EXHIBIT 10.10
XXXXXXXXX XXXXXX, INC.
00 Xxxxx Xxxx Xxxx
Xxxxxxxxxx, XX 00000
as of January 1, 1996
Windsong, Inc.
000 Xxxxxxxxx Xxxxxx
Xxxxxxxx, XX 00000
Attention: Xxxxxx Xxxxxxxx
Gentlemen:
You have requested that Xxxxxxxxx Xxxxxx, Inc., a North Carolina
corporation (hereinafter referred to as the "Company"), grant to Windsong, Inc.,
a Connecticut corporation, ("Windsong"), the exclusive right to use the
trademark COLOURS BY XXXXXXXXX XXXXXX, whether registered or not, (the
"Trademark"), in connection with the manufacture, importation, distribution,
advertising and sale of the products listed in Exhibit A (the "Products"). This
letter sets forth the terms on which the Company agrees to grant such rights.
1. Grant.
1.1 Subject to the terms and conditions hereof the Company
hereby grants to Windsong and Windsong hereby accepts, an exclusive license to
use the Trademark, including all of the rights and privileges that the Company
has or shall acquire during the term hereof in utilizing the Trademark, solely
in connection with the manufacture, importation, distribution, advertising and
sale of the Products in the countries set forth in Exhibit B which is attached
hereto (the "Territory").
1.2 Windsong shall not manufacture, distribute or sell any
merchandise utilizing the Trademark, except as specifically provided for herein,
in the Territory or otherwise. All articles other than the Products are
expressly excluded from this Agreement.
2. Design and Manufacture of the Products.
2.1 In accordance with industry practice and timetables the
Company shall develop and present design information and product specifications
and Windsong shall prepare finished designs and prototype samples of the
Products, and shall submit such items to the Company for its written approval
prior to use. The Company will consider suggestions of Windsong, but the Company
will have ultimate design control. Windsong shall make no changes in the design
of the Products unless such changes are consented to by the Company by prior
written approval. In the event that the Company does not respond within fifteen
days, then its approval shall be deemed to have been given. The finished design
Products produced by Windsong shall be submitted to the Company for approval in
a timely, formal, unified and cohesive presentation.
2.2 Windsong agrees to produce, and manufacture and diligently
promote the Products for each selling season during the term of this Agreement.
2.3 All designs and product information, including without
limitation, sketches and swatches, whether final or rough, for the Products are
and shall be the sole and exclusive property of the Company, shall be returned
to the Company, shall not be disclosed or furnished by Windsong to any other
person, firm or corporation (except in accordance with this Agreement). Windsong
shall not manufacture or sell any Product bearing designs copied from the
Products of the Company or using trademark, copyrights or designs which are
confusingly similar to the Trademark used in conjunction with the Products, or
any other property proprietary to the Company, without the prior written consent
of the Company.
2.4 The Products shall at all times be manufactured, packaged,
sold, marketed, distributed, advertised or otherwise promoted in a manner
appropriate for and consistent with the "Approved Quality" products. For
purposes hereof, a Product shall be deemed to be of "Approved Quality" if the
quality of such Product is equal or superior to the quality of a sample of such
Product previously approved by the Company.
2.5 All of the Products shall be manufactured, labeled,
packaged, sold, marketed, distributed, advertised or otherwise promoted in
accordance with all applicable federal, state and local laws and regulations.
2.6 The styles, designs, packaging, labels, contents, fabric,
color, workmanship and quality of all of the Products shall require the approval
of the Company pursuant to the terms of this Agreement to insure that the
Products manufactured, sold or distributed hereunder are of Approved Quality.
2.7 Windsong acknowledges that the Trademark has established
prestige and goodwill and is well-recognized in the mind of the trade and the
public, that it is of great importance and value to the Company, and that in the
sale of the various lines of the Company's products, including the Products, the
high standards and reputation that the Company and the Trademark have
established be maintained. Accordingly, all Products produced by Windsong
hereunder shall be of first quality and uniform workmanship, with strict
adherence to all details, colors and other characteristics which have been
approved by the Company. Windsong shall make no changes in any of the Company's
designs, its Products or samples approved by the Company without the prior
written approval of the Company as to the changes. From time to time during
production, Windsong shall, at reasonable times and upon reasonable notice
during the term hereof, upon the Company's request, make its facilities
available to the Company for inspection by its representative during usual
working hours. Off-quality, irregular or damaged Products, or otherwise
defective merchandise shall be clearly marked as such, and shall not bear the
Trademark or trade name unless consented to in writing by the Company or unless
the removal of such xxxx or name would destroy the Product. Windsong shall
provide, and be financially responsible for, samples and related materials.
