AMENDED AND RESTATED
TRADEMARK LICENSE AGREEMENT
THIS IS AN AMENDED AND RESTATED TRADEMARK LICENSE AGREEMENT
made as of this 31st day of October, 1998 (the "Agreement") by and between LEVI
XXXXXXX & CO., a Delaware corporation, with its principal office at Levi's
Plaza, 0000 Xxxxxxx Xxxxxx, Xxx Xxxxxxxxx, Xxxxxxxxxx 00000 (the "LICENSOR") and
DESIGNS, INC., a Delaware corporation, with its principal office at 00 X Xxxxxx,
Xxxxxxx, Xxxxxxxxxxxxx 00000 (the "LICENSEE").
WHEREAS, LICENSOR has, since 1850, been a major producer of
apparel and related products in the United States and elsewhere and owns certain
valuable trademarks in the United States; and
WHEREAS, LICENSEE is the owner of certain retail outlet stores
operating under the "Levi's Outlet by Designs" and "Dockers Outlet by Designs"
names through which it sells exclusively closeouts, seconds and irregular
apparel and related products which have been manufactured by LICENSOR or by
third parties under license from and/or on behalf of LICENSOR; and
WHEREAS, LICENSEE has been selling such products in such
stores subject to a Trademark License Agreement, dated November 15, 1996, which
agreement has been amended by a First Amendment to Trademark License Agreement
dated September 30, 1998 (as amended, the "1996 Agreement"); and
WHEREAS, LICENSEE on September 30, 1998 acquired from a
subsidiary of LICENSOR 16 "Dockers Outlet" outlet stores selling predominantly
Dockers(R) products and nine "Levi's Outlet" outlet stores selling predominantly
Levi's(R) products (collectively, the "Acquired Stores");
WHEREAS, LICENSEE on October 31, 1998 acquired by distribution
from a partnership owned by subsidiaries of LICENSEE and LICENSOR eleven "Levi's
Outlet" stores selling predominantly Levi's(R) products (collectively, the "JV
Stores");
WHEREAS, the parties now wish to amend and restate the 1996
Agreement to reflect the acquisition of the Acquired Stores and the JV Stores
and certain other matters, and to set forth their written agreement on the terms
of the license for all of LICENSEE'S existing and future outlet stores operating
under the "Levi's Outlet by Designs" name and the "Dockers Outlet by Designs"
name;
NOW, THEREFORE, for good and valuable consideration, including
without limitation the mutual promises set forth below, the parties agree as
follows:
1. Grant of License
(a) LICENSOR grants to LICENSEE, subject to
Section 1(i) of this Agreement, an exclusive, royalty-free license to use the
Levi's(R) "Housemark" trademark in the form shown in Exhibit A, which has been
registered in the United States Patent and Trademark Office having Registration
Numbers 849437; 1122468; 1041846 and 1155926, respectively, and any other form
of such trademarks or other trademarks later specified by LICENSOR, and any
subsequent registrations thereof (the "L LICENSED MARKS"), in combination with
"Outlet by DESIGNS" as shown in Exhibit B within the territory described in
Exhibit C (the "TERRITORY"), in connection with the sale of closeouts, seconds,
first quality end-of-season transfers from LICENSEE's other stores and, before
their closure, from Designs/OLS Partnership stores, and irregulars of apparel
and related products manufactured by LICENSOR or by third parties under license
from and/or on behalf of LICENSOR (the "PRODUCTS") on exterior signage, interior
signage, shopping bags, stationery, receipts and PRODUCT tags, in retail outlets
which have been individually pre-approved by LICENSOR as listed in Exhibit E
(the "L STORES"), and which are devoted exclusively to the sale of such PRODUCTS
as contemplated by Sections 2(c) and 3(b).
