THROUGHOUT THIS AGREEMENT, WHERE INFORMATION HAS BEEN REPLACED BY AN ASTERISK
(*), THAT INFORMATION HAS BEEN OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL
TREATMENT FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE
24B-2 PROMULGATED UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. THE
OMITTED INFORMATION HAS BEEN FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION.
EXHIBIT 10.69
LICENSE AGREEMENT
THIS AGREEMENT (the "Agreement") made and entered into as of the 8th
day of December 2004, by and between Xxxx X., Inc. ("Licensor") f/s/o Xxxx
Xxxxxxx ("Roddick"), a Florida corporation with an address c/o SFX Sports Group,
Inc. ("SFX Sports"), 0000 Xxxxx Xxxxxxxx Xxxxx, Xxxxx 000, Xxxxxxx Xxxxx, XX
00000 (Attn. Xxxxxxx Xxxxxxxx), and XXXXXX XXXXXXXXXX, INC., a Delaware
corporation with offices at 0000 XX 00XX Xxxxxx, Xx. Xxxxxxxxxx, XX. 00000
("Licensee") (together the "Parties").
W I T N E S S E T H :
WHEREAS, Licensor is the sole and exclusive owner of the Licensed Xxxx
(as hereinafter defined) and has used and currently is using, directly and
through licenses, the License Xxxx for a variety of products; and
WHEREAS, Roddick has licensed all such rights and the right to provide all such
ancillary services to Licensor, along with the rights to sublicense such rights
to third parties; and
WHEREAS, Licensee is engaged in the business of manufacturing,
promoting and selling Articles (as hereinafter defined) and Licensor desires to
obtain the services of Licensee in connection with the manufacture, promotion
and sale of the Articles bearing the Licensed Xxxx; and
WHEREAS, Licensor is willing to grant the Licensee and Licensee desires
to obtain from Licensor, the exclusive right and license to use the Licensed
Xxxx in the Territory (as hereinafter defined) solely for use on and in
connection with the manufacture, promotion, distribution and sale of Articles;
NOW, THEREFORE, in consideration of the premises and mutual agreements
contained herein, the Parties hereto covenant and agree as follows:
ARTICLE 1
Definitions
The following definitions shall apply:
A. Territory. Territory shall mean all countries of the world and all
duty-free-shops, ships, airplanes, military bases and diplomatic missions of
every country of the world, including the world-wide web.
B. Articles. Men's and women's fragrances ("fragrances") and related personal
care products such as after shave balm or gel, deodorant stick, bath and shower
gel, body lotions, body mist and bath soap, which are manufactured, produced,
sold, distributed, promoted and advertised by Licensee and which bear the
Licensed Xxxx under this License Agreement. Notwithstanding the foregoing, and
subject to the terms of Article 3 below, Licensor shall have the option, by
providing written notice to Licensee, to exclude any of the above-referenced
categories, with the exception of fragrances, from the definition of "Articles"
in the event it wishes to enter into an agreement to endorse a product in said
categories (i.e. Xxxxxxxx).
C. Licensed Xxxx. The name Xxxx Xxxxxxx and such other trademarks as are, from
time to time, agreed to by Licensor.
X. Xxxxxxx Endorsement. The Roddick Endorsement shall mean the right to use,
subject to the provisions hereof, Roddick's name, fame, nickname, initials,
autograph, voice, video, film portrayals or performances, facsimile or original
signature, photograph, likeness and image or facsimile image, and any other
means of endorsement by Roddick used in connection with the advertising,
promotion and sale of the Articles.
E. Net Sales. The sales price at which Licensee or any Subsidiary or Affiliate
(as hereinafter defined) bills its customers for Articles less: (1) all
documented returns of damaged, defective or other merchandise, uncollectible
accounts, trade and cash discounts and allowances, and taxes directly applicable
to the sale of Articles (such as sales, use, value added or similar taxes),but
only to the extent included in the gross sales price, (ii) freight and shipping
charges, insurance costs and duties and other governmental charges paid by the
Licensee to the extent stated separately on any invoice, and/or (iii) all
receipts from sale of samples, displays, brochures, gift-with-purchase and
similar advertising and promotional materials and packaging supplies in which
the Licensee receives a minimum gross margin of less than twenty five percent
(25%).
F. Subsidiary. Any corporation or other entity which is one hundred percent
(100%) directly or indirectly owned by Licensee.
G. Affiliate. Any corporation or other entity which is at least fifty percent
(50%) owned by Licensee.
H. Annual Period. Each twelve (12) month period commencing on each July 1st
during the Term (as hereinafter defined) of this Agreement shall constitute and
be referred to herein as an "Annual Period" except that the first Annual Period
shall commence on the date hereof and shall terminate on June 30, 2006.
I. Consumer Advertising. Consumer Advertising shall be understood to include
newspapers, magazines, television, radio, Internet, billboards (including
related artwork and production charges for these five categories) cooperative
advertising, retailer demonstration charges, retailers' catalogues,
gifts-with-purchase (so long as any such gifts do not violate one of Roddick's
or Licensor's existing or future endorsement relationships (i.e. Reebok, Rolex,
etc.), direct mail, remittance envelopes, blow-ins, billing inserts (both
scented and unscented), product samples, pamphlets, free goods (including those
to Licensor for events and other public relations activities), window and
counter displays (including testers, dummies, counter cards and other visual
aids), in-store demonstrators and models, special events, contests, publicity
and promotions.
ARTICLE 2
Grant of License
Upon the terms and conditions of this Agreement, Licensor hereby grants
to Licensee, during the Term of this Agreement, the sole and exclusive right and
license to use the Licensed Xxxx in the Territory as a trademark solely in
connection with the manufacture, promotion, sale and distribution solely of the
Articles and on all brand identifications, packing materials, containers,
promotional material, publicity, sales, advertising, newspaper, magazine, radio,
television, cinema and similar media presently existing or that may exist in the
future, in connection solely with the creation, manufacture, introduction,
marketing, distribution, sale and advertising of the Articles, through the
channels customarily used to manufacture, sell, distribute, advertise and
promote Articles of comparable prestige and quality in the ordinary course of
business as described in paragraph A of Article 7 below.
