Sample Business Contracts

License Agreement - Topps Co. Inc. and National Football League Players Association

Sponsored Links

                                LICENSE AGREEMENT

     This  Agreement  is by and between  The Topps  Company,  Incorporated  with
offices  at  One  Whitehall  Street,   New  York,  NY  10004-2109   (hereinafter
with  offices  at 2021 L  Street,  N.W.,  Suite  600,  Washington,  D.C.,  20036
(hereinafter  "NFLPA" or  "Licensor").  This Agreement  shall be effective as of
March 1,2000.


     (A)  NFLPA  represents that the NFLPA has been duly appointed and is acting
          on behalf of the  football  players of the  National  Football  League
          (hereinafter   "NFL")  who  have  entered   into  a  Group   Licensing
          Authorization, either in the form attached hereto as Attachment "A" or
          through the  assignment  contained in Paragraph 4(b) of the NFL Player
          Contract,  and  that in such  capacity  NFLPA  has the  right to grant
          rights and licenses described herein. Licensee acknowledges that NFLPA
          also  on  occasion  secures   authorization  for  inclusion  in  NFLPA
          licensing  programs  from players who have not entered into such Group
          Licensing  Authorization,  but who,  nevertheless,  authorize NFLPA to
          represent such players for designated NFLPA licensed programs.

     (B)  NFLPA makes no representation  that it has the authority to grant, nor
          does it grant  herein,  the right to utilize any  symbols,  insignias,
          logos,  or other  identifying  names or marks of the NFL and/or any of
          its member clubs. Accordingly,  it is understood by the parties hereto
          that  if  likenesses  of  players  are  to  be  used  by  Licensee  in
          conjunction with any symbols,  insignia, or logos of the NFL or any of
          its member clubs, in the exercise of the License granted hereunder, it
          will be the  responsibility  of the Licensee to obtain such permission
          as may be necessary  for the use of such  material from the NFL or the
          club(s) in question.  Licensor  retains all rights not  expressly  and
          exclusively granted to Licensee hereunder.




     (A)  Upon the terms and  conditions  hereinafter  set forth,  NFLPA  hereby
          grants to Licensee  and  Licensee  hereby  accepts  the  non-exclusive
          right,  license,  and privilege of using the  trademarks  and names of
          NFLPA and National  Football  League  Players  Incorporated  ("Players
          Inc") that may be amended  from time to time by NFLPA,  and the names,
          likenesses,   pictures,  photographs,  voices,  facsimile  signatures,
          and/or biographical  information  (hereinafter  "identity") of the NFL
          players  listed in Attachment "B" for products in the form of football
          player trading cards sold alone, as well as collectors'  aids products
          (hereinafter referred to as "the licensed product(s)").

     (B)  The rights,  licenses, and privileges granted by NFLPA hereunder (also
          referred to herein as Licensed Rights) shall not constitute or be used
          by  Licensee  as a  testimonial  or an  endorsement  of  any  product,
          service, or event by all or any of the players, or by NFLPA or Players

     (C)  Licensee  acknowledges  that the Grant of License of this Section 2 is
          contingent upon Licensee's  compliance with and performance  under the
          terms and  conditions of the Service  Agreement  between  Licensee and
          Players   Inc,   effective   March  1,  2000   (hereinafter   "Service
          Agreement").  As provided in Section  14(C),  NFLPA may terminate this
          Agreement if Licensee shall violate any of its  obligations  under the
          terms of the Service Agreement.


     The Grant of License set forth in Section 2 of this Agreement  applies only
     to the manufacture and distribution of licensed product(s) for retail sale,
     and shall not permit the use of licensed  product(s) as "premium  items" to
     be included with non-licensed  product(s),  services,  or events to promote
     the sale of such non-licensed  product(s),  services, or events;  provided,
     however,  that Licensee  shall be permitted to promote the sale of licensed
     product(s),  subject to the terms and  conditions of the Service  Agreement
     (including  prior  written  approval  by  Players  Inc),  and  in a  manner
     consistent  with the provisions of the Agreement.  Any such promotion using
     the licensed  product(s)  herein as premium  items shall require a separate
     agreement  between  Players  Inc  and  Licensee  or  other  sponsor  of the
     promotion,  with separate terms and conditions negotiated by Players Inc as
     provided  in the Service  Agreement,  and nothing  contained  herein  shall
     obligate NFLPA, Players Inc, or Licensee to enter into such an agreement.