2
2.8 All the Products shall be manufactured in the Territory or
in countries outside the Territory which have received prior written approval by
the Company. Windsong will submit to the Company a list of countries and
factories in which it intends to manufacture Products.
3. Marketing of the Products.
3.1 Windsong shall use its best efforts to exploit the rights
herein granted, maximize sales and obtain as broad a distribution of the
Products in the Territory as is reasonably possible consistent with the
Company's high prestige and the maintenance of the Company's good will;
provided, however, that none of the Products sold hereunder shall be sold to
accounts which are not approved by the Company. Windsong shall provide the
Company with a complete account list on an annual basis. Windsong acknowledges
that the Products sold hereunder shall be sold in a manner so not to injure or
in any manner diminish the substantial good will and prestige associated with
items sold under the Trademark or that would otherwise injure the prestige and
good will of the Company or the Trademark.
3.2 Windsong shall be responsible for the sale of the Products
through its sales force and, unless otherwise specifically provided for herein,
for all matters relating to such sales, including without limitation, credit
determination, billing and shipping.
3.3 Windsong shall establish, maintain and operate a full time
showroom for the display of the Products in New York, NY. In addition, Windsong
shall display Products semi-annually at the Magic Trade Show in Las Vegas,
Nevada. All matters involving the display shall have the prior written approval
of the Company.
3.4 Windsong shall cause appropriate copyright, trademark,
service xxxx or other notice desired by the Company relative to the Trademark to
appear on or with all labels, cartons, containers, packing or wrapping material,
advertising, art work, designs, promotional or display material bearing the
Trademark. Copies of each and every tag, label, imprint, or other device
containing any such notice, trademark or otherwise relating to the Products and
all advertising, art work, designs, packaging, promotional, display or publicity
material bearing the Trademark including press releases, annual reports and
promotional brochures (with respect to material pertaining to the Company or
Trademark only) and promotional brochures shall be submitted by Windsong to the
Company for its written approval prior to use by Windsong, which approval or
rejection shall be given within five (5) working days of receipt thereof.
Failure to respond within such time shall be deemed approval. None of such
material shall bear the name of any other firm or person, except that certain
advertising may bear the name of retail establishments with which Windsong is
doing cooperative advertising. All such material shall be of a taste level
consistent with the Company's reputation and image and shall be delivered to the
Company in a timely manner so as to allow for due consideration and modification
by the Company. Approval by the Company shall not constitute waiver of the
Company's rights or Windsong's duties under any provision hereof. Windsong shall
not vary the Trademark.
3
3.5 Windsong and the Company shall jointly prepare prior to
year end a written annual marketing plan detailing their strategies for the
ensuing period, with respect to sales, marketing, advertising and sales support.
4. Use of Trademark.
4.1 Windsong acknowledges that the Company has the sole and
exclusive ownership of the Trademark in connection with the Products in the
Territory. The Company agrees to maintain the Trademark for the term of this
Agreement and in connection with the protection and defense thereof will
consider all information from Windsong with regard to the potential infringement
of the Trademark with respect to the Products, it being understood that all
action or inaction with regard to protection of the Trademark shall be in the
sole discretion of the Company.
4.2 Windsong shall cause to appear on everything which uses,
bears or displays the Trademark, including without limitation, all labels,
packaging, tags, advertising, annual reports, art work, designs, and promotional
or display material therefor, a notice proclaiming and identifying the Trademark
appearing therein as proprietary to the Company, as the Company may deem
appropriate or as may be required by law or governmental regulation. No name and
no product other than the Products shall be used in connection with the
Trademark in any advertising, publicity, labeling, wrapping or packaging under
the control of Windsong in connection with the Products, except as to which the
Company may consent in writing or as otherwise provided herein with respect to
trade or coop advertising or as may be required by law.
