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Exhibit: 10.17FD
ASSIGNMENT OF INTELLECTUAL PROPERTY RIGHTS
This Assignment of Intellectual Property Rights (this "ASSIGNMENT") is
made as of August 1, 1996 among Carl E. Voigt III, Carl E.Voigt, IV
(collectively the "ASSIGNORS") and Third Quarter Corporation, an Indiana
corporation (the "COMPANY").
RECITALS
A. The Assignors are shareholders and executive officers of the Company, and
have a direct interest in the Company's economic profitability.
B. Pursuant to that certain agreement dated December 18, 1986, among the
Assignors, K&K International, a Michigan corporation (K&K) and Kenneth Johnson
("JOHNSON") the Assignors obtained the rights to market two-playing game
commonly known as "Phase 10" and "Caught-Cha" (the "AGREEMENT"). An executed
copy of the Agreement, without exhibits is set forth on attached and
incorporated SCHEDULE "1" to this Assignment.
C. Pursuant to Section 17 of the Agreement, the Assignors had the right to
assign all or any portion of the rights existing under the Agreement to any
entity in which they collectively owned at least 51%. The Company constitutes
such an entity.
D. In consideration of the Assignors' desire to enhance the profitability of the
Company, and in consideration of the Company agreeing to issue 50,000 shares of
its common, no par value stock to each of the Assignors (for a total issuance of
100,000 shares), the Assignors assigned the rights (except for certain rights
related to hand-held electronic games) to market the "Phase 10" and "Caught-Cha"
playing card game in the United States, pursuant to an oral agreement reached on
November 1, 1991.
E. The parties now desire to memorialize their prior oral understanding in this
written assignment.
CLAUSES
1. ASSIGNMENT OF EXCLUSIVE RIGHTS. Through this instrument, the Assignors sell,
grant, convey and assign to the Company, exclusively for the United States
market, in and for all languages (including but not limited to computer and
human languages whether now existing or subsequently developed) all of the
Assignors' rights, titles and interests in or under the Agreement, including all
rights of the Assignors under all United States, Federal, State or other
"Governmental Authority" (as defined in Section 3 below), copyright, trademark,
trade secret, trade name, service mark, service name, patent, and all other
intellectual property or industrial
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property laws or rights of any type or nature concerning the Agreement or the
products identified in the Agreement. The foregoing assignment of rights by the
Assignors to the Company is all inclusive and is without reservation of any
right, title, interest or use in the United States market, whether now existing
or subsequently arising. The parties specifically agree that the Assignors have
retained all rights under the Agreement to market any and all of the products
identified in the Agreement in any market existing throughout the world other
than the United States. Notwithstanding the foregoing, the assignment of rights
hereunder shall not include the rights to manufacture, market and sell hand-held
electronic games based on the Phase 10 Card Game and Phase 10 Dice Game.
2. FURTHER INSTRUMENTS. The parties shall execute, acknowledge and deliver to
the Company, within five (5) days of the Company's request for the same, such
further instruments and documents as the Company may request from time to time
to facilitate registration of any filings or record the transfers made in this
Agreement in any public office, or otherwise to give notice or evidence of the
Company's exclusive rights to exploit the products identified in the Agreement,
to exercise all the rights arising under the Agreement anywhere in the United
States.
3. GOVERNMENTAL AUTHORITY DEFINITIONS. For purposes of this Agreement, the
following terms shall have the following meanings: (i) the term "UNITED STATES"
shall mean the United States of America, and all geographical territories and
subdivisions of the United States of America; (ii) the term "OTHER NATIONS"
shall mean each country, principality or other independent territory and each
subdivision thereof, which is not a part of the United States; (iii) the term
"SUPRA-NATIONAL AUTHORITY" shall mean the European Union, the United Nations,
the World Court, the Commonwealth, the North Atlantic Treaty Organization, the
General Agreement or Tariffs and Trade, the North American Free Trade Agreement
and all other multinational authorities or treaties which have or may have from
time to time jurisdiction over any of the parties to or any performance under
this Assignment; and (iv) the term "GOVERNMENTAL AUTHORITY" shall mean any
subdivision, agency, branch, court, administrative body, legislative body,
judicial body, alternative dispute resolution authority or other governmental
institution of (A) the United States, (B) any state, municipality, county,
parish, subdivision or territory of the United States, (C) all other Nations,
(D) any state, territory, county, province, municipality, parish or other
subdivision of any Other Nations, and (E) all Supra-National Authorities.
4. BINDING EFFECT. This Assignment is binding upon and shall inure to the
benefit of the Company, its successors and assigns and the Assignors and their
successors and assigns. This Assignment supersedes any prior understandings,
written agreements or oral arrangements between the parties which concerns the
subject matter of this Assignment. This Assignment constitutes the complete
understanding among the parties, and no alteration or modification of any this
Assignment's provisions will be valid unless made in a written instrument which
all the parties sign.
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5. APPLICABLE LAW. The laws of the State of Indiana (other than those pertaining
to conflicts of law) shall govern all aspects of this Assignment, irrespective
of the fact that one or more of the parties now is or may become a resident of a
different state.
