EXHIBIT 10.4
FIRST AMENDMENT TO LICENSE AGREEMENT
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THIS FIRST AMENDMENT TO LICENSE AGREEMENT (this "AMENDMENT") is made as
of the 22nd day of December, 2003, by and between Falcon Picture Group, LLC,
with its principal office at ▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇
("FALCON"), and Genius Products, Inc., with its principal office at ▇▇▇▇▇ ▇▇
▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇ ▇▇▇, ▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, Attn: ▇▇▇▇▇ ▇▇▇▇▇▇▇
("LICENSEE"). Falcon and Licensee are sometimes referred to below individually
as a "PARTY" and collectively as the "PARTIES".
WHEREAS, the Parties entered into a License Agreement with each other,
dated September 8, 2003 (the "LICENSE AGREEMENT"), pursuant to which Falcon
agreed to license certain audio and video programs and related rights to
Licensee on an exclusive basis (the "LICENSED ARTICLES");
WHEREAS, since entering into the License Agreement, ▇▇▇▇ ▇▇▇▇▇, Chief
Executive Officer of Falcon ("AMARI") has entered into negotiations with TV
GUIDE regarding the acquisition of a license to use the TV GUIDE name and logo
in connection with the development, marketing and sale, throughout the United
States, of a full line of DVD products featuring classic television content from
1946 through 1989;
WHEREAS, the Parties wish to memorialize the agreement previously
reached on October 2nd, 2003, between the Parties regarding the amendment of the
License Agreement to include certain provisions applicable to the then-pending
TV GUIDE license; the payment of certain Funds, as defined below, to Licensee by
Amari upon Falcon's acquisition of the above-referenced license from TV GUIDE
and the issuance of additional shares of Licensee's Common Stock to Amari;
WHEREAS, this Amendment could not be executed until Falcon obtained the
above-referenced license from TV GUIDE and provided the Funds to Licensee;
WHEREAS, Falcon has obtained the license from TV Guide and Licensee has
received the Funds as of the date written above;
WHEREAS, the acquisition of the above-referenced license from TV GUIDE
will necessitate the payment of certain guaranteed minimum royalty payments to
TV GUIDE;
WHEREAS, Licensee wishes for Falcon to complete its negotiations to
acquire the above-described license so that the Licensed Articles may be
marketed and sold under the TV GUIDE name and logo; and
WHEREAS, Licensee has agreed to pay to Falcon certain recoupable
advances, as provided below, in order to enable Falcon to execute an appropriate
written agreement with TV GUIDE, and to perform its minimum guaranteed payment
obligations to TV GUIDE thereunder.
NOW, THEREFORE, for good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, the Parties agree as follows:
1. DEFINITIONS; RECITALS. All capitalized words and phrases used and
not otherwise defined herein shall have the meanings ascribed to them in the
License Agreement. The Recitals set forth above are an integral part of this
Amendment and they are, therefore, incorporated into and made a part of this
Agreement.
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[Confidential treatment has been requested with respect to the omitted portions
of this exhibit. The copy filed herewith omits the information subject to the
confidentiality request. Omissions are designated as **. A complete version of
this exhibit has been filed separately with the Securities and Exchange
Commission.]
2. COVENANTS OF THE PARTIES. Falcon, on its part, shall use
commercially reasonable efforts to enter into a license or similar agreement
with TV GUIDE regarding the acquisition of a license or similar grant of rights
to use the TV GUIDE name and logo in connection with the development, marketing
and sale, throughout the world, of a full line of DVD products featuring classic
television content from 1946 through 1989 (the "TV GUIDE LICENSE"). Licensee, on
its part, shall honor and abide by all of the applicable terms and conditions of
the TV GUIDE License (in the event such an agreement is entered into by Falcon
and TV GUIDE). In the event that Falcon is not able to negotiate and execute an
acceptable TV GUIDE License by December 31, 2003, the original terms of the
License Agreement between Falcon and Licensee shall remain unchanged and this
Amendment shall become null and void and of no further force or effect. In the
event that Falcon is able to negotiate and execute an acceptable TV GUIDE
License by such date, then the terms of the License Agreement shall be modified
and amended as set forth in Section 3 below. Licensee shall have the right to
review the TV GUIDE License and approve of the terms of same in its sole
discretion prior to this Amendment's taking effect. Any amendment or termination
of the TV GUIDE License must be made in good faith on the part of Falcon. Falcon
must provide Licensee with as much notice as possible of any amendment or
termination of the TV GUIDE License. Licensee retains the right to approve of
the terms of any amendment of the TV GUIDE License in its sole discretion if
such terms have any effect on the Amendment or the License Agreement. Any
approval by Licensee under this Section 2 shall be made in good faith and shall
not be unreasonably withheld.
