License Agreement, effective as of July 13, 2021, between the Company and INDYCAR LLC
[***] Certain information in this document has been excluded pursuant to Regulation S-K, Item (601)(b)(10). Such excluded information is not material and would likely cause competitive harm to the registrant if publicly disclosed.
This LICENSE AGREEMENT (this “Agreement”) is entered into effective as of July 13, 2021 (the “Effective Date”), by and between:
(i) INDYCAR, LLC, an Indiana limited liability company located at 4551 W. 16th Street, Indianapolis, Indiana 46222, U.S.A. (“Licensor”), and
(ii) MOTORSPORT GAMES INC., a Delaware corporation whose registered office is at 5972 NE 4th Avenue, Miami, Florida 33137, U.S.A. (“Licensee”).
Licensor and Licensee are hereinafter referred to collectively as the “Parties” or individually as a “Party.”
A. Licensor has the right to exploit, license and sub-license the Licensed IP during the Term (as defined below);
B. Licensee promotes and runs an Esports events replicating motorcar races;
C. Licensor desires to grant to Licensee the rights to develop certain Events (as defined below) using and/or bearing, subject to the terms and conditions set forth in this Agreement, the Licensed IP; and
D. Licensor and Licensee intend to form an exclusive relationship for the development of Events to be the official Esports events of the INDYCAR SERIES.
NOW, THEREFORE, in consideration of the obligations set forth herein and for other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the Parties agree as follows:
1. License Grant; Royalty; Payment Schedules.
1.1 Subject to the terms and conditions of this Agreement, Licensor hereby grants Licensee:
(a) a non-exclusive, worldwide license to use during the Term (as defined in Section 8.1 of this Agreement) the Licensed IP for mutually agreed upon Events, including such Events’ development, manufacturing, marketing, publicity, advertisement, promotion, distribution, publicizing, broadcasting, streaming, making available and/or selling worldwide, and continued commercial exploitation of the Events, including the right to use, modify and improve the Events developed using the Licensed IP, and further including, subject to the approval of Licensor and additional written agreement between the parties as further set forth in this Agreement, the right to create branded merchandise in connection with the Events;
(b) For the purposes of this Agreement:
“Driver” means a driver participating in the INDYCAR SERIES.
“Driver Rights” means the name, voice, signature, photograph, image, likeness, distinctive appearance, gestures, mannerisms, and descriptions of a Driver to the extent that such rights are licensed (with a right to sublicense for the purpose of the Events) by a Driver to Licensor. Licensee acknowledges that while Licensor will be responsible for negotiating directly with Drivers and/or Entrants to obtain Driver Rights for the Events, Licensor cannot guarantee that it will be able to obtain Driver Rights for all Drivers participating in the INDYCAR SERIES and that the Licensed IP shall include only those Driver Rights that Licensor actually obtains during the Term.
“Entrant” means the owner of an Entry. An Entrant may have more than one Entry.
“Entry” means a single car/driver combination participating in the INDYCAR SERIES. A single Entry or group of Entries owned and/or controlled by the same Entrant may be referred to informally as a “team”.
“Entry Rights” means the following rights associated with an Entry to the extent such rights are licensed (with a right to sublicense for the purpose of the Events) by an Entrant to Licensor: trade names, trademarks, electronic replications of crew uniforms (including helmet, hats, and clothing) and race car paint schemes (liveries), third party trademarks (to the extent incorporated into the electronic replications of uniforms, equipment), as well as the name, voice, signature, photograph, image, likeness, distinctive appearance, gestures, mannerisms, and descriptions of any employee or independent contractor or INDYCAR SERIES participant working with the Entrant in connection with the Entry. Notwithstanding the foregoing, Entry Rights do not include Driver Rights. Licensee acknowledges that while Licensor will be responsible for negotiating directly with Entrants to obtain Entry Rights for the Events, Licensor cannot guarantee that it will be able to obtain Entry Rights for all entries participating in the INDYCAR SERIES and cannot guarantee that the Entry Rights will be the same or most up-to-date as appearing in the INDYCAR SERIES events from time-to-time. Licensee agrees that the Licensed IP shall include only those Entry Rights that Licensor actually obtains during the Term.
“Esports” shall mean a form of multiplayer competition using video games, primarily between competitive gamers that includes the ability to perform in front of an audience, whether through an online platform, broadcasted on television, or at a physical event.
“Events” means collectively the Esports events related to and/or themed as or containing the Licensed IP and related features which, prior to launch of the Products, are hosted on the rFactor 2 platform (such platform is the property of Studio397 BV, a wholly owned subsidiary of Licensee) and, after launch of the Products, are hosted using the Products. To clarify and without limitation, the rights granted in this Agreement specifically exclude: (i) the right to create Products (which is to be covered in the Game Agreement (as defined below)); (ii) augmented reality (AR), virtual reality (VR), mixed reality, and other extended reality technologies or experiences used to supplement, overlay, or enhance real environment INDYCAR SERIES events (and which shall not be considered Events within the meaning of this Agreement), and (iii) any rights to utilize or associate the Events with any form of gambling including without limitation sports betting, and Licensor shall not, and shall not permit third parties to, use the Events in connection with or associate the Events with gambling, including legal gambling, and the rights granted under this Agreement specifically include: (iv) non-fungible tokens (“NFTs”) to the extent used within or derived from the Events and other limited edition digital content within the Event environment and (v) VR as part of the experience within the Events.
“IMS Track Design” means the appearance of the Indianapolis Motor Speedway race track, topographical maps, drawings, computer-aided design files, LiDAR or Laser geometry data, photographs and videotape footage, copyrights, trade dress and proprietary design associated with the Indianapolis Motor Speedway and provided by Licensor to Licensee pursuant to the terms of this Agreement.
“INDYCAR SERIES” means the INDYCAR SERIES being the premier open wheel racing series sanctioned by Licensor during the Term. The rights granted under this Agreement do not include any other series sanctioned by Licensor.
