Exhibit 10.7
LICENSE AGREEMENT
This License Agreement (the "License Agreement") is made effective this
27th day of October, 2004 (the "Effective Date"), by and between DreamWorks
Animation LLC, a Delaware limited liability company with offices at 0000 Xxxxxx
Xxxxxx, Xxxxxxxx, Xxxxxxxxxx 00000 ("DWA"), on the one hand, and DreamWorks
L.L.C., a Delaware limited liability company with offices at 0000 Xxxxxx Xxxxxx,
Xxxxxxxx, Xxxxxxxxxx 00000 ("DreamWorks Studios"), on the other hand, and is
made with reference to the following facts.
RECITALS
A. DreamWorks Studios has been engaged in the business of producing and
distributing various entertainment properties, including live action and
animated motion pictures, television programs, music, and other
entertainment-related goods and services, under and in connection with the xxxx
and name "DREAMWORKS" and various marks and names containing "DREAMWORKS"
(collectively the "DreamWorks Marks").
B. By virtue of that certain Separation Agreement by and among DreamWorks
Studios, DWA and DreamWorks Animation SKG, Inc. ("DWA SKG"). Dated as of October
27, 2004 (the "Separation Agreement"), DWA is the successor to all of the assets
of DreamWorks Studios' animated motion picture business, and by virtue of that
certain "Assignment of Trademarks and Service Marks" between DreamWorks Studios
and DWA dated as of October 27, 2004 (the "Assignment"), DWA is the successor to
all of DreamWorks Studios' 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.
C. Pursuant to the Separation Agreement, DreamWorks Studios desires to use
the DreamWorks Marks in connection with the production and distribution of
certain non-animated motion pictures and related goods and services, and,
pursuant to a separate license in that certain Distribution Agreement between
DWA SKG and DreamWorks Studios dated as of October __ , 2004 (the "Distribution
Agreement"), the distribution of certain motion pictures on behalf of DWA, and
in certain other manners described more fully herein. DWA is willing to grant to
DreamWorks Studios a license to use the DreamWorks Marks on the terms and
conditions set forth herein, and DreamWorks Studios is willing to accept such a
license.
NOW, THEREFORE, in consideration of the foregoing recitals and the mutual
covenants and promises set forth below, and for other good and valuable
consideration, DWA and DreamWorks Studios hereby agree as follows:
TERMS AND CONDITIONS
1. DEFINITIONS.
The following terms shall have the following meanings in this License
Agreement:
(a) "Licensed Marks" means the DreamWorks Marks listed and depicted in
Schedule A attached hereto, and incorporated by reference herein as if set forth
in full, as Schedule A may be amended from time to time in the manner set forth
in paragraphs 2(c) and 8(d) below.
(b) "Licensed Goods" means those goods set forth on Schedule B attached
hereto, and incorporated by reference herein as if set forth in full, as
Schedule B may be amended from time to time in the manner set forth in paragraph
2(c) and 8(d below.
(c) "Licensed Services" means those services set forth in Schedule C
attached hereto, and incorporated by reference therein as if set forth in full,
as Schedule C may be amended from time to time in the manner set forth in
paragraph 2(c) and 8(d) below.
2
(d) "Territories" means those jurisdictions set forth on Schedule A
attached hereto, and incorporated by reference herein as if set forth in full,
in which DWA owns registrations of, or applications to register, one or more of
the Licensed Marks as of the Effective Date of this License Agreement, as
Schedule A may be amended from time to time in the manner set forth in
paragraphs 2(c) and 8(d) below.
(e) "Term" means the initial period commencing on the Effective Date of
this License Agreement and continuing for a period of 20 years, and all
subsequent renewals of such periods as provided in paragraph 3 below, unless
sooner terminated as provided in paragraph 3 below.
(f) "Live Action Motion Picture" shall have the meaning given to that term
in the Separation Agreement.
(g) "Hybrid Motion Picture" shall have the meaning given to that term in
the Distribution Agreement with the further limitation in this License Agreement
to Hybrid Motion Pictures produced or acquired by or for DreamWorks Studios or
any affiliate of DreamWorks Studios.
(h) "Live Stage Performances" shall mean the exercise of Legitimate Stage
Rights, which are defined in the Distribution Agreement.
(i) "DTV Product" shall have the meaning given to the term
"Direct-to-Video (DTV) Productions" in the Distribution Agreement.
