1
EXHIBIT 10.11(c)
TRADEMARK LICENSE AGREEMENT
AGREEMENT dated as of this l4~~ day of October 1997, by and among Xxxxx
Licensing Ltd.
("Licensor") and Galoob Toys, Inc. and all "Permitted Licensee
Affiliates" (as defined in the
License Agreement) (collectively, "Licensee").
1. TRADEMARKS, PRODUCTS AND LICENSED TERRrrORY: Licensor is, as
between Licensor and Licensee, the owner of the trademarks indicated on
Schedule A-i attached hereto and made a part hereof ("Licensor
Trademarks"). Licensor desires that Licensee be permitted to use the
Licensor Trademarks on those goods indicated on Schedule A-2 attached
hereto and made a part hereof ("Licensed Products") in the country or
countries ("Licensed Territory") listed on Schedule A-3 listed on
Schedule A-2s attached hereto and made a part hereof pursuant to the
terms and conditions hereof. The parties acknowledge and agree that the
designations of the Licensed Products and Licensed Territory contained
in Schedules A-2 and A-3, respectively, are not intended to, and shall
not, supersede or alter in any manner the designations used with respect
to these matters in any commercial agreement between the parties related
to the subject matter hereof including but not limited to the Toy
License Agreement dated as of October 14, 1997 among the parties hereto
(the "License Agreement").
2. LICENSE: Licensor hereby grants to Licensee a license (as
provided in the License Agreement) to use the Licensor Trademarks on and
in connection with the Licensed Products and for the sole purpose to
affix the Licensor Trademarks to or on the Licensed Products and
packaging, containers, display materials, advertising and promotional
materials sold, used or distributed in connection with the Licensed
Products. Licensee hereby agrees to limit its use of the Licensor
Trademarks in accordance with the foregoing and according to processes,
specifications and other quality standards established or approved by
Licensor pursuant to the License Agreement for the Licensed Products
with respect to which the Licensor Trademarks are used. Without limiting
the generality of the foregoing, the quality of all such Licensed
Products shall be at least as high as that of similar goods presently
sold or distributed by Licensee, and shall be subject to such approval
procedures established by any commercial agreement between the parties
related to the subject matter hereof.
3. TERM: The Term of this Agreement shall be concurrent with the
"Term" of the License Agreement (as that term is defined therein), including any
so-called "sell-off period", to which Licensee is entitled, if at all.
4. UMnED GRANT: All rights in the Licensor Trademarks other than
those specifically granted herein are reserved to Licensor for its own
use and benefit. Licensee acknowledges that it shall not acquire any
rights of whatsoever nature in the Licensor Trademarks as a result of
Licensee's use thereof, and that all use of the Licensor Trademarks by
Licensee shall inure to the benefit of Licensor.
5. DISPLAY OF TRADEMARKS AND PROPRIETARY N~CES: Pursuant to the
terms and conditions of the License Agreement: (a) Licensee agrees that
the Licensor Trademarks shall be displayed only in such form and manner as
shall be specifically approved by Licensor; (1)) Licensee shall cause to
appear on all material on or in connection with which the
Licensor Trademarks are used, such legends, markings and notices as
Licensor may require; (c) Licensee agrees that it shall use no markings,
legends or notices relating to the Licensor Trademarks on the Licensed
Products and packaging and advertising therefor other than as approved
in advance in writing by Licensor; (d) Licensor reserves the right to
make such changes in the specified notices as Licensor reasonably deems
necessary or desirable to protect Licensor's interests in the Licensed
Trademarks, provided however that such changes shall not be required to
be made on Licensed Products and packaging or advertising therefor which
have already been manufactured or printed in accordance with Licensor's
previous instructions or approval. The foregoing shall not limit
Licensor's ability to reasonably require so-called "running changes" or
to otherwise to enforce the provisions of this Agreement or any other
agreement between the parties.