“Licensed Car Designs” means computer-aided designs, specifications, drawings, photographs, and other materials related to the design of the chassis of the race cars that are provided by Licensor to Licensee pursuant to the terms of this Agreement. To clarify, Licensed Car Design does not include car livery or paint schemes, which are included in Entry Rights. Licensee acknowledges that while Licensor will be responsible for negotiating directly with third parties to obtain Licensed Car Designs, Licensor cannot guarantee that the Licensed Car Designs will be the same or most up-to-date as appearing in the INDYCAR SERIES events and that Licensed IP shall include only those Licensed Car Designs that Licensor actually obtains during the Term.
“Licensed IP” means collectively the Licensed Marks, Entry Rights, Driver Rights, Licensed Car Designs, and IMS Track Design that are provided by Licensor to Licensee during the Term. To clarify, the Licensed IP does not include the right to use the image, likeness, design attributes, or other rights of INDYCAR teams, team owners, drivers, and other third parties (including without limitation sponsors, race car designers, and suppliers) except as expressly provided by Licensor for use in the Events, with each use approved by Licensor in writing, in each case in accordance with this Agreement. For the avoidance of doubt, the Licensed IP shall not include NFTs created by Licensor and does not include the name, image, or design of any pace car or trophy. If the Licensed IP changes during the Term such that Licensor can no longer provide the Licensed IP previously provided (for example but without limitation, a sponsor drops out of the series), Licensor shall advise Licensee if such change affects the license granted under this Agreement or the Events. Licensee agrees that in such situation it will use reasonable efforts to cease use of such Licensed IP as soon as reasonably possible.
“Licensed Marks” means the INDYCAR SERIES logo and word mark; INDYCAR logo and word mark; Indianapolis 500 annual event logo, general logo, and word mark; Indy 500 word mark; The Greatest Spectacle in Racing word mark; and, insofar only as this in included in the title of the INDYCAR SERIES and only to the extent such rights are licensed (with a right to sublicense for the purpose of the Products) by a title sponsor to Licensor from time to time throughout the Term, title sponsor logo and word marks but only if appearing with the INDYCAR SERIES marks. Licensor will advise Licensee of any changes in such title sponsor during the Term.
“Licensor Group” means Licensor and each of its affiliates (including without limitation Brickyard Trademarks, Inc. and Indianapolis Motor Speedway, LLC) and its licensors (including without limitation Entrants, Drivers, and sponsors), and their respective owners, directors, officers, employees, agents, members, successors and assigns.
“Products” means collectively the motorsports and/or racing (including, without limitation, simulation style) video gaming products created, developed and released by Licensee pursuant to the separate written agreement between the parties, of even date with this Agreement (“Game Agreement”).
1.2 The Parties agree that Licensee’s use of Licensed IP hereunder, including the goodwill arising from such use, shall inure to the benefit of Licensor Group, and Licensee shall have no right whatsoever to Licensed IP (except the limited license rights as specifically set forth herein). Licensee agrees:
(a) to not use Licensed IP except as specifically set forth herein;
(b) to not affix or include any other third-party logos or marks without the Licensor’s prior written consent (which shall not be unreasonably withheld or delayed);
(c) to include a notice that the Event is produced under license and copyright notice in a form agreed by the Licensor (such agreement not to be unreasonably withheld or delayed); and
(d) not to begin to develop and facilitate, permit a sub licensee to begin to develop and facilitate, any Event without obtaining the Licensor’s approval in respect of the initial concept of the Event in accordance with Section 5 and otherwise complying with the obligations under Section 5.
1.3 Licensee shall not at any time do or cause or permit to be done any act or thing contesting or in any way impairing or tending to impair any part of Licensor’s right, title, and interest respecting Licensed IP. Licensee shall not and shall not permit any sublicensee to in any manner represent that it has any ownership in Licensed IP, and Licensee acknowledges that its use and development of Licensed IP shall not create in Licensee’s favor any right, title, or interest in or to Licensed IP.
1.4 The Licensee undertakes to ensure that the Events and their advertising, marketing and promotion of the Events and its internet domain names used in connection with the Events shall incorporate the title of the INDYCAR SERIES as approved by Licensor and shall in no way reduce or diminish the reputation, image and prestige of the Licensor Group, the sponsors of the Licensor Group, the Licensed IP, or the INDYCAR SERIES (including without limitation the teams, drivers and/or driver, venues/tracks, and/or driver, team and venue/tracks sponsors involved with the INDYCAR SERIES from time to time).
1.5 Licensee shall not pledge its rights to Licensed IP as security for any of Licensee’s debts or any other purpose, or allow any third party to have rights in Licensed IP or rights related to this Agreement without the prior written consent of Licensor and (in the case of sub licensees) in accordance with Section 1.6 below.
1.6 The Licensee shall have the right to grant sub-licenses of the Licensed IP only for the purpose of production and/or distribution of the Events provided that:
(a) the Licensee obtains the prior written consent of the Licensor;
(b) the Licensee shall ensure that the terms of any sub-license are in writing and are substantially the same as the terms of this Agreement (except that the sub licensee shall not have the right to sub—license its rights) and the Licensee shall provide the Licensor with a copy of the sub-license for approval before signing it;
(c) all sub licenses granted shall terminate automatically on termination or expiry of this Agreement;
(d) the Licensee shall be liable for all acts and omissions of any sub licensee and shall indemnify the Licensor Group against all costs, expenses, claims, loss or damage incurred or suffered by the Licensor Group, or for which the Licensor may become liable (including any economic loss or other loss of profits, business or goodwill and including without limitation any claims of Licensor Group’s negligence), arising out of any act or omission of any sub licensee; and
(e) any sub licensee shall first enter into a supplemental agreement direct with the Licensor in a form satisfactory to the Licensor.
Notwithstanding the foregoing and an other provision of this Agreement, Licensee shall not broadcast or stream Events and shall not be permitted to enter into or negotiate broadcast or streaming agreements to broadcast or stream any Event utilizing the Licensed IP without Licensor’s prior written approval. If Licensee is expressly permitted by Licensor to do so, it must bear all expenses and fees associated with the Event. These include fees paid to tracks (including without limitation Indianapolis Motor Speedway, if applicable) as well as to Licensor Group members required for broadcasting and/or streaming the Event on a third party platform. Licensor may, unless Licensor otherwise agrees not to, broadcast and/or stream Events on its or its affiliates’ digital channels, and if Licensee is expressly permitted by Licensor to broadcast or stream an Event on any platform owned or controlled by Licensor or its affiliates, Licensor or such affiliate shall not charge Licensee a fee for doing so. Liecnsee acknowledges that there are and will continue to be throughout the Term certain guidelines and restrictions by Licensor’s agreements with its broadcst partners and promoters, and Licensee agrees to abide by and not violate them to the extent that they are brought to Licensee’s attention.
