as possible their agreement with respect to the holdback restrictions as set forth in this Paragraph 2(e) in any such International Territory, taking into
account such differences in ratings’ categories.
(f) Sublicenses. Holding Company shall have the right to grant sublicenses to (i) Xxxx Disney Company (“Disney”) for the distribution of Motion Pictures worldwide (the “Disney Distribution Agreement”); (ii) Reliance Big Entertainment
Ltd. (“Reliance Big,” and together with Disney, the “Distributors”) for distribution of Motion Pictures in India and the Reliance Expatriate Territory (but with respect to the Reliance Expatriate Territory only for Permitted Dubbed Versions) (the “Reliance Distribution Agreement,” and together with the Disney Distribution Agreement, the “Distribution Agreements”); and/or (iii) consumer products and promotional partner sublicensees, in each case subject
to the terms and conditions set forth in this Sublicense Agreement (each, a “Consumer Products Sublicense”). Holding Company may also, with DW II’s prior written approval in each case (which Holding Company acknowledges and agrees will be subject to DWA’s approval pursuant to the DWA License Agreement), enter into additional distribution agreements that contain
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sublicenses of the Licensed Marks, and any such additional approved distribution agreements shall be included in “Distribution Agreements” for all purposes under this Sublicense Agreement. Paramount Pictures, Universal Pictures, Twentieth Century Fox, Columbia Pictures, and Warner Brothers are pre-approved
as distributors for purposes of the preceding sentence. The Distribution Agreements and each and every Consumer Products Sublicense shall contain at least the terms set forth in Schedule D and shall otherwise comply with the terms of this Sublicense Agreement. Holding Company and all sublicensees of Holding Company are referred to in this Sublicense Agreement, individually and collectively, as “Sublicensees,” and all sublicenses granted by Holding Company (including the Distribution
Agreements and Consumer Products Sublicenses) are referred to in this Sublicense Agreement, individually and collectively, as “Sublicenses.” Without limitation of the foregoing, each and every Sublicense shall automatically terminate (except for the permitted continued use of the Licensed Marks as expressly set forth in Paragraph 3(c) below) upon any termination or expiration of this Sublicense Agreement. Any deviation from the terms set forth in Schedule D, shall require DW
II’s prior written consent (which Holding Company acknowledges and agrees will be subject to DWA’s prior written consent as set forth in the DWA License Agreement), including, without limitation, any changes to the provisions in any Sublicense related to automatic termination of such Sublicense. Holding Company agrees that the maximum length of the term of each Consumer Products Sublicense shall be consistent with and no longer than the average length of the terms of the sublicense agreements
(including any mandatory extensions thereof, if any) actually entered into by the prior DreamWorks LLC under the 2004 Sublicense Agreement in connection with the same or similar Licensed Goods. Holding Company agrees that each Sublicensee shall be a reputable company capable of performing the Licensed Services and/or producing the Licensed Goods bearing the Licensed Marks under its Sublicense of the same general level of quality
as under license agreements between DWA and third parties prior to the Effective Date of this Sublicense Agreement. Holding Company shall provide XX XX with the names and addresses of all Sublicensees and the subject matter of each Sublicense, so that XX XX can provide such information to DWA pursuant to the DWA License Agreement. At DWA’s request, Holding Company shall provide XX XX a copy of each Sublicense promptly following execution, so that XX XX can provide such copy to DWA
pursuant to the DWA License Agreement. Holding Company shall ensure that its Sublicensees comply with the terms of all Sublicenses, and any breach of a Sublicense by a Sublicensee shall be deemed a breach by Holding Company of this Sublicense Agreement. DWA shall be an express third party beneficiary of all Sublicenses with respect to the provisions of such Sublicenses related to the Licensed Marks and shall have the right to enforce such provisions of all Sublicenses to the same extent
as if DWA were a party to such Sublicenses. Without limitation of the generality of the foregoing, in the event that Holding Company becomes aware that any Consumer Products Sublicensee has materially breached any provision of the applicable Consumer Products Sublicense related to the Licensed Marks, Holding Company shall promptly issue a thirty (30) day termination notice to such Sublicensee, and if such Sublicensee does not cure such breach within thirty (30) days of such notice, Holding Company shall immediately
terminate the applicable Consumer Products Sublicense. In the event that Holding Company becomes aware that any Distributor has materially breached the terms of any Distribution Agreement related to the Licensed Marks, Holding Company shall promptly issue a notice to such Distributor specifying such breach and take appropriate steps to enforce the terms of the applicable Distribution Agreement and protect the Licensed Marks. If such Distributor does not cure such breach of the Distribution
Agreement within thirty (30) days of such notice, Holding Company shall either immediately terminate such Distributor’s right to use the Licensed Marks, suspend such Distributor’s right to use the Licensed Marks until such time as the breach is cured, or meet in person with such Distributor in order to resolve such Distributor’s non-compliance. If such Distributor still has not cured the breach of the Distribution Agreement within sixty (60) days of the original notice, Holding Company
shall either immediately terminate such Distributor’s right to use the Licensed Marks or suspend
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such Distributor’s right to use the Licensed Marks until such time as the breach is cured. If such Distributor still has not cured the breach of the Distribution Agreement within ninety (90) days of the original notice, Holding Company shall immediately terminate such Distributor’s right to use the
Licensed Marks. Except as expressly set forth in this Paragraph 2(f), Holding Company shall have no right to sublicense any of the rights or licenses granted under this Sublicense Agreement, and any attempt by Holding Company to grant a Sublicense other than as expressly permitted by this Paragraph 2(f) shall be void and shall convey no rights to the purported Sublicensee with respect to the Licensed Marks.
(g) Additions to DWA Registered Territory. This Sublicense Agreement shall be automatically amended to add jurisdictions to the DWA Registered Territory (with respect to the Licensed Goods and the Licensed Services for which DWA obtains trademark registrations
in the applicable jurisdictions only) in the event that DWA obtains additional trademark registrations in the Licensed Marks through new registrations in jurisdictions not already included on Schedule A. Upon any amendment, Holding Company may cause all pertinent Sublicenses to be amended to reflect any additions to Schedules A and/or B.
(h) Holding Company acknowledges that DWA has pre-existing contractual arrangements with its third party strategic partners McDonalds, Intel and Hewlett-Packard that may limit DW II’s ability to license the Licensed Marks to Holding Company, and to permit Holding Company
to grant Sublicenses with respect to the Licensed Marks, for certain uses, as described in Schedule H. Holding Company hereby agrees that the rights and license granted to Holding Company under this Sublicense Agreement shall be subject to the terms of DWA’s pre-existing contractual arrangements with its strategic partners as described in Schedule H, including any extensions and renewals of such arrangements. In the event that Holding Company or any Sublicensee wishes to use any Licensed
Marks for any Licensed Good or Licensed Service in a manner that would conflict with DWA’s pre-existing contractual arrangements, Holding Company may request that XX XX attempt to secure permission for such use from DWA.
3. Termination, Etc.
(a) The Term of this Sublicense Agreement shall commence on the Effective Date and, unless terminated sooner pursuant to Paragraph 3(b), shall continue thereafter until the first to occur of (a) the initial Release Date of the thirtieth (30th)
Motion Picture produced (or co-produced), acquired, distributed or released by or for Holding Company, or (b) the sixth (6th) anniversary of the Effective Date.
(b) This Sublicense Agreement may be terminated in its entirety by Holding Company at any time upon notice to XX XX. This Sublicense Agreement will terminate in its entirety automatically upon the termination or expiration of the DWA License Agreement without
notice or further act by either party. In addition, this Sublicense Agreement may be terminated in its entirety by XX XX (i) at any time on or after the fourth (4th) anniversary of the Effective Date, provided that XX XX gives Holding Company at least sixty (60) days’ prior notice of such termination, (ii) immediately upon notice to Holding Company in the event of a material breach by Holding Company that remains
uncured for a period of thirty (30) days after XX XX provides written notice to Holding Company of such claimed material breach, (iii) immediately upon notice to Holding Company in the event of a material breach by Holding Company of any provision of Paragraphs 2(e), 6(a) or 6(d), (iv) immediately upon notice to Holding Company in the event of a material breach by Holding Company of any provision of Paragraphs 6(b), 6(c), 6(e), 6(f) or 6(g) that remains uncured for a period of five (5) days after XX XX provides
written notice to Holding Company of such claimed material breach, (v) immediately upon notice to Holding Company in the event that Xxxxxxxxx ceases to have Greenlight Authority over each and every Motion Picture financed, produced, acquired and/or released by Holding Company and the Holding Company Subsidiaries, (vi) immediately upon notice to Holding Company in the event that Xxxxxxxxx does not exercise Greenlight
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Authority during any period of twenty-four (24) consecutive months with respect to at least one Motion Picture for Theatrical Exhibition or one Television Motion Picture, in each case that is produced or acquired by Holding Company and the Holding Company Subsidiaries and is released under the Licensed Marks, (vii) immediately
upon notice to Holding Company in the event that Xxxxxxxxx dies or Xxxxxxxxx has a physical or mental incapacity that impairs his ability to exercise Greenlight Authority over each and every Motion Picture financed, produced, acquired and/or released by Holding Company and the Holding Company Subsidiaries for a period of three (3) months or longer, (viii) immediately upon notice to Holding Company in the event that that (A) any Licensee-Related Entity undergoes a Change of Control, (B) XX XX is no longer solely
and wholly owned and controlled by Xxxxxxxxx, (C) XX XX Management, LLC is no longer managed by and more than seventy-five percent (75%) owned by XX XX Management, LP, (D) XX XX is no longer the sole general partner of XX XX Management, LP, or entities solely owned and controlled by Xxxxxxxxx are no longer the sole owners of XX XX Management, LP; or (E) any of the Holding Company Subsidiaries is no longer solely and wholly owned and controlled by Holding Company; (ix) immediately upon notice to Holding Company
in the event that (A) Holding Company has not acquired funding of at least $325,000,000 by the initial official launch of Holding Company, (B) Reliance Entity does not fund Holding Company by the initial official launch of Holding Company, (C) Reliance Entity ceases to beneficially own at least twenty-five percent (25%) of the outstanding equity securities of Holding Company and each of the Holding Company Subsidiaries, or (D) any entity or person other than Reliance Entity or XX XX Management, LLC becomes the
beneficial owner of a ten percent (10%) or greater equity interest in Holding Company or any of the Holding Company Subsidiaries without the prior written approval of DWA, (x) immediately upon notice to Holding Company in the event that (A) any Licensee-Related Entity (other than Reliance Entity) files any petition under any bankruptcy, insolvency or similar laws, (B) any involuntary petition under any bankruptcy or similar statute is filed against any Licensee-Related Entity (other than Reliance Entity) or a
receiver or trustee is appointed to take possession of all or a substantial part of any Licensee-Related Entity’s (other than Reliance Entity’s) assets, (C) any Licensee-Related Entity (other than Reliance Entity) makes a general assignment for the benefit of creditors or becomes unable to meet its obligations as they mature, or (D) any Licensee-Related Entity’s (other than Reliance Entity’s) financial condition becomes such as to materially impair or to be reasonably likely to materially
impair its performance in accordance with the terms and conditions of this Sublicense Agreement. Holding Company shall promptly provide written notice to XX XX and DWA of the occurrence of an event set forth in this Paragraph 3(b)(v) through (x). In the event of termination of this Sublicense Agreement in its entirety by XX XX under this Paragraph, all Sublicenses shall automatically terminate by their terms as required by Paragraph 2(f) above (other than as expressly set forth in Paragraph
3(c)), Holding Company will cease (and will cause all Sublicensees to cease) all further use of the Licensed Marks except as expressly permitted hereunder, and Holding Company will take such steps as are necessary to change its and the Holding Company Subsidiaries’ corporate names and trade names to ones that do not include any Licensed Xxxx, to cease use of any domain names containing any Licensed Xxxx, and to delete all listings of its corporate names and trade names in directories, databases, indices,
and other public and private listings, all as soon after termination as commercially possible. In the event that this Sublicense Agreement expires pursuant to Paragraph 3(a), terminates as a result of a Non-Breach Termination (as defined in the DWA License Agreement) of the DWA License Agreement, or terminates because XX XX exercised its right to terminate pursuant to this Paragraph 3(b) other than for Holding Company’s material breach pursuant to any of Paragraphs 3(b)(ii)-(iv) (a “Non-Breach
Sublicense Termination”), XX XX agrees that Holding Company or Holding Company’s successor(s)-in-interest may use the Licensed Marks in connection with Completed Films, but only in the manner set forth in Paragraph 3(c) below, and provided that, notwithstanding anything to the contrary in this Sublicense Agreement, the parties acknowledge and agree that there shall not be more than thirty (30) Completed Films in the aggregate.
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(c) Following any Non-Breach Sublicense Termination, and subject to all of Holding Company’s obligations under this Sublicense Agreement, Holding Company may (i) continue to exercise the rights and licenses granted under this Sublicense Agreement to use the Licensed
Marks in connection with any of the following activities, to the extent such activities are included in Licensed Services: (1) distributing or exhibiting any Completed Film; (2) releasing or re-releasing any Completed Film; (3) editing any Completed Film for television Exhibition, DVD Exhibition, or Exhibition in any other media, now known or hereafter developed, or for purposes of territorial distribution, and dubbing or sub-titling any Completed Film into a different language, or for reasons of public taste,
or for legal reasons, including but not limited to a claim or the threat of a claim that such Completed Film without such editing might infringe the rights of any third party, and then releasing, distributing, and exhibiting such edited Completed Film; (4) using the Licensed Marks for attribution purposes only, solely to the extent necessary to indicate the fact that such Completed Film was produced and/or distributed by Holding Company, or (5) using and authorizing the use of phrases such as “Based on
the Film ________ Produced [or Presented] by DreamWorks Pictures [or DreamWorks Studios or DreamWorksFilms]” (provided that only one such construction may be used for all Completed Films) for attribution purposes only, solely to the extent required to indicate the relationship between a Completed Film and any sequel to or remake of a Completed Film, and provided that no Licensed Marks are used in connection with such sequel or remake other than as required to indicate such relationship; (ii) for a period
of six (6) months after the date of expiration or termination (the “Tail Period”), continue to enter into Consumer Products Sublicenses with respect to Licensed Goods based on and featuring as the primary element of ornamentation and/or design scenes and/or characters from a Completed Film; and (iii) for the remainder of the then-current term (without any extension or renewal) of any Consumer Products Sublicenses entered into during the Term of this Sublicense Agreement or during the Tail Period,
continue to distribute, advertise and promote Licensed Goods pursuant to such Sublicenses. Except as expressly set forth in this Paragraph 3(c), following any termination or expiration of this Sublicense Agreement, Holding Company shall immediately cease and cause its Sublicensees to cease all use of the Licensed Marks, including, without limitation, all Exhibition of Motion Pictures under the Licensed Marks, all sales and distribution of any goods or services under the Licensed Marks, and all use
of any domain names containing any Licensed Marks. The following sections of this Sublicense Agreement shall survive any termination or expiration: 1, 3(c), 6(a)-(e), 9(c), 9(d), 10 and 11. In addition, (A) all limitations, restrictions and other terms of this Agreement applicable to Holding Company’s or any Sublicensee’s continued use of any Licensed Marks after expiration or termination pursuant to this Paragraph 3(c) shall survive during the period of such continued
use, and (B) Holding Company shall remain responsible for enforcing the provisions of any Sublicenses applicable to the Licensed Marks to the extent that such provisions survive the termination or expiration of such Sublicenses.