(b) LICENSOR grants to LICENSEE, subject to
Section 1(i) of this Agreement, an exclusive, royalty-free license to use
Dockers(R) trademarks including the wordmark registered in the United States
Patent and Trademark Office having Registration Numbers 1435757, 1485361 and
1591926, respectively, in the form shown in Exhibit A and any other form of such
trademarks or other trademarks later specified by LICENSOR and any subsequent
registrations thereof (the "D LICENSED MARKS") in combination with "Outlet by
Designs" as shown in Exhibit B within the Territory, in connection with the sale
of PRODUCTS on exterior signage, interior signage, shopping bags, stationery,
receipts and PRODUCT tags in retail outlets which have been individually
pre-approved by LICENSOR as listed in Exhibit E (the "D STORES") and which are
devoted exclusively to the sale of PRODUCTS as contemplated by Sections 2(c)
and 3(b).
(c) In addition to the other rights granted in
this Agreement, with respect to the Acquired Stores only, LICENSEE shall have
the right to maintain the use of those of LICENSOR'S marks and logos being used
in the Acquired Stores at the time of LICENSEE'S acquisition of the Acquired
Stores in the manner, to the extent and for the purposes they were then so used.
Unless otherwise specified by LICENSOR in accordance with, and after the date
of, this Agreement, such uses shall be deemed to be in compliance with
LICENSOR'S trademark use policies, it being understood that LICENSOR and
LICENSEE shall cooperate in rectifying, at LICENSOR'S expense, any uses so
specified by LICENSOR.
(d) The L STORES and the D STORES are referred to
collectively in this Agreement as the "STORES." The L LICENSED MARKS and the D
LICENSED MARKS are referred to collectively in this Agreement as the "LICENSED
MARKS." The combination forms of the LICENSED MARKS and xxxx "OUTLET BY
DESIGNS," including those shown in Exhibit B, are collectively referred to as
the "COMBINATION MARKS." Although the trademark and name "OUTLET BY DESIGNS" is
incorporated into the permitted combination forms, and must appear in any usage
of the COMBINATION MARKS by LICENSEE, LICENSOR neither claims nor shall obtain
any rights with respect to such trademark and name.
(e) LICENSEE may delete a retail outlet from
Exhibit E by notice to LICENSOR. Except as provided in Section 9: (i) Exhibit E
shall be amended to add a retail outlet only by written agreement of the parties
and (ii) the licenses described in Sections 1(a) and 1(b) are limited to the
STORES operating at the locations set forth in Exhibit E and are not
transferable to any other store without LICENSOR'S prior written consent.
(f) This Agreement does not grant LICENSEE any
rights in any other trademarks, trade names or other proprietary rights of
LICENSOR. Nothing in this Agreement, however, limits any rights of LICENSEE,
including rights granted under such other agreements or licenses as may exist
from time to time, to use the LICENSED MARKS standing alone, or other
appropriate trademarks of LICENSOR, in the same fashion as permitted for use by
other retailers authorized by LICENSOR in conjunction with the promotion of
LICENSOR'S products, which use is consistent with LICENSOR'S policies and
guidelines.
(g) The combination forms of the LICENSED MARKS
and LICENSEE'S tradename and xxxx "OUTLET BY DESIGNS" shown in Exhibit B are
collectively referred to as the "COMBINATION MARKS." Although the tradename and
xxxx "OUTLET BY DESIGNS" is incorporated in the permitted combination forms, and
must appear in any usage of the COMBINATION MARKS by LICENSEE, LICENSOR neither
claims nor shall obtain any rights with respect to such terms.
(h) The licenses granted herein constitute both a
right and an obligation to use the COMBINATION MARKS only in the manner
specified in conjunction with the sale of the PRODUCTS through the STORES.
(i) LICENSOR reserves the right to use the
LICENSED MARKS with or without the word "Outlet" in connection with retail
stores operated by LICENSOR or any wholly-owned affiliate of LICENSOR within the
TERRITORY during the term of this Agreement.
2. Use of COMBINATION MARKS. LICENSEE shall use the
COMBINATION MARKS as follows:
(a) LICENSEE shall prominently display the COMBINATION
MARKS in one of the formats attached hereto as Exhibit B, and only in such
format, when referring to the STORES, including on exterior STORE signage,
interior STORE signage, stationery, receipts and PRODUCT tags. The COMBINATION
MARKS shall be used in conformance with LICENSOR'S written policies and
guidelines. In the event that LICENSEE'S lease restrictions or other factors
require LICENSEE'S use of the COMBINATION MARKS in this Agreement in a manner at
variance with the formats shown on Exhibit B or the license granted in this
Agreement, LICENSEE shall obtain LICENSOR'S prior written consent to any such
variance. All existing signage in stores operated by LICENSEE and previously
approved by LICENSOR under the 1991 Agreement or 1996 Agreement is deemed to
conform to LICENSOR'S polices and guidelines as of the date of this Agreement.
