EX-99.(D)(8) 15 dex99d8.htm MEMORANDUM OF UNDERSTANDING - LICENSE OF NAME AND LIKENESS Exhibit (d)(8) EXECUTION VERSION MEMORANDUM OF UNDERSTANDING License of Name and Likeness Rights Key Material Terms January 9, 2011 The following are the material...

Non-exclusive license (“License”).

However, HMH agrees not to permit any Prohibited Party to use his name and likeness (i.e. the Licensed Property).

“Prohibited Party” means any person or entity who is an “Unsuitable Person” as defined in the RT/HMH operating agreement. The parties agree that, unless either party has actual knowledge that a person or entity is an Unsuitable Person at the time of entering into an agreement with such person or entity, HMH shall be deemed in compliance of the provision above if HMH obtains, at or prior to entering into such an agreement, a representation, warranty or other certificate from such person or entity providing that he, she or it is not an Unsuitable Person as so defined. In order to determine whether Licensee has actual knowledge that a person or entity is an Unsuitable Person, HMH may send Licensee written notice of the name of such person or entity, and

Unless terminated in accordance with the provisions below, the term (the “Term”) of the License shall commence upon the closing of the merger contemplated in the Merger Agreement and shall expire upon the later of (i) the death of HMH or (ii) such time as HMH’s no longer owns any equity in Licensee.

If the License is terminated as a result of HMH’s death or as a result of HMH no longer owning any equity in Icon Acquisition Holdings, LLC, then upon the occurrence of either such event, the Posthumous Term License (defined below) shall automatically commence and continue thereafter until terminated in accordance with the provisions below (the “Posthumous Term”).

During the Term, Licensee may use the Licensed Property as follows (the “Lifetime Uses”): (i) in the manner set forth on Schedule 1 hereto (“Initial Uses”); (ii) subject to HMH’s approval in each instance, consistent with past practice, in connection and in conjunction with promoting Licensee’s “Playboy” brand through signage and naming, at New Land-Based Entertainment Venues; and (iii) subject to HMH’s approval in each instance, which he may withhold in his sole but reasonable discretion, in connection and in conjunction with manufacturing, distributing, and marketing Licensee’s “Playboy” products and services. For purposes of clarity, in no event may Licensee use or permit the use of the Licensed Property in connection with any express or predominant endorsement of products or services of (a) any third party entity or brand, whether in conjunction with the “Playboy” brand, co-branded with Licensee or otherwise or (b) any product or service line that Licensee is not using as of the date hereof and that are inconsistent with the nature and reputation of Licensee’s business as of the date hereof.

“New Land-Based Entertainment Venues” means any “Playboy” branded club, destination entertainment venue, restaurant, hotel, “VIP” lounge and similar venue at concerts and entertainment events and casinos established by Licensee after the date hereof that are owned, managed, licensed or operated by Licensee, provided, that such venues shall be operated in a manner and quality no less than that of clubs and casinos existing as of the date hereof (e.g. in terms of their first class service, cleanliness, staffing, upkeep, quality, amenities, etc.).

During the Posthumous Term, Licensee may use the Licensed Property in connection with (and in the manner of) any Lifetime Use that both (i) was approved by HMH during his lifetime pursuant to the License and (ii) either (a) was being used by Licensee in accordance with the License

as of HMH’s death or (b) Licensee was actively preparing to use as of HMH’s death (the “Posthumous Term License”).

For purposes of clarity, Licensee may not in any event (during the Term or the Posthumous Term) use or exploit (or permit the use or exploitation) of the Licensed Property independent of Licensee’s own iconic marks and logos (i.e., the “Playboy” name and/or the bunny head logo). By way of example and not limitation, Licensee may not reproduce, distribute or sell the Licensed Property on any merchandise that doesn’t also include such other readily apparent and more prominently-featured mark or logo that is owned by and identifies Licensee.