3. CHANGES TO TERMS OF LICENSE AGREEMENT. In the event that Falcon
enters into the TV GUIDE License, the Parties agree to the following amendments
to the terms of the License Agreement:
(a) The Territory as defined in Section 6 of the License
Agreement shall hereby be amended to be "the World", but in all cases
shall be subject to or as limited by any territorial restrictions or
limitations on Falcon's rights under existing or future agreements,
copies of which are to be provided to Licensee.
(b) Section 7(a)(ii) of the License Agreement shall hereby be
amended to reflect that royalty statements will be provided to Falcon
quarterly, as soon as possible and in any event they shall be provided
at such time and manner so that they are received by Falcon not later
than the thirtieth (30th) day of the month following the end of the
preceding calendar quarter, commencing with a report for the quarter
ending December 31, 2003, and shall be accompanied by payment of the
amount shown due to Falcon thereon which exceeds the Guaranteed Minimum
Royalty Fee and which shall include any advances and guaranteed
payments recoupable by Licensee which have been recouped. The
Guaranteed Minimum Royalty Fee shall continue to be paid on a monthly
basis.
(c) In addition to and not in lieu of the Guaranteed Minimum
Royalty Fees described in Section 7 of the License Agreement, Licensee
shall pay to Falcon a guaranteed minimum payment in the aggregate
amount of ** (the "INITIAL TV GUIDE GUARANTEED PAYMENT") with respect
to the initial term of the TV GUIDE License (which is expected to run
from December 1, 2003 through June 30, 2007, and in any case shall be
for a minimum term of three and a half years), which amount shall be
payable to Falcon as follows:
(i) The first ** shall be paid to Falcon for the
execution of the TV GUIDE License;
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[Confidential treatment has been requested with respect to the omitted portions
of this exhibit. The copy filed herewith omits the information subject to the
confidentiality request. Omissions are designated as **. A complete version of
this exhibit has been filed separately with the Securities and Exchange
Commission.]
(ii) An additional ** shall be paid to Falcon on or
before the date which is eighteen (18) months after execution of the TV
GUIDE License; and
(iii) The final ** shall be paid to Falcon on or
before the date which is thirty (30) months after execution of the TV
GUIDE License.
(d) Also in addition to and not in lieu of the Guaranteed
Minimum Royalty Fees described in Section 7 of the License Agreement,
if the TV GUIDE License is renewed following the initial term, Licensee
shall pay to Falcon a guaranteed minimum payment in the aggregate
amount of ** (the "RENEWAL TV GUIDE GUARANTEED PAYMENT") with respect
to the renewal term of the TV GUIDE License, which amount shall be
payable to Falcon as follows:
(i) The first ** shall be paid to Falcon upon renewal
the TV GUIDE License (which renewal term is expected to commence on or
around July 1, 2007) (the "TV GUIDE LICENSE RENEWAL DATE");
(ii) An additional ** shall be paid to Falcon on or
before the first anniversary of the TV GUIDE License Renewal Date; and
(iii) The final ** shall be paid to Falcon on or
before the second anniversary of the TV GUIDE License Renewal Date.
(e) The Initial TV GUIDE Guaranteed Payment and the Renewal TV
GUIDE Guaranteed Payment are collectively referred to below as the "TV
GUIDE GUARANTEED PAYMENTS".
(f) It is acknowledged and agreed by Licensee that the
foregoing TV GUIDE Guaranteed Payments have been marked up by Falcon to
include an advance acquisition fee payable to Falcon (the "TV GUIDE
ACQUISITION FEES") in addition to the actual guaranteed minimum payment
amounts due to TV GUIDE from Falcon under the TV GUIDE License.
(g) Falcon acknowledges that Falcon shall be solely
responsible for paying the guaranteed minimum payments due to TV GUIDE
under the TV GUIDE License out of the TV GUIDE Guaranteed Payments paid
to Falcon by Licensee, as provided above.
(h) Falcon shall be entitled to keep the TV GUIDE Acquisition
Fees included in the TV GUIDE Guaranteed Payments.
