AGREEMENT
This Agreement is made as of this 5th day of November, 1996 by and
among The Independence Brewing Company of Florida, Inc., a Florida corporation
("Independence Florida") and Independence Brewing Company, Inc., a Pennsylvania
corporation ("Independence Pennsylvania").
WHEREAS, Independence Florida wishes to assign to Independence
Pennsylvania certain trademarks and associated rights, all as described below.
NOW, THEREFORE, in consideration of the receipt of the payments
described below and for other good and valuable consideration set forth in this
Agreement, the parties hereto agree as follows:
1. Assignment of Trademarks.
a. Assignment. Independence Florida hereby irrevocably assigns and
transfers to Independence Pennsylvania all of Independence Florida's right,
title and interest in and to the names and the trademarks "Independence", "Union
Xxxxx", "Xxxxxx'x Red", "Revolution Raspberry Wheat", "Golden Eagle", "Liberty
Xxxx Light", and "Confederate Peach" as well as the applications to register the
trademarks listed below, together with all the goodwill associated therewith and
symbolized thereby, and the applications and registrations thereof, including
the right to xxx for past infringement, if there may be any (collectively, the
"Trademarks"):
Trademark Application # Filing Date
INDEPENDENCE RESTAURANT 75-117796 June 12, 1996
AND BREWERY
INDEPENDENCE RESTAURANT 75-117791 June 12, 1996
AND BREWERY
This instrument is executed with the same force and effect as though
entered into on the date of first use of the Trademarks. In the event that
Independence Florida is not able to transfer the applications for the
Trademarks, Independence Florida will expressly abandon such applications.
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b. Transfer of Applications and Trademarks. Independence Florida
hereby authorizes and requests the United States Commissioner of Patents and
Trademarks and, as appropriate, the corresponding officials of the several
states and of all foreign countries to record Independence Pennsylvania as the
owner of and/or to issue in accordance with this Agreement and the Trademark
Assignment to be executed by Independence Florida substantially as in the form
attached hereto as Exhibit A (the "Trademark Assignment") and delivered upon the
execution hereof, all registrations of the Trademarks and all applications for
any of the same, which are assigned to Independence Pennsylvania by this
instrument.
c. Future Efforts. Independence Florida agrees to cooperate with
Independence Pennsylvania in order to carry out the intent of this Agreement and
to take such further action and to execute such further documents and
instruments as may, in Independence Pennsylvania's judgment, be necessary in
order to evidence Independence Pennsylvania's ownership of the Trademarks,
including, without limitation, the filing of first use amendments to the
applications with respect to the Trademarks and the Trademark Assignment and any
other instruments necessary to record this Agreement with the appropriate
federal, state and local governmental authorities or agencies, any reasonable
associated costs or expenses which will be paid by Independence Pennsylvania.
d. Representations and Warranties. Independence Florida represents
and warrants to Independence Pennsylvania that, to its knowledge, except as set
forth on Exhibit 1(d) attached hereto: Independence Florida has the right to
grant the assignment hereunder without the consent of any third party; the
Trademarks are free and clear of all liens, claims, encumbrances, licenses or
any other rights of any third party; and, upon the execution and delivery of
this instrument, Independence Pennsylvania will own all right, title and
interest in and to the Trademarks.
e. Reimbursement of Expenses. Upon the execution of this Agreement
and delivery of the Trademark Assignment, Independence Pennsylvania shall
deliver a check in the amount of $2,400 (the "Expense Amount") to Independence
Florida as reimbursement for expenses incurred by Independence Florida in
connection with attorneys' and filing fees related to the Trademarks and
Independence Pennsylvania shall deliver a check in the amount of $2,600 to
Xxxxxx Designs as payment for
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expenses incurred by Independence Florida in connection with
artwork developed for the Trademarks.
2. License.
x. Xxxxx of License. Independence Pennsylvania hereby grants to
Independence Florida a perpetual non-exclusive, royalty-free license to use the
Trademarks in connection with its restaurant and brewery operations as currently
operated at its sole location in Ft. Lauderdale, Florida and for such location
only (the "Services"), under the conditions set forth herein (the "License").
Independence Florida may not sublicense such use of the Trademarks to any other
person.
b. Quality of Services. Independence Pennsylvania has previously
examined the nature and quality of the Services offered by Independence Florida
in connection with the Trademarks. Based upon that examination, Independence
Pennsylvania has determined that the Services currently offered and performed by
Independence Florida meet Independence Pennsylvania's standards of high quality.