2. GRANT OF RIGHTS; AMENDMENT; ETC.
(a) DWA hereby grants to DreamWorks Studios, and DreamWorks Studios hereby
accepts, a royalty-free right and license to use the Licensed Marks, on the
terms and conditions set forth herein, during the Term: (i) on and in connection
with Licensed Goods and Licensed
3
Services; provided, however, that in connection with use of the Licensed Marks
on or in connection with the Licensed Goods identified in Schedule B as
pre-recorded compact discs and audio tapes containing sound tracks from Live
Action Motion Pictures and Hybrid Motion Pictures, and pre-recorded audio tapes
containing music from Live Action Motion Pictures and Hybrid Motion Pictures,
DreamWorks Studios shall only use the Licensed Marks in connection with the
words "Pictures," "Films," or other words that are suggestive of motion pictures
or audiovisual works and provided further that DreamWorks Studios shall never
use the Licensed Marks containing "Animation" and "PDI" as trademarks or trade
names except in connection with the distribution of motion pictures pursuant to
the separate license in the Distribution Agreement; (ii) as part of DreamWorks
Studios' corporate names and trade names, including, without limitation, use of
the trade names on stationery, business documents, and business cards; (iii) in
one or more domain names, including the domain name xxxxxxxxxx.xxx, used in
connection with Licensed Goods and Licensed Services; and (iv) in the other
manners set forth herein. The right and license granted to DreamWorks Studios
hereunder shall be exclusive as to the use of the Licensed Marks on or in
connection with (i) the Licensed Goods featuring scenes and/or characters from
Live Action Motion Pictures, live action television programs, and live action
DTV Products and (ii) the Licensed Services relating to Live Action Motion
Pictures, live action television programs, and live action DTV Products. The
right and license granted to DreamWorks Studios hereunder shall be non-exclusive
as to all other Licensed Goods and Licensed Services.
(b) DreamWorks Studios shall have the right during the Term to sub-license
to third parties ("Sub-Licensees"), through written sub-licenses
("Sub-Licenses"), the Licensed Marks on and in connection with all Licensed
Goods and Licensed Services. DreamWorks Studios agrees
4
that each Sub-Licensee shall be a reputable company capable of performing the
Licensed Services and/or of producing the Licensed Goods bearing the Licensed
Marks under its Sub-License of the same general level of quality as under
license agreements between DreamWorks Studios and third parties prior to the
Effective Date of this Agreement. If a Sub-Licensee will be manufacturing goods
or rendering services that fall within the natural zone of expansion of the
Licensed Goods and Licensed Services, then DreamWorks Studios will provide DWA
with the name and address of the Sub-Licensee and the subject matter of the
Sub-License. DreamWorks Studios agrees that it shall incorporate provisions into
each Sub-License providing that in the event of the termination of this License
Agreement by DWA in the manner set forth in paragraph 3 below, each Sub-License
will immediately terminate.
(c) This License Agreement shall be automatically amended to add countries
(with respect to the Licensed Goods and the Licensed Services only) other than
the Territories, in the event that DWA obtains additional rights in the Licensed
Marks through new registrations in countries other than the Territories, or
through other manners provided under the law of a particular Territory.
DreamWorks Studios may request in writing DWA's agreement to amend the Licensed
Goods in Schedule B to goods other than those in the natural zone of expansion,
and such agreement will not be unreasonably withheld. Upon any amendment,
DreamWorks Studios may cause all pertinent Sub-Licenses to be amended to reflect
any additions to Schedules A and/or B.
(d) Subject to the terms and conditions hereof and in consideration for
the Assignment, DWA will grant and assign to DreamWorks Studios a security
interest to be executed concurrently herewith in and to the Licensed Marks and
registrations thereof, but only to the extent necessary to secure DWA's
obligations under this License Agreement of permitting
5
DreamWorks Studios to use such Licensed Marks in accordance with the terms
hereof. The security interest granted by DWA hereunder will be subject to the
approval of DWA SKG's lead revolver lender. DWA will execute and file or record,
as appropriate, any other security agreements with the relevant trademark
registration authorities and UCC financing statements, and such other documents
as are reasonably necessary to evidence, perfect, and preserve the security
interest granted to DreamWorks Studios hereunder, and DreamWorks Studios will
have all rights and remedies of a secured party pursuant to applicable law. The
granting of the security interest hereunder by DWA does not violate the rights
of any third party under any agreement with DWA, judgment, statute or otherwise,
and does not require the prior consent of any third party, except DWA's lead
revolver lender. DWA will endeavor in good faith to obtain the requisite
consent. The grant of the security interest by DWA hereunder with respect to any
Licensed Xxxx shall be effective upon the commencement of the Term.
