EXHIBIT 10.7
================================================================================
---------------------------
TRANSFER AGREEMENT
BETWEEN AND AMONG
HARRY'S FARMERS MARKET, INC.
HFMI TRUST
AND
HFMI ACQUISITION CORPORATION
Dated as January 31, 1997
--
---------------------------
================================================================================
TRANSFER AGREEMENT dated as of 1/31 , 1997, between and among HARRY'S
--------
FARMERS MARKET, INC., a Georgia corporation ("Transferor"), HFMI TRUST, a
----------
Delaware business trust ("Transferee" or "Trust") and HFMI ACQUISITION
---------- -----
CORPORATION, a Delaware corporation ("Newco").
-----
(a) Pursuant to a Trust Agreement dated as of the date hereof (the "Trust
-----
Agreement") between Transferor and Wilmington Trust Company, a Delaware banking
---------
corporation, as Trustee, Transferor has established Transferee pursuant to the
Delaware Business Trust Act, as amended.
(b) Pursuant to the Trust Agreement, Transferee shall issue to Transferor
on the date hereof the Worldwide Class Owner Certificate (as defined in the
Trust Agreement) representing the Worldwide Class Intellectual Property (as
defined in the Trust Agreement) and the Georgia Class Owner Certificate (as
defined in the Trust Agreement) representing the Georgia Class Intellectual
Property (as defined in the Trust Agreement), together with the corresponding
irrevocable, exclusive, perpetual licenses to the Worldwide Class Intellectual
Property and the Georgia Class Intellectual Property.
(c) Pursuant to an Acquisition Agreement dated as of the date hereof (the
"Acquisition Agreement") between Transferor and Newco, Transferor has agreed to
---------------------
transfer to Newco the Worldwide Class Owner Certificate, together with the
corresponding irrevocable, exclusive, perpetual license to the Worldwide Class
Intellectual Property.
(d) Pursuant to an Administration and Servicing Agreement dated as of the
date hereof (the "Administration and Servicing Agreement") between and among the
--------------------------------------
Trust, Newco and Transferor, Newco has agreed to perform certain services for
and on behalf of Transferee with respect to certain matters involving the
Intellectual Property.
(e) Pursuant to a Consulting Services Agreement dated as of the date
hereof (the "Consulting Services Agreement") between and among Xxxxx Xxxxxx,
-----------------------------
Transferor and Newco, Xxxxx Xxxxxx and Transferor shall provide consulting
services to Newco.
(f) Transferor, Transferee and Newco wish to set forth the terms pursuant
to which (i) Transferor will transfer to Transferee, as more fully described in
the Assignment of Intellectual Property attached hereto as Exhibit A, all of the
Transferor's Intellectual Property (as defined in the Trust Agreement) and (ii)
the Worldwide Class Intellectual Property and Georgia Class Intellectual
Property will be licensed to Newco and Transferor, respectively.
NOW, THEREFORE, in consideration of the foregoing, other good and valuable
consideration and the mutual terms and covenants contained herein, the parties
hereto agree as follows:
2
ARTICLE I
Transfer of the Intellectual Property
-------------------------------------
SECTION 1.01. Transfer of the Intellectual Property.
-------------------------------------
(a) Pursuant to the Trust Agreement and the Assignment of Intellectual
Property, which is substantially in the form of Exhibit A hereto, Transferor
hereby contributes, transfers, assigns, sets over and otherwise conveys to
Transferee all of Transferor's worldwide right, title and interest in and to the
Intellectual Property and hereby pledges to continue to do so as additional
Intellectual Property may come into being, all as provided for in the Trust
Agreement, in return for the Owner Certificates. Transferor, Newco and
Transferee shall cooperate to record this transfer and the Assignment of
Intellectual Property, in each appropriate government office throughout the
world (including any other documents necessary to effect such assignment of the
Intellectual Property to Transferee) with all reasonable speed.
(b) Pursuant to the Trust Agreement, Transferor shall, from time to time,
transfer to the Transferee, as they come into being, additional trademarks,
service marks, trade names, logos or other designations, trade secrets,
copyrights, or knowhow, hereafter acquired, created or developed by HFMI
("Additional Intellectual Property").
----------------------------------
SECTION 1.02. Transfer Conditions.
-------------------
(a) The parties acknowledge that they will perform the transactions
contemplated by Section 1.01 of this Agreement in each jurisdiction in which (i)
such transaction does not violate the law of such jurisdiction, (ii)
consummation of the transaction will not adversely affect the validity or
registration or other issued documentation of the Intellectual Property or the
Additional Intellectual Property, as the case may be, or impair the ability to
file new applications for registration or issuance of other documentation of the
Intellectual Property or the Additional Intellectual Property, as the case may
be, or renew or maintain existing registrations or other issued documentation of
rights and (iii) consummation of the transaction will not impair the right to
prevent unauthorized third parties from using the Intellectual Property and the
Additional Intellectual Property (collectively, the "Transfer Conditions").
