EXHIBIT 10.4
FIRST AMENDMENT TO
NEWCO LICENSE AGREEMENT
This First Amendment to Newco License Agreement (the "Amendment") is made
this 3rd day of November, 1997, by HFMI Trust, a Delaware business trust
("Licensor"), and Progressive Food Concepts, Inc., a Delaware corporation
formerly known as HFMI Acquisition Corporation ("Licensee").
RECITALS
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A. Pursuant to a series of transactions between Licensee and Harry's Farmers
Market, Inc. ("HFMI") on January 31, 1997, including, without limitation,
the transaction described in that certain Acquisition Agreement, dated
January 31, 1997, between HFMI and Licensee, HFMI acquired and now owns
712.3746 shares of common stock, having a par value of $0.01 per share, of
PFCI (the "Shares").
B. Pursuant to the Acquisition Agreement, dated January 31, 1997, HFMI
acquired certain rights against dilution of its interests by requiring
Licensee, under certain circumstances, to issue additional shares of common
stock to HFMI.
C. HFMI, PFCI and Wilmington Trust Company, a Delaware banking company
("Trustee"), entered into that certain Trust Agreement, dated January 30,
1997 (as amended on even date herewith by that certain First Amendment to
Trust Agreement, the "Trust Agreement"), pursuant to which the Trust was
created and Trustee was appointed the trustee thereof.
D. Pursuant to the terms of the Trust Agreement, the Trustee issued and
delivered to HFMI a Georgia Class Owner Certificate and a Worldwide Class
Owner Certificate, in each case as described in the Trust Agreement. As
required under the Trust Agreement, HFMI immediately transferred to
Licensee the Worldwide Class Owner Certificate.
E. The Trustee, on behalf of the Trust, entered into two separate license
agreements governing the use of the Trust property as follows:
1. Newco License Agreement between HFMI Trust and HFMI Acquisition
Corporation ("Newco License"), dated as of January 31, 1997, pursuant
to which Licensee was granted the irrevocable, exclusive and perpetual
license to use the Worldwide Class Intellectual Property (as defined
in the Trust Agreement); and
2. HFMI License Agreement between HFMI Trust and Harry's Farmers Market,
Inc. ("HFMI License"), dated as of January 31, 1997, pursuant to which
HFMI was granted the irrevocable, exclusive and perpetual license to
use the Georgia Class Intellectual Property (as defined in the Trust
Agreement).
F. HFMI has agreed to sell to Licensee, and Licensee has agreed to redeem from
HFMI, all of the Shares for, among other things, an amendment to the Newco
License as described herein (the "Redemption").
AGREEMENT
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FOR AND IN CONSIDERATION of the foregoing Recitals, which are incorporated
herein, the mutual covenants expressed below, and other valuable consideration,
receipt and sufficiency of which are hereby acknowledged, the parties agree as
follows:
1. Recital (f) of the Newco License Agreement is hereby deleted and replaced,
in its entirety, with the following:
(f) Licensor wishes to grant to Licensee and Licensee wishes to
receive from Licensor an irrevocable, perpetual license with respect to the
Worldwide Class Intellectual Property and portions of the Georgia Class
Intellectual Property as described and on the terms and conditions set
forth herein.
2. Section 1.01 of the Newco License Agreement is hereby deleted and replaced,
in its entirety, with the following:
SECTION 1.01 License. Licensor hereby grants Licensee an
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irrevocable, perpetual license to use, license or sublicense (or refrain
from doing the same), on and in connection with the manufacture,
distribution, sale, promotion, advertising, provision and/or marketing of
Newco Products, the following:
(a) the Worldwide Class Intellectual Property, such rights to be
effective throughout the world except as geographically limited in the
definition of such property (the "Worldwide Territory"); and
(b) effective November 3, 1999, in the states of Georgia and Alabama,
the Georgia Class Intellectual Property, except as to that portion of
the Georgia Class Intellectual Property which consists of Trademarks,
Service Marks and Trade Names (as those terms are referenced in the
Trust Agreement) which include or incorporate the word "Harry's" (the
"Harry's Marks").
"Newco Products" shall mean any and all products and services sold,
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licensed, sublicensed, distributed, advertised, provided and/or marketed
with, under or in connection with the foregoing licenses. The foregoing
licenses shall be exclusive only as and to the extent provided in Section
1.02 below.
3. The Newco License Agreement is hereby supplemented and amended by adding a
new Section to immediately follow Section 1.01 as follows:
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SECTION 1.02 Exclusivity. The license granted in Section 1.01(a)
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above shall be exclusive, except as follows:
a. effective November 3, 1999, such rights shall become concurrent
and non-exclusive (i) as to HFMI only and (ii) with respect to use in
the States of North Carolina, South Carolina and Tennessee;
b. effective January 31, 2004, such rights shall become concurrent
and non-exclusive (i) as to HFMI only and (ii) with respect to use
worldwide except as to that portion of the Worldwide Class
Intellectual Property which includes or incorporates the "Harry's
Marks"; and
c. effective January 31, 2004, if Licensee has not (either by
affirmative corporate action or by actual use) made the decision to
use the Harry's Marks, the provisions of clause b. above shall also be
applicable to the Harry's Marks.
The license granted in Section 1.01(b) above shall be concurrent and non-
exclusive as to HFMI only.
4. Section 1.02 of the Newco License Agreement shall be renumbered as Section
1.03.
5. The Newco License Agreement shall be amended only as described in the above
particulars. All capitalized terms used herein, but not defined, shall have the
meanings ascribed to them in the Newco License Agreement or in the Trust
Agreement, as applicable.
IN WITNESS WHEREOF, the parties have caused this Amendment to be executed
as of the day and date shown above.
HFMI TRUST
BY: WILMINGTON TRUST COMPANY,
A DELAWARE BANKING CORPORATION NOT IN ITS
INDIVIDUAL CAPACITY, BUT SOLELY AS TRUSTEE
BY: ________________________________
ITS:
PROGRESSIVE FOOD CONCEPTS, INC.
BY: ______________________________________
ITS:
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