Under no circumstances does this Agreement grant or purport to grant to
Licensee the right to use any logo, trademark, or service xxxx owned by the
Association of Tennis Professionals ("ATP"), the United States Tennis
Association ("USTA") or the International Tennis Federation ("ITF"). Licensee
agrees and acknowledges that it must obtain approval from the ATP, USTA and/or
ITF for the use of any such marks or insignias, and in the absence of such
written approval, shall not make any use whatsoever thereof.
ARTICLE 3
Exclusivity of License
Licensor will not grant any other license effective during the Term of
this Agreement for the use of the Licensed Xxxx or Xxxxxxx Endorsement on or in
connection with the endorsement of Articles in the Territory. Licensor may use
or grant others the right to use the Licensed Xxxx and Xxxxxxx Endorsement on or
in connection with goods of all other types and descriptions in the Territory.
Notwithstanding anything to the contrary contained herein, nothing shall prevent
Licensor from licensing the Roddick Endorsement in connection with any product
competitive with, similar to or the same as the Articles (other than fragrances)
provided such product is not branded with the Licensor Xxxx (i.e. Licensor shall
have the right to enter into an agreement with Xxxxxxxx to endorse its products
so long as Xxxxxxxx does not brand its products with the Licensor Xxxx.)
Licensor acknowledges that Licensee presently manufactures and/or
distributes in parts of the Territory articles similar to the Articles covered
by this Agreement which bear other trademarks. Licensor further acknowledges and
consents to the Licensee obtaining other additional licenses for the manufacture
and/or distribution of other similar lines during the Term of this Agreement.
Licensee will not attack, during the Term of this Agreement and thereafter,
either Licensor's title in and to the Licensed Xxxx or the Roddick Endorsement,
or the validity of this License.
ARTICLE 4
Term of Agreement
Subject to the rights of termination set forth in this Agreement, the
initial term of this agreement shall commence on the date hereof and shall
terminate on June 30, 2009. Licensee shall have the option to renew this
Agreement for an additional three (3) year period provided:
A. Guaranteed Minimum Royalties (as hereinafter defined) for the initial
term of this Agreement have been paid; and
B. Licensee gives Licensor notice in writing of its intent to renew no
later than December 31, 2008.
ARTICLE 5
Confidentiality
The Parties acknowledge that all non-public proprietary information
relating to the business and operations of Licensor and Licensee which they
learn or have learned from the other during or prior to the term of this
Agreement is confidential. The Parties acknowledge the need to preserve the
confidentiality and secrecy of such information and agree that, both during the
term of this Agreement and after the expiration or termination hereof, they
shall not use or disclose same, and shall take all reasonable steps to preserve
in all respects such confidentiality and secrecy, it being understood that a
Party shall have complied with the foregoing obligation if such Party
understands at least the same measures and precautions it uses to safeguard its
own confidential information.. The provisions of this paragraph shall not apply
with respect to:
A. any information that is generally available to the public other than as
a result of disclosure in violation of the foregoing;
B. any information that is known to Licensor prior to disclosure by
Licensee or independently developed by Licensor;
C. any otherwise confidential information that is disclosed to Licensor by
a third party and such disclosure by the third party is not, to the
best knowledge of Licensor, in violation of any confidentiality
agreement of the party to Licensee; or
D. information that is required to be disclosed by judicial or
administrative order or required to be disclosed to enforce the terms
and conditions hereof.
The provisions of this paragraph shall survive the expiration or
termination of this Agreement.
ARTICLE 6
Duties of Licensee
A. Best Efforts. During the Term of this Agreement, Licensee will use its best
efforts to exploit the rights herein granted throughout the Territory and to
sell the maximum quantity of Articles therein consistent with the high standards
and prestige represented by the Licensed Xxxx.
B. Design and Sample Making. Licensor shall not be responsible for the
production, design or sample making of the Articles and Licensee shall bear all
costs related thereto.
C. Marketing Commitment. During the Term of the Agreement, Licensee agrees to
develop, produce, market and sell a Roddick line of Articles, which consist of:
(i) no fewer than one (1) brand of Roddick Articles (the "Roddick Articles") in
the first Annual Period, which shall have a commercial release to the general
public no later than May 1, 2006; and (ii) no fewer than one (1) additional
brand of Roddick Articles in the third Annual Period which shall have a
commercial release to the general public between July 1, 2007 and January 1,
2008. Licensee agrees that all Roddick Articles will at least be distributed
through channels normally used to distribute Articles. All rights of Licensee to
develop, produce, market or sell any Roddick Articles shall terminate upon the
expiration or termination of this Agreement except as provided herein.
Furthermore, during the Term, Licensee agrees that it shall not, without
Licensor's prior written permission, which shall not be unreasonably withheld,
conditioned or delayed, disassociate the Roddick Endorsement from any Roddick
Articles.
ARTICLE 7
Quality Standards
A. Manufacture of Articles; Quality Control.
(i) The contents and workmanship of Articles shall be at all times
of the highest quality consistent with the reputation, image
and prestige of the Licensed Xxxx. Articles shall be
distributed and sold with packaging and sales promotion
materials appropriate for such highest quality products. The
Parties agree that the Articles shall be of such premium
quality, prestige and price similar to that of the Xxxxxx Xxxxx,
Xxxxx Xxxxxx (excluding Purple Label), and Xxxxx Xxxxx
fragrances as of the date of this Agreement.
(ii) All Articles shall be manufactured, labeled, sold, distributed
and advertised in accordance with all applicable national, state
and local laws and regulations.
