MASTER INTERNATIONAL LICENSE AGREEMENT
THIS
MASTER INTERNATIONAL LICENSE AGREEMENT (this “Agreement”) is entered into as of
June 1, 2011, by and between Stone Corporation Inc., a corporation organized and
validly existing under the laws of the Japan (“Licensor”), and Horiyoshi the
Third Limited, a/k/a Horiyoshi the Third, a corporation organized and validly
existing under the laws of Hong Kong (“Licensee”).
WHEREAS,
Licensor has registered, owned, used, and/or claims common law trademark
ownership rights in the trademark “HORIYOSHI”, and related trademarks
(individually and collectively, the “Licensed Xxxx”), for apparel and other
products, in the United States and other countries; and
WHEREAS,
Licensee desires to use, and Licensor is willing to grant to Licensee the right
to use, the Licensed Xxxx in connection with the manufacture, promotion, sale
and distribution in the Territory (as defined below) of the products set forth
herein (the “Licensed Products”), upon the terms and subject to the conditions
herein set forth.
NOW,
THEREFORE, in consideration of the mutual covenants herein contained and for
other good and valuable consideration, the parties hereby agree as follows:
1. DEFINITIONS
As used
in this Agreement, the following terms shall have the following meanings:
1.1 “Annual Minimum
Royalties” has the meaning set forth in Section 3.4.
1.2 “Horiyoshi
Licensee” means any person (including legal entities; hereinafter the same)
licensed by Licensor, including the Licensee.
1.3 “Contract Year”
means (i) in the case of the first Contract Year hereunder, the period
commencing on June 1, 2011, and ending on December 31, 2012, and (ii)
thereafter, each twelve- month period during the term of this Agreement
commencing on January 1, and ending on December 31 of each calendar year.
1.4 “Granted Rights”
has the meaning set forth in Section 2.1.
1.5 “Licensed
Facility” means any factory, plant, warehouse, showroom, business office, retail
store or other facility or premises used or occupied by Licensee, or by any
employee, agent, subcontractor or Sublicensee of Licensee, engaged in the
manufacture, promotion, sale or distribution of Licensed Products, or any
associated tags, fabrics, accessories, labels, packaging or advertisements.
1.6
“Licensed Xxxx” means the trademark(s), the rights to which are owned
or held by Licensor, related to the xxxx “HORIYOSHI”, and all derivatives
there of, as set forth in the attached Schedule A.
1.7 “Licensed
Products” means all products, goods and services, in all categories, without
limitation.
1.8 “Net Sales”
means the total aggregate of the Net Selling Prices for all Licensed Products for any given period.
1.9 “Net Selling
Price” means Licensee's invoiced price, less returns actually received back by
written credit memoranda, and other deductions authorized in Section 3.3.
1.10 “Quarter” means
each consecutive three (3) month period (January 1 through March 31, April 1
through June 30, July 1 through September 30, and October 1 through December 31)
during a Contract Year.
1.11 “Running
Royalty” has the meaning set out in Section 3.3.
1.12 “Sales Quota”
has the meaning defined in Section 3.5.
1.13 “Sublicensee”
means an approved person to which Licensee has granted a sublicense in
accordance with Section 9.3.
1.14 “Territory”
means the entire world, without limitation.
2. GRANT OF LICENSE
2.1 Granted Rights:
Licensor hereby grants to Licensee, and Licensee accepts from Licensor, the
exclusive right, license and privilege (hereinafter, the “Granted Rights”) in
the Territory only, and only during the term of this Agreement, to (i) use, and
(ii) grant sublicense(s) to use (in whole or in part, and only in accordance
with Section 9.3), the Licensed Xxxx in connection with the design, manufacture,
sourcing, promotion, sale and distribution of the Licensed Products and no other
goods, wares or merchandise of any kind whatsoever. Nothing contained in this
Agreement shall be construed as an assignment or grant to Licensee of any right,
title or interest in or to the Licensed Xxxx and Granted Rights, except for the
license granted under this Section 2.1.
2.2 Term: The term
of this Agreement shall commence on June 1, 2011, and terminate at midnight on
December 31, 2021, unless terminated sooner in accordance with the provisions of
Section 7 of this Agreement. Provided it is not then in material breach of this
Agreement, Licensee shall have the option to extend the term of this Agreement
in five (5) year increments, upon written notification of Licensee’s exercise of
such option to Licensor that shall be sent to Licensor not later than ninety
(90) days before the termination of the term.
