EXHIBIT 10.6
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HFMI LICENSE AGREEMENT
BETWEEN
HFMI TRUST
AND
HARRY'S FARMERS MARKET, INC.
Dated as of January 31, 1997
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HFMI LICENSE AGREEMENT (the "Agreement") dated as of January 31, 1997
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between HFMI TRUST, a Delaware business trust ("Licensor") and Harry's Farmers
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Market, Inc., a Georgia corporation ("HFMI" or "Licensee").
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(a) Pursuant to a Trust Agreement dated as of the date hereof (the "Trust
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Agreement") between HFMI and Wilmington Trust Company, a Delaware banking
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corporation, as Trustee, HFMI has established Licensor pursuant to the Delaware
Business Trust Act, as amended.
(b) Pursuant to a Transfer Agreement dated as of the date hereof (the
"Transfer Agreement") between and among HFMI Acquisition Corporation, a Delaware
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corporation ("Newco"), HFMI and Licensor, HFMI has agreed to transfer to
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Licensor, as more fully described therein and in the Assignment of Intellectual
Property annexed thereto as Exhibit A, all right, title and interest worldwide
in and to the Intellectual Property (as defined in the Trust Agreement).
(c) Pursuant to the Trust Agreement, Licensor shall issue to HFMI 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.
(d) Pursuant to an Acquisition Agreement dated as of the date hereof (the
"Acquisition Agreement") between Newco and HFMI, HFMI has agreed to transfer to
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Newco the Worldwide Class Owner Certificate, together with the corresponding
irrevocable, exclusive, perpetual license to the Worldwide Class Intellectual
Property.
(e) Pursuant to an Administration and Servicing Agreement dated as of the
date hereof (the "Administration and Servicing Agreement") between and among
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Licensor, Newco and HFMI, Newco, as Servicer thereunder, has agreed to perform
certain services for and on behalf of Licensor with respect to certain matters
involving the Intellectual Property.
(f) Licensor wishes to grant to Licensee and Licensee wishes to receive
from Licensor an irrevocable, exclusive, perpetual license with respect to the
Georgia Class Intellectual Property.
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:
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ARTICLE I
Grant of License; Sublicensing
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SECTION 1.01 License. Licensor hereby grants Licensee an
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irrevocable, exclusive, perpetual license throughout the states of Georgia and
Alabama, United States of America (the "Georgia Territory") to use and, subject
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to Section 1.02 below, license and sublicense (or refrain from doing the same)
the Georgia Class Intellectual Property on and in connection with the
manufacture, distribution, sale, promotion, advertising, provision and/or
marketing of HFMI Products. "HFMI Products" shall mean any and all products and
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services sold, licensed, sublicensed, distributed, advertised, provided, and/or
marketed with, under or in connection with the Georgia Class Intellectual
Property.
SECTION 1.02 Restriction on Sublicense and Transfer. Licensee shall
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not, without the prior written approval of Newco (which shall not be
unreasonably withheld), sublicense, license, transfer, assign or otherwise
convey ("Transfer") all or any part of its right, title or interest in and to
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this Agreement and the Georgia Intellectual Property. For the avoidance of
doubt, it shall be reasonable for Newco to withhold its approval to a proposed
Transfer of all or any part of HFMI's right, title or interest in and to this
Agreement and the Georgia Intellectual Property where the individual,
corporation, partnership, joint venture, association, trust, unincorporated
organization or other entity that HFMI proposes will receive the rights or
interest subject to such Transfer is a competitor (in the determination of Newco
at its absolute discretion) of Newco, any subsidiary of Newco, Parent, or any
subsidiary of Parent.
SECTION 1.03 Transfer following exercise of Call Option. In the
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event that Newco exercises the Option (as defined in the Trust Agreement) to
purchase the Georgia Class Owner Certificate from HFMI, HFMI shall transfer and
assign all of its right, title and interest in and to this Agreement and the
Georgia Class Intellectual Property to Newco, without further consideration
being payable to HFMI by Newco.
ARTICLE II
Compliance with Other Agreements; Quality Control and Confidentiality
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In connection with their performance under this Agreement, Licensor
and Licensee hereby agree to comply with their respective obligations under the
Transfer Agreement and with the quality control and confidentiality terms and
procedures set forth in Exhibit A annexed hereto.
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ARTICLE III
Ownership of Intellectual Property
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SECTION 3.01 Licensee acknowledges that Licensor owns all legal
right, title and interest in and to the Intellectual Property. The parties
agree that any use of the Georgia Class Intellectual Property made by Licensee
in connection with the manufacture, distribution, sale, promotion, advertising,
provision and/or marketing of HFMI Products by Licensee and its affiliates and
sublicensees, shall be deemed to have been made by Licensor for purposes of
trademark and copyright maintenance and registration, and all such uses (and any
goodwill resulting from any such uses) shall inure solely to the benefit of
Licensor. Licensee hereby assigns to Licensor any rights acquired by Licensee by
operation of law or otherwise as a result of any such use.
SECTION 3.02 Licensee shall, at Licensor's reasonable request,
execute any documents and take any actions reasonably required by Licensor to
confirm Licensor's legal title in and to the Intellectual Property and the
respective rights of Licensor and Licensee pursuant to this Agreement. Licensee
will reasonably cooperate with Licensor and will, at Licensor's reasonable
request, take any actions requested by Licensor in connection with the
enforcement of Licensor's rights in and to the Georgia Class Intellectual
Property, including, without limitation, the settlement of claims and disputes,
the filing and prosecution by Licensor of applications in Licensor's name to
register or otherwise protect the Georgia Class Intellectual Property and the
maintenance and renewal of such registrations or similar rights as may issue,
subject to the grant to Licensee of the irrevocable, exclusive, perpetual rights
hereunder.
