EXHIBIT 10.9
LICENSE AGREEMENT
This License Agreement, effective as of January 20, 1996, among XXXXX RIVER
CORPORATION OF VIRGINIA and its wholly owned subsidiary, XXXXX RIVER PAPER
COMPANY, INC., both corporations of the Commonwealth of Virginia, hereinafter
collectively referred to as "LICENSOR"; and WINCUP HOLDINGS, L.P., hereinafter
referred to as "LICENSEE," a State of Delaware limited partnership comprised of
WINCUP HOLDINGS, INC., a Delaware corporation, and XXXXX RIVER PAPER COMPANY,
INC. wherein WINCUP HOLDINGS, INC. is the general partner and XXXXX RIVER PAPER
COMPANY, INC. is a limited partner.
WHEREAS, LICENSOR is the owner of all rights in certain United States
trademarks, as more fully detailed herein in Section 1.1.
WHEREAS, LICENSEE desires to use molds provided by LICENSOR, on which
certain of LICENSOR'S trademarks are engraved, to manufacture plastic drinking
cups and lids and to use corrugated boxes and related packaging material on
which certain of LICENSOR'S trademarks are printed.
WHEREAS, LICENSEE is currently manufacturing plastic drinking cups and lids
and does not desire to interrupt its production of the plastic drinking cups and
lids prior to commencing production using LICENSOR'S molds and, therefore will
not be able to remove LICENSOR'S trademarks from each individual mold
simultaneously with the commencement of production by LICENSEE.
WHEREAS, LICENSEE desires to obtain from LICENSOR and LICENSOR desires to
grant LICENSEE certain rights in respect of such United States trademarks.
NOW, THEREFORE, in consideration of the premises and mutual covenants
contained herein, the parties hereto agree as follows:
ARTICLE 1 -- DEFINITIONS
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For the purpose hereof, the following terms shall have the meaning set
forth hereinbelow:
1.1 The term "Trademark Rights" shall mean the following U.S. Trademark
registrations owned by LICENSOR:
A. The registration for XXXXX RIVER in word format for plastic cups,
lids, cartons and packaging containers under Registration No. 1,694,326;
and
B. The registration for JR in word and design format for plastic
cups, lids, cartons and packaging containers under Registration No.
1,691,477; and
C. The registration for XXXXX in word and/or design formats for
plastic cups, lids, cartons and packaging containers under Registration
Nos. 646,956; 1,112,247 and 120,264.
1.2 The term "Licensed Plastic Drinking Cups and Lids" shall mean all
plastic drinking cups and lids including expanded polystyrene foam drinking cups
manufactured by LICENSEE using LICENSOR'S molds on which appear any of
LICENSOR'S Trademark Rights.
1.3 The term "Licensed Corrugated Boxes and Packaging Material" shall mean
all corrugated boxes and packaging material provided by LICENSOR and used by
LICENSEE on which appear any of LICENSOR'S Trademark Rights.
ARTICLE II -- LICENSE GRANTS AND BUSINESS ARRANGEMENT
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2.1 Subject to the terms and conditions of this License Agreement, LICENSEE is
hereby granted by LICENSOR the non-exclusive, non-transferable and royalty free,
license, privilege and permission to use Trademark Rights in the United States
in connection with each individual mold supplied by LICENSOR (i) until LICENSEE
permanently takes the molds out of service, or (ii) until the expiration of the
license grant for each of the trademarks comprising Trademark Rights set forth
in Paragraph 4.1, whichever comes first.
2.2 Subject to the terms and conditions of this License Agreement,
LICENSEE shall have the royalty-free, non-exclusive, non-transferable right to
use each individual mold provided by LICENSOR to manufacture Licensed Plastic
Drinking Cups and Lids in the United States and to sell the Licensed Plastic
Drinking Cups and Lids.