4. Attribution Notice; Usage Guidelines.
Holding Company agrees that in connection with any use of the Licensed Marks under this Sublicense Agreement, it will comply with, and will cause all Sublicensees to comply with, such usage guidelines regarding the use and display of the Licensed Marks, including, without limitation, with respect to notices regarding DWA’s
ownership of the Licensed Marks, as XX XX may reasonably require from time to time (provided that any changes that XX XX makes to its usage guidelines in effect as of the Effective Date will be reasonable and will not materially impair Holding Company’s or its Sublicensees’ use of the Licensed Marks). Without limitation of Paragraph 2(f), Holding Company agrees that it will include in any Sublicense a requirement that all Sublicensees will comply with such guidelines and use such notices as may be
reasonably required by XX XX. Holding Company acknowledges and agrees that all usage guidelines with respect to the Licensed Marks will be as promulgated by DWA pursuant to the DWA License Agreement.
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5. Further Assurances, Etc.
(a) Holding Company may request that XX XX request that DWA, pursuant to the DWA License Agreement, take such steps as DWA determines are reasonably necessary under the laws of the various jurisdictions in the DWA Registered Territory, as the DWA Registered Territory may
be amended from time to time in the manner set forth in Paragraph 2(g), to record this Sublicense Agreement, at DWA’s sole expense, in order to facilitate Holding Company’s and its Sublicensees’ use of the Licensed Marks and enable DWA to enforce the Licensed Marks. If Holding Company has a bona fide intent to use or grant a Sublicense to use the Licensed Marks in a particular jurisdiction where applicable law requires recordal of trademark license agreements and DWA has not previously
recorded the DWA License Agreement in such jurisdiction, then Holding Company may request that XX XX request that DWA record the DWA License Agreement in such jurisdiction.
(b) Holding Company will (and will require its Sublicensees to) execute such documents and to take such steps, at Holding Company’s sole expense, including, without limitation, by making available to DWA and its counsel documents, information, and witnesses, as may
be required by DWA to perfect, confirm, acknowledge, or record this Sublicense Agreement in any jurisdiction, to enforce the Licensed Marks, or otherwise to effectuate the purposes of this Sublicense Agreement.
6. Acknowledgment of DWA’s Ownership of Licensed Marks, Etc.
(a) Holding Company acknowledges and agrees that DWA owns all right, title and interest in and to the Licensed Marks throughout the world, that Holding Company will acquire no ownership interest in or to the Licensed Marks under this Sublicense Agreement, and that Holding
Company’s interest in the Licensed Marks is limited solely to the license interest conferred by the license expressly granted under this Sublicense Agreement. There are no implied licenses under this Sublicense Agreement. Holding Company further acknowledges and agrees that all uses of the Licensed Marks by it under this Sublicense Agreement and by all Sublicensees under all Sublicenses inure and shall inure to the benefit of DWA and that all goodwill in the Licensed Marks is and shall
be owned by DWA.
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(b) Holding Company agrees that it will not file, and that it will cause all Sublicensees not to file, any applications to register any Licensed Marks, or any other xxxx that consists of, colorably imitates, or is confusingly similar to any of the Licensed Marks or any other
DreamWorks Marks, in the DWA Registered Territory or in any jurisdiction outside the DWA Registered Territory. Holding Company agrees that it will not register, and that it will cause all Sublicensees not to register, any domain name that includes any Licensed Marks or that consists of, colorably imitates, or is confusingly similar to any of the Licensed Marks or any other DreamWorks Marks, in the DWA Registered Territory or elsewhere in the world.
(c) Holding Company agrees that, except as specifically permitted hereunder, it will make no use, and will cause all Sublicensees to make no use, of any xxxx that consists of, colorably imitates, or is confusingly similar to, any of the Licensed Marks or any other DreamWorks
Marks.
(d) Holding Company agrees that it will not challenge, or assist any third party, including, without limitation, any Sublicensee, to challenge, the validity of the Licensed Marks or any other DreamWorks Marks or DWA’s ownership thereof or the enforceability of DWA’s
rights therein. Holding Company agrees that it will include in each Sublicense a provision that each Sublicensee will not challenge, or assist any third party to challenge, the validity of the Licensed Marks.
(e) Holding Company agrees that it will not, and will cause all Sublicensees not to, alter or modify any Licensed Marks, or combine any Licensed Marks with any other trademark in a manner that creates or may reasonably be deemed to create a composite xxxx.
(f) Without limitation of anything else in this Paragraph 6, Holding Company shall not, and shall cause its Sublicensees not to, use or display any Licensed Xxxx with any Xxxxxx Xxxx, including, without limitation, by using or displaying any Licensed Xxxx on or in any product,
advertising or marketing material, packaging or label, signage or display on or in which any Xxxxxx Xxxx also appears. Notwithstanding the preceding sentence, Holding Company may permit Disney (if Disney is a Sublicensee) to display (i) a Xxxx Disney distribution credit in a form substantially similar to one of the following: “Distributed by XXXX DISNEY STUDIOS MOTION PICTURES” or “Distributed by XXXX DISNEY MOTION PICTURES” or “Distributed by XXXX DISNEY STUDIOS”
(each a “Disney Distribution Credit”), only in conjunction with the Touchstone logo in a manner substantially similar to that shown on the attached Schedule E (including with respect to the relative proportions of the Disney Distribution Credit and the Touchstone logo), on or in (A) Video game and DVD packaging that displays Licensed Marks as otherwise permitted under this Sublicense Agreement, and (B) paid advertising for Licensee Live-Action Motion Pictures and Licensee Hybrid Motion Pictures marketed
or distributed under Licensed Marks as otherwise permitted under this Sublicense Agreement, including in-theater “standees” for such Licensee Live-Action Motion Pictures and Licensee Hybrid Motion Pictures; (ii) a Disney Distribution Credit in the end of the end crawl of Licensee Live-Action Motion Pictures in a manner consistent with the use of such distribution credit in Touchstone Live-Action Motion Pictures released prior to the Effective Date (such as Swing
Vote); (iii) Disney Marks and Licensed Marks (as otherwise permitted under this Sublicense Agreement) in presentation booklets and similar marketing materials used to offer both Disney Motion Pictures and Licensee Live-Action Motion Pictures and/or Licensee Hybrid Motion Pictures to buyers and potential buyers of such Motion Pictures; and (iv) Disney Marks and Licensed Marks (as otherwise permitted under this Sublicense Agreement) on convention or tradeshow booth/suite signage displayed at, and marketing
materials distributed at, conventions or tradeshows where Disney showcases both Disney Motion Pictures and Licensee Live-Action Motion Pictures and/or Licensee Hybrid Motion Pictures.
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(g) For avoidance of doubt, Paragraph 6(f) will not prevent Holding Company from selling Licensed Goods that bear Licensed Marks in retail stores owned and operated by the Xxxx Disney Company, or retail stores and online portals and catalogs operated under Disney Marks,
provided that such Licensed Goods (and any related advertising or marketing material, packaging and label, signage and display, and other material) do not bear, display or otherwise use any Xxxxxx Xxxx, except to the extent expressly permitted under Paragraph 6(f). In addition, Paragraph 6(f) will not prevent Holding Company from exhibiting, advertising, marketing or promoting Licensee Live-Action Motion Pictures and Licensee Hybrid Motion Pictures on ESPN, the Disney Channel, ABC or ABC Family as
otherwise permitted by this Sublicense Agreement.
7. Quality Control.
(a) Holding Company agrees to consult in good faith with XX XX prior to the use of the Licensed Marks in connection with any Licensed Goods and Licensed Services (and Holding Company acknowledges and agrees that XX XX will, in turn, consult with DWA with respect
to such use pursuant to the DWA License Agreement). Without limitation of the foregoing, Holding Company shall not use any Licensed Marks in connection with any Television Motion Pictures without DW II’s approval in advance in writing (which Holding Company acknowledges and agrees will be subject to DWA’s approval pursuant to the DWA License Agreement). For avoidance of doubt, if XX XX approves a television series (which Holding Company acknowledges and agrees will be subject to DWA’s
approval pursuant to the DWA License Agreement), such approval shall apply to all episodes in such series, provided that the foregoing shall not limit Holding Company’s quality control obligations with respect to all episodes in such series, nor shall it limit DW II’s rights to inspect and approve such quality as set forth in Paragraph 7(d).
(b) Holding Company agrees that it will use, and will cause all Sublicensees to use, the Licensed Marks only in connection with Licensed Goods and Licensed Services of such quality as will protect and enhance the goodwill, image and reputation adhering to the
Licensed Marks, and, without limiting the generality of the foregoing, of a quality at least equal to that of similar goods and services provided or sold by DWA and DWA’s other licensees. Licensed Goods and Licensed Services that are of a quality at least equal to that of similar goods and services provided or sold by DWA and DWA’s other licensees will be deemed to have met the foregoing quality requirement.
(c) Holding Company agrees to conform its uses, and to cause all Sublicensees to conform their uses, of the Licensed Marks under this Sublicense Agreement to the usage guidelines set forth in Schedule F attached hereto, which Schedule F may be amended by XX XX
from time to time through written notice to Holding Company in the manner set forth in Paragraph 11(a) below (and provided that Holding Company and its Sublicensees will be given a reasonable period of time in which to apply any such changes). Holding Company acknowledges and agrees that the usage guidelines will be as promulgated by DWA pursuant to the DWA License Agreement. In the event that Holding Company wishes to use or permit any Sublicensee to use the Licensed Marks in a manner that
deviates from the usage guidelines set forth in Schedule F attached hereto, Holding Company shall seek approval from XX XX in writing for such use (which Holding Company acknowledges and agrees will be subject to DWA’s approval pursuant to the DWA License Agreement).
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(d) XX XX shall have the right to inspect and approve (and to have DWA inspect and approve) the quality of all Licensed Goods and Licensed Services in connection with which Holding Company or any Sublicenses uses any Licensed Marks, and Holding Company shall not (and shall
ensure that its Sublicensees do not) use any Licensed Xxxx in connection with any Licensed Goods or Licensed Services that have been disapproved by XX XX or DWA. As requested by XX XX, Holding Company agrees to submit to XX XX for review and approval (including review and approval by DWA) a sample of any Licensed Goods in connection with which Holding Company or any Sublicenses is using or intends to use any Licensed Marks, and a sample of any materials and information regarding any Licensed Services
in connection with which Holding Company or any Sublicensee is using or intends to use any Licensed Marks. Holding Company understands that, pursuant to the terms of the DWA License Agreement, if DWA does not notify XX XX of its disapproval of a sample in writing within 10 business days of receipt of such sample by DWA, such sample shall be deemed approved, and that DWA has agreed in the DWA License Agreement to specify to XX XX in writing the reasons for its disapproval of any such sample in the applicable disapproval
notice. XX XX will inform Holding Company of the expiration of such 10 business day period and/or provide any such DWA disapproval notice to Holding Company, as applicable. For avoidance of doubt, the inspection and approval rights as set forth in this Paragraph 7(d) are only to ensure that the Licensed Goods and Licensed Services meet the quality standards set forth in this Sublicense Agreement, and do not give DWA creative control over Holding Company’s Motion Pictures. In
addition, Holding Company will not be required to submit Motion Pictures intended for initial Theatrical Exhibition for approval by DWA, [***].
(e) Holding Company shall ensure that once XX XX and DWA have approved any sample pursuant to Paragraph 7(d), the applicable Licensed Goods and Licensed Services will not thereafter materially deviate from the sample approved by XX XX and DWA.
(f) Holding Company shall, and shall cause each Sublicensee to, (a) conduct its business in accord with the highest business and ethical standards (provided that a Sublicensee shall be deemed to have satisfied this standard if it complies with standards at least equivalent
to those that DWA requires of its third party licensees), and in a manner that reflects positively on the Licensed Marks; (b) not derogate DWA’s rights in the Licensed Marks or the value of the Licensed Marks; (c) take no action that would interfere with, diminish or tarnish those rights or value; (d) not engage in any unfair, anticompetitive or unlawful business practices in connection with any use of the Licensed Marks or the manufacturing, sale, marketing and distribution of any Licensed Goods or the
performance of any Licensed Services under the Licensed Marks; (e) not use the Licensed Marks or conduct its business in any manner that infringes or misappropriates any third party’s trademark, copyright, patent, trade secret, privacy or publicity right, or other intellectual property or proprietary right, or that is defamatory or obscene; and (f) comply with all applicable local, state and federal laws, regulations, rules, and ordinances governing its business in connection with any use of the Licensed
Marks or the manufacturing, sale, marketing and distribution of any Licensed Goods or the performance of any Licensed Services under the Licensed Marks. Holding Company shall, and shall cause each Sublicensee to reasonably cooperate with and assist XX XX and DWA to monitor and ensure Holding Company’s and each Sublicensee’s compliance with this Paragraph 7(f).
NOTE: CERTAIN MATERIAL HAS BEEN REDACTED FROM THIS DOCUMENT AND FILED SEPARATELY WITH THE SEC PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT UNDER RULE 24b-2. THE LOCATIONS OF THESE REDACTIONS ARE INDICATED THROUGHOUT
THE DOCUMENT BY THE FOLLOWING MARKING: [***]
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8. Enforcement
(a) Holding Company agrees to advise XX XX promptly and in writing of any instances of possible infringement or dilution of, or unfair competition or cybersquatting regarding, the Licensed Marks in the DWA Registered Territory or elsewhere in the world that come to the attention
of Holding Company (collectively “Infringements”). Upon receipt of such notification or at any time, and subject to limitations on DW II’s rights with respect to enforcement of the Licensed Marks as set forth in the DWA License Agreement, XX XX may request that DWA take such action as DWA deems appropriate to protect the Licensed Marks. XX XX will consult in good faith with Holding Company regarding any such request to DWA if the Infringement is in the DWA Registered Territory
and within the scope of the DWA Registered Trademark Rights and relates to goods or services within the field of use of Holding Company’s license hereunder (provided that, as between XX XX and Holding Company (and subject to the DWA License Agreement), the final decision of whether or not to request that DWA take such action shall be in DW II’s sole discretion). As between XX XX and Holding Company, and subject to the allocation between XX XX and DWA as set forth in the DWA License Agreement,
where litigation or another proceeding by DWA involves an Infringement, the attorneys’ fees and other expenses of such litigation or other proceeding (collectively “Expenses”), and any sums obtained by way of judgment or settlement from such litigation or other proceeding (a “Recovery”), shall be allocated as follows: (i) if the Infringement involves only the Licensed Marks and only Licensed Goods or Licensed Services as to which Holding Company has an exclusive license of the Licensed
Marks, and Holding Company has agreed that such action should be taken, Holding Company shall reimburse XX XX for all documented Expenses and shall keep any Recovery (and XX XX agrees that any such reimbursed Expenses allocable to attorneys’ fees or other third party professional services shall be charged at hourly rates that do not deviate materially from the hourly rates that XX XX has agreed to reimburse to DWA under the DWA License Agreement); and (ii) if the Infringement involves any DreamWorks Marks
other than the Licensed Marks and/or any Licensed Goods or Licensed Services as to which Holding Company has a non-exclusive license of the Licensed Marks, or if Holding Company does not agree that such action should be taken, XX XX shall bear all Expenses and shall keep any Recovery. As between XX XX and Holding Company, and subject to the allocation between XX XX and DWA as set forth in the DWA License Agreement, where litigation by DWA against an Infringement also includes claims by Holding Company
and/or XX XX based upon Holding Company’s and/or DW II’s intellectual property rights or other rights unrelated to the Licensed Marks (e.g., Holding Company’s rights in a Motion Picture), each of XX XX and Holding Company shall bear its own Expenses and shall keep any Recovery that pertain to the claims asserted by it, unless XX XX and Holding Company elect to assert their respective claims through the same counsel, in which case they shall agree in good faith regarding the allocation of Expenses
and Recovery. Holding Company acknowledges and agrees that nothing in this Sublicense Agreement imposes any obligations on DWA with respect to any infringement or dilution of, or unfair competition or cybersquatting regarding, the Licensed Marks, and that the decision of whether or not to take any action with respect to any Infringements shall be in DWA’s sole discretion, and that DWA shall have the sole right (but no obligation) to take any such action and shall have the sole right to control
any litigation or other proceeding.