4
4.3 Windsong agrees that it will not have or obtain, by
exercising its rights under this Agreement or otherwise, any right or interest
in the Trademark, beyond the rights specifically granted in this Agreement.
Windsong further agrees that the Trademark used by Windsong in connection with
the Products which might suggest that they are indicia of source, shall, with
all of the goodwill relating thereto, inure to the benefit of and be the sole
property of the Company. If, contrary to the provisions of this Agreement,
Windsong during or after the Term of this Agreement, obtains any right or
interest in the Trademark by any cause, then Windsong will immediately assign
it, along with any accompanying goodwill, to the Company, at Windsong's expense,
in accordance with the Company's written instructions. If any such right or
interest is not assigned or assignable for any reason, Windsong agrees never to
exercise such right or interest by exploiting it directly or indirectly, or by
preventing the Company or any other person authorized by the Company from
exploiting it.
4.4 Windsong shall use the Trademark in each jurisdiction in
the Territory in compliance with the legal requirements obtaining therein and
shall use such markings in connection therewith as may be required by such
jurisdiction's applicable legal provisions.
4.5 Windsong represents, warrants and covenants to the Company
that Windsong (directly or through any affiliated or unaffiliated person) has
not made and will not during and after the Term make, and does not and will not
in any manner during and after the Term wholly or partially hold or control, or
represent directly or indirectly that it holds or controls, any applications,
registrations, or other indicia of ownership of the Trademark, or of any other
property proprietary to the Company, or of any word, name, symbol or design
which might suggest an association with the Company within or outside the
Territory. Windsong agrees that it shall not, directly or indirectly, during the
Term of this Agreement or thereafter, (i) challenge, contest or attack the
Company's ownership of or the validity of the Trademark, or any application for
registration thereof, or (ii) seek to register or claim ownership of any of the
Trademark, or any other trademark confusingly similar to the Trademark.
4.6 Windsong shall not at any time use, promote, advertise,
display or otherwise commercialize the Trademark, or any variation thereof, or
any material utilizing or reproducing the Trademark, unless Windsong does so in
such manner as will not adversely affect any right of ownership of the Company
therein.
4.7 Windsong shall not use the Trademark in any manner likely
to cause confusion or doubt in the mind of the public as to the ownership and
control thereof or in any manner that does not make clear that the Trademark are
owned and controlled exclusively by the Company.
5
4.8 Windsong shall, in connection with its duty to use the so
as to promote the continuing goodwill thereof, give immediate attention and take
necessary action to satisfy all material and legitimate customer complaints
brought to the attention of Windsong in connection with the Products or other
materials using the Trademark. Windsong shall give the Company immediate notice
of all complaints that might affect the good standing of the Trademark or the
reputation of the Company and also of all complaints that might result in legal
action between the Company and any third party, and shall cooperate with the
Company upon request to achieve as good a reputation and press for the Trademark
as possible.
5. Infringement.
5.1 Windsong agrees to assist the Company, to the extent
reasonably necessary, in the procurement of any protection or to protect any of
the Company's rights in and to the Trademark in the Territory, both during and
after the Term of this Agreement, including without limitation the procuring of
trademark registrations. The Company, if it so desires, may commence or
prosecute any claim or suit in its own name or join Windsong as a party thereto
with the consent of Windsong. Windsong will immediately notify the Company in
writing of any infringement or imitation of, or any other event or claim adverse
to or in violation of the Company's rights or interests in, the Trademark,
occurring within or outside the Territory, which comes to Windsong's attention.
The Company shall have the absolute right to determine whether or not any action
shall be taken on account of any such infringements or imitations and Windsong
shall not institute any suit or take any action on account of any such
infringements or imitations without first obtaining the written consent of the
Company; however, should Windsong desire to take any action in respect of an
infringement of the Trademark, the Company agrees to cooperate reasonably with
Windsong in arriving at a mutually acceptable basis upon which to proceed with
such action.
