EXHIBIT 10.44
EXECUTION COPY
AGREEMENT
This Agreement (the "Agreement") is made as of December 22, 2004 (the
"Effective Date") among PEAK ENTERTAINMENT HOLDINGS, INC., with an address at
Xxxxxxx Xxxx, Xxxxxxx Hill, Bakewell, Derbyshire DE45 1DL, England, and PEAK
ENTERTAINMENT LTD., with an address at Xxxxxxx Hall, Xxxxxxx Hill, Bakewell,
Derbyshire DE45 1DL, England,, (together, "Peak") and XXXXXXXX ENTERTAINMENT
GROUP, INC. ("MEG"), with an address at 0000 Xxxxxxxx Xxxxxx, Xxxxx 000,
Xxxxxxxxx Xxxxx, Xxxxxxxxxx 00000, U.S.A.
WHEREAS, MEG and Peak Entertainment Ltd. were parties to the In My Pocket
License Agreement dated February 25, 2002, as such agreement was amended (the
"IMP License"), which was terminated as of November 30, 2003; and
WHEREAS, MEG, Peak Entertainment Ltd., and Mr. and Xxx. Xxxxxxx Xxxxxxxxx
were parties to the Monster In My Pocket License Agreement (the "MIMP License")
dated March 9, 2004, which contained a license to certain intellectual property
in the MONSTER IN MY POCKET and other boys' IN MY POCKET trademarks, concepts,
products, designs and/or inventions, for which neither the license nor the MIMP
License became effective; and
WHEREAS, in connection with the development of a television series and toy
products, Peak has entered into the license agreements with the Peak Licensees
(as defined below) granting rights related to the Peak Toy Series (as defined
below); and
WHEREAS, the parties wish to clarify their rights in connection with
certain intellectual property owned by MEG;
NOW THEREFORE, in consideration of the foregoing promises, the covenants
set forth below, and for other good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, the parties agree as follows:
1. Definitions.
a. "Character Options" shall mean Character Options Limited with an
address of 00-00 Xxxxx Xxxx, Xxx Xxxxxx, Xxxxxx, XX0 0XX, Xxxxxxx.
b. "Character Options Toy Series" shall mean PVC articulated toy figures
no less than seven and one-half (7.5) centimeters tall, and associated vehicles
and playsets to the scale of such figures, produced by Character Options, as the
existing range is set forth in Schedule F and any additional figures Character
Options adds to such existing range.
c. "Licensee Letter Agreement" shall mean the letter agreement in the form
set forth in Schedule D.
d. "MEG IP" shall mean all patents, trademarks, copyrights, and all other
intellectual property rights, and all registrations and applications for any of
the foregoing, anywhere in the world, in and to the MONSTER IN MY POCKET and IN
MY POCKET products, concepts, design, trade dress, storylines, characters,
backgrounds, and/or inventions, including without limitation, the MEG
Trademarks, and all goodwill associated with any of the foregoing.
e. "MEG Trademarks" shall mean the trademarks MONSTER IN MY POCKET and IN
MY POCKET, whether alone or in combination with other words and/or designs, and
all logos, stylizations, slogans, or taglines used or held for use in connection
with the MONSTER IN MY POCKET and IN MY POCKET products, concepts, design, trade
dress, storylines, characters, backgrounds, and/or inventions, and all
registrations, applications, and renewals in connection with any of the
foregoing, owned or licensed by MEG anywhere throughout the world, and all
derivations, combinations, and translations thereof, and all goodwill associated
therewith.
f. "Peak IP" shall mean all patents, trademarks, copyrights, and all other
intellectual property rights, and all registrations and applications for any of
the foregoing, anywhere in the world, in and to the MONSTER QUEST Peak Toy
Series products, concepts, design, trade dress, storylines, characters,
backgrounds, and/or inventions, including without limitation, the Peak
Trademarks, and all goodwill associated with any of the foregoing, exclusive in
all cases of any MEG IP.