(iii) Licensee shall submit to Licensor the fragrance, scent,
packaging and other material, designs, sketches, colors, tags,
containers and labels (collectively, the "Approval Package"), as
well as any materials utilizing the Licensed Xxxx or the Roddick
Endorsement for Licensor's review and approval, such approval
not to be unreasonably withheld or delayed. In the event
Licensor does not respond to Licensee within ten (10) business
days of Licensor's receipt of all items within the scope of the
Approval Package, Licensee shall send Licensor written notice
requesting such approval once again (the "Approval Request"). In
the event Licensor does not respond to Licensee within three (3)
business days of Licensor's receipt of the Approval Request, the
items in such Approval Package shall be deemed approved.
(iv) During the term of this Agreement, upon Licensor's request,
Licensee shall submit, free of charge to Licensor, then current
production samples of each Article marketed. Production samples
submitted by Licensee for this purpose may be retained by
Licensor and Licensor will pay Licensee for any additional
production samples Licensor requests and retains at prices equal
to Licensee's actual costs. All Articles to be sold hereunder
shall be at least equal in quality to the samples presented to
Licensor. Licensor and its duly authorized representatives shall
have the right, upon reasonable advance notice and during normal
business hours, at Licensor's expense, to examine Articles in
the process of being manufactured and to inspect all facilities
utilized by Licensee in connection therewith.
B. Required Markings. Licensee shall cause to appear on all packaging of
Articles, (i) "the trademark, Xxxx Xxxxxxx is licensed to "Xxxxxx Xxxxxxxxxx,
Inc."; and such additional legends, markings and notices complying with the
requirements of any law or regulation in the Territory and (ii) such legends,
markings and notices as Licensor, from time to time, may reasonably request.
C. Distribution. In order to maintain the reputation, image and prestige of the
Licensed Xxxx, Licensee's normal distribution patterns shall consist of those
retail establishments whose location, merchandising and overall operations are
consistent with the products described in paragraph A (i) of Article 7 above.
D. Sales Force. During the Term of this Agreement, Licensee shall maintain a
non-exclusive sales force suitable to carry out the purpose of this Agreement.
ARTICLE 8
Guaranteed Minimum Royalty/Supply of Articles
In consideration of both the license granted and the services to be
performed by Licensor hereunder, Licensee shall pay to Licensor a Guaranteed
Minimum Royalty as follows:
Annual Period Guaranteed Minimum Royalty (in USD$)
First (Execution through June 30, 2006) *
Second (July 1, 2006 through June 30, 2007) *
Third (July 1, 2007 through June 30, 2008) *
Fourth (July 1, 2008 through June 30, 2009) *
The Guaranteed Minimum Royalty for each Annual Period shall be credited
against the Sales Royalty for only the same Annual Period as provided in Article
9 below. The Guaranteed Minimum Royalty payable for each Annual Period shall be
paid to Licensor in four equal quarterly installments for the corresponding
Annual Period on or prior to the 15th day of each, July, October, January and
April; except that, with respect to the first Annual Period, Licensee will pay *
to Licensor upon execution of this Agreement, which will be credited against the
Guaranteed Minimum Royalty due for the initial Annual Period. The Guaranteed
Minimum Royalty shall be made payable to "Xxxx X., Inc." and should be sent c/o
Xxxx X., Inc., 0000 Xxx Xxxxx Xxxx, Xxxx Xxxxx, XX 00000 (Attn.: Xxxxx Xxxxxxx).
The Guaranteed Minimum Royalty for each Annual Period in the renewal
term will be *.
Additionally, throughout the Term of the Agreement, Licensee agrees to
supply to Licensor, at Licensee's expense, such quantities of Articles as it (or
Licensor's designated agent) may reasonably request for Roddick's own use.
ARTICLE 9
Sales Royalty; Withholding Taxes
Licensee shall pay to Licensor a sales royalty (the "Sales Royalty") on
each Annual Period's Net Sales of *. All Sales Royalties due Licensor hereunder
shall accrue upon the sale of the Articles. Regardless of time of collection by
Licensee, Articles shall be considered "sold" as of the date on which such
Articles are invoiced or shipped, whichever first occurs.
The Sales Royalty hereunder shall be accounted for and paid quarterly
within forty-five (45) days after the close of each period ending September 30,
December 31 and March 31, and within sixty (60) days after June 30 during the
Term of this Agreement (or portion thereof in the event of prior termination for
any reason) (each such date, a "Payment Date"). The Sales Royalty payable for
each period during each Annual Period shall be computed on the basis of Net
Sales during such Annual Period, with a credit for any Guaranteed Minimum
Royalty and Sales Royalty payments made to Licensor for said Annual Period. The
Sales Royalty shall be made payable to "Xxxx X., Inc." and should be sent c/o
Xxxx X., Inc., 0000 xxx Xxxxx Xxxx, Xxxx Xxxxx, XX 00000 (Attn.: Xxxxx Xxxxxxx).
If applicable, Licensee shall compute any payment, on behalf of
Licensor, for all taxes (other than United States income taxes) which any
governmental authority in the Territory may impose on Licensor with respect to
royalties paid by Licensee to Licensor. The amount of such taxes shall be
deducted from payments of royalties, provided that Licensor is entitled under
applicable law to credit the amount of such taxes against its United States
Federal Income Tax obligations. Licensee shall furnish Licensor with an official
receipt (together with a translation thereof if not in English) promptly after
each such payment of taxes. In the event such taxes are not paid when due, all
resulting penalties and interest shall be borne by Licensee.
ARTICLE 10
Advertising
Licensee agrees to spend in the United States for Consumer Advertising
* of Net Sales from the just-completed Annual Period in such market during each
Annual Period. However, in the first Annual Period, Licensee agrees to spend in
the United States for "consumer advertising" no less than *.