5.2 The Company does hereby indemnify and agree to hold
Windsong harmless during and after the Term from and against any and all
liabilities, claims, causes of action, suits, damages, loss, expenses, or other
injury (including reasonable attorneys' fees and expenses), in connection with
any legal or other formal proceeding by a third person against Windsong in which
Windsong's proper reproduction or use of the Trademark in accordance with this
Agreement is attacked for infringement of such third-person's proprietary
rights. This obligation is conditional on Windsong notifying the Company
promptly in writing of such proceeding or potential proceeding, on the Company
having sole right to control all aspects of the defense of such proceeding
(including choice of attorney and settlement), and on Windsong assisting and
fully cooperating with the Company in connection with such proceeding.
6
5.3 Windsong does hereby indemnify and hold the Company
harmless during and after the Term from and against any and all claims,
liabilities, damages, causes of action, suits, losses, expenses or other injury
(including reasonable attorney's fees and expenses) arising in any way out of
Windsong's activities hereunder, including without limitation any actual or
alleged: (i) Windsong violation of this Agreement; (ii) violation by any
subcontractor of the terms of this Agreement; (iii) claim by any employee or
subcontractor permitted by Windsong to produce or participate in the production
of the Products; or (iv) other act or omission of such employee or subcontractor
in connection with this Agreement. Windsong's indemnity obligation includes
without limitation claims for alleged improper reproduction or use of the
Trademark, or except as may be limited by paragraph 5.3 of actual or alleged
violation of any copyright, trademark, service xxxx, certification xxxx, patent,
confidential information, privacy, publicity or other rights, and claims for
injury or damage related to any alleged defect in any Product, or the failure of
any product to conform to applicable law. In the case of a legal or other
proceeding by a third person against Windsong, relating to this provision, the
Company shall assist and fully cooperate with Windsong in connection with such
proceeding. Windsong shall provide Company with copies of all court pleadings,
correspondence and any other relevant documentation relating to any such action.
6. Compensation and Certain Definitions.
6.1 "Net Sales" shall mean the invoice price charged by
Windsong, for the sale or other exploitation of the Products in the Territory,
as well as the fair market value of any other compensation received by Windsong
with regard thereto. No set-offs or deductions of any kind may be taken in the
determination of Net Sales or the royalties due the Company hereunder, except
that Windsong may deduct standard trade, advertising and promotional discounts
actually given, actual returns, bad debts, tariffs, import/export duties,
freight and sales taxes.
6.2 "Annual Period" shall mean the twelve (12) month period
commencing on January 1, and ending on December 31, for the term of this
Agreement, except that the first Annual Period shall commence on [***]
and end on [***].
[***] Confidential treatment requested. Omitted portions have been filed
separately with the Commission.
7
6.3 Annual Minimum Payments. During the initial term of this
Agreement Windsong shall pay the Company a Minimum Annual Payment. Annual
Minimum shall be paid in quarterly payments on January 1, April 1, July 1, and
October 1 of each Annual Period. The Annual Minimum for the First Annual Period
shall be [***] and thereafter shall be [***]. Thereafter the Annual Minimum
payment shall be [***].
6.4 Percentage Payments. During the term of this Agreement,
Windsong shall pay the Company a percentage payment of [***] Net Sales (the
"Percentage Payment"). Any Percentage Payment due the Company for any calendar
quarter during the Annual Period shall be paid by Windsong within thirty (30)
days following the end of such calendar quarter. Additionally, if certain
products designed by the Company (which shall be approved by the Company) but
which do not bear the Trademark are sold by Windsong or off-price or irregular
sales then the Company shall receive a percentage payment of [***].
6.5 Payments of Annual Minimums for each Annual Period shall
at all times be credited against the Percentage Payment due for the same Annual
Period.
6.6 In no event shall the Percentage Payment for any Annual
Period in excess of the Minimum Payment for the same Annual Period be credited
against any payment due for any other Annual Period.
6.7 All amounts payable hereunder shall be paid in United
States Dollars.
6.8 All payments hereunder which are overdue fifteen (l5)
business days or more shall bear interest at [***] above the prime rate from
the due date.
