EXHIBIT 10.48
LICENSE AGREEMENT
THIS LICENSE AGREEMENT (this "Agreement") is made as of the 23rd day of
October, 1998, by and between XXXX XXXXXXXXX, XX. ("Xxxxxxxxx, Jr."), and
GARGOYLES, INC., a Washington corporation("Gargoyles").
RECITALS
A. Gargoyles designs, assembles, markets and distributes a broad range of
sunglasses and eyewear products.
X. Xxxxxxxxx, Xx. is a NASCAR Winston Cup Series driver.
C. Subject to the terms and conditions of this Agreement, Gargoyles desires
to obtain the services of Xxxxxxxxx, Jr. in connection with the marketing and
sale of its products, and Xxxxxxxxx, Jr. desires to assist Gargoyles in such
efforts.
AGREEMENT
NOW, THEREFORE, in consideration of the premises and the mutual agreements
contained herein, the parties hereto hereby agree as follows:
1. Product Description.
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The products that are the subject of this Agreement include GARGOYLES
PERFORMANCE EYEWEAR brand sunglasses and related products (the "Products").
2. License.
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Subject to the terms and conditions of this Agreement, Xxxxxxxxx, Jr.
hereby grants to Gargoyles an exclusive worldwide license to adapt, distribute,
perform, reproduce and use Xxxxxxxxx, Jr.'s name, likeness, autograph and voice
on the Products and/or in advertisements, commercials, packaging, signs and
other advertising and promotional formats, materials or media to advertise,
market, promote and sell the Products throughout the world. Xxxxxxxxx, Jr.
will not endorse, wear, or support, or authorize or permit any third party to
use his name, likeness, autograph or voice in connection with any other
sunglasses anywhere in the world during the term of this Agreement.
3. Term; Termination of Prior Agreement.
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Subject to earlier termination as described herein, the term of this
Agreement shall commence on October 23, 1998 and shall expire on October 22,
2001.
4. Advertising Materials.
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Gargoyles shall be responsible for producing the advertising and
promotional materials in any form or medium (e.g. publicity photographs,
advertisements, commercials, contests, film or video footage, etc.) deemed
necessary in connection with the marketing of the Products. Prior to
commercial production and distribution of any such materials using the name,
likeness, autograph or voice of Xxxxxxxxx, Jr., Gargoyles shall submit to Xxxx
Xxxxxxxxx, Inc. for its review and written approval on behalf of Xxxxxxxxx, Jr.
the form of each item containing any such name, likeness, autograph or voice of
Xxxxxxxxx, Jr.. Xxxx Xxxxxxxxx, Inc. shall not withhold its approval
unreasonably and shall use its best efforts to notify Gargoyles of its approval
or objections within 14 business days of receipt of such materials. Any
approved materials may also be used by Gargoyles in company literature, annual
reports or other investor-related information.
5. Consideration.
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As consideration for the grant of the license, Gargoyles shall pay to
Xxxxxxxxx, Jr. certain fees and royalties as set forth below:
5.1 Annual License Fee.
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Gargoyles shall pay Xxxxxxxxx, Jr. an annual license fee of ***
Dollars ($***) payable in two equal installments of $*** on each January 1 and
July 1 during the term of this Agreement.
5.2 Royalties.
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Gargoyles agrees to work with Xxxxxxxxx, Jr. to develop a signature
series sunglass to be endorsed by Xxxxxxxxx, Jr. Gargoyles shall pay
Xxxxxxxxx, Jr. an amount equal to *** ($***) for each unit of such signature
series sunglasses sold during the term of this Agreement. Xxxxxxxxx, Jr.
acknowledges that a certain quantity of Xxxxxxxxx, Jr. signature series
Products may be given away at no charge to customers as samples, for
promotional and display purposes, and as sales samples. No Royalty shall be
payable on any such promotional or sample products.
5.3 Payment of Royalties and Accounting.
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Royalty payments shall be calculated quarterly and paid within 30
days after the end of each calendar quarter. With each royalty payment made to
Xxxxxxxxx, Jr., Gargoyles shall submit a full and accurate statement showing
the number of the Xxxxxxxxx, Jr. signature series Products sold during the
previous quarter.
6. Photographic Sessions; Personal Appearances.
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During each year of this Agreement, Xxxxxxxxx, Jr. shall be available for
at least one (1) day as mutually scheduled by the parties for filming,
photographic, and recording sessions as may be reasonably necessary to produce
promotional materials. Each year Xxxxxxxxx, Jr. also will use his best efforts
to sign approximately 100 promotional items furnished by Gargoyles. Gargoyles
acknowledges and agrees with Xxxxxxxxx, Jr. that any autographed items and
other results of such filming, photographic or recording sessions are not for
resale and may be used by Gargoyles for promotional purposes only. In
addition, Xxxxxxxxx, Jr. will make one (1) personal appearance (of
approximately four hours duration) in each calendar year during the term of
this Agreement. Such personal appearance will be in a limited, controlled
access and secure area at such promotional events as may be mutually agreed
upon by Xxxxxxxxx, Jr. and Gargoyles to assist Gargoyles in promoting Products
at such event.
7. Promotional Efforts of Gargoyles and Xxxxxxxxx, Jr.
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Throughout the term of this Agreement, Gargoyles agrees to aggressively
promote and market Xxxxxxxxx, Jr. and his image in connection with the
marketing of its Products. In addition, Gargoyles agrees to participate with
other Xxxxxxxxx, Jr. licensees in cross-promotional efforts related to the
Products. Throughout the term of this Agreement Xxxxxxxxx, Jr. will exert his
best efforts to promote and publicize the Products. Xxxxxxxxx, Jr. will not
disparage or criticize the Products. Xxxxxxxxx, Jr. will wear the Products at
all times when it is convenient and appropriate for him to do so, and
Xxxxxxxxx, Jr. will not publicly wear any sunglass products that have not been
manufactured by Gargoyles.
8. Personal Sunglasses.
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Gargoyles will make available to Xxxxxxxxx, Jr. and his immediate family,
at no charge, a reasonable number of Products for personal use during the term
of this Agreement.
9. Press Release.
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Upon the signing of this Agreement, Gargoyles will issue a press release
announcing this Agreement and Gargoyles and Xxxxxxxxx, Jr.'s continuing
relationship. Gargoyles will provide Xxxxxxxxx, Jr. with a copy of the press
release for his review and approval before it is issued.
10. Representations And Warranties.
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Xxxxxxxxx, Jr. represents to Gargoyles that: (i) he has full capacity,
right and authority to enter into this Agreement and to be legally bound
hereby; and (ii) there are no other agreements to which he is a party or is
bound that conflict with this Agreement or with his ability to perform his
obligations under this Agreement. Gargoyles represents that it has: (i) the
staff, knowledge and experience to market the Products in a suitable commercial
manner; and (ii) the right and authority to enter into this Agreement and to be
legally bound hereby.
11. Confirmation of Authority.
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If any manufacturer, advertiser or other person or entity questions the
authority of Gargoyles to use Xxxxxxxxx, Jr.'s name, likeness, autograph or
voice as authorized under this Agreement, upon Gargoyles' request, Xxxxxxxxx,
Jr. promptly will execute such additional documents or make such communications
as may be reasonably necessary to confirm Gargoyles' authority.
12. Ownership.
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Xxxxxxxxx, Jr. acknowledges that the Products are being developed and
customized as Gargoyles' eyewear products. Except for Xxxxxxxxx, Jr.'s rights
in and to his name, likeness, autograph, and voice as used on a Product or
related materials, Gargoyles retains ownership of, and Xxxxxxxxx, Jr. has not
rights in and to, any patent, copyright, trademark, trade secret or other
intellectual property rights in or used in connection with the manufacture,
sale or use of the Products or any related materials. Any contribution made by
Xxxxxxxxx, Jr. with respect to any Product or related materials to the extent
permitted by law shall constitute "works made for hire". Xxxxxxxxx, Jr. will
assign, and does hereby assign to Gargoyles, any and all right title and
interest he may have in the Products and such related materials not deemed to
be "works made for hire". Xxxxxxxxx, Jr. will cooperate with Gargoyles in the
transferring to Gargoyles and registering of all such right, title and interest
in such intellectual property rights and to execute and deliver any necessary
documents to effect the same.
13. Default and Termination
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13.1 Events of Default.
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Either party may, in its discretion, terminate this Agreement and/or
exercise any other right or remedy available to it under applicable law,
including, without limitation, the right to recover damages if the other party
breaches or is in default under any provision of this Agreement, and such
breach or default is not cured within ten (10) days after written notice
thereof shall have been given to such defaulting party by the other party,
which notice shall specify the event or events constituting the default or
breach hereof.
13.2 Death; Disability; Stops Racing.
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Gargoyles may terminate this Agreement by written notice to
Xxxxxxxxx, Jr. upon the occurrence of any of the following events: (i) the
death or permanent disability of Xxxxxxxxx, Jr., (ii) Xxxxxxxxx, Jr. ceases to
be a NASCAR driver, or (iii) Xxxxxxxxx, Jr. becomes the subject of any
significant adverse publicity, including, but not limited to, publicity
relating to a felony criminal conviction or moral turpitude, such that
Xxxxxxxxx, Jr.'s name and persona, in the reasonable discretion of Gargoyles,
are no longer conducive to the promotion of the Products.
13.3 Post Termination.
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Upon the expiration or termination of this Agreement, the license set
forth in paragraph 2 hereof shall automatically terminate and, except as
expressly provided herein, neither party shall have any further obligation,
both in terms of payments (other than amounts earned hereunder before such
termination) or performance, whatsoever under this Agreement. Notwithstanding
the foregoing, if this Agreement expires or is terminated for any reason other
than a breach or default of this Agreement by Gargoyles, Gargoyles and its
resellers may for a period not to exceed six (6) months continue to promote,
distribute, use and sell any Products and Product promotional material prepared
before such expiration or termination.
14. Right of First Approval.
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At least sixty (60) days before the expiration of the term of this
Agreement, Gargoyles and Xxxxxxxxx, Jr. shall begin discussions for a renewal
of this Agreement for an additional period. If the parties are unable to reach
agreement, Xxxxxxxxx, Jr. may negotiate an endorsement agreement with other
sunglass manufacturers but shall not enter into an agreement with any third
party during the three (3) month period after the expiration of the term of
this Agreement without first providing Gargoyles the right to match the terms
of such agreement. If Gargoyles elects to match such terms, Gargoyles and
Xxxxxxxxx, Jr. shall promptly enter into such agreement in lieu of Xxxxxxxxx,
Jr. entering into the agreement with such other manufacturer.
15. Miscellaneous.
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15.1 Relationship of the Parties.
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The relationship of Xxxxxxxxx, Jr. to Gargoyles shall be that of an
independent contractor, and all acts performed by Xxxxxxxxx, Jr. pursuant to
this Agreement during its term shall be deemed to be performed in his
individual capacity as an independent contractor and not as an agent or
employee of Gargoyles.
15.2 Notices.
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All notices required or permitted hereunder shall be given in writing
and shall be delivered by (i) hand delivery, (ii) overnight receipted courier
service, (iii) registered or certified mail, postage prepaid, or (iv)
telephonically confirmed facsimile transmission to the addresses or facsimile
numbers set forth below or to such other addresses or facsimile numbers as
either party shall designate in writing. Notices given in accordance with this
paragraph shall be effective upon receipt or when receipt is refused.
If to Xxxxxxxxx, Jr.: Xxxx Xxxxxxxxx, Xx., Inc.
0000 Xxxxxx Xxxxx Xxx.
Xxxxxxxxxxx, XX 00000
Attn: Xxx Xxxx
Tel: 000-000-0000
Fax: 000-000-0000
If to Gargoyles: Gargoyles, Inc.
0000 X. 000xx Xxxxxx
Xxxx, Xxxxxxxxxx 00000
Attn: General Counsel
Tel: 000-000-0000
Fax: 000-000-0000
15.3 No Waiver.
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The failure of either party hereto to insist at any time upon the
strict observance or performance of any of the provisions of this Agreement or
to exercise any right or remedy as provided in this Agreement shall not impair
any such right or remedy or be construed as a waiver or relinquishment thereof
with respect to subsequent defaults. Every right and remedy given by this
Agreement to the parties hereto may be exercised from time to time and as often
as may be deemed expedient by the parties hereto, as the case may be.
15.4 Entire Agreement.
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This Agreement contains the entire agreement between the parties, and
supersedes all prior understandings, agreements or arrangements, oral or
written, between the parties, with respect to the subject matter hereof. This
Agreement shall not be modified or amended except by written instrument signed
by both parties. This Agreement shall be binding upon and shall inure to the
benefit of the heirs, personal representatives, estates, successors and assigns
of the parties hereto.
15.5 Governing Law.
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This Agreement shall be governed by the laws of the state of
Washington without reference to its choice of law rules.
15.6 Attorneys' Fees.
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If either party brings an action to enforce this Agreement, the
prevailing party in such action shall be entitled to recover from the other all
costs and disbursements incurred in connection therewith, including reasonable
attorneys' fees.
15.7 Approvals.
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All approvals and consents required under this Agreement shall not be
unreasonably withheld and must be requested and responded to in writing.
15.8 Counterparts.
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This Agreement may be executed in counterparts, each of which shall
be an original, but all of which together shall constitute but one and the same
instrument.
IN WITNESS WHEREOF, the parties have caused this License Agreement to be
executed and delivered as of the date and year first above written.
/s/ Xxx Xxxx, President of Xxxx Xxxxxxxxx, Inc.
and attorney-in-fact for Xxxx Xxxxxxxxx
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XXXX XXXXXXXXX, XX.
GARGOYLES, INC.,
a Washington corporation
By /s/ Xxx Xxxxxxxxxxx
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Xxx Xxxxxxxxxxx, CEO and CFO