g. "Peak Licensees" shall mean each MONSTER IN MY POCKET and Monster Quest
licensee of Peak identified in Schedule C hereto, with addresses as set forth in
Schedule C hereto.
h. "Peak Toy Series" shall mean the concepts, products, designs, and/or
inventions in the toy products described in Schedule A and the television series
developed by Peak and its licensees as described in Schedule B, in each case as
exist as of the Effective Date.
i. "Retail and Premium Markets" shall mean toy figures marketed, sold, or
offered for sale in retail shops, websites, or other venues, or used by any
third party as a free item or added value premium product as part of a
promotional marketing campaign.
2. Acknowledgement.
a. Peak acknowledges and agrees that it has no rights to use, or develop
any products based on, any MEG IP. Without limiting the foregoing, Peak
acknowledges and agrees that it has no right to, and shall not, directly or
indirectly: (i) use the MEG Trademarks, or any trademark or service xxxx
confusingly similar thereto, (including without limitation, for the avoidance of
doubt, any logo or stylization which is the same as or similar to any logo or
stylization used in connection with the "Monster In My Pocket" or "In My Pocket"
products) in connection with the Peak Toy Series or otherwise, and shall only
use the name "Monster Quest" and logo set forth in Schedule E hereto (together,
the "Peak Trademarks") in connection with the Peak Toy Series; (ii) except with
respect to the Character Options Toy Series (which right shall not be
transferable (whether by assignment, stock sale, asset sale, merger, operation
of law or otherwise) or sublicenseable by Peak or Character Options and shall be
personal to Character Options), develop, promote, manufacture, market, sell, or
offer to sell to Retail and Premium Markets or otherwise whether itself or
through third parties, (A) miniature figures that are less than or equal to
eight (8) centimeters tall, or (B) accessory products scaled to the size of
figures that are less than or equal to eight (8) centimeters tall in connection
with the Peak Toy Series or otherwise provided that, for the avoidance of doubt,
nothing in this Agreement shall be construed to prevent Peak from making
miniature figures for any of its other concepts, e.g., Faireez, Little Big Feet,
Countin' Sheep, Tattoo, The Wumblers and others that clearly have no connection
to MEG IP; and (iii) use or otherwise exploit any MEG IP in connection with any
products (including without limitation any figures, accessory products,
television series, film series, or games) whether in connection with the Peak
Toy Series or otherwise, or otherwise associate the Peak Toy Series with the MEG
IP.
b. MEG acknowledges and agrees that it has no rights to use, or develop
any products based on, Peak IP.
c. For the avoidance of doubt, nothing in this Agreement shall be
construed as granting Peak or any Peak Licensee any license to use the MEG
Trademarks or exploit any MEG IP.
3. Representations, Warranties, and Covenants. Peak represents and warrants and
further covenants as follows:
a. Except for the Peak Licensees, Peak has not granted or purported to
grant any rights relating to the MEG IP to any third parties.
b. As of the Effective Date, Peak has removed all uses of the MEG
Trademarks from its website "xxx.xxxxxxxxxxxxxxxxx.xx.xx." Within the earlier of
thirty (30) days following the Effective Date or prior to the first time any
product or broadcast included in the Peak Toy Series has been sold or offered
for sale to a customer or potential customer, or otherwise advertised, marketed,
or promoted, Peak will remove all other uses of any MEG Trademarks from its
advertising, promotional materials, and websites, whether for the Peak Toy
Series or otherwise, and will provide evidence of compliance to MEG suitable to
MEG at its sole discretion.
c. Peak agrees that, within 30 days following the Effective Date, it will
deliver to MEG all copies of any material embodying or containing the MEG IP or
bearing any MEG Trademark, including without limitation all CDs, designs,
specifications, and any other materials, and represents that it has retained no
copies of such material, whether digitally or otherwise.
d. Peak has not disclosed to any third party any confidential information
of MEG except pursuant to an enforceable written obligation of confidentiality.
e. As of the Effective Date, Peak has notified the Peak Licensees that
Peak does not own any rights in any toys, characters, storylines, or brands
relating to the MEG IP. Within thirty (30) days of the Effective Date, Peak will
obtain three executed copies of a Licensee Letter Agreement from each Peak
Licensee and will provide to MEG one original executed copy of each Licensee
Letter Agreement for each Peak Licensee.