License fee shall include:

(1) During the Term, the licenses, rights and privileges set forth in the License with respect to the Lifetime Uses are being granted to Licensee in exchange for, among other things, Licensee’s entry into and full performance under that certain employment agreement by and between HMH and Licensee effective as of the commencement of the Term of the License.

(2) During the Posthumous Term, the licenses, rights and privileges set forth in the License with respect to the Posthumous Term License shall be granted to Licensee in exchange for $250,000 per year during the Posthumous Term (the “Posthumous Term License Fee”). The Posthumous Term License Fee shall be paid to a charitable foundation or other non profit selected by HMH in his sole discretion (including, without limitation, HMH’s foundation). Licensee shall pay the

Posthumous Term License Fee in advance each year during the Posthumous Term by wire transfer of immediately available funds within 10 days after the commencement of the Posthumous Term and, for each year thereafter, on the anniversary date of the commencement of the Posthumous Term.

(3) With respect to all uses of the Licensed Property other than as specified above, the parties shall negotiate a royalty fee and other terms and conditions at the time of the proposed use.

HMH may terminate the Term (or the Posthumous Term) of the License upon written notice to Licensee following any of the following events:

(1) Material breach of License that, if curable, remains uncured for 30 days following written notice of such breach to Licensee from HMH or, so long as Licensee is diligently using its best efforts to cure such breach, such longer period as is reasonably necessary to effect such cure.

The parties acknowledge that, with respect to inadvertent breaches of which Licensee receives written notice relating to the approval process set forth in the License, the (i) prompt removal of all unapproved items/materials; (ii) disgorgement by Licensee to HMH of all gross proceeds related thereto; and (iii) prompt action by Licensee of any other acts reasonably requested by HMH to dissociate HMH from such unapproved items/materials and to correct any reputational harm or unjust enrichment relating thereto shall be deemed to cure such breach, provided, however, that Licensee shall not have the benefit of the foregoing provision if it has committed more than two such inadvertent breaches within any twelve month period.

(2) Material breach by any JV partner or Company of any of the following provisions of the operating agreement, which such breaches, if curable, remain uncured for a period of ten (10) business days following

written notice from HMH of such breach: Section 5.2 (Board configuration), Section 5.3(b) (HMH special approval rights), Section 6.5(b) (HMH personal rights), Section 6.8 (RT minimum ownership), Section 9.2 (IPO), and/or Article 9 (transfer restrictions).

(3) Termination without Cause or with Good Reason of HMH’s employment agreement, provided, however, that in the event that Licensee’s breach is due solely to an Unforeseeable Financial Condition, then Licensee shall have a period of nine (9) months following written notice to cure such breach so long as Licensee is diligently working to remove, reverse or mitigate such Unforeseeable Financial Condition. “Unforeseeable Financial Condition” means [                    ]. [HMH to provide and parties to mutually agree upon definition prior to end of January 2011]

The Term (or the Posthumous Term) of the License shall automatically terminate without the necessity of any notice whatsoever in any of the following events:

(4) (i) Licensee files a petition in bankruptcy or is adjudicated a bankrupt; (ii) a petition in bankruptcy is filed against Licensee which is not stayed or dismissed within 60 days following filing; (iii) Licensee declares that it is insolvent or makes or agrees to make an assignment for the benefit of creditors or an arrangement pursuant to any bankruptcy law, (iv) Licensee discontinues business; or (v) a receiver is appointed for Licensee. If the License is terminated pursuant to this clause (4), any and all of Licensee and its receivers, representatives, trustees, agents, administrators, successors and assigns shall have no right to sell or in any way deal with any of the Licensed Properties, except with the special prior written consent and under the instructions of HMH that it or they shall be obligated to follow.

of any Prohibited Party. HMH’s permitted use of such images and depictions of the Mansion (including items located therein) shall be without any additional compensation to Licensee except if such use (i) is intended to promote third party products or services and (ii) includes the iconic, recognizable spaces in the Mansion (e.g., the Great Hall, the front of the Mansion, the grotto), in which case Licensee shall have the right to negotiate a location fee, consistent with past practice, for such use.