3. EXTENSION OF TERM; TERMINATION, ETC.
(a) The initial Term of this License Agreement shall be automatically
extended for successive 20-year Terms following the completion of the initial
20-year Term unless DWA and DreamWorks Studios agree in writing, within six
months prior to the expiration of any such 20-year Term, to terminate this
License Agreement in its entirety, or unless DWA terminates this License
Agreement in its entirety in the manner set forth in sub-paragraph 3(b)
below.
(b) This License Agreement may be terminated in its entirety by DWA (i)
upon a material breach by DreamWorks Studios that remains uncured for a period
of 90 days after DWA provides written notice to DreamWorks Studios of such
claimed material breach in the manner set forth in paragraph 11(a) below, and
the material breach is either admitted in a writing signed by the admitting
party or determined in an arbitration proceeding in the manner set forth in
paragraph 11(b) below, or (ii) in the event that both Xxxxxx Xxxxxxxxx and Xxxxx
Xxxxxx cease
6
to be employees or otherwise render services to DreamWorks Studios as employees
or consultants and neither Xxxxxx Xxxxxxxxx nor Xxxxx Xxxxxx has the authority
to veto the production or acquisition of any motion picture, and DWA provides
written notice of termination to DreamWorks Studios within sixty (60) days of
the occurrence of such event. In the event of termination of this License
Agreement in its entirety by DWA under this sub-paragraph DreamWorks Studios
agrees that it will use commercially reasonable efforts to cause all
Sub-Licenses to terminate immediately pursuant to their terms, that it will
cease all further use of the Licensed Marks except as expressly permitted
hereunder, and that it will 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 terminates because
DreamWorks Studios sells, transfers, or assigns all or substantially all of its
assets to a third party, DWA agrees that DreamWorks Studios'
successor(s)-in-interest may use the Licensed Marks in connection with motion
pictures that were produced, acquired and/or distributed by DreamWorks Studios
or to which DreamWorks Studios has an agreement to acquire or co-produce prior
to such sale, transfer, or assignment ("Completed Films"), in the manners set
forth in sub-paragraph 3(c)(i)-(v) below.
(c) Nothing contained herein shall prohibit DreamWorks Studios, following
termination of this License Agreement for any reason under this paragraph 3 and
subject to DreamWorks Studios' obligations following termination under
sub-paragraph 3(b) above, from doing any of the following: (i) distributing or
exhibiting any Completed Film; (ii) releasing or re-releasing any Completed
Film; (iii) editing any Completed Film for television exhibition, DVD
7
exhibition, or exhibition in any other media, now know or hereafter derived, 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 in the event a claim or the threat
of a claim that distribution without such change might infringe the rights of
any third party, and then releasing, distributing, and exhibiting such Completed
Film; (iv) advertising and promoting any Completed Film by using the Licensed
Marks to reference the fact that such Completed Film was produced and/or
distributed by DreamWorks Studios; and (v) continuing to distribute, advertise
and promote any merchandising, soundtrack or publication, or exploit any other
ancillary rights based upon any such Completed Film and distributing,
advertising and promoting any merchandising, soundtrack or publication, or any
other ancillary rights based upon any such Completed Film pursuant to license
agreements entered into prior to such termination and approved as provided
hereunder, or (vi) using and authorizing the use of phrases such as "Based on
the Film ________ Produced [or presented] by DreamWorks Studios" for attribution
purposes in connection with distribution, advertising and promotion of any
merchandising, soundtrack or publication, or exploit any other ancillary rights
based upon any such Completed Film.
4. ATTRIBUTION NOTICE.
DreamWorks Studios agrees that in connection with any use of the Licensed
Marks under this License Agreement, it will use, and will cause all
Sub-Licensees to use, such notices regarding DWA's ownership of the Licensed
Marks, and their use under this License Agreement or any Sub-License, as DWA may
reasonably require. DreamWorks Studios agrees that it will include in any
Sub-License a requirement that all Sub-Licensees will use such notices as may be
reasonably required by DWA.