1.7 The license granted by Licensor hereunder is non-exclusive and Licensor and the respective owners of the Licensed IP shall have the right to license the Licensed IP to others, including without limitation for use in Esports events. For purposes of clarification and without limitation, nothing in this Agreement limits the rights of any video game that includes Licensed IP from holding Esports events and/or leagues and nothing in this Agreement limits opportunities of Drivers, Entrants and other participants in the INDYCAR SERIES from participating in any Esports events. Notwithstanding the foregoing, Licensor agrees to the following limitations and conditions:
(a) Licensor must obtain Licensee’s prior written consent with respect to Licensor’s creation, development, or marketing of any INDYCAR SERIES-themed motorsports and/or racing Esports events created, developed, produced, or promoted by Licensor after the execution of this Agreement that will occur during the Term; provided, however that Licensor shall not be required to obtain Licensee’s prior written consent for: (i) events conducted pursuant to the agreements listed on Schedule 1.7 (“Existing Licenses”) and (ii) any Esports events that do not include the INDYCAR SERIES logo or Indy 500 logo and (1) do not include more than *** (***%) percent of full-season Entries participating on-track in the Esports race at the same time for any race other than the Indy 500 race, which shall not have more than *** Entries participating on-track in such Indy 500 Esports race at the same time, and (2) to the extent that such Esports event occurs at a track at which the INDYCAR SERIES is racing during the applicable racing season, the Esports race length does not exceed *** (***%) of the official lap count of the actual INDYCAR SERIES race that is occurring at that track during such racing season; provided, however that, except as may be set forth in an Existing License, no license shall be granted by Licensor to a third party to create, develop or market any INDYCAR SERIES-themed motorsports and/or racing Esports event to use any then-current in season car liveries/paint schemes in such Esports events for at least *** following Licensee’s first Event of that racing season.
(b) Licensor shall not grant any third party that is utilizing the Licensed Marks in connection with an Esports event during the Term the right to use any of the following designations (“Official Designations”) to promote the Esports event: “Official Esports Event of INDYCAR”, or “Official Esports Event of the INDYCAR SERIES”, or “Official Esports Event of the Indianapolis 500 Mile Race/Indy 500 Race”. Notwithstanding the foregoing Licensee acknowledges and agrees that to the extent that a party has a license from Licensor or its affiliates to create an event such party is generally known as an “official licensee” and the event is generally referred to as an “official event” and use of such a phrase sor similar phrases to authenticate the licensee or event shall not constitute a violation of this Agreement;
(c) Licensor shall not use any Official Designations to promote any Esports events related to the INDYCAR SERIES other than the official Events developed and facilitated by Licensee pursuant to this Agreement;
(d) Except as may be provided by Licensor to a third party pursuant to an Existing License, Licensee shall have exclusive access to any new INDYCAR SERIES content, digital assets or initiatives created by Licensor to be used in connection with Esports events for at least *** prior to such content, digital assets or initiatives being made available by Licensor to any other third party in connection with an Esports event related to the INDYCAR SERIES.
(e) Licensee shall not be required to license any Licensee-created INDYCAR SERIES content, digital assets or initiatives to any third party licensee presented by Licensor.
(f) Notwithstanding any of the foregoing and any other term of this Agreement, this Agreement is subject to the terms of the Existing Licenses, and Licensor shall not be required to breach any provision of such Existing Licenses.
1.8 Each of Licensee and Licensor acknowledges and agrees that Licensee shall be responsible, at Licensee’s expense, for the production of each Event in its entirety including without limitation obtaining licenses to use tracks at which INDYCAR SERIES races are conducted. Notwithstanding the foregoing, Licensor shall use its best efforts, at no out of pocket cost to Licensor, to assist Licensee with Licensee’s responsibilities to obtain track licenses as set forth in this Section 1.8. Licensor’s best efforts with respect to this Section 1.8 shall include, but not be limited to, Licensor seeking to include in its event agreements with race promoters the requirement that such promoters agree to license their applicable rights to Licensee for inclusion in the Events. To clarify, Licensor shall not be required to purchase rights for any track, and it shall not be a requirement of this Agreement that Licensor obtain these rights. Further, Licensor shall use commercially reasonable efforts, upon the request of Licensee, to assist with the integration of the Events into real-life INDYCAR SERIES race events, including with respect to elements such as space allocation at such events but at no out of pocket cost to Licensor. In addition, Licensee’s obligations with respect to the production of each Event shall include (but not be limited to) preparation of competition rules (which shall be subject to Licensor’s prior written approval before they are finalized), establishing terms and conditions of participation, and officiating Events. Licensee shall remain fully responsible for all aspects of Event production notwithstanding any input or approval of Licensor.
1.9 Unless otherwise agreed by Licensor, Licensee shall use the most up-to-date Licensed IP provided by Licensor to Licensee, as applicable, in all Events including on both the rFactor2 platform and when using the Products; provided, however, that prior to launch of the Products Licensee needs any updates to Licensed Car Designs no less than six (6) weeks in advance in order to be included in an Event. Licensee shall use best efforts to ensure that all Events include updated tracks to reflect the current INDYCAR SERIES season. For the avoidance of doubt, nothing herein shall limit Licensee’s right and ability to run and promote additional esports events which include past teams unless Licensor has requested the deletion of the Licensed IP related to such past teams.
1.10 Until the initial release of the Products in accordance with the Game Agreement, each of Licensee and Licensor acknowledges and agrees that the Events will be hosted on the rFactor 2 platform (such platform is the property of Studio397 BV, a wholly owned subsidiary of Licensee), after such time the Events shall be hosted on the Products. For the avoidance of doubt, Licensee shall have the right and ability to continue to host additional Events that feature the Licensed IP on the rFactor 2 platform after the release of the Products with Licensor’s approval in each instance.