(b) Notwithstanding Sections 1 and 2 of this
Agreement, with respect to the Acquired Stores located in Destin, Florida,
LICENSEE may operate those stores as, and on exterior signage identify the
appropriate Acquired Store as, a "Levi's Outlet" (and not as a "Levi's Outlet by
Designs"), and as a "Dockers Outlet" (and not as a "Dockers Outlet by Designs"),
for so long as such is required under the lease relating to that Acquired Store.
LICENSEE shall in each such STORE use the COMBINATION MARKS on interior
STORE signage, stationery, receipts, shopping bags, PRODUCT tags and other uses
as required of it in respect of the other L STORES and D STORES, as appropriate,
and otherwise take appropriate actions, including those described in Section 5
of this Agreement and as otherwise reasonably requested by LICENSOR, to make
clear LICENSEE'S ownership and operation of the store to consumers, vendors and
others who enter, transact with or otherwise interact with that store and its
employees, it being understood that LICENSEE may use up existing stocks of such
items located at the Acquired Stores at the time of their acquisition. LICENSEE
shall use reasonable efforts to obtain a change in the lease restriction as
promptly as possible and in any case as part of a lease amendment or renewal
process.
(c) LICENSEE shall sell PRODUCTS and no other products
in the STORES. It is understood that, except as provided in Section 9(c),
without LICENSOR'S prior written consent, in the STORES identified in Exhibit E
under the heading "Dockers Outlet by Designs (1998)," LICENSEE shall sell only
PRODUCTS bearing the Dockers(R) and Slates(R) trademarks, and that in the STORES
identified in Exhibit E under the heading "Levi's Outlet by Designs (1998),"
LICENSEE shall sell only PRODUCTS bearing the Levi's(R) trademarks.
(d) Subject to Section 1(f), LICENSEE shall not
advertise the existence of STORES or their business except that LICENSEE may
advertise on billboards designed to promote all retail outlet establishments
within the mall in which the STORES are located, which billboards shall be
located within five (5) miles of any such mall and shall advertise at least one
other brand as well as the COMBINATION MARKS. LICENSEE shall also be permitted
to advertise the STORES using flyers and in local newspapers.
3. Exclusivity
(a) Subject to Section 1(i), LICENSOR shall not grant
licenses to third parties to use the LICENSED MARKS to operate stores under the
name "Levi's Outlet," "Dockers Outlet," "Levi's Outlet by ____," or "Dockers
Outlet by _____," or otherwise to incorporate LICENSED MARKS in store name
signage or the store name, in connection with the sale of the PRODUCTS in the
TERRITORY, it being understood that LICENSOR sells PRODUCTS to other accounts
and that those other accounts are entitled to use the LICENSED MARKS in
conjunction with point-of-sale promotion and display of LICENSOR's products at
their stores, which use by others and LICENSEE is contemplated by Section 1(f).
(b) The licenses granted under this Agreement require
LICENSEE to operate the STORES exclusively as outlets for the PRODUCTS. LICENSEE
is expressly prohibited from using the COMBINATION MARKS (i) in stores which
offer products from manufacturers other than or in addition to LICENSOR or
LICENSOR's authorized manufacturer and (ii) in stores not devoted exclusively to
selling the PRODUCTS. No COMBINATION MARKS may be used hereunder in conjunction
with the sale of first quality or in-season goods, except as otherwise permitted
under Section 1.
4. Modifications of COMBINATION MARKS. LICENSEE
understands and agrees that the prior written approval of the LICENSOR is
required if LICENSEE proposes to change in any respect the formats shown in
Exhibit B or previously approved by LICENSOR, or any materials authorized under
Section 2; LICENSEE agrees not to use any altered version of such signage or
materials without LICENSOR'S prior written approval. Any violation of this
Section 4 shall be deemed to constitute a material breach and default of this
Agreement, subject to the provisions of Section 9(c).