2.3 Account Summary
Report: Licensee shall provide Licensor with copies of all account summary
reports in the form reasonably acceptable to Licensor ninety (90) days after the
end of the relevant Contract Year. Licensee may provide its Sublicensee’s
reports where appropriate.
2.4 Reservation of
Certain Rights: Notwithstanding Section 2.1, Licensor expressly reserves the
rights (i) to grant the Granted Rights to parties other than Licensee within the
Territory for any goods or services other than the Licensed Products, and
outside the Territory for all goods and services including the Licensed
Products, and (ii) to market any goods and services bearing the Licensed Xxxx,
including the Licensed Products, outside the Territory, and any goods and
services bearing the Licensed Xxxx, other than the Licensed Products, within the
Territory. Nothing in this Agreement shall be construed as prohibiting or
limiting Licensor or any person authorized by Licensor from manufacturing any
product, including Licensed Products, bearing the Licensed Xxxx, in the
Territory for ultimate sale outside the Territory, or from transhipping any such product through the Territory.
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3. ENTRY FEE; FLAT FEE;
ROYALTIES; PAYMENT; ACCOUNTING; AUDIT
3.1 Entry Fee:
Licensee shall pay Licensor a non-refundable entry fee of seven hundred and
fifty thousand US dollars (US$750,000) upon execution of this Agreement by
Licensee, or otherwise as the parties mutually agree. For the avoidance of
doubt, this fee shall not act as a deposit or advance against any Running
Royalty (as defined in Section 3.3 below), and shall not be credited against any
other fee or amount due Licensor from Licensee set forth herein.
3.2 Flat Fee: For
the calendar month of June, 2011, Licensee shall pay Licensor a non-refundable
flat fee of forty-five thousand US dollars (US$45,000). Thereafter, on a
calendar monthly basis, commencing on July 1, 2011 until May 31, 2012, Licensee
shall pay Licensor a non-fundable flat fee of thirty thousand US dollars
(US$30,000). Each such flat fee shall be payable to Licensor within thirty (30)
days from the end of the relevant month, on a month-by-month basis, or otherwise
as the parties mutually agree. For the avoidance of doubt, these monthly flat
fees shall not act as a deposit or advance against any Running Royalty, and
shall not be credited against any other fee or amount due Licensor from Licensee
set forth herein.
3.3 Running Royalty:
Commencing on June 1, 2012, until the expiration of the term, Licensee shall pay
Licensor a Running Royalty at the rate of six percent (6%) of Net Sales of all
Licensed Products sold at any time from the beginning of each Contract Year
through the last day of such Contract Year during the term of this Agreement.
Notwithstanding the foregoing, the Running Royalty attributed to the first
Contract Year shall be calculated from Net Sales of all Licensed Products sold
from June 1, 2012 to the last day of the first Contract Year (i.e.
December 31, 2012) only. The Running Royalty shall be calculated in respect
of each Contract Year and paid ninety (90) days after the end of the relevant
Contract Year; provided that, the total amount of Annual Minimum Royalties
actually paid in respect of such Contract Year in accordance with Section 3.5
below, shall be deducted from the total Running Royalty due in respect of such
Contract Year; provided further that, if the total amount of Annual Minimum
Royalties paid for the relevant Contract Year is greater than the amount of
Running Royalty due in respect of such Contract Year, Licensor shall have no
obligation to return any such excess to the Licensee. Licensed Products shall be
considered “sold” for the purpose of calculating the Running Royalty upon the
earlier of (i) shipment or (ii) invoicing of the Licensed Products by Licensee.
No costs incurred in connection with the manufacture, promotion, sale or
distribution of the Licensed Products, reserves for returns or otherwise, or
withholding or other taxes of any nature paid or payable by Licensee, shall be
deducted from Net Sales in calculating the Running Royalty payable hereunder,
save only the following authorized deductions: (x) uncollectible accounts and
customary trade discounts and markdown allowances actually taken and reflected
on the face of the invoice (excluding discounts for prompt or accelerated
payments such as anticipation discounts whether or not shown on the face of the
invoice), and (y) amounts for returns or credits actually taken or granted.
3.4 Annual Minimum
Royalties:
3.4.1 Generally: Licensee shall pay Licensor
minimum royalty amounts (the “Annual Minimum Royalties”) at amounts to be
negotiated between the parties in good faith not later May 1, 2012.