1.11 As consideration for the license set forth in this Agreement, at the end of each calendar year following the Effective Date, Licensee shall pay Licensor, on an annual basis, a royalty (the “Royalty”) in an amount equal to *** percent (***%) of the Net Revenue (as defined below) derived from or in connection with the Events during the previous calendar year. Where Licensee has granted any sub license in accordance with this Agreement, calculation of all Royalties shall include all Net Revenue of or on behalf of sublicensees and Licensee shall include records of such activities in the records it keeps and the statements it submits to Licensor in accordance with this Agreement. “Net Revenue” means all gross receipts derived from or in connection with Events (including without limitation sponsorship and advertising sales, promotional revenue, entry fees and registrations, team fees, distribution revenue, media rights, and broadcast and streaming rights) less reasonable production expenses which shall not include expenses related to the general overhead expenses of Licensee nor any fees or charges payable to any associated or connected company or company within the same group as Licensee.
1.12 All Royalties shall be paid free and clear of all deductions and withholdings unless such deduction or withholding is required by law. If any deduction or withholding is required by law the Licensee shall pay to the Licensor such sum as will, after the deduction or withholding has been made, leave the Licensor with the same amount as it would have been entitled to receive in the absence of any requirement to make a deduction or withholding.
1.13 Payments details: All payments shall be remitted by Licensee to Licensor pursuant to Licensor’s written instructions provided to Licensee from time to time. For the purpose clarification, all payments shall be made in United States Dollars. In the event of any delay in paying any sum due under this Agreement by the due date, and in addition and without prejudice to the exercise of any other remedy of Licensor, Licensee shall pay Licensor interest (calculated on a daily basis and compounded monthly) on the overdue payment from the date such payment was due to the date of actual payment at a rate of *** over the base lending rate of PNC Bank, National Association from time to time. In addition, Licensee shall reimburse Licensor for any expenses that Licensor may incur in the collection of any unpaid amounts owed to Licensor pursuant to this Agreement including without limitation collection costs and reasonable attorneys’ fees.
1.14 At the same time as payment of the Royalty falls due, the Licensee shall submit or cause to be submitted to the Licensor a statement in writing recording the calculation of such Royalty payable, which statement shall include all detail reasonably required by Licensor to validate the amount of the Royalty payment. Licensee acknowledges that for the purpose of calculating the Royalty due to Licensor any deductions from revenue shall be invalid unless Licensee has provided documentary evidence of them to the satisfaction of Licensor.
1.15 The Licensee shall keep proper records and books of account in accordance with generally accepted accounting principles with respect to all transactions relating to this Agreement. Such records and books shall be kept separate from any records and books not relating solely to the Events and be open during normal business hours to inspection and audit by the Licensor (or its authorized representative), who shall be entitled to take copies of or extracts from the same. Such right of inspection by the Licensor shall remain in effect for a period of three years after the termination or expiry of this Agreement. If an inspection or audit should reveal a discrepancy in the Royalty paid from those payable under this agreement the Licensee shall immediately make up the shortfall, with interest calculated under Section 1.13, and reimburse the Licensor in respect of any professional charges incurred for such audit or inspection.
2. Intellectual Property
2.1 Each Party shall be and remain the sole and exclusive owner or licensee of all rights, title and interest in and to all Intellectual Property Rights owned or controlled by such Party. Licensor’s Intellectual Property Rights include, without limitation, the Licensed IP. All information related to Intellectual Property Rights owned or controlled by either Party that are provided to the other Party shall be subject to the confidentiality terms of Section 12 of this Agreement.
2.2 “Intellectual Property Right” means all intellectual property rights, worldwide, arising under applicable law, including all (a) patents, including (i) issued patents and patent applications, (ii) substitutions, divisions, continuations, continuations-in-part, reissues, renewals, registrations, confirmations, reexaminations, extensions, supplementary protection certificates and the like, and (iii) any foreign or international equivalent of any of the foregoing; (b) inventions; (c) rights associated with works of authorship, whether or not copyrightable or registered, including copyrights, copyright applications, copyright registrations, mask works, mask work applications and mask work registrations; (d) trademarks, trade dress and design marks, whether or not registered, and all goodwill associated therewith, including any registrations and applications therefor and all common law rights therein, (e) trade secrets and other proprietary and confidential information and data; (f) domain names and webpages, and (g) any right analogous to those specifically set forth in this definition and any other proprietary rights relating to such intellectual property. Licensee agrees that the concept of a Esports event based upon INDYCAR SERIES racing is not proprietary intellectual property developed by Licensee and that except as expressly set forth in Section 1.7 of this Agreement Licensee shall have no right to prevent Licensor or its affiliates or licensors from developing or working with a third party to develop Esports events similar to the Events and, further, Licensee agrees that it will not seek to register or otherwise protect any right or interest in any aspect of INDYCAR SERIES racing including without limitation those that do or may have the effect of preventing Licensor from developing and exploiting any such Esports events.
3. Maintenance and Renewals. Licensor may seek registration of Licensed IP, and Licensee shall (at Licensor’s cost) provide reasonable assistance to Licensor such as providing specimens of use of trademarks, copyright deposits, and reasonably cooperating with Licensor to register Licensed IP.
4. Enforcement. Licensee shall reasonably promptly inform Licensor in writing of any potential infringement relating to Licensed IP after becoming aware of any such potential infringement. Should Licensor believe that a third party is infringing Licensed IP, Licensor Group shall make a reasonable determination as to whether to not to file suit or any other type of action or proceeding against that third party. Should Licensor Group file suit or another type of action, Licensor may join Licensee as a party to such suit or action and Licensee shall provide reasonable assistance to Licensor in any such action but shall not be obliged to incur any third party costs in so doing. Licensor Group will have the sole right and sole discretion to institute actions for infringement or other proceedings related to the Licensed IP and to take any other actions Licensor Group deems necessary to terminate such unauthorized uses; however, nothgin in this Agreement required Licensor Group to institute any action.
5. Quality Control. Licensee shall perform all acts reasonably requested by Licensor to assure that the nature and quality of the Events are consistent with and do not detract from the goodwill associated with the Licensed IP. Without limitation:
5.1 The Licensee shall ensure that the Events and all advertising, marketing, and promotional materials:
(a) comply with all applicable law, rules, regulations, safety standards and codes of practice; and
(b) are of a quality and standard equal to good industry standard and at a level at least commensurate with the quality of Licensee’s other current Esports events; and
(c) do not exceed the scope of the license granted hereunder and (except for use of the Licensed IP in accordance with this Agreement in the United States) do not infringe or violate the rights, including without limitation the intellectual property rights and privacy rights, of any third party.