(i) Licensee shall be entitled to recoup the entire aggregate
amount of the TV GUIDE Guaranteed Payments paid by Licensee (including
the portion that constitutes Falcon's TV GUIDE Acquisition Fees) by
setting off the actual amounts paid to Falcon against future Royalty
Fees that accrue with respect to sales of TV GUIDE-branded products
("TV GUIDE PRODUCTS"), as provided in Section 3(i) below.
-3-
[Confidential treatment has been requested with respect to the omitted portions
of this exhibit. The copy filed herewith omits the information subject to the
confidentiality request. Omissions are designated as **. A complete version of
this exhibit has been filed separately with the Securities and Exchange
Commission.]
(j) Pursuant to the TV GUIDE License, it is anticipated that
TV GUIDE will be providing certain advertising and marketing support
for the purpose of promoting and advertising the sale of the TV GUIDE
Products (the "TV GUIDE Marketing Support"), and that Falcon/Licensee
will be required to establish a dedicated 800 number or numbers (and
possibly other dedicated sales support systems) in order to receive
orders generated by such TV GUIDE Marketing Support.
(k) Falcon's Royalty Fees with respect to sales of TV GUIDE
Products shall be equal to ** of Net Sales of all TV GUIDE Products,
EXCEPT that with respect to sales of TV GUIDE Products that result from
or are generated by TV GUIDE Marketing Support, the Royalty Fees
payable to Falcon shall be equal to ** of Net Sales.
(l) Once the TV GUIDE Advances have been fully recouped by
Licensee, Licensee shall pay all additional Royalty Fees to Falcon on a
quarterly basis pursuant to the terms set forth in Section 7(a)(ii) of
the License Agreement.
(m) Upon termination or expiration of the License Agreement,
Licensee shall cease all further use of the "TV GUIDE" name and logo
unless and then only to the extent (and on such terms) such continued
use is approved in writing by Falcon (and TV GUIDE, to the extent TV
GUIDE's consent is necessary).
(n) Upon the execution of the TV Guide License, Amari shall
remit Nine Hundred Seventy-Two Thousand Dollars ($972,000) to Licensee
(the "Funds").
(o) Section 11(c) is amended to include the stock issued under
the terms of this Amendment in the Licensee's next Registration
Statement with the understanding that the filing of the Registration
Statement will not be required to be occur within 30 days of the
execution of this Amendment.
(p) Section 14(f) is amended to reference Article 14 in place
of Article 13.
4. ISSUANCE OF COMMON STOCK. Upon the execution of the TV Guide License
and the receipt of the Funds, Licensee shall issue One Million Three Hundred
Fifty Thousand (1,350,000) shares of Licensee's Common Stock valued at $0.72 per
share. All Common Stock issued under the terms of this Amendment will be issued
(i) subject to the notices provided in Exhibit A attached hereto, (ii) with the
understanding that Amari is an "Accredited Investor" as such term is defined in
Rule 501 of Regulation D under the Securities Act, and (iii) pursuant to other
acknowledgements and representations made by Amari as set forth in Exhibit B
attached hereto.
5. CONFLICTS. To the extent there are any conflicts between the terms
of this Amendment and the terms of the License Agreement for as long as this
Amendment is in full force or applies, the terms of this Amendment shall be
controlling. Except as expressly modified in accordance with this Amendment, the
License Agreement shall remain in full force and effect in accordance with its
terms.
IN WITNESS WHEREOF, the parties have executed this Amendment as of the
date first above written.
AGREED TO AND ACCEPTED: AGREED TO AND ACCEPTED:
GENIUS PRODUCTS, INC., Licensee FALCON PICTURE GROUP, LLC, Falcon
/s/ ▇▇▇▇▇ ▇▇▇▇▇▇▇ /s/ ▇▇▇▇ ▇▇▇▇▇
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▇▇▇▇▇ ▇▇▇▇▇▇▇, Chief Executive Officer ▇▇▇▇ ▇▇▇▇▇, Chief Executive Officer
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EXHIBIT A
NOTICES REGARDING COMMON STOCK ISSUANCES
THE SECURITIES OFFERED HEREBY HAVE NOT BEEN REGISTERED WITH ANY STATE SECURITIES
OR FEDERAL REGULATORY AGENCY, AND NO STATE OR FEDERAL REGULATORY AGENCY HAS
PASSED UPON OR ENDORSED THE MERITS OF THIS OFFERING OR THE ACCURACY OR ADEQUACY
OF ANY DISCLOSURE MADE IN CONNECTION THEREWITH. ANY REPRESENTATION TO THE
CONTRARY IS A CRIMINAL OFFENSE.
