LICENSE AGREEMENT
Exhibit 10.7
Execution
Version
THIS LICENSE AGREEMENT (this
“Agreement”), made and
entered into as of this 24th day of
March 2008 (the “Effective
Date”), by and between ZOOTS CORPORATION, a
corporation organized and existing under the laws of the State of
Delaware (“Licensor”), and USDC PORTSMOUTH, INC., a
corporation organized and existing under the laws of the State of
California (“Licensee”).
RECITALS
WHEREAS, Licensor is the owner
of all right, title, and interest in and to: (i) common law rights and the
listed federal trademark registrations in and for the service marks ZOOTS (Reg.
Nos. 2,631,264; 2,620,976; 2,428,729; 2,282,160), THE CLEANER CLEANER, ZOOTS THE
CLEANER CLEANER (Reg. Nos. 2,620,975; 2,531,165) (all of the foregoing used for
dry cleaning and laundry services), and the goodwill embodied therein, and (ii)
the Internet domain name xxxxx.xxx and the content
contained thereon(collectively, the “Licensed Marks”);
WHEREAS, pursuant
to a Secured Party Sale Agreement, dated of even date herewith (the “Sale Agreement”), and related
documents, Licensee is purchasing certain assets of Licensor, including without
limitation certain dry cleaning businesses located in Commonwealth of Virginia
and in the States of Georgia, Maryland, North Carolina, and South Carolina (the
“Territory”);
WHEREAS, Licensor intends to
continue to use the Licensed Marks outside the Territory but wishes to license
to Licensee the exclusive right to use the Licensed Marks in the
Territory;
NOW, THEREFORE, in
consideration of the mutual covenants herein and for other good and valuable
consideration, the receipt and sufficiency of which is hereby acknowledged, the
parties hereto agree as follows:
1. Grant
and Scope of License.
1.1 Grant of License. Subject to Section
2.1, Licensor hereby
grants to Licensee an exclusive, perpetual, royalty-free, nontransferable,
nonsublicensable license to use the Licensed Marks (and the goodwill embodied
therein) in the Territory (the “License”) for the purpose of
offering dry cleaning and laundry services. The sole exception to the
exclusivity of the License shall be that Licensor will retain the right to use
the Licensed Marks in the Territory for a limited transition period beginning on
the Effective Date and ending thirty (30) days after the Effective
Date. The License shall include without limitation the right for
Licensee to use the xxxx ZOOTS as part of the domain name xxxxxxx.xxx and domain
names identifying other web sites related to Licensee’s stores within the
Territory (“Territory Store
Sites”), as well as the right to use all trade dress and “look and feel”
of Licensor’s xxxxx.xxx web site on the Territory Store Sites.
1.2 Initial Licensor Link to xxxxxxx.xxx
Web Site. For a period of six (6) months after the Effective
Date, Licensor agrees to maintain its existing xxxxx.xxx web site in accordance
with its recent past practice; and to place a prominent link on the xxxxx.xxx
web site to the xxxxxxx.xxx web site. Licensee shall reimburse Licensor for direct,
reasonable and documented costs relating to the maintenance of such
link.
2.
trademark
use and protection.
2.1 Goodwill; Quality
Control. Licensee
shall use the Licensed Marks in accordance with Licensor’s acceptable use
policies regarding such Licensed Marks provided to the Licensee prior to the
date hereof (if any), and Licensee acknowledges that its use of the Licensed
Marks shall inure to the benefit of Licensor as the owner of the Licensed
Marks. Licensee
shall permit Licensor to inspect and review applicable business locations of
Licensee upon reasonable prior notice and during normal business hours for the
purposes of assuring that Licensor’s quality standards are being met with
respect to services offered under the Licensed Marks.
3. Infringements.
3.1 Third Party
Infringement. In the event that Licensee
become aware that any third party is infringing one or more of the Licensed
Marks in the Territory, Licensee agrees to notify Licensor in writing and
provide pertinent details of such infringement. Upon prior written
notice to Licensor, Licensee shall have the right to bring a legal action for
infringement against the third party, together with the right to enforce and
collect any judgment thereon. If Licensee elects to exercise such
right, Licensor agrees to provide reasonable assistance to Licensee in such
legal action at Licensee’s request at the sole expense of
Licensee. Notwithstanding the foregoing, Licensor reserves the right
to retain separate counsel at Licensor’s expense to represent Licensor in any
such infringement action.
4.
Term
and Termination
4.1 This
Agreement shall commence on the Effective Date and continue until terminated by
Licensee by written notice to Licensor.