The Licensee shall further ensure that the Events are approved by Licensor in accordance with the approval process set forth in Annex B attached to this Agreement. Licensor’s review and approval process may include such factors as Licensor and its licensors reasonably determine are appropriate including without limitation that the Events accurately and fairly depict the Licensed IP and the sport of INDYCAR SERIES racing. For the avoidance of doubt any approval given by the Licensor shall not constitute a waiver of the rights of the Licensor or the Licensee’s obligations and duties under this Agreement.
5.2 If the initial concept provided under Section 5.1 are not approved by the Licensor the Licensee shall make such modifications as may reasonably be required by the Licensor and re submit such samples to the Licensor for its approval (such approval not to be unreasonably withheld or delayed). The Licensee shall not materially alter or amend the Events approved for development by the Licensor pursuant to this Section 5 without first obtaining the written approval of the Licensor in accordance with Section 5.1.
5.3 The Licensee shall on the Licensor’s request provide the Licensor with details of any complaints it has received in relation to the Events together with a report on the steps taken or being taken to resolve and fully address such complaints. Any complaints raising or potentially raising any issue of safety shall be reported to the Licensor (without a request from the Licensor being necessary) within ten working days of receipt. The Licensee shall comply with any reasonable directions given by the Licensor in respect of such complaints.
5.4 Licensor and its duly authorized representative(s) shall have the right, during normal business hours upon reasonable advance notice, to inspect any facility, storage, warehousing, vehicle, ship, aircraft, goods, supplies, and anything else used in connection with Licensed IP by Licensee in order for Licensor to monitor the quality of the Events being provided by Licensee and to ensure that the quality of the Events is of the required standard. Upon Licensor’s written request, Licensee shall grant Licensor access to individuals or organizations served by Licensee in order for Licensor to monitor use of Licensed IP accordance with the quality standards and other requirements of this Agreement. If Licensor notifies Licensee in writing of the disapproval of the quality of Events provided by Licensee in connection with Licensed IP or any misuse of Licensed IP, Licensee shall take prompt steps as reasonably required by the Licensor to improve such quality and/or to remedy trademark use.
5.5 Licensee acknowledges and agrees:
(a) that it will use Licensed IP properly as determined by the applicable laws including without limitation U.S. trademark laws;
(b) that the exercise of the license and worldwide rights granted to the Licensee under this Agreement is subject to all applicable laws, enactments, regulations and other similar instruments, and the Licensee understands and agrees that it shall at all times be solely liable and responsible for such due observance and performance.
5.6 In order to promote the Events and in each instance subject to Licensor’s prior written approval in accordance with this Agreement (including Section 6 below), the Licensee may display so far as is reasonably required to advertise and establish a link to the Events, Licensed IP on the Licensee’s and/or the Licensee manufacturers’, publishers’, distributors’ and/or retailers’ websites, on-line or physical publications, streaming services, game covers of the digitally downloaded games or game add-ons, esports platforms or social media platforms and/or networking sites. The Licensor may agree from time to time to the Licensee producing a limited amount of merchandise clearly branded with the Events in order to promote and advertise the Events, the cost of such merchandise shall be borne by the Licensee and shall not be deducted from the Royalties payable to Licensor. If Licensor agrees to the production of such merchandise, Licensee shall enter into Licensor’s standard written license agreement in the form as may exist from time to time during the Term which agreement will specify the terms and conditions applicable to production of such merchandise including without limitation an additional royalty shall be paid (in an agreed amount) to Licensor for any Event merchandise.
6. Marketing and Promotion.
(a) Licensee shall provide such advertising and publicity as may reasonably be expected to bring the Events to the attention of as many participants and potential participants as possible including, without limitation the creation and execution of marketing plans for the Events.
(b) Licensee shall send to Licensor for its prior written approval (such approval not to be unreasonably withheld, conditioned or delayed) all proposed advertisements and marketing and promotional material relating to the Events whether created by Licensee or by a third party. If Licensor approves of such material, it shall give written notice of such approval to Licensee within ten (10) business days of receipt by Licensor of the material. In the absence of a written notice of approval within ten (10) business days of receipt of such materials, the materials will be deemed to have been disapproved by Licensor. Licensee shall not use any material in the advertising, marketing, or promotion of Events that Licensor has not affirmatively approved in accordance with this procedure. Licensor acknowledges that failure to provide timely responses to requests for approval may result in delays and jeopardize Event dates.
(c) Licensor acknowledges and agrees that Licensee may create, market, advertise, promote and sell advertising and sponsorship for the Events, including, but not limited to, static and dynamic ads, car sponsors, and product placement, etc. At least annually Licensor will provide a list of companies and/or categories to which Licensee may not sell advertising and sponsorship to with respect to the Events, and Licensee agrees not to sell advertising and/or sponsorship to such companies and categories. In addition to and notwithstanding the foregoing, Licensee shall submit to Licensor for its prior written approval (such approval not to be unreasonably withheld, condition or delayed) each advertiser and sponsor to which it proposes to sell advertising and/or sponsorship. If Licensor approves of such advertiser or sponsor, it shall give written notice to Licensee within ten (10) business days of receipt by Licensor of the request. In the absence of written notice of approval by Licensor within ten (10) business days, the advertiser or sponsor will be deemed to have been disapproved by Licensor. Licensee shall not create, market, advertise, promote and/or sell advertising and/or sponsorship in the Product to any party that Licensor has not affirmatively approved in accordance with this procedure.
(e) The parties shall coordinate the timing and content of any public statements or press releases regarding the terms of this Agreement and the Events.
(a) Licensee shall create and facilitate at least *** Events for *** subject to Licensor’s delivery to Licensee of the items set forth on Schedule 7; provided, however, each of Licensor and Licensee acknowledges that the initial season following the execution of this Agreement may be limited in terms of content and tracks to be used for the Events.
(b) Licensee agrees to create and facilitate a minimum of *** Events for ***, subject to Licensor’s delivery to Licensee of the items set forth on Schedule 7.