THE SECURITIES OFFERED HEREBY MAY NOT BE RESOLD WITHOUT REGISTRATION UNDER
APPLICABLE FEDERAL AND STATE SECURITIES LAWS OR AN OPINION OF COUNSEL
SATISFACTORY TO GENIUS PRODUCTS, INC. IS OBTAINED TO THE EFFECT THAT SUCH
REGISTRATION IS NOT REQUIRED UNDER SUCH LAWS.
▇▇▇▇ ▇▇▇▇▇ ("INVESTOR") ACKNOWLEDGES THAT THE COMMON STOCK HAS NOT BEEN
REGISTERED UNDER THE FEDERAL SECURITIES LAWS, THE CALIFORNIA CORPORATE
SECURITIES LAW OR THE SECURITIES LAWS OF NEVADA OR ANY OTHER STATE. THE
SECURITIES HAVE BEEN ACQUIRED FOR INVESTMENT AND THEY MAY NOT BE OFFERED, SOLD
OR TRANSFERRED UNLESS AND UNTIL SUCH SECURITIES ARE REGISTERED UNDER APPLICABLE
FEDERAL AND STATE SECURITIES LAWS, OR AN OPINION OF COUNSEL REASONABLY
SATISFACTORY TO THE CORPORATION IS OBTAINED TO THE EFFECT THAT SUCH REGISTRATION
IS NOT REQUIRED UNDER SUCH LAWS.
INVESTOR'S ACCEPTANCE OF THE COMMON STOCK CONSTITUTES A SPECULATIVE, HIGH-RISK
INVESTMENT THAT SHOULD BE ACCEPTED ONLY IF INVESTOR IS ABLE TO AFFORD THE LOSS
OF ITS ENTIRE INVESTMENT.
THE SUITABILITY OF THIS TYPE OF INVESTMENT SHOULD BE EXAMINED IN THE CONTEXT OF
INVESTOR'S OWN NEEDS, INVESTMENT OBJECTIVES AND FINANCIAL CAPABILITIES, AND
INVESTOR SHOULD MAKE AN INDEPENDENT INVESTIGATION AND DECISION AS TO THE
SUITABILITY OF THIS INVESTMENT AND AS TO THE RISKS AND POTENTIAL LOSSES
INVOLVED. INVESTOR IS ENCOURAGED TO CONSULT WITH ITS ATTORNEYS, ACCOUNTANTS,
FINANCIAL CONSULTANTS AND OTHER BUSINESS AND TAX ADVISORS REGARDING THE RISKS
AND MERITS OF THE INVESTMENT.
EXHIBIT B
▇▇▇▇ ▇▇▇▇▇ REPRESENTATIONS AND WARRANTIES
1. ▇▇▇▇ ▇▇▇▇▇'▇ ACKNOWLEDGMENTS. ▇▇▇▇ ▇▇▇▇▇ ("Amari") hereby acknowledges that
Licensee reserves the right, in the future, to sell additional shares of
Common Stock and to issue additional warrants or options, any of which may
result in substantial dilution of the equity interest accepted by Amari
pursuant to this Agreement.
2. AMARI'S REPRESENTATIONS AND WARRANTIES. Amari hereby represents and
warrants that all of the following information is correct and complete as
of the date on the signature page hereto:
(a) Amari represents and warrants that Amari's state of
residence is Illinois.
(b) Amari represents and warrants that Amari qualifies as an
Accredited Investor as that term is defined in Regulation D under the
Securities Act based upon the fact that Amari (i) has a net worth
(including home, furnishings and automobiles) of at least $1 million
either individually or through aggregating his individual holdings and
those in which he has a joint, community property or other similar
shared ownership interest with his spouse; (ii) has an annual gross
income for the past two years of at least $200,000 (or $300,000 jointly
with his spouse) and expect his income (or joint income, as
appropriate) to reach the same level in the current year; or (iii) is a
director or executive officer of the Licensee.
(c) Amari hereby represents and warrants that Amari meets the
following criteria as described under Section 25102(f) of the
California Corporations Code ("Section 25102(f)") and acknowledges that
Licensee will rely on such representations and warranties for purposes
of establishing any exemption from registration pursuant to Section
25102(f): Amari has a preexisting personal or business relationship
with Licensee or one or more of its officers, directors or controlling
persons in that Amari and Licensee are parties to a prior licensing
agreement and have had an ongoing business relationship as a result of
that agreement.