2.3 Subject to the terms and conditions of this License Agreement, at no
cost to LICENSEE, LICENSEE shall have the non-exclusive, non-transferable right
to use the supply existing on the date hereof of the Licensed Corrugated Boxes
and Packaging Material to package Licensed Plastic Drinking Cups and Lids. This
license to use packaging materials shall terminate upon the exhaustion of the
supply of the Licensed Corrugated Boxes and Packaging Material existing on the
date hereof.
2.4 Notwithstanding anything to the contrary in Section 2.3, subject to
the terms and conditions of this License Agreement and Section 9 of the Sales
Agent Agreement between
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LICENSOR and LICENSEE (the "Sales Agent Agreement"), LICENSEE shall have the
non-exclusive, non-transferable right to use Licensed Corrugated Boxes and
Packaging Material to package Licensed Plastic Drinking Cups and Lids
manufactured by LICENSEE and distributed by LICENSOR to Walmart Corporation's
wholly owned warehouse club division designated "Sam's Club." This License
shall terminate upon termination of the Sales Agent Agreement between LICENSOR
and LICENSEE.
2.5 In consideration of the non-exclusive license granted under Paragraphs
2.1 and 2.2 above, LICENSEE agrees to remove the trademarks included in
Trademark Rights from the molds used in the manufacture of Licensed Plastic
Drinking Cups and Lids (i) at the first opportunity when said mold is
permanently taken out of service, or (ii) at the termination of the license
relating to a specific xxxx as set forth in Paragraph 4.1, whichever comes
first.
2.6 In consideration of LICENSOR'S grants in Paragraphs 2.1 and 2.2
hereof, LICENSEE shall not use Trademark Rights on or in connection with Plastic
Drinking Cups and Lids not comparable in quality to plastic drinking cups and
lids manufactured by LICENSOR as of the effective date of this Agreement and
identified by LICENSOR'S Trademark Rights.
2.7 In the event LICENSOR has concerns about LICENSEE'S compliance with
the quality requirements in Paragraph 2.6 above, LICENSOR shall give LICENSEE
written notice of its concerns and LICENSEE shall have thirty (30) days to
address those concerns. If thereafter, in LICENSOR'S reasonable judgment, the
Licensed Plastic Drinking Cups and Lids produced by LICENSEE still do not meet
the above stated quality standards, at LICENSOR'S written request, LICENSEE
shall stop immediately production of such Licensed Plastic Drinking Cups and
Lids, destroy existing inferior quality stock of Licensed Plastic Drinking Cups
and Lids, and remove LICENSOR'S Trademark Rights from the relevant molds prior
to resuming production. Upon completion of the removal of the trademarks
included in Trademark Rights from the molds, the licenses granted pursuant to
Paragraphs 2.1 and 2.2 hereof shall terminate.
ARTICLE III -- REPRESENTATIONS AND WARRANTIES
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3.1 LICENSOR represents and warrants that it is the owner of Trademark Rights
and has the right to grant the non-exclusive license to LICENSEE to use the
Trademark Rights in connection with the manufacture and sale of Licensed Plastic
Drinking Cups and Lids and to use the Licensed Corrugated Boxes and Packaging
Material. LICENSOR MAKES NO OTHER WARRANTIES, EXPRESS OR IMPLIED, REGARDING THE
SUBJECT MATTER OF THIS LICENSE AGREEMENT.
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3.2 LICENSOR makes no warranty with respect to the validity of any of
Trademark Rights. LICENSEE agrees that LICENSOR shall not be liable for any
loss or damage resulting from any claim that LICENSEE'S or its customer's use of
the Trademark Rights infringe any trademark or other property rights of any
third party, and LICENSEE agrees to defend and hold harmless LICENSOR therefrom.
LICENSEE acknowledges that the trademarks which are the subject of the Trademark
Rights are not registered, and/or have not previously been used, in every
country throughout the world; the license granted in Article II extends only to
U.S. trademark registrations and common law rights.