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(b) Holding Company agrees (and will cause it Sublicensees to agree) at DWA’s request to be and, as necessary, to remain, the sole party or a joint party with DWA, and otherwise to cooperate with and assist DWA, in any litigation or other proceeding involving a claim
based upon the Licensed Marks, including, without limitation, in the event that the substantive law of a particular jurisdiction requires Holding Company or any Sublicensee to be a party, whether because the status of the recordation of an assignment, this Subicense Agreement or any related documents in that jurisdiction as of the time of the commencement of such litigation or other proceeding does not permit DWA to proceed without Holding Company or such Sublicensee joining as a party, or for any other reason. As
between XX XX and Holding Company, and subject to the allocation between XX XX and DWA as set forth in the DWA License Agreement, the allocation of Expenses and Recovery in litigation or other proceeding, in which XX XX, Holding Company or any Sublicensee must be a joint party with DWA, or a sole party, shall also be governed by Paragraph 8(a) above to the extent applicable.
(c) Holding Company may request XX XX to request that DWA file applications to register the Licensed Marks for the Licensed Goods and Licensed Services in countries outside the DWA Registered Territory, to register the Licensed Marks in jurisdictions in the DWA Registered
Territory for goods and services in addition to the Licensed Goods and Licensed Services, and to register domain names containing the Licensed Marks. Holding Company acknowledges and agrees that whether to file such applications for trademark and service xxxx registration, and to register such domain names, shall be solely DWA’s decision pursuant to the DWA License Agreement. The attorneys’ fees and expenses in connection with the filing and prosecution of such applications that
DWA agrees to file, or the registration of such domain names that DWA agrees to register, shall be allocated between XX XX and DWA as set forth in the DWA License Agreement. Holding Company acknowledges and agrees that nothing in this Sublicense Agreement imposes any obligations on DWA with respect to prosecution or maintenance of any applications or registrations for Licensed Marks. Without limitation of Paragraph 6(a), Holding Company acknowledges and agrees that DWA will own all domain
names that incorporate any DreamWorks Marks, including the Licensed Domain Names. Holding Company may request that XX XX request DWA to use commercially reasonable efforts to cause the Licensed Domain Names to resolve to such websites as are directed by Holding Company, provided that the use of any DreamWorks Marks on such websites and any materials displayed on or otherwise made available through such websites complies with the terms of this Sublicense Agreement.
9. Representations and Warranties.
(a) XX XX represents and warrants to Holding Company that: (i) it has the right, power, and authority to enter into and fully perform its obligations under this Sublicense Agreement; and (ii) this Sublicense Agreement is a binding agreement as to XX XX that is enforceable
against XX XX according to its terms.
(b) Holding Company represents and warrants to XX XX that: (i) Holding Company will throughout the Term of this Sublicense Agreement maintain sufficient control over all Sublicensees to fulfill Holding Company’s obligations to cause all Sublicensees to comply with
the Sublicenses and otherwise take or refrain from taking the actions specified hereunder; (ii) Holding Company’s and its Sublicensees’ use of the Licensed Marks, and the conduct of its and their business under the Licensed Marks, shall be in accordance with all applicable laws, (iii) Holding Company has the right, power, and authority to enter into and fully perform its obligations under this Sublicense Agreement; and (iv) this Sublicense Agreement is a binding agreement as to Holding Company that
is enforceable against Holding Company according to its terms.
59
(c) The Licensed Marks are provided to Holding Company “as is” without any warranty express or implied, and XX XX hereby specifically disclaims (on behalf of itself and DWA) any warranties, express or implied, including, without limitation, the warranties of
merchantability, fitness for a particular purpose, title and non-infringement of third-party rights, and any warranties that may arise due to course of performance, course of dealing or usage of trade, related to the Licensed Marks or, except as expressly set forth in Paragraph 9(a) above, any other subject matter of this Sublicense Agreement. Holding Company acknowledges and agrees that DWA has no obligations to Holding Company under this Sublicense Agreement, and that DWA shall have no liability
to Holding Company or any Sublicensee arising from or relating to this Sublicense Agreement, the Licensed Marks or any other subject matter of this Sublicense Agreement.
(d) In no event shall XX XX be liable for any indirect, special or consequential damages, or damages for loss of profits, loss of goodwill or otherwise, arising from or relating to this Sublicense Agreement or the Licensed Marks, even if XX XX is expressly advised of the
possibility of such damages. DW II’s total liability arising from or relating to this Sublicense Agreement or the subject matter hereof shall not exceed two hundred fifty thousand dollars ($250,000). The foregoing limitation of liability and exclusion of certain damages shall apply regardless of the failure of essential purpose of any remedies available to either party.
10. Indemnification.
(a) XX XX agrees to indemnify, defend, and hold harmless Holding Company from and against any claim, demand, cause of action, or suit for trademark, service xxxx, or trade name infringement, or for dilution, cybersquatting, or unfair competition that is asserted against
Holding Company by a third party (other than DWA) solely to the extent based on Holding Company’s or any Sublicensee’s use of the Licensed Marks for Licensed Goods or Licensed Services in the DWA Registered Territory and within the scope of the DWA Registered Trademark Rights as expressly permitted under this Sublicense Agreement (each a “Trademark Claim”), subject to the limitation of liability in Paragraph 9(d). Holding Company agrees that upon receipt of notice of any Trademark Claim,
it will promptly tender such Trademark Claim in writing to XX XX in the manner set forth in Paragraph 11(a) below, and XX XX agrees that it will defend Holding Company against such Trademark Claim at DW II’s expense and through counsel of DW II’s choosing (subject to DWA’s rights to assume and control the defense and settlement of such claim under the DWA License Agreement). XX XX may defend or compromise any Trademark Claim (subject to DWA’s rights to assume and control the
defense and settlement of such claim under the DWA License Agreement) and agrees to pay any judgment or settlement on any Trademark Claim (in each case, subject to the limitation of liability set forth in Paragraph 9(d)), provided that XX XX will not agree to any settlement that affects Holding Company’s rights hereunder without good faith consultation with Holding Company. Holding Company agrees that it will cooperate fully with, and will cause all applicable Sublicensees to cooperate fully
with, XX XX and/or DWA and their respective counsel in DW II’s and/or DWA’s defense of any Trademark Claim. XX XX agrees to carry such insurance as may be reasonable to insure the fulfillment of DW II’s indemnity obligations with respect to Trademark Claims. In the event of any Trademark Claim, XX XX and/or DWA (if DWA chooses to assume and control defense of the applicable claim under the DWA License Agreement) may, in its discretion (i) procure for Holding Company the
right to continue using and/or sublicensing (as applicable with respect to the claim at issue) the Licensed Marks that are allegedly infringing, (ii) provide Holding Company with substitute marks that do not infringe any third party trademarks, or (iii) if neither (i) nor (i) is
60
feasible using commercially reasonable efforts, terminate Holding Company’s license with respect to the applicable Licensed Marks in the relevant jurisdiction and for the relevant Licensed Goods or Licensed Services, as XX XX and/or DWA deems necessary to avoid any further infringement or alleged infringement. Under
no circumstances shall XX XX or DWA be obligated to defend, indemnify or hold harmless Holding Company with respect to continued use of any Licensed Xxxx after XX XX or DWA has taken any of steps (i), (ii) or (iii) as described in the preceding sentence. Holding Company acknowledges and agrees that, pursuant to the DWA License Agreement and notwithstanding anything to the contrary in this Sublicense Agreement, in the event that XX XX seeks indemnification from DWA under the DWA License Agreement with
respect to any claim for which Holding Company has sought indemnification from XX XX under this Sublicense Agreement, DWA has the right (but not the obligation) to assume and control the defense and settlement of such claim through counsel of DWA’s choosing as follows: DWA has the right (but not the obligation) to control the defense and settlement of such claim until such time as DWA gives notice to XX XX that DWA’s aggregate costs of such defense (including, without limitation, attorneys’
fees), and any judgment or settlement amounts, equal or exceed the amount of DWA’s limitation of liability set forth in the DWA License Agreement and that DWA, therefore, has fulfilled its entire indemnification obligation to XX XX (such notice, a “Limitation Notice”). Upon DW II’s receipt of a Limitation Notice with respect to any claim, XX XX may assume control of the defense and settlement of such claim (and DWA shall have no further obligation to indemnify or defend XX XX
with respect to such claim); provided, however, that DWA shall retain the right (but not the obligation) to participate in the defense and settlement of the claim with counsel of its choice at its own expense, and to control any aspects of such defense and settlement that relate to, or that have the potential to impact, DWA or any DreamWorks Marks (or DWA’s rights therein or ownership thereof), including, without limitation, the scope, validity or enforceability of any DreamWorks Marks (collectively,
“DWA-Controlled Matters”), and XX XX is prohibited under the DWA License Agreement from filing any papers or otherwise taking any position in the defense of the claim or enter into any settlement with respect to any DWA-Controlled Matters without DWA’s prior written approval.
(b) Holding Company agrees to indemnify, defend, and hold harmless XX XX and DWA, and to obligate each Sublicensee to indemnify, defend, and hold harmless XX XX and DWA, from and against any claim, demand, cause of action, or suit that is asserted against XX XX or DWA by
a third party arising out of or relating to (i) any Licensed Goods or Licensed Services, including, without limitation, Holding Company’s or any Sublicensee’s manufacture, advertisement, promotion, marketing, offering for sale, sale, or distribution of any Licensed Goods, or Holding Company’s or any Sublicensee’s advertisement, promotion, marketing, offering for sale, sale, or rendition of any Licensed Services, unless such claim, demand, cause of action, or suit is a Trademark Claim,
(ii) any Sublicense, unless such claim, demand, cause of action, or suit is a Trademark Claim, or (iii) Holding Company’s or any Sublicensee’s use of any Licensed Xxxx outside the DWA Registered Territory or outside the scope of the DWA Registered Trademark Rights or any use other than as expressly permitted by this Sublicense Agreement or other breach of this Sublicense Agreement (each a “Licensee Claim”). Licensee Claims include, without limitation, all claims, demands, causes
of action, or suits for copyright infringement, libel, violation or infringement of the right of publicity, violation or invasion of the right of privacy, disparagement, theft of ideas, patent infringement, breach of contract, negligence, strict liability, and product liability arising out of or relating to Licensed Goods or Licensed Services, including, without limitation, Holding Company’s or any Sublicensee’s manufacture, advertisement, promotion, marketing, offering for sale, sale, or distribution
of Licensed Goods, and Holding Company’s or any Sublicensee’s advertisement, promotion, marketing, offering for sale, sale, or rendition of Licensed Services (except where such claims, demands, causes of action, or suits are based solely upon Holding Company’s or any Sublicensee’s use of the Licensed Marks as expressly permitted under this Sublicense Agreement in the DWA Registered Territory and within the scope of the DWA Registered Trademark Rights). XX XX agrees
that, upon receipt of any Licensee Claim for which it wishes to receive (or have DWA receive) indemnification
61
hereunder, it will promptly tender such claim in writing to Holding Company in the manner set forth in Paragraph 11(a) below, and Holding Company agrees that it will defend XX XX and/or DWA (as applicable) against such Licensee Claim at Holding Company’s expense and through counsel of Holding Company’s choosing,
provided that XX XX and/or DWA (as applicable) may participate in the defense using counsel of its choice at its own expense. Holding Company may defend or compromise any Licensee Claim and agrees to pay any judgment or settlement on any Licensee Claim, provided that Holding Company will not agree to any settlement that imposes any material obligations on DWA or affects any Licensed Marks or DWA’s rights therein without the approval of DWA, which approval shall not be unreasonably withheld. Holding
Company shall maintain in full force and effect at all times while this Sublicense Agreement is in effect and for three years thereafter, (1) commercial general liability insurance, including products and completed operations coverage, broad form property damage, contractual liability, bodily injury (including death), and personal and advertising injury liability, with minimum limits of $1,000,000 each occurrence and $2,000,000 in the aggregate, and including a waiver of subrogation in favor of DWA; (2) umbrella
excess liability insurance with minimum limits of $5,000,000 each occurrence and $5,000,000 in the aggregate; and (3) errors and omissions liability insurance with minimum limits of $10,000,000 each claim and $10,000,000 in the aggregate, covering all of Holding Company’s and its subsidiaries’ and affiliates’ business activities in the field of entertainment. The general liability and errors and omissions liability policies shall name as additional insureds DWA and its parents, subsidiaries,
affiliates, successors and assigns and the directors, officers, employees, agents and representatives of the foregoing. All coverage shall be primary and non-contributory, and must be underwritten by a carrier with a minimum Best’s Guide rating of A-, VII. Holding Company shall deliver to DWA a certificate of insurance evidencing satisfactory coverage and indicating that DWA shall receive thirty (30) days unrestricted prior written notice of cancellation, non-renewal or any material
change in coverage. Compliance herewith in no way limits Holding Company’s indemnity obligations hereunder.
11. Miscellaneous
(a) Any notices required or which may be given hereunder shall be in writing and shall be delivered personally, or sent by certified mail, return receipt requested, by facsimile (with confirmation of receipt), or by e-mail (with confirmation of receipt), to the addresses
set forth above, or such other addresses as may be designated by the parties from time to time in writing under this Sublicense Agreement. All notices sent to XX XX and Holding Company shall be sent to the attention of the General Counsel.