     Licensee shall have the right to utilize the rights  granted  hereunder for
     distribution  of  the  licensed  product(s)  in  the  following  territory:

5.   TERM.

     (A)  The term of this Agreement shall extend from March 1, 2000 to February
          28, 2003  (hereinafter  referred to as the  Original  License  Period)
          unless terminated in accordance with the provisions  hereof.  Licensee
          may renew this  Agreement  for a Second  License  Period from March 1,
          2003 to February 29, 2004, provided Licensee has faithfully  fulfilled
          its obligations  hereunder in the Original  License Period.  Notice of
          desire to renew shall be given by  Licensee  no later than  January 1,
          2003 in the Original License Period.

     (B)  Licensee  acknowledges  and agrees that Licensee has and shall have no
          right to extend or renew this  Agreement  beyond the term and  renewal
          options,  if any,  stated  herein.  No conduct by either  Licensor  or
          Licensee (including without limitation, any approvals granted pursuant
          to the Service Agreement) shall create,  imply, or infer a new license
          agreement or an extension of the stated term and renewal  options,  if
          any, of this  Agreement,  unless same is  specifically  set forth in a
          written  agreement  signed by both Licensor and  Licensee.  Licensee's
          agreement  that this  Agreement  is  subject  to the term and  renewal
          options,  if  any,  stated  herein,  in all  events  whatsoever,  is a
          material inducement for Licensor to enter into this Agreement.




     (A)  Licensee  agrees to pay NFLPA a guaranteed  royalty of $5,400,000  for
          its use of the rights  licensed  hereunder  for the  Original  License
          Period  and  $1,800,000  for  the  Additional   License   Period,   if
          applicable. The guaranteed royalty shall be paid as follows:

          (i)  For the Original  License Period,  $450,000 on or before March 1,
               2000,  $450,000 on or before  August 1, 2000,  and $450,000 on or
               before  October 1, 2000,  and  $450,000 on or before  November 1,
               2000,  and  $450,000 on or before  March 1, 2001,  $450,000 on or
               before August 1, 2001, and $450,000 on or before October 1, 2001,
               and  $450,000 on or before  November 1, 2001,  and $450,000 on or
               before March 1, 2002,  and $450,000 on or before  August 1, 2002,
               and  $450,000  on or before  October 1, 2002 and  $450,000  on or
               before November 1, 2002.

          (ii) For the Additional License Period, if applicable,  $450,000 on or
               before  March 1,  2003,  $450,000  on or before  August 1,  2003,
               $450,000 on or before  October 1, 2003, and $450,000 on or before
               November 1, 2003.

     (B)  Such  guaranteed  royalty  payments  shall  be  made  by  Licensee  as
          specified hereinabove whether or not Licensee uses the rights licensed
          hereunder,  and no part of such guaranteed payments shall be repayable
          to Licensee.

     (C)  Licensee shall also pay to NFLPA an amount equal to Eleven Percent (11
          %) of the  gross  sales of the  licensed  product(s)  covered  by this
          Agreement,  less  the  guaranteed  payments  specified  above  for the
          applicable  License Period.  The guaranteed  payments for the Original
          License Period shall be calculated annually and separately at the rate
          of  $1,800,000  for the period of March 1, 2000  through  February 28,
          2001,  $1,800,000 for the period of March 1, 2001 through February 28,
          2002 and $1,800,000  for the period of March 1, 2002 through  February
          28,  2003.  For example,  the 11 % royalty  shall be paid in the first



          year of the Agreement  less only the guarantee of $1,800,000  for such
          first year and  similarly for the second or third year of the Original
          License Period. Royalties shall be calculated on a quarterly basis and
          shall be due as of the last day of each  May,  August,  November,  and
          February of this Agreement and must be paid no later than fifteen (15)
          days following such due dates.  Gross sales shall be calculated  based
          on the actual price(s) charged by Licensee to the retailer directly or
          to the  wholesaler  in an arm's  length  transaction.  Licensee  shall
          transact no sale, the effect of which is to reduce the royalty paid by
          Licensee to NFLPA; provided, however, that Licensee shall be permitted
          to provide arm's length  discounts,  allowances,  and returns that are
          normal and  customary.  Gross sales shall exclude only such normal and
          customary discounts, allowances, and returns. In addition to all other
          rights contained in this Agreement, NFLPA shall be entitled to collect
          and Licensee  shall pay daily interest at the rate of one and one-half
          percent (1 1/2%) monthly,  or the maximum interest permitted by law if
          less, on all guarantee or royalty payments not timely made to NFLPA by


          All transactions under this Agreement  including,  without limitation,
          all  payment  of  royalties  and  all  notices,  reports,  statements,
          approvals, and other communications,  shall be with or made payable in
          Street NW, Suite 500,  Washington,  DC 20036,  or its assignee,  where
          applicable.   All  correspondence,   notices,   approvals,  and  other
          communications  to  Licensee  shall be with  The  Topps  Company,  One
          Whitehall   Street,   New  York,  NY  10004-2109,   Attention:   Scott
          Silverstein, Executive Vice President of Business Affairs.