For the purpose hereof, the nature and quality of the services as of the date
hereof shall be referred to as the "Quality Standards". Any proposed changes to
the nature and quality of the Services offered under the Trademarks by
Independence Florida must be approved by Independence Pennsylvania in writing as
a condition precedent to Independence Florida implementing and offering such
changes to the Services under the Trademarks.
c. Inspection. Upon ten (10) days prior written notice, Independence
Pennsylvania shall have access during regular business hours to Independence
Florida's place of business to ensure that Independence Florida sells under the
Trademarks only the Services and that the nature and quality of the Services, as
well as the policies and procedures for customer relations employed by
Independence Florida with respect to the Services, is consistent with the
Quality Standards. Independence Pennsylvania shall have the right to approve or
disapprove the Services offered by Independence Florida and the policies and
procedures for customer relations employed by Independence Florida with respect
to the Services, to the extent inconsistent with the Quality Standards.
d. Use of Trademark. Whenever Independence Florida uses the
Trademarks which contain the name "Independence" in advertising or in any other
manner in connection with the Services, Independence Florida shall, to the
extent reasonably
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possible, indicate that Independence Florida is using such name under license
from Independence Pennsylvania. Also, when using the Trademarks under the
License, Independence Florida undertakes to comply with all laws pertaining to
trademarks in force at any time in the United States.
e. Ownership of Trademarks. Independence Florida acknowledges that
Independence Pennsylvania owns the exclusive right, title and interest in and to
the Trademarks, and Independence Florida will not at any time knowingly do or
cause to be done any act or thing in any way impairing or tending to impair any
part of such right, title and interest. In connection with the use of the
Trademarks, Independence Florida shall not in any manner represent that it has
any ownership in the Trademarks or registration thereof, and Independence
Florida acknowledges that neither this License nor Independence Florida's use of
the Trademarks shall create in Independence Florida's favor any right, title or
interest in or to the Trademarks, and all use of the Trademarks by Independence
Florida shall inure to the benefit of Independence Pennsylvania. Upon expiration
or termination of the License granted by this Agreement, Independence Florida
shall immediately cease all use of the Trademarks, shall not thereafter adopt
any other designation confusingly similar to the Trademarks and shall not in any
way advertize or claim to have any affiliation with Independence Pennsylvania.
f. Modification. Notwithstanding anything in this Agreement to the
contrary, Independence Pennsylvania retains the absolute right, which right
shall be exercised in the reasonable judgment of Independence Pennsylvania, to
change, alter, modify, revise, replace or otherwise supplement (each, a
"Change") the Trademarks, without prior notice to Independence Florida. In
addition to other reasons which may make such a Change advisable in the sole
discretion of Independence Pennsylvania, Independence Pennsylvania may do so to
update its image, avoid, settle or compromise a threatened infringement action,
avoid the need to commence any such action, or in response to comments received
from the United States Patent and Trademark Office.
In the event that Independence Pennsylvania determines to change the
Trademarks and desires, in its sole discretion, to have Independence Florida
use, promote and display the Trademarks as changed (the "New Marks"),
Independence Florida shall cease using the Trademarks which have been changed
(the "Old Marks") and shall take such other action, including corrective
advertising, as Independence Pennsylvania may
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reasonably request, all at the expense of Independence Pennsylvania. Upon
notification by Independence Pennsylvania, or at such later date if designated
by Independence Pennsylvania, the New Marks shall become the Trademarks.
3. Default and Termination
a. Default. The occurrence of any of the following shall constitute
a default ("Default") under the License:
(1) If Independence Florida makes an assignment of assets or
business for the benefit of creditors, or if a petition in bankruptcy is filed
by Independence Florida, or if Independence Florida is adjudicated bankrupt, or
if a xxxx in equity or other proceeding for the appointment of a receiver or
other custodian, which is not dismissed in sixty (60) days, for Independence
Florida's business or assets is filed and consented to by Independence Florida,
or if a receiver or other custodian is appointed, and such appointment is not
terminated within sixty days, or if proceedings for composition with creditors
under any state or federal law is instituted by or against Independence Florida
and is not dismissed in sixty days; except if any of the foregoing occurs in the
context of a reorganization of the Company under Chapter 11 of the United States
Bankruptcy Code or any successor provision;
(2) If, upon inspection by Independence Pennsylvania pursuant to
Sections 2(b) and 2(c) hereunder, the nature and quality of the Services and/or
Independence Florida's customer relations practices do not adhere to the Quality
Standards;
(3) If Independence Florida has made a material misstatement in
or a material omission from any representation and warranty to Independence
Pennsylvania contained in this Agreement;
(4) If Independence Florida fails to comply with any material
provision of this Agreement, including, but not limited to, the failure to
assign the Trademarks in accordance with Sections 1(b) and 1(c), and to satisfy
the requirements of Sections 2(d) or 2(e); or
(5) If Independence Florida fails to use the Trademark
continuously for any period of six (6) months; or
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b. Termination. In the event of any Default, which is not cured
within thirty (30) days after receipt of a written "Notice to Cure" or if not
curable within 30 days which Independence Florida has taken its best efforts to
cure within a reasonable time, Independence Pennsylvania may immediately
terminate the License, in addition to and not in limitation of all other
remedies at law or in equity. Notwithstanding the foregoing sentence,
Independence Pennsylvania may immediately terminate the License without notice
to Independence Florida in the event of a Default pursuant to Section 3(a)(1)
hereof. For the purposes of this subsection (b), an event of default pursuant to
Section 3(a)(2) hereof shall be deemed curable within 30 days.