(b) The parties agree that any dispute to interpret or enforce, or otherwise arising out of or relating to, this Sublicense Agreement shall be determined by final and binding arbitration before JAMS according to the then most applicable JAMS Comprehensive Arbitration Rules
and Procedures (“JAMS”), provided always that: (a) the arbitration shall be conducted before a single neutral arbitrator with at least ten (10) years experience in the trademark licensing business, appointed by mutual agreement of the parties within five (5) business days from the date the notice of arbitration is delivered by the petitioning party; (b) the parties shall be entitled to discovery as provided in California Code of Civil Procedure sections 1283.05 and 1283.1; (c) in
deciding any such matter, the arbitrator shall follow the substantive law of the State of California or Federal Law as it would be applied by California courts; (d) the place of arbitration shall be Los Angeles, California, (e) nothing in this Paragraph 11(b) shall prevent either from, without waiving its right to arbitration, seeking preliminary or interlocutory relief from a court of competent jurisdiction; (f) all arbitration proceedings (including any discovery and other evidence in connection therewith)
shall be
62
closed to the public and shall remain confidential; and (g) arbitration awards hereunder may be entered and enforced as provided in California Code of Civil Procedure sections 1285 et seq. If the arbitrator is not selected by mutual consent within five (5) business
days from the date the notice of arbitration is delivered by the petitioning party, the rules of JAMS with respect to the selection of an arbitrator shall apply. Notwithstanding the foregoing, before proceedings are initiated hereunder, the Parties or their designated representatives shall meet and in good faith attempt to resolve the dispute. Notwithstanding the foregoing, any disputes submitted to binding arbitration pursuant to Paragraph 11(b), above, that affect the timely release of
a motion picture for initial theatrical exhibition shall commence within seven (7) business days from the date the notice is delivered by the petitioning party and the arbitrator shall rule not later than ten (10) business days after the date the notice is delivered. The hearing shall be conducted by the arbitrator for as many days as the arbitrator determines to allow; provided, that the hearing shall conclude, and the arbitrator shall rule, not
later than ten (10) business days after the date the notice is delivered.
(c) Neither party shall have any right to assign, sell, transfer, delegate or otherwise dispose of, whether voluntarily or involuntarily, by operation of law or otherwise, this Sublicense Agreement or any rights or obligations under this Sublicense Agreement, except in connection
with a permitted assignment of the DWA License Agreement by XX XX and provided that the assignee of this Sublicense Agreement is also the assignee of the DWA License Agreement. Except as provided herein, any purported assignment, transfer, or delegation by XX XX or Holding Company shall be null and void. Subject to the foregoing, this Sublicense Agreement shall be binding upon and shall inure to the benefit of the parties and their respective successors and permitted assigns. For
avoidance of doubt, nothing in this Paragraph 11(c) shall prevent Holding Company from granting Sublicenses as otherwise expressly permitted by this Sublicense Agreement.
(d) Notwithstanding anything in this Sublicense Agreement to the contrary, Holding Company hereby irrevocably waives any right to seek and/or obtain equitable and/or injunctive relief related to DWA’s or any of its affiliates’ production, distribution, license
and/or other exploitation of any Motion Picture and/or other production, content, material, goods or services. The foregoing shall not prevent Holding Company from requesting that XX XX exercise its rights under the DWA License Agreement to seek injunctive relief against any sublicensee of DWA to whom DWA has granted a license to use the Licensed Marks in connection with non-family oriented Live-Action Motion Pictures in violation of the exclusivity granted to XX XX in the DWA License Agreement.
(e) This Sublicense Agreement shall be governed by, and construed in accordance with, the laws of the State of California applicable to contracts made and to be performed therein and without regard to its conflicts of laws rules that would result in the application of the
laws of another jurisdiction.
(f) This Sublicense Agreement, together with the Schedules thereto, constitutes the entire agreement between XX XX and Holding Company with respect to its subject matter, and supersedes any prior agreement, understanding, representation, promise, or negotiations between
the parties, whether oral or written, express or implied.
(g) If any provision of this Sublicense Agreement is found to be unenforceable, the remainder shall be enforced as fully as possible and the unenforceable provision shall be deemed modified to the limited extent required to permit its enforcement in a manner most closely
approximating the intention of the parties as expressed herein.
63
(h) XX XX and Holding Company are not, and shall not be considered to be, joint venturers, partners, agents or employees of each other, and no party shall have the power to bind or obligate any other party except as specifically set forth in this Sublicense Agreement. Except
as expressly set forth herein or otherwise agreed to in writing by the parties, there shall be no liability on the part of one party hereto for any debts incurred by any other party.
(i) The subject headings of this Sublicense Agreement are included for purposes of convenience only, and shall not affect the construction or interpretation of any of its provisions.
(j) The waiver by any party of a breach of or a default under any provision of this Sublicense Agreement shall not be effective unless in writing and shall not be construed as a waiver of any subsequent breach of or default under the same or any other provision of
this Sublicense Agreement, nor shall any delay or omission on the part of any party to exercise or avail itself of any right or remedy that it has or may have hereunder operate as a waiver of any right or remedy.
(k) DWA shall be an express third party beneficiary of this Sublicense Agreement and shall have the right to enforce this Sublicense Agreement to the same extent as if DWA were a party to this Sublicense Agreement (including, without limitation, with respect to termination
of this Sublicense pursuant to Paragraph 3). Except as set forth in the preceding sentence, this Sublicense Agreement is made and entered into for the sole protection and benefit of the parties hereto and is not intended to convey any rights or benefits to any third party other than DWA, nor will this Sublicense Agreement be interpreted to convey any rights or benefits to any person or entity except the parties hereto and DWA.
[SIGNATURES ON NEXT PAGE]
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WHEREFORE, the parties have executed this Sublicense Agreement as of the Effective Date by the signature below of their duly-authorized representatives.
XX XX MANAGEMENT, INC. |
DREAMWORKS II HOLDING CO., LLC |
||||
By: | By: | ||||
Name: | Name: | ||||
Position: | Position: |
65
Schedule A to Sublicense Agreement
(Licensed Marks)
Trademark/Name |
App # |
Reg # |
Status |
Country Name |
Class |
DREAMWORKS SKG & DESIGN |
84633 |
35153 |
Registered |
African Union Territories (OAPI) |
09 Int. |
DREAMWORKS SKG & DESIGN |
84634 |
35154 |
Registered |
African Union Territories (OAPI) |
41 Int. |
DREAMWORKS SKG & DESIGN |
950051 |
48569 |
Registered |
Algeria |
09 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
2611 |
Registered |
Anguilla |
08 Int. | |
DREAMWORKS SKG & DESIGN |
3932 |
3932 |
Registered |
Antigua and Barbuda |
09 Int. |
DREAMWORKS SKG & DESIGN |
1957747 |
2152579 |
Registered |
Argentina |
09 Int. |
DREAMWORKS SKG & DESIGN |
1957748 |
2152582 |
Registered |
Argentina |
25 Int. |
DREAMWORKS SKG & DESIGN |
1957749 |
2152577 |
Registered |
Argentina |
28 Int. |
DREAMWORKS SKG & DESIGN |
1957750 |
2152575 |
Registered |
Argentina |
41 Int. |
DREAMWORKS SKG & DESIGN |
95020312 |
17415 |
Registered |
Aruba |
09 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
651016 |
651016 |
Registered |
Australia |
09 Int. |
DREAMWORKS SKG & DESIGN |
651017 |
651017 |
Registered |
Australia |
25 Int. |
DREAMWORKS SKG & DESIGN |
651018 |
651018 |
Registered |
Australia |
28 Int. |
DREAMWORKS SKG & DESIGN |
651019 |
651019 |
Registered |
Australia |
41 Int. |
DREAMWORKS SKG & DESIGN |
AM 390/95 |
162.163 |
Registered |
Austria |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
17530 |
17530 |
Registered |
Bahamas |
08 Int. |
DREAMWORKS SKG & DESIGN |
2341 |
81/9892 |
Registered |
Barbados |
09 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
81/9893 |
Registered |
Barbados |
09 Int. | |
DREAMWORKS SKG & DESIGN |
950060 |
8472 |
Registered |
Belarus |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
840519 |
573.939 |
Registered |
Benelux |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
26645 |
26645 |
Registered |
Bermuda |
09 Int. |
DREAMWORKS SKG & DESIGN |
26644 |
26644 |
Registered |
Bermuda |
41 Int. |
DREAMWORKS SKG & DESIGN |
150 |
70049-A |
Registered |
Bolivia |
09 Int. |
DREAMWORKS SKG & DESIGN |
149 |
70047-A |
Registered |
Bolivia |
41 Int. |
DREAMWORKS SKG & DESIGN |
5690 |
Pending |
Bouvet Island |
09 Int. | |
DREAMWORKS SKG & DESIGN |
818617217 |
818617217 |
Registered |
Brazil |
00 Int. |
DREAMWORKS SKG & DESIGN |
818.617.225 |
818617225 |
Registered |
Brazil |
00 Int. |
DREAMWORKS SKG & DESIGN |
818617233 |
818617233 |
Registered |
Brazil |
00 Int. |
DREAMWORKS SKG & DESIGN |
818617241 |
818617241 |
Registered |
Brazil |
00 Int. |
DREAMWORKS SKG & DESIGN |
818617250 |
818617250 |
Registered |
Brazil |
00 Int. |
66
DREAMWORKS SKG & DESIGN |
200003100 |
200003100 |
Registered |
Brazil |
09 Int. |
DREAMWORKS SKG & DESIGN |
29781 |
26826 |
Registered |
Bulgaria |
09 Int. |
DREAMWORKS SKG & DESIGN |
29782 |
4437 |
Registered |
Bulgaria |
41 Int. |
DREAMWORKS SKG & DESIGN |
5529 |
5527 |
Registered |
Cambodia |
09 Int. |
DREAMWORKS SKG & DESIGN |
5530 |
5528 |
Registered |
Cambodia |
41 Int. |
DREAMWORKS SKG & DESIGN |
787189 |
508558 |
Registered |
Canada |
09 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
787188 |
508556 |
Registered |
Canada |
00 Int. |
DREAMWORKS SKG & DESIGN |
299.866 |
456.074 |
Registered |
Chile |
41 Int. |
DREAMWORKS SKG & DESIGN |
299.864 |
788.653 |
Registered |
Chile |
09 Int., 25 Int., 28 Int. |
DREAMWORKS SKG & DESIGN |
95011131 |
934612 |
Registered |
China (Peoples Republic) |
09 Int. |
DREAMWORKS SKG & DESIGN |
95011130 |
921463 |
Registered |
China (Peoples Republic) |
25 Int. |
DREAMWORKS SKG & DESIGN |
95011129 |
925674 |
Registered |
China (Peoples Republic) |
28 Int. |
DREAMWORKS SKG & DESIGN |
95011128 |
935572 |
Registered |
China (Peoples Republic) |
41 Int. |
DREAMWORKS SKG & DESIGN |
95001428 |
175.812 |
Registered |
Colombia |
09 Int. |
DREAMWORKS SKG & DESIGN |
95001431 |
175.811 |
Registered |
Colombia |
25 Int. |
DREAMWORKS SKG & DESIGN |
95001430 |
175.81 |
Registered |
Colombia |
28 Int. |
DREAMWORKS SKG & DESIGN |
95001429 |
175.809 |
Registered |
Colombia |
41 Int. |
DREAMWORKS SKG & DESIGN |
93.116 |
94.02 |
Registered |
Costa Rica |
09 Int. |
DREAMWORKS SKG & DESIGN |
93.117 |
94.399 |
Registered |
Costa Rica |
25 Int. |
DREAMWORKS SKG & DESIGN |
93.112 |
94.393 |
Registered |
Costa Rica |
28 Int. |
DREAMWORKS SKG & DESIGN |
2007-14784 |
Pending |
Costa Rica |
41 Int. | |
DREAMWORKS SKG & DESIGN |
95-01/0121 |
Z950095 |
Registered |
Croatia |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
41910 |
41910 |
Registered |
Cyprus, Republic of |
09 Int. |
DREAMWORKS SKG & DESIGN |
41911 |
41911 |
Registered |
Cyprus, Republic of |
41 Int. |
DREAMWORKS SKG & DESIGN |
0-96272 |
191513 |
Registered |
Czech Republic |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
VA00.3271995 |
VR04.4161995 |
Registered |
Denmark |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
77387 |
Registered |
Xxxxxxxxx Xxxxxxxx |
00 Int. | |
DREAMWORKS SKG & DESIGN |
77722 |
Registered |
Xxxxxxxxx Xxxxxxxx |
00 Int. | |
DREAMWORKS SKG & DESIGN |
53886/95 |
2362/96 |
Registered |
Ecuador |
09 Int. |
DREAMWORKS SKG & DESIGN |
53866/95 |
107/96 |
Registered |
Ecuador |
41 Int. |
67
DREAMWORKS SKG & DESIGN |
173824 |
Pending |
Egypt |
09 Int. | |
DREAMWORKS SKG & DESIGN |
173825 |
Pending |
Egypt |
41 Int. | |
DREAMWORKS SKG & DESIGN |
904/95 |
Pending |
El Salvador |
09 Int. | |
DREAMWORKS SKG & DESIGN |
903/95 |
71/160143144 |
Registered |
El Salvador |
41 Int. |
DREAMWORKS SKG & DESIGN |
9500187 |
21516 |
Registered |
Estonia |
09 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
163931 |
163931 |
Registered |
European Community |
09 Int., 16 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
26624 |
26624 |
Registered |
Fiji |
08 Int. |
DREAMWORKS SKG & DESIGN |
477/95 |
201785 |
Registered |
Finland |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
95554571 |
95554571 |
Registered |
France |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
395 02 232 |
395 02 232 |
Registered |
Germany |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
7945 |
7945 |
Registered |
Gibraltar |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
122621 |
122621 |
Registered |
Greece |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
111213 |
Registered |
Guatemala |
09 Int. | |
DREAMWORKS SKG & DESIGN |
111182 |
Registered |
Guatemala |
41 Int. | |
DREAMWORKS SKG & DESIGN |
56/152 |
Registered |
Haiti |
09 Int. | |
DREAMWORKS SKG & DESIGN |
260/105 |
Registered |
Haiti |
41 Int. | |
DREAMWORKS SKG & DESIGN |
7828/95 |
65.528-B |
Registered |
Honduras |
09 Int. |
DREAMWORKS SKG & DESIGN |
7827/95 |
3616 |
Registered |
Honduras |
41 Int. |
DREAMWORKS SKG & DESIGN |
95 01007 |
7267/1998 |
Registered |
