HomeMy WebLinkAboutContract 40156CITY SECRETARY � � �
CONTRACT NO, E1 Co
MATTEL, INC. -CONFIDENTIAL
LICENSE AGREEMENT
THIS LICENSE AGREEMENT (the "Agreement") is made and entered into as of the 1 st day
of February, 2010 (the "Effective Date") by and between the City of Fort Worth, TX, having its
principal office at 1000 Throckmorton Street, Fort Worth, TX 76102 (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, CA 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, 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. Grant of Rights. Licensor hereby grants to Licensee anon -exclusive royalty -free
worldwide license to use the trademarks, tradenames, copyrights, designs, emblems, official insignia,
logos and likenesses including names, accessories, paint schemes and other visual or identifying
representations associated with the rescue vehicles of the Fort Worth, TX Fire 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 replicas (motorized or non -motorized),
battery -powered ride-ons, related play sets and accessories (hereinafter referred to as the "Licensed
Products"). 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. Licensee will
make commercially reasonable efforts to maintain the goodwill of Licensor, and will not knowingly
permit, do or commit any act or thing that would degrade, tarnish, deprecate or disparage the image of
Licensor in society or standing in the community, and Licensee will terminate such activities
immediately upon notice by Licensor. 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
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OFFICIAL REC®RD
CITY SECRETARY
FT WORTH, TX I
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MAT I EL, INC. - CONFIDENTIAL
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, 2013. Both parties shall have the option to
renew this Agreement for two additional one-year periods, by written notice given to the other party at
least sixty (60) days prior to the expiration of the then current term. 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.
3. Approvals. 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) 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 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 Licenser'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 one hundred (100) units of each of such Licensed Products 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
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202759.1
MAT I EL, INC. - CONFIDENTIAL
have no duty to manufacture and/or sell any Licensed Products or to otherwise exploit the rights
granted herein.
6. Ownership. 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 Licensed
Products. Licensee shall own all intellectual property rights embodied in the Licensed Products
excluding the Licensed Property.
7. Representations and Warranties; Indemnity. 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. 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 parry 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 parry claims.
8. Termination and Effect of Termination. 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. Assignment. 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. Severability. 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 Texas.
13. Entire Agreement. This Agreement represents and expresses the entire agreement of the
parties and supersedes all prior agreements, representations and understandings (whether written or
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MATTEL, INC. -CONFIDENTIAL
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.
14. Counterparts, 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.
MATTEL, INC.
By:
Name: Jeffrey Korchek
Title: VP, Legal &Business Affairs
ao2�s9.i
CITY OF FORT WORTH, TX
By:
Name: TO►�►'1 1-���� i n
Title, A :5:5 ►; tot(II �y
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Co�itraoi. Auth.oxfa�tfo�
Date -
OFFICIAL RECORD
CITY SECRETARY
ET. WORTH, TX
Page 1 of 1
City of Fort Worth, Texas
Mayor and Council C
:7 iiTi i�
unication
COUNCIL ACTION: Approved on 4/20/2010
DATE: Tuesday, April 20, 2010
LOG NAME: 36MATTEL
REFERENCE NO.: **C-24186
SUBJECT:
Authorize the Execution of a License Agreement with Mattel, Inc., for the Use of the Fort Worth Fire
Department's Official Insignia in the Manufacturing and Distribution of Products
RECOMMENDATION:
It is recommended that the City Council authorize the City Manager to execute a license agreement with
Mattel, Inc., for the use of the Fort Worth Fire Department's emblem's, official insignia and logos in the
manufacturing and distribution of Mattel's products.
DISCUSSION:
The proposed license agreement allows Mattel the non-exclusive royalty -free worldwide license to use the
trademarks, tradenames, copyrights, designs, emblems, official insignia, logos and likenesses including
names, accessories, paint schemes and other visual or identifying representations associated with the
rescue vehicles of the Fort Worth Fire Department in conjunction with the manufacture, marketing,
distribution, promotion and sale of various scaled die-cast and/or plastic toy replicas (motorized or non -
motorized), battery -powered ride-ons, related play sets and accessories.
The term of this agreement begins February 1, 2010 and expires on December 31, 2013. Either party may
terminate the agreement upon a 60-day written notice given to the other party. Mattel agrees to make
commercially reasonable efforts to maintain the goodwill of the City of Fort Worth in all its activities. The
City will receive 100 toy replica fire trucks as consideration for this license as is customary for cities that
license first responder insignia to Mattel.
FISCAL INFORMATION /CERTIFICATION:
The Financial Management Services Director certifies that this action will have no material effect on City
funds.
FUND CENTERS:
TO Fund/Account/Centers
CERTIFICATIONS:
Submitted for City Manag_er's Office by;
Originating, Department Head:
Additional Information Contact:
ATTACHMENTS
1. 36Mattel License Agreement.pdf (Public)
FROM Fund/Account/Centers
Tom Higgins (6192)
Rudy Jackson (6805)
Rudy Jackson (6805)
http://apps.cfvmet.org/ecouncil/printmc.asp?id=13350&print=true&DocType=Print 4/26/2010