TRADEMARK LICENSE AGREEMENT
THIS TRADEMARK LICENSE AGREEMENT (this "Agreement") is made
and entered into as of this 20th day of August, 1996, by and between
Broadway Video, Inc., a New York corporation ("BVI"), and Broadway
Video Entertainment, L.P., a New York limited partnership ("BVEL," and
together with BVI, "Licensors"), on the one hand, and Golden Books
Publishing Company, Inc., a Delaware corporation ("GBPCI"), and LRM
Acquisition Corp., a Delaware corporation ("LRM Acquisition," and
together with GBPCI, "Licensees," and each of them a "Licensee"), on
the other hand, in accordance with the terms and conditions of that
certain Asset Purchase Agreement dated as of July 30, 1996, as amended
(the "Asset Purchase Agreement"), by and among BVEL, Broadway Video
Enterprises, Inc., a New York corporation ("BVE"), Lone Ranger Music,
Inc., a New York corporation ("LRM") and Palladium Limited Partnership,
a New York limited partnership ("Palladium," and together with BVEL,
BVE and LRM, the "Sellers," and each of them a "Seller") on the one
hand, and Golden Books Family Entertainment, Inc., a Delaware
corporation ("Parent"), GBPCI as assignee of Golden Books Productions,
Inc., and LRM Acquisition, on the other hand, with reference to the
following facts and circumstances (capitalized terms not otherwise
defined herein shall have the meaning ascribed to them in the Asset
A. The Sellers are selling the Assets to Licensees, and
Licensees are assuming the Obligations, pursuant to the Asset Purchase
Agreement. The Asset Purchase Agreement provides that Licensors and
Licensees shall enter into this Agreement.
B. BVEL owns the trade name BROADWAY VIDEO ENTERTAINMENT, L.P.
(the "Trade Name") and BVI owns the trademarks BROADWAY COMICS and
BROADWAY COMICS & design (collectively, the "Comics Trademarks") and
the trademarks BROADWAY VIDEO and BROADWAY VIDEO & design
(collectively, the "Video Trademarks"), and the associated applications
and registrations for such trademarks in the United States and Canada
as set forth on Exhibit A hereto, for use in connection with a variety
of media goods and services, including, without limitation, comic books
C. Licensees desire to acquire a license to the Comics
Trademarks, the Video Trademarks and the Trade Name (collectively, the
"Marks") for the specific purposes set forth herein, and Licensors are
willing to grant Licensees a license for such specific purposes.
NOW THEREFORE, for good and valuable consideration, the
receipt and sufficiency of which are hereby acknowledged, the parties
hereto hereby agree as follows:
1. Grant of License. Licensors hereby grant to Licensees for
the "Term" (as defined below) of this Agreement a, nontransferable,
royalty-free license (i) to use the Comics Trademarks solely and only
upon and in connection with the sale or other disposition of new
editions of the comic book titles of Sellers existing on the date hereof
are produced by Licensees within one year of the date hereof (the "New
Comic Books") and comic book inventory of Sellers' existing on the date
hereof ("Existing Comic Books," and together with the New Comic Books,
the "Comic Books"), and (ii) to use the Trade Name and the Video
Trademarks solely and only upon and in connection with the sale or
other disposition of the Physical Materials of BVEL existing on the
date hereof (the "Existing Physical Materials"). The license granted
hereby shall be exclusive for the purposes set forth in clauses (i) and
(ii) in the preceding sentence.
2. Acknowledgment of Ownership. Each Licensee acknowledges the
sole and exclusive ownership of the Marks in Licensors, and agrees that
it will do nothing inconsistent with such ownership. Each Licensee
agrees that nothing in the Asset Purchase Agreement shall give such
Licensee any right, title, or interest in the Marks other than the
right to use the Marks in accordance with this Agreement. Each Licensee
agrees that it shall not attack the title of Licensors to the Marks,
the validity of the Marks, or the validity of this Agreement. Neither
Licensee shall attempt to register the Marks alone or as part of its
own trademark nor shall either Licensee use or attempt to register any
marks or names confusingly similar to the Marks.
3. Quality Control.
3.1 Licensees shall use the Marks only in
connection with the Comic Books and Existing Physical Materials (the
"Licensed Products"), shall not alter, change, or otherwise modify the
Existing Comic Books or the Existing Physical Materials, and shall
under no circumstances use the Marks on any other goods or in
connection with any services. Each Licensee agrees that the New Comic
Books on which it may use the Comics Trademarks shall be of a standard
of quality at least as high as that of the Existing Comic Books upon
the date of this Agreement. Each Licensee shall offer for sale or sell
any damaged or "second quality" Licensed Products that bear a Mark only
in a manner consistent with Licensors' practices as of the date hereof.
In advertising the sale or other disposition of the Licensed Products,
neither Licensee shall in any manner use the Marks; provided that
Licensees may use photographs of the Licensed Products in such
advertising. Furthermore, in advertising the sale or other disposition
of the Licensed Products, Licensees shall meet all reasonable standards
of quality established by Licensors, which standards shall be
consistent with industry custom for similar products targeted at
similar customers. Licensors alone shall judge, in its reasonable
discretion, whether or not Licensees have met or are meeting the
standards of quality so established.
3.2 Each Licensee shall, upon Licensors' reasonable
request, (i) make available samples of the New Comic Books and the
advertisements for the Licensed Products and (ii) permit inspection of
such Licensee's operation.