Hong Kong |
09 Int. |
DREAMWORKS SKG & DESIGN |
95 01006 |
7266/1998 |
Registered |
Hong Kong |
25 Int. |
DREAMWORKS SKG & DESIGN |
95 01005 |
7265/1998 |
Registered |
Hong Kong |
28 Int. |
DREAMWORKS SKG & DESIGN |
95 01004 |
7264/1998 |
Registered |
Hong Kong |
41 Int. |
DREAMWORKS SKG & DESIGN |
M9500176 |
144 785 |
Registered |
Hungary |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
652792 |
652792 |
Registered |
India |
09 Int. |
DREAMWORKS SKG & DESIGN |
652799 |
652799 |
Registered |
India |
25 Int. |
DREAMWORKS SKG & DESIGN |
652798 |
652798 |
Registered |
India |
28 Int. |
DREAMWORKS SKG & DESIGN |
D95-2063 |
355251 |
Registered |
Indonesia |
09 Int. |
DREAMWORKS SKG & DESIGN |
98700991 |
Pending |
Indonesia |
25 Int. | |
DREAMWORKS SKG & DESIGN |
98600990 |
Pending |
Indonesia |
28 Int. | |
DREAMWORKS SKG & DESIGN |
98500989 |
Pending |
Indonesia |
41 Int. |
68
DREAMWORKS SKG & DESIGN |
95/0418 |
166048 |
Registered |
Ireland |
09 Int. |
DREAMWORKS SKG & DESIGN |
95/421 |
201087 |
Registered |
Ireland |
41 Int. |
DREAMWORKS SKG & DESIGN |
96517 |
96517 |
Registered |
Israel |
25 Int. |
DREAMWORKS SKG & DESIGN |
96516 |
96516 |
Registered |
Israel |
09 Int. |
DREAMWORKS SKG & DESIGN |
96519 |
96519 |
Registered |
Israel |
41 Int. |
DREAMWORKS SKG & DESIGN |
96518 |
96518 |
Registered |
Israel |
28 Int. |
DREAMWORKS SKG & DESIGN |
MI95C 000615 |
723035 |
Registered |
Italy |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
-87412 |
29392 |
Registered |
Jamaica |
09 Int. |
DREAMWORKS SKG & DESIGN |
466598 |
Pending |
Japan |
09 Int. | |
DREAMWORKS SKG & DESIGN |
467328 |
0000000 |
Registered |
Japan |
28 Int. |
DREAMWORKS SKG & DESIGN |
467694 |
0000000 |
Registered |
Japan |
41 Int. |
DREAMWORKS SKG & DESIGN |
466963 |
0000000 |
Registered |
Japan |
25 Int. |
DREAMWORKS SKG & DESIGN |
42745 |
42745 |
Registered |
Kenya |
09 Int. |
DREAMWORKS SKG & DESIGN |
298 |
298 |
Registered |
Kenya |
41 Int. |
DREAMWORKS SKG & DESIGN |
95-648 |
32945 |
Registered |
Korea, Republic of |
111 Int. |
DREAMWORKS SKG & DESIGN |
00-0000 |
000000 |
Registered |
Korea, Republic of |
43 Int. |
DREAMWORKS SKG & DESIGN |
00-0000 |
000000 |
Registered |
Korea, Republic of |
45 Int. |
DREAMWORKS SKG & DESIGN |
00-0000 |
000000 |
Registered |
Korea, Republic of |
39 Int. |
DREAMWORKS SKG & DESIGN |
00-0000 |
000000 |
Registered |
Korea, Republic of |
34 Int. |
DREAMWORKS SKG & DESIGN |
33917 |
Registered |
Kuwait |
09 Int. | |
DREAMWORKS SKG & DESIGN |
33918 |
Registered |
Kuwait |
41 Int. | |
DREAMWORKS SKG & DESIGN |
M-95-137 |
M 39 870 |
Registered |
Latvia |
09 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
66349 |
66349 |
Registered |
Lebanon |
09 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
M/95/00211 |
LS/M/95/0021 |
Registered |
Lesotho |
09 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
9289 |
9289 |
Registered |
Liechtenstein |
09 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
95-0296 |
27618 |
Registered |
Lithuania |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
014474-M-P |
14 474M |
Registered |
Macao |
09 Int. |
DREAMWORKS SKG & DESIGN |
014475-M |
14 475M |
Registered |
Macao |
41 Int. |
DREAMWORKS SKG & DESIGN |
95/00492-D |
1258 |
Registered |
Madagascar |
09 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
97-20848 |
97020848 |
Registered |
Malaysia |
41 Int. |
69
DREAMWORKS SKG & DESIGN |
95-01093 |
95001093 |
Registered |
Malaysia |
09 Int. |
DREAMWORKS SKG & DESIGN |
95-01095 |
95001095 |
Registered |
Malaysia |
25 Int. |
DREAMWORKS SKG & DESIGN |
95-01094 |
95001094 |
Registered |
Malaysia |
28 Int. |
DREAMWORKS SKG & DESIGN |
23914 |
23914 |
Registered |
Malta |
09 Int. |
DREAMWORKS SKG & DESIGN |
A/37 No. 28 |
A/37 No. 28 |
Registered |
Mauritius |
|
DREAMWORKS SKG & DESIGN |
222443 |
508324 |
Registered |
Mexico |
25 Int. |
DREAMWORKS SKG & DESIGN |
222441 |
519465 |
Registered |
Mexico |
09 Int. |
DREAMWORKS SKG & DESIGN |
22240 |
494658 |
Registered |
Mexico |
28 Int. |
DREAMWORKS SKG & DESIGN |
222442 |
494843 |
Registered |
Mexico |
41 Int. |
DREAMWORKS SKG & DESIGN |
16077 |
16077 |
Registered |
Monaco |
09 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
1849 |
1849 |
Registered |
Montserrat |
08 Int. |
DREAMWORKS SKG & DESIGN |
55783 |
46,Bd. |
Registered |
Morocco |
09 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
D-200574 |
8880 |
Registered |
Netherlands Antilles |
09 Int. |
DREAMWORKS SKG & DESIGN |
245090 |
245090 |
Registered |
New Zealand |
09 Int. |
DREAMWORKS SKG & DESIGN |
245091 |
245091 |
Registered |
New Zealand |
25 Int. |
DREAMWORKS SKG & DESIGN |
245092 |
245092 |
Registered |
New Zealand |
28 Int. |
DREAMWORKS SKG & DESIGN |
245093 |
245093 |
Registered |
New Zealand |
41 Int. |
DREAMWORKS SKG & DESIGN |
95-00468 |
29,383 C.C. |
Registered |
Nicaragua |
09 Int. |
DREAMWORKS SKG & DESIGN |
95-00469 |
29,388 C.C. |
Registered |
Nicaragua |
41 Int. |
DREAMWORKS SKG & DESIGN |
T9525697 |
54640 |
Registered |
Nigeria |
09 Int. |
DREAMWORKS SKG & DESIGN |
95.0242 |
172.343 |
Registered |
Norway |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
128549 |
128549 |
Registered |
Pakistan |
09 Int. |
DREAMWORKS SKG & DESIGN |
78971 |
78971 |
Registered |
Panama |
09 Int. |
DREAMWORKS SKG & DESIGN |
78904 |
78904 |
Registered |
Panama |
25 Int. |
DREAMWORKS SKG & DESIGN |
78903 |
78903 |
Registered |
Panama |
28 Int. |
DREAMWORKS SKG & DESIGN |
78970 |
78970 |
Registered |
Panama |
41 Int. |
DREAMWORKS SKG & DESIGN |
58582 |
58582 |
Registered |
Papua New Guinea |
09 Int. |
DREAMWORKS SKG & DESIGN |
58583 |
58583 |
Registered |
Papua New Guinea |
41 Int. |
DREAMWORKS SKG & DESIGN |
735-95 |
292076 |
Registered |
Paraguay |
09 Int. |
DREAMWORKS SKG & DESIGN |
736-95 |
292077 |
Registered |
Paraguay |
41 Int. |
70
DREAMWORKS SKG & DESIGN |
260653 |
16028 |
Registered |
Xxxx |
00 Int. |
DREAMWORKS SKG & DESIGN |
260752 |
18010 |
Registered |
Xxxx |
00 Int. |
DREAMWORKS SKG & DESIGN |
260753 |
17975 |
Registered |
Xxxx |
00 Int. |
DREAMWORKS SKG & DESIGN |
260654 |
5103 |
Registered |
Xxxx |
00 Int. |
DREAMWORKS SKG & DESIGN |
100006 |
4.1995E+10 |
Registered |
Philippines |
09 Int. |
DREAMWORKS SKG & DESIGN |
100007 |
4.1995E+10 |
Registered |
Philippines |
25 Int. |
DREAMWORKS SKG & DESIGN |
100008 |
4.1995E+10 |
Registered |
Philippines |
28 Int. |
DREAMWORKS SKG & DESIGN |
100009 |
4.1995E+10 |
Registered |
Philippines |
41 Int. |
DREAMWORKS SKG & DESIGN |
Z-142942 |
96641 |
Registered |
Poland |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
306 702P |
306 702 |
Registered |
Portugal |
09 Int. |
DREAMWORKS SKG & DESIGN |
306 703R |
306 703 |
Registered |
Portugal |
25 Int. |
DREAMWORKS SKG & DESIGN |
306 704S |
306 704 |
Registered |
Portugal |
28 Int. |
DREAMWORKS SKG & DESIGN |
306 705T |
306 705 |
Registered |
Portugal |
41 Int. |
DREAMWORKS SKG & DESIGN |
35844 |
35844 |
Registered |
Puerto Rico |
09 Int. |
DREAMWORKS SKG & DESIGN |
35845 |
35845 |
Registered |
Puerto Rico |
41 Int. |
DREAMWORKS SKG & DESIGN |
65571 |
65571 |
Registered |
Puerto Rico |
25 Int. |
DREAMWORKS SKG & DESIGN |
65570 |
65570 |
Registered |
Puerto Rico |
28 Int. |
DREAMWORKS SKG & DESIGN |
34891 |
22759 |
Registered |
Romania |
09 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
95700782 |
145905 |
Registered |
Russian Federation |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
28084 |
357/84 |
Registered |
Saudi Arabia |
09 Int. |
DREAMWORKS SKG & DESIGN |
28085 |
357/85 |
Registered |
Saudi Arabia |
25 Int. |
DREAMWORKS SKG & DESIGN |
28361 |
357/86 |
Registered |
Saudi Arabia |
28 Int. |
DREAMWORKS SKG & DESIGN |
28362 |
357/87 |
Registered |
Saudi Arabia |
41 Int. |
DREAMWORKS SKG & DESIGN |
Z-95-0017 |
40896 |
Registered |
Serbia (Old Code) |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
74/95 |
4152 |
Registered |
Seychelles |
09 Int. |
DREAMWORKS SKG & DESIGN |
75/95 |
4153 |
Registered |
Seychelles |
41 Int. |
DREAMWORKS SKG & DESIGN |
14090 |
Pending |
Sierra Leone |
09 Int. | |
DREAMWORKS SKG & DESIGN |
505/95 |
T95/00505J |
Registered |
Singapore |
09 Int. |
DREAMWORKS SKG & DESIGN |
506/95 |
T95/00506I |
Registered |
Singapore |
25 Int. |
DREAMWORKS SKG & DESIGN |
507/95 |
T95/00507G |
Registered |
Singapore |
41 Int. |
71
DREAMWORKS SKG & DESIGN |
508/95 |
T9500508E |
Registered |
Singapore |
28 Int. |
DREAMWORKS SKG & DESIGN |
POZ-0159-95 |
181641 |
Registered |
Slovakia |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
Z-9570048 |
9570048 |
Registered |
Slovenia |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
95/0518 |
95/00518 |
Registered |
South Africa |
09 Int. |
DREAMWORKS SKG & DESIGN |
95/0519 |
95/00519 |
Registered |
South Africa |
25 Int. |
DREAMWORKS SKG & DESIGN |
95/0520 |
95/00520 |
Registered |
South Africa |
28 Int. |
DREAMWORKS SKG & DESIGN |
95/0521 |
95/00521 |
Registered |
South Africa |
41 Int. |
DREAMWORKS SKG & DESIGN |
1942817 |
1942817 |
Registered |
Spain |
09 Int. |
DREAMWORKS SKG & DESIGN |
1942818 |
1942818 |
Registered |
Spain |
25 Int. |
DREAMWORKS SKG & DESIGN |
1942819 |
1942819 |
Registered |
Spain |
28 Int. |
DREAMWORKS SKG & DESIGN |
1942820 |
1942820 |
Registered |
Spain |
41 Int. |
DREAMWORKS SKG & DESIGN |
73275 |
Pending |
Sri Lanka |
09 Int. | |
DREAMWORKS SKG & DESIGN |
73276 |
Pending |
Sri Lanka |
41 Int. | |
DREAMWORKS SKG & DESIGN |
1395 |
Registered |
St. Helena |
09 Int., 25 Int., 28 Int., 41 Int. | |
DREAMWORKS SKG & DESIGN |
4259 |
4259 |
Registered |
St. Kitts and Nevis |
08 Int. |
DREAMWORKS SKG & DESIGN |
S42 |
S42 |
Registered |
St. Kitts and Nevis |
00 Int. |
DREAMWORKS SKG & DESIGN |
18/1995 |
18/1995 |
Registered |
St. Lucia |
09 Int. |
DREAMWORKS SKG & DESIGN |
17/1995 |
17/1995 |
Registered |
St. Lucia |
41 Int. |
DREAMWORKS SKG & DESIGN |
363477 |
81/1999 |
Registered |
St. Xxxxxxx and the Grenadines |
09 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
24222 |
24222 |
Registered |
Sudan |
09 Int. |
DREAMWORKS SKG & DESIGN |
24223 |
24223 |
Registered |
Sudan |
41 Int. |
DREAMWORKS SKG & DESIGN |
14238 |
14238 |
Registered |
Suriname |
09 Int. |
DREAMWORKS SKG & DESIGN |
135/95 |
135/95 |
Registered |
Swaziland |
09 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
95-00555 |
320 792 |
Registered |
Sweden |
09 Int., 16 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
2292/96 |
436.04 |
Registered |
Switzerland |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
8401696 |
714209 |
Registered |
Taiwan |
09 Int. |
DREAMWORKS SKG & DESIGN |
8401798 |
717094 |
Registered |
Taiwan |
28 Int. |
DREAMWORKS SKG & DESIGN |
84001797 |
706225 |
Registered |
Taiwan |
25 Int. |
DREAMWORKS SKG & DESIGN |
84001799 |
81039 |
Registered |
Taiwan |
41 Int. |
DREAMWORKS SKG & DESIGN |
280971 |
Kor41435 |
Registered |
Thailand |
09 Int. |
72
DREAMWORKS SKG & DESIGN |
280972 |
Kor43914 |
Registered |
Thailand |
25 Int. |
DREAMWORKS SKG & DESIGN |
Kor41941 |
Registered |
Thailand |
28 Int. | |
DREAMWORKS SKG & DESIGN |
280974 |
Bor4102 |
registered |
Thailand |
41 Int. |
DREAMWORKS SKG & DESIGN |
23491 |
Registered |
Trinidad and Tobago |
09 Int. | |
DREAMWORKS SKG & DESIGN |
580/95 |
160767 |
Registered |
Turkey |
09 Int., 25 Int., 28 Int. |
DREAMWORKS SKG & DESIGN |
3943 |
3943 |
Registered |
Xxxxxxx Xxxxxxxx xx Xxxxxxxx Xxxxxx |
00 Int. |
DREAMWORKS SKG & DESIGN |
95010140/T |
13239 |
Registered |
Ukraine |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
14699 |
11308 |
Registered |
United Arab Emirates |
09 Int. |
DREAMWORKS SKG & DESIGN |
14700 |
11309 |
Registered |
United Arab Emirates |
41 Int. |
DREAMWORKS SKG & DESIGN |
2008007 |
2008007 |
Registered |
United Kingdom |
09 Int., 25 Int., 28 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
74/620379 |
2416011 |
Registered |
United States of America |
09 Int., 41 Int. |
DREAMWORKS SKG (WITH COLOR DESIGN) |
78/943459 |
3482486 |
Registered |
United States of America |
41 Int. |
DREAMWORKS SKG & DESIGN |
275.57 |
375.293 |
Registered |
Uruguay |
09 Int., 41 Int. |
DREAMWORKS SKG & DESIGN |
861-95 |
P-189105 |
Registered |
Venezuela |
09 Int. |
DREAMWORKS SKG & DESIGN |
862-95 |
P-189106 |
Registered |
Venezuela |
25 Int. |
DREAMWORKS SKG & DESIGN |
863-95 |
P-189107 |
Registered |
Venezuela |
28 Int. |
DREAMWORKS SKG & DESIGN |
864-95 |
S-004021 |
Registered |
Venezuela |
41 Int. |
DREAMWORKS SKG & DESIGN |
3093 |
3093 |
Registered |
Western Samoa |
09 Int. |
DREAMWORKS SKG & DESIGN |
117/95 |
117/95 |
Registered |
Zambia |
09 Int. |
DREAMWORKS SKG & DESIGN |
57/95 |
Registered |
Zimbabwe |
09 Int. | |
DREAMWORKS SKG & DESIGN |
58/95 |
58/95 |
Registered |
Zimbabwe |
41 Int. |
73
Schedule B to Sublicense Agreement
(Licensed Goods)
All of the following merchandising and promotional items distributed and/or sold in connection with the Licensed Services:
Metal keys chains and statuettes featuring as the primary element of ornamentation and/or design scenes and/or characters from Licensee Live-Action Motion Pictures and Licensee Hybrid Motion Pictures;
Knives, spoons, and forks, all featuring as the primary element of ornamentation and/or design scenes and/or characters from Licensee Live-Action Motion Pictures and Licensee Hybrid Motion Pictures;
Pre-recorded videotapes and DVDs containing Licensee Live-Action Motion Pictures and Licensee Hybrid Motion Pictures, pre-recorded compact discs and audio tapes containing sound tracks from Licensee Live-Action Motion Pictures and Licensee Hybrid Motion Pictures, pre-recorded audio tapes containing music from Licensee Live-Action
Motion Pictures and Licensee Hybrid Motion Pictures;
Interactive Video Games, computer game cartridges, computer game cassettes, computer game tapes, Video Game cartridges, Video Game cassettes, and multimedia software for playing games, all based exclusively on scenes and/or characters from Licensee Live-Action Motion Pictures and Licensee Hybrid Motion Pictures and all subject
to Paragraph 2(d) of the Sublicense Agreement;
Electronic equipment, glasses and sunglasses, all featuring as the primary element of ornamentation and/or design scenes and/or characters from Licensee Live-Action Motion Pictures and Licensee Hybrid Motion Pictures;