5. Point of Sale Notification. LICENSEE shall prominently
display a notice, reasonably satisfactory to LICENSOR, in the interior of each
STORE at all points of sale, which clearly and conspicuously: (i) notifies
customers about the kinds of PRODUCTS sold (i.e., closeouts, seconds and
irregulars manufactured exclusively by or on behalf of LICENSOR); (ii) defines
the terms "closeout", "seconds" and "irregulars" so that customers understand
the quality of the merchandise offered for sale; and (iii) gives the identity of
the company leasing and operating the STORE (i.e., LICENSEE, not LICENSOR) and
the fact that LICENSEE, not LICENSOR, assumes all liabilities associated with
the PRODUCTS and services offered by the STORE, except for liabilities based on
damage or injury caused by the PRODUCTS, taking into account the fact that such
PRODUCTS are closeouts, seconds, irregular apparel and related products. The
current notices used by LICENSEE (to be updated as reasonably requested by
LICENSOR in the future) are attached as Exhibit D. All merchandise offered for
sale in the STORES shall be appropriately labeled as closeouts, seconds or
irregulars, respectively.
6. Other Point of Sale Material. LICENSOR may provide
LICENSEE with additional point of sale displays bearing the COMBINATION MARKS.
LICENSEE may also display its own point of sale materials bearing the
COMBINATION MARKS, provided that such materials conform to LICENSOR'S guidelines
for displaying such materials or, if LICENSEE has not been provided with such
guidelines, then subject to LICENSOR'S prior written approval and quality
control over the display and use of such materials, which approval shall not be
unreasonably withheld or delayed.
7. Right of Inspection. LICENSOR shall have the right
during regular business hours, at its own expense, to inspect any LICENSEE
facility where the COMBINATION MARKS are displayed for the purpose of enabling
LICENSOR to determine whether LICENSEE is adhering to the requirements of this
Agreement.
8. Authorized Outlets. The STORES and their related lease
expiration dates (assuming exercise of all renewal options) are identified on
Exhibit E. Subject to Section 9, upon request by LICENSEE during the term of
this Agreement, additional STORES may be approved by LICENSOR on a case-by-case
basis in LICENSOR'S sole discretion. Such approval shall be in writing and the
additional STORES shall be added to this Agreement only by amending Exhibit E.
9. STORE Upgrades
(a) Between the date of this Agreement and December
31, 2003, LICENSEE will complete a remodel and refurbishment (a "Remodel") of
each STORE identified on Exhibit E under the caption "Levi's Outlet by Designs
(1996)" at a time of LICENSEE'S choosing but on a schedule such that twelve of
such STORES are remodeled in each of 1999, 2000, 2001 and 2002 and eleven of
such STORES are remodeled in 2003. Before the commencement of each such year,
LICENSEE shall identify to LICENSOR the STORES to be remodeled in such year. The
year in which a STORE is to be so Remodeled is hereinafter referred to as the
"Remodel Year" of such STORE.
(b) In lieu of completing a Remodel of any STORE or
any Second Remodel (as defined below) of any STORE, LICENSEE may close such
STORE and substitute therefor a new STORE at a different location in the
TERRITORY selling the PRODUCTS with a visual appearance substantially similar to
the Remodel appearance described in Section 9(c) for the first Remodel or an
appropriate Second Remodel as described below. Upon such substitution, such
substituted STORE shall be deemed a STORE under this Agreement, and LICENSEE
will provide to LICENSOR an appropriately updated version of Exhibit E to this
Agreement identifying such substituted STORE with a license term equivalent to
the license term of the STORE it replaced as if such STORE had been remodeled.
Each such substituted STORE is referred to as a "Substituted STORE."
(c) LICENSEE will ensure that each Remodel and each
Substituted STORE immediately after its substitution will be substantially
similar in visual appearance to the interior of the Acquired STORES, it being
understood that: (i) LICENSEE may bring new design approaches forward for
LICENSOR'S review and approval (not to be unreasonably withheld) and (ii)
Remodels and Substituted STORES may not be two separate STORES but may visually
segment the Levi's(R), Dockers(R) and Slates(R) brands within each STORE.