3.3 Except for breaches of Section 3.1 hereof, LICENSOR, its affiliates,
and their respective officers, agents, servants or employees, shall not be
liable for any loss, damage, injury or other casualty of whatsoever kind, or by
whomsoever caused (irrespective of negligence or fault, whether sole,
concurrent, active, passive, comparative, strict, contractual or vicarious of
LICENSOR, except for gross negligence or willful misconduct of LICENSOR, to the
person or property of anyone, including LICENSEE or any of its customers,
arising out of or resulting from LICENSEE's or its customer's manufacture, use
or sale of Licensed Plastic Drinking Cups and Lids; LICENSEE agrees for itself,
its customers, its successors and assigns, to indemnify and hold harmless
LICENSOR, its affiliates, and their respective officers, agents, servants and
employees, from and against all claims, counterclaims, demands, liabilities,
suits, actions, losses, costs and expenses (including all reasonable expenses
and attorney's fees incurred or imposed on LICENSOR, its affiliates, and their
respective officers, agents, servants or employees, in connection therewith) for
such loss, damage, injury or other casualty, except where such loss, damage,
injury or other casualty is a result of LICENSOR'S breach of the warranty set
forth in Section 3.1 or of LICENSOR'S gross negligence or willful misconduct.
ARTICLE IV -- TERMINATION
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4.1 This License Agreement shall terminate when the last of the licenses
granted pursuant to Paragraphs 2.1;2.2;2.3 and 2.4 has terminated; provided,
however, that (i) the license with respect to the trademark XXXXX shall
terminate upon the termination of the License Agreement or six (6) months after
the date hereof, whichever occurs first, except with respect to Sam's Club,
which shall terminate when the Sales Agent Agreement is terminated; and (ii)
that the license with respect to JR and XXXXX RIVER shall terminate upon
termination of this License Agreement or twelve (12) months after the date
hereof, whichever occurs first, except with respect to Sam's Club, which shall
terminate when the Sales Agent Agreement is terminated.
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4.2 After termination of this License Agreement, or termination of the
trademark license with respect to a particular xxxx included within Trademark
Rights, LICENSEE shall have no rights with respect to such trademark.
4.3 After termination of the License Agreement, LICENSEE shall have no
rights hereunder or in the Trademark Rights.
ARTICLE V -- ADDRESSES
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Unless otherwise specified in writing, the mailing addresses of the parties
hereto are as follows:
LICENSOR: Xxxxx River Corporation of Virginia and
Xxxxx River Paper Company, Inc.
0000 Xxxxxxxx Xxxxxx
X.X. Xxx 000
Xxxxxx, XX 00000-0000
Fax 000-000-0000
Attention: Xxxxxx X. Xxxxxxxxx, Chief Patent Counsel
LICENSEE: WinCup Holdings, L.P.
000 Xxxxxxxxxxxx Xxxxxxxxx
Xxxxx, XX 00000-0000
Attention: Xxxxxxx X. Xxxxxxx, Chairman
Notices hereunder shall be deemed to have been duly given and served five
(5) days after the mailing thereof by Registered or Certified Mail, postpaid, to
the party entitled thereto at its above address, or at such other address as it
may from time to time designate in writing to the other party.
ARTICLE VI -- MISCELLANEOUS
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6.1 The making, execution and delivery of this License Agreement by LICENSOR
and LICENSEE have been induced by no representations, statements, warranties or
agreements other than those expressed herein. This License Agreement and the
Sales Agent Agreement embody the entire understanding of the parties with
respect to the subject matter hereof and there are no further or other
agreements or understandings, written or oral, in effect between the parties
relating to the subject matter hereof.
6.2 Waiver of a breach of this License Agreement or the failure of
LICENSOR to exercise any right under this License Agreement shall in no event
constitute a waiver as to any future breach, whether similar or dissimilar in
nature, or as to the exercise of any future right under this License Agreement.
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6.3 This License Agreement may be amended or modified only by an
instrument signed by the duly authorized representative of each of the
respective parties hereto and expressly stating that it is the intent of that
document to amend or modify the terms hereof.