8
5. FURTHER ASSURANCES, ETC.
(a) DWA shall take such steps as are necessary under the laws of the
various jurisdictions in the Territories, as the Territories may be amended from
time to time in the manner set forth in paragraphs 2(c) and 8(d), to perfect,
confirm, acknowledge, or record this License Agreement, at DWA's sole expense,
for the benefit of DreamWorks Studios and to enable DWA to enforce the Licensed
Marks to the maximum extent possible under paragraph 8 below.
(b) DreamWorks Studios agrees to execute such documents and to take such
steps, at DreamWorks Studios' sole expense, including 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
Territory, to enforce the Licensed Marks as provided in paragraph 8 below, or
otherwise to effectuate the purposes of this License Agreement.
6. ACKNOWLEDGEMENT OF DWA'S OWNERSHIP OF LICENSED MARKS, ETC.
(a) DreamWorks Studios acknowledges and agrees that DWA owns the Licensed
Marks, that DreamWorks Studios will acquire no ownership interest in or to the
Licensed Marks under this License Agreement, and that DreamWorks Studios'
interest in the Licensed Marks is limited solely to the license interest
conferred by the license grant under this License Agreement. DreamWorks Studios
further acknowledges and agrees that all uses of the Licensed Marks by it under
this License Agreement and by all Sub-Licensees under all Sub-Licenses inure and
shall inure to the benefit of DWA and that the goodwill in the Licensed Marks is
owned by DWA.
(b) DreamWorks Studios agrees that it will not file, and that it will
cause all Sub-Licensees not to file, any applications to register the Licensed
Marks, or any other xxxx that
9
consists of, colorably imitates, or is confusingly similar to any of the
Licensed Marks, in the Territories or elsewhere in the world.
(c) DreamWorks Studios agrees that, except as specifically permitted
hereunder, it will make no use, and will cause all Sub-Licensees to make no use,
of any other xxxx that consists of, colorably imitates, or is confusingly
similar to, any of the Licensed Marks.
(d) DreamWorks Studios agrees that during the Term of this License
Agreement, and thereafter, it will not challenge, or assist any third party,
including any Sub-Licensee, to challenge, the validity of the Licensed Marks.
DreamWorks Studios agrees that it will include in each Sub-License a provision
that each Sub-Licensee will not challenge, or assist any third party to
challenge, the validity of the Licensed Marks.
7. QUALITY CONTROL.
(a) DreamWorks Studios agrees that it will use, and will cause all
Sub-Licensees to use, the Licensed Marks in connection with Licensed Goods and
Licensed Services of a quality at least equal to that of Licensed Goods and
Licensed Services provided by or under license from DreamWorks Studios prior to
the Separation Agreement.
(b) DreamWorks Studios agrees to use the Licensed Marks under this License
Agreement substantially in the manner set forth in Schedule D attached hereto
and incorporated by reference herein as if set forth in full, as Schedule D may
be amended by DWA from time to time through written notice to DreamWorks Studios
in the manner set forth in paragraph 11(a) below. In the event that DreamWorks
Studios wishes to use the Licensed Marks in a manner that deviates materially
from the manner set forth in Schedule D attached hereto, it shall seek approval
from DWA in writing for such use, which approval shall not be unreasonably
withheld, conditioned or delayed by DWA.
10
(c) DWA shall have the right to approve the quality of all Licensed Goods
manufactured and sold by DreamWorks Studios or under all Sub-Licenses.
DreamWorks Studios agrees to conform its uses, and to use reasonable commercial
efforts to cause all Sub-Licensees to conform their uses, of the Licensed Marks
on Licensed Goods to the manner set forth in Schedule D attached hereto.
DreamWorks Studios agrees to submit to DWA for review and approval, as may be
requested by DWA from time to time, a representative sample of Licensed Goods
manufactured by DreamWorks Studios or under all Sub-Licenses, 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.
(d) DreamWorks Studios agrees that upon approval of any samples pursuant
to this paragraph 7(c), it will not materially deviate from, and will cause all
Sub-Licensees not to materially deviate from, the quality of Licensed Goods
approved by DWA.