4. Infringement.
a. In the event that Independence Pennsylvania or Independence
Florida becomes aware of actual or threatened infringement of the Trademarks,
such party shall promptly notify the other party in writing. Within thirty (30)
days of becoming so aware or receipt of such notice, as the case may be,
Independence Pennsylvania shall have the right to initiate actions to resolve
the infringement at its sole cost and expense. While the License is in effect,
Independence Florida shall have the right to participate in any such
infringement action at its own expense only if such infringement is in Broward
County, Florida. If Independence Pennsylvania does not initiate actions to
resolve the infringement within the above thirty (30) days, then, as long as the
License is then in effect, in respect to infringements that occur in Broward
County, Florida, Independence Florida shall have the right to initiate actions
to resolve the infringement at Independence Florida's sole cost and expense. The
initiating party shall be exclusively entitled to any recovery obtained from
such action.
b. In the event that Independence Pennsylvania or Independence
Florida becomes aware of any actual or threatened trademark infringement action
against Independence Pennsylvania or Independence Florida involving the use of
the Trademarks, such party shall promptly notify the other party in writing.
Within thirty (30) days of becoming aware or receipt of such notice, as the case
may be, Independence Pennsylvania shall have the right to defend and control the
defense of such action and take such other actions to resolve the matter on
reasonable terms and conditions as may be appropriate at Independence
Pennsylvania's expense. Independence Florida shall have the right to participate
in any such action at its own expense only if such
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infringement is in Broward County, Florida. If Independence Pennsylvania elects
not to defend and control a defense of such action, then Independence Florida
shall have the right to defend and control defense of such action at
Independence Florida's expense only if such infringement is in Broward County,
Florida.
c. Both parties shall provide full cooperation with the other party
at all times in connection with any infringement action pursuant to this
Section, including being named as a party to the action, if necessary. If only
one party is participating in such action, then the other party's cooperation
shall be at such other party's sole expense.
5. Assignment. The License contained in this Agreement is not
assignable by Independence Florida without the prior written consent of
Independence Pennsylvania, such consent not to be unreasonably withheld. This
Agreement is assignable by Independence Pennsylvania. The Agreement shall inure
to the benefit of Independence Pennsylvania and its successors and assigns and
to the benefit of the Independence Florida and its permitted successors and
assigns.
6. Indemnification. Independence Florida hereby agrees to indemnify and
hold harmless Independence Pennsylvania for any and all actions based in tort or
any and all other claims, demands or causes of action, either in law or in
equity, charges, costs, expenses (including, but not limited to attorneys'
fees), which may arise from the past or future conduct of Independence Florida
or in connection with Independence Florida's use or license of the Trademarks or
from a breach of this Agreement by Independence Florida. Independence
Pennsylvania shall promptly notify Independence Florida of any claim which has
given rise to a right of indemnification hereunder (a "Third Party Claim").
Independence Florida shall have 30 days from receipt of such notice, at the sole
cost and expense of Independence Florida, to defend Independence Pennsylvania
against such Third Party Claim. Independence Florida shall have the right and
obligation to diligently defend, at its sole cost and expense, all Third Party
Claims. If Independence Florida wrongfully fails to prosecute or settle a Third
Party Claim, then Independence Pennsylvania shall have the right to assume the
defense of such Third Party Claim, at the sole cost and expense of Independence
Florida.
7. Non-compete. While the License is in effect and, provided this
Agreement has not been terminated pursuant to Section 3, Independence
Pennsylvania, its officers, directors and
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affiliates, will not either directly or indirectly operate a bar or restaurant
in Broward County, Florida. Nothing herein shall be construed to limit
Independence Pennsylvania, its officers, directors and affiliates, from selling
beer or carbonated beverage products at wholesale or retail in Broward County,
Florida, including at a bar or restaurant not operated by Independence Florida.