(c) Beginning ***, Licensee agrees to create and facilitate a minimum of *** Events for *** until the end of the Term, subject to Licensor’s delivery to Licensee of the items set forth on Schedule 7.
(d) The content and timing of all Events must be pre-approved by Licensor, in writing.
(e) Licensor and Licensee shall annually review and evaluate the Events strategy. Notwithstanding any other provision of this Agreement, the parties may mutually agree (but shall not be obligated to) enter into a written amendment to this Agreement to bring it into better alignment with such strategy or may mutually agree in a written agreement executed by both parties to terminate this Agreement as to the remainder of the Term.
8. Term; Termination
8.1 “Initial Term” means the period starting on the Effective Date and ending upon the expiration of the *** year period following the Effective Date. Upon expiration of the Initial Term, the parties may mutually agree in a written amendment executed by both parties to extend the term of this Agreement for an additional period (the “Renewal Term” and together with the Initial Term, the “Term”). Neither party shall be obligated to proceed with any Renewal Term. If Licensor and Licensee do not enter into a written amendment extending the Initial Term for a Renewal Term prior to expiration of the Initial Term, then, unless earlier terminated in accordance with its terms, this Agreement terminates on the expiration of the Initial Term.
8.2 Licensor may terminate this Agreement and revoke the license to Licensed IP in whole or in part immediately on written notice if Licensee:
(a) files for bankruptcy protection or suspends, or threatens to suspend, payment of its debts or is unable to pay its debts as they fall due or admits inability to pay its debts, or suspends or ceases, or threatens to suspend or cease, to carry on all or a substantial part of its business;
(b) fails to pay Licensor the Royalty or any other amount owed under this Agreement within thirty (30) days of when it becomes due under the terms of this Agreement;
(c) commits a breach of any other term of this Agreement which breach is irremediable or (if such breach is remediable) fails to remedy that breach within a reasonable period of time not exceeding 30 days after being notified in writing to do so (“30-Day Cure Period”);
(d) commits a breach of any other agreement between the parties or other members of Licensor Group which breach cannot or is not cured in accordance with the terms of such other agreement including, without limitation, the Game Agreement;
(e) contests the enforceability of this Agreement or any other document executed in connection with this Agreement as it relates to the rights granted to Licensee in this Agreement.
As relates to Section 8.2(c), where a breach is capable of remedy, the Licensee will work diligently and in good faith to ensure that any deficiencies are remedied within a reasonable period of time (not exceeding the 30-Day Cure Period). In the event the deficiencies cannot be remedied after such good faith effort, Licensor shall have the additional right which may be exercised by it in its absolute and sole discretion that instead of terminating this Agreement it may terminate this Agreement in part and prohibit Licensee’s use of the Licensed IP in connection with the portion of the Events not in compliance with this Agreement. In such a termination in part Sections 8.3, 8.4, 8.5, and 8.6 shall apply to the part of the Agreement (or part of Events) that is terminated.
8.3 On the effective date of termination of this Agreement pursuant to Sections 8.2:
(a) Licensee shall cease producing the Events and using the Licensed IP content.
(b) Licensee’s license to use the Licensed IP for producing any new Events shall terminate.
(c) Licensee shall not use the Licensed IP for any Events produced after the effective date of such termination.
(d) all outstanding Royalties payable and other sums payable by Licensee to Licensor shall become immediately due and payable to Licensor.
(e) Licensee shall return promptly to Licensor at Licensee’s expense all records and copies of Licensed IP in its possession related to the Events and all records and copies of any information of a confidential nature communicated to it by Licensor.
8.4 Any provision of this Agreement that expressly or by implication is intended to come into or to continue in force on or after termination or expiry of this Agreement shall remain in full force and effect.
8.5 Termination or expiry of this Agreement shall not affect any rights, remedies, obligations or liabilities of the parties that have accrued up to the date of termination or expiry, including the right to claim damages in respect of any breach of the Agreement which existed at or before the date of termination or expiry.
9. Liability, Indemnity and Insurance
9.1 To the fullest extent permitted by law, the Licensor shall not be liable to the Licensee for any costs, expenses, loss or damage (whether direct, indirect or consequential and whether economic or other) arising from the Licensee’s exercise of the rights granted to it under this Agreement save that the Licensor shall indemnify Licensee for costs, expenses losses or damages directly arising from Licensor’s breach of the warranties set forth in Section 10.2.
9.2 The Licensee shall indemnify, defend, and hold harmless the Licensor Group against all claims, liabilities, costs, expenses, damages and losses (including and all interest, penalties and legal costs (calculated on a full indemnity basis) and all other reasonable professional costs and expenses) suffered or incurred by the Licensor Group arising out of or in connection with the Licensee’s exercise of the rights granted to it under this Agreement even if the claim alleges or involves the negligence of Licensor Group including without limitation:
(a) the Licensee’s exercise of the rights granted to it under this Agreement;
(b) the Licensee’s breach or negligent performance or non-performance of this Agreement;
(c) the enforcement of this Agreement;
(d) any claim made against the Licensor by a third party for death, personal injury or damage to property arising out of or in connection with the Events, including, but not limited to, libel, slander, invasion of right of privacy, publicity, or property of, or violation or misappropriation of any other right of any third party in conjunction with the sale, distribution, advertising, or promotion of the Events;
(e) Any actual or alleged violation by the Events, or by the creation, possession, use or sale of the Events, of any law, order, rule, or regulation; and
(f) any claim made against Licensor Group alleging violation of the rights of any third party including without limitation privacy rights and/or intellectual property rights (other than the third party rights granted by Licensor as part of the Licensed IP in the United States and used by Licensee in accordance with this Agreement).
9.3 An indemnity given by a Party (the “Indemnifying Party”) to the other (the “Indemnified Party”) shall not apply to any liabilities, costs, expenses, damages or losses incurred by the Indemnified Party as a result of any material breach by the Indemnified Party of any term of this Agreement, or any act of gross negligence or willful misconduct by the Indemnified Party.