8. ENFORCEMENT; EXPANSION OF RIGHTS; ETC.
(a) DreamWorks Studios 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 Territories or elsewhere in
the world (collectively "Infringements") that come to the attention of
DreamWorks Studios. Upon receipt of such notification, DWA may take such action
as it deems appropriate, after consultation in good faith with DreamWorks
Studios, to protect the Licensed Marks, including criminal, civil, or
administrative litigation, through counsel reasonably acceptable to DreamWorks
Studios. Where litigation by DWA against an Infringement involves only claims
regarding the Licensed Marks, the attorneys' fees and other expenses of such
litigation (collectively "Expenses"), and any sums
11
obtained by way of judgment or settlement from such litigation (a "Recovery"),
shall be allocated as follows: (i) if the Infringement involves Licensed Goods
and/or Licensed Services as to which DreamWorks Studios has an exclusive license
of the Licensed Marks and DreamWorks Studios agrees that such action should be
taken, DreamWorks Studios shall reimburse DWA for all documented Expenses and
shall keep any Recovery; and (ii) if the Infringement involves Licensed Goods
and/or Licensed Services as to which DreamWorks Studios has a non-exclusive
license of the Licensed Marks, or if DreamWorks Studios does not does not agree
to take such action with respect to the exclusively licensed Licensed Goods
and/or Licensed Services, DWA shall bear all Expenses and shall keep any
Recovery. Where litigation by DWA against an Infringement also includes claims
by DWA (or by both DWA and DreamWorks Studios through separate counsel) based
upon intellectual property rights or other rights in addition to the Licensed
Marks, DWA, or DWA and DreamWorks Studios both, as the case may be, shall bear
the Expenses and shall keep any Recovery that pertain to the claims asserted by
that party, unless DWA and DreamWorks Studios 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.
(b) DreamWorks Studios agrees to be and, as necessary, to remain, the sole
party or a joint party with DWA, in any litigation involving a claim based upon
the Licensed Marks in the event that the substantive law of a particular
Territory requires DreamWorks Studios to be a party because of the status of the
recordation of the Assignment or any related documents in that Territory as of
the time of the commencement of such litigation does not permit DWA to be the
sole party or a party, or for any other reason. The allocation of Expenses and
Recovery in litigation in which DreamWorks Studios must be a joint party with
DWA, or a sole party, shall also be governed by sub-paragraphs 8(a)(i) and (ii)
above.
12
(c) DWA and DreamWorks Studios agree that in connection with any
litigation by DWA to which sub-paragraph 8(a)(i) above applies, DWA shall
prosecute and compromise the litigation only after good faith consultation with
DreamWorks Studios, and that in any litigation by DWA to which sub-paragraph
8(a)(ii) above applies, DWA may prosecute and compromise the litigation in its
sole discretion.
(d) DreamWorks Studios may request DWA to file applications to register
the Licensed Marks for the Licensed Goods and Licensed Services in countries
other than the Territories, to register the Licensed Marks in the Territories
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, or the
registration of such domain names, shall be shared equally by DWA and DreamWorks
Studios. DWA agrees to prosecute any such applications for trademark or service
xxxx registration to registration or final refusal, or upon agreement of the
parties through appeal, and to maintain all existing and future registrations of
the Licensed Marks in the Territories, and domain name registrations, unless DWA
and DreamWorks Studios agree in writing to abandon any such applications or not
to renew any such registrations.
9. REPRESENTATIONS AND WARRANTIES.
(a) DWA represents and warrants to DreamWorks Studios that: (i) DWA has
the right, power, and authority to enter into and fully perform its obligations
under this License
13
Agreement; and (ii) this License Agreement is a binding agreement as to DWA that
is enforceable against DWA according to its terms.
(b) DreamWorks Studios represents and warrants to DWA that: (i) DreamWorks
Studios will use commercially reasonable efforts throughout the Term of this
License Agreement to maintain sufficient control over all Sub-Licensees to
fulfill DreamWorks Studios' obligations to cause all Sub-Licensees to take or
refrain from taking the actions specified hereunder; (ii) DreamWorks Studios'
use of the Licensed Marks, and the conduct of its business under the trade names
and corporate names "DreamWorks L.L.C." and other DreamWorks formatives shall at
all relevant times be in accordance with all applicable laws, (iii) DreamWorks
Studios 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 DreamWorks Studios that is enforceable against
DreamWorks Studios according to its terms.