For the other markets in the Territory, Licensee or its distributors
will jointly spend not less than * of Net Sales from the just-completed Annual
Period in such markets during each Annual Period. However, in the first Annual
Period, Licensee agrees to spend in other markets in the Territory for Consumer
Advertising no less than *.
It is understood that such required or actual spending shall not in any
way reduce Net Sales or Sales Royalties due hereunder or be used to satisfy or
offset any other obligation of Licensee hereunder.
At Licensee's request, Licensor shall make up to three (3) appearances
during each of the first and second Annual Periods, and up to four (4)
appearances during each of the third and fourth Annual Periods to make himself
available at reasonable intervals and for reasonable periods of time solely for
promotional tie-ins serving to associate him with the Articles. Each appearance
shall be no longer than eight (8) consecutive hours in any 24-hour period, and
shall take place at mutually agreed upon dates, times and locations, and fully
subject to Roddick's obligations as a professional tennis player. It is agreed
that any unused appearances at the end of an Annual Period shall be waived and
shall not carry over to a subsequent Annual Period. Subject to Article 7,
Section A(iii), Licensee shall also be entitled to the use of the Roddick
Endorsement solely in connection with the advertising and promotion of the
Articles. Licensee further understands that its failure to utilize services of
Roddick hereunder shall not result in any reduction in payments to Licensor
hereunder. Licensor shall not be required to participate in any activities (i)
which are subject to federal or state security laws, (ii) which would impose a
fiduciary duty upon Licensor or Roddick to Licensee's shareholders, (iii) which
would cause Roddick to violate any laws, (iv) which would cause injury to
Roddick, or (v) which may subject Roddick to public disrepute. Licensor shall
make every effort, in light of Roddick's busy schedule and tournament
commitments, at the reasonable and advance request of Licensee, to arrange for
cooperation for publicity photographs, launch parties, personal appearances and
radio and television interviews, and any such appearance in connection therewith
shall be counted as an appearance in connection with this Section. Licensee
shall arrange, pay for and provide Roddick with the reasonable costs involved in
connection with his providing his services herein, including, but not limited to
first-class travel (air and ground, including airport transfers), first class
lodging, food and other related expenses mutually agreed upon in advance of each
appearance attended at Licensee's request. The obligations of Licensor to
provide the services of Roddick hereunder are subject to the condition that
payments to Licensor are current and up to date and Licensee is not otherwise in
breach of any provisions of this Agreement. If Licensor confirms Roddick's
availability for any appearance and Roddick is unable to appear due to illness,
injury or other emergency, such non-appearance is not a breach of this Agreement
and neither Licensor nor Roddick shall be responsible for any expenses incurred
due to such non-appearance. In such event, Licensor and Licensee shall attempt
in good faith to reschedule the appearance date.
ARTICLE 11
Sales Statement; Books and Records; Audits
A. Sales Statement. Licensee shall deliver to Licensor (including copies as set
forth below) on each Payment Date, a reasonably detailed report signed by a duly
authorized officer of Licensee indicating by quarter the Net Sales and a
computation of the amount of Sales Royalty payable hereunder for said period.
Such statement shall be furnished to Licensor whether or not any Articles have
been sold during the period of which such statement is due.
Licensee shall deliver to Licensor, not later than ninety (90) days
after the close of each Annual Period during the Term of this Agreement (or
portion thereof in the event of prior termination for any reason), a statement
signed by a duly authorized officer relating to said entire Annual Period,
setting forth the same information required to be submitted by Licensee in
accordance with the first paragraph of this Article and also setting forth the
information concerning expenditures for the advertising and promotion of
Articles during such Annual Period required by Article 10 hereof.
B. Books and Records; Audits. Licensee shall prepare and maintain, in such
manner as will allow its accountants to audit same in accordance with generally
accepted accounting principles, complete and accurate books of account and
records (specifically including without limitation the originals or copies of
documents supporting entries in the books of account) in which accurate entries
will be made covering all transactions, including advertising expenditures,
arising out of or relating to this Agreement. Licensee shall keep separate
general ledger accounts for such matters that do not include matters or sales
related to this Agreement. Licensor and its duly authorized representatives
shall have the right, for the duration of this Agreement and for one (1) year
thereafter, during regular business hours and upon seven (7) business days
advance notice (unless a shorter period is appropriate in the circumstances), to
audit said books of account and records and examine all other documents and
material in the possession or under the control of Licensee with respect to the
subject matter and the terms of this Agreement, including, without limitation,
invoices, credits and shipping documents, and to make copies of any and all of
the above. All such books of account, records, documents and materials shall be
kept available by Licensee for at least two (2) years after the end of the
Annual Period to which they relate.
In the event that an error is discovered in the calculation of the
amounts payable to Licensor, the Party that received the benefit of the error
shall promptly thereafter pay to the other the amount of overpayment or
underpayment, as the case may be. If, as a result of any audit of Licensee's
books and records, it is shown that Licensee's payments were less than the
amount which should have been paid by an amount equal to * or more of the
payments actually made with respect to sales occurring during the period in
question, Licensee shall reimburse Licensor for the cost of such audit and shall
make all payments required to be made to eliminate any discrepancy revealed by
said audit within ten (10) days after Licensor's demand therefore.
ARTICLE 12
Indemnification and Insurance
A. Indemnification of Licensor. Licensee hereby agrees to save and hold Licensor
and their agents harmless of and from and to indemnify them against any and all
claims, suits, injuries, losses, liability, demands, damages and expenses
(including, subject to subparagraph D below, Licensor's reasonable attorneys'
fees and expenses) which Licensor may incur or be obligated to pay, or for which
either may become liable or be compelled to pay in any action, claim or
proceeding against it, for or by reason of any acts, whether of omission or
commission, that may be committed or suffered by Licensee or any of its
servants, agents or employees in connection with Licensee's performance of this
Agreement, including but not limited to those arising out of the alleged defect
in any Article produced by Licensee under this Agreement, the manufacture,
labeling, sale, distribution or advertisement of any Article by Licensee in
violation of any national, state or local law or regulation or the breach of
Article 5 hereof and any breach of Licensee's representations, warranties and
obligations hereunder. The provisions of this paragraph and Licensee's
obligations hereunder shall survive the expiration or termination of this
Agreement.
