AMENDED AND RESTATED LICENSE AGREEMENT
Exhibit 10.3
AMENDED AND RESTATED LICENSE AGREEMENT
THIS LICENSE AGREEMENT, effective the 28th day of February, 1997 (“License”) by and between
Xxxxxx Brothers Brewing Company, an Oregon corporation with offices at 000 Xxxxx Xxxxxxx, Xxxxxxxx,
Xxxxxx 00000 (“Xxxxxx Brewing”) and Xxxxxx’x Wine Cellars, Inc. (“Widmer’s Wine”), a New York
corporation with offices at 0 Xxxx Xxxxxxx Xxxx, Xxxxxx, Xxx Xxxx 00000, and Canandaigua Wine
Company, Inc. (“Canandaigua”) a Delaware corporation also with offices at 000 Xxxxxxx Xxxxxx,
Xxxxxxxxxxx, Xxx Xxxx 00000, parent of Widmer’s Wine.
PREMISES:
WHEREAS, Widmer’s Wine is the registered owner of the trademark “Xxxxxx” as registered in the
United States Patent and Trademark Office under Registration Numbers 767,274 and 1,415,215
(“Trademarks”); and
WHEREAS, Xxxxxx Brewing has used the xxxx Xxxxxx and Xxxxxx Brewing on beer in Oregon since at
least as early as 1985, in Alaska since at least as early as 1992, in California since at least as
early as 1990, in Colorado since at least as early as 1994, in Georgia since at least as early as
1995, in Idaho since at least as early as 1992, in Illinois since at least as early as 1995, in
Maryland since at least as early as 1995, in Massachusetts since at least as early as 1995, in
Minnesota since at least as early as 1995, in Montana since at least as early as 1994, in Nevada
since at least as early as 1995, in New York since at least as early as 1995, in Virginia since at
least as early as 1995, in Washington since at least as early as 1985, in Washington, D.C. since
at least as early as 1995, in Wisconsin since at least as early as 1995, and in Wyoming since at
least as early as 1994; and
WHEREAS, Xxxxxx Brewing has since November of 1995 also used the marks XXXXXX BROTHERS and
XXXXXX BROTHERS BREWING; and
WHEREAS, Xxxxxx Brewing desires to continue to use on an exclusive basis the trademarks
XXXXXX, XXXXXX BREWING, XXXXXX BROTHERS and XXXXXX BROTHERS BREWING on beer and malt beverage
products, whiskey, hard cider and root beer and any apparel and promotional items related thereto
(collectively, “Products”), in the United States of America (“Territory”); and
WHEREAS, Xxxxxx Brewing desires to use the trademarks XXXXXX, XXXXXX BREWING, XXXXXX BROTHERS
and XXXXXX BROTHERS BREWING on a non-exclusive basis on cider and soft drinks and on apparel and
promotional items related thereto (collectively, “Other Products”) in the Territory; and
WHEREAS, Widmer’s Wine is willing, subject to terms and conditions hereof, to grant a license
to use Xxxxxx; and
WHEREAS, Xxxxxx Brewing desires to be able to use other trademarks from time to time
containing the terms XXXXXX or WIDBIER;
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NOW, THEREFORE, in consideration of these premises and the promises herein, Xxxxxx Brewing and
Widmer’s Wine agree as follows:
1. Grant of License. In consideration of One Million Dollars ($1,000,000), and other
good and valuable consideration, Widmer’s Wine grants to Xxxxxx Brewing an exclusive license to
Xxxxxx Brewing to use XXXXXX, alone, or in connection with any other marks containing the term
XXXXXX, including, but not limited to, XXXXXX BROTHERS, XXXXXX BREWING, and XXXXXX BROTHERS
BREWING, in connection with the manufacture, distribution and sale of the Products in the
Territory, and Xxxxxx Brewing accepts such license subject to the terms and conditions hereinafter
set forth. Widmer’s Wine also grants to Xxxxxx Brewing an nonexclusive license to Xxxxxx Brewing
to use XXXXXX, alone, or in connection with any other marks containing the term XXXXXX, including,
but not limited to, XXXXXX BROTHERS, XXXXXX BREWING, and XXXXXX BROTHERS BREWING, in connection
with the manufacture, distribution and sale of the Other Products in the Territory, and Xxxxxx
Brewing accepts such license subject to the terms and conditions hereinafter set forth. Xxxxxx
Brewing and Widmer’s Wine agree that these licenses shall be perpetual and shall be royalty-free.
The licenses shall not be deemed to prevent Widmer’s Wine from using the Trademarks as it chooses
in connection with its businesses including, without limitation, promotion, marketing and
advertising to support sales of its wines and wine coolers, except that Widmer’s Wine shall not use
(or in any way authorize or license to a third party) the Trademarks in connection with the
Products, and shall use the Trademarks on Other Products in a different, distinctive manner from
prior use by Xxxxxx Brewing, and Xxxxxx Brewing shall use the Trademarks on Other Products in a
different, distinctive manner from prior use by Widmer’s Wine.