10. INDEMNIFICATION.
(a) DWA agrees to indemnify, defend, and hold DreamWorks Studios and any
Sub-Licensees harmless from and against any claim, demand, cause of action, or
suit for trademark, service xxxx, or trade name infringement, dilution,
cybersquatting, and unfair competition that is asserted against DreamWorks
Studios or any Sub-Licensee by a third party during the Term, or thereafter
solely on the basis of DreamWorks Studios' or any Sub-Licensee's use of the
Licensed Marks under this License Agreement (each a "Trademark Claim").
DreamWorks Studios 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 DreamWorks
Studios and any Sub-Licensee against such Trademark Claim at DWA's expense and
through counsel of DWA's choosing. DWA may defend, or compromise
14
any Trademark Claim with the approval of DreamWorks Studios, which approval
shall not be unreasonably withheld, and agrees to pay any judgment or settlement
on any Trademark Claim. DreamWorks Studios agrees that it will cooperate fully
with, and will cause any Sub-Licensee 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.
(b) DreamWorks Studios agrees to indemnify, defend, and hold DWA harmless,
and to obligate each Sub-Licensee to indemnify, defend, and hold DWA harmless,
from and against any claim, demand, cause of action, or suit, that is asserted
against DWA by a third party during the Term or thereafter, arising out of
DreamWorks Studios' or any Sub-Licensee's manufacture, advertisement, promotion,
marketing, offering for sale, sale, or distribution of Licensed Goods during the
Term, and DreamWorks Studios' or any Sub-Licensee's advertisement, promotion,
marketing, offering for sale, sale, or rendition of Licensed Services during the
Term, where such claim, demand, cause of action, or suit is not a Trademark
Claim (each a "Non-Trademark Claim"). Non-Trademark 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 DreamWorks Studios' or any Sub-Licensee's
manufacture, advertisement, promotion, marketing, offering for sale, sale, or
distribution of Licensed Goods during the Term, and DreamWorks Studios' or any
Sub-Licensee's advertisement, promotion, marketing, offering for sale, sale, or
rendition of Licensed Services during the Term (except where such claims,
demands, causes of action, or suits are based solely upon DreamWorks Studios' or
any Sub-Licensee's use of the
15
Licensed Marks as permitted under this License Agreement). DWA agrees that upon
receipt of any Non-Trademark Claim, it will promptly tender such claim in
writing to DreamWorks Studios in the manner set forth in paragraph 11(a) below,
and DreamWorks Studios agrees that it will defend DWA against such Non-Trademark
Claim at DreamWorks Studios' expense and through counsel of DreamWorks Studios'
choosing. DreamWorks Studios may defend or compromise any Non-Trademark Claim in
its sole discretion, and agrees to pay any judgment or settlement on any
Non-Trademark Claim. DWA agrees that it will cooperate fully with DreamWorks
Studios and its counsel in DreamWorks Studios' defense of any Non-Trademark
Claim. DreamWorks Studios agrees to carry such insurance, and to cause all
Sub-Licensees to carry such insurance, as may be reasonable to insure the
fulfillment of DreamWorks Studios' indemnity obligations with respect to
Non-Trademark Claims. Nothing in this subparagraph 10(b) affects either party's
rights or obligations under the Distribution Agreement, that certain Services
Agreement dated as of October 1, 2004, and that certain Merchandise and
Promotion Ancillary Services Agreement dated as of October 1, 2004.
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 DreamWorks Studios shall be
sent to the attention of the General Counsel. All notices are effective upon
confirmed receipt.
(b) The parties shall attempt to resolve all claims, disputes, or
disagreements arising out of the interpretation, performance, or breach of this
License Agreement, through good faith
16
negotiation between DWA and DreamWorks Studios. If such good faith negotiations
do not resolve the dispute, the dispute shall be resolved through arbitration in
the manner set forth in Section 24 of the Distribution Agreement, with each
party having the rights and obligations set forth therein; provided, however,
that in any arbitration hereunder, the neutral arbitrator selected by the
parties, or by the American Arbitration Association, as the case may be, shall
have a minimum of 10 years experience in the trademark licensing business.