     (A)  Licensee  agrees  that  it,  during  the  term  of this  Agreement  or
          thereafter,  will not  challenge or in any way infringe upon the title
          or any  rights of the NFLPA in and to any of the  trademarks  or names
          owned by or licensed to NFLPA or any of the rights licensed  hereunder
          as  specified in Section 2 of this  Agreement,  or challenge or in any
          way infringe upon the validity of this Agreement.



     (B)  Licensee  further agrees to assist NFLPA and Players Inc to the extent
          necessary in the  procurement  of any  protection or to protect any of
          the rights  conveyed  hereunder,  and  NFLPA,  if it so  desires,  may
          commence  or  prosecute  at its own expense any claims or suits in its
          own  name or in the  name of  Licensee  or  join  Licensee  as a party
          thereto  with  Licensee's  consent,  which  shall not be  unreasonably
          withheld.  Licensee  shall  notify  Players  Inc  in  writing  of  any
          infringement  by others of the rights  covered by this  Agreement that
          may come to Licensee's attention,  and Players Inc shall have the sole
          right to determine whether or not any action shall be taken on account
          of any such  infringement.  Licensee  shall not  institute any suit or
          take any  action on  account of any such  infringement  without  first
          obtaining the written  consent of Players Inc to do so and Players Inc
          shall reasonably consider any such request.

     (C)  For its own acts,  Licensee hereby indemnifies NFLPA and undertakes to
          defend  NFLPA from and  against  any and all  claims,  suits,  losses,
          damages,  and  expenses  (including  reasonable  attorneys'  fees  and
          expenses)   arising   out  of  the   manufacture,   marketing,   sale,
          distribution,  or use of the licensed  product(s) that are the subject
          of this  Agreement.  Licensee  agrees to obtain,  at its own  expense,
          general liability insurance providing adequate protection for Licensee
          and NFLPA  against  any such  claims or suits in amounts not less than
          Three Million  Dollars  ($3,000,000.00).  Within thirty (30) days from
          the date hereof, Licensee shall submit to NFLPA a fully paid policy or
          certificate of insurance  naming NFLPA as an insured party,  requiring
          that insurer will not  terminate or materially  modify such  agreement
          without  written  notice to NFLPA at least twenty (20) days in advance

     (D)  NFLPA hereby  indemnifies  Licensee and undertakes to defend  Licensee
          against,  and hold Licensee  harmless from, any  liabilities,  losses,
          damages,  and  expenses  (including  reasonable  attorneys'  fees  and
          expenses) resulting from claims made or suits brought against Licensee
          based upon the use by  Licensee  of the rights  licensed  in Section 2
          strictly as authorized in this Agreement.



     (E)  NFLPA  represents  that no  provisions  in this  Agreement,  including
          without  limitation Section 11, are contrary to federal and state law,
          and  NFLPA  hereby  indemnifies  Licensee  and  undertakes  to  defend
          Licensee  against,  and hold Licensee  harmless from, any liabilities,
          losses,  damages, and expenses (including  reasonable attorney's fees)
          arising out of or relating to a breach of this representation or based
          upon a finding  that any said  provisions  are in violation of federal
          and state law.

     (F)  In the event  that  Section  11 is  declared  invalid  by any court of
          competent  jurisdiction,  NFLPA hereby agrees not to enforce the terms
          of said Section against Licensee.


     (A)  Licensee  shall  prominently  place or cause to be  placed  Licensor's
          trademark or trademarks  (hereinafter  "Licensor's  Trademark") on the
          licensed products and on packaging,  wrapping, advertising (both print
          and media),  and any other  material,  including trade show booths and
          exhibits in connection with such licensed product(s) that are publicly
          distributed or relating to such licensed product(s).