3.3 If at any time either Licensee fails to meet
the quality standards set forth in Subsections 3.1 hereof as reasonably
determined by Licensors, Licensors shall have the right to require
Licensees to discontinue the use of the Marks unless modifications
reasonably satisfactory to Licensors are made within thirty (30) days
from notice of disapproval.
3.4 Each Licensee shall comply in all material
respects with all applicable laws and regulations and obtain all
appropriate governmental approvals pertaining to the sale, distribution
and advertising of the Licensed Products.
4. Infringement Proceedings. Each Licensee agrees to promptly
notify Licensors of any unauthorized use of the Marks by third parties
of which such Licensee becomes aware. Licensors shall have the sole
right and discretion to bring infringement or unfair competition
proceedings involving the Marks.
5. Term. This Agreement shall continue in force and effect for a
period of one year from the date hereof; provided, however, that such
period shall be automatically extended for so long as is necessary to
permit Licensees to use their reasonable best efforts to sell or
otherwise dispose of the Licensed Products (such period, including the
extensions thereof provided for in this Section 5, shall be referred to
as the "Term").
6. Termination; Remedies.
6.1 If either Licensee breaches any of the
provisions herein in any material respect, Licensors shall have the
right to terminate this Agreement upon thirty (30) days written notice,
unless the applicable Licensee cures such breaches within such thirty
(30) day period.
6.2 If either Licensee files a petition in
bankruptcy or is adjudicated a bankrupt or if a petition in bankruptcy
is filed against either Licensee or if it becomes insolvent, or makes
an assignment for the benefit of its creditors or an arrangement
pursuant to any bankruptcy law, or if either Licensee discontinues all
or a significant portion of its business to which this Agreement
relates, or if a receiver is appointed for it or its business, this
Agreement shall automatically terminate without notice of any type. In
the event this Agreement is so terminated, neither of the Licensees nor
any of their respective receivers, representatives, trustees, agents,
administrators, successors, and assigns shall have any right to exploit
or in any way deal with or in any of the Marks.
6.3 Termination of this Agreement under the
provisions of this Section 6 shall be without prejudice to any rights
that Licensors may otherwise have against Licensees.
6.4 Upon termination of this Agreement for whatever
reason, each Licensee agrees (i) to immediately discontinue all use of
the Marks and any mark confusingly similar thereto, (ii) to immediately
place on all goods bearing Marks stickers that completely cover the
Marks and to destroy all such goods that are not amenable to such
restickering, and (iii) to cooperate generally with Licensors to ensure
that all rights in the Marks and the goodwill connected therewith shall
remain the property of Licensors.
6.5 Each Licensee acknowledges that the remedy at
law for any breach, or threatened breach, of any of the provisions of
Sections 1, 2 or 3 hereof will be inadequate and, accordingly,
covenants and agrees that Licensors will, in addition to any other
rights or remedies that they may have and regardless of whether such
other rights or remedies have
been previously exercised, be entitled to such equitable and injunctive
relief as may be available under applicable law.
7.1 Incorporation by Reference. The following Sections
and provisions of the Asset Purchase Agreement are hereby incorporated
into this Agreement in their entirety as if set forth herein: Sections
11.1 (Complete Agreement; Modifications), 11.3 (Remedies Not Exclusive,
excluding the first clause thereof), 11.5 (Notices; provided that, for
purposes of this Agreement, references in said Section 11.5 to
"Sellers" shall mean Licensors, and references to "Buyers" or "Parent"
shall mean GBPCI and LRM Acquisition), 11.7 (Governing Law;
Jurisdiction), 11.9 (Waivers Strictly Construed) and 11.10 (Rules of
7.2 No Assignment. Neither Licensee shall assign any of
its rights, interests or obligations hereunder without the prior written
consent of Licensors, except to Parent or any direct or indirect
wholly-owned Subsidiary (as defined in the Asset Purchase Agreement) of
Parent. Subject to the preceding sentence, this Agreement will be
binding upon, inure to the benefit of and be enforceable by the parties
hereto and their respective successors and assigns.
7.3 Attorneys' Fees. In any action arising out of or
relating to this Agreement, the prevailing party shall be entitled to
recover all attorneys' fees and costs.
7.4 No Third-Party Benefits. None of the provisions of
this Agreement shall be for the benefit of, or enforceable by, any
7.5 Counterparts. This Agreement may be executed
simultaneously in two or more counterparts, each of which shall be deemed
an original, but all of which together shall constitute one and the same
[SIGNATURE PAGE TO TRADEMARK LICENSE AGREEMENT]
IN WITNESS WHEREOF, this Agreement has been duly executed and
delivered by the duly authorized officers of the parties hereto as of
the date first above written.
BROADWAY VIDEO ENTERTAINMENT, L.P.
By: Broadway Video Enterprises, Inc.,
its General Partner
By: /s/ Stephen W. Shippee
Its: Chief Operating Officer and
Chief Financial Officer
GOLDEN BOOKS PUBLISHING COMPANY, INC.
By: /s/ Philip E. Rowley
Its: Chief Operating Officer
BROADWAY VIDEO, INC.
By: /s/ Stephen W. Shippee
Its: Chief Operating Officer and
Chief Financial Officer
LRM ACQUISITION CORP.
By: /s/ Richard E. Synder
Its: Chairman of the Board of Directors,
Chief Executive Officer and President