Loading...
CONTRACT 5447 License AgreementAgreement No. 5447 LICENSE AGREEMENT THIS AGREEMENT SUPERSEDES AND REPLACES THAT CERTAIN LICENSE AGREEMENT DATED JUNE 26, 2007, FOR THE EL SEGUNDO POLICE DEPARTMENT PROPERTY (AGREEMENT NO. 3746), AND THAT CERTAIN LICENSE AGREEMENT DATED SEPTEMBER 19, 2016, FOR THE EL SEGUNDO FIRE DEPARTMENT AND RESCUE VEHICLES PROPERTY, AND ANY AMENDMENTS THERETO BETWEEN LICENSOR AND LICENSEE FOR THE TERM UNDER THIS AGREEMENT. THIS LICENSE AGREEMENT (the "Agreement") is made and entered into as of August 01, 2017, (the "Effective Date") by and between City of El Segundo, a California municipal corporation having its principal place of business at 350 Main Street, El Segundo, California 90245 (hereinafter referred to as "Licensor") and Mattel, Inc., a corporation organized under the laws of the State of Delaware, having a principal place of business at 333 Continental Boulevard, El Segundo, California 90245-5012 (hereinafter referred to as "Licensee"). WITNESSETH. WHEREAS, Licensor represents and warrants that it is the owner of various trademarks, copyrights and other proprietary rights in and to the Property as set forth below; and WHEREAS, Licensee is engaged in the business of manufacturing and selling toys and games and other consumer products; and WHEREAS, Licensee desires to use certain of Licensor's trademarks, copyrights, and other intellectual property in the manufacturing and distribution of Licensee's products, and WHEREAS, Licensor is willing to license Licensee the right to use certain of Licensor's trademarks, copyrights, and other intellectual property in the manufacturing and distribution of Licensee's products under the terms set forth in this Agreement. NOW, THERE, FORE,- and in consideration of the mutual covenants and agreements contained herein and other good and valuable consideration, receipt of which is hereby acknowledged, it is hereby agreed as follows: 1. (ir.iiit cel' Kisdits. Licensor hereby grants to Licensee a non-exclusive royalty -free worldwide license to use the trademarks, tradenames, copyrights, designs, logos and likenesses including names, accessories and other visual or identifying representations associated with El Segundo Police Department and the El Segundo Fire Department and Rescue Vehicles (hereinafter referred to as the "Licensed Property"), and depicted in the attached exhibits, in conjunction with the manufacture, marketing, distribution, promotion and sale of vehicle replicas in any size, scale and material, including, without limitation, die-cast vehicle replicas with or without plastic parts, plastic replicas and innovation replicas (motorized or non -motorized), battery powered ride -ons, related play sets and accessories (hereinafter referred to as the "Licensed Products"). In accordance with El Segundo Municipal Code Section 1-3-3, Licensor agrees that Licensee's use of Licensor's Seal is, in part, to advertise the City of El Segundo and, in doing so, encourage tourism and other economic development._The rights granted herein shall apply to all channels of Agreement No. 5447 distribution, including without limitation, direct marketing to consumers, the Internet and online marketing and sale. In addition to the foregoing rights, Licensor herein grants to Licensee the right to use the name, nickname, likenesses and visual or identifying representations of the Licensed Property in connection with the marketing and sale of the Licensed Products, including in advertising, selling, packaging and promotional and publicity materials relating to the Licensed Products. 2. Term. This Agreement shall become effective on the date first written above and shall continue in effect for a term expiring on December 31, 2020, Licensee, in its sole discretion, shall have the option to renew this Agreement for two additional one-year periods, by written notice given to Licensor at least sixty (60) days prior to the expiration of the then current term. 3.proyals. In the event that Licensee does manufacture Licensed Products, then Licensee shall submit to Licensor electronic "e -sheet" (e.g. jpeg) samples of each Licensed Product (including packaging and artwork) to the City Manager for approval. Licensor shall have ten (10) business days to approve or disapprove the electronic "e -sheet" samples, which Licensor shall not unreasonably delay. In any event, the failure by Licensor to provide written approval/disapproval within ten (10) business days shall be deemed approved. 4. Legal gal Notice. Licensee agrees to affix a legal notice on the packaging and other materials that incorporate the Licensed Property in order to denote Licensor's trademark and/or copyright in materials that incorporate the Licensed Property. The legal notice when used on the Licensed Products may be abbreviated in accordance with legal requirements and as space permits. Subject to Licensor's exclusive rights to the Licensed Property, Licensee is expressly permitted to apply to the Licensed Products any trademarks, artwork and designs that it selects and to apply appropriate patent, trademark and/or copyright notices. All such trademark and copyright notices shall be in the name of Licensee, subject to the Licensor's exclusive rights to the Licensed Property. 