CONTRACT 3746 License AgreementLICENSE AGREEMENT
THIS AGREEMENT (the "Agreement ") is made and entered into as of the 26th day
of June, 2007 (the "Effective Date ") by and between the City of El Segundo, California,
having its principal office at 314 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 its principal office at 333 Continental Boulevard, El Segundo, CA
90245 -5012 (hereinafter referred to as "MATTEL ").
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, MATTEL is engaged in the business of manufacturing and selling toys
and games and other consumer products; and
WHEREAS, MATTEL desires to use certain of LICENSOR'S trademarks,
copyrights, and other intellectual property in the manufacturing and distribution of
MATTEL'S products, and
WHEREAS, LICENSOR is willing to license MATTEL the right to use certain of
LICENSOR'S trademarks, copyrights, and other intellectual property in the manufacturing
and distribution of MATTEL'S products under the terms set forth in this Agreement.
NOW, THEREFORE, for 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. LICENSOR hereby grants to MATTEL 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 the El Segundo Police Department (hereinafter referred to as the
"LICENSED PROPERTY ") in conjunction with the manufacture, marketing, distribution,
promotion and sale of various scaled die -cast and/or plastic toy vehicles replicas
(motorized or non - motorized), related playsets and accessories (hereinafter referred to as
the "LICENSED PRODUCTS "). In accordance with El Segundo Municipal Code (ESMC)
Section 1 -3 -3, LICENSOR agrees that MATTEL'S use of the City 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 distribution,
including without limitation, direct marketing to consumers, the Internet and online
marketing and sale.
333 Continental Boulevard, El Segundo, 90245 -5012 Telephone 310 252 2000
3746
j
2. This Agreement shall become effective on the date first written above and shall continue
in effect for a term expiring on December 31, 2010. MATTEL, 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. MATTEL shall have no duty to manufacture and /or sell any LICENSED PRODUCTS
or to otherwise exploit the rights granted herein.
4. In the event that MATTEL does manufacture LICENSED PRODUCTS, then, in full
consideration for the rights granted to MATTEL hereunder, MATTEL agrees to furnish LICENSOR
with twelve (12) units of each of such LICENSED PRODUCTS, at no charge, shipping and handling
included. MATTEL 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 MATTEL has completed a full and final production run for such SKU. No inadvertent failure
of MATTEL 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, MATTEL shall retrospectively provide such
LICENSED PRODUCTS upon notice from LICENSOR of MATTEL'S failure to do so.
5. MATTEL agrees that the LICENSED PRODUCTS shall be of a standard of quality as
high as that of other similar MATTEL products as of the date of this Agreement.
6. In the event that MATTEL does manufacture LICENSED PRODUCTS, then MATTEL
shall submit to LICENSOR electronic "e- sheet" (e.g. jpeg) samples of each LICENSED PRODUCT
(including packaging and artwork) for approval. LICENSOR shall have twenty (20) 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 twenty
(20) business days shall be deemed approved. Upon request and subject to availability and in
reasonable quantities, LICENSOR shall have the right to purchase additional quantities of the
LICENSED PRODUCTS from MATTEL at MATTEL'S best wholesale price.
7. MATTEL and its subsidiaries may sublicense or assign among themselves and to their
subsidiaries the rights to manufacture, import, distribute and sell the LICENSED PRODUCT.
MATTEL 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 MATTEL hereunder.
8. In addition to the other rights licensed to MATTEL herein, LICENSOR herein grants to
MATTEL 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.
9. MATTEL acknowledges that nothing contained in this Agreement is intended as an
assignment or grant to MATTEL of any right, title or interest in or to the LICENSED PROPERTY or
the goodwill attached thereto.
2
3746
10. LICENSOR shall at all times remain the owner of any and all of the LICENSED
PROPERTY created by LICENSOR and used by MATTEL in connection with the LICENSED
PRODUCTS. MATTEL shall own all intellectual property rights embodied in the LICENSED
PRODUCTS excluding the LICENSED PROPERTY.
11. MATTEL 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, MATTEL 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 MATTEL, subject to the LICENSOR's exclusive rights to the LICENSED PROPERTY.
12. LICENSOR represents and warrants to MATTEL 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 MATTEL against any loss and expense including its reasonable
attorneys' fees arising out of any claims, demands, or actions that may be instituted against MATTEL
by reason of any claim of a superior right to any element of the LICENSED PROPERTY.
13. MATTEL 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. MATTEL shall have the right to control the defense and settlement of
any such third party claims.
14. 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.
15. Upon expiration or earlier termination of this Agreement, MATTEL agrees to
discontinue all use of the LICENSED PROPERTY, except that MATTEL 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.
16. 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.
17. 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.
18. This Agreement and each and every one of its provisions shall be interpreted under the
laws of the State of California.
3
3746
• i
19. 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.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement as of the day and
year first written above.
MATTEL, INC.
CITY OF EL SEGUNDO, CA
By:
Print Na
VP, Legal & Business Affairs
Title:
By:
Print N Jeff Stewart
Title: City Manager
Date: ��y�
Date: a
The foregoing i trume is a full, true, and
correct copy of t or' al on file In this
Office:
ATTEST:
City Clerk
4 C'dy of El Segundo
m�rc�reox
MATTEL, INC.