     (B)  Licensor's  Trademark  appearing on the licensed product(s) and on all
          materials in connection with the licensed product(s)  distributed,  or
          relating to such licensed product(s), shall appear precisely according
          to the specifications  set forth in Appendix B attached hereto,  which
          may be amended  from time to time by Players Inc,  without  variation,
          with the letter "R" enclosed within a circle. Further,  Licensee shall
          provide  to  Licensor  the  date of the  first  use of  such  licensed
          product(s) bearing  Licensor's  Trademark in intrastate and interstate

     (C)  Additionally,  Licensee  shall  imprint or cause to be  imprinted  the
          following  text  on any  such  licensed  product(s)  and/or  materials

                  "Officially Licensed Product of the National
                            Football League Players"


                         "Officially Licensed Product of
                                  Players Inc"

     The specific text imprinted shall be subject to Licensor's sole discretion.




     Attachment "B" hereto shall be  established  and may be modified by Players
     Inc, as specified in the Service Agreement.


     Licensee  agrees  and  acknowledges  that it shall  not  secure  or seek to
     secure,  directly from any player who is under contract with an NFL club or
     seeking  to become  under  contract  with an NFL club or at any time in the
     past was under  contract  to an NFL  club,  or from  such  player's  agent,
     permission or  authorization  for the use of such player's name,  facsimile
     signature,  image, likeness,  photograph,  or biography in conjunction with
     the licensed product(s) herein.


     (A)  Licensee  recognizes the great value of the goodwill  associated  with
          the rights  licensed in Section 2 of this  Agreement and  acknowledges
          that  such  goodwill  belongs  exclusively  to  NFLPA  and  that  said
          trademarks,  names, and rights licensed in Section 2 of this Agreement
          have acquired secondary meaning in the mind of the public.

     (B)  Licensee   agrees  that  all  elements  of  the  licensed   product(s)
          (including all material of any nature  utilizing in any way the rights
          licensed  hereunder,  including  but  not  by way  of  limitation  all
          packages,  cartons,  point of sale  material,  newspaper  and magazine
          advertisements)   shall  be  of  high  standard  and  of  such  style,
          appearance,  and  quality  as to be  adequate  and  suited to the best
          advantage and to the protection and enhancements of such rights;  that
          the  marketing  of  the  licensed  product(s)  will  be  conducted  in
          accordance with all applicable federal,  state, and local laws and any
          other  governmental or  quasi-governmental laws or  regulations of the
          United States,  Canada,  or any other  country;  and that the licensed
          product(s) and their exploitation shall be of high standard and to the
          best advantage and that the same in no manner  reflect  adversely upon
          the good name of NFLPA or Players Inc.




     (A)  Licensee  agrees that every use of the rights  licensed  hereunder  by
          Licensee  shall  inure to the  benefit of the NFLPA and that  Licensee
          shall not at any time  acquire any title or interest in such rights by
          virtue of any use Licensee may make of such rights hereunder.

     (B)  All rights relating to the rights licensed  hereunder are specifically
          reserved by NFLPA except for the License herein granted to Licensee to
          use  the  rights  as  specifically  and  expressly  provided  in  this

     (C)  Upon expiration or termination of this  Agreement,  all rights granted
          hereunder shall immediately revert to NFLPA, and Licensee will refrain
          from  further  use of such rights or any  further  reference  thereto,
          direct or  indirect,  except  as  provided  in  Section  14(E)  below.
          Licensee acknowledges that its failure to cease the use of such rights
          at the  termination  or  expiration of this  Agreement  will result in
          immediate  and  irreparable  damage to Licensor,  individual  National
          Football  League  player(s),  and/or  the  rights  of  any  subsequent


     (A)  In the event  Licensee  does not  commence  in good faith to cause the
          manufacture,  distribution,  and sale of the  licensed  product(s)  in
          substantial  quantities on or before  September 15, 2001,  NFLPA shall
          have, in addition to all other remedies available to it, the option to
          terminate the License  granted  hereunder  upon written notice of such
          termination to Licensee.

     (B)  In the event Licensee files a petition in bankruptcy or is adjudicated
          as bankrupt,  or if a petition in bankruptcy is filed against Licensee
          or if  Licensee  becomes  insolvent,  or makes an  assignment  for the
          benefit of its creditors or an arrangement  pursuant to any bankruptcy
          laws, or if Licensee  discontinues  its business,  or if a receiver is
          appointed for it or its business,  all rights granted  hereunder shall
          terminate  automatically and without notice upon the occurrence of any
          such event. In the event of such termination, neither Licensee nor its
          receivers,   representatives,    trustees,   agents,   administrators,
          successors,  and/or assigns shall have any right to sell,  exploit, or
          in any way deal with the rights granted hereunder or with any licensed
          product(s), or any carton, container,  packaging or wrapping material,
          advertising,   promotional  or  display  material  pertaining  to  any
          licensed product(s).