6.4 LICENSEE shall not, without the prior written consent of LICENSOR,
assign, transfer or sublicense its rights or obligations hereunder to a third
party; provided, however, LICENSEE may assign its rights hereunder to a
successor to substantially the whole of its business and assets relating to the
subject matter of this License Agreement who agrees to be bound by the terms
hereof.
6.5 The titles of each Article in this License Agreement are for the
convenience of the parties and are not intended to modify the terms and
conditions contained herein.
6.6 If any provision of this License Agreement, or the application
thereof, shall for any reason and to any extent be invalid or unenforceable, the
remainder of this License Agreement and application of such provision to other
persons or circumstances shall be interpreted so as not to invalidate the
remaining provisions of this License Agreement and so as best to reasonably
effect the intent of the parties.
6.7 Nothing contained in this License Agreement shall be construed to
grant LICENSEE any rights or licenses other than those expressly stated therein.
6.8 This License Agreement shall be construed and the legal relations
between the parties determined in accordance with the laws of the State of
Delaware, excluding any choice of law rules which may direct the application of
the laws of any other jurisdiction.
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IN WITNESS WHEREOF, the parties hereto have caused this License Agreement
to be duly executed in their respective corporate names by their duly authorized
representatives as of the date and year first written above.
XXXXX RIVER CORPORATION OF WINCUP HOLDINGS, L.P.,
VIRGINIA By: Wincup Holdings, Inc.,
its General Partner
By: [SIGNATURE APPEARS HERE] By: [SIGNATURE APPEARS HERE]
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Title: Title:
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Date: Date:
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XXXXX RIVER PAPER COMPANY, INC.
By: [SIGNATURE APPEARS HERE]
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Title:
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Date:
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LICENSE EXTENSION AND MODIFICATION AGREEMENT
This LICENSE EXTENSION AND MODIFICATION AGREEMENT ("Agreement") is made as
of December 5, 1996 by and between WINCUP HOLDINGS, L.P., a Delaware limited
partnership (the "Partnership"), XXXXX RIVER PAPER COMPANY, INC., a Virginia
corporation ("JR") and XXXXX RIVER CORPORATION OF VIRGINIA ("Xxxxx River").
BACKGROUND
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a. The Partnership, WinCup Holdings, Inc. ("WinCup"), Radnor
Holdings Corporation ("Radnor") and JR intend to enter into a
Partnership Interest Purchase Agreement ("Purchase Agreement")
pursuant to which Radnor shall purchase the entire limited partnership
interest of JR in the Partnership, as such interest is described in
the Limited Partnership Agreement between WinCup and JR, dated as of
January 20, 1996.
b. JR and Xxxxx River (collectively, the "Licensor") and the
Partnership are parties to that certain License Agreement, dated as of
January 20, 1996 (the "License Agreement"), which such agreement
permits the Partnership to use certain of JR's trademark rights, molds
and packaging materials for the production and distribution of plastic
drinking cups and lids.
c. The Partnership and JR are parties to that certain Sales Agent
Agreement dated as of January 20, 1996, (the "Sales Agent Agreement"),
as amended by that certain Sales Agent Extension and Modification
Agreement made by and between the Partnership and JR, dated the date
hereof.
d. The Partnership and Licensor have determined that it would be in
each of their best interests to enter into a modification of the
License Agreement in order to extend the term of the License
Agreement.
e. All capitalized terms not otherwise defined herein shall have
the meanings ascribed to them in the License Agreement.
NOW THEREFORE, in consideration of the agreements contained herein and
other good and valuable consideration, the receipt and sufficiency of which are
hereby acknowledged, the parties hereto agree as follows:
i. Extension Period. Pursuant and subject to the terms and
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conditions of the License Agreement, the Partnership and Licensor
agree to enter into an extension of the License Agreement.