4. Ownership of Proprietary Rights; Notice.
a. Peak acknowledges and agrees that as between Peak and MEG, MEG solely
owns all MEG IP. Peak shall not at any time do or suffer to be done any act
which would impair or diminish MEG's proprietary rights in or to the MEG IP or
interfere with MEG's exercise of any of its rights in the MEG IP. Peak shall not
use or register any trademarks, service marks or business names for use on any
goods or services which trademarks, service marks or business names would be
confusingly similar to any of the MEG Trademarks or MEG IP or to any other
trademark, service xxxx or business name now in use by MEG on any goods or
services, nor apply for any patents or copyright registrations for any products,
concepts, design, trade dress, storylines, characters, backgrounds, and/or
inventions arising out of, or similar to, the MEG IP, nor use any products,
concepts, design, trade dress, storylines, characters, backgrounds, and/or
inventions that would infringe MEG's rights in the MEG IP. Peak understands that
it has, and acquires, no right, title, or interest in the MEG IP. If MEG wishes
to register the MEG IP or otherwise maintain, preserve, or enforce its rights in
the MEG IP in any jurisdiction, Peak shall cooperate in any such registration or
enforcement action.
5. Infringement. Peak shall promptly notify MEG in writing of any actual or
suspected infringement of the MEG IP by a third party of which it becomes aware
and of any available evidence thereof. Peak shall cooperate with MEG's efforts
to investigate, terminate, and recover damages for any actual or suspected
infringement of the MEG IP.
6. Confidentiality. Peak agrees that it shall not disclose any confidential
information contained in the MEG IP to which they previously had access to any
person or entity. The obligations of Peak specified in this Section 6 shall not
apply, and Peak shall have no further obligations, with respect to any
confidential information to the extent that such confidential information is (i)
generally known to the public at the time of disclosure; (ii) becomes generally
known without Peak violating any confidentiality obligations owed to MEG; or
(iii) is disclosed by MEG to a third party without any obligation of
confidentiality. In the event that Peak is requested or required by a
governmental entity (by oral questions, interrogatories, requests for
information or documents, subpoena, civil investigative demand or similar
process) to disclose any of the information subject to Section 6, it is agreed
that Peak will provide MEG with prompt notice of each such request so that MEG
may seek an appropriate protective order or other appropriate remedy and Peak
will reasonably cooperate with MEG, at MEG's expense, to obtain such protective
order or other remedy. In the event that such protective order or other remedy
is not sought or obtained within a reasonable time under the circumstances, Peak
may furnish only that portion of the information which it is legally compelled
to disclose or advised by legal counsel to disclose and will use its
commercially reasonable efforts to obtain reliable assurance that confidential
treatment will be accorded any information so furnished.
7. Assignment. Neither party may grant, assign, convey, or transfer any of their
rights or obligations under this Agreement to any person without the prior
written approval of the other party, which approval shall not be unreasonably
withheld, and, in the event of a permitted assignment, the assigning party shall
remain responsible under, and continue to be bound by, the terms of this
Agreement. Any other purported grant, assignment, conveyance or transfer shall
be null and void and of no force or effect whatsoever. Notwithstanding the
foregoing, each party may assign this Agreement, and its rights and obligations
hereunder, to an affiliate or to a successor of all or substantially all
(including but not limited to 50%) of its assets (whether by stock sale, asset
sale, merger, consolidation, operation of law or otherwise) without the other
party's prior consent. Peak acknowledges and agrees that it consents to the
proposed transaction by and between MEG and Corinthian plc. This Agreement shall
be binding upon and inure to the benefit of the parties named herein and their
respective permitted successors and permitted assigns.