(c) DreamWorks Studios may assign this License Agreement or its rights
hereunder only with the written consent of DWA, which consent shall not be
unreasonably withheld; provided, however, that DreamWorks Studios shall have the
right to assign this License Agreement only in the event either Xxxxxx Xxxxxxxxx
or Xxxxx Xxxxxx is engaged by DreamWorks Studios as an employee or consultant,
or that Xxxxxx Xxxxxxxxx or Xxxxx Xxxxxx otherwise renders services to
DreamWorks Studios. In the event of any assignment hereunder, the assignee must
assume in writing all of DreamWorks Studios' obligations under this License
Agreement.
(d) This License Agreement shall be governed by, and construed in
accordance with, the laws of the State of California.
(e) This License Agreement, together with the Schedules thereto,
constitutes the entire agreement between DWA and DreamWorks Studios 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.
WHEREFORE, the parties have executed this License Agreement as of the
Effective Date by the signature below of their duly-authorized representatives.
17
Dated: ______________, 2004 DREAMWORKS ANIMATION LLC
By:______________________________________
Dated: ______________, 2004 DREAMWORKS L.L.C.
By:______________________________________
18
SCHEDULE B
(LICENSED GOODS)
All of the following merchandising and promotional items distributed
and/or sold in connection with the Licensed Services, and other items within the
natural zone of expansion:
Metal keys chains and statuettes featuring scenes and/or characters
from Live Action Motion Pictures and Hybrid Motion Pictures;
Knives, spoons, and forks, all featuring scenes and/or characters from
Live Action Motion Pictures and Hybrid Motion Pictures;
Pre-recorded video tapes and DVDs containing Live Action Motion
Pictures and Hybrid Motion Pictures, pre-recorded compact discs and audio tapes
containing sound tracks from live Action Motion Pictures and Hybrid Motion
Pictures, pre-recorded audio tapes containing music from Live Action Motion
Pictures and 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, electronic
equipment, glasses and sun glasses all featuring scenes and/or characters from
Live Action Motion Pictures and Hybrid Motion Pictures;
Bicycles, scooters, and automobiles featuring scenes and/or characters
from Live Action Motion Pictures and Hybrid Motion Pictures;
Clocks and watches, and jewelry, all featuring scenes and/or characters
from Live Action Motion Pictures and 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;
19
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 table cloths; gift wrapping paper; paper
party decorations; scrap books; stationery portfolios; and bumper stickers all
featuring scenes and/or characters from Live Action Motion Pictures and Hybrid
Motion Pictures;
Tote bags and umbrellas, handbags, wallets, all-purpose athletic bags;
attache 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 scenes
and/or characters from Live Action Motion Pictures and Hybrid Motion Pictures;
Novelty items, ornamental novelty buttons and non-ornamental novelty
pins; toy boxes and toy chests; and sleeping bags featuring scenes and/or
characters from Live Action Motion Pictures and Hybrid Motion Pictures;
Plastic squeeze bottles, beverage glassware, mugs, plates, figures, and
figurines, all featuring scenes and/or characters from Live Action Motion
Pictures and Hybrid Motion Pictures;
Sacks and bags made of canvas, all featuring scenes and/or characters
from Live Action Motion Pictures and Hybrid Motion Pictures;
Blankets, comforters, bed linens, bed sheets, bedspreads, curtains,
towels, bed pillow covers, napkins, table cloths, potholders; oven mitts;
kitchen towels and window coverings all featuring scenes and/or characters from
Live Action Motion Pictures and Hybrid Motion Pictures;
20
Clothing, footwear and headwear, all featuring scenes and/or
characters from Live Action Motion Pictures and Hybrid Motion Pictures;
Sporting goods and toys, including action figures and accessories
therefor, bathtub toys, kites, board games, hand-held 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 scenes and/or characters from
Live Action Motion Pictures and Hybrid Motion Pictures.
21
SCHEDULE C
(LICENSED SERVICES)
The production, distribution and other exploitation of Live Action
Motion Pictures, Hybrid Motion Pictures, Live Stage Performances, DTV Products,
live action and hybrid television programs and other live action and hybrid
audiovisual works, in all media now known or hereafter devised (including,
without limitation, film, audio tapes, video tapes, CD-ROMs, DVDs and digital
[e.g., Internet] transmission), and the exercise of all rights therein or
related thereto, including, but not limited to allied ancillary and subsidiary
rights, and other services within the natural zone of expansion, with the
express exception of any services prohibited by the Separation Agreement.
22
