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EXCLUSIVE LICENSE AGREEMENT BETWEEN MVL RIGHTS LLC AND MARVEL CHARACTERS, INC.

License Agreement

EXCLUSIVE LICENSE  AGREEMENT BETWEEN MVL RIGHTS LLC AND MARVEL CHARACTERS, INC. | Document Parties: MARVEL ENTERPRISES INC | MVL RIGHTS LLC | Marvel Characters, Inc., You are currently viewing:
This License Agreement involves

MARVEL ENTERPRISES INC | MVL RIGHTS LLC | Marvel Characters, Inc.,

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Title: EXCLUSIVE LICENSE AGREEMENT BETWEEN MVL RIGHTS LLC AND MARVEL CHARACTERS, INC.
Governing Law: New York     Date: 9/6/2005
Industry: Recreational Products     Sector: Consumer Cyclical

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Exhibit 10.6

 

 

EXCLUSIVE LICENSE  

AGREEMENT BETWEEN MVL RIGHTS LLC

AND MARVEL CHARACTERS, INC.

This EXCLUSIVE LICENSE AGREEMENT (“ Agreement ”) is made and entered into as of August 31, 2005 (“ Effective Date ”) by and between MVL Rights LLC, a Delaware limited liability company (“ MRI ”) and Marvel Characters, Inc., a Delaware corporation (“ MCI ”).

WHEREAS, MVL Film Finance LLC (“ MVL ”) entered into the Credit Agreement (as defined below) pursuant to which the Lenders thereto and as defined therein have made available to MVL a film finance credit facility to fund the production of a slate of theatrical motion pictures to be developed and produced by MVL Productions LLC (“ MPROD ”), a wholly-owned subsidiary of Marvel Studios, Inc. (“ MSI ”); and

WHEREAS, as a condition to entering into the Credit Agreement, MCI has created MRI as a wholly-owned bankruptcy-remote special-purpose subsidiary and has contributed to the capital of MRI the Trademarks (as defined below) pursuant to the MCI Assignment Agreement (as defined below); and

WHEREAS, pursuant to the MCI Assignment Agreement, MCI has assigned to MRI as consideration for this Agreement the Copyrights, Domain Names and certain other rights, benefits and privileges pertaining to the Property (as defined below); and

WHEREAS, MRI wishes to grant, license, convey and transfer to MCI the MRI Granted Rights (as defined below); and

WHEREAS, MCI wishes to accept such grant and license from MRI and to assume certain obligations of MRI all as more fully set forth below;

NOW, THEREFORE, for good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged by each of the parties hereto, the parties hereby agree as follows:

1.            DEFINED TERMS . When used in this Agreement, the following terms shall have the following definitions:

1.1             The following terms shall have the meaning set forth in the MVL License Agreement:

Approval Rights

Back End Service Fee

Co-Promotion/Commercial Tie-In Rights

Co-Promotion/Commercial Tie-In Period

 

Consultation Right

Distribution Rights

Fixed Service Fee

Governmental Body

Literary Publishing Rights

 

 

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Marketing Rights

Merchandising Rights

MVL Granted Rights

Marvel Handbook

MRI Family Co-Promotions/ Commercial Tie-In

Musical Composition

Music Publishing Rights

Music Rights

 

New Characters

Picture

Picture Related or Picture-Related Item

Publishing Rights

Reserved Rights

Rights

Soundtrack

Soundtrack Recording Rights

 

1.2              The following terms shall have the meaning set forth in the MCI Assignment Agreement:

 

Copyright(s)

 

 

Character Title(s)

 

 

Domain Name(s)

 

 

Encumbrance

 

 

Intellectual Property Rights

 

Laws

 

 

Main Character(s)

 

 

MCI Agreement

 

 

Minor Character(s)

 

 

Subsidiary Character(s)

 

 

Trademarks

 

 

 

 

 

 

 

 

 

 

 

 

 

1.3             “ Credit Agreement ” means that certain Credit and Security Agreement of even date herewith among MVL, as Borrower, the financial institutions and conduit lenders party thereto from time to time, as Lenders, General Electric Capital Corporation, as Administrative Agent, and HSBC Bank USA, National Association as Collateral Agent, as the same may be from time to time amended, supplemented or otherwise modified.

