Exhibit 10.17
ASSIGNMENT OF LICENSES
This Assignment is made and entered into this 31 day of August, 1993, by
and between Xxxxxxx Xxxxx XX Industries, Inc., a California corporation
("ASSIGNOR"), and I.C. Xxxxxx & Co., L.P., a Delaware limited partnership
("ASSIGNEE").
WHEREAS, ASSIGNOR is the licensee under two Exclusive Domestic License
Agreements (the "License Agreements") dated, respectively, June 1, 1993 and
December 1, 1993, between BHPC Marketing, Inc., a California corporation
("Licensor"), and ASSIGNOR concerning the license of rights to use Licensor's
marks and designs relating to the name "Xxxxxxx Hills Polo Club" (the
"Marks") in connection with the design, manufacture, import, distribution,
advertising, promotion, shipment and sale of certain women's apparel products
throughout the United States and all of its territories and possessions; and
WHEREAS, ASSIGNOR desires to assign the Licenses Agreements, and all of
its right, title and interest thereunder, to ASSIGNEE, and ASSIGNEE desires
to obtain such an assignment.
NOW, THEREFORE, it is agreed by the parties as follows:
1. ASSIGNMENT
For valuable consideration received, ASSIGNOR hereby grants and
assigns to ASSIGNEE the License Agreements and all of ASSIGNOR's right, title
and interest arising thereunder. ASSIGNOR further agrees, without further
consideration, to take such acts and execute such documents and instruments
as ASSIGNEE may reasonably request to effectuate fully this Assignment. In
furtherance of the transfer of such license rights, ASSIGNOR shall promptly
deliver to ASSIGNEE certain patterns, designs, samples and the like as have
been mutually agreed upon by the parties. Further, ASSIGNEE shall receive all
right, title and interest which ASSIGNOR has or may acquire with respect to
use of the Marks in China, and ASSIGNOR shall take all acts and execute all
documents or instruments which ASSIGNEE may reasonably request in furtherance
of ASSIGNEE's receiving such right, title and interest.
2. PAYMENT FOR ASSIGNMENT
As consideration for the Assignment effected hereby, ASSIGNEE agrees
to pay ASSIGNOR a total sum of three hundred thousand dollars ($300,000) in
cash, of which fifty thousand dollars ($50,000) has already been delivered to
ASSIGNOR pursuant to Paragraph 2(a) of that certain letter of intent dated
August 19,
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1993 and the balance of two hundred fifty thousand dollars ($250,000) shall
be paid upon execution and delivery of this Assignment. In addition to the
foregoing sums, if, at any time within three years from the date of this
Assignment, ASSIGNEE acquires the right, either under a direct license from
the Licensor or a sub-license from any licensee, in either case on terms
acceptable to ASSIGNEE in its sole discretion, to use the Marks in China,
ASSIGNEE shall pay a further sum of three hundred thousand dollars ($300,000)
to ASSIGNOR. The parties hereby acknowledge and agree that, as of the date
hereof, neither ASSIGNOR nor ASSIGNEE has been granted any rights with
respect to the use of the Marks in China.
3. MISCELLANEOUS
3.1 ENTIRE AGREEMENT. This instrument contains the entire agreement of
the parties and may not be modified except by an agreement in writing signed
by the party against whom enforcement of any waiver, change, modification,
extension or discharge is sought.
3.2 SUCCESSORS AND ASSIGNS. This Assignment shall inure to the benefit
of and shall be binding upon the parties hereto and their respective
successors and assigns.
3.3 COUNTERPARTS. This Assignment may be executed in one or more
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
ASSIGNEE: ASSIGNOR:
I.C. XXXXXX & CO., L.P. XXXXXXX XXXXX XX
INDUSTRIES, INC.
By /s/ Xxxxxx Xxxxx By /s/ Xxxxxx Xxxxx
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Xxxxxx Xxxxx Xxxxxx Xxxxx
Chairman of the Board President
By /s/ Xxxxxx Xxxx
--------------------------
Xxxxxx Xxxx
President and Chief Executive Officer
CONSENT OF LICENSOR
The undersigned hereby consents to the above-described Assignment of the
"License Agreements" (as defined in the first
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recital above), and all of Xxxxxxx Xxxxx XX Industries, Inc.'s right, title
and interest arising thereunder, to I.C. Xxxxxx & Co., L.P. The undersigned
hereby acknowledges and affirms that ASSIGNEE does not assume and shall have
no responsibility or liability with respect to any obligations arising under
the License Agreements prior to the effectiveness of the Assignment, except
that ASSIGNEE shall be obligated to make the minimum royalty payments
(aggregating $7,111.11) due under the License Agreements for August, 1993.
LICENSOR:
Dated: 9/1, 1993 BHPC MARKETING, INC.
By /s/ Xxx Xxxxxxxx
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Xxx Xxxxxxxx
Licensing Director
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