8. Term; Termination and Effect Thereof.
a. This Agreement shall commence on the Effective Date and shall remain in
effect in perpetuity.
b. Sections 1, 4, 6, 7, 8(b), 9-21 of this Agreement shall survive any
termination of this Agreement.
9. Injunctive Relief. Peak agrees that violation of the provisions of this
Agreement, including but not limited to Sections 2 and 4 above, would cause
irreparable harm to MEG not adequately compensable by monetary damages. In
addition to other relief available to MEG, it is agreed that the grant of
immediate injunctive and other equitable relief shall be available to MEG in the
event of such violation without necessity of posting bond or showing actual
money damages to prevent any actual or threatened violations of the provisions
of this Agreement. MEG agrees that violation of its obligations under this
Agreement would cause irreparable harm to Peak not adequately compensable by
monetary damages. In addition to other relief available to Peak, it is agreed
that the grant of immediate injunctive and other equitable relief shall be
available to Peak in the event of such violation without necessity of posting
board or showing actual money damages to prevent any actual or threatened
violations of its obligations under this Agreement.
10. Notices. All notices, requests, demands and other communications which are
required or may be given under this Agreement shall be in writing and shall be
deemed to have been duly given when received if personally delivered; when
transmitted if transmitted by facsimile, electronic or digital transmission
method; the day after it is sent, if sent for next day delivery to a domestic
address by recognized overnight delivery service (e.g., Federal Express or DHL);
and upon receipt, if sent by certified or registered mail, return receipt
requested. In each case, notice shall be sent as indicated below:
If to MEG:
Xxxxxxxx Entertainment Group, Inc.
0000 Xxxxxxxx Xxxxxx
Xxxxx 000
Xxxxxxxxx Xxxxx, XX 00000
U.S.A.
Attention: Xxx Xxxxxxxx
Facsimile:
With copies to:
Fried Xxxxx Xxxxxx Xxxxxxx & Xxxxxxxx LLP
0 Xxx Xxxx Xxxxx
Xxx Xxxx, XX 00000
Attention: Xxxxxx xx Xxxx, Esq.
Facsimile: 000-000-0000
If to Peak:
Peak Entertainment Holdings, Inc.
Xxxxxxx Xxxx, Xxxxxxx Xxxx
Xxxxxxxx, Xxxxxxxxxx
XX00 0XX, Xxxxxxx
Attention: Wilf Shorrocks
Xxxxx Xxxxxxxxx
Facsimile: 00(0)0000 000 000
Peak Entertainment Ltd.
Xxxxxxx Xxxx, Xxxxxxx Xxxx
Xxxxxxxx, Xxxxxxxxxx
XX00 0XX, Xxxxxxx
Attention: Wilf Shorrocks
Xxxxx Xxxxxxxxx
Facsimile: 00(0) 0000 000 000
With copies to:
[Attorney]
============================
Attention: ________________
Facsimile:
or to such other place and with such other copies as either party may designate
as to itself by written notice to the others.
11. Choice of Law. This Agreement shall be construed, interpreted and the rights
of the parties determined in accordance with the laws of the State of California
(without reference to its choice of law provisions).
12. Jurisdiction; Service of Process. Any action or proceeding seeking to
enforce any provision of, or based on any right arising out of, this Agreement
shall be brought against any of the parties only in the courts of the State of
California, County of Los Angeles, or, if it has or can acquire jurisdiction, in
the United States District Court for the Central District of California, and
each of the parties consents to the jurisdiction of such courts (and of the
appropriate appellate courts) in any such action or proceeding and waives any
objection to venue laid therein or on the grounds of forum non conveniens.