1.4             “ Derivative Work ” shall have the meaning as set forth in 17 USC Section 101 (the Copyright Act).

 

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1.5             “ Master Agreement ” means that certain Master Development and Distribution Agreement between MVL, MSI and MPROD, of even date herewith as the same may be amended, supplemented or modified by agreement of the parties thereto.

1.6             “ MCI Assignment Agreement ” means that certain Assignment Agreement of even date herewith between MCI and MRI.

1.7             “ MVL License Agreement ” means that certain Exclusive Cross License Agreement of even date herewith between MRI and MVL.

 

1.8

Permitted Lien ” shall have the meaning set forth in the Master Agreement.

2.             CONDITION PRECEDENT . All of the rights and obligations of MRI and MCI contained herein are expressly conditioned on and subject to the satisfaction, in the reasonable opinion of MRI, of the full execution of (a) the MCI Assignment Agreement and (b) the MVL License Agreement (collectively the “ Condition Precedent ”).

3.

MRI - MCI GRANT OF RIGHTS .

3.1              Exclusive License of Copyright and Domain Names . Subject to the satisfaction or waiver of the Condition Precedent set forth in Section 2 above, and subject to and except as to the license of rights under copyright granted to MVL pursuant to the MVL License Agreement, MRI hereby grants, transfers, and conveys to MCI an exclusive, perpetual, irrevocable, transferable (including without limitation sub-licensable), worldwide fully paid-up license to all of MRI’s rights, title and interests in and to the Copyrights and Domain Names.

 

3.2

Exclusive License of Trademarks .

3.2.1       Grant . Subject to the satisfaction or waiver of the Condition Precedent set forth in Section 2 above, and subject to and except as to the license under Trademarks granted to MVL pursuant to the MVL License Agreement, MRI hereby grants, transfers and conveys to MCI an exclusive, perpetual, irrevocable, transferable (including without limitation sub-licensable), worldwide fully paid-up license to use and exploit in any manner the Trademarks.

3.2.2       Protection of Trademarks . MCI’s use of the Trademarks as permitted hereunder shall at all times be in a manner so as to protect the goodwill associated with such Trademarks and in a manner consistent with the high quality standards for such Trademarks heretofore maintained and in no event in a manner less than as reflected in the Marvel Handbook. MCI (as a licensee) acknowledges that the use and exploitation of the licensed rights in and to the Trademarks must be continuously supervised, managed and maintained under applicable Laws and under standards set by owners of the applicable trademarks, and they shall supervise, manage and maintain such in accordance with applicable Law and such standards. MCI shall require its licensees to be bound by terms no less restrictive than those set forth in this Section 3.2.2 .

3.3              Grant of Rights . In addition to and without limiting the grants and licenses set forth in Section 3.1 and 3.2 and subject to the satisfaction or waiver of the Condition Precedent set forth in Section 2 above and further subject to the terms and conditions of this Agreement, MRI hereby grants and licenses to MCI the following rights (collectively with the exclusive license in Section 3.1 and the exclusive license in Section 3.2 , the “ MRI Granted Rights ”):

 

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3.3.1      The MVL Granted Rights, on an exclusive, worldwide, transferable (including without limitation sub-licensable), irrevocable, fully paid-up and perpetual basis;

3.3.2      The Reserved Rights, on an exclusive, worldwide, transferable (including without limitation sub-licensable), irrevocable, fully paid-up and perpetual basis;

3.3.3      The Co-Promotion/Commercial Tie-In Rights, in accordance with Section 8 of the MVL License Agreement on an exclusive, worldwide, transferable, (including without limitation sub-licensable), irrevocable, fully paid-up and perpetual basis;

3.3.4      The right to conduct co-promotions/commercial tie-ins that do not include a Picture on an exclusive, worldwide, transferable (including without limitation sub-licensable), irrevocable, fully paid-up and perpetual basis;

3.3.5      MRI Family Co-Promotions/Commercial Tie-Ins rights, on an exclusive, worldwide, transferable (including without limitation sub-licensable), irrevocable, fully paid-up and perpetual basis;

3.3.6      The Copyright Revenue Rights, with respect to the MVL Granted Rights, on an exclusive, transferable (including without limitation sub-licensable), irrevocable, fully paid-up and perpetual basis;