74
Bicycles, scooters, and automobiles, all featuring as the primary element of ornamentation and/or design scenes and/or characters from Licensee Live-Action Motion Pictures and Licensee Hybrid Motion Pictures;
Clocks and watches, and jewelry, all featuring as the primary element of ornamentation and/or design scenes and/or characters from Licensee Live-Action Motion Pictures and Licensee Hybrid Motion Pictures;
Books, comic books, coloring books, loose-leaf binders, spiral-bound notebooks, note pads, writing pads, calendars, scrapbook albums, photograph albums, sticker albums, stickers, pencils, pens, playing cards, postcards, trading cards, greeting cards, painting sets, posters, cells,
and two-dimensional prints, credit cards; binders; vinyl character stickers; character stamps; address books, coin albums; scrap book albums; appointment books; blank bank checks; book covers; book marks, stationery boxes, checkbook covers; decals, desk sets; diaries; paper napkins and tablecloths; gift wrapping paper; paper party decorations; scrap books; stationery portfolios; and bumper stickers, all featuring as the primary element of ornamentation and/or design scenes and/or characters from Licensee Live-Action
Motion Pictures and Licensee Hybrid Motion Pictures;
Tote bags and umbrellas, handbags, wallets, all-purpose athletic bags; attaché cases; back packs; beach bags; umbrellas; beach umbrellas; book bags; business card cases; calling card cases; credit card cases; document cases; key cases; overnight cases; passport cases; purses; duffle bags; fanny packs; handbags; knapsacks;
luggage; school bags; school book bags, all featuring as the primary element of ornamentation and/or design scenes and/or characters from Licensee Live-Action Motion Pictures and Licensee Hybrid Motion Pictures;
75
Novelty items, ornamental novelty buttons and non-ornamental novelty pins; toy boxes and toy chests; and sleeping bags, all featuring as the primary element of ornamentation and/or design scenes and/or characters from Licensee Live-Action Motion Pictures and Licensee Hybrid Motion
Pictures;
Plastic squeeze bottles, beverage glassware, mugs, plates, figures, and figurines, all featuring as the primary element of ornamentation and/or design scenes and/or characters from Licensee Live-Action Motion Pictures and Licensee Hybrid Motion Pictures;
Sacks and bags made of canvas, all featuring as the primary element of ornamentation and/or design scenes and/or characters from Licensee Live-Action Motion Pictures and Licensee Hybrid Motion Pictures;
Blankets, comforters, bed linens, bed sheets, bedspreads, curtains, towels, bed pillow covers, napkins, tablecloths, potholders; oven mitts; kitchen towels and window coverings, all featuring as the primary element of ornamentation and/or design scenes and/or characters from Licensee Live-Action Motion Pictures and Licensee
Hybrid Motion Pictures;
Clothing, footwear and headwear, all featuring as the primary element of ornamentation and/or design scenes and/or characters from Licensee Live-Action Motion Pictures and Licensee Hybrid Motion Pictures;
Sporting goods and toys, including action figures and accessories therefore, bathtub toys, kites, board games, handheld units for playing electronic games, dies cast miniature toy vehicles, dolls, doll accessories, doll clothing, bean bag dolls, bendable play figures, flying disks, inflatable vinyl play figures, jigsaw puzzles,
marbles, plush toys, puppets, ride-on toys, skateboards, snowboards, balloons, roller skates, toy banks, water-squirting toys, stuffed toys and toy animals, toy vehicles, pinball machines, and model craft kits of toy figures, rubber action balls, action-type target games, electronic and non-electronic dart games, costume masks, face masks, and wind-up toys; and Christmas tree ornaments, all featuring as the primary element of ornamentation and/or design scenes and/or characters from Licensee Live-Action Motion
Pictures and Licensee Hybrid Motion Pictures.
76
Schedule C to Sublicense Agreement
(Licensed Services)
The production, distribution and other exploitation of Licensee Live-Action Motion Pictures and Licensee Hybrid Motion Pictures, in all media now known or hereafter devised (including, without limitation, film, audio tapes, videotapes, CD-ROMs, DVDs and digital (e.g., Internet)
transmission), and other services directly related to and necessary for the production, distribution and other exploitation of Licensee Live-Action Motion Pictures and Licensee Hybrid Motion Pictures, but excluding Live Stage Performances and excluding any and all services related to the production, distribution or other exploitation of Animated Motion Pictures.
77
Schedule D to Sublicense Agreement
(Required Terms for Distribution Agreements and Consumer Products Sublicenses)
Each Distribution Agreement and Consumer Products Sublicense shall:
1. Grant only the licenses permitted to be granted as expressly set forth in the Sublicense Agreement, and shall include all applicable restrictions and limitations set forth in the Sublicense Agreement;
2. Not purport to make any representations or warranties on behalf of, or otherwise impose any obligations on, DWA or any of its affiliates or subsidiaries, and shall contain an express acknowledgment and agreement by the applicable Sublicensee that DWA has no
obligations to such Sublicensee under the Sublicense, and that DWA shall have no liability to such Sublicensee arising from or relating to the Sublicense, the Licensed Marks or any other subject matter of the Sublicense;
3. Prohibit sublicensing by the Sublicensee except as expressly permitted under the Sublicense Agreement;
4. Require the applicable Sublicensee to indemnify, defend and hold harmless DWA from and against any Licensee Claim (as defined in Paragraph 10(a) of the Sublicense Agreement);
5. Not contain any provision (such as a limitation of liability or damages cap) limiting or purporting to limit the indemnification to be provided to DWA as set forth in Paragraph 4 of this Schedule D;
6. Require the applicable Sublicense to maintain sufficient insurance to ensure the fulfillment of such Sublicensee’s indemnification obligations to DWA as set forth in Paragraph 4 of this Schedule D;
78
7. Require each Sublicensee to use the Licensed Marks only in connection with Licensed Goods and Licensed Services of such quality as will protect and enhance the goodwill, image and reputation adhering to the Licensed Marks, and, without limiting the generality
of the foregoing, of a quality at least equal to that of similar goods and services provided or sold by DWA and DWA’s other licensees;
8. Require each Sublicensee to provide samples for inspection and approval pursuant to Paragraph 7(d) of the Sublicense Agreement;
9. Require each Sublicensee to conform its uses of the Licensed Marks to the usage guidelines set forth in Schedule F, including as Schedule
F may be amended by DWA from time to time as set forth in the Sublicense Agreement.
10. Require each Sublicensee to acknowledge and agree that DWA has the sole right (but no obligation) to take action against infringement, misappropriation or other violation of the Licensed Marks.
11. Provide that the license to use the Licensed Marks under the applicable Sublicense will automatically terminate upon the termination or expiration of the License Agreement (other than with respect to Completed Films, to the extent applicable pursuant to Paragraph
3(b) of the Sublicense Agreement) without notice or further act by any party;
12. With respect to each Distribution Agreement (and without limitation of the other requirements of this Schedule D or anything else in the Sublicense Agreement), include the “holdback” provisions set forth in Paragraph 2(e) of the Sublicense Agreement;
13. With respect to the Disney Distribution Agreement and any related Consumer Products Sublicenses (and without limitation of the other requirements of this Schedule D or anything else in the License Agreement), include the restrictions regarding use of Licensed
Marks with Disney Marks as set forth in Paragraph 6(f) of the Sublicense Agreement;
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14. Be governed by the law of the State of California as applicable to contracts made and to be performed therein and without regard to its conflicts of laws rules that would result in the application of the laws of another jurisdiction, and designate Los Angeles,
California as the exclusive jurisdiction and venue for resolution of any and all disputes arising our of or relating to the Sublicense;
15. Require each Sublicensee to acknowledge and agree that (a) DWA owns all right, title and interest in and to the Licensed Marks throughout the world, (b) Sublicensee will acquire no ownership interest in or to the Licensed Marks under the Sublicense, (c) Sublicensee’s
interest in the Licensed Marks is limited solely to the license interest conferred by the license expressly granted under the Sublicense, (d) there are no implied licenses under the Sublicense, and (e) all use of the Licensed Marks shall inure to the benefit of DWA and all goodwill in the Licensed Marks is and shall be owned by DWA.
16. Prohibit each Sublicensee from (a) filing any applications to register any Licensed Marks, or any other xxxx that consists of, colorably imitates, or is confusingly similar to any of the Licensed Marks or any other DreamWorks Marks anywhere in the world,
(b) registering any domain name that includes any Licensed Marks or that consists of, colorably imitates, or is confusingly similar to any of the Licensed Marks or any other DreamWorks Marks anywhere in the world, (c) using, except as specifically permitted under the applicable Sublicense, any xxxx that consists of, colorably imitates, or is confusingly similar to, any of the Licensed Marks or any other DreamWorks Marks, (d) challenging, or assisting any third party to challenge, the validity of the
Licensed Marks or any other DreamWorks Marks or DWA’s ownership thereof or the enforceability of DWA’s rights therein, (e) altering or modifying any Licensed Marks, or combining any Licensed Marks with any other trademark in a manner that creates or may reasonably be deemed to create a composite xxxx;
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17. Require each Sublicensee to (a) conduct its business in accord with the highest business and ethical standards and in a manner that reflects positively on the Licensed Marks; (b) not derogate DWA’s rights in the Licensed Marks or the value of the Licensed
Marks; (c) take no action that would interfere with, diminish or tarnish those rights or value; (d) not engage in any unfair, anticompetitive or unlawful business practices in connection with any use of the Licensed Marks or the manufacturing, sale, marketing and distribution of any Licensed Goods or the performance of any Licensed Services under the Licensed Marks; (e) not use the Licensed Marks or conduct its business in any manner that infringes or misappropriates any third party’s trademark, copyright,
patent, trade secret, privacy or publicity right, or other intellectual property or proprietary right, or that is defamatory or obscene; and (f) comply with all applicable local, state and federal laws, regulations, rules, and ordinances governing its business in connection with any use of the Licensed Marks or the manufacturing, sale, marketing and distribution of any Licensed Goods or the performance of any Licensed Services under the Licensed Marks.
18. Require each Sublicensee to irrevocably waive any right to seek and/or obtain equitable and/or injunctive relief related to DWA’s or any of its affiliates’ production, distribution, license and/or other exploitation of any Motion Picture and/or
other production, content, material, goods or services;
19. With respect to any Sublicense in which any indemnification related to the Licensed Marks is provided to the applicable Sublicensee, require each Sublicensee to agree that DWA may, at its option, assume and control the defense of any claim for which such
indemnification is sought through counsel of DWA’s choosing, to the extent set forth in Paragraph 10(a) of the Sublicense Agreement.
20. Designate DWA as an express third party beneficiary with respect to the provisions of such Sublicense related to the Licensed Marks with the right to enforce such provisions to the same extent as if DWA were a party to such Sublicense; and
21. Otherwise contain all terms and conditions necessary to permit Xxxxxxxxx Entity to comply (and to cause each Sublicensee to comply) with all of the obligations set forth in the License Agreement, and contain no terms or conditions that are inconsistent with
the License Agreement.
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Schedule E to Sublicense Agreement
(Distribution Credit Exemplar)
![](https://www.sec.gov/Archives/edgar/data/1297401/000095015709000533/kevincostner.jpg)
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![](https://www.sec.gov/Archives/edgar/data/1297401/000095015709000533/swingvotethemovie.jpg)
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![](https://www.sec.gov/Archives/edgar/data/1297401/000095015709000533/swingvotethemovie_138.jpg)
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Schedule F to Sublicense Agreement
(Trademark Usage Guidelines)
DreamWorks SKG ®
Trademark and Logo Usage Guidelines
![](https://www.sec.gov/Archives/edgar/data/1297401/000095015709000533/dreamworks_139.jpg)
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DreamWorks Trademark Guidelines
The following Guidelines shall apply to Holding Company’s and its Sublicensees’ use of the Licensed Marks pursuant to the Sublicense Agreement:
1. Correct Use of the Xxxx. The proportions of the Licensed Marks must be maintained, even if the Licensed Marks are increased or decreased in size. The size of the Licensed Marks must never be so small that the letters and shape of the Logo or Xxxx are unrecognizable.