Process in any action or proceeding referred to in the preceding sentence may be
served on any party anywhere in the world by serving copies on the persons
required by the notice provisions hereof (i) by overnight courier, postage
prepaid, or by hand, (ii) with a copy by facsimile transmission. Peak agrees
that any judgment obtained against it in any court in the United States shall be
valid and enforceable against Peak in the United Kingdom and that Peak shall not
contest the validity or enforcement of such judgment based on the fact that such
judgment was signed or rendered by a court in the United States.
13. Entire Agreement; Amendments; Waiver. This Agreement, including the
Schedules hereto, constitutes the entire agreement among the parties with
respect to the subject matter hereof and supersedes all prior agreements and
understandings negotiations and discussions, whether oral or written, of Peak,
and MEG with respect thereto, including the IMP License and the MIMP License.
Peak acknowledges that the IMP License was terminated as of November 30, 2003,
that the MIMP License was never effective and is of no force and effect, and
that MEG owes no obligations to Peak under either the IMP License or the MIMP
License, whether such obligations were intended to survive the termination of
such agreements but, for the avoidance of doubt, Peak shall be obligated to
comply with any of Peak's obligations that were intended to survive termination
of the IMP License. This Agreement may not be amended except by an instrument in
writing signed on behalf of each of the parties hereto. No amendment,
supplement, modification, or waiver of this Agreement shall be binding unless
executed in writing by the party to be bound thereby. No waiver of any of the
provisions of this Agreement shall be deemed or shall constitute a waiver of any
other provision hereof (whether or not similar), nor shall such waiver
constitute a continuing waiver unless otherwise expressly provided in such
writing.
14. Multiple Counterparts. This Agreement may be executed in one or more
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
15. Further Assurances. Subject to the specific terms of this Agreement, each
party shall make, execute, acknowledge and deliver such other instruments and
documents and take such other actions as may be reasonably required in order to
effectuate the purposes of this Agreement.
16. Relationship of the Parties. This Agreement does not create a partnership or
joint venture between the parties hereto, and does not make either party the
employee, agent, or legal representative of the other for any purpose
whatsoever. Neither party is granted any right or authority to assume or create
any obligation or responsibility, express or implied, on behalf of or in the
name of the other party.
17. Taxes and Expenses. Each party shall responsible for its own taxes in
connection with this Agreement. Except as otherwise specified in this Agreement,
each party hereto shall pay its own legal, accounting, out-of-pocket and other
expenses incident to this Agreement and to any action taken by such party in
preparation for carrying this Agreement into effect
18. Invalidity. Whenever possible, each provision hereof shall be interpreted in
such manner as to be effective and valid under applicable law, but in the event
any one or more of the provisions contained herein shall, for any reason, be
held to be invalid, illegal, unenforceable in any respect, such provision shall
be ineffective to the extent, but only to the extent, of such invalidity,
illegality or unenforceability without invalidating the remainder of such
invalid, illegal or unenforceable provision or provisions or any other
provisions unless such construction would be unreasonable.
19. Publicity. Except as expressly permitted by this Agreement, no party shall
issue any press release or make any public statement regarding the transactions
contemplated hereby, without prior written approval of the other party, which
approval shall not be unreasonably withheld, or as may be required by regulation
(in which case, the nature of the statement shall be described to the other
party prior to dissemination to the public).
20. No Third-Party Beneficiary. The provisions of this Agreement are for the
benefit only of the parties hereto, and no third party may seek to enforce, or
benefit from, these provisions. The parties specifically disavow any desire or
intention to create any third party beneficiary hereunder, and specifically
declare that no person or entity, except for the parties and their successors,
shall have any right hereunder nor any right of enforcement hereof.
21. Representation of Counsel; Mutual Negotiation. Each party has had the
opportunity to be represented by counsel of its choice in negotiating this
Agreement. This Agreement shall therefore be deemed to have been negotiated and
prepared at the joint request, direction, and construction of the parties, at
arm's length, with the advice and participation of counsel, and will be
interpreted in accordance with its terms without favor to any party.