SECTION 3.03 Licensee agrees to take whatever actions that the
Licensor reasonably deems to be necessary to effectuate the purposes of this
Agreement, including recording this Agreement, or other documents prepared by
Licensee and acceptable to Licensor with appropriate government offices
throughout the Georgia Territory. All reasonable costs of compliance with this
Section (including recording fees, taxes and attorneys' fees) shall be borne by
the Licensee.
ARTICLE IV
Miscellaneous Provisions
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SECTION 4.01 Amendments. This Agreement supersedes all prior oral or
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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 4.02 Waivers. No failure or delay on the part of any party
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in exercising any power, right or remedy under this Agreement shall operate as a
waiver 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.
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SECTION 4.03 Severability. Any provision of this Agreement that is
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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 4.04 No Joint Ventures. Nothing contained in this Agreement
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shall be construed to create a relationship of partnership, joint venture or
agency between the parties, and this Agreement shall not confer on any party any
power to obligate or bind any other party in any manner whatsoever, except as
specifically provided herein.
SECTION 4.05 Governing Law. This Agreement shall be governed by and
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construed in accordance with the internal laws of Georgia applicable to
agreements made and to be performed wholly within such State, and in accordance
with 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. In the
event Newco fails to cooperate fully with the instructions of the Licensor or
its authorized agent, or in the event Newco reasonably believes the instructions
of the Licensor, or its authorized agent are not warranted, Newco and the
Licensor agree to submit the dispute to binding arbitration.
SECTION 4.06 Counterparts. This Agreement may be executed in two or
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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.
SECTION 4.07 Successors and Assigns. All covenants and agreements
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contained herein shall be binding upon, and inure to the benefit of each party
and its respective Successors (as defined in the Trust Agreement).
SECTION 4.08 Limitation of Liability. It is expressly understood and
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agreed by the parties hereto that (a) 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, (b) 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 for binding
only the Trust, (c) 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 the Licensee and by any person claiming by,
through or under it and (d) under no circumstances shall Wilmington Trust
Company be personally liable for the payment of any indebtedness or expenses of
the Trust or be liable for the breach or failure of any obligation,
representation, warranty or covenant made or undertaken by the Trust under this
Agreement or any related documents.
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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.
HARRY'S FARMERS MARKET, INC. HFMI TRUST
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
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Name: Xxxxxxxxxxx X. Xxxxxx
Title: Vice President
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Exhibit A
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QUALITY CONTROL AND CONFIDENTIALITY
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HFMI agrees that all of the HFMI Products sold, licensed, sublicensed,
distributed, advertised, provided and/or marketed with or in connection with the
Intellectual Property shall be of a consistent standard of quality, commensurate
with the prestige of the trademarks, service marks, tradename or logos included
in the Intellectual Property, consistent with the Specified Quality Standards
and bearing the relevant copyright and/or trademark notices, as applicable. The
"Specified Quality Standards" shall mean the historical standards of design,
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functionality, appearance and safety established, as to the date of this
Agreement, for all products and services sold, licensed, sublicensed,
distributed, advertised, provided and/or marketed with or in connection with the
Georgia Class Intellectual Property.
HFMI shall provide to the Licensor or its authorized agent six samples, or,
in the case of services, sufficient information to evaluate the quality of such
services, with regard to all HFMI Products as each HFMI Product is released.
HFMI shall also provide to the Licensor samples of advertising and marketing
material as such material is released.
The Licensor or its authorized agent shall review such samples and
information provided by Licensee in order to ensure that the HFMI Products are
of a consistent standard of quality commensurate with the prestige of the
trademarks, service marks, tradename or logos included in the Intellectual
Property, and the Specified Quality Standards and that the advertising and
marketing material are properly marked and will not adversely affect the
goodwill associated with the trademarks, service marks, Intellectual Property
tradename or logos included in the Intellectual Property nor compromise the
protection of trademarks (whether or not registered), tradenames, logos, or
copyrights (whether or not registered).
HFMI shall cooperate fully with the instructions of the Licensor or its
authorized agent with respect to the maintenance of the foregoing standards and
promptly make any changes to the HFMI Products, advertising or marketing
material that the Licensor or its authorized agent reasonably requests in
writing in order to achieve compliance with those standards. In the event HFMI
fails to cooperate fully with the instructions of the Licensor or its authorized
agent, or in the event HFMI reasonably believes the instructions of the Licensor
or its authorized agent are not warranted, HFMI and Licensor agree to submit the
dispute to binding arbitration.
HFMI covenants that with respect to trade secrets, know-how or other
confidential information included in the Intellectual Property, it will maintain
such standards of confidential treatment (whether by itself, its agents,
employees, sublicensees, or others) as may be necessary to preserve any such
legal protection as may be available within the Georgia Territory for these
items of the Intellectual Property.
HFMI acknowledges that there may not be an adequate remedy at law for breach
of its covenants to maintain the Specified Quality Standards. HFMI therefore
consents to the entry of an order against it for specific performance of its
quality control obligations hereunder in the event (a) it is in breach of that
covenant and (b) the Trust, or Servicer acting for the Trust, can meet the
requisite burden of proof for preliminary injunctive relief before the tribunal
chosen to enter the consent order. Such tribunal shall be a court of competent
jurisdiction or an arbitral tribunal chosen by the parties. HFMI acknowledges
and agrees that if the parties agree to present any dispute regarding the
maintenance of the Specified Quality Standards to an arbitral tribunal, the
tribunal shall have power to grant such injunctive relief, and HFMI will not
contest the validity of any such order for relief based on grounds of lack of
authority or jurisdiction.
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