9.4 Licensee shall, at its expense, obtain and maintain insurance coverage of types and amounts adequate to support its obligations to Licensor Group under this Agreement during the Term and for a period of three years after termination or expiration of the Agreement. This shall include, at a minimum, the following types and amounts of insurance with insurance companies and under policy terms (including without limitation the deductible amounts) that are reasonably acceptable to Licensor:
|(a)||Commercial general liability insurance coverage, including products liability, of not less than $1,000,000 per occurrence and $2,000,000 in the aggregate;|
|(b)||Cyberliability insurance coverage1 with a limit of not less than $5,000,000 and including at a minimum the following coverages: media liability, security and privacy liability, privacy notification costs, regulatory defense and penalties, PCI fines and expenses, business interruption, security failure, systems failure, consequential reputational loss, dependent business interruption, and security breach; and|
|(c)||Errors & Omissions insurance with standard coverage in a minimum amount of $5,000,000.|
All insurance coverage required shall name Licensor Group as an additional insureds with coverage being primary to and without contribution from any other coverage available to any member of the Licensor Group. In addition, each policy must be endorsed to include a waiver of subrogation in favor of Licensor Group. Licensee shall provide Licensor with a current certificate of insurance that is reasonably satisfactory to Licensor at all times. Due to the length of the Term, Licensor reserves the right to adjust the types and amounts of insurance required hereunder in a reasonable manner upon six months’ notice to Licensee.
10.1 Each Party represents and warrants that it:
(a) is a corporation or a limited liability company (as applicable) duly organized and existing in the jurisdiction in which it is organized;
(b) has taken all necessary company action on its part to authorize the execution and delivery of this Agreement and the performance of its obligations hereunder; and
(c) has duly executed and delivered this Agreement which, in turn, constitutes a legal, valid, binding obligation, enforceable against such Party.
10.2 Licensor represents and warrants to Licensee that Licensor has obtained or will use best efforts to obtain during the Term the right to grant the license to the Licensed IP in the Unted States of America for use in the Events as set forth in this Agreement, subject to Licensee’s recognition that the Licensed IP is subject to change. It is expressly accepted that save for the warranties in this Section 10.2, no warranties are given by the Licensor and all warranties express or implied, statutory or otherwise are excluded. Without limitation, Licensor specifically makes no representations or warranties that its rights to the Licensed IP are or will be recognized or protected outside the United States of America, and Licensor does not assume any obligation to indemnify, defend, or hold harmless Licensee or any other person against the claims of third parties outside the United States of America.
10.3 Each of Licensor and Licensee hereby acknowledges that the Licensed IP shall not extend to, and this Agreement shall not provide Licensee with the right to use the persona, publicity rights, image or any other intellectual property rights of Mr. Roger S. Penske or his family as an individual and that such individuals shall not appear in the Events.
1Licensor acknowledges that Licensee is in process of securing this coverage, and Licensee shall have such coverage in place by the earlier of two weeks following the Effective Date of this Agreement or the first Event.
11. Governing Law; Dispute Resolution.
11.1 This Agreement shall be governed by and construed in accordance with the laws of the State of Indiana, without applying any choice of law provisions of the State of Indiana or any other jurisdiction.
12. General Provisions.
12.1 Each Party undertakes that it shall not at any time during and within five years of the expiry or termination of this Agreement, disclose to any person any confidential information disclosed by one party to the other concerning the business, affairs, customers, sponsors, or suppliers of the other Party, except as permitted by Section 12.2. Disclosed information shall be considered confidential within the meaning of this Agreement only if: (a) the information has been reduced to writing (paper or electronic) and contains a notice as to its confidential nature, or (b) oral information is identified by the speaker as confidential and then reduced to a writing (paper or electronic) delivered to the receiving party that contains a notice as to its confidential nature, or (c) where the nature of the information disclosed or the circumstances under which such information is disclosed should reasonably be understood by the receiving party to be confidential information regardless of whether identified as such by the disclosing party. Without limitation, confidential information does not include any information that, through no fault or failure to act on the part of receiving party, is or becomes: (i) known by the receiving party (without breach of any confidentiality obligation known to the receiving party by any third party) prior to disclosure by the disclosing party; (ii) independently developed by the receiving party without the use of, or reference to, any confidential information; (iii) later received by the receiving party from a third party that is not under a confidentiality obligation to the disclosing party; or (iv) publicly available to third parties. To clarify, all data, computer-aided designs, specifications, drawings, photographs, and other materials related to the Licensed IP shall be confidential regardless of whether marked as such upon delivery to Licensee. The terms of this Agreement are agreed to be confidential information. In addition, to the extent that Licensor’s licensors require Licensee to execute additional confidentiality agreements in order to receive such Licensed IP, Licensee agrees to execute such additional agreements as reasonably required.
12.2 Each Party may disclose the other Party’s confidential information:
(a) To its employees, officers, representatives or advisers who need to know such information for the purposes of carrying out the Party’s obligations or rights under this Agreement provided that each Party shall procure that such persons to whom it discloses confidential information shall keep such information confidential as if were a party to this Agreement;
(b) As may be required by law, a court of competent jurisdiction or any government or regulatory authority; provided, that the compelled party shall provide notice to the other party of the information to be disclosed and, unless impossible, a reasonable opportunity for the other party to take action to protect the confidential information prior to disclosure, and to the extent that disclosure is ultimately required, the disclosing party shall disclose only such confidential information as advised by its counsel is necessary to fulfill its legal obligations;
(c) To the extent that Licensor or Licensee is required by law to do so, it shall have the right to disclose this Agreement and the contents thereof in its or its parent entity’s current report on Form 8-K filed with the U.S. Securities and Exchange Commission (the “SEC”) and other required SEC filings, such as Form 10-K annual reports and Form 10-Q quarterly reports; provided, however, that it shall disclose no more than is necessary to fulfill its legal obligations and shall make such disclosures only after notifying the other party of the information to be disclosed and consulting with its legal department.
12.3 No Party shall use any other Party’s confidential information other than to perform its obligations under this Agreement. For the avoidance of doubt the Licensor is permitted to publicize its involvement with the Licensee and the Events.