2. WIDBIER. Xxxxxx Brewing hereby assigns its common law rights (if any) to the
trademark “WIDBIER” to Widmer’s Wine, and will assign ownership of the trademark “WIDBIER,” if and
when it is registered in the United States Patent and Trademark Office based on intent to use
Application Number 74718399, to Widmer’s Wine. For purposes of this Agreement, “WIDBIER” shall be
deemed a Trademark hereunder. Widmer’s Wine hereby grants to Xxxxxx Brewing an exclusive license
to use WIDBIER, and any other marks containing the term WIDBIER, in connection with the
manufacture, distribution and sale of the Products in the Territory, and Xxxxxx Brewing accepts
such license subject to the terms and conditions of this Agreement. Xxxxxx Brewing and Widmer’s
Wine agree that this license shall be perpetual and shall be royalty-free. Widmer’s Wine shall not
use (or in any way authorize or license to a third party) the WIDBIER Trademark.
3. Covenants Regarding Ownership and Use of Trademarks in the Territory.
| i) | Except as expressly provided herein, Widmer’s Wine shall maintain and keep current all right, title, and interest in and to the Trademarks and the goodwill associated therewith; | ||
| ii) | Xxxxxx Brewing acknowledges this Agreement does not grant to Xxxxxx Brewing any right, title, or interest in or to the Trademarks or the goodwill associated therewith; |
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| iii) | Except as expressly provided herein, Xxxxxx Brewing acknowledges that Widmer’s Wine has the sole right, title and interest in and to the Trademarks and the goodwill associated therewith, and Xxxxxx Brewing shall never challenge Widmer’s Wine’s right, title or interest therein or thereto and shall not, directly or indirectly, seek to register the Trademarks or any xxxx confusingly similar thereto; however, it is understood and agreed that “WIDBERRY” and “WIDBERRY WEIZEIN” are not confusingly similar; | ||
| iv) | Xxxxxx Brewing shall promptly notify Widmer’s Wine in writing of any infringement or suspected infringement of the Trademarks which comes to the attention of Xxxxxx Brewing during the term of this License and will supply information reasonably requested by Widmer’s Wine with respect to such infringement; | ||
| v) | Representative examples of Products, Other Products, and packaging, advertising and promotional material of Xxxxxx Brewing using the Trademarks, including but not limited to, XXXXXX, XXXXXX BREWING, WIDBIER, WIDBIER BREWING COMPANY, XXXXXX BROTHERS, or XXXXXX BROTHERS BREWING, shall be available for inspection by Widmer’s Wine at Xxxxxx Brewing premises during normal business hours, upon ten (10) days’ notice. The packaging, advertising, and promotional materials of Xxxxxx Brewing shall not disparage or tarnish in any material manner Widmer’s Wine’s products or Trademarks. |
4. Quality and Approval. Xxxxxx Brewing hereby agrees that the Products and the Other
Products shall be of a high quality at least comparable to the quality of Xxxxxx Brewing’s Products
and the Other Products and the wines and wine coolers sold by Widmer’s Wine, as of the date of this
Agreement. Xxxxxx Brewing agrees it will take reasonable steps to comply with all federal, state,
local and other applicable governmental laws, rules and regulations, and in the event of a
violation, Xxxxxx Brewing can cure such violation by taking additional steps to comply in the
future. Xxxxxx Brewing, every six months, will supply Widmer’s Wine at the address provided in
Section 17 for notice, one case of samples of the Products and the Other Products as sold to Xxxxxx
Brewing’s customers so that Widmer’s Wine may verify the quality of the Products and the Other
Products.
5. Termination. This Agreement is perpetual and may not be terminated by Widmer’s
Wine unless Xxxxxx Brewing: (i) defaults in the performance of any material provision of this
Agreement and does not cure such default within 180 days after receipt of written notice describing
such default (and if Xxxxxx Brewing has begun to cure the default which, being capable of cure,
cannot be cured within the 180 day cure period, the 180 day cure period shall be extended an
additional 240 days), or (ii) files a petition in bankruptcy (or under any other insolvency law) or
a petition in bankruptcy (or under any other insolvency law) is filed against it and Xxxxxx Brewing
does not object within sixty (60) days, or if Xxxxxx Brewing is
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adjudicated a bankrupt, or becomes insolvent, or makes an assignment of substantially all of
its assets for the benefit of its creditors, or discontinues its business involving the use of the
Trademarks. In the event of any of the foregoing Widmer’s Wine shall have the right to terminate
this Agreement immediately upon giving written notice of termination to Xxxxxx Brewing.