3.3.7      The exclusive, perpetual, worldwide, transferable (including without limitation sub-licensable), irrevocable, fully paid-up right to (or to cause the) use, exploit, license, sublicense, distribute, sub-distribute, make derivative works of, using or incorporating, market, advertise or promote, modify, alter, edit, the Property and the Intellectual Property Rights or any portion thereof subject only to the grant of the Rights set forth in the MVL License Agreement. For the avoidance of doubt, other than the Rights licensed to MVL pursuant to the MVL License Agreement, all other rights, title and interest in and to the Property and Intellectual Property Rights is hereby exclusively granted and conveyed to MCI (for example, MCI shall have the right to create direct-to-video motion pictures or a television series based on the Property);

3.3.8      The exclusive, perpetual, transferable (including without limitation sub-licensable), irrevocable, fully paid-up right to carry out, exercise and administer on behalf of MRI the (a) Consultation Rights and Approval Rights subject to and in accordance with the terms of Section 9 of the MVL License Agreement and (b) the agreement with talent terms as set forth in Section 10 of the MVL License Agreement; and

3.3.9      The non-exclusive, perpetual, irrevocable, fully paid-up, transferable (including without limitation sub-licensable), worldwide right to use and otherwise exploit in any manner (at MCI’s sole expense) stills and/or clips, not exceeding five (5) minutes in running time, from each Picture and/or from any marketing materials related to each Picture for any purpose including without limitation in connection with general corporate or institutional uses by MCI and/or its affiliates (e.g., trade shows, financial prospectuses, annual reports and/or meetings with shareholders or investment analysts).

 

 

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4.

ASSIGNMENT OF MCI AGREEMENTS / SERVICE FEE .

4.1          MCI Agreements . As further consideration for the grant of the MRI Granted Rights, MRI hereby grants, transfers, conveys and assigns to MCI and MCI hereby expressly accepts and does assume all of MRI’s obligations, duties and responsibilities set forth in each MCI Agreement and agrees to be bound by and to perform pursuant to the terms of each MCI Agreement.

4.2          Service Fee . In consideration of MCI’s exercise of the Consultation Rights and Approval Rights and for other consideration the receipt and sufficiency of which are hereby acknowledged, MRI hereby grants, transfers, conveys and forever assigns to MCI all of its right, title and interest in and to the Fixed Service Fee and Back-End Service Fee.

5.             OWNERSHIP OF INTELLECTUAL PROPERTY . MCI or its licensees, pursuant to the terms of the license agreement with such licensee, will solely own the copyright and all other rights in and to each Derivative Work (and all items or properties of any kind or nature) authored, produced or created by or for MCI, whether created as a work-made-for-hire or licensed or assigned to MCI, based on or otherwise using or incorporating in whole or in part the Property and/or the MRI Granted Rights. MCI shall have the right to register in its name any copyright or trademark in and to such Derivative Work. The first sentence of this Section 5 shall not apply to Derivative Works created by or for MVL pursuant to its exercise of the Rights in accordance with the terms of the MVL License Agreement.

6.

PROTECTION OF COPYRIGHTS AND TRADEMARKS .

6.1              Generally . Any permitted use of the Property by MCI pursuant to this Agreement shall be with all notice(s) of copyright and trademark, as may be required, to afford to the Property or derivative work based in whole or in part on the Property copyright and trademark protection in the United States and all countries adhering to the Berne Convention, the Pan American Copyright Convention and the Universal Copyright Convention. In connection with the exploitation by MCI of the MRI Granted Rights, MCI will (a) do all acts reasonably necessary to register, preserve and protect the Trademarks which form part of the Property, (b) all acts reasonably necessary to prevent the Trademarks from falling into the public domain, and (c) secure on each Derivative Work based in whole or in part on the Property the appropriate copyright and trademark notifications with respect to the Property, it being understood that MCI shall be the registered owner of all copyrights, registered or unregistered, in and to such Derivative Work.