(d) The license term for each Remodeled STORE will be
the longer of: (a) ten years from the date either (i) a Remodel is completed or
(ii) the Substituted STORE is completed or (b) a period ending on the date of
the original lease expiration date for that STORE as listed on Exhibit E, with
the extensions made in accordance with this Agreement. If LICENSEE fails to
complete satisfactorily a Remodel (or a completion by substitution of a
Substituted STORE) by December 31 of the appropriate Remodel Year, LICENSEE
shall have an additional twelve months to complete satisfactorily such Remodel.
If such Remodel is not completed by the end of such twelve month period,
LICENSOR, at its option on sixty (60) days written notice to LICENSEE, may
unilaterally terminate the license for that STORE.
(e) Not later than a date five years after completion
of the first Remodel (the "Notice Date") for a particular Remodeled STORE or the
completion of a Substituted STORE, LICENSEE may agree by means of a written
notice (the "Second Remodel Notice") to complete a remodel and refurbishment of
such STORE (a "Second Remodel") within twelve (12) months after the Notice Date
and in that notice propose and describe upgrades and changes reasonably
satisfactory to LICENSOR, LICENSOR to so advise LICENSEE within 30 days of
receipt of the notice. If LICENSEE fails to complete satisfactorily a Second
Remodel (including a completion by substitution of a Substituted STORE) twelve
(12) months after its delivery of the Second Remodel Notice, LICENSEE shall
have an additional twelve months to complete satisfactorily such Second Remodel.
If such Second Remodel is not completed by the end of such twelve month period,
then LICENSOR, at its option on sixty (60) days written notice to LICENSEE, may
unilaterally terminate the license for that STORE.
10. Term and Termination
(a) The term of this Agreement shall commence upon
execution by both parties and shall expire on the later to occur of (i)
September 30, 2004 or (ii) the earliest date on which licenses for all the
STORES have expired ("the EXPIRATION DATE") provided that the license for
any STORE (i) shall be for a period co-terminous with the lease term (including
options) set forth in Exhibit E, unless otherwise expressly stated in Exhibit E,
and shall terminate upon expiration of such lease term, and (ii) shall be
extended should LICENSEE complete a Remodel or a Second Remodel as contemplated
by Section 9. If either party wishes to renew this Agreement then such party
shall give notice to the other party not less than 180 (one hundred eighty)
days before the EXPIRATION DATE and the parties shall meet within 90 (ninety)
days after the date of that notice to discuss renewal. Nothing in this Agreement
shall oblige either party to renew this Agreement on any terms.
(b) If at any time LICENSOR or LICENSEE shall: (i)
become bankrupt; (ii) take advantage of any state or federal insolvency law;
(iii) liquidate its business; (iv) cease to function as a going concern; (v)
fail to pay its debts as they come due; or (vi) make any assignment for the
benefit of creditors, the other party, as the case may be, shall have the right
to terminate this Agreement forthwith.
(c) If either party shall cause or permit any
material breach or default of this Agreement, the other party shall have the
right to terminate this Agreement by written notice to the party causing or
permitting the breach or default, and the termination shall be effective one
hundred and twenty (120) days after the giving of such notice, unless prior
thereto the party receiving such notice cures such breach or default. The rights
and remedies provided in this Section 10 shall not be exhaustive and are in
addition to any other rights and remedies provided by law.
(d) Except with respect to a failure to Remodel or
Second Remodel, the consequences of which failure are provided for in Sections
9(d) and 9(e), respectively, any material breach or default committed by
LICENSEE with respect to any STORE shall be deemed a material breach or default
giving rise to LICENSOR'S right to terminate the Agreement with respect to all
STORES, subject to the opportunity to cure such breach under Section 10(c).
(e) Upon termination of this Agreement for any reason,
LICENSEE shall immediately cease and thereafter refrain from all use of the
LICENSED MARKS and shall remove or dispose of all STORE signage and other
materials utilizing the LICENSED MARKS.
(f) Upon termination of the licenses granted under
this Agreement with respect to any STORE, LICENSEE shall cease and thereafter
refrain from using the LICENSED MARKS with respect to such STORE and shall
remove or dispose of all retail outlet store signage for such STORE utilizing
the LICENSED MARKS.