6.9 Windsong shall promptly reimburse the Company upon
presentation of an appropriate invoice for any travel or related expenses
incurred by the Company and its employees in connection with this Agreement,
including without limitation, sourcing travel, personal appearances,
headquarters or sales visits which shall be discussed with Windsong. It is
understood that travel for its principal designer shall be first class and for
others business class whether domestic or foreign.
[***] Confidental treatment requested. Omitted portions have been filed
separately with the Commission.
8
7. Advertising and Marketing Assistance.
7.1 During the term hereof in each Annual Period commencing
January 1, 1996, Windsong shall set aside and pay over to the Company for
advertising of the Trademark and the Products, [***]. All matters pertaining
to such advertising shall be determined by the Company, including without
limitation conception, development, content and placement. The Company shall
consult periodically with Windsong regarding such program through the annual
plan. Windsong and the Company shall account in writing to each other for all
expenditures made hereunder. For purposes hereof, expenditures on advertising
shall consist of the out-of-pocket cost of space and time in any media as well
as direct production costs related thereto, direct out-of-pocket expenditures
relating to public relations or in store seminars, promotions, displays,
exhibits or joint showrooms may also constitute expenditures on advertising as
well as fashion shows, press kits and videos. Windsong shall have annual audit
rights with regard to advertising expenditures.
7.2 Any and all advertising undertaken by Windsong shall have
the prior written approval of the Company.
7.3 All advertising (except cooperative advertising), art
work, involving the Trademark, or any reproduction thereof, shall,
notwithstanding their creation, invention or use by Windsong, be and remain the
property of the Company and the Company shall be entitled to use the same. Upon
the termination of this Agreement, all art work shall be delivered to the
Company.
8. Accounting.
8.1 Windsong shall deliver to the Company, at the time each
Percentage Payment is due, a full and complete statement (a form of which has
been submitted to and approved by the Company and which is attached as Exhibit
C) indicating the amount of the Net Sales for the period covered by the
Percentage Payment. Each statement shall show the category, style number,
description, invoice price and gross sales of all of the Products by categories
and styles during the period covered by the Percentage Payment, as well as the
amount of authorized deductions therefrom as permitted under this Agreement,
including actual trade discounts and returns, and computation of the amount of
Percentage Payment due hereunder in respect of such Net Sales for such period.
Such statement shall in each instance be certified by the Chief Financial
Officer of Windsong. Such statement shall be furnished irrespective of the
quantity of the Products sold during the period for which such statement is due;
provided, however, no statement shall be delivered until actual sales of the
Products have occurred. The Company shall have the right to inspect return
reports.
[***] Confidental treatment requested. Omitted portions have been filed
separately with the Commission.
9
8.2 Windsong shall prepare and maintain, in accordance with
generally accepted accounting principles as consistently applied by Windsong,
complete and accurate books of account and records covering all transactions
relating to the rights hereby granted. The Company and its duly authorized
representatives shall have the right upon reasonable advance notice to examine
said books of account and records and other documents and material in the
possession or under the control of Windsong to the extent reasonably required to
verify the amount of Net Sales of the Products, deductions, and compensation
payable with respect to such sales, and to make extracts therefrom. All such
books of account, records and documents shall be kept available by Windsong for
the Company's inspection during the term of this Agreement. In the event that
Windsong shall not deliver or make available in a timely manner the reports
referred to herein, then the Company or its representative shall have the right
to audit the books and records of Windsong to determine the information
contained in such reports and the expense of any such audit shall be borne by
Windsong. This remedy shall be in addition to and without limitation to any
other which the Company may have under this Agreement or otherwise.
8.3 The Company may, in its sole discretion and at its sole
expense, cause an independent public accountant of its choice, upon reasonable
advance notice to Windsong, to examine Windsong's books and records to verify
the accuracy of the statements submitted by Windsong and to determine the
amounts due the Company hereunder. Such examination and audit shall be at the
Company's own expanse and shall be limited to no more than one such audit during
any Annual Period; provided, however, that if such examination or audit
discloses an underpayment of the total compensation due to the Company of [***]
for the Annual Periods covered by such audit, then reasonable
expenses incurred by the Company in connection with the examination and audit
shall be borne by Windsong.