3.4.2 Payment: The full amount of Licensee’s
Annual Minimum Royalty payment shall be due and payable ninety (90) days after
the end of the relevant Contract Year, regardless of the amount of Net Sales by Licensee during that relevant
Contract Year. The above Annual Minimum Royalties shall apply separately to each
Contract Year, and any excess of Running Royalty over Annual Minimum Royalties
for any given Contract Year shall not be applied as a credit against any
royalties (whether Annual Minimum Royalties or Running Royalty) accruing in any
subsequent Contract Year.
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3.5 Taxes: All
royalties payable by Licensee hereunder shall be paid in full, without set-off
or counterclaim, free of any deductions or withholdings. In the event that
Licensee is prohibited by applicable law from making payments hereunder free of
deductions or withholdings, Licensee shall pay such additional amounts to
Licensor as may be necessary in order that the actual amount received after
deduction or withholding (and after deduction or withholding, or payment, of any
additional taxes or other charges due as a consequence of the payment of such
additional amount) shall be equal to the amount that Licensor would have
received if such deduction or withholding were not required; provided that, if
required by applicable law, Licensee shall withhold the amount of any taxes
levied by the tax authorities of any jurisdiction on payments made by Licensee
to Licensor and which are by law payable by Licensor, shall promptly effect
payment thereof to the appropriate tax authorities, and shall transmit to
Licensor official tax receipts or other evidence issued by the appropriate tax
authorities sufficient to enable Licensor to support a claim for the United
States income tax credit in respect of any such taxes so paid.
3.6 Copies of
Invoices: Licensee shall provide Licensor with copies of all invoices issued for
Licensed Products (whether by Licensee, directly, or by any Sublicensee) at such
time as Licensee provides Licensor with the Yearly Statement.
3.7 Yearly
Statements: Licensee shall deliver to Licensor, ninety (90) days after the end
of the relevant Contract Year (whether or not any payment of Running Royalty is
due on such date) a certified royalty statement in the form reasonably
acceptable to Licensor, showing gross sales, adjustments to gross sales and Net
Sales by Licensee during such Contract Year, together with any supporting
documentation or schedules reasonably requested by Licensor. Each such statement
shall be accompanied by an unqualified “CFO Statement” from Licensee’s chief
financial officer in the form and with supporting schedules and other materials
as reasonably requested by Licensor from time to time. The receipt or acceptance
by Licensor of any royalty statement or of any royalties paid hereunder
(including the cashing of any royalty check) shall not preclude Licensor from
questioning the correctness thereof at any time thereafter for up to twenty-four
(24) months from the time of Licensor’s receipt of a given royalty statement, on
a statement-by-statement basis, and in the event any inconsistencies or mistakes
are subsequently discovered in such statements or payments during that period,
they shall immediately be rectified by Licensee and the appropriate payments
made by Licensee upon demand.
3.8 Accounting
Records: Licensee shall keep accurate books of account and records covering all
transactions relating to the license hereby granted (including, without
limitation, with respect to any transactions entered into by any sublicensee of
Licensee), separate from its books of account and records covering any unrelated
transactions. Said records shall include but not be limited to sales journals,
cash receipts books, assignments sheets tendered to any factor, and any monthly
factor statements. Licensor, its representatives and agents, shall have the
right at any time during ordinary business hours to examine and photocopy such
books of account and records, and all other documents and data in the possession
or under the control of Licensee reasonably necessary, in the opinion of
Licensor, to verify compliance by Licensee with the terms of this Agreement. All
such books of account and records shall at all times be maintained at the
registered office of Licensee, and shall be kept available to Licensor as herein
provided for at least three (3) years after any termination hereof. Licensor
shall give Licensee at least fourteen (14) calendar days’ advanced written
notice before conducting any audit of Licensee’s books of account and records.
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3.9 Inventory
Records and Audit: Licensee shall assign the Licensed Products style numbers
distinct from any other products Licensee may manufacture or sell. The style
number assigned to a specific Licensed Product shall be identical to the style
number identifying that Licensed Product in all books and records of Licensee.
All sales of Licensed Products shall be made on sequentially numbered invoices
which shall contain sales related only to the Licensed Products. Licensor, its
representatives and agents, shall be entitled to take physical inventory of the
Licensed Products and other products of Licensee and to inspect all or any part
of any Licensed Facility at any time during ordinary business hours. Licensor
shall give Licensee at least fourteen (14) calendar days’ advanced written
notice before conducting any audit of Licensee’s books of account and records.