The words "Registered User" andlor the Symbol TM or r shall be used on
all Licensed Products, packaging and advertising manufactured or printed
after Licensor notifies Licensee in writing that such words and symbol
are legally permitted in the specific country or countries in the
Licensed Territory within which the Licensed Products will be
distributed.
6. COMPLIANCE WITH QUALITY STANDARDS: if the quality standards set
forth herein are not met, or if said quality standards are not
maintained throughout the period of manufacture of any Licensed Products
hereunder, then, upon written notice from Licensor, Licensee shall
immediately discontinue the manufacture and distribution of such
Licensed Products that do not meet said quality standards. The foregoing
shall not limit Licensor's rights or remedies for failure to maintain
such quality standards as provided elsewhere herein or in any other
agreement between the parties hereto.
7. PRODUCTION SAMPLES: In accordance with the terms and conditions of
the License Agreement, Licensee agrees to submit to Licensor and to any
other recipient(s) which Licensor may from time to time designate in
writing, on a regular basis, representative samples of the Licensed
Products and of any or all materials bearing the Trademarks in order
Licensor may be assured that the provisions of this Agreement are being
observed. Said samples should be submitted to Licensor at the address
specified by Licensor.
8. GOODWILL OF THE TRADEMARK: Licensee recognizes the great value of
the goodwill associated with the Licensor Trademarks and acknowledges
that the Licensor Trademarks and all rights therein and goodwill
pertaining thereto belong exclusively to Licensor.
9. SIMILAR TRADEMARKS: Licensee shall give Licensor prompt written
notice of any adverse use in the Licensed Territory of a trademark or
other designation similar to the Licensor Trademarks of which Licensee
is or becomes aware. Licensee further agrees that it shall not at any
time apply for any registration of any copyright, trademark or other
designation, nor file any document with any governmental authority, nor
take any other action which would affect the ownership of the Licensor
Trademarks.
10. TERMINATION: Upon the expiration or earlier termination of this
Agreement, all rights to use the Licensor Trademarks or any other
symbols of goodwill owned by Licensor relative to the Licensed Products,
together with the appurtenant goodwill thereof shall revert
automatically to Licensor, and Licensee shall immediately discontinue all
use of the Licensor Trademarks except as may herein be provided.
11. ASSIGNMENT UPON TERMINATION: Upon written request by
Licensor, or in any event upon the termination of this
Agreement for whatever reason, Licensee shall execute and
deliver to Licensor a document, in form and substance
reasonably satisfactory to Licensor, assigning to Licensor
all of Licensee's right, title and interest, if any, in and
to the Licensor Trademarks. In the event Licensee fails to
execute and deliver said document, Licensor shall have the
right to execute same as Licensee's attorney-in-fact, and
Licensee does hereby irrevocably appoint (such appointment
being irrevocable and coupled with an interest) Licensor its
true and lawful attorney-in-fact only for the purpose of
executing such document.
12. RECORDATION OF AGREEMENT, REGISTERED USER: Licensor, at
its discretion, shall have the right to record this Agreement
at the appropriate Registry or governmental authority in the
Licensed Territory at Licensor's expense, and Licensee agrees
to cooperate as requested by Licensor in arranging such
recordation, or in varying or canceling such recordation in
the event of amendments to, or termination of, this
Agreement. Licensee hereby appoints Licensor as its agent for
the purpose of lodging, prosecuting and completing registered
user entries at the appropriate registry in the Territory and
at Licensor's expense, such appointment being irrevocable and
coupled with an interest.
13. GENERAL: The terms and conditions of this Agreement are
subject to the terms and conditions of the License Agreement
and in the event of a conflict between the terms or
conditions herein contained and those of the License
Agreement, the latter shall prevail. Approvals hereunder
shall be made subject to the terms of the License Agreement.
This Agreement does not constitute either party the agent of
the other or create a partnership or joint venture between
the parties except as provided herein, and Licensee shall
have no power to obligate or bind Licensor in any manner
whatsoever. This Agreement shall be governed by the laws of
the State of California applicable to agreements made and
fully performed in California.