B. Insurance Policy. Licensee shall procure and maintain at its own expense in
full force and effect at all times during which Articles are being sold, with a
responsible insurance carrier acceptable to Licensor, a public liability
insurance policy including products liability coverage with respect to Articles
with a limit of liability not less than Three Million U.S. Dollars
(USD$3,000,000). It shall be acceptable if such coverage is provided by a
product liability policy and an additional umbrella policy. Such insurance
policies shall be written for the benefit of Licensee and Licensor and shall
provide for at least thirty (30) days prior written notice to said Parties of
the cancellation or substantial modification thereof. Licensor and Roddick shall
be each a named insured on each such policy. Such insurance may be obtained by
Licensee in conjunction with a policy which covers products other than Articles.
C. Evidence of Insurance. Licensee shall, from time to time upon reasonable
request by Licensor, promptly furnish or cause to be furnished to Licensor
evidence in form and substance satisfactory to Licensor of the maintenance of
the insurance required by subparagraph B above, including, but not limited to,
copies of policies, certificates of insurance (with applicable riders and
endorsements) and proof of premium payments. Nothing contained in this paragraph
shall be deemed to limit in any way the indemnification provisions of the
subparagraph A above.
D. Notice. Licensor will give Licensee notice of any action, claim, suit or
proceeding in respect of which indemnification may be sought and Licensee shall
defend such action, claim, suit or proceeding on behalf of Licensor. In the
event appropriate action is not taken by Licensee within thirty (30) days after
its receipt of notice from Licensor, then Licensor shall have the right, but not
the obligation, to defend such action, claim, suit or proceeding. Licensor may,
subject to Licensee's indemnity obligation under subparagraph A above, be
represented by its own counsel in any such action, claim, suit or proceeding. In
any case, the Licensor and the Licensee shall keep each other fully advised of
all developments and shall cooperate fully with each other in all respects in
connection with any such defense as is made. Nothing contained in this paragraph
shall be deemed to limit in any way the indemnification provisions of the
subparagraph A above except that in the event appropriate action is being taken
by Licensee by counsel reasonably acceptable to Licensor, with respect to any
non-trademark or intellectual property, action, claim, suit or proceeding.
Licensor shall not be permitted to seek indemnification from Licensee for
attorneys' fees and expenses incurred without the consent of Licensee. In
connection with the aforesaid actions, claims and proceedings, the Parties
shall, where no conflict of interest exists, seek to be represented by common
reasonably acceptable counsel. In connection with actions, claims or proceedings
involving trademark or other intellectual property matters which are subject to
indemnification hereunder, Licensor and/or Roddick shall at all times be
entitled to be represented by its/his own counsel, for whose reasonable fees and
disbursements it/he shall be entitled to indemnification hereunder.
ARTICLE 13
The Licensed Xxxx
X. Licensee shall not join any name or names with the Licensed Xxxx so as to
form a new xxxx, unless and until Licensor consents thereto in writing. Licensee
acknowledges the validity of the Licensed Xxxx, the secondary meaning associated
with the Licensed Xxxx, and the rights of Licensor with respect to the Licensed
Xxxx in the Territory in any form or embodiment thereof and the goodwill
attached or which shall become attached to the Licensed Xxxx in connection with
the business and goods in relation to which the same has been, is or shall be
used. Sales by Licensee shall be deemed to have been made by Licensor for
purposes of trademark registration and all uses of the Licensed Xxxx by Licensee
shall inure to the benefit of Licensor. Licensee shall not, at any time, do or
suffer to be done, any act or thing which may in any way adversely affect any
rights of Licensor in and to the Licensed Xxxx or any registrations thereof or
which, directly or indirectly, may reduce the value of the Licensed Xxxx or
detract from its reputation.
B. At Licensor's request, Licensee shall execute any documents, including
Registered User Agreements, reasonably required by Licensor to confirm the
respective rights of Licensor in and to the Licensed Xxxx in each jurisdiction
in the Territory and the respective rights of Licensor and Licensee pursuant to
this Agreement. Licensee shall cooperate with Licensor, in connection with the
filing and the prosecution by Licensor of applications to register or renew the
Licensed Xxxx for Articles sold hereunder in each jurisdiction in the Territory
where Licensee has reasonably requested the same. Such filings and prosecution
outside the United States shall be at the expense of Licensee (Licensee shall
pay for any application requested in advance) subject to a credit given on a
country by country basis for such payments against any royalties due Licensor
from sales derived in the particular country where the application was made.
Nothing contained herein shall obligate Licensor to prosecute any trademark
application outside the United States which is opposed or rejected in any
country after the application is filed, provided, however, that any such
prosecution shall go forward if (a) Licensee requests same; (b) Licensee pays
for same directly; and (c) such prosecution is in Licensor's name and directed
by Licensor. Licensor shall cooperate fully with any such prosecution. If the
prosecution fails, Licensee shall receive no credit for the monies it expended
in connection therewith; if the prosecution succeeds, Licensee shall be entitled
to receive a credit against any royalties due Licensor from sales derived in the
country of such prosecution.
C. Licensee shall use the Licensed Xxxx in each jurisdiction in the Territory
strictly in compliance with the legal requirements obtaining therein and shall
use such markings in connection therewith as may be required by applicable legal
provisions. Licensee shall cause to appear on all Articles and on all materials
on or in connection with which the Licensed Xxxx is used, such legends, markings
and notices as may be reasonably necessary in order to give appropriate notice
of any trademark, trade name or other rights therein or pertaining thereto.