5. Miscellaneous.
5.1 Governing
Law. This
Agreement will be governed by and construed in accordance with the laws of the
United States and the State of New York, without recourse to conflicts of law
principles.
5.3 Consent to
Jurisdiction. Each of the parties hereby submits to the
exclusive personal jurisdiction of the United States District Court for the
Southern District of New York, or, if jurisdiction in such court is lacking, any
court sitting in the City of New York, in respect of any action brought to
enforce any provisions of this Agreement.
5.4 Notices.
All notices, requests, demands, consents and other communications
required or permitted under this Agreement shall be in writing and shall be
considered to have been duly given when (i) delivered by hand, (ii) sent by
telecopier or facsimile (with receipt confirmed), provided that a copy is mailed
(on the same date) by certified or registered mail, return receipt requested,
postage prepaid, or (iii) received by the addressee, if sent by Express Mail,
Federal Express or other express delivery service (receipt requested), in each
case to the appropriate addresses and telecopier numbers set forth below (or to
such other addresses and telecopier numbers as a party may from time to time
designate as to itself by notice similarly given to the other party in
accordance herewith). A notice of change of address shall not be
deemed given until received by the addressee. Notices shall be
provided as follows:
If to Licensor:
Xxxx
Xxxxxxx
ZOOTS
Corporation
000
Xxxxxxx Xxxxxx, Xxxxxxxx 0
Xxxxxx,
Xxxxxxxxxxxxx 00000
Telecopier: (000)000-0000
With
copies (which shall not constitute notice) to :
Xxxxxxx
Xxxxxx
FTI
Consulting
000 Xxxx
Xxxxxx, Xxxxx 0000
Xxxxxx,
Xxxxxxxxxxxxx 00000
Telecopier: 000-000-0000
and
Xxxxxx X.
Xxxxxxxx, III
Xxxxxx
Xxxx & Xxxxxxx, LLP
Xxx
Xxxxxxxxxxxxx Xxxxx
Xxxxxx,
Xxxxxxxxxxxxx 00000
Telecopier: 000-000-0000
If to
Licensee:
U.S. Dry
Cleaning Corp.
0000
XxxXxxxxx Xxxx., Xxxxx 000
Xxxxxxx
Xxxxx, Xxxxxxxxxx 00000
Telecopier: (000)
000-0000
Attn: Xx.
Xxxxxx X. (Xxxxxx) Xxx, Chief Executive Officer
With
copies (which shall not constitute notice) to:
Xxxxxx,
Neale, Bender, Xxxxxx & Xxxxx L.L.P.
00000
Xxxxxxxxxxxxx, Xxxxx 0000
Xxx
Xxxxxxx, XX 00000
Telecopier: (000)
000-0000
Attn.: Xx.
Xxxxxx Xxxxx
and
Xxxxxxxxx
Xxxxxxx, LLP
The Met
Life Building
000 Xxxx
Xxxxxx, 00xx
Xxxxx
Xxx Xxxx,
Xxx Xxxx 00000
Telecopier: (000)
000-0000
Attn: Xxxxxxx
X. Xxxxxxx, Esq.
5.5 Entire
Agreement. This
Agreement contains the entire agreement between the parties hereto and
constitutes the complete, final and exclusive embodiment of their agreement with
respect to the subject matter hereof and will supersede any and all prior oral
or written representations, conditions, warranties, understandings, proposals or
agreements between the parties regarding the subject matter
hereof.
5.6 Amendment and
Waiver. No
provision of this Agreement may be amended or waived except by a writing signed
by both parties. Any delay or failure on the part of either
party to enforce its rights hereunder to which it may be entitled shall not be
construed as a waiver of the right and privilege to do so at any subsequent
time. Waiver by any party of any particular default by the other
party shall not impair such party's right and respect to any subsequent default
of the same or of a different nature.
5.7 Severability. Any invalidity, in whole or
in part, of any provision of this Agreement, will not affect the validity of any
other provision of this Agreement.
5.8 Successors. Subject to the prohibitions
against assignment contained herein, this Agreement will inure to the benefit of
and will be binding on the parties hereto and their respective successors and
assigns.
5.9 Survival. Any provisions of this Agreement which
must survive in order to give effect to their meaning shall survive any
termination or expiration of this Agreement, including without limitation all
provisions pertaining to Licensor’s sole rights of ownership of the
Licensed Marks.
[Signature page
follows]
IN
WITNESS WHEREOF, each of the undersigned has executed and delivered this License
Agreement as of the date first above written.
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ZOOTS
CORPORATION
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By:
Name:
Title:
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USDC
PORTSMOUTH, INC.
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By:
Name:
Title:
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