6. Indemnification. Each party shall indemnify and hold the other party harmless
against any claim, damages, cause of action, cost or expense (including reasonable attorneys’ fees
and expenses, whether incurred as the result of a third party claim or a claim to enforce this
Agreement) of any nature whatever arising out of or connected with a breach of this License by such
party. In no event, however, shall either party be liable to the other for any consequential,
special, incidental or punitive damages of any kind.
7. Infringement by Third Parties. In the event of infringement by third parties of
any of the Trademarks which are the subject of this License, Widmer’s Wine will be in charge of all
litigation against and settlement with any and all third party infringers of the Trademarks, except
as provided herein. Xxxxxx Brewing will cooperate in any such action, in accordance with this
Section. If cooperation is required, Xxxxxx Brewing will cooperate with Widmer’s Wine as requested
by Widmer’s Wine, at Widmer’s Wine’s expense in accordance with this Section, in connection with
any action taken by Widmer’s Wine in its judgment against such potential infringer(s). The
following provisions (i) through (iv) specify the parties respective obligations with respect
hereto:
(i) Such cooperation by Xxxxxx Brewing will include, without limitation, providing its
personnel to appear as witnesses at depositions or in court, furnishing documents and information,
executing all necessary documents, and being joined as a party to any legal proceedings.
(ii) Except as provided in subsections (iii) and (iv) of this Section, the cost of any
litigation or other action against potential infringers will be borne entirely by Widmer’s Wine.
Widmer’s Wine will reimburse Xxxxxx Brewing, within thirty (30) days after request from Xxxxxx
Brewing, for any travel expenses, photocopying expenses, and the like (but excluding salary or
comparable expenses as well as fees and expenses charged by separate counsel, if any, engaged by
Xxxxxx Brewing) incurred by it at Widmer’s wine’s request in connection with any such infringement
action. Any recovery of damages or attorney’s fees in such actions, or in settlement of such
actions or disputes, will belong entirely to Widmer’s Wine.
(iii) Widmer’s Wine will consult with Xxxxxx Brewing during the course of any third party
infringement and legal proceedings hereunder. Xxxxxx Brewing shall be named as co-plaintiff in any
adversarial proceeding where either (a) the infringement significantly impacts the present or
future sales of Products (or any items sold by Xxxxxx Brewing pursuant to license under this
Agreement), or (b) the alleged infringer is also infringing the trade dress, packaging or
trademarks of Xxxxxx Brewing. When named as a co-plaintiff Xxxxxx Brewing shall have the right to
participate in any such adversarial proceeding through its counsel of record at its own expense.
If Xxxxxx Brewing named as a co-plaintiff (or if litigation ensues in which Xxxxxx Brewing would
have the right to be named as a co-plaintiff), then Xxxxxx Brewing shall have the right to approve
any settlement of any infringement matters whether it
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has been the subject of litigation or simply negotiation. Any such approval shall not be
unreasonably withheld or delayed. If Xxxxxx Brewing has no right to be named as a co-plaintiff,
then Xxxxxx Brewing shall have the right to approve any settlement in connection with such
proceedings if it materially affects Xxxxxx Brewing’s use of any of the Trademarks. Any such
approval shall not be unreasonably withheld or delayed. If Xxxxxx Brewing has no right to be named
as a co-plaintiff, Widmer’s wine will not be required to seek Xxxxxx Brewing’s consent to any
settlement if such settlement does not (a) compromise the title, validity or ownership of any
Trademark(s); (b) involve continued use of the allegedly infringing trademark; (c) create any
obligation on behalf of Xxxxxx Brewing or subject Xxxxxx Brewing to any fine, penalty or monetary
damages or award of any kind whatsoever; or (d) materially affect Xxxxxx Brewing’s use of any of
the Trademarks.
(iv) Upon notification by Xxxxxx Brewing of an apparent infringer, Widmer’s Wine shall have
forty-five (45) days to decide whether or not to pursue an instance of alleged infringement, except
that when Xxxxxx Brewing notifies Widmer’s wine of its desire to seek preliminary injunctive relief
(“Relief”) with regard thereto, and Xxxxxx Brewing supplies Widmer’s Wine with evidence in the
reasonable judgment of Widmer’s Wine sufficient to obtain such Relief, then, in such instance,
Widmer’s Wine shall have five (5) days to decide whether or not to seek such Relief. In the event
that Widmer’s Wine should decide not to pursue an instance of alleged infringement of the
Trademarks, or fails to communicate any decision to Xxxxxx Brewing, then Xxxxxx Brewing, with the
cooperation of Widmer’s Wine in the same manner provided herein for Xxxxxx Brewing’s cooperation
with Widmer’s Wine, shall be entitled to proceed against the alleged infringer at Xxxxxx Brewing’s
expense, and any and all recoveries obtained in such litigation and settlement will accrue solely
to the benefit of Xxxxxx Brewing. However, without the prior written consent of Widmer’s Wine,
Xxxxxx Brewing shall have no right to settle such infringement matter by compromising title,
validity or ownership of any Trademark(s); allowing continued use of the allegedly infringing
trademark; creating any obligation on behalf of Widmer’s Wine or by subjecting Widmer’s Wine to any
fine, penalty or monetary damages or award of any kind whatsoever.