5. Licensed Product Samples. In the event that Licensee does manufacture Licensed Products, then, in full consideration for the rights granted to Licensee hereunder, Licensee agrees to furnish Licensor with two -hundred (200) units of each single pack of such Licensed Products, where such Licensed Products are featured, at no charge, shipping and handling included. Licensee shall not be required to furnish to Licensor units of any SKU (Stock -keeping Unit, the identification number assigned to individual products) of any Licensed Products unless Licensee has completed a full and final production run for such SKU. No inadvertent failure of Licensee to provide any such Licensed Products to Licensor shall be deemed a breach of this Agreement, provided that, to the extent reasonably possible and provided that such Licensed Products are currently being manufactured, Licensee shall retrospectively provide such Licensed Products upon notice from Licensor of Licensee's failure to do so. Notwithstanding the foregoing, Licensee shall have no duty to manufacture and/or sell any Licensed Products or to otherwise exploit the rights granted herein. Upon request and subject to availability and in reasonable quantities, Licensor has the right to purchase additional quantities of the Licensee's products at Licensee's best wholesale price. 6. 0 waie1*.S,1jJ1?. Licensee acknowledges that nothing contained in this Agreement is intended as an assignment or grant to Licensee of any right, title or interest in or to the Licensed Property or the goodwill attached thereto. Licensor shall at all times remain the owner of any and all of the Licensed Property created by Licensor and used by Licensee in connection with the Agreement No. 5447 Licensed Products. Licensee shall own all intellectual property rights embodied in the Licensed Products excluding the Licensed Property. 7. i mmclrr°eser tatirrrrw rrrtd '4 arrrrrities, Iriderrariity. Licensor represents and warrants to Licensee that it is the sole owner of the Licensed Property and that it has the full power and authority to enter into this Agreement. Licensor agrees to indemnify Licensee against any loss and expense including its reasonable attorneys' fees arising out of any claims, demands, or actions that may be instituted against Licensee by reason of any claim of a superior right to any element of the Licensed Property. Licensee agrees that the Licensed Products shall be of a standard of quality as high as that of other similar Licensee products as of the date of this Agreement. Licensee agrees to indemnify Licensor against all third party claims arising out of its marketing or sale of the Licensed Products, including claims for personal injury, except that Licensor shall be solely responsible for any claims based upon use of the Licensed Property as permitted by this Agreement. Licensee shall have the right to control the defense and settlement of any such third party claims. 8. TC1,r1W1i11"at on,. ['11'ectt of"I'CrIninat, on. Either party may terminate this Agreement in the event that the other party materially breaches the terms of this Agreement or any of the warranties or representations made herein, provided that the non -breaching party provides the breaching party with written notice of such default and sixty (60) days within which to remove or cure such default. If there is no removal or cure of the default within such period, the Agreement may then be immediately terminated by the non -breaching party. Upon expiration or earlier termination of this Agreement, Licensee agrees to discontinue all use of the Licensed Property, except that Licensee shall continue to have the right to sell off all existing inventory bearing the Licensed Property, whether completed or in the process of manufacture, for a period of six (6) months after expiration or early termination. 9. Assiroorient. Licensee and its subsidiaries may sublicense or assign among themselves and to their entities any and all of their rights and obligations hereunder. Licensee shall remain directly and primarily obligated under all the provisions of this Agreement and any default of this Agreement by its subsidiaries shall be deemed a default by Licensee hereunder. 10. Notices. All notices wherever required in this Agreement shall be in writing and sent by facsimile, certified mail or overnight delivery and shall be deemed given when sent or mailed. 11.c,\1cr�abi„lid. If any provisions of this Agreement are for any reason declared to be invalid, the validity of the remaining provisions shall not be affected thereby. 12. Governing Law. This Agreement and each and every one of its provisions shall be interpreted under the laws of the State of California. 13. 1`mireA)yecmem. This Agreement represents and expresses the entire agreement of the parties and supersedes all prior agreements, representations and understandings (whether written or oral) between the parties concerning the subject matter hereof. An amendment or modification of a term or condition of this Agreement must be in writing duly executed by both parties. Agreement No. 5447 14. Countemarts. This Agreement may be executed in any number of counterparts and by facsimile or scanned email attachments, each of which will be deemed an original, but all of which together will constitute one instrument. IN WITNESS WHEREOF, the parties hereto have executed this Agreement as of the day and year first written above. C1 OFA SEG IND(') Or ar nter, 0 Manager ATT S'1": Tr c C ty lrk APPROV D AS TO FORM: Mark D, Hensley, City Attorney MATTEL,C, Todd Piccus .....mm.....,.. V.P. Legal & Business Affairs 1I Mattel Law Department M.C. 8/28/17 Agreement No. 5447 Agreement No. 5447