D. Licensee shall never challenge the validity of the Licensed Xxxx or any
application for registration thereof, or any trademark registration hereof, or
any rights of Licensor therein. The foregoing shall not be deemed to prevent
Licensee from asserting, as a defense to a claim of breach of contract brought
against Licensee by Licensor for failure to perform its obligations hereunder,
that its ceasing performance under this Agreement was based upon Licensor's
failure to own or have the rights to license the Licensed Xxxx in the United
States of America, provided that it is established in a court of law that
Licensor does not own or have the rights to license the Licensed Xxxx, and that
the Licensed Xxxx is owned by a third party so as to preclude the grant of the
license provided herein.
E. In the event that Licensee learns of any infringement or imitation of the
Licensed Xxxx or the Roddick Endorsement, or of any use by any person of a
trademark similar to the Licensed Xxxx or the Roddick Endorsement, Licensee
promptly shall notify Licensor thereof. In no event, however, shall Licensor be
required to take any action if Licensee deems the taking of action reasonably
inadvisable to do so.
. Licensor shall not be required to protect, indemnify or hold Licensee
harmless against, or be liable to Licensee for, any liabilities, losses,
expenses or damages which may be suffered or incurred by Licensee as a result of
any infringement or allegation thereof by any other person, firm or corporation,
other than by reason of Licensor's breach of the representations made and
obligations assumed herein.
ARTICLE 14
Defaults; Termination
A. The following conditions and occurrences shall constitute "Events of Default"
by Licensee:
(i). the failure to pay Licensor the full amount due it under any of
the provisions of this Agreement by the prescribed date for such
payment;
(ii). the failure to deliver full and accurate reports pursuant to
any of the provisions of this Agreement by the prescribed due date
therefore;
(iii). the making or furnishing of a knowingly false statement in
connection with or as part of any material aspect of a report, notice
or request rendered pursuant to this Agreement;
(iv). the failure to maintain the insurance required by Article 12;
(v). the use of the Licensed Xxxx or Xxxxxxx Endorsement in an
unauthorized or unapproved manner;
(vi). Licensee's use of other trademarks or in association with the
Articles, without prior written consent of Licensor;
(vii). the commencement against Licensee of any proceeding in
bankruptcy, or similar law, seeking reorganization, liquidation,
dissolution, arrangement, readjustment, discharge of debt, or seeking
the appointment of a receiver, trustee or custodian of all or any
substantial part of Licensee's property, not dismissed within sixty
(60) days, or Licensee's making of an assignment for the benefit of
creditors, filing of a bankruptcy petition, its acknowledgment of its
insolvency or inability to pay debts, or taking advantage of any other
provision of the bankruptcy laws;
(viii). the material breach of any other material promise or agreement
made herein.
B. In the event Licensee fails to cure (i) an Event of Default within thirty
(30) days after written notice of default is transmitted to Licensee under
Article 14 A.3, A.5, A.6, or A.7; or (ii) Licensee fails to cure any other Event
of Default within sixty (60) days after written notice of default is transmitted
to Licensee or within such further period as Licensor may allow, this Agreement
shall, at Licensor's option, be terminated, on notice to Licensee, and all the
Guaranteed Minimum Royalties for the Term shall become due, without prejudice to
Licensor's right to receive other payments due or owing to Licensor under this
Agreement or to any other right of Licensor, including the right to damages
and/or equitable relief.
D. Upon the expiration or termination of this Agreement for any reason, in the
event this Agreement is not renewed as provided in Article 4 above, or in the
event of the termination or expiration of a renewal term of this Agreement,
Licensee, except as specified below, will immediately discontinue use of the
Licensed Xxxx and the Roddick Endorsement, will not resume the use thereof or
adopt any colorable imitation of the Licensed Xxxx or the Roddick Endorsement or
any of its parts, will promptly deliver and convey to Licensor (free of all
liens and encumbrances) (i) all plates, engravings, silk-screens, or the like
used to make or reproduce the Licensed Xxxx and the Roddick Endorsement and the
Designs, but not the bottle mold or tooling which Licensor shall be entitled to
purchase or recover as provided below; and (ii) all items affixed with likeness
or reproductions of the Licensed Xxxx and the Roddick Endorsement, whether
Articles, labels, bags, hangers, tags or otherwise, and, upon request by
Licensor, will assign to Licensor such rights as Licensee may have acquired in
the Licensed Xxxx and the Roddick Endorsement. In the event that this Agreement
expires or is terminated by Licensor due to Licensee's default, Licensor shall
have an option, but not an obligation, to purchase the bottle mold and tooling
for the Articles, free of all liens and other encumbrances, at a price equal to
Licensee's cost for same established by submission of xxxx(s) from supplier and
satisfactory proof of payment for same. Licensor shall pay such cost as follows:
fifty percent (50%) at closing and the balance paid by six (6) equal monthly
payments. Licensor shall, at the time it exercises its purchase option, enter
into a security agreement with Licensee with respect to the mold, which shall
entitle Licensee to foreclose on its security interest in the mold in the event
Licensor fails to make any installment payment due within fifteen (15) days
after receiving notice of default. Licensor shall exercise its aforesaid option
within thirty (30) days after Licensee's submission of documents establishing
cost. Notwithstanding the foregoing, if Licensor has terminated this Agreement
due to Licensee's default, Licensor, at its option, shall be entitled, in
exercising its purchase option, to deduct from the cost price an amount equal to
the Sales and Guaranteed Minimum royalties Licensor is entitled to recover, for
which deduction Licensee shall receive a credit. In the event Licensor exercises
its aforesaid option, Licensee shall be precluded forever from using the bottle
molds or tools and from selling or otherwise transferring or licensing any
rights whatsoever in the molds or tools to any third party. In the event that
Licensor does not exercise its aforesaid option, Licensee shall not use the
bottle molds or tools or sell or otherwise transfer or license any rights
whatsoever in the bottle mold or tools to any third party for a period of two
(2) years after the determination of the fair market value. In the event of any
permitted use of the bottle mold and/or tools by Licensee, Licensee shall not
use in connection therewith the Licensed Xxxx, any trademark confusingly similar
thereto, any trade dress associated with the Articles, any advertising or
promotional materials used in connection with the Articles or any other markings
or materials which would cause a reasonable consumer to believe that any new
items sold using the bottle mold and tools are authorized by Licensor or in some
way associated with the Licensed Xxxx. Any permitted sale or license of the
bottle mold and/or tools by Licensee shall prohibit in writing the purchaser or
licensee from using the Licensed Xxxx, and confusingly similar trademark and any
such trade dress, advertising, promotional materials, markings or other
materials and shall expressly make Licensor a third party beneficiary of such
provision.
