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Multimedia Development and Distribution Agreement1 |
This License Agreement ("Agreement") is entered into by and between MULTIMEDIA VENTURE, INC. ("Licensee"), a Delaware corporation with its principal place of business at Redwood Drive, Beverly Hills, California 90210 and MAJOR NATIONAL PUBLICATION, INC. ("Licensor"), a New York corporation with its principal place of business at East 85th Street, New York, New York 10005.
A. Licensor is in the business of compiling, developing, writing, and publishing information in printed and pictorial form.
B. Licensee is in the business of manufacturing, assembling, importing, and distributing products consisting of computer software and data.
C. Licensee desires to incorporate Licensor's information into its computer products.
D. Licensor wishes to provide its information to Licensee for such purpose.
NOW THEREFORE, Licensor and Licensee agree as follows:
1.1 The term "fixed" and "derivative works" as used herein shall have the meaning ascribed to them in Section 101 of the U.S. Copyright Act, 17 U.S.C. 101 et al.
1.2 "Code" shall mean any computer programs which operate in conjunction with the Product and cause the Product to function. A multimedia work can be thought of as comprising two components: 1) the works which it embodies, i.e., the Work; and 2) computer software used to manipulate the Work, i.e., Code.
1.3 "CD-ROM" shall mean a compact-disc, read-only platter, useable in the Apple Macintosh platform.
1.4 "CD-ROM Version" shall mean a copy of a Work, as defined herein, fixed on CD-ROM.
1.5 "Licensor Encyclopedia" shall mean the full text, tables, and photographs described in Exhibit A hereto [omitted].
1.6 "Net Revenue" shall mean gross revenues that Licensee is entitled to receive from sales; less credits, returns, shipping charges, sales taxes, and custom duties.
1.7 "Premium" shall mean an item given or offered for sale, with or without a directly identifiable purchase price, as an incentive for the recipient to enter into or consider entering into a transaction.
1.8 "Product" shall mean units of software and data which are manufactured, assembled, and distributed by Licensee and which incorporate CD-ROM Versions.
1.9 "Trademark" shall mean Licensor's trademark and logo "Licensor."
1.10 "Works" shall mean the Licensor's Encyclopedia and any other materials and information provided by Licensor to Licensee for use in creation of the Product.
Subject to the conditions set forth herein, Licensor grants to Licensee the following:
2.1 an exclusive, nontransferable license to convert unaltered copies of the Work into CD-ROM Versions;
2.2 an exclusive, nontransferable license to incorporate the CD-ROM Versions into Products;
2.3 an exclusive, nontransferable license to distribute Products to third-party distributors, retail establishments, original equipment manufacturers (OEMs), and directly to end-users; and
2.4 an exclusive, nontransferable license to use the Trademark in the promotion, sale, and distribution of the Products.
All other rights with respect to the Works, whether now existing or which may hereafter come into existence, which are not expressly granted to Licensee herein, including but not limited to print publication, electronic publication in all media and formats other than those addressed herein, and video, movie, and audio rights, are reserved to Licensor.
Licensee's rights hereunder will be worldwide.
Licensor has, or shall obtain, the rights and permissions necessary to use the Works as contemplated in this Agreement. Licensor shall provide to Licensee all attributions which must be included in the Products.
Licensee shall perform all conversions, design, and manufacturing associated with the manufacture, sale, and distribution of the Products.
7. Marketing and Promotion. Licensee shall use best efforts to promote sales of the Products.
8.1 Licensee hereby confirms that Licensor owns the entire title, right, and interest in and to the CD-ROM Versions, the Products, the audio-visual displays generated by the Products, and the user interfaces of the Products whether or not they constitute "works made for hire" as defined in 17 U.S.C. Section 201(b), including, without limitation, the copyrights thereto throughout the world together with any and all renewals and extensions thereof.
8.2 Licensee agrees to take all actions and cooperate as is necessary to protect Licensor's copyrights in the CD-ROM Versions, the Products, the audio-visual displays generated by the Products, and the user interfaces of the Products and further agrees to execute any documents that might be necessary to perfect Licensor's ownership of copyrights in such materials.
8.3 Licensee shall cause an appropriate copyright notice to appear in each copy of the Products (or such copyright notice as Licensor may specify or as may be required by third parties in connection with rights and permissions obtained by Licensor.)
9.1 Licensee shall not use or authorize the use of the Trademark in connection with the Products or the advertising and promotion thereof except in such manner as Licensor shall have approved in each instance.
