CM-08-12-283LICENSE AGREEMENT
THIS AGREEMENT (the "Agreement") is made and entered into as of the 1st day of January,
2009 (the "Effective Date") by and between the City of Round Rock, TX, having its principal office at
221 E. Main Street, Round Rock, TX 78664 (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, MAI"1'EL 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 MA FI'EL'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 Round Rock Fire
Department and Round Rock 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 replica vehicles (motorized or non -motorized), 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.
2. This Agreement shall become effective on the date first written above and shall continue
in effect for a term expiring on December 31, 2011. 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.
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4. In the event that MATTEL does manufacture LICENSED PRODUCTS, then, in full
consideration for the rights granted to MA 1TEL hereunder, MATTEL agrees to furnish LICENSOR
with fifty (50) 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 MA 1-1"EL'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 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. LICENSOR shall have the right to purchase additional
quantities of the LICENSED PRODUCTS from MATTEL for LICENSOR'S promotional purposes
and not for resale, subject to availability and MA FILL'S minimum order quantity. The purchase price
will be MATTEL'S regular wholesale price, shipping and handling to be paid by LICENSOR.
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
any default of this Agreement by its subsidiaries shall be deemed a default by MATTEL hereunder.
and
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.
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.
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11. MA 11'EL 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. MA 1-1'EL 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.
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. The parties agree that signed
copies of this Agreement may be sent via facsimile or scanned email attachments in lieu of originals.
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IN WITNESS WHEREOF, the parties hereto have executed this Agreement as of the day and
year first written above.
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MATTEL, INC.
CITY OF ROUND ROCK, TX
By: I. .1''I �:
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Print Name. . Affray k Korchek
iirs R. Nuse, P.E., City Manager
Date: f 1; 2C4
VP, Legal & Business Affairs
Title:
Date: "eC-F',nkb W /6,
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DATE:
SUBJECT:
ITEM:
Department:
Staff Person:
Justification:
December 4, 2008
City Manager Approval — December 12, 2008
Consider executing a License Agreement with Mattel, Inc. authorizing the use of
Police and Fire seals/logos for a line of toy cars.
Administration
Will Hampton, Communication Director
Mattel, Inc. has contacted the City of Round Rock about a partnership with the Round Rock Police
Department and Round Rock Fire Department for the use of the City's official insignia in conjunction
with Mattel's Hot Wheels® branded 'Cop Rods' and 'Fire Rods' series of collectible die-cast cars.
Funding:
Cost: NA
Source of funds: NA
Outside Resources: Mattel, Inc.
Background Information:
Targeted primarily to boys ages 3-9 worldwide, the Hot Wheels® line is divided into a number of
collectible series, each featuring a specific theme, additionally each theme is only available for a short
window of time. Mattel is planning to introduce a 'Cop Rods' and 'Fire Rods' series to the 2009 line,
these will feature authentic police and fire emblems on the hot rod and muscle car replicas.
Public Comment: N/A