11. Fictitious Names. If LICENSEE is required to file a
statement of fictitious name in a state where it is using the COMBINATION MARKS
on signage on its STORES, LICENSEE shall promptly so inform LICENSOR in writing.
12. LICENSEE'S Representations and Warranties
(a) LICENSEE will affirmatively and conspicuously
display in all its STORES the representation that LICENSEE, not LICENSOR, owns
and operates the STORES and that the relationship between LICENSOR and LICENSEE
is that of a manufacturer and an independent retailer of the PRODUCTS.
(b) LICENSEE represents and warrants that its
promotion and sale of the PRODUCTS in the STORES and its performance of this
Agreement will be in full compliance with fair business practices and all
applicable laws and regulations of the TERRITORY and the United States.
13. LICENSEE'S Indemnification
(a) LICENSEE agrees to defend, indemnify and hold
LICENSOR harmless against any damages, liabilities and expenses LICENSOR may
suffer, including reasonable attorneys' fees and costs of suit, arising from any
breach of any agreement, representation or warranty given herein or from
LICENSEE'S business activities, including, without limitation, from claims based
on personal injury and property damage occurring within or around the STORES and
unauthorized activities with regard to LICENSEE'S use of the COMBINATION MARKS.
The foregoing notwithstanding, LICENSEE'S indemnification does not extend to
liabilities based upon the quality, safety or other properties of the PRODUCTS,
taking into account the fact that such PRODUCTS are closeouts, seconds,
irregular apparel and related products, or upon a claim of trademark
infringement where such infringement arises out of LICENSEE'S use of the
COMBINATION MARKS or LICENSED MARKS as permitted under this Agreement.
(b) LICENSEE'S obligation to indemnify shall not be
effective unless LICENSOR gives LICENSEE prompt notice of any claim which might
trigger such obligation and affords LICENSEE the opportunity to assume the
defense thereof. LICENSEE'S obligation to indemnify shall not be effective in
the event that LICENSOR settles such claim without first obtaining LICENSEE'S
consent thereto.
14. LICENSOR'S Representations and Warranties
(a) LICENSOR represents and warrants: (i) subject only
to Section 1(g) and to other license agreements with third parties, that it owns
all right, title and interest in and to the LICENSED MARKS and (ii) that it has
the full power and authority to grant LICENSEE the rights and licenses granted
under this Agreement.
(b) LICENSOR represents and warrants that its
performance of this Agreement will be in full compliance with all applicable
laws and regulations of the TERRITORY and the United States.
15. LICENSOR'S Indemnification
(a) LICENSOR agrees to defend, indemnify and hold
LICENSEE harmless against any damages, liabilities and expenses LICENSEE may
suffer, including reasonable attorneys' fees and costs of suit, arising from a
claim that the LICENSED MARKS used apart from or incorporated in the COMBINATION
MARKS infringe the trademark rights of a third party within the TERRITORY,
except to the extent such claim results directly or indirectly, in whole or in
part, from some unauthorized action or activity by LICENSEE with respect to the
LICENSED MARKS that is not authorized by LICENSOR.
(b) LICENSOR'S obligation to indemnify shall not be
effective unless LICENSEE gives LICENSOR prompt notice of any claim which might
trigger such obligation and affords LICENSOR the opportunity to assume the
defense thereof. LICENSOR'S obligation to indemnify shall not be effective in
the event that LICENSEE settles such claim without first obtaining LICENSOR'S
consent thereto.
16. Rights in LICENSED MARKS. LICENSEE recognizes that
there is great value to LICENSOR in the LICENSED MARKS and the goodwill
associated therewith. LICENSEE agrees that nothing contained in this Agreement
or in any prior agreement or in any prior conduct of LICENSOR or LICENSEE gives
LICENSEE any interest or property rights in the LICENSED MARKS or in any other
xxxx or trade name of LICENSOR except the right to use the LICENSED MARKS as
specifically set forth in this Agreement or such a prior agreement during the
term thereof. LICENSEE agrees that all uses by LICENSEE of the LICENSED MARKS
shall inure to the benefit of LICENSOR. Except for the rights expressly granted
in this Agreement, LICENSEE agrees that it will not, during the term of this
Agreement or thereafter, directly or indirectly, assert any interest in, right
of use or other rights in the LICENSED MARKS or in any other xxxx or in any
trade name of LICENSOR. LICENSEE agrees to assist LICENSOR in all reasonable
respects requested by LICENSOR, and at LICENSOR'S expense, in the establishment,
renewal, protection and enforcement of LICENSOR'S rights in the LICENSED MARKS.