8. Waiver. If either party breaches this Agreement and the other party waives such
breach or fails for whatever reason to take any action with respect thereto, such waiver or failure
to take action with regard to such breach shall not constitute a waiver of any other prior or
subsequent breach of this Agreement.
9. Independent Contractors. With respect to performance under this Agreement, the
parties acknowledge that their relationship is that of independent contractors. Neither party
shall have the right to bind the other in relationships with third parties. Nothing herein shall
be construed or interpreted to create a joint venture or any other relationship between the
parties.
10. Severability. It is intended that each paragraph and provision of this Agreement
shall be viewed as separate and divisible, and if any paragraph or provision shall be held to be
invalid, the remaining paragraphs and provisions shall continue to be in full force and effect.
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11. Assignment. Except as provided in the last sentence of this Section 11, either
party may freely assign, mortgage, sublicense, or otherwise encumber or transfer by agreement or by
operation of law its rights and obligations under this Agreement without the prior written consent
of the other, provided that the proposed assignee must execute and deliver to the other party a
document by which the assignee agrees to undertake all burdens and obligations of assigning party
under this Agreement and be bound by this Agreement as if an original signatory thereto. Xxxxxx
Brewing shall be liable for the performance of duties and obligations of its permitted
sublicensees. Without the consent of Xxxxxx Brewing, Widmer’s Wine and Canandaigua may not assign
or otherwise transfer their rights and obligations under this Agreement to a company the principal
business of which, or a substantial or significant portion of which, is as a malt beverage xxxxxx.
12. Binding Effect. All covenants, conditions and agreements contained in this
Agreement shall bind and inure to the benefit of the parties hereto and their respective executors,
administrators, heirs at law, successors in interest, permitted assigns and any person acting in a
representative capacity to any of the foregoing.
13. Termination of Prior License. The previous License Agreement dated January 15,
1996 between the parties is hereby amended, restated and superseded by this Agreement, and the
previous License Agreement is void and of no effect.
14. Entire Agreement. This Agreement constitutes the entire understanding between the
parties with respect to its subject matter and cannot be modified, changed or amended except in
writing executed by the parties hereto, or their successors.
15. Construction. Each of the parties agrees that it has reviewed and participated in
the drafting of this Agreement and the normal rule of construction to the effect that any
ambiguities are to be resolved against the drafting party shall not be employed in the
interpretation of this Agreement or any revision or addendum hereto.
16. Guarantee of Obligation. Canandaigua guarantees all the obligations of Widmer’s
Wine set forth in this Agreement.
17. Notices. Any notices to be given hereunder shall be considered duly given, if
sent by telefacsimile with evidence of receipt or by recognized courier service with evidence of
receipt to:
| If to Widmer’s Wine: | Xxxxxx X. Xxxxx, Esq. | |||
| Canandaigua Wine Company, Inc. | ||||
| 000 Xxxxxxx Xxxxxx | ||||
| Xxxxxxxxxxx, Xxx Xxxx 00000 | ||||
| Telefacsimile No. 000-000-0000 |
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| If to Xxxxxx Brewing: | Xx. Xxxx Xxxxxx | |||
| Xxxxxx Brothers Brewing Company | ||||
| 000 Xxxxx Xxxxxxx | ||||
| Xxxxxxxx, Xxxxxx 00000 | ||||
| Telefacsimile No. 000-000-0000 | ||||
| With a copy to: | Xxxxxx X. Xxxxxxxx, Esquire Xxxxxxxx & Xxxx | |||
| 000 Xxxxxx Xxxxx | ||||
| 0000 Xxxxxx Xxxxxx | ||||
| Xxxxx, Xxxxxxxx 00000-0000 | ||||
| Telefacsimile No. 402-348-1111 |
IN WITNESS WHEREOF, the parties hereto have hereunto set their hands as of the date first set
forth above.
| XXXXXX BROTHERS BREWING COMPANY, INC. |
XXXXXX’X WINE CELLARS, INC. | |||||||||
By:
|
/s/ Xxxx Xxxxxx
|
By: | /s/ Xxxxxx X. Xxxxx
|
|||||||
| Its: Pres | Its: Secretary | |||||||||
| CANANDAIGUA WINE COMPANY, INC. | ||||||||||
| By: | /s/ Xxxxxx X. Xxxxx | |||||||||
| Its: Executive Vice President, General Counsel |
||||||||||
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