9.2 Each Product shall bear the Trademark in its title as Licensor may in its discretion specify.
9.3 Licensee agrees that all use by Licensee of the Trademark shall inure to Licensor's benefit. In those countries where Licensor, in its sole opinion, deems it necessary, Licensee will be recorded as a registered user of the Trademark at Licensor's control and expense and Licensee will cooperate with Licensor to effect such recording.
9.4 In the event that Licensee learns of any infringement, threatened infringement, or passing-off of the Trademark, or that any third party claims or alleges that the Trademark is liable to cause deception or confusion to the public, Licensee shall notify Licensor giving particulars thereof, and Licensee shall provide necessary information and assistance to Licensor in the event that Licensor decides that proceedings should be commenced or defended. The Licensor shall have the sole right to commence an action against an infringer and such action shall be at its own cost and expense. Any recovery received by Licensor as a result of such action shall be retained solely by the Licensor.
10.1 Licensee acknowledges that if the Products manufactured, distributed, or sold by it are of inferior quality in image, design, material, or workmanship, the substantial good will which Licensor has built and now possesses in the Works and in the Trademark will be impaired. For those reasons, and to protect all rights in and to the Works which Licensor has now or may in the future acquire, Licensor will have the full and final right of written approval, not to be unreasonably withheld, concerning Licensee's use of the Works and the manufacture, distribution, and sale of the Products produced pursuant to this Agreement.
10.2 Licensee, prior to the manufacture, distribution, and sale of the Products, will submit to Licensor for its written approval two samples of each of the Products. Licensor shall exercise its rights of approval in its sole discretion, and Licensee acknowledges and agrees that Licensor will have final editorial control over the Products and their contents. Licensee shall, thereafter, at least once during each year during the Term of this Agreement provide Licensor with samples of the Products for approval.
The price or prices at which the Products are offered for sale shall be determined by Licensee in consultation with Licensor.
Royalties will be paid for each Product which is distributed through retail channels. The royalty shall be [ ] percent ( %) of Net Revenue for each Product shipped.
Royalties will be paid for each Product sold directly to end-user customers. The royalty shall be [ ] percent ( %) of Net Revenue for each Product shipped.
Royalties will be paid for each Product which is distributed as a Premium. The royalty for Premiums shall be [ ] dollars ($ ) for each Product shipped.
Royalties shall not be paid on any copies of Products which are returned, or furnished free of charge for promotion, display, or similar purposes.
Licensee shall pay to Licensor as a nonrefundable advance against royalties with regard to the sales of Products [ ] dollars ($ ) to be paid to Licensor by Licensee upon the first shipment of Products. Royalties earned after this payment for the sale of Products shall first be applied against this advance and thereafter paid to Licensor.
14.1 Licensee shall keep accurate records of all transactions relating to the Products. Such records shall clearly and separately set forth all relevant information by Product type; including, without limitation, the number of units shipped and the number of units furnished free of charge for promotion.
14.2 Licensee shall allow Licensor or its agent or agents, upon five (5) days' written notice, to inspect, audit, and analyze all of Licensee's records as described herein.
This Agreement shall continue in force for two (2) years from the date hereof (the "Initial Term").
16.1 Licensor represents and warrants to Licensee that Licensor has the full right, power, and authority to enter into this Agreement, and to grant the rights granted to Licensee hereunder.
16.2 Licensee warrants and represents that: (1) the Products shall not contain any libelous material;
(2) the Code and any user interfaces which it generates shall be of the highest quality; and
(3) the Code shall not infringe any trademark, copyright, patent, trade secret, or any other intellectual property right of any third party.
16.3 THE WARRANTIES STATED ABOVE ARE LIMITED WARRANTIES AND THE ONLY WARRANTIES MADE BY THE PARTIES. BOTH PARTIES WAIVE ALL OTHER WARRANTIES, EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED TO IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE.
16.4 Licensor shall indemnify Licensee and hold it harmless from any and all claims, losses, deficiencies, damages, liabilities, costs, and expenses (including but not limited to reasonable attorney fees and all related costs and expenses) incurred by Licensee as a result of any claim, judgment, or adjudication against Licensee in which it is alleged that the duplication or distribution of the Licensor Encyclopedia provided by Licensor hereunder infringes any trademark, copyright, right of publicity, trade secret, or any other intellectual property right of any third party, provided that Licensee (a) promptly notifies Licensor in writing of any such claim and gives Licensor the opportunity to defend or settle any such claim at Licensor's expense and (b) cooperates with Licensor, at Licensor's expense, in defending or settling such claim.
