ASSIGNMENT AND USE OF NAME AGREEMENT
Exhibit
B
This
ASSIGNMENT AND USE OF NAME AGREEMENT, dated as of January 3, 2006 (the
“Agreement”), is by and between XXXX XXXXXXX, an individual (“XXXXXXX”), and
ESCALA GROUP, INC., formerly known as XXXX XXXXXXX AUCTIONS, INC., a Delaware
corporation located at 000 Xxxxx Xxxxxx, Xxx Xxxx, XX 00000 (the
“COMPANY”).
W
I T N E S S E T H:
WHEREAS,
the
COMPANY has been using, and continues to use The Name (as hereinafter defined)
as part of its corporate and trade name and as a trademark and service xxxx
in
the conduct of the past and present business of the COMPANY (hereinafter
referred to as the “Business”);
WHEREAS,
XXXXXXX
acknowledges the COMPANY’s right to continue to use The Name in connection with
the Business and agrees to the assignment of rights and restrictions on use
of
The Name as set forth below.
NOW,
THEREFORE,
for
good and valuable consideration, the receipt and sufficiency of which are hereby
acknowledged, the parties hereto agree as follows.
1. The
Name.
As used
herein, “The
Name”
means
the name and marks containing the phrase, “XXXX XXXXXXX”, including the name and
marks “XXXX XXXXXXX AUCTIONS” and “XXXX XXXXXXX AUCTIONS, INC.” and all
stylizations and confusingly similar variations thereof and associated designs
and logos (including the stylized “GM”) used in the Business.
2. Effective
Date.
As used
herein, the “Effective
Date”
means
the date both parties have executed this Agreement.
3. Affiliate.
As used
herein “Affiliate”
means
any person, partnership, joint venture, corporation or other form of enterprise,
domestic or foreign, including, without limitation, parents and subsidiaries,
which directly or indirectly Controls (as hereinafter defined), is Controlled
by, or is under common Control with, the subject Party. “Control”
means
the possession, directly or indirectly, of the power to direct or cause the
direction of the management and operating policies of an entity through
ownership of fifty percent (50%) or more of the voting and/or equity securities
of such entity.
4. Assignment
of The Name.
XXXXXXX, individually and for any legal entity which he owns or controls, hereby
confirms the sale, transfer, conveyance and assignment to the COMPANY, for
use
by the COMPANY and its Affiliates, successors, and assigns, for and in
connection with the field of the Business, (a) all of XXXXXXX’x right, title,
ownership, and
interest
in and to The Name, throughout the world, including any and all rights as
a
trademark, service xxxx, trade name, domain name, endorsement, and similar
or
related identifier; all registration, applications, common law rights, and
rights of privacy and publicity therein, as well as all rights in and to
any
trademark applications for XXXX XXXXXXX AUCTIONS, together with all the related
goodwill of the Business symbolized by or associated with The Name being
assigned, and (b) the right to take any action or prosecute or assert any
rights
against any third party or parties, in the name of or on behalf of XXXXXXX,
in
response to (i) any actual or alleged infringement or unfair competition,
past,
present or future, by third party or parties of The Name (whether alone or
in
combination with other words) in conjunction with any goods or services that
fall within the field of the Business, or (ii) any use of The Name to publicize
to consumers any association of The Name as designer, producer, distributor,
manufacturer or endorser of any goods or services in the field of the Business.
To the extent any of the foregoing rights cannot be assigned as a matter
of law
or otherwise, XXXXXXX hereby waives, and irrevocably consents to the exclusive
right of the COMPANY, its Affiliates, successors, and assigns to use and
exercise all such aforementioned rights.
5. Restrictions
on XXXXXXX’x Use of The Name.
(a) XXXXXXX
hereby acknowledges and agrees that he will not, and that he will cause and
assure that any legal entity owned or directly or indirectly controlled by
him
will not, use or authorize or permit others to use The Name for or in connection
with the field of the Business, including, in or as part of any trademark,
service xxxx, trade name, domain name, endorsement, or similar or related
identifier (including in any advertisement, promotion, or other activities
relating thereto) of products or services in the field of the
Business.
(b) For
purposes of clarification and not limitation of Section 5(a) above, XXXXXXX
hereby acknowledges and agrees that as of the Effective Date he, and any legal
entity owned or directly or indirectly controlled by him, will not use The
Name
or authorize others to use The Name in competition with the Business, or in
connection with any business that competes with or targets sales associates,
agents, or customers of the COMPANY and/or its Affiliates anywhere in the world
with respect to the field of the Business.
(c) For
purposes of clarification and not limitation of Section 5(a) above, XXXXXXX
further acknowledges and agrees that he, and any legal entity owned or directly
or indirectly controlled by him, will not, whether as a franchisor, franchisee,
licensee, sublicensor, or otherwise, co-brand The Name, or any confusingly
similar variation thereof, with any name or xxxx of any third party that is
involved in the field of Business.
6. XXXXXXX’x
Permitted Use of The Name.
Except
as otherwise prohibited in this Agreement, nothing herein shall be deemed or
construed to prevent XXXXXXX from using The Name (including his personal name)
commercially in areas not related to the field of the Business.
7. Discontinuation
of The Name by the COMPANY.
In the
event that the Board of Directors of the COMPANY by resolution determines to
discontinue all use of the name and xxxx “XXXX XXXXXXX” in the conduct of the
COMPANY business, including as part of any corporate name, trade name, trademark
or service xxxx, the COMPANY agrees to
2
notify
XXXXXXX within sixty (60) days following such
determination and xxxxx XXXXXXX a one hundred eighty (180) day option to
purchase from the COMPANY all right, title and interest in the name and xxxx
“XXXX XXXXXXX”, including any rights of privacy, publicity and endorsement
associated therewith, at a purchase price to be negotiated by the parties.