-------------------
(b) In the event that both Transferor and Newco agree that, as a result
of a material change of law or otherwise, the transfer of any of the
Intellectual Property or the Additional Intellectual Property to the Trust in
any jurisdiction does (or will) not satisfy the Transfer Conditions, they shall
cooperate to transfer the Intellectual Property or the Additional Intellectual
Property or relevant portion thereof in such jurisdiction to Newco, as nominee
for the Trust. In the event that the parties agree to transfer the Intellectual
Property or the Additional Intellectual Property or any portion thereof to
Newco, as nominee, Newco shall execute a nominee agreement reasonably acceptable
to Newco, Transferor and the Trust confirming that the Trust has legal title to
the Intellectual Property or the Additional Intellectual Property or relevant
portion thereof, as the case may be. In the event that both Newco and
Transferor agree that, as a result of a material change of law
3
or otherwise, the transfer of the Intellectual Property or the Additional
Intellectual Property or any portion thereof to Newco, as nominee, in any
jurisdiction also does (or will) not satisfy the Transfer Conditions, the
parties shall cooperate to transfer the Intellectual Property or the Additional
Intellectual Property or relevant portion thereof in such jurisdiction to Newco
on its own behalf, provided, however, that nothing in this Agreement shall
-------- -------
prohibit the parties from agreeing on another mutually acceptable structure for
ownership of the Intellectual Property or the Additional Intellectual Property
or relevant portion thereof in a jurisdiction. In the event that Newco and
Transferor agree to transfer the Georgia Class Intellectual Property or the
Additional Intellectual Property or any portion thereof to Newco on its own
behalf in any jurisdiction other than pursuant to the Option (as defined in the
Trust Agreement) granted to the Worldwide Owner (as defined in the Trust
Agreement) by the Transferor pursuant to Section 3.06 of the Trust Agreement,
Newco shall grant to Transferor an exclusive, perpetual license to use the
Georgia Class Intellectual Property, the terms of which license shall be
identical to the terms of the license granted under Section 2.02 of this
Agreement.
SECTION 1.03. Costs and Expenses. Transferor shall bear the reasonable
------------------
costs and expenses associated with the transfer of the Intellectual Property and
the Additional Intellectual Property from Transferor to the Trust pursuant to
Section 1.01 of this Agreement. Transferor and Newco shall share equitably the
reasonable costs and expenses incurred in connection with a transfer of the
Intellectual Property and the Additional Intellectual Property or relevant
portion thereof pursuant to Section 1.02(b) of this Agreement. Such costs and
expenses shall include recording fees, any government fees or taxes imposed by
virtue of the transaction, the cost of recording the registered user's
agreements or licenses and all reasonable attorney's fees incurred by any party
to effect such transfer.
ARTICLE II
Licenses
--------
SECTION 2.01. Grant of Exclusive, Irrevocable, and Perpetual Licenses. On
-------------------------------------------------------
the date hereof, the Trust shall issue to Transferor as the owner of the
Worldwide Class and Georgia Class Owner Certificates exclusive, irrevocable and
perpetual licenses in the forms attached to the Trust Agreement as Annexures I
and II, respectively.
ARTICLE III
Miscellaneous Provisions
------------------------
SECTION 3.01. Term. The term of this Agreement begins as of the
----
effective date hereof and continues in perpetuity.
4
SECTION 3.02. Further Assurances. From and after the Closing (as defined
------------------
in the Acquisition Agreement), upon the reasonable request of any party to this
Agreement, any other party shall execute, acknowledge and deliver all such
further deeds, assignments, transfers, acts, assurances, conveyances and other
instruments and papers as may be necessary or appropriate to carry out the
transactions contemplated by this Agreement. The party requesting such
assurances shall bear the reasonable costs and expenses of compliance with this
Section 3.02.
SECTION 3.03. Integration; Amendments. This Agreement supersedes all
-----------------------
prior oral or written understandings and agreements relating thereto, and may
not be modified, discharged or terminated except by a written instrument signed
by the parties hereto.
SECTION 3.04. Waivers. No failure or delay on the part of any party in
-------
exercising any power, right or remedy under this Agreement or the Assignment of
Intellectual Property shall operate as a waiver hereof or thereof, nor shall any
single or partial exercise of any such power, right or remedy preclude any other
or further exercise thereof or the exercise of any other power, right or remedy.
SECTION 3.05. Notices. All notices and other communications hereunder
-------
shall be in writing and shall be deemed to have been duly given when delivered
in person, by facsimile or on the next business day when sent by reputable
overnight courier or on the fourth succeeding business day when sent by
registered or certified mail (postage prepaid, return receipt requested) to the
respective parties at the following addresses (or at such other address for a
party as shall be specified by like notice):
5
(i) if to the Transferor, to:
Harry's Farmers Market, Inc.