6.2               Control of Prosecution and Maintenance . With respect to each Derivative Work based on the MRI Granted Rights, MCI hereby agrees to file all applications for, prosecution of, maintenance of, and payment of prosecution and maintenance fees on all copyrights in each Derivative Work based on the MRI Granted Rights, and MCI shall retain control of and authority governing all decisions pertaining to such applications, prosecution and maintenance, including but not limited to the preparation and filing of applications, responses to office actions, maintenance applications and supporting documents, payment of issue fees, prosecution fees, maintenance fees, or annuities, and abandonment of applications or registrations except as otherwise provided hereunder. MRI shall reasonably cooperate with MCI, at MRI’s expense, in the application for, prosecution of and maintenance of all such copyrights and trademarks, such cooperation including but not limited to the prompt execution of any documents reasonably required by MCI in the course of such application, prosecution or maintenance.

 

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6.3               Failure to Maintain . In the event that MCI decides to abandon or not renew, or fails to pay fees for, or otherwise fails to maintain a copyright or trademark registration or application existing as of the date hereof that is pertinent to the Rights, and in any case prior to allowing any such copyright or trademark registration or application in any country or territory to lapse or otherwise become abandoned, MCI shall first and before allowing any such item to become prejudiced, obtain the advice and consent of MRI, and subject to any licenses that MCI has granted to any third party, shall offer to allow MRI to assume the prosecution and/or maintenance of such registration or application under MCI’s name. If MCI fails to perform its obligations under this Section 6.3 , then MRI may perform such obligations on MCI’s behalf, pursuant to the power of attorney granted to MRI under Section 6.5 below. If MRI assumes control of any prosecution or maintenance on behalf of MCI under this Section, MRI may deduct its costs and expenses in connection therewith from any amounts otherwise owed to MCI hereunder.

6.4              Enforcement of Rights . MCI shall have the right to enforce its rights and remedies with respect to the MRI Granted Rights in its own name and in the name of MRI. In MCI’s sole judgment, MCI may join MRI as a party plaintiff or defendant in any action or proceeding relating to the MRI Granted Rights, and MRI agrees not to contest any such action by MCI. MCI agrees to notify MRI in each instance where it elects not to enforce any of its rights or remedies with respect to the MRI Granted Rights where such right or remedy if not pursued would be reasonably likely to impair the Rights, and shall before allowing any such right, remedy or cause of action to become prejudiced obtain the advice and consent of MRI, and subject to any licenses that MCI has granted to any third party, shall offer to allow MRI to assume the cause of action under MCI’s name. If within ten (10) business days after receipt of written notice from MRI, MCI neither commences such enforcement nor notifies MRI of its election not to commence such enforcement, then MRI shall be entitled to assume the cause of action under MCI’s name subject to (i) MCI approving the counsel selected by MRI, and (ii) MCI approving in advance the terms of any settlement in connection with such action that imposes on MCI any financial, or legal liability or that in any way detracts or derogates from, alters or adversely impacts the rights granted to MCI hereunder. All damages, penalties, settlements and profits relating to or arising from any interference with or infringement of any of the MRI Granted Rights are hereby assigned to MCI and shall be retained by MCI unless MRI brings in the name of MCI the action giving rise to such, in which event MRI may withhold from any such sum its actual out-of-pocket costs incurred in connection therewith. Each party shall reasonably cooperate with the other, at each party’s own expense, in connection with any suit or action threatened or instituted by or against MCI or MRI relating to any MRI Granted Rights other than any action for which such party would be entitled to seek indemnification from the other party in which event the terms of Section 9 shall apply.

6.5               Further Documents . Upon the complete signature hereof, MRI shall execute, acknowledge and deliver to MCI the Exclusive Short Form Copyright License attached hereto as Exhibit A and the Exclusive Short Form Trademark License attached hereto as Exhibit B . MRI agrees to duly execute, acknowledge and deliver, or cause to be duly executed, acknowledged and delivered, to MCI any and all other copyright, trademark or other instruments consistent with the terms hereof or to take any action that may be necessary, proper or expedient in the reasonable opinion of MCI (using its reasonable business judgment) to evidence or record or give constructive notice of MCI’s MRI Granted Rights, or otherwise carry out and effectuate the purposes and intent of this Agreement. MRI also agrees to duly execute, acknowledge and deliver, or cause to be duly executed, acknowledged and delivered, to MCI any and all security instruments (including Mortgages of Copyright, UCC-l’s or other documents of any nature) consistent with the terms

 

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