     (C)  If Licensee shall violate any of its other material  obligations under
          the terms of either this  Agreement  or the Service  Agreement,  NFLPA
          shall have the right to  terminate  this  Agreement  upon  thirty (30)
          days' notice in writing,  and such notice of termination  shall become
          effective unless Licensee completely remedies the violation within the
          thirty  (30) day  period  and  provides  reasonable  proof to NFLPA or
          Players Inc, as applicable, that such violation has been remedied. The
          obligations of Licensee hereunder shall include,  without  limitation,
          any payment  owed and unpaid by the  Licensee  to NFLPA in  accordance
          with any previous license agreement between NFLPA and Licensee (or its
          predecessor)  under  which the  parties  operated,  without  regard to
          whether such license  agreement was formally executed by an authorized
          signatory for each party.  If this Agreement is terminated  under this
          paragraph,  all  royalties  theretofore  accrued  shall become due and
          payable  immediately  to NFLPA and NFLPA  shall  not be  obligated  to
          reimburse Licensee for any royalties paid by Licensee to NFLPA.

     (D)  Failure  to resort to any  remedies  referred  to herein  shall not be
          construed  as a waiver of any other  rights or remedies to which NFLPA
          is entitled under this Agreement or otherwise.

     (E)  Upon  termination of this  Agreement,  Licensee shall have ninety (90)
          days to dispose of and liquidate all inventory.  This inventory  shall
          not be  available  to  consumers  after  this  ninety  (90) day period
          expires.  Such  disposition  shall  conform to this  Agreement  in all
          respects.  Players  Inc  shall  have,  at its  election,  the right to
          conduct a physical inventory at the time of termination.




     Nothing herein  contained shall be construed to place NFLPA and Licensee in
     the relationship of partners or joint venturers, and Licensee shall have no
     power to obligate or bind NFLPA in any manner whatsoever.


     None of the terms of this Agreement  shall be waived or modified  except by
     an express agreement in writing signed by both parties.  With the exception
     of  the  Service  Agreement,   there  are  no  representations,   promises,
     warranties, covenants, or undertakings other than those expressly contained
     in  this  Agreement,  which  represents  the  entire  understanding  of the
     parties.  No written  waiver shall excuse the  performance  of an act other
     than those specified herein. The failure of either party hereto to enforce,
     or delay by  either  party  in  enforcing,  any of its  rights  under  this
     Agreement shall not be deemed a continuing  waiver or modification  thereof
     and either party may commence,  within the time provided by applicable law,
     appropriate legal proceedings to enforce any or all of such rights.


     This Agreement and all rights and duties hereunder are personal to Licensee
     and shall not,  without written  consent of NFLPA, be assigned,  mortgaged,
     sublicensed,  or otherwise encumbered by Licensee or by operation of law to
     any other person or entity. Upon any such attempted unapproved  assignment,
     mortgage,  license,  sublicense,  or other encumbrance this Agreement shall
     terminate and all rights granted to Licensee  hereunder  shall  immediately
     revert to NFLPA. In addition,  NFLPA may terminate this  Agreement,  at its
     sole  discretion,  in the event  that  Licensee  is  merged,  consolidated,
     transfers  all or  substantially  all  of  its  assets.  If,  in  its  sole
     discretion,  NFLPA  terminates  this  Agreement  under this Section 17, all
     rights granted to Licensee hereunder shall immediately revert to NFLPA.


     This Agreement shall be governed by, and construed in accordance  with, the
     laws of the State of New York of the United States of America,  except that
     State's  conflict-of-laws  provisions to the  extent they are  inconsistent
     with the terms of this Section 18. The parties consent to the  jurisdiction
     of the State of New York and  designate the courts of the State of New York
     as the venue for any  dispute  arising out of,  under,  or relating to this



IN WITNESS WHEREOF,  the parties hereto have signed this Agreement as of the day
and date written first above.

The Foregoing is Acknowledged:


By:       /s/   Douglas Allen                   By:  /s/  Warren Friss
       ----------------------------                 --------------------
Title: Assistant Executive Director             Title:  Vice President