/s/ Carl E. Voigt Third Quarter Corporation,
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Carl E. Voigt, III
/s/ Carl E. Voigt By: /s/ Carl E. Voigt
- ----------------------------- -----------------------------
Carl E. Voigt, IV Its: President
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AGREEMENT
This Agreement made this 18th day of December, 1986, K & K International,
a Michigan Corporation, herein called K & K and Kenneth Johnson, herein called
Johnson (K & K and Johnson collectively herein called Inventor) and Carl E.
Voigt, III and Carl E. Voigt, IV, called Voigts.
WHEREAS, "Inventor" has developed and begun to market two playing card
games, commonly known as Phase 10 and Caught-Cha and collectively referred to
herein as "the product"; and,
WHEREAS, Voigts are experienced in the development and exploitation of
markets for similar kinds of products; and
WHEREAS, Inventor is desirous of using Voigts' experience and expertise in
increasing the sales volume for the product; and,
WHEREAS, Voigts are desirous of assuming responsibility for all of the
manufacturing and marketing of the product, under such terms and conditions that
follow, and except as may specifically be excluded hereafter.
NOW THEREFORE, it is agreed as follows:
1. Inventor shall retain K-Mart as its exclusive customer. Accordingly,
Inventor shall continue to be responsible for calling upon and servicing the
needs of K-Mart as they relate to the product and arranging for shipping all of
the product that is needed to fulfill the orders of K-Mart and absorbing all
expenses related thereto. Voigts shall manufacture the product sold to K-Mart
and, shall supply the same to K-Mart at the direction of Inventor. Voigts shall
bill all shipping charges directly to Inventor. All gross proceeds arising from
the sale of the product to K-Mart shall be paid by K-Mart to Inventor and Voigts
jointly and forwarded to Bank One, Lafayette, Indiana, for deposit into account
number 1-650011-8, said funds to then be distributed by said bank, twelve
percent (12%) thereof to go to Inventor as his commission, the remainder to
Voigts. The parties shall execute and deliver to said bank and K-Mart joint
written directions to fulfill the terms of this paragraph.
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2. Except as otherwise provided in paragraph 1 above, Inventor hereby
grants to Voigts the exclusive right to represent, market or sell the product
throughout the entire world.
3. Voigts shall, at their cost, provide for the manufacture and shipping
of all of the product sold by them, or by such other people or entities
authorized by them. Voigts shall further be responsible for all record keeping
and billing service related to such sale of the product.
4. Voigts shall, during the term of this contract or any extension
thereof, exercise their judgment and best efforts in development and commercial
exploitation of the product. Inventor recognizes that Voigts are and will
continue to be engaged in other business pursuits, some of which involve the
manufacture and/or sale of other game products. Voigts shall not, therefore, be
obligated to devote their entire efforts to the manufacture and sale of the
product but are obligated to devote such amount as may be reasonably required to
develop and service a broader market for the product than now exists. In the
event Voigts, in their discretion, determine that the further marketing of the
product will not be commercially feasible or profitable for Voigts, Voigts may
terminate this Agreement upon sixty (60) days written notice to Inventor.
5. Voigts, in the exercise of their sales, marketing and product
development skills are encouraged by Inventor to improve and modify, for greater
sales, the package design, size and shape, color selection and art work.
6. Inventor shall cooperate with the efforts of Voigts with regard to the
promotion and marketing of the product. Inventor shall, upon reasonable request
of Voigts, participate in such promotions, public relations, presentations,
sales call, productions, seminars, advertisements and the like as are deemed
necessary and appropriate by Voigts, for the purpose of promoting the product.
All travel expenses of Inventor incurred at the request of Voigts shall be paid
by Voigts.
7. The initial term of this contract shall be ten (10) years from the date
hereof. This contract shall automatically renew for successive five (5) year
terms unless otherwise terminated by Voigts by written notice to Inventor no
less than ninety (90) days prior to end of the then current term hereof or
unless otherwise terminated in accordance with other provisions of this
Agreement.
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8. Inventor grants to Voigts the right to use, copy or reproduce, without
cost to Voigts except for the direct cost of copying or reproduction, all
materials which have been developed and are presently being used in the
manufacturing process for the product, specifically including but not limited to
the plates, films, separations, mechanicals, photography, dies, die drawings and
art work.
9. In consideration for the exclusive rights granted to Voigts hereunder
and the further covenants and promises made to Voigts herein, specifically
including paragraph 11 hereof, Voigts shall pay to Inventor the sum of Sixty
Thousand Dollars ($60,000.00), payable on or before January 5, 1987. In
addition, Voigts shall pay to Inventor a royalty equal to six (6%) percent of
all gross revenue received by Voigts as a result of the sale of the product,
including that sold to K-Mart. Quarterly, beginning no later than sixty (60)
days after the date of receipt by Voigts of the first revenues from the sale of
the product, Voigts shall provide to Inventor an accounting of all sales of the
product and revenues received. Gross revenue is defined as gross selling price
less returns, freight, advertising, promotional allowances and other customary
allowances given to the customer in the toy business. Royalty payments for any
order shall be paid, within thirty (30) days after receipt by Voigts of payment
for said order. Inventor and its accountant or other representative shall have
the right, upon reasonable notice and during business hours, to examine the
books of account and records covering the sales and revenues relating to the
product in such a manner as to not unduly disrupt the normal business activities
of Voigts. Such an audit may take place no more frequently than once per
calendar year and shall be at the expense of Inventor.