2. No Alteration of Licensed Marks. The Licensed Marks must appear legibly, without alteration and in their complete forms, as shown in these Guidelines, including with respect to style, positioning of letters, spelling, dimensions and relative size of the various elements of the Licensed
Marks. DWA may, from time to time, provide additional information regarding the proper form of the Licensed Marks, and these Guidelines shall be updated to reflect such additional information.
3. Trademark Marking Requirements. The ® symbol must be used with the Licensed Marks to indicate that they are registered trademarks of DWA. Although it is not necessary to use the ® symbol in every appearance of the Licensed Marks, the symbol must be used with each Licensed
Xxxx at least once in all such material (preferably with the first appearance of each Licensed Xxxx). In jurisdictions in which a Licensed Xxxx is not registered, the ™ must be used with such Licensed Xxxx instead of the ®.
4. No Disparaging Use. The Licensed Marks must not be used in a manner that disparages DWA or any parent, affiliate or subsidiary thereof.
5. Use of Licensed Marks in Conjunction with Other Marks. Subject to the terms of the License Agreement, when the Licensed Marks are permitted to be used in conjunction with or in close proximity to the logos, designs, trademarks, service marks, names or symbols of Holding Company, Sublicensees
or other affiliated or related individuals or entities, the Licensed Marks may only be used in such a manner that the overall appearance resulting from such use conveys the unequivocal impression that the Licensed Marks are associated with DWA and that the Licensed Marks are separate and distinct from any trademark of Holding Company, Sublicensees or other affiliated or related individuals or entities, as applicable.
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Legal Notice
![](https://www.sec.gov/Archives/edgar/data/1297401/000095015709000533/dreamworks_141.jpg)
The DreamWorks SKG Logo (boy sitting in the moon, together with the words “DreamWorks SKG”) is subject to trademark protection and is the property of DreamWorks Animation L.L.C. The DreamWorks legal notice consists, for the purposes of this manual, of the following notice:
“DreamWorks SKG” and the boy in the moon logo are registered trademarks of DreamWorks Animation L.L.C. Used under license.
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![](https://www.sec.gov/Archives/edgar/data/1297401/000095015709000533/dreamworks_142a.jpg)
The DreamWorks SKG Xxxx is subject to trademark protection and is the property of DreamWorks Animation L.L.C. The DreamWorks legal notice consists, for the purposes of this manual, of the following notice:
“DreamWorks SKG” is a registered trademark of DreamWorks Animation L.L.C. Used under license.
Logo with Boy in the Moon
![](https://www.sec.gov/Archives/edgar/data/1297401/000095015709000533/dreamworks_142b.jpg)
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![](https://www.sec.gov/Archives/edgar/data/1297401/000095015709000533/dreamworks_143a.jpg)
When the DreamWorks SKG Logo is used in its entirety, the trademark registration symbol is positioned at the end of the typography as shown. The DreamWorks SKG Logo must be accompanied by the DreamWorks legal notice, in a readable size, somewhere on the printed material:
“DreamWorks SKG” and the boy in the moon logo are registered trademarks of DreamWorks Animation L.L.C. Used under license.
Trademark
![](https://www.sec.gov/Archives/edgar/data/1297401/000095015709000533/dreamworks_143.jpg)
When the DreamWorks SKG Xxxx is used alone, the trademark registration symbol is positioned at the end of the typography, as shown. The DreamWorks SKG Xxxx must be accompanied by the DreamWorks legal notice, in a readable size, somewhere on the printed material:
“DreamWorks SKG” is a registered trademark of DreamWorks Animation L.L.C. Used under license.
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Placement of DreamWorks SKG Logo
![](https://www.sec.gov/Archives/edgar/data/1297401/000095015709000533/dreamworks_144.jpg)
Placement of Standard Logo Typography beneath the DreamWorks SKG Logo is as follows:
A. Vertical Position: The depth from the top of the artwork to the base of the “moon” is equal to the depth from the base of the “moon” to the baseline of DreamWorks. Typography overprints bottom fade of the artwork.
B. Horizontal Position: The left side of the DreamWorks SKG Logo is not to exceed the right side of the stem of the “D” in Dream, and the right side of the DreamWorks SKG Logo is not to exceed the far right bottom serif of the “K” in Works.
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Trademark Treatment
The DreamWorks SKG Xxxx and Logo shall have the trademark registration symbol ®, typeset in Helvetica. Use the ® placement as shown below:
![](https://www.sec.gov/Archives/edgar/data/1297401/000095015709000533/dreamworks_145.jpg)
In the event that the DreamWorks SKG Logo or Xxxx is used in a jurisdiction in which it is not registered, the ™ symbol should be used instead of the ®. In addition, the legal notice must read:
“DreamWorks SKG” and the boy in the moon logo are trademarks of DreamWorks Animation L.L.C. Used under license.
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“DreamWorks SKG” is a trademark of DreamWorks Animation L.L.C. Used under license.
SKG Type Treatment
The “SKG” portion of the Logo must be centered below the main DreamWorks SKG Logo and shall never be less than .038”. In all variations of the Logo less than 1.6” wide, the “SKG” portion shall retain its .038” height.
The “S” in SKG is not to exceed the left of the bottom right serif of the “M” in Dream, and the “G” in SKG is not to exceed the right of the far left stem of the “W” in Works.
Note: The DreamWorks SKG Logo can never be used without “SKG.”
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Films Logo Artwork & Typography
![](https://www.sec.gov/Archives/edgar/data/1297401/000095015709000533/dreamworks_147.jpg)
Proper proportions between the main “DreamWorks SKG” Logo and its “Films” variant are as follows:
1. “Films” must be in the same cap height as the small caps in “DreamWorks.”
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2. “Films” must be centered below the main “DreamWorks SKG” Logo.
3. The “F” in “Films” is not to exceed the middle of the “E” in Dream, and the right serif of “S” in “Films” is not to exceed the “O” in Works.
Pictures Logo Artwork & Typography
![](https://www.sec.gov/Archives/edgar/data/1297401/000095015709000533/dreamworks_148.jpg)
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Proper proportions between the main “DreamWorks SKG” Logo and its “Pictures” variant are as follows:
1. “Pictures” must be in the same cap height as the small caps in “DreamWorks.”
2. “Pictures” must be centered below the main “DreamWorks SKG” Logo.
3. The “P” in “Pictures” is not to exceed the middle of the “E” in Dream, and the right serif of “S” in “Pictures” is not to exceed the first line of the “K” in Works.
Studio Logo Artwork & Typography
![](https://www.sec.gov/Archives/edgar/data/1297401/000095015709000533/dreamworks_149.jpg)
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Proper proportions between the main “DreamWorks SKG” Logo and its “Studio” variant are as follows:
1. “Studio” must be in the same cap height as the small caps in “DreamWorks.”
2. “Studio” must be centered below the main “DreamWorks SKG” Logo.
3. The “S” in “Studio” is not to exceed the middle of the “E” in Dream, and the right serif of “O” in “Studio” is not to exceed the “O” in Works.
Studios Logo Artwork & Typography
![](https://www.sec.gov/Archives/edgar/data/1297401/000095015709000533/dreamworks_150.jpg)
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![](https://www.sec.gov/Archives/edgar/data/1297401/000095015709000533/dreamworks_151a.jpg)
Proper proportions between the main “DreamWorks SKG” Logo and its “Studios” variant are as follows:
1. “Studios” must be in the same cap height as the small caps in “DreamWorks.”
2. “Studios” must be centered below the main “DreamWorks SKG” Logo.
3. The first “S” in “Studios” is not to exceed the middle of the “E” in Dream, and the right serif of the last “S” in “Studios” is not to exceed the first line of the “R” in Works.
Television Artwork & Typography
![](https://www.sec.gov/Archives/edgar/data/1297401/000095015709000533/dreamworks_151.jpg)
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![](https://www.sec.gov/Archives/edgar/data/1297401/000095015709000533/dreamworks_152.jpg)
Proper proportions between the main “DreamWorks SKG” Logo and its “Television” variant are as follows:
1. “Television” must be in the same cap height as the small caps in “DreamWorks.”
2. “Television” must be centered below the main “DreamWorks SKG” Logo.
3. The “T” in “Television” is not to exceed the “R” in Dream, and the right serif of the “N” in “Television” is not to exceed the first line of the “K” in Works.
Color Palette
For color reproduction, match the palette below:
![](https://www.sec.gov/Archives/edgar/data/1297401/000095015709000533/fourcolorprocess.jpg)
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Standard Logo Typography
Font: Minion Black is the typography used for the DreamWorks SKG Logo and the DreamWorks SKG Xxxx. Permission to use other styles must be obtained from DreamWorks Animation L.L.C. This serif typeface was selected because of legibility, ease of reading, elegance and availability.
Minion Black
![](https://www.sec.gov/Archives/edgar/data/1297401/000095015709000533/abcs.jpg)
Note: Upper serifs on “T” cross bar should clip wherever possible.
Proportion: The “D” and “W” are to be 141% larger in cap height than the other letters’ cap heights. Remaining letters are horizontally scaled to 155%.
Color: PMS 287 is the preferred color for the DreamWorks SKG Logo and the DreamWorks SKG Xxxx for stationery and when used alone on all corporate materials. Black may be used when necessary or for internal correspondence. Color variations may be necessary for consumeroriented materials
and special projects. Permission to use other colors must be obtained from DreamWorks Animation L.L.C.
The DreamWorks SKG Xxxx and Logo must never be redrawn, re-proportioned or modified in any manner. Permission to use styles other than the following must be obtained from DreamWorks Animation L.L.C.
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Schedule G to Sublicense Agreement
(Certain Paramount Rights)
(Intentionally Omitted)
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101
102
103
104
105
Schedule H to Sublicense Agreement
(Preexisting DWA Arrangements)
1. McDonald’s Agreement
A. Holding Company agrees not to use (or license the use of) the Licensed Marks in connection with any promotion, advertisement or marketing campaign with a non-McDonald’s entity or individual in the Category (defined below) during the Promotional Period and for [***] prior to the Promotional Period and [***] after
the Promotional Period. The “Promotional Period” is the [***] period of McDonald’s promotion, which McDonald’s will schedule in proximity to the applicable DWA Films and DVD release dates in [***].
McDonald’s competitive category is any [***] (“the Category”).
For purposes of DWA’s agreement with McDonald’s, [***].
2. HP Agreement
Holding Company agrees not to use (or license the use of) the Licensed Marks in association with (including but not limited to in connection with any promotion, advertisement or marketing campaign) any non-HP entity or individual in the Core Business (defined below) product categories.
“Core Business” categories are: [***].
In compliance with DWA’s agreement with HP, [***].
note: certain material has been redacted from this document and filed separately with the sec pursuant to a request for confidential treatment
under rule 24b-2. the locations of these redactions are indicated throughout the document by the following marking: [***]
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3. Intel Agreement
Holding Company agrees not to use (or license the use of) the Licensed Marks in association with (including but not limited to in connection with any promotion, advertisement, or marketing campaign) any [***] that are not Intel based.
In compliance with DWA’s agreement with Intel, [***].
note: certain material has been redacted from this document and filed separately with the sec pursuant to a request for confidential treatment
under rule 24b-2. the locations of these redactions are indicated throughout the document by the following marking: [***]
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Schedule E
(Required Terms for Distribution Agreements and Consumer Products Sublicenses)
Each Distribution Agreement and Consumer Products Sublicense shall:
1. Grant only the licenses permitted to be granted as expressly set forth in the License Agreement, and shall include all applicable restrictions and limitations set forth in the License Agreement;
2. Not purport to make any representations or warranties on behalf of, or otherwise impose any obligations on, DWA or any of its affiliates or subsidiaries, and shall contain an express acknowledgment and agreement by the applicable Sublicensee that DWA has no obligations to such Sublicensee under the Sublicense, and that
DWA shall have no liability to such Sublicensee arising from or relating to the Sublicense, the Licensed Marks or any other subject matter of the Sublicense;
3. Prohibit sublicensing by the Sublicensee except as expressly permitted under the License Agreement;
4. Require the applicable Sublicensee to indemnify, defend and hold harmless DWA from and against any Licensee Claim (as defined in Paragraph 10(a) of the License Agreement);
5. Not contain any provision (such as a limitation of liability or damages cap) limiting or purporting to limit the indemnification to be provided to DWA as set forth in Paragraph 4 of this Schedule E;
6. Require the applicable Sublicense to maintain sufficient insurance to ensure the fulfillment of such Sublicensee’s indemnification obligations to DWA as set forth in Paragraph 4 of this Schedule E;
7. Require each Sublicensee to use the Licensed Marks only in connection with Licensed Goods and Licensed Services of such quality as will protect and enhance the goodwill, image and reputation adhering to the Licensed Marks, and, without limiting the generality of the foregoing, of a quality at least equal
to that of similar goods and services provided or sold by DWA and DWA’s other licensees;
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8. Require each Sublicensee to provide samples for inspection and approval pursuant to Paragraph 7(d) of the License Agreement;
9. Require each Sublicensee to conform its uses of the Licensed Marks to the usage guidelines set forth in Schedule G, including as Schedule G may be amended by DWA from time to
time as set forth in the License Agreement.
10. Require each Sublicensee to acknowledge and agree that DWA has the sole right (but no obligation) to take action against infringement, misappropriation or other violation of the Licensed Marks.
11. Provide that the license to use the Licensed Marks under the applicable Sublicense will automatically terminate upon the termination or expiration of the License Agreement (other than with respect to Completed Films, to the extent applicable pursuant to Paragraph 3(b) of the License Agreement) without
notice or further act by any party;
12. With respect to each Distribution Agreement (and without limitation of the other requirements of this Schedule E or anything else in the License Agreement), include the “holdback” provisions set forth in Paragraph 2(e) of the License Agreement;
13. With respect to the Disney Distribution Agreement and any related Consumer Products Sublicenses (and without limitation of the other requirements of this Schedule E or anything else in the License Agreement), include the restrictions regarding use of Licensed Marks with Disney Marks as set forth in Paragraph
6(f) of the License Agreement;
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14. Be governed by the law of the State of California as applicable to contracts made and to be performed therein and without regard to its conflicts of laws rules that would result in the application of the laws of another jurisdiction, and designate Los Angeles, California as the exclusive jurisdiction and
venue for resolution of any and all disputes arising our of or relating to the Sublicense;
15. Require each Sublicensee to acknowledge and agree that (a) DWA owns all right, title and interest in and to the Licensed Marks throughout the world, (b) Sublicensee will acquire no ownership interest in or to the Licensed Marks under the Sublicense, (c) Sublicensee’s interest in the Licensed Marks
is limited solely to the license interest conferred by the license expressly granted under the Sublicense, (d) there are no implied licenses under the Sublicense, and (e) all use of the Licensed Marks shall inure to the benefit of DWA and all goodwill in the Licensed Marks is and shall be owned by DWA.