[Remainder of Page Intentionally Left Blank]
IN WITNESS THEREOF, the parties have executed this Agreement as of the
Effective Date.
PEAK ENTERTAINMENT HOLDINGS, INC.
By: /s/ Date: December , 2004
------------------------------------- --------
Wilf Shorrocks, President
PEAK ENTERTAINMENT LTD.
By: /s/ Date: December, 2004
-------------------------------------
Xxxx Xxxxx, Managing Director
/s/ Date: December, 2004
----------------------------------------
WILF SHORROCKS, an individual
/s/ Date: December, 2004
----------------------------------------
XXX. XXXX SHORROCKS, an individual
XXXXXXXX ENTERTAINMENT GROUP, INC.
By: /s/ Date: December 22, 2004
-------------------------------------
Name: Xxx Xxxxxxxx
Title: President
SCHEDULE A
Toy Products Under Development in the Peak Toy Series
The Character Options Toy Series
SCHEDULE B
Television Series Under Development in the Peak Toy Series
See attached Monster Quest Production Bible V.2.22.
SCHEDULE C
Peak Licensees
o Character Options Ltd, with an address at 00-00 Xxxxxx Xxxx, Xxx Xxxxxx,
Xxxxxx XX0 0XX, Xxxxxxx;
o Radica U.K. Ltd. with an address at The Old Stables, Xxxx Farm, Xxxx
Xxxxx, Herts XX00 0XX Xxxxxxx;
o VCI Group PLC, with and address at 00 Xxxx Xxxxxx, Xxxxxx X0X 0XX,
Xxxxxxx; and
o GMTV with an address at The Xxxxxx Xxxxxxxxxx Xxxxxx, Xxxxx Xxxxxx, Xxxxxx
XX0 0X, Xxxxxxx.
SCHEDULE D
Licensee Letter Agreements
See attached form Licensee Letter Agreement.
[Licensee Name]
[Licensee's own Letter Heading with address]
Xxxxxxxx Entertainment Group, Inc.
[address]
Attention: _____________
Dear __________________:
The undersigned is ________ [name], _______________ [title] of ____________
[licensee name] and, as such, is authorized to sign on behalf of ______________
[licensee name].
This letter confirms that License Agreement No. ___ dated ________ by and
between ________ [licensee name] and Peak Entertainment Ltd. ("Peak") in
relation to "Monster In My Pocket - the Quest" has been terminated, and such
agreement has been replaced by License Agreement No. ___ dated ________ by and
between ________ and Peak which grants certain rights to the brand "Monster
Quest" only. For the avoidance of doubt, [licensee name] has been notified that
Peak and its affiliates have no rights in the brand "Monster in My Pocket," the
brand "In My Pocket," related logos, or any intellectual property owned by
Monster Entertainment Group, Inc. relating to such brands and logos, and related
series (collectively, the "MEG IP"). [Licensee name] further acknowledges that
[licensee name] has no rights in the brand "Monster in My Pocket," the brand "In
My Pocket," related logos, or any intellectual property owned by Monster
Entertainment Group, Inc. relating to such brands and logos, and related series,
that [licensee name] has removed all uses of the "Monster In My Pocket" and "In
My Pocket" brands (such as all uses on advertising and promotional material,
websites, or inserts), and that [licensee name] will not produce figures less
than or equal to eight (8) centimeters tall [Character Options: less than seven
and one-half (7.5) centimeters tall] or accessory products scaled to figures of
that size. [Licensee name] further confirms that ___________ [licensee name] has
returned all, and has not retained any copies of, materials embodying any MEG
IP.
Signed,
[Licensee Name]
By: ____________________________ Date: ________________________
Name: ___________________
Title: ___________________
[Notarization]
SCHEDULE E
Permitted Peak Logo
[Logo of
MONSTER QUEST]
SCHEDULE F
Character Options Toy Series
See attached pictures of toy figures.
[Images of toy figures.]