10. Inventor warrants that the product and the marketing thereof does not
infringe upon any presently existing patent, copyright or trademark. Inventor
shall, to the extent the same has not already been accomplished, take all
actions necessary to provide maximum protection for the product available under
the patent, copyright or trademark laws. Inventor agrees to indemnify and hold
harmless Voigts, their affiliates, successors and assigns from any and all
liabilities, obligations, losses, damage, penalties, claims, action suits,
costs, expenses and disbursements, including reasonable attorneys fees and
expenses, resulting from any infringement or alleged infringement of the product
upon any existing patent, copyright, trademark or other proprietary right.
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11. Inventor grants to Voigts a right of first refusal to manufacture and
market any new game related items developed by Inventor from the date of this
Agreement through the termination thereof, all under the same terms and
conditions contained herein and relating to the product.
12. Voigts shall have the right, in furtherance of their rights and
obligations contained in this Agreement to use Inventor's name, logo, trademark
and any and all names, logos or trademarks which are a part of the product,
either directly or indirectly.
13. Voigts acknowledge that Inventor is and shall remain the owner of the
product and that the rights of Voigts with respect to the product are only those
granted by this Agreement.
14. Inventor shall promptly forward to Voigts all inquiries with respect
to the product received from any person or entity except K-Mart or its
employees. Inventor shall further provide to Voigts a list of all customers or
customers contacts made by Inventor to the date hereof with reference to the
product.
15. If at any time during the term of this Agreement or any extension
thereof, Inventor discontinues calling upon, servicing and providing all of
either playing card game to K-Mart, Voigts shall have the right to assume
responsibility for the further development of a market for said playing card
game with K-Mart, the manufacture of the playing card game to suit the needs of
K-Mart, the shipping of the playing card game, the maintenance of all necessary
records and the billing and collecting of the price of said playing card game.
Under such conditions all expenses of manufacture, shipping and billing shall be
the responsibility of Voigts and all gross proceeds from the sale of the playing
card game to K-Mart shall be payable to Voigts and shall be the sole and only
property of Voigts. Voigts shall pay to Inventor a royalty as setforth in
paragraph 9 above based upon gross revenue from K-Mart as a result of the sale
of the playing card game.
16. In the event either party violates the terms of this Agreement, the
other party shall notify the defaulting party of its default, in writing. If
such default has not been cured within thirty (30) days from the date of receipt
of said notice, the non-defaulting party shall have the right to cancel this
Agreement and to exercise any other right it may have at law or equity.
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17. Neither this Agreement, nor any right or obligation thereunder, shall
be assigned by Voigts without the prior written consent of Inventor, which
consent shall not be unreasonably withheld. Notwithstanding this provision,
Voigts may assign this Agreement to any entity which they, considered together,
have at least a fifty-one (51%) percent ownership interest.
18. Inventor may not assign all or any part of this Agreement or the
rights or obligations thereunder without the prior written consent of Voigts,
which consent shall not be unreasonably withheld. It is understood and agreed by
the parties, that Inventor shall at all times continue to have the full
responsibility for calling on and securing the K-Mart account and if and when
Inventor chooses to discontinue that responsibility, said responsibility may not
be assigned to any third party but the provisions of paragraph 15 shall govern.
19. Voigts shall have the right of first refusal to purchase from Inventor
all right, title and interest in and to either or both playing card games. In
the event Inventor receives a bona fide, written, arms length offer to purchase
either such game, Inventor shall give Voigts written notice of said offer.
Voigts shall have sixty (60) days from the receipt of said notice to agree to
purchase said game upon the same terms and conditions as contained in said
offer. If they do not exercise said right, Inventor may then, within the next
;sixty (60) days conclude a sale pursuant to the terms of said offer. Any such
sale shall not effect the rights of Voigts hereunder and any purchase shall be
bound by the terms hereof. If said sale is not concluded within said sixty (60)
days period, the right of first refusal shall again be effective.
20. The terms and conditions of this contract shall be governed by the
laws of the State of Indiana.
21. Any term or provision of this Agreement which is invalid or
unenforceable in any jurisdiction shall, as to such 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
effecting the validity or enforceability of any of the terms or provisions of
this Agreement in any other jurisdiction.
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22. All notices and communications required or permitted to be given under
this Agreement shall be in writing and shall be deemed to have been duly given
if delivered personally or sent by certified mail return receipt requested, post
prepaid, to the parties at the following addresses or to such other address as
either party shall hereafter specify by notice, in writing, to the other party:
IN WITNESS WHEREOF, the parties have executed this Agreement as of the
date set forth above.
K & K INTERNATIONAL
By:
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Carl E. Voigt, III
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Carl E. Voigt, IV Kenneth Johnson
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