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
Bagshaw Hall, Bagshaw Hill,
Bakewell, Derbyshire DE45 1DL, England, and PEAK
ENTERTAINMENT LTD., with an
address at Bagshaw Hall, Bagshaw Hill, Bakewell,
Derbyshire DE45 1DL,
England,, (together, "Peak") and MORRISON ENTERTAINMENT
GROUP, INC. ("MEG"), with an
address at 1334 Parkview Avenue, Suite 300,
Manhattan Beach, California
90266, 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 Mrs. Wilfred
Shorrocks
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 86-88 Combe Road,
New Malden, Surrey, KT3 4QS, England.
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.
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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 mark
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.
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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
"www.peakentertainment.co.uk." 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 mark 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.
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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
th