Galoob Toys, Inc., on behalf of itself and all Xxxxx
Licensing Ltd. ("Licensor")
Permi d Licensee Mfiliates ("Licensee")
______________________________________________ A
IN witness WHEREOF, this Agreement is executed as of the day and year first
above written.
Name:
Title:
Title: President and
CEO
Schedule A-i to TRADEMARK LICENSE AGREEMENT LICENSOR TRADEMARKS
The Licensor Trademarks include such original trademarks, tradenames,
servicemarks and servicenames owned by
Licensor and arising out of and which have become direcfly associated
with the "Pictures" or the "Spin-Off
Properties" (as such terms are defined in the License Agreement), to the
extent of Licensor's rights in each
applicable country of the Territory under such country's applicable
trademark laws, including, but not limited to:
Artoo-Detoo (~-D2)
Ben (Obi-Wan) Kenobi
Chewbacca
Darth Vader
The Emperor
Ewok
Han Solo
Jabba the Xxxx
Xxxxx Cairissian
Lord Darth Vader
Luke Skywalker
Princess Leia Organa
Return of the Jedi
Return of the Jedi Logo
See-Threepio (C-3P0)
Star Wars
Star Wars Logo
The Empire Strikes Back
The Empire Strikes Back Logo
The Force
Yoda
Schedule A-2 to TRADEMARK LICENSE AGREEMENT
LICENSED PRODUCTS
The term "Licensed Products" as used in the License
Agreement, means MICRO TOYS (as hereinafter defined).
The term "MICRO TOYS," as used in the License Agreement,
means "Intermediate Vehicles," "Micro Vehicles," "Micro Playsets," and
"Micro Figures" (as such terms are defined hereinbelow) made of
injection-molded plastic (or materials that are comparable in cost or
physical characteristics to plastics and/or all other materials that are
approved in advance by Licensor) with or without electrical or
electronic parts (excluding radio control).
1. Intermediate Vehicles: The term "Intermediate
Vehicles," as used in the Agreement, means pre-assembled,
decorated toy vehicles, the size of which vehicles is over three
inches (3") but not more than six inches (6") in maximum
dimension.
2. Micro Vehicles: The term "Micro Vehicles," as
used in the Agreement, means pre-assembled, decorated toy
vehicles, the size of which vehicles is under three inches (3") in
maximum dimension.
3. Micro Figures: The term "Micro Agreement, means
articulated or non-articulated, decorated figures is less than two
inches (2") in height and designed to Vehicles and/or Intermediate
Vehicles; and
Figures," as used in the figures, the size of which fit and be used with
Micro
4. Micro Playsets: The term "Micro Playsets," as
used in the Agreement, means decorated toy playsets (and their
accessories) in a scale and designed to fit and be used with Micro
Figures and/or Micro Vehicles.
Schedule A-3 to TRADEMARK LICENSE AGREEMENT
LICENSED TERRITORY
The territory of Licensee's rights pursuant to the Trademark
License Agreement to which this Schedule A-3 is attached (the
"Territory") consists of the following applicable countries:
United States Bulgaria Uruguay
Canada Romania Chile
UK/Eire Albania Peru
Germany Latvia Venezuela
Austria Estonia Colombia
Switzerland Lithuania Ecuador
France Poland Caribbean
Belgium Russia Guatemala
Netherlands (and other former Costa Rica
Luxembourg Soviet Union Panama
Italy countries) Nicaragua
Spain Japan El Salvador
Portugal Australia Honduras
Sweden New Zealand Beliz
Denmark Hong Kong Israel
Iceland Taiwan Lebanon
Finland Korea Saudi Arabia
Norway Singapore Egypt
Turkey Malaysia United Arab Ernirates
Greece Indonesia Djibouti
Slovenia Thailand South Africa
Bosnia Philippines Zimbabwe
Herzegovina (and Mexico
other former Brazil
Yugoslavia Argentina
countries) Paraguay
Czech Republic
Slovak Republic