LICENSOR acknowledges that all rights to trademarks "Designs," "Outlet by
Designs" and "BTC" are the property of LICENSEE and agrees not to adopt or
attempt to register those marks or any trademark confusingly similar thereto.
17. Terms Governing Purchase and Transfer of Merchandise
(a) PRODUCTS may be purchased directly from LICENSOR
or from stores owned by third parties who are approved by LICENSOR on a
case-by-case basis, which approval shall not be unreasonably withheld or
delayed. Terms of such purchases from LICENSOR shall be negotiated separately
and in writing by LICENSEE and LICENSOR.
(b) LICENSEE acknowledges that its access to PRODUCTS
for STORES shall be strictly on an "as available" basis; to the extent PRODUCTS
are made available to those companies operating outlet stores under a trademark
license from LICENSOR ("Outlet Operators"), then, from the date of this
Agreement until September 30, 2004, LICENSOR will, for those PRODUCTS, allocate
those PRODUCTS to those Outlet Operators on the basis of the number of outlet
stores ("doors") operated by such Outlet Operators that carry the relevant
LICENSOR brand at that time. Nothing in this Agreement or any other agreement
between LICENSOR and LICENSEE shall be deemed to constitute a guarantee of
PRODUCT availability.
(c) LICENSEE warrants that it will dispose of its own
closeouts of LICENSOR'S products by transferring them from its first quality
stores or any other retail store in which LICENSEE has a controlling interest
or is a joint venturer to its STORES licensed under this Agreement.
18. Injunctive Relief. Any breach by LICENSEE of this
Agreement which involves LICENSEE'S misuse of the LICENSED MARKS or any other of
LICENSEE's trademarks would result in irreparable injury to LICENSOR and
therefore, in addition to all other remedies provided at law or in equity,
including, without limitation, remedies provided under The Uniform Trade Secret
Act, California Civil Code Sections 3426 et. seq., LICENSOR shall be entitled to
seek a temporary restraining order and a permanent injunction to prevent the
continuance of such breach. No notice shall be required in order to obtain such
injunctive relief. In the event that LICENSOR seeks an injunction hereunder,
LICENSEE hereby waives any requirement that LICENSOR post a bond or any other
security. LICENSEE shall likewise be entitled to seek a temporary restraining
order and a permanent injunction in accordance with all the provisions of this
Section 18, if LICENSOR misuses LICENSEE'S trademarks "Designs," "Outlet by
Designs" or "BTC."
19. No Assignment or Sublicense. LICENSEE may not assign,
sublicense or otherwise transfer any of its rights or obligations hereunder
absent the prior written approval of LICENSOR. For purpose of this Section 19,
an assignment, sublicense or other transfer shall include: (i) any direct or
indirect assignment, sublicense or other transfer, in whole or in part, of any
of LICENSEE'S rights or obligations under this Agreement; (ii) any direct or
indirect transfer of any of the assets with which the COMBINATION MARKS are
being used (including the STORES or their leases but excluding disposal of
obsolete signage and displays in the ordinary course of business); (iii) any
direct or indirect transfer of control of LICENSEE; or (iv) any transfer of any
interest, direct or indirect, in LICENSEE or its assets, to a competitor of
LICENSOR (provided that the ordinary purchase of LICENSEE'S shares in a
publicly-traded market for such shares, if any, shall not constitute a sale to a
competitor for purposes of this Section 19(iv)). Any attempt to assign,
sublicense or otherwise transfer any of LICENSEE'S rights or obligations without
the prior written consent of LICENSOR shall be void and shall be deemed to be a
material breach of this Agreement.