12.4 Any notice, demand, or communication required or permitted to be given to a Party by any provision of this Agreement shall be deemed to have been sufficiently given or served for all purposes if (i) delivered personally or (ii) sent by registered or certified mail, postage prepaid, or by national or international overnight delivery service with tracking (e.g., UPS, FedEx) addressed to the Party at the address set forth in the introductory paragraph on page 1 of this Agreement. Except as otherwise provided herein, any such notice shall be deemed to be given on the date on which the same was personally delivered, or, if sent by registered or certified mail, three (3) days after the date on which the same was deposited in a regularly maintained receptacle for the deposit of United States mail, addressed and sent as aforesaid or, if sent by national or international delivery service, on the date received at the Party’s address. The inability to deliver any such notice because of a changed mailing address of which no notice was given, or because of the rejection or refusal to accept such notice, shall be deemed to be the effective receipt of the notice as of the date of such inability to deliver, rejection, or refusal to accept. Notice may be given by counsel or an agent for a Party.
12.5 No waiver of any breach of the terms of this Agreement shall be effective unless such waiver is in writing and signed by the Party against whom such waiver is claimed. No waiver of any breach shall be deemed to be a waiver of any other or subsequent breach.
12.6 If any term, provision or section of this Agreement shall be found to be unenforceable, that term, provision, or section shall be stricken from this Agreement and shall not affect the validity or enforceability of the remaining terms, provisions and sections of this Agreement. Any term or provision of this Agreement which is invalid or unenforceable in any jurisdiction shall, as to that jurisdiction, be ineffective to the extent of such invalidity or unenforceability without rendering invalid or unenforceable the remaining terms and provisions of this Agreement or affecting the validity or enforceability of any of the terms or provisions of this Agreement in any other jurisdiction. If any provision of this Agreement is so broad as to be unenforceable, the provision shall be interpreted to be only as broad as enforceable.
12.7 Each Party shall execute such documents and shall give further assurances as shall be reasonably necessary or desirable to perform its obligations hereunder.
12.8 This Agreement may be executed in any number of counterparts, each of which shall be deemed an original, but all of which shall constitute one and the same instrument.
12.9 This Agreement shall be binding on and inure to the benefit of the Parties and their respective successors and permitted assigns. Except as provided herein, this Agreement may not be assigned by either Party without the prior written consent of the other Party, which consent shall not be unreasonably withheld. Without limitation, Licensee agrees that the Licensed IP are integral assets of the Licensor Group’s operations, and that the goodwill of the Licensor Group is directly related to the proper use of the Licensed IP, and therefore this Agreement constitutes an executory contract subject to 11 U.S.C. §365(c)(1)(A) and may not be assumed or assigned without the express written consent of Licensor. Any sale or transfer of a controlling interest in Licensee shall be deemed an assignment under this Section and shall require Licensor’s prior written consent.
12.10 Except as may be expressly set forth to the contrary herein, this Agreement constitutes the entire agreement between the Parties with respect to the subject matter hereof and supersedes all prior agreements and understandings, whether oral or written, between the Parties (and their affiliates) with respect to the subject matter hereof. This Agreement may be amended only in writing signed by the Parties.
12.11 Except as may be expressly set forth to the contrary herein, representations, warranties, covenants, and agreements contained in this Agreement are for the sole benefit of the Parties hereto and their successors and permitted assigns, and the Agreement will not be construed as conferring, and is not intended to confer, any rights on any other persons or entities.
12.12 Except as expressly set forth in this Agreement, the rights and remedies provided by this Agreement are cumulative and the use of any one right or remedy shall not preclude or waive any other right or remedy. The rights and remedies in this Agreement are given in addition to any other rights or remedies that the Parties may have by law, statute, ordinance or otherwise.
12.13 The headings in this Agreement are inserted for convenience and identification only and are in no way intended to define or limit the scope, extent or intents of this Agreement or any provisions herein.
12.14 The Recitals to this Agreement are hereby incorporated into this Agreement by reference.
12.15 The Parties agree that this Agreement was jointly developed and prepared and shall not be construed for or against either Party by reason of the physical preparation of this Agreement.
12.16 The Parties agree that, if a duly authorized representative of one Party signs this Agreement and transmits such Agreement to the other Party via facsimile or email transmission, and a duly authorized representative of the other Party then signs such transmission, then this Agreement shall have been validly executed by both Parties. In such case, the fully signed document and the facsimile or pdf of such document (bearing all signatures and transmitted to the Party that originally signed such document), shall be deemed original documents.
12.17 The Parties to this Agreement are not partners or joint ventures. This Agreement shall not constitute any Party the legal representative or agent of the other, nor shall any Party or any affiliate of any Party have the right or authority to assume, create or incur any liability or obligation, express or implied, against, in the name of, or on behalf of the other Party solely by virtue of this Agreement.
12.18 Licensor and Licensee shall pay their own respective legal fees incurred in negotiating and preparing this Agreement.
12.19 Licensor and Licensor Group shall not be liable to Licensee for any delay or nonperformance of this Agreement by Licensor (including without limitation with respect to the delivery of any Licensed IP) or for any damages suffered by Licensee, to the extent any delay or nonperformance is due to causes beyond Licensor’s control, including but not limited to, acts of God, war, terrorism, civil strife, rain, fire, strikes, inclement or severe weather (including lightning strikes), power outages, systems failures, governmental order, communicable disease or inability to obtain necessary labor or materials or consents of third parties.
13. Joint Preparation/Independent Counsel.
13.1 This Agreement shall be considered, for all purposes, as having been prepared through the joint efforts of the Parties to this Agreement. No presumption shall apply in favor of or against any Party in the interpretation of this Agreement or any such other agreement or instrument, or in the resolution of any ambiguity of any provision hereof or thereof, based on the preparation, substitution, submission, or other event of negotiation, drafting or execution hereof or thereof.
13.2 Each Party to this Agreement understands and acknowledges that each of them is entitled to and has been afforded the opportunity to consult legal and tax counsel of its choice regarding the terms, conditions and legal effects of this Agreement as well as the advisability and propriety thereof. Each Party to this Agreement further understands and acknowledges that having so consulted with legal and tax counsel of its choosing, such Party hereby waives any right to raise or rely upon the lack of representation or effective representation in any future proceedings or in connection with any future claim resulting from this Agreement.
[The remainder of this page has been intentionally left blank.]
IN WITNESS WHEREOF, the Parties hereto have executed this Agreement effective as of the Effective Date.
|By:||/s/ Mark Miles|
|MOTORSPORT GAMES INC.|
|By:||/s/ Dmotry Kozko|