ARTICLE 15
Rights on Expiration or Termination
A. If this Agreement expires or is terminated for any reason, Licensee shall
cease to manufacture Articles (except for work in progress or to balance
component inventory) but shall be entitled, for an additional period of one
hundred eighty (180) days only, on a non-exclusive basis (the "Sell-Off
Period"), to sell and dispose of its inventory of Articles and of related work
in progress then on hand (including any such items held by Subsidiaries,
Affiliates or others on behalf of Licensee) (hereinafter referred to as
"Inventory), subject, however, to the provisions of paragraph D of this Article.
Such sales shall be made subject to all of the provisions of this Agreement and
to an accounting for and the payment of Sales Royalty thereon, but not in
addition to the payment of Guaranteed Minimum Royalties. In the event of a
Sell-Off Period, Licensee shall supply Licensor with monthly accounting
statements and payments shall be made monthly.
B. In the event of termination in accordance with Article 14 above, Licensee
shall immediately pay to Licensor, the Sales Royalty then owed to it pursuant to
this Agreement.
C. Notwithstanding any termination in accordance with Article 14 above, Licensor
shall have and hereby reserve all rights and remedies which it has, or which are
granted to it by operation of law, to enjoin the unlawful or unauthorized use of
the Licensed Xxxx and the Roddick Endorsement, and to collect Sales Royalties
payable by Licensee pursuant to this Agreement and to be compensated for damages
for breach of this Agreement.
D. Upon the expiration or termination of this Agreement, Licensee shall deliver
to Licensor a complete and accurate schedule of Licensee's Inventory. Such
schedule shall be prepared as of the close of business on the date of such
expiration or termination and shall reflect Licensee's cost of each such item.
Notwithstanding anything contained to the contrary in this Agreement, Licensor
thereupon shall have the option, exercisable by notice in writing delivered to
Licensee within thirty (30) days after its receipt of the complete Inventory
schedule, to purchase any or all of the Inventory, free of all liens and other
encumbrances, for an amount equal to the lowest Licensee's selling price. In the
event such notice is sent by Licensor, Licensee shall deliver to Licensor or its
designee, at Licensor's sole cost and expense, all of the Inventory referred to
therein within thirty (30) days after Licensor's said notice and, in respect of
any Inventory so purchased, assign to Licensor all then outstanding orders from
Licensee to its suppliers and to Licensee from its customers. Licensor shall pay
Licensee for such Inventory within twenty (20) days after the delivery of such
Inventory to Licensor. No Sales Royalty shall be payable to Licensor with
respect to any such inventory purchased by Licensor.
ARTICLE 16
Sublicensing and Distribution
A. (i) The performance of Licensee hereunder is of a personal nature. Therefore,
neither this Agreement nor the license or other rights granted hereunder may be
assigned, sublicensed or transferred by Licensee, whether to a subsidiary or
Affiliate except as approved by Licensor in advance, in writing, which approval
will not be unreasonably denied.
(ii) Consolidation. Notwithstanding anything contained to the contrary
in this Agreement, this Agreement shall not terminate if Licensee is merged or
otherwise consolidated into another entity which is the surviving entity of
equal or superior financial strength.
B. Licensee shall be entitled to use distributors in connection with its sale of
Articles under this Agreement without approval of Licensor. No such distributor,
however, shall be entitled to exercise any of Licensee's rights hereunder except
for the sale of Articles which have been approved by Licensor hereunder.
ARTICLE 17
Miscellaneous
A. Representations. The Parties respectively represent and warrant that they
have full right, power and authority to enter into this Agreement and perform
all of their obligations hereunder and that they are under no legal impediment
which would prevent their signing this Agreement or consummating the same.
Licensor represents and warrants that it has the right to license the Licensee
the Licensed Xxxx and that Licensor has not granted any other existing license
to use the Licensed Xxxx on products covered hereunder in the Territory and that
no such license will be granted during the Term of this Agreement except in
accordance with the provisions hereof.
B. Licensor's Rights. Not withstanding anything to the contrary contained in
this Agreement, Licensor shall not have the right to negotiate or enter into
agreements with third parties pursuant to which Licensor may grant a license to
use the Licensed Xxxx in connection with the manufacture, distribution and/or
sale of Articles in the Territory or provide consultation and design services
with respect to such Articles in the Territory prior to the termination or
expiration of this Agreement.
C. Licensor's Retail Stores. In the event Licensor opens one or more retail
stores or boutiques selling various products bearing the Licensed Xxxx, or
desires to sell the Articles on Roddick's web site, Licensee agrees to sell
Articles to Licensor for sale in such stores at the product's United States
retail price less a sixty percent (60%) discount. Licensor will have the sole
responsibility to ship and xxxx for such sales through his web site. Licensee
further agrees that any sales pursuant to this paragraph shall be included in
the computation of Net Sales for any applicable Annual Period hereunder.
D. Governing Law; Entire Agreement. This Agreement shall be construed and
interpreted in accordance with the laws of the State of Florida applicable to
agreements made and to be performed in said State. This Agreement contains the
entire understanding and agreement between the Parties hereto with respect to
the subject matter hereof, supersedes all prior oral or written understandings
and agreements relating thereto and may not be modified, discharged or
terminated, nor may any of the provisions hereof be waived, orally.