8. Notice. Any notices required or permitted to be given under this
Agreement shall be deemed sufficiently given if mailed by registered mail,
postage prepaid, addressed to the party to be notified at the respective address
set forth below, or at such other address as may be furnished in writing to the
notifying party:
If to Independence Florida:
000 X.X. 0xx Xxxxxx
Xx. Xxxxxxxxxx, XX 00000
If to Independence Pennsylvania:
0000 Xxxx Xxxxx Xxxxxx
Xxxxxxxxxxxx, XX 00000
9. Waiver and Amendment. No waiver by any party to this Agreement of
any breach or Default shall be effective unless the same shall be in writing and
signed. No waiver by any party of any breach or Default shall be construed to
constitute a waiver of, or consent to, the present or future breach or Default
of any other term or provision hereof. No alteration, amendment or modification
of this Agreement shall be effective or binding to any extent whatsoever except
by an instrument in writing and signed by both of the parties hereto.
10. Entire Agreement. This Agreement constitutes the entire agreement
between the parties with respect to the subject matter of this Agreement and
supersedes all prior agreements or understandings between them, whether written
or oral.
11. Headings. The headings, titles and subtitles herein are inserted
for convenience of reference only and shall not control or affect the meaning or
construction of any of the provisions hereof.
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12. Survival. The provision of Section 6 of this Agreement shall
survive the Closing Date and the termination of this Agreement.
13. Severability. If any provision of this Agreement shall be deemed to
be invalid or unenforceable by any court of competent jurisdiction, the
remaining provisions shall be valid and enforceable and this Agreement shall be
construed as if such invalid or unenforceable provision had never been contained
herein.
14. Governing Law. This Agreement shall be construed and interpreted
and its performance shall be governed by the laws of the Commonwealth of
Pennsylvania, without regard to conflicts of law principles, such choice of law
which is not intended to submit the parties hereto to a particular venue or
confer jurisdiction.
IN WITNESS WHEREOF, the parties hereto have duly executed this
instrument on the date first above written.
INDEPENDENCE BREWING COMPANY OF FLORIDA, INC.
BY: /s/ Xxxxxxx Xxxxxxx
--------------------------------
Xxxxxxx Xxxxxxx, President
INDEPENDENCE BREWING COMPANY, INC.
BY: /s/ Xxxxxx X. Xxxxxx, Xx.
---------------------------------
Xxxxxx X. Xxxxxx, Xx., President
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Exhibit A
TRADEMARK ASSIGNMENT
This Trademark Assignment is made effective as of the 5th day of
December, 1996 by Independence Brewing Company of Florida, Inc., a Florida
corporation ("Assignor"), in favor of Independence Brewing Company, Inc., a
Pennsylvania corporation ("Assignee").
WITNESSETH:
WHEREAS, Assignor and Assignee are parties to that certain Agreement
dated as of the date hereof (the "Agreement");
WHEREAS, Assignor is the owner of the unregistered and registered
trademarks, and the trademark registration applications, listed on the attached
Exhibit A (hereinafter referred to as the "Trademarks"); and
WHEREAS, Assignee desires to acquire the entire right, title and
interest in and to the Trademarks.
NOW, THEREFORE, in consideration of the foregoing and the consideration
set forth in the Agreement, the receipt and sufficiency of which is hereby
acknowledged, and intending to be legally bound hereby, Assignor hereby sells,
assigns, transfers and delivers to Assignee, nunc pro tunc, as of the date of
first use, all right, title and interest in and to the Trademarks, together with
the goodwill associated therewith and symbolized thereby, and the registrations
and applications thereof, and including the right to xxx for past infringement,
if there may be any.
This instrument is executed with the same force and effect as though
entered into on the date of first use of the Trademarks.
Assignor hereby authorized and requests the United States Commissioner
of Patents and Trademarks, and as appropriate, the corresponding officials of
the several states and of all foreign countries, to record Assignee as the owner
of and/or to issue in accordance with this instrument all registrations of the
Trademarks and all applications for any of the same, which are assigned to
Assignee by this instrument.
This instrument shall inure to the benefit of Assignee and its
successors and assigns and shall be binding upon Assignor
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and its successors and assigns. This instrument shall be governed by and
construed in accordance with the laws of the Commonwealth of Pennsylvania
without regard to conflicts of law principles of any jurisdiction.
IN WITNESS WHEREOF, Assignor has duly executed this instrument on the
date first above written.
INDEPENDENCE BREWING COMPANY OF FLORIDA, INC.
By: /s/ Xxxxxxx Xxxxxxx
----------------------------------
Name: Xxxxxxx Xxxxxxx
Title: President
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Exhibit A
I. Applications:
Trademark Application # Filing Date
INDEPENDENCE RESTAURANT 75-117796 June 12, 1996
AND BREWERY
INDEPENDENCE RESTAURANT 75-117791 June 12, 1996
AND BREWERY
II. Unregistered Trademarks:
"Independence", "Union Xxxxx", "Revere's Red", "Revolution Raspberry
Wheat", "Golden Eagle", "Liberty Xxxx Light", and "Confederate Peach"
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