In the event that any audit or physical inventory reveals an underpayment of
royalties, Licensee shall pay to Licensor the amount of any such underpayment;
provided that, if any audit or physical inventory reflects an underpayment of
Running Royalty for any Contract Year greater than five percent (5%), Licensee
shall reimburse to Licensor all actual and verifiable legal, accounting and
other expenses of such audit or inventory upon demand.
3.10 Delinquent
Payments: Any royalties or other amounts not paid by Licensee when due under
this Agreement shall bear interest from the date due until paid at a rate equal
to the lesser of (i) four percent (4%) over the prime rate (reference rate)
announced from time to time by Bank of America, N.A., or (ii) the maximum
interest rate permitted by law. With respect to any deficiency in the payment of
royalties, interest thereon shall accrue from the date such royalties should
have been paid, not the date such deficiency is discovered.
4. QUALITY CONTROL
4.1 Representations
and Warranties Regarding Quality: Licensee acknowledges that if the Licensed
Products designed, manufactured and sold by it are inferior in quality, design,
material, or workmanship, as compared to other Licensor products associated with
the Licensed Xxxx, the substantial goodwill and favorable public recognition
which Licensor has built up and now possesses in the Licensed Xxxx, and the
value of the Granted Rights, will be impaired. Accordingly, Licensee hereby
represents, warrants and covenants that the Licensed Products shall be of a high
standard of quality and of such style, appearance and quality as to be suited
for exploitation of the Granted Rights to their best advantage. Licensee, any
Sublicensee, and any subcontractor of either thereof, shall adhere to the
standards of vendor engagement held by Licensor and provided to Licensee prior
to or contemporaneously with the execution of this Agreement, as the same may be
amended by Licensor and provided to Licensee in writing from time to time.
4.2 Approval of
Samples: Licensee, or any party acting under its authority, shall, prior to
commencing production of a new Licensed Product or any substantial modification
of an existing Licensed Product, furnish to Licensor for examination and
approval, at Licensee's expense, a reasonable number of representative samples
thereof (not less than three), together with associated tags, labels, packaging,
specifications, sizes and colors, and shall not manufacture, promote, advertise,
distribute or sell any Licensed Product without the prior written approval of
Licensor. Any Licensed Product not disapproved by the Licensor, within fourteen
(14) days after receipt by the Licensor of the samples designated by it, shall
be deemed approved, if the delivery of such samples was memorialized by means of
a written receipt. Licensee shall not manufacture, advertise, distribute or sell
any goods or merchandise which depart from the approved form of any such sample in any material respect without Licensor's
prior written consent. Upon request from time to time, Licensee shall furnish to
Licensor without charge a reasonable number of additional production samples of
any Licensed Product to facilitate Licensor's verification of the conformity of
such Licensed Product to the approved form thereof.
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4.3 Inspections:
Licensor, its representatives and agents, shall have the right at any time
during ordinary business hours to inspect any and all Licensed Facilities.
Licensor shall give Licensee at least fourteen (14) calendar days’ advanced
written notice before conducting any audit of Licensee’s books of account and
records. Licensee shall promptly provide Licensor with the name, address,
telephone and fax numbers, names of managers and operators, any symbol or number
it or any Licensed Facility may use or may be required to use to identify itself
as a source of goods, and notice of any change thereof. Licensor, its
representatives and agents, shall have the right to inspect and test any of the
Licensed Products and to take any other action which, in the opinion of
Licensor, is necessary or useful to assure that the Licensed Products are made,
distributed and displayed in accordance with this Agreement. Licensee, or its
Sublicensees, shall be able to sub-contract without the prior written approval
of Licensor provided sub-contractor has signed a subcontractor agreement in a
form reasonably acceptable to Licensor, as the same may be amended by Licensor
from time to time. In the event that the Licensed Products, related fabrics, or
accessories, are manufactured by any person other than Licensee, Licensee shall
require such person contractually to observe and perform all relevant terms of
this Agreement, shall not allow such person to further sub-contract, and shall
at all times use due diligence to obtain compliance herewith.
4.4 Selling Samples:
Licensor, at its sole and absolute discretion, may provide to Licensee selling
samples from Licensor or other Horiyoshi Licensees, as selected by Licensee, at
the cost incurred by Licensor (including freight and shipping) for each sample.