20. Notices. All demands and requests required or permitted
by this Agreement shall be given in writing and delivered by U.S. mail or
overnight courier, postage prepaid, or by facsimile transmission. All such
notices shall be deemed effective upon deposit in the U.S. mail, upon delivery
to an overnight courier, or upon confirmation of fax transmission. All such
notices shall be addressed as follows:
if to LICENSOR:
Xxxx Xxxxxxx & Xx.
Xxxx'x Xxxxx
0000 Xxxxxxx Xxxxxx
Xxx Xxxxxxxxx, Xxxxxxxxxx 00000
Attention: Vice President, Customer Relations
with a copy to:
General Counsel/Outlets
0000 Xxxxxxx Xxxxxx
Xxx Xxxxxxxxx, Xxxxxxxxxx 00000
if to LICENSEE:
Executive Vice President and General Counsel
DESIGNS, INC.
00 X Xxxxxx
Xxxxxxx, Xxxxxxxxxxxxx, 00000
with a copy to:
President
DESIGNS, INC.
00 X Xxxxxx
Xxxxxxx, Xxxxxxxxxxxxx, 00000
21. No Agency. Nothing in this Agreement shall be construed
so as to constitute either party the agent, partner or joint venturer of or with
the other for any purpose whatsoever. Neither party shall have the right or
authority to pledge the credit of or to represent itself as agent of or as
authorized to assume or create any obligation of any kind, expressed or implied
on behalf of the other party in any respect whatsoever. At all times, LICENSEE
shall maintain such notices and make other arrangements in its STORES as may be
reasonably necessary to enable its customers to understand that the STORES are
owned and operated by LICENSEE, not LICENSOR.
22. Governing Law; Jurisdiction. The validity,
construction, performance, enforcement, termination and effect of this Agreement
shall be governed by and construed under and in accordance with the laws of the
State of California applicable to agreements made and to be wholly performed in
that state. The parties irrevocably consent to the non-exclusive jurisdiction of
the state courts of California and of any federal courts located in the Northern
District of California and in Massachusetts, in connection with any action or
proceeding respecting this Agreement or the rights and obligations set forth in
this Agreement.
23. Severability. Should any part or provision of this
Agreement be held unenforceable or in conflict with applicable law, such part or
provision shall be severed from this Agreement in such jurisdiction to the
extent necessary to make this Agreement enforceable and the validity of the
remaining parts or provisions shall remain in full force and effect. In
addition, in such event the parties shall discuss such changes as may be
necessary to preserve the original intent of this Agreement and, if the parties
cannot agree on changes within 30 days, then either party shall have the option
to terminate this Agreement by notice to the other.
24. Entire Agreement. This Agreement constitutes the sole
and entire understanding between the parties relating to the use of the
COMBINATION MARKS and it replaces any prior agreement, whether written, oral,
express, implied or derived from conduct between the parties relating thereto,
including without limitation the 1996 Agreement and the letter, dated September
30, 1998, relating to STORE refurbishment.
25. Amendment of Agreement. This Agreement may not be
amended, altered or modified except in writing signed by both LICENSEE and
LICENSOR.
26. Binding Effect. Except as herein otherwise specifically
provided, this Agreement shall be binding upon and inure to the benefit of the
parties and their legal representatives, heirs, administrators, executors,
successors and assigns.
27. Waiver. No failure on the part of either party to
exercise, and no delay in exercising, any right or remedy under this Agreement
shall operate as a waiver thereof; nor shall any single or partial exercise of
any right or remedy under this Agreement preclude any other or further exercise
or the exercise of any other right or remedy granted here or by law.
28. Survival. The terms of Sections 10(e), 10(f), 13(a),
13(b), 15(a), 16, 18, 20, 21, 22, 23, 24 and 25 shall survive the termination of
this Agreement and shall continue to bind the parties thereafter.
IN WITNESS WHEREOF, the parties have executed this Agreement
by their respective officers hereunto duly authorized as of the day and year
first above written.
LEVI XXXXXXX & CO. DESIGNS, INC.
By: /s/ Xxxxxx X. Xxxxxx By: /s/ Xxxx X. Xxxxxxxx
Xxxxxx X. Xxxxxx Xxxx X. Xxxxxxxx
Senior Vice President President and
Chief Executive Officer