9. Term.
9.1 The initial term of this Agreement shall be from [***] and
continuing through December 31, 2001; provided, however, that unless sooner
terminated in accordance with its terms. Windsong shall have the right to renew
this agreement for one additional period of five years, which renewal period
shall end on December 31, 2006, if at least [***] prior to the conclusion of
such term, written notice of such renewal is delivered to the Company by
Windsong. The foregoing rights of extension shall only be exercisable for
Windsong if Windsong shall have achieved Net Sales for the Products of [***] for
the twelve months ending December 31, 2000.
[***] Confidential treatment requested. Omitted portions have been filed
separately with the Commission.
10
9.2 It is understood that in the event that this Agreement is
not renewed or extended on [***] or [***], as the case may be, then, the Company
shall thereafter be free to negotiate with any other party in respect of the
rights contained in this Agreement and to manufacture, distribute and sell the
Products under the Trademark (either alone or in concert with a third party),
provided that none of the Products is delivered for sale prior to the
termination date of this Agreement.
9.3 In the event that the following sales volume is not
achieved, the Company shall have the right to terminate the contract:
Year ending Volume
December 31, [***] [***]
December 31, [***] [***]
December 31, [***] [***]
10. Default.
10.1 The following shall constitute events of default on the
part of Windsong: (a) If any Advance Payment or Percentage Payment or other
payment shall not be paid when due and such default continues for more than five
(5) days after written notice thereof, or (b) if Windsong attacks the title or
any rights of the Company in and to the Trademark or otherwise attacks the
validity of this Agreement, or (c) if Windsong, except for reasons of force
majuer, (i) ceases to manufacture, sell or distribute the Products unless
otherwise provided for herein for a period of fifteen (15) days, or (ii)
defaults in performing any of the other material terms of this Agreement,
including but not limited to its obligations to use the Trademark and to not
misuse the Trademark, and in each instance continues in default for a period of
thirty (30) days after written notice thereof, or (d) if a receiver is appointed
for it, or (e) if Windsong is adjudicated bankrupt or insolvent or makes
application for relief as a debtor under any federal or state bankruptcy law, or
(f) if Windsong defaults on any obligation which is secured by a security
interest in any of the Products covered by this Agreement, then, in any such
event, the Company shall have the right, exercisable in its sole discretion, to
terminate this Agreement upon ten (10) days' written notice to Windsong of its
intention to do so, and upon the expiration of such 10 day period, this
Agreement shall automatically terminate and be of no further force and effect
without prejudice to any remedy of the Company for the recovery of monies then
due it under this Agreement or in respect of antecedent breach of this
Agreement, and without prejudice to any other rights of the Company, including
without limitation, damages for breach to the extent that the same may be
recoverable. No assignee for the benefit of creditors, receiver, trustee in
bankruptcy, sheriff, or any other officer of the court or official charged with
taking over custody of Windsong's assets or business shall have the right to
continue the performance of this Agreement.
[***] Confidential treatment requested. Omitted portions have been filed
separately with the Commission.
11
10.2 Windsong shall have the right to terminate this Agreement
(a) if the Company defaults in performing any of the material terms of this
Agreement and continues in default for a period of thirty (30) days after notice
thereof, or (b) if the Company is adjudicated bankrupt or insolvent, or makes
application for relief as a debtor under any federal or state bankruptcy act, or
(c) if a receiver is appointed for it. Windsong's right of termination shall
take effect upon ten (10) days written notice thereof to the Company.
11. Disposal of Stock Upon Termination or Expiration.
11.1 Upon termination or expiration of this Agreement,
Windsong shall provide the Company with an accurate inventory of Windsong's
Products as of the termination date. Additionally, the Company or its agent
shall have the right within ten (10) days of submission of the inventory to make
an audit of Windsong's inventory of the Products. After termination of this
Agreement, provided that Windsong is not in default hereunder, Windsong may
dispose of the Products which are on hand or in process at the time notice of
termination is received for a period of one hundred eighty (180) days, on a
non-exclusive basis, after date of termination, provided Windsong fully complies
with all provisions of this Agreement hereof in connection with such disposal
(including, but not limited to, payment of Percentage Payments pursuant to
Paragraph 6 hereof).