0000 Xxxxx Xxxxxxx Xxxx
Xxxxxxx, Xxxxxxx 00000
Attention: Xxxxx Xxxxxx
Telecopier: (000) 000-0000
and to:
Xxxxxx & Bird
One Atlantic Center
0000 Xxxx Xxxxxxxxx Xxxxxx
Xxxxxxx, Xxxxxxx 00000
Attention: Xxxx Xxxxxx, Esq.
Telecopier: (000) 000-0000
(ii) if to the Transferee, to:
HFMI Trust
c/o Wilmington Trust Company
0000 Xxxxx Xxxxxx Xxxxxx
Xxxxxx Xxxxxx Xxxxx
Xxxxxxxxxx, Xxxxxxxx 00000
Attention: Corporate Trust
Administration
Telecopier: (000) 000-0000
and to:
Xxxxxxxx, Xxxxxx & Finger
Xxx Xxxxxx Xxxxxx
Xxxxxxxxxx, Xxxxxxxx 00000
Attention: Xxxx X. Xxxxx, Esq.
Telecopier: (000) 000-0000
6
(iii) if to Newco, to:
HMFI Acquisition Corporation
00000 Xxxxxx Xxxx Xxxxxxx
Xxxxxx, Xxxxxxxx 00000
Attention: Xxxx X. Xxxxxx
Telecopier: (000) 000-0000
and to:
SECTION 3.06. Headings and Cross-References. The various headings in
-----------------------------
this Agreement are included for convenience only and shall not affect the
meaning or interpretation of any provision of this Agreement. References in
this Agreement to Section names or numbers are to such Sections of this
Agreement.
SECTION 3.07. Severability. Any provision of this Agreement that is
------------
prohibited or unenforceable in any jurisdiction shall, as to such jurisdiction,
be ineffective to the extent of such prohibition or unenforceability, without
invalidating the remaining provisions hereof, and any such prohibition or
unenforceability in any jurisdiction shall not invalidate or render
unenforceable such provision in any other jurisdiction.
SECTION 3.08. No Joint Ventures. Nothing herein contained shall be
-----------------
construed to constitute the parties hereto as partners, joint venturers or
agents of the other, and no party shall have any power to obligate or bind any
other in any manner whatsoever.
SECTION 3.09. Governing Law. This Agreement and the Assignment of
-------------
Intellectual Property shall be construed in accordance with the internal laws of
the State of Georgia applicable to agreements made and to be performed wholly
within such State, and the trademark or copyright laws of the United States, as
applicable. The parties hereby consent to the jurisdiction of the state and
federal courts of general jurisdiction situated in Georgia for the resolution of
all disputes arising out of or relating to this Agreement, and the parties
hereby waive any and all defenses of improper venue or that the forum is
inconvenient.
SECTION 3.10. Counterparts. This Agreement may be executed in two or
------------
more counterparts and by different parties on separate counterparts, each of
which shall be an original, but all of which taken together shall constitute one
and the same instrument.
7
SECTION 3.11. Successors and Assigns. All covenants and agreements
----------------------
contained herein shall be binding upon, and inure to the benefit of, Transferor,
the Trust and Newco, and their respective Successors (as defined in the Trust
Agreement).
SECTION 3.12. Limitations on Liability. It is expressly understood and
------------------------
agreed by the parties hereto that (i) this Agreement is executed and delivered
by Wilmington Trust Company, not individually or personally but solely as
trustee of the Trust under the Trust Agreement, in the exercise of the powers
and authority conferred and vested in it, (ii) each of the representations,
undertakings and agreements herein made on the part of the Trust is made and
intended not as personal representations, undertakings and agreements by
Wilmington Trust Company but is made and intended for the purpose of binding
only the Trust, (iii) except as Wilmington Trust Company shall otherwise
expressly agree, nothing herein contained shall be construed as creating any
liability on Wilmington Trust Company, individually or personally, to perform
any covenant either expressed or implied contained herein, all such liability,
if any, being expressly waived by any person directly or by any person claiming
by, through or under any other person and (iv) under no circumstances shall
Wilmington Trust Company be personally liable for the payment of any
indebtedness or expense of the Trust or be liable for the breach or failure of
any obligation, repre sentation, warranty or covenant made or undertaken by the
Trust under this Agreement.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
executed by their respective officers duly authorized as of the date and year
first above written.
HFMI TRUST HARRY'S FARMERS MARKET, INC.
By: WILMINGTON TRUST By: /s/ Xxxxx X. Blazer
COMPANY, not in its individual -------------------------------
capacity but solely as Trustee, Name: Xxxxx X. Blazer
Title: President
By: /s/ Xxxxxxxxxxx X. Xxxxxx
------------------------------
Name: Xxxxxxxxxxx X. Xxxxxx
Title: Vice President
HFMI ACQUISITION CORPORATION
By: /s/ Xxxx X. Xxxxxx
-------------------------------
Name: Xxxx X. Xxxxxx
Title: Chief Executive Officer