Licensee shall be responsible for importation of such selling samples to the
Territory and all costs thereof, including shipping, insurance and duty.
5. INTELLECTUAL PROPERTY RIGHTS
5.1 Notice of
License: Licensee shall cause to appear on all tags and labels affixed to each
article of the Licensed Products manufactured, sold or distributed by it
hereunder, and on or within all packaging, advertising, promotional or display
materials produced or used in connection with the Licensed Products, such
notices and legends as Licensor may from time to time designate, including,
without limitation, notice of the license hereby granted, the Licensed Xxxx, any
other trademarks or registered marks or indications of Licensor, and other
intellectual property rights.
5.2 Form of Licensed
Xxxx: Licensee shall affix to each article of the Licensed Products tags and
labels in the form or forms from time to time prescribed by Licensor. Licensee
shall use the Licensed Xxxx only in the form, color and manner from time to time
authorized in writing by Licensor. Upon written notice and in its sole
discretion, Licensor may change such forms, colors and manners of use of the
Licensed Xxxx, and Licensee must comply with said changes as soon as all
inventory then on hand, or contracted for prior to such notice, is used or sold.
Licensee shall provide a detailed accounting of such inventory and proof of
compliance within thirty (30) calendar days of receipt of such written notice.
5.3 Copyrights,
Patents and Utility Designs: If any articles of the Licensed Products which
incorporate the Licensed Xxxx, or artwork appearing on labels, tags, packaging,
advertisements or promotional materials which incorporate the Licensed Xxxx are
original designs created by or for Licensee (in which case Licensee
shall ensure that such designs are “works for hire” (or the equivalent under the
laws of the Territory) or unconditionally assigned to Licensee), Licensee shall
register any intellectual property rights in and to such designs in the name of
Licensor, and shall cause all such rights to be assigned to Licensor in
compliance with the requirements of the relevant laws of the United States and
the copyright, patent, utility design and other intellectual property laws of
the Territory. Such registration shall be made at the cost of Licensee, and
shall be undertaken as Licensor shall direct.
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5.4 Preservation of
Licensor Rights: Licensee agrees to cooperate fully and in good faith with
Licensor for the purpose of securing and preserving the rights of Licensor in
the Granted Rights. Licensee hereby acknowledges that Licensor is the sole and
exclusive owner of the Licensed Xxxx and that nothing contained in this
Agreement shall be construed to convey to Licensee any right or interest in the
Licensed Xxxx, other than the specific license herein granted. Licensee shall
not, during the term of this Agreement or thereafter, at any time challenge or
contest directly or indirectly the validity, exclusive ownership, title and
registration of the Licensor in and to the Licensed Xxxx or the Granted Rights,
or the validity of the license granted under this Agreement. During the term of
this Agreement or at any time thereafter, Licensee shall execute such documents
as Licensor may request from time to time to ensure that all right, title and
interest in and to the Licensed Xxxx resides in Licensor. Licensee shall
exercise best commercial efforts to assist Licensor in maintaining Licensor's
legal rights in the Licensed Xxxx, including furnishing samples, signing
declarations or applications, and providing testimony upon Licensor's request.
5.5 Trademark Use
and Registration: The parties agree that all uses of the Licensed Xxxx by
Licensee hereunder shall inure to the benefit of Licensor, and that only
Licensor is and shall be entitled to register the Licensed Xxxx in the Territory
or any other jurisdiction. Licensee shall not apply for any registration of the
Licensed Xxxx in the name of anyone other than Licensor, and agrees that if it
does so in violation of the foregoing provision, any such applications or
registrations that may issue shall be deemed automatically assigned to Licensor.
5.6 No Use in
Corporate Name: Licensee agrees not to use the Licensed Xxxx or any variant
thereof in any part of its corporate, firm or business name, without the express
prior written permission of Licensor and in accordance with the terms of
Licensor.
5.7 Approval of
Advertising Materials: No tag, label, packaging, advertising or promotional
material which incorporates the Licensed Xxxx shall be manufactured or used by
Licensee without having first submitted the same to Licensor for its written
approval. In no event shall Licensee undertake any television, radio, billboard,
print, point- of-sale or other advertising, promotion or publicity in connection
with the Licensed Products without Licensor's prior written approval of the
form, nature and content of such advertising, promotion or publicity.