E. No Agency. Nothing herein contained shall be construed to constitute the
Parties hereto as partners or as joint venturers, or either as agent of the
other, and licensee shall have no power to obligate or bind Licensor in any
manner whatsoever.
F. No Waiver. No waiver by either Party, whether express or implied, of any
provision of this Agreement, or of any breach or default thereof, shall
constitute a continuing waiver of such provision or of any other provision of
this Agreement. Acceptance of payments by Licensor shall not be deemed a waiver
by Licensor of any violation of or default under any of the provisions of this
Agreement by Licensee.
G. Void Provisions. If any provision or any portion of any provision of this
Agreement shall be held to be void or unenforceable, the remaining provisions of
this Agreement and the remaining portion of any provision held void or
unenforceable in part shall continue in full force and effect.
H. Construction. This Agreement shall be construed without regard to any
presumption or other rule requiring construction against the Party causing this
Agreement to be drafted. If any words or phrases in this Agreement shall have
been stricken out or otherwise eliminated, whether or not any other words or
phrases have been added, this Agreement shall be construed as if those words or
phrases were never included in this Agreement, and no implication or inference
shall be drawn from the fact that the words or phrases were so stricken out or
otherwise eliminated.
I. Force Majeure. Neither Party hereto shall be liable to the other for delay in
any performance or for the failure to render any performance under the Agreement
(other than payment to any accrued obligation for the payment of money) when
such delay or failure is by reason of lockouts, strikes, riots, fires,
explosions, blockade, civil commotion, epidemic, insurrection, war or warlike
conditions, terrorism or threat of terrorism, the elements, embargoes, act of
God or the public enemy, compliance with any law, regulation or other
governmental order, whether or not valid, or other similar causes beyond the
control of the party affected. The Party claiming to be so affected shall give
notice to the other Party promptly after it learns of the occurrence of said
event and of the adverse results thereof. Such notice shall set forth the nature
and extent of the event. The delay or failure shall not be excused unless such
notice is so given. Notwithstanding any other provision of this Agreement,
either Party may terminate this Agreement if the other Party is unable to
perform any or all of its obligations hereunder for a period of six (6) months
by reason of said event as if the date of termination were the date set forth
herein as the expiration date hereof. If either Party elects to terminate this
Agreement under this paragraph, Licensee shall have no further obligations for
the Guaranteed Minimum Royalty beyond the date of termination (which shall be
prorated if less than an Annual Period is involved) and shall be obligated to
pay any Sales Royalty which is then due or becomes due.
J. Binding Effect. This Agreement shall inure to the benefit of and shall be
binding upon the Parties, their respective successors, Licensor's transferees
and assigns and Licensee's permitted transferees and assigns.
K. Resolution of Disputes. Any controversy or claim arising out of, in
connection with, or relating to this Agreement, shall be determined by
arbitration by a three person arbitration panel at the office of the American
Arbitration Association in Palm Beach County, Florida. Both Parties shall share
equally the cost of such arbitration (except each shall bear its own attorney's
fees). Any decision rendered by the arbitrators shall be final and binding, and
judgment may be entered in any court having jurisdiction.
L. Consolidation. Notwithstanding anything contained to the contrary in this
Agreement, this Agreement shall not terminate if Licensor is merged or otherwise
consolidated into another entity which is the surviving entity. Licensor shall
be entitled to assign this Agreement to any Corporation to which the Trademark
is assigned.
M. Survival. The provisions of Articles 11, 12A, 12D, 13, 15, 16, and 17 shall
survive any expiration or termination of this Agreement.
N. Paragraph Headings. The paragraph headings in this Agreement are for
convenience of reference only and shall be given no substantive effect.
ARTICLE 18
Notices
Any notice or other communications required or permitted by this
Agreement to be given to a party will be in writing and will be considered to be
duly given when sent by certified mail or registered mail, return receipt
requested, to the Party concerned to the following persons or addresses (or to
such other persons or addresses as a Party may specify by notice to the other):
TO LICENSOR SFX Sports Group, Inc.
-----------
0000 Xxxxx Xxxxxxxx Xxxxx, Xxxxx 000
Xxxxxxx Xxxxx, XX 00000
Attention: Xxxxxxx Xxxxxxxx
WITH COPIES TO: Xxxx X., Inc.
----------------
0000 xxx Xxxxx Xxxx
Xxxx Xxxxx, XX 00000
Attn.: Xxxxx Xxxxxxx
and
SFX Sports Group, Inc.
0000 Xxxxxxxxx Xxxxxx, XX
Xxxxx 000
Xxxxxxxxxx, XX 00000
Attn.: Xxxxxx Xxxx, Esq.
TO LICENSEE XXXXXX XXXXXXXXXX, INC.
-----------
0000 XX 00XX Xxxxxx
Xx. Xxxxxxxxxx, XX, 00000
Attention: Xxxx Xxxxxx
Chairman & CEO
Fax : (000) 000-0000
WITH A COPY TO: XXXXXXXX XXXXXXX & ASSOCIATES
---------------
00 Xxxx 00xx Xxxxxx
Xxx Xxxx, XX 00000
Attention: Xxxxxxxx X. Xxxxxxx, Esq.
Notice of the change of any such address shall be duly given by either
party to the other in the manner herein provided.
LICENSEE
XXXXXX XXXXXXXXXX, INC.
BY: /s/ Xxxxx X. Xxxxxxxxxxx Date: 12/09/2004
-------------------------- ----
Xxxxx X. Xxxxxxxxxxx
Exec. VP / COO / CFO
LICENSOR
XXXX X., INC.
BY: /s/ Xxxxx Xxxxxxx Date: 12/11/2004
--------------------------- ----
Xxxxx Xxxxxxx
Vice President