16.5 Licensee shall indemnify Licensor and hold it harmless from any and all claims, losses, deficiencies, damages, liabilities, costs, and expenses (including but not limited to reasonable attorney fees and all related costs and expenses) incurred by Licensor as a result of any claim, judgment, or adjudication against Licensor arising from (i) any breach or allegation which, if true, would constitute a breach of any of Licensee's obligations hereunder; (ii) the actions or omissions of Licensee, its officers, directors, employees, agents, or assigns in connection with the exercise of their rights hereunder; (iii) any modifications to the Licensor Encyclopedia by Licensee (other than modifications approved by Licensor); (iv) an allegation that the Code infringes any trademark, copyright, right of publicity, trade secret, or any other intellectual property right of any third party; (v) any allegation based on the failure of the Product or on injury, death, or damage caused by such Product; or (vi) any representation or warranty made by Licensee in connection with this Agreement or the marketing or distribution of the Products, provided that Licensor (a) promptly notifies Licensee in writing of any such claim and gives Licensee the opportunity to defend or settle any such claim at Licensee's expense and (b) cooperates with Licensee, at Licensee's expense, in defending or settling such claim.
Licensee agrees it will provide to any customers to whom it distributes the Products written notice that Licensee will provide customer service and end-user support, and Licensee agrees to provide service in response to any customer questions arising from the use of the Products. Notwithstanding the foregoing, Licensee shall refer all customer calls related to the content of the Works to Licensor.
With the exception of indemnification obligations, or a breach of the provisions of the Trademark restrictions herein, neither party shall in any circumstances be liable for any loss of business or profits, or for any consequential, incidental, punitive, or similar damages, or, other than as set forth herein, for the claims of damages made by any third party for any cause whatsoever, regardless of the form of action, whether in contract or in tort, including negligence, even if it has been advised of the possibility of such damages.
Should either party materially breach any terms or conditions of this Agreement, in addition to all other legal rights and remedies available to the nonbreaching party, the nonbreaching party may terminate this Agreement after thirty (30) days' written notice of said breach has been delivered to the breaching party, unless said breach will have been remedied within said thirty (30) days. In the event of Licensor's termination of the Agreement based on Licensee's breach, in addition to any other rights and remedies available to Licensor, Licensor shall be entitled to keep all advances paid hereunder.
Upon expiration of, or termination of, this Agreement for any reason, Licensee shall return all copies of the Works in all media, and shall erase or destroy any Work or portion thereof contained in all types of computer memory, and so warrant in writing to Licensor within thirty (30) days of termination or expiration of this Agreement. Notwithstanding the foregoing, in the event of a termination of this Agreement prior to expiration for a reason other than Licensee's nonpayments under this Agreement, Licensee may distribute Products in its possession at termination for a period of thirty (30) days, and shall pay royalties for such distribution as provided herein.
Neither termination of this Agreement nor waiver of any right to terminate under this Agreement shall impair or limit any additional rights or remedies that either Licensor or Licensee may have at law or in equity.
Either party may terminate this Agreement, effective immediately upon written notice, if (1) all or a substantial portion of the assets of the other party are transferred to an assignee for the benefit of creditors, to a receiver, or to a trustee in bankruptcy; (2) a proceeding is commenced by or against the other party for relief under bankruptcy or similar laws and such proceeding is not dismissed within sixty (60) days; or (3) the other party is adjudged bankrupt or insolvent. Upon such termination by either party, all rights granted to Licensee herein shall terminate.
This Agreement shall be governed by the laws of the State of New York, and any action taken by either party resulting from a dispute regarding the terms of this Agreement shall be heard exclusively in the federal or state courts located in New York City.
Licensee acknowledges and agrees that Licensee is an independent contractor, and is not an employee, agent, or partner of Licensor.
This Agreement shall be binding upon and inure to the benefit of the successors and permitted assigns of the parties hereto. Neither party may assign any of its rights or delegate any of its obligations under this Agreement to any third party without the express written consent of the other. Consent for Licensor's assignment shall not be unreasonably withheld.
This Agreement constitutes the entire understanding of the parties as to the matters set forth herein. No modification of this Agreement shall be valid or binding unless executed in writing by each of the parties on or after the date hereof.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement as of the date hereof.
LICENSOR
By:
Title:
LICENSEE
By:
Title:
1 From Multimedia and Technology Licensing Law Report, vol. 1, no. 3 (July 1994).
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Last updated: August 31, 2001