(d) Amari is accepting the Common Stock for Amari's own
account and not with a view to or for sale in connection with any
distribution of the Common Stock.
(e) Amari acknowledges that the offer and acceptance of the
Common Stock pursuant to this Agreement has not been accomplished by
the publication of any advertisement or by any general solicitation.
(f) Amari has received, read and fully understands the
representations and warranties contained in this Section 2. Amari
acknowledges that Amari's decision to accept the Common Stock is based
solely on the documents filed with the Securities and Exchange
Commission ("SEC") by Licensee, which Amari has had the opportunity to
obtain and review, and on Amari's personal expertise in, or knowledge
of, Licensee and the industry in which Licensee operates its business,
and Amari has relied only on the information contained in said
materials and has not relied upon any representations made by any other
person. Amari further acknowledges that, as a result of the Amari's
expertise in or knowledge of Licensee and its industry, Amari is in a
position to evaluate the risks associated with this investment without
relying solely on information provided by Licensee.
(g) Amari's overall commitment to investments that are not
readily marketable is not disproportionate to Amari's net worth, and
Amari's investment in the Common Stock will not cause such overall
commitment to become excessive. Amari has adequate means of providing
for Amari's financial requirements, both current and anticipated, and
has no need for liquidity in this investment. Other than as provided in
Section 3(o) of the First Amendment to License Agreement to which this
Exhibit is attached, Amari can bear, and is willing to accept, the
economic risk of losing Amari's entire investment in the Common Stock.
(h) Amari recognizes that an investment in the Common Stock is
speculative and involves substantial risk and is fully cognizant of and
understands all of the risk factors related to the acceptance of the
Common Stock, including without limitation the risk factors set forth
in the Licensee's documents filed with the SEC.
(i) Amari has had the opportunity to ask questions of, and
receive answers from Licensee and its officers, directors and employees
concerning Licensee, the creation and operation of Licensee, and the
terms and conditions of the acceptance of the Common Stock and to
obtain any additional information deemed necessary. Amari has been
provided with all materials and information requested by the Amari, or
others representing the Amari, including any information requested to
verify any information furnished to the Amari.
(j) Amari understands and acknowledges that legends will be
placed on any certificates evidencing the Common Stock with respect to
restrictions on distribution, transfer, resale, assignment,
hypothecation or subdivision of the Common Stock imposed by applicable
federal and state securities laws. Amari is fully aware that the Common
Stock accepted hereunder has not been registered with the SEC or under
any state securities law and that the acceptance is intended to be a
non-public offering in reliance upon Section 4(2) of the Securities Act
and/or Rule 506 of Regulation D as promulgated under the Securities Act
and under Section 25102 of the California Corporations Code or other
applicable state regulations, which reliance is based in part upon
Amari's representations and warranties set forth in this Section 2.
Amari understands and acknowledges that unless the Common Stock is
registered in compliance with all applicable laws, the Common Stock may
not be re-offered for sale or resold except in a transaction, or as a
security, exempt under such laws. Amari further understands and
acknowledges that the specific approval of such resales by the state
securities administrator may be required in some states.
3. NO SHORT SALES. Amari expressly agrees that until such time that it has
sold all of the Common Stock issued pursuant to this Agreement, it will not
directly or indirectly, through an affiliate (as that term is defined under
Rule 405 promulgated under the Securities Act) or by, with or through an
unrelated third party or entity, whether or not pursuant to a written or
oral understanding, agreement, arrangement, scheme, or artifice of nature
whatsoever, engage in the short selling of Licensee's Common Stock or any
other equity securities of Licensee, whether now existing or hereafter
issued, or engage in any other activity of any nature whatsoever that has
the same effect as a short sale, or is a DE FACTO or DE JURE short sale, of
Licensee's Common Stock or any other equity security of Licensee, whether
now existing or hereafter issued, including, but not limited to, the sale
of any rights pursuant to any understanding, agreement, arrangement, scheme
or artifice of any nature whatsoever, whether oral or in writing, relative
to Licensee's Common Stock or any other equity securities of Licensee
whether now existing or hereafter created.
Dated as of December 22, 2003 Signature: /s/ ▇▇▇▇ ▇▇▇▇▇
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