In
the event the parties cannot reasonably agree on a purchase price, the parties
shall jointly designate an independent third party to determine such price
based
on an arms-length fair market valuation of The Name. Such valuation, if
necessary, shall be performed by a reputable firm of independent consultants
experienced in intellectual property valuations and acceptable to both Parties.
If XXXXXXX elects to purchase such rights in the name and xxxx “XXXX XXXXXXX,”
the Parties will take all reasonable steps to complete any such purchase of
The
Name within such one hundred eighty (180) day option period based on reasonable
terms and conditions. However, XXXXXXX acknowledges and agrees that the terms
and conditions of any such purchase will include specific requirements to avoid
possible confusion with the then current and planned business of the
COMPANY.
8. Representations
and Warranties.
XXXXXXX
hereby represents and warrants that (i) he has not granted to any third party
(other than the COMPANY or its Affiliates) the right or license to use The
Name,
(ii) this Agreement is, and such other transactions will be, valid and binding
obligations enforceable in accordance with their respective terms, (iii) the
execution, delivery and performance of this Agreement does not and will not
violate the provisions of any Articles of Incorporation or By-laws or the
provisions of any note of which he is the maker or of any indenture, agreement,
or other instrument to which he is a party, and (iv) he has good and valid
title
to The Name without material encumbrances and is capable of assigning The Name
pursuant to this Agreement.
9. Good
Faith Covenant.
XXXXXXX
hereby acknowledges and agrees that he will not do anything or cause others
to
do anything that is inconsistent with the full assignment to, and ownership
by,
the COMPANY (or its Affiliates) of The Name or that would infringe, disparage,
tarnish, or reflect adversely on The Name. XXXXXXX further acknowledges and
agrees that he will not, at any time, now or in the future, assert or authorize
others to assert any claim of infringement, unfair competition, or violation
of
right of privacy or publicity, against the COMPANY or its Affiliates relating
to
the use of The Name anywhere in connection with the Business, unless the COMPANY
or its Affiliates have used The Name with an intent to bring disrepute to,
ridicule, or disparage XXXXXXX, and then only with respect to such offending
action.
10. Cooperation;
Further Assurances.
XXXXXXX
hereby agrees to assist the COMPANY and its Affiliates, or any person or entity
designated by the COMPANY or its Affiliates, promptly upon request, in
perfecting, registering, maintaining, and enforcing, throughout the world,
the
COMPANY’s (or its Affiliates’) rights in and to The Name in connection with the
Business, whether now existing or hereafter created, including, but not limited
to, executing all documents and instruments as may be reasonably requested
by
the COMPANY (or its Affiliates) including but not limited to a Consent To
Trademark Registration shown in Exhibit X. XXXXXXX further agrees that he will
not apply to register as a trademark, service xxxx, or Internet domain name
The
Name in connection with the field of the Business, unless specifically requested
and authorized to do so by the COMPANY, in writing, in the name of an entity
designated by the COMPANY.
3
11. Territory.
This
Agreement shall apply worldwide.
12. Term.
The
term of this Agreement shall be perpetual.
13. Entire
Agreement.
This
Agreement, the Employment Agreement between XXXXXXX and the COMPANY effective
as
of July 1, 2005, and documents and instruments delivered in connection herewith
contain the entire agreement between the parties hereto with respect to the
subject matter hereof and supersede all prior agreements and understandings,
oral or written, with respect to such matters.
14. Governing
Law.
This
Agreement shall be governed by the laws of the State of New York, without giving
effect to its rules of conflict of laws.
15. Assignment
of Agreement.
This
Agreement shall be transferable and assignable by the COMPANY and its Affiliates
(and by the COMPANY’s successors and assigns) and the COMPANY’s successors and
assigns shall have full rights under this Agreement as if they were the COMPANY.
This Agreement may not be assigned by XXXXXXX.
16. Section
Headings.
Section
headings are inserted for convenience only and shall not affect any construction
or interpretation of this Agreement.
17. Counterparts.
This
Agreement may be executed in counterparts, each of which shall be deemed an
original, and all of which, when taken together, shall constitute one and the
same agreement.
IN
WITNESS WHEREOF,
the
parties hereto have executed this Agreement as of the date first written
above.
| XXXX XXXXXXX | ESCALA GROUP, INC. | |
| ______________________________________________ |
|
|
|
Dated:
January 3, 2006
|
By: | |
|
Title: President and Chief Executive Officer |
||
| Dated: January 3, 2006 | ||
4
EXHIBIT
A
CONSENT
TO TRADEMARK REGISTRATION
I,
Xxxx
Xxxxxxx, a citizen of the United States of America, having an office and
place
of business at 000 Xxxxxxx Xxxxxx, Xxxx Xxxxxxxx, XX 00000, have been known
by
the name of “Xxxx Xxxxxxx”, hereby consents to the registration of “Xxxx
Xxxxxxx”, and any trademarks or service marks including “Xxxx Xxxxxxx” or
variations thereof in any form, style, script or design, in the United States
Patent and Trademark Office and all foreign trademark offices, for all goods
and
services. This Consent extends to Escala Group, Inc. (formerly known as Xxxx
Xxxxxxx Auctions, Inc.), a Delaware corporation, and to its affiliates and
successors and assigns.
XXXX
XXXXXXX
______________________________________
Dated:
___________________, 2006
State
of
)
) ss.:
County
of
)
On
this ___ day of ___________,
2005 before me appeared
______________________, to me known and known to me to be
______________________ the person described in and who
executed the foregoing instrument and he acknowledged the
same to be his free act and deed.
Notary
Public
(Official
Seal)