12. Effect of Termination.
12.1 It is understood and agreed that except for the right to
use the Trademark as specifically provided for in this Agreement, Windsong shall
have no right, title or interest in or to the Trademark. Upon and after the
termination of this Agreement and except as granted in Paragraph 11 hereof, all
rights granted to Windsong hereunder, together with any interest in and to the
Trademark and corresponding goodwill that Windsong may acquire, shall forthwith
and without further act or instrument be assigned to and revert back to the
Company. In addition, Windsong will execute any instruments reasonably requested
by the Company to accomplish or confirm the foregoing. Any such assignment,
transfer or conveyance shall be without further consideration other than the
mutual agreements contained herein. The Company shall thereafter be free to
assign or license to others the use of the Trademark in connection with the
manufacture and sale of the Products covered hereby, and Windsong will refrain
from further use of the Trademark or any further reference to it, direct or
indirect, or anything deemed by the Company, in its sole opinion, to be similar
to the Trademark in connection with the manufacture, sale or distribution of
Windsong's products, except as specifically set forth in Paragraph 11 hereof.
12
13. Insurance.
13.1 Windsong shall procure and maintain at its own expense in
full force and effect at all times during which the Products are being sold, a
comprehensive liability insurance policy (including contractual and product
liability) from a reputable insurance company with respect to all of the
Products with a limit of liability of not less than $5,000,000 per occurrence
and $2,000,000 per person. Such insurance may be obtained by Windsong in
conjunction with a policy of products liability insurance which covers products
other than the Products. Windsong shall deliver a certificate evidencing said
insurance policy, and such policy shall name the Company as an additional
insured to the extent of its interests, and shall provide that it may not be
canceled or changed without thirty (30) days prior written notice to the
Company.
14. Certain Representations and Warranties.
14.1 Windsong represents and warrants that it has full right,
power and authority to enter into this Agreement and to perform all of its
obligations hereunder and that it has sufficient financial capability to fulfill
all of its obligations hereunder.
14.2 The Company hereby represents and warrants that it is the
owner of the Trademark, and has the full right, power and authority to enter
into this Agreement and to perform all of its obligations hereunder. The Company
shall have the right to change the Trademark to resolve any actual or potential
conflict with the rights of third parties.
14.3 Windsong represents and warrants that it will assign any
and all design patents, copyrights, invention or other items of intellectual
property that may have been developed or produced relating to the Products
produced under this Agreement to the Company notwithstanding the invention or
use by Windsong.
15. Samples.
15.1 Windsong shall provide the Company with samples from
time to time as needed for marketing purposes, as may be reasonably requested by
the Company.
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16. Arbitration.
16.1 Except as specifically set forth in this Agreement, any
and all disputes, controversies and claims arising out of or relating to this
Agreement, or with respect to the construction of this Agreement, or concerning
the respective rights or obligations hereunder of the parties hereto and their
respective permitted successors and assigns (except disputes, controversies and
claims relating to or affecting in any way the Company's ownership of, or rights
to, or the validity of the Trademark or any registration thereof or infringement
thereof, as set forth in Paragraph 6) shall be determined by arbitration of a
panel of three (3) arbitrators in New York, New York, in accordance with and
pursuant to the then existing rules of the American Arbitration Association.
Windsong acknowledges that any unauthorized reproduction or use of the
Trademark, during or after the Term, which violates this Agreement or is
otherwise improper, will be an infringement of, and will immediately and
irreparably damage the Company, and the Company's rights and interests in and
to, and the value to the Company of, the Trademark, within and outside the
Territory. Windsong agrees that the Company, provided it is not in breach of any
of the terms in this Agreement, is entitled to preliminary and permanent
injunctive relief and any and all other remedies for enforcement of rights to
stop such reproduction or use. This Paragraph will in no way limit the Company
from obtaining any and all other relief to which it may be entitled. Any
arbitration award shall be final and binding upon the parties and judgment
thereon may be entered in any court having jurisdiction thereof. Jurisdiction in
the state and federal courts of New York is hereby consented to by the parties
for such purposes. The service of any notice, process, motion or other document
in connection with an arbitration award hereunder may be effectuated either by
personal service upon a party or by certified or registered mail to the
respective addresses herein provided. The arbitrators shall have no right to
amend or supplement this Agreement.