LICENSOR APPROVAL FORM
1 : nlefo ,.e11 -- hinhlinhiarl nnrfinn
RETURN PHYSICAL ITEMS (EXCEPT ARTWORK) TO:
FAX SIGNED FORMS TO:
3746 .
Mattel, Inc.
Hot Wheels Licensor Liaison
Mail Stop D1 -0124
333 Continental Blvd.
El Segundo, CA 80245 -5012
(310) 252 -2610
she ila.tan(i�mattel. com
uL'cnav, — ... t — yam,,.,.. ,,,y,,,,y,,. -- r,-- .......
PRODUCT NAME
1:64 Matchbox Basics 2008 - El Segundo PD Crown Victoria
PROJECT #/TOY #
tbd - ESPD deco
LICENSOR
SENT BY /RETURN TO
DATE SUBMITTED DATE REQUESTED
El Segundo PD
Sheila Tan
8/16/07 ASAP
DIV. /DEPT. SUBMITTING
RSON SUBMITTING
PHONE NUMBER
FAX NUMBER
Matchbox Design
Peralda
1(310) 252 -6676
(310) 252 -2610
Q FIRST SUBMISSION ❑ SECOND SUBMISSION ❑ FINAL SUBMISSION ❑ OTHER
ITEM SUBMITTED:
❑ ONE -TO -ONE
❑ PACKAGING
❑ PROTOTYPE PHOTO
❑ ADVERTISING
❑ PATTERN
❑ CONCEPT
❑ FIRST SHOTS
❑ STORYBOARD /SCRIPT
[21 VEHICLE GRAPHICS
❑ PROTOTYPE
❑ PRODUCT REVISION
❑ OTHER
SPECIAL INSTRUCTIONS / COMMENTS I ITEM OR ISSUE SEEKING APPROVAL FOR:
TO BE COMPLETED BY THE LICENSOR
NEXT STEPS /LICENSOR COMMENTS (PLEASE INCLUDE SPECIFIC DETAILS, SUCH AS MEASUREMENTS, PACKAGE TEXT,
SKETCH, PHOTO, ETC.)
ACTION TAKEN:
APPROVED
LICENSOR NAME
Jeff Stew ity Manager
PHONE NUMBER
310 - 524 -2301
FAX NUMBER
310 - 322 -7137
APPROVED W/ CORRECTIONS
NOT APPROVED
OTHER
LICENSOR SIGNATU
G ZS
[1/
Approvals, disapprovals, co ts, tr notations hereon shall not imply that a binding agreement axis s with licensor.
FH11_11Rvz
MATTEL El Segundo, CA
DESIGNER: M.HERALDAx3770
SUPERVISOR: DAVE WEISE
E -mail: Heraldamomattel.com
Mail Stop: D1 -0142
Budget Center #1003.598.000.4160
lilt:
Date: 8/15/07
Toy#: M5330/M7405
Scale: 1:71
Tool* MB689
Scale: 1:1 Mattel Confidential / Trade Secret Information
VEHICLE: FORD CROWN VICTORIA (2001)
Licensor: FORMEL 8EGUNDO POLICE DEPARTMENT
BODY: Deep Black 0420 -70004
CHASSIS: Black
WINDSHIELD: Smoked Tint MB55
INTERIOR: GRAY MB62
WHEELS: 2006 Basic Classic Wheel #J2373 w/ NO HOTSTAMP FOIL
r♦ LIGHT BAR: RED
BLACK 742 -70509
WHITE 742 -70501
MET.GOLD
-
BLUE 742 - 245530
marcye�r.
MATTEL, INC.
LICENSOR APPROVAL FORM
I irononr rmmnlota vallnw hirrhlinhtPd nnrtinn_
RETURN PHYSICAL ITEMS (EXCEPT ARTWORK) TO:
FAX SIGNED FORMS TO:
374 6 . , . a
Mattel, Inc.
Hot Wheels Licensor Liaison
Mail Stop D1 -0124
333 Continental Blvd.
El Segundo, CA 90245 -5012
(310) 252 -2610
shei la.tanamattel.com
PRODUCT NAME
0 PACKAGING
PROJECT #/TOY #
1:64 Ford Crown Victoria
2001 /El Segundo Police Department -PKG
M5330
LICENSOR
❑ STORYBOARD /SCRIPT
SENT BY /RETURN TO
DATE SUBMITTED DATE REQUESTED
El Segundo Police Dept.