5.8 Use by Other
Firms: Should any person other than Licensee use or permit the use of any
advertising, promotion or publicity material other than material previously
approved in writing by Licensor, Licensor shall have the right to require such
other person immediately to discontinue any such use. Licensee shall use best
commercial efforts to limit the rights of any other person to whom it sells or
distributes any of the Licensed Products in accordance with the foregoing
provisions so that Licensor may in its own name and right cause such other
person to forthwith cease the use of any material not previously approved in
writing by Licensor.
5.9 Artwork and
Designs: All artwork and designs for the Licensed Products which incorporate the
Licensed Xxxx, associated tags, labels and packaging shall be prepared by or for
Licensee at Licensee's sole expense and subject to Licensor's
approval. All such artwork and designs, or reproductions thereof, shall,
notwithstanding their creation or use by Licensee, be and remain the property of
Licensor, and Licensor shall be entitled to use the same and to license the use
of the same by others. Licensor shall provide to Licensee upon request at
Licensee's expense current camera-ready artwork and advertising as available.
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5.10 Compliance with
Laws: All Licensed Products shall be manufactured, advertised, sold and
distributed in compliance with all applicable laws and regulations. Licensee
shall pretest all Licensed Products and cause truthful labeling regarding their
care, maintenance and use to be affixed to them. Licensee shall keep Licensor
fully and immediately informed of any complaint or other action by any
governmental body or consumer group related to the Licensed Products, and shall
act expeditiously to resolve any such complaint.
5.11 Goodwill: Any
and all goodwill arising from any use by Licensee of the Granted Rights inures
solely to the benefit of Licensor, and neither during nor after the term of this
Agreement shall Licensee assert any interest in or claim to such goodwill.
Licensee agrees not to take any action actually or potentially detrimental, in
the opinion of Licensor, to the goodwill associated with the Licensed Xxxx.
5.12 Infringement:
Licensee shall reasonably assist Licensor, whenever reasonably requested, in the
protection or enforcement of any of Licensor rights in the Licensed Xxxx, and
Licensor, in its discretion, may commence and prosecute any claims or suits in
its own name or in the name of Licensee, or join Licensee as a party thereto.
Licensee shall promptly notify Licensor in writing of any infringement or other
unauthorized use of the Licensed Xxxx or violation of the Granted Rights by
others, and shall be responsible for securing and preserving Licensor's rights
in the Licensed Xxxx in the Territory. Licensee shall not institute any suit or
take any action on account of any such infringement or other use without first
obtaining the written consent of Licensor. If Licensor grants such consent,
Licensee may at its expense prevent, by legal action or other lawful means, any
infringement of the Granted Rights. Any award of damages or compensation
obtained by Licensee, net of Licensee's out-of-pocket expenses in obtaining the
award, shall be included in Licensee's Net Sales when actually collected by
Licensee. While Licensor may elect to retain counsel and prosecute any
infringement, Licensor shall not be obligated hereunder to retain counsel, to
bear any expenses, to institute legal action or to take any other action to
prevent or remedy any such infringement.
5.13 No Restriction
on Other Goods or Services: For the avoidance of doubt, and notwithstanding
anything herein to the contrary, Licensee shall be free to, and unrestricted in,
the design, creation, marketing, promotion, sales and distribution of any other
goods or services in all categories and throughout the entire world, without
limitation, provided that any such goods or services do not incorporate, in
whole or in part, the Licensed Xxxx (the “Licensee Goods”). Further, for the
avoidance of doubt, and notwithstanding anything herein to the contrary,
Licensee or its assignees shall at all times exclusively own and control all
trademarks, marks, trade dress and all other intellectual property related to
the Licensee Goods.
6. DISTRIBUTION
6.1 Best Commercial
Efforts: Licensee agrees that throughout the term of this Agreement it shall
diligently and continuously offer the Licensed Products for sale, meet all
orders promptly, and otherwise use best commercial efforts to maximize
exploitation of the Granted Rights in accordance with this Agreement.
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6.2 Prohibited
Distribution Methods: In the interest of preserving the high reputation and
good-will associated with the Licensed Xxxx, Licensee shall sell Licensed
Products only to retail stores and merchants having a high-quality image, and
which offer customer services, display and support commensurate with such image.
Licensee shall exercise due care to avoid sales or distribution made in whole or
in part for resale or distribution outside the Territory or for publicity or
advertising purposes, combination or tie-in sales, premiums, giveaways or any
other secondary use or similar method of merchandising, all of which are
prohibited hereunder without the prior written approval of Licensor. Licensee
shall incorporate the terms of this Section 6.2 in all sales agreements and
invoices covering Licensed Products, in such form that Licensor may enforce such
terms in its own name and right.