17. Notices, etc.
17.1 All notices, requests, consents and other communications
hereunder shall be in writing and shall be deemed to have been properly given or
sent on the date when such notice, request, consent or communication is (a)
personally delivered and acknowledged, or (b) if mailed, when received by
certified or registered mail, at the address of the parties set forth below, or
at such other address or addresses as any of the parties hereto shall have
heretofore designated by notice hereunder.
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If to the Company:
Xxxxxxxxx Xxxxxx Inc.
00 Xxxxx Xxxx Xxxx
Xxxxxxxxxx, Xxxxxxxxxxx 00000
Attention: Xxxxxxxxx Xxxxxx
If to Windsong:
Windsong
000 Xxxxxxxxx Xxxxxx
Xxxxxxxx, XX 00000
Attention: Xxxxxx Xxxxxxxx
18. Relationship Between the Parties.
18.1 Nothing herein contained shall be construed to place the
parties in the relationship of partners or joint venturers. Neither party shall
represent itself as the agent or legal representative of the other party for any
purpose whatsoever and shall have no power to obligate or bind the other party
in any manner whatsoever.
19. Waiver.
19.1 None of the terms hereof can be waived or modified except
by an express agreement in writing signed both parties hereto. The failure of
either party hereto to enforce, or the delay by either party in enforcing, any
of its rights hereunder shall not be deemed a continuing waiver or a
modification thereof and either party may, within the time provided by
applicable law, commence appropriate legal proceedings to enforce any and all
such rights. All rights and remedies provided for herein shall be cumulative and
in addition to any other rights or remedies such parties may have at law or in
equity. No person, firm or corporation, other than the parties hereto, shall be
deemed to have acquired any rights by reason of anything contained in this
Agreement.
20. Assignment.
20.1 This Agreement may not be assigned by Windsong without
prior written consent of the Company. Windsong may not grant sublicenses.
Subject to the foregoing, this Agreement shall bind and inure to the benefit of
the parties, their successors and assigns.
21. Brokerage.
21.1 The parties in their negotiations relative to this
Agreement have not utilized the services of any finder, broker or agent. Each
party agrees to indemnify the other party against and hold it harmless from any
and all liabilities (including without limitation, reasonable attorney's fees)
to any person, firm or corporation claiming commissions or fees in connection
with this Agreement or the transactions contemplated hereby as a result of an
agreement with or services rendered to such party.
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22. Paragraph Headings.
22.1 The captions of paragraphs have been inserted for
convenience only and shall not be given any legal effect.
23. Applicable Law.
23.1 This Agreement shall be construed and interpreted in
accordance with the internal laws of the State of New York applicable to
contracts made and performed therein (without applying New York conflict of laws
rules). If any applicable mandatory law prevents application of New York law to
a provision of this Agreement, all other provisions will remain subject to New
York law.
24. Severability.
24.1 In the event that any one or more provisions of this
Agreement shall at any time be found to be invalid or otherwise rendered
unenforceable, including with respect to all or part of the Territory, then such
provision or provisions shall be severable from this Agreement (but only with
respect to that part of the Territory) and the validity or enforceability of the
remaining provisions of this Agreement shall not be affected thereby.
25. Entire Agreement.
25.1 This Agreement expresses fully the understanding between
the parties and all prior understandings are hereby canceled and no changes in
the terms of this Agreement shall be valid except when and if reduced to writing
and signed by both parties.
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If the foregoing correctly sets forth our complete agreement and understanding,
please so indicate by signing in the space provided below and on the duplicate
copy of this letter, and thereafter returning it to the Company, whereupon this
letter shall constitute a binding agreement between the Company and Windsong.
Very truly yours,
XXXXXXXXX XXXXXX, INC.
By: /s/
---------------------
AGREED TO:
As of this 1st day of January, 1996.
WINDSONG, INC.
By: /s/ Xxxxxx Xxxxxxxx
-------------------------------
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