16. Prohibit each Sublicensee from (a) filing any applications to register any Licensed Marks, or any other xxxx that consists of, colorably imitates, or is confusingly similar to any of the Licensed Marks or any other DreamWorks Marks anywhere in the world, (b) registering any domain name that includes any
Licensed Marks or that consists of, colorably imitates, or is confusingly similar to any of the Licensed Marks or any other DreamWorks Marks anywhere in the world, (c) using, except as specifically permitted under the applicable Sublicense, any xxxx that consists of, colorably imitates, or is confusingly similar to, any of the Licensed Marks or any other DreamWorks Marks, (d) challenging, or assisting any third party to challenge, the validity of the Licensed Marks or any other DreamWorks Marks or DWA’s
ownership thereof or the enforceability of DWA’s rights therein, (e) altering or modifying any Licensed Marks, or combining any Licensed Marks with any other trademark in a manner that creates or may reasonably be deemed to create a composite xxxx;
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17. Require each Sublicensee to (a) conduct its business in accord with the highest business and ethical standards and in a manner that reflects positively on the Licensed Marks; (b) not derogate DWA’s rights in the Licensed Marks or the value of the Licensed Marks; (c) take no action that would interfere
with, diminish or tarnish those rights or value; (d) not engage in any unfair, anticompetitive or unlawful business practices in connection with any use of the Licensed Marks or the manufacturing, sale, marketing and distribution of any Licensed Goods or the performance of any Licensed Services under the Licensed Marks; (e) not use the Licensed Marks or conduct its business in any manner that infringes or misappropriates any third party’s trademark, copyright, patent, trade secret, privacy or publicity
right, or other intellectual property or proprietary right, or that is defamatory or obscene; and (f) comply with all applicable local, state and federal laws, regulations, rules, and ordinances governing its business in connection with any use of the Licensed Marks or the manufacturing, sale, marketing and distribution of any Licensed Goods or the performance of any Licensed Services under the Licensed Marks.
18. Require each Sublicensee to irrevocably waive any right to seek and/or obtain equitable and/or injunctive relief related to DWA’s or any of its affiliates’ production, distribution, license and/or other exploitation of any Motion Picture and/or other production, content, material, goods or
services;
19. With respect to any Sublicense in which any indemnification related to the Licensed Marks is provided to the applicable Sublicensee, require each Sublicensee to agree that DWA may, at its option, assume and control the defense of any claim for which such indemnification is sought through counsel of DWA’s
choosing, to the extent set forth in Paragraph 10(a) of the License Agreement.
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20. Designate DWA as an express third party beneficiary with respect to the provisions of such Sublicense related to the Licensed Marks with the right to enforce such provisions to the same extent as if DWA were a party to such Sublicense; and
21. Otherwise contain all terms and conditions necessary to permit Xxxxxxxxx Entity to comply (and to cause each Sublicensee to comply) with all of the obligations set forth in the License Agreement, and contain no terms or conditions that are inconsistent with the License Agreement.
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Schedule F
(Distribution Credit Exemplar)
![](https://www.sec.gov/Archives/edgar/data/1297401/000095015709000533/kevincostner_168.jpg)
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![](https://www.sec.gov/Archives/edgar/data/1297401/000095015709000533/swingvotethemovie_169.jpg)
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![](https://www.sec.gov/Archives/edgar/data/1297401/000095015709000533/swingvotethemovie_170.jpg)
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Schedule G
(Trademark Usage Guidelines)
DreamWorks SKG ®
Trademark and Logo Usage Guidelines
![](https://www.sec.gov/Archives/edgar/data/1297401/000095015709000533/dreamworks_171.jpg)
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DreamWorks Trademark Guidelines
The following Guidelines shall apply to Xxxxxxxxx Entity’s and its Sublicensees’ use of the Licensed Marks pursuant to the License Agreement:
1. Correct Use of the Xxxx. The proportions of the Licensed Marks must be maintained, even if the Licensed Marks are increased or decreased in size. The size of the Licensed Marks must never be so small that the letters and shape of the Logo or Xxxx are unrecognizable.
2. No Alteration of Licensed Marks. The Licensed Marks must appear legibly, without alteration and in their complete forms, as shown in these Guidelines, including with respect to style, positioning of letters, spelling, dimensions and relative size of the various elements of the Licensed
Marks. DWA may, from time to time, provide additional information regarding the proper form of the Licensed Marks, and these Guidelines shall be updated to reflect such additional information.
3. Trademark Marking Requirements. The ® symbol must be used with the Licensed Marks to indicate that they are registered trademarks of DWA. Although it is not necessary to use the ® symbol in every appearance of the Licensed Marks, the symbol must be used with each Licensed
Xxxx at least once in all such material (preferably with the first appearance of each Licensed Xxxx). In jurisdictions in which a Licensed Xxxx is not registered, the ™ must be used with such Licensed Xxxx instead of the ®.
4. No Disparaging Use. The Licensed Marks must not be used in a manner that disparages DWA or any parent, affiliate or subsidiary thereof.
5. Use of Licensed Marks in Conjunction with Other Marks. Subject to the terms of the License Agreement, when the Licensed Marks are permitted to be used in conjunction with or in close proximity to the logos, designs, trademarks, service marks, names or symbols of Xxxxxxxxx Entity, Sublicensees
or other affiliated or related individuals or entities, the Licensed Marks may only be used in such a manner that the overall appearance resulting from such use conveys the unequivocal impression that the Licensed Marks are associated with DWA and that the Licensed Marks are separate and distinct from any trademark of Xxxxxxxxx Entity, Sublicensees or other affiliated or related individuals or entities, as applicable.
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Legal Notice
![](https://www.sec.gov/Archives/edgar/data/1297401/000095015709000533/dreamworks_173a.jpg)
The DreamWorks SKG Logo (boy sitting in the moon, together with the words “DreamWorks SKG”) is subject to trademark protection and is the property of DreamWorks Animation L.L.C. The DreamWorks legal notice consists, for the purposes of this manual, of the following notice:
“DreamWorks SKG” and the boy in the moon logo are registered trademarks of DreamWorks Animation L.L.C. Used under license.
![](https://www.sec.gov/Archives/edgar/data/1297401/000095015709000533/dreamworks_173b.jpg)
The DreamWorks SKG Xxxx is subject to trademark protection and is the property of DreamWorks Animation L.L.C. The DreamWorks legal notice consists, for the purposes of this manual, of the following notice:
“DreamWorks SKG” is a registered trademark of DreamWorks Animation L.L.C. Used under license.
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Logo with Boy in the Moon
![](https://www.sec.gov/Archives/edgar/data/1297401/000095015709000533/dreamworks_174.jpg)
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When the DreamWorks SKG Logo is used in its entirety, the trademark registration symbol is positioned at the end of the typography as shown. The DreamWorks SKG Logo must be accompanied by the DreamWorks legal notice, in a readable size, somewhere on the printed material:
“DreamWorks SKG” and the boy in the moon logo are registered trademarks of DreamWorks Animation L.L.C. Used under license.
Trademark
![](https://www.sec.gov/Archives/edgar/data/1297401/000095015709000533/dreamworks_175.jpg)
When the DreamWorks SKG Xxxx is used alone, the trademark registration symbol is positioned at the end of the typography, as shown. The DreamWorks SKG Xxxx must be accompanied by the DreamWorks legal notice, in a readable size, somewhere on the printed material:
“DreamWorks SKG” is a registered trademark of DreamWorks Animation L.L.C. Used under license.
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Placement of DreamWorks SKG Logo
![](https://www.sec.gov/Archives/edgar/data/1297401/000095015709000533/dreamworks_176.jpg)
Placement of Standard Logo Typography beneath the DreamWorks SKG Logo is as follows:
A. Vertical Position: The depth from the top of the artwork to the base of the “moon” is equal to the depth from the base of the “moon” to the baseline of DreamWorks. Typography overprints bottom fade of the artwork.
B. Horizontal Position: The left side of the DreamWorks SKG Logo is not to exceed the right side of the stem of the “D” in Dream, and the right side of the DreamWorks SKG Logo is not to exceed the far right bottom serif of the “K” in Works.
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Trademark Treatment
The DreamWorks SKG Xxxx and Logo shall have the trademark registration symbol ®, typeset in Helvetica. Use the ® placement as shown below:
![](https://www.sec.gov/Archives/edgar/data/1297401/000095015709000533/dreamworks_177.jpg)
In the event that the DreamWorks SKG Logo or Xxxx is used in a jurisdiction in which it is not registered, the ™ symbol should be used instead of the ®. In addition, the legal notice must read:
“DreamWorks SKG” and the boy in the moon logo are trademarks of DreamWorks Animation L.L.C. Used under license.
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“DreamWorks SKG” is a trademark of DreamWorks Animation L.L.C. Used under license.
SKG Type Treatment
The “SKG” portion of the Logo must be centered below the main DreamWorks SKG Logo and shall never be less than .038”. In all variations of the Logo less than 1.6” wide, the “SKG” portion shall retain its .038” height.
The “S” in SKG is not to exceed the left of the bottom right serif of the “M” in Dream, and the “G” in SKG is not to exceed the right of the far left stem of the “W” in Works.
Note: The DreamWorks SKG Logo can never be used without “SKG.”
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Films Logo Artwork & Typography
![](https://www.sec.gov/Archives/edgar/data/1297401/000095015709000533/dreamworks_179.jpg)
Proper proportions between the main “DreamWorks SKG” Logo and its “Films” variant are as follows:
1. “Films” must be in the same cap height as the small caps in “DreamWorks.”
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2. “Films” must be centered below the main “DreamWorks SKG” Logo.
3. The “F” in “Films” is not to exceed the middle of the “E” in Dream, and the right serif of “S” in “Films” is not to exceed the “O” in Works.
Pictures Logo Artwork & Typography
![](https://www.sec.gov/Archives/edgar/data/1297401/000095015709000533/dreamworks_180.jpg)
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Proper proportions between the main “DreamWorks SKG” Logo and its “Pictures” variant are as follows:
1. “Pictures” must be in the same cap height as the small caps in “DreamWorks.”
2. “Pictures” must be centered below the main “DreamWorks SKG” Logo.
3. The “P” in “Pictures” is not to exceed the middle of the “E” in Dream, and the right serif of “S” in “Pictures” is not to exceed the first line of the “K” in Works.
Studio Logo Artwork & Typography
![](https://www.sec.gov/Archives/edgar/data/1297401/000095015709000533/dreamworks_181.jpg)
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Proper proportions between the main “DreamWorks SKG” Logo and its “Studio” variant are as follows:
1. “Studio” must be in the same cap height as the small caps in “DreamWorks.”
2. “Studio” must be centered below the main “DreamWorks SKG” Logo.
3. The “S” in “Studio” is not to exceed the middle of the “E” in Dream, and the right serif of “O” in “Studio” is not to exceed the “O” in Works.
Studios Logo Artwork & Typography
![](https://www.sec.gov/Archives/edgar/data/1297401/000095015709000533/dreamworks_182.jpg)
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![](https://www.sec.gov/Archives/edgar/data/1297401/000095015709000533/dreamworks_183a.jpg)
Proper proportions between the main “DreamWorks SKG” Logo and its “Studios” variant are as follows:
1. “Studios” must be in the same cap height as the small caps in “DreamWorks.”
2. “Studios” must be centered below the main “DreamWorks SKG” Logo.
3. The first “S” in “Studios” is not to exceed the middle of the “E” in Dream, and the right serif of the last “S” in “Studios” is not to exceed the first line of the “R” in Works.
Television Artwork & Typography
![](https://www.sec.gov/Archives/edgar/data/1297401/000095015709000533/dreamworks_183b.jpg)
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![](https://www.sec.gov/Archives/edgar/data/1297401/000095015709000533/dreamworks_152.jpg)
Proper proportions between the main “DreamWorks SKG” Logo and its “Television” variant are as follows:
1. “Television” must be in the same cap height as the small caps in “DreamWorks.”
2. “Television” must be centered below the main “DreamWorks SKG” Logo.
3. The “T” in “Television” is not to exceed the “R” in Dream, and the right serif of the “N” in “Television” is not to exceed the first line of the “K” in Works.
Color Palette
For color reproduction, match the palette below:
![](https://www.sec.gov/Archives/edgar/data/1297401/000095015709000533/fourcolorprocess_185.jpg)
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Standard Logo Typography
Font: Minion Black is the typography used for the DreamWorks SKG Logo and the DreamWorks SKG Xxxx. Permission to use other styles must be obtained from DreamWorks Animation L.L.C. This serif typeface was selected because of legibility, ease of reading, elegance and availability.
Minion Black
![](https://www.sec.gov/Archives/edgar/data/1297401/000095015709000533/abcs_186.jpg)
Note: Upper serifs on “T” cross bar should clip wherever possible.
Proportion: The “D” and “W” are to be 141% larger in cap height than the other letters’ cap heights. Remaining letters are horizontally scaled to 155%.
Color: PMS 287 is the preferred color for the DreamWorks SKG Logo and the DreamWorks SKG Xxxx for stationery and when used alone on all corporate materials. Black may be used when necessary or for internal correspondence. Color variations may be necessary for consumeroriented materials
and special projects. Permission to use other colors must be obtained from DreamWorks Animation L.L.C.
The DreamWorks SKG Xxxx and Logo must never be redrawn, re-proportioned or modified in any manner. Permission to use styles other than the following must be obtained from DreamWorks Animation L.L.C.
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Schedule H
(Certain Paramount Rights)
(Intentionally Omitted)
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Schedule I
(Preexisting DWA Arrangements)
1. McDonald’s Agreement
X. Xxxxxxxxx Entity agrees not to use (or license the use of) the Licensed Marks in connection with any promotion, advertisement or marketing campaign with a non-McDonald’s entity or individual in the Category (defined below) during the Promotional Period and for [***] prior to the Promotional Period and [***] after the Promotional Period.
The “Promotional Period” is the [***] period of McDonald’s promotion, which McDonald’s will schedule in proximity to the applicable DWA Films and DVD release dates in [***].
McDonald’s competitive category is any [***] (“the Category”).
For purposes of DWA’s agreement with McDonald’s, [***].
2. HP Agreement
Xxxxxxxxx Entity agrees not to use (or license the use of) the Licensed Marks in association with (including but not limited to in connection with any promotion, advertisement or marketing campaign) any non-HP entity or individual in the Core Business (defined below) product categories.
“Core Business” categories are: [***].
In compliance with DWA’s agreement with HP, [***].
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3. Intel Agreement
Xxxxxxxxx Entity agrees not to use (or license the use of) the Licensed Marks in association with (including but not limited to in connection with any promotion, advertisement, or marketing campaign) any [***] that are not Intel based.
In compliance with DWA’s agreement with Intel, [***].
note: certain material has been redacted from this
document and filed separately with the sec pursuant to a request for confidential treatment under rule 24b-2. the locations of these redactions are indicated throughout the document by the following marking: [***]
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