6.3 Exclusivity:
Tie-ins: Under no circumstances shall Licensee grant exclusivity for sales of
any of the Licensed Products to any purchaser or purchasers without the prior
written consent of Licensor. Licensee shall not require any purchaser to
purchase any merchandise other than Licensed Products as a condition to any
purchase of Licensed Products.
6.4 Sales Policies:
Licensee acknowledges that the availability and selection of styles,
fabrication, colors and sizes are an integral part of the high reputation and
value which the trade and the public have come to associate with the Licensed
Xxxx, and agrees that its policies of sale, distribution, and exploitation shall
be of a high and ethical standard, and that the same shall in no way reflect
adversely upon the good name, trademarks and/or trade name of the Licensor.
Licensee further agrees to use best commercial efforts to insure that, at all
times during the term hereof, the Licensed Products ordered, and approved by
Licensee for shipment, are shipped timely in compliance with the shipping
schedule recited in each order.
6.5 Sale of Licensed
Products Via the Internet:
6.5.1 Nothing contained herein shall prohibit
Licensee from distributing the Licensed Products by means of one or multiple
sites on the internet owned and operated by Licensee. Licensee acknowledges that
such site(s) shall be of such design and functionality as may reasonably be
required to maintain or enhance the Granted Rights.
6.5.2 Licensee, without the prior written consent
of Licensor, may operate, or authorize any third party to operate a site, the
domain name to which is comprised of, or incorporates all or any aspect of the
Granted Rights. Further, nothing herein shall restrict Licensee from using or
authorizing the use of the Granted Rights as a meta tag or in other usual and
customary ways of directing visits to such web site(s) (for example only, by
means of linking).
6.5.3 The parties acknowledge that the worldwide
web is not subject to the same geographic limitations as more traditional forms
of retailing. Therefore, any such web site shall contain such statements and
protections as are reasonable and customary to assist Licensee in its efforts to
honor the territorial limitation of this Agreement (if any). Accordingly, any
page containing the Licensed Products shall: (1) State that such goods are for
delivery only within the Territory; (2) Be in the primary language(s) spoken
within the Territory; and (3) Restrict the payment for the Licensed Products to
the primary currency or currencies accepted within the Territory.
7. TERMINATION
7.1 Material Breach:
If Licensee shall be in material breach of any provision of this Agreement, Licensor, in addition to all other rights and
remedies available to it hereunder or otherwise at law or in equity, may
terminate this Agreement and the license hereby granted by giving written notice
of such breach. If such breach is not curable, such termination shall be
effective upon the giving of notice. If such breach is a failure to pay money
due, such termination shall be effective five (5) business days after the giving
of notice. If such breach is curable and other than a failure to pay money due,
such termination shall be effective ten (10) business days after the giving of
notice. If Licensee cures such breach to Licensor's satisfaction within the
period provided, Licensor's notice shall be deemed withdrawn and this Agreement
shall not terminate.
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7.2 Bankruptcy: If
Licensee (i) files or has filed against it a petition in bankruptcy, (ii) is
adjudicated a bankrupt, (iii) becomes insolvent, (iv) makes an assignment for
the benefit of its creditors or an arrangement pursuant to any bankruptcy or
insolvency law, (v) suffers any similar or analogous event in consequences of
debt, or (vi) has a receiver appointed over it or its business, this Agreement
and the license hereby granted shall automatically and immediately terminate
without notice of any kind being required. In the event of any such termination,
Licensee, its representatives, receivers, trustees, administrators, agents,
successors and assigns shall have no right to sell, exploit or deal in any way
with or in any of the Licensed Products or any associated tags, labels,
packaging, advertising or promotional materials without the prior written
consent of Licensor.
7.3 Effect of
Termination: Upon termination of this Agreement for any reason whatsoever:
7.3.1 all rights granted to Licensee hereunder
shall immediately and automatically revert to Licensor, who shall be free to
license others to use the Granted Rights in connection with the manufacture,
promotion, sale and distribution of Licensed Products in the Territory, and
otherwise to exploit the Granted Rights, and Licensee shall refrain from any
further direct or indirect use or exploitation of the Granted Rights, except to
the extent specifically set forth in Section 