❑ OTHER
Sheila Tan
11/26/07 ASAP
DIV. /DEPT. SUBMITTING
NOT APPROVED
PERSON SUBMITTING
PHONE NUMBER
FAX NUMBER
Matchbox Design
Lunas
(310) 252 -6676
(310) 252 -2610
❑✓ FIRST SUBMISSION ❑ SECOND SUBMISSION ❑ FINAL SUBMISSION ❑ OTHER
ITEM SUBMITTED:
❑ ONE -TO -ONE
0 PACKAGING
❑ PROTOTYPE PHOTO
❑ ADVERTISING
❑ PATTERN
❑ CONCEPT
❑ FIRST SHOTS
❑ STORYBOARD /SCRIPT
❑ VEHICLE GRAPHICS
❑ PROTOTYPE
❑ PRODUCT REVISION
❑ OTHER
SPECIAL INSTRUCTIONS / COMMENTS / ITEM OR ISSUE SEEKING APPROVAL FOR:
Please approve packging
TO BE COMPLETED BY THE LICENSOR
NEXT STEPS /LICENSOR COMMENTS (PLEASE INCLUDE SPECIFIC DETAILS, SUCH AS MEASUREMENTS, PACKAGE TEXT,
SKETCH, PHOTO, ETC.)
A ON TAKEN:
LICENSOR NAME
PHONE NUMBER
FAX NUMBER
APPROVED
310.524.2301
APPROVED W/ CORRECTIONS
Je f f eW t
LICENSORS U
DATE
NOT APPROVED
OTHER
1-1
Approvals, disapprovomments, or notations hereon shall not imply that a binding agreement exists with licensor.
marcyeox.
MATTEL, INC.
LICENSOR APPROVAL FORM
1 iran.cnr r omnlatR vallnw hiahliahted Dortion.
RETURN PHYSICAL ITEMS (EXCEPT ARTWORK) TO:
FAX SIGNED FORMS TO:
37 4 6 . .�
Mattel, Inc.
Hot Wheels Licensor Liaison
Mail Stop D1 -0124
333 Continental Blvd.
El Segundo, CA 90246 -6012
(310) 262 -2610
kate.carlyle&rnattel.com
PRODUCT NAME
PROJECT #/TOY #
2008 Matchbox Basic Car poster
08 MBX Poster
LICENSOR
SENT BY /RETURN TO
DATE SUBMITTED DATE REQUESTED
El Segundo Police Department
Kate Carlyle
1/8/08 ASAP
DIV. /DEPT. SUBMITTING
PERSON SUBMITTING
PHONE NUMBER
FAX NUMBER
Matchbox Marketing
Shannon
(310) 252 -5177
(310) 252 -2610
P1 FIRST SUBMISSION ❑ SECOND SUBMISSION ❑ FINAL SUBMISSION ❑ OTHER
ITEM SUBMITTED:
❑ ONE -TO -ONE
❑ PACKAGING
❑ PROTOTYPE PHOTO
❑ ADVERTISING
❑ PATTERN
❑ CONCEPT
❑ FIRST SHOTS
❑ STORYBOARD /SCRIPT
❑ VEHICLE GRAPHICS
❑ PROTOTYPE
❑ PRODUCT REVISION
❑D OTHER Poster
SPECIAL INSTRUCTIONS / COMMENTS / ITEM OR ISSUE SEEKING APPROVAL FOR:
Please approve poster. The images and /or names on the poster will also be used in the Matchbox 2008 booklet,
and potentially Mattel internal and retail websites.
For your approval:
Segment Toy # Car Name
Emergency M5330 Ford Crown Victoria
Legal lines and logo as applicable
TO BE COMPLETED BY THE LICENSOR
NEXT STEPS /LICENSOR COMMENTS (PLEASE INCLUDE SPECIFIC DETAILS, SUCH AS MEASUREMENTS, PACKAGE TEXT,
SKETCH, PHOTO, ETC.)
AC 'VON TAKEN:
LICENSOR NAME
PHONE NUMBER
FAX NUMBER
APPROVED
Jeff Ste t, City Manager
310 - 524 -2301
310 - 322 -7 ±37
APPROVED W/ CORRECTIONS
LICENSOR SI
DATE
NOT APPROVED
OTHER
1 1�
Approvals, disapproval9, 6mments, or notations hereon shall not imply that a binding agreement ex* is with licensor.
FORD CROWN VICTORIA
�p �F
O
111 �� TI o F5 i F' m w
= m a w
00�� D
N fn
M m m y N W G n= d m
�T
°
a
o milli A
8' `N o
cc
N
s�� �r,� � mn •°- N g z
o
� cm
7� O
.n _v_..__....a...._
1
1 0 y �
CL H
a iG a
d y 0 m
1 ry 3 p 3
c
o h
H NG � j {
C-) ` -�rr*m m
r O 5 C2 C7
1 H O
� a �m r
t .zzr W W
13 w
F A a
n a
M. N a
tj
1 T NC t
1 m O
MEN&
T
r R%, 1�
-xii
(f�
m
m
D
r
D
d
C
m
c
m
i
Me"
I H7
m
r'n
X
m
:2
-C c )
tj
U�
wo:).xoqq:)Iew # auTTuo saint anpe xoqL4:)IeW ajow PuTi
iuO9:)%) joj fipwad aj.n0A 8003 UI
a,=
�1
7
EL
a
0
h
m
3
N
.+
n
Q
0
x
w
CL
c
m
r+
c
tn
0
3
r
0!
ni
n
Q
0
x
n
0
E