Neither party shall during the Term (or the Posthumous Term) enter (or permit any of its affiliates to enter) into any business arrangement with any Prohibited Party or any brand of any Prohibited Party.

The scrapbooks (maintained at the Mansion), which are in essence an autobiography of HMH’s life, and all materials created by Hef contained therein shall be confirmed as the property of HMH. For purposes of clarity, the copyrights to images published in Playboy Magazine shall be owned by Licensee, not HMH. For further clarity, HMH intends to continue creating the scrapbooks during his entire lifetime, and all intellectual property rights in and to materials created by HMH in connection with the scrapbooks shall belong solely to HMH.

Licensee shall cover HMH’s costs and expenses for (i) continuing the creation of the scrapbooks through HMH’s death, in an amount equal to $356,000 per year (as may be increased, but not decreased, on annual basis pursuant to the Budget Process under the operating agreement) and (ii) maintaining and digitizing the scrapbooks, in an amount equal to but not in excess of $1,000,000 in aggregate. It is the parties’ intent that the original scrapbooks remain at the Mansion so long as HMH resides at the Mansion. The parties understand that it is HMH’s intention that the original scrapbooks be relocated to a location other than the Mansion after HMH is no longer residing at the Mansion. However, notwithstanding the foregoing, HMH may elect to keep the scrapbooks at the Mansion for any period of time after he is no longer residing at the Mansion, and Licensee agrees to grant to HMH and his designees reasonable access to the scrapbooks and to maintain the scrapbooks in the manner they are currently being maintained.

HMH shall grant to Licensee a royalty free, fully paid up, nonexclusive, nontransferable, perpetual license to the scrapbooks (and, if completed, the digitized scrapbooks), in each case, solely to the extent of HMH’s rights therein, solely for non-commercial, research and educational purposes. Licensee shall grant to HMH (including his successors, trustees, heirs and estate) a royalty free, fully paid up, nonexclusive, nontransferable (other than to his successors, trustees, heirs and estate), perpetual license to the scrapbooks, including any digital version, in each case, solely to the extent of Licensee’s rights therein, solely for non-commercial, research and educational purposes. HMH shall deliver a copy of the digitized scrapbooks (if and when completed) to Licensee, but, for purposes of clarity, such copy shall not be deemed a “sale” but,

rather, solely a license to the materials therein.

During the Term of the License and any Posthumous Term, to the extent any images or materials contained in the scrapbooks are created by HMH and are used by Licensee in Initial Uses, Licensee shall not be required to pay any additional consideration to HMH for such uses, and such images and materials shall be deemed to be part of the “Licensed Property” under the License (subject in all cases to HMH’s approval rights under the License). Otherwise, the parties shall negotiate in good faith pursuant to Section 8(3) above clause (3) of “Licensee Fee” above with respect to uses of any such other materials contained in the scrapbooks.

HMH makes and shall make no representation or warranty (or provide any indemnity) with respect to the images contained in the scrapbooks or Licensee’s ability to use such images without violating the rights of any person or entity. Licensee shall indemnify HMH with respect to its use of such images.

▇▇▇▇▇ Traverse Management, LLC

Contract Name

Contracting Parties

Date

General Publishing Group, Inc.

Playboy Enterprises, Inc.

Consolidated Cigar Corporation

Playboy Enterprises, Inc.

General Publishing Group, Inc.

Playboy Enterprises, Inc.

Taschen GmbH

Playboy Enterprises International, Inc.

Taschen GmbH

Playboy Enterprises International, Inc.

General Publishing Group, Inc.

Beeline Creative, Inc.

Playboy Enterprises International, Inc.

Kidrobot, Inc.

Playboy Enterprises International, Inc.

Rubies Costume Company, Inc.

Playboy Enterprises International, Inc.

▇▇▇▇▇▇▇ ▇▇▇▇▇ & Sons, Inc.

Playboy Enterprises International, Inc.

Spirits International B.V.