(1) Section 4.1 of the License Agreement is deleted in its
entirety and is replaced with:
"a. This License Agreement shall be effective for a term commencing on
the date of closing of the purchase transaction as set forth in the
Purchase Agreement (the "Closing") and ending on January 20, 2002
(the "Termination Date"), as to the licenses granted in Sections 2.1
and 2.2 hereof, provided that WinCup may not use the XXXXX trademark
described in Section 1.1(c) except in connection with the production
of Licensed Plastic Drinking Cups and Lids and the use of Licensed
Corrugated Boxes and Packaging Materials for Sam's Club. The right to
use the XXXXX trademark in connection with Sam's Club shall expire on
the date the Sales Agent Agreement expires.
"b. The license granted under Section 2.3 hereof shall expire upon
exhaustion of the supply of Licensed Corrugated Boxes and Packaging
Material in existence as of the date of the Closing, except in
connection with Sam's Club which shall terminate as set forth in
Section 2.4.
"c. The license granted under Section 2.4 hereof shall expire upon the
expiration of the Sales Agent Agreement."
ii. Licenses Granted.
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a. Section 2.1(ii) is deleted in its entirety and is replaced with "(ii)
until the Termination Date hereof, which ever occurs first."
b. Section 2.5(ii) is deleted in its entirety and is replaced with "(ii)
upon the Termination Date hereof, whichever occurs first."
c. The last sentence of Section 2.7 is deleted in its entirety and is
replaced with "Upon completion of the removal of the trademarks included in
Trademark Rights from the molds, the licenses granted pursuant to Sections 2.1
and 2.2 hereof shall terminate on the Termination Date hereof."
iii. Licensed Corrugated Boxes and Packaging Material.
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(1) Section 1.3 is hereby deleted in its entirety and is
replaced with:
License Extension Agreement - 2
"1.3 The term "Licensed Corrugated Boxes and Packaging Material"
shall mean all corrugated boxes and packaging material used by
Licensee on which appear any of LICENSOR's Trademark Rights."
iv. Assignment of License Agreement. The Partnership shall have
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the right to assign the License Agreement to any Affiliate of the
Partnership without the consent of Xxxxx River; provided that such
assignee assumes all of the Partnership's rights, obligations and
liabilities in connection with the License Agreement and this
Agreement in writing and the Partnership shall remain primarily
obligated for the performance by such assignee of all of its
rights, obligations and liabilities under the License Agreement and
this Agreement. For purposes of this Paragraph 4, "Affiliate" shall
mean any person, corporation, partnership, association, joint stock
company, trust or unincorporated organization which directly or
indirectly through one or more intermediaries, controls, is
controlled by or is under common control with the Partnership.
v. Effect of Modification. Except as hereby expressly extended,
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amended and modified, all of the terms, conditions, provisions and
covenants of the License Agreement shall continue in full force and
effect.
vi. Successors and Assigns. This Agreement shall bind and enure
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to the benefit of the parties to the License Agreement and their
respective successors and assigns.
vii. Governing Law. This Agreement shall be construed and the
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legal relations between the paries determined in accordance with
the laws of the State of Delaware, excluding any choice of law
rules which may direct the application of the laws of any other
jurisdiction.
viii. Counterparts. This Agreement may be executed in as many
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counterparts as may be deemed necessary or convenient, and by the
different parties hereto on separate counterparts, each of which,
when so executed, shall be deemed an original, but all of which
such counterparts shall constitute but one and the same instrument.
License Extension Agreement - 3
IN WITNESS WHEREOF, the parties hereto have executed this Agreement by
their duly authorized officers as of the day and year first above written.
XXXXX RIVER PAPER COMPANY,
INC.
By: [SIGNATURE APPEARS HERE]
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Name:
Title:
XXXXX RIVER CORPORATION OF
VIRGINIA
By: [SIGNATURE APPEARS HERE]
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Name:
Title:
WINCUP HOLDINGS, L.P.
By: WinCup Holdings, Inc., its general
partner
By: [SIGNATURE APPEARS HERE]
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Name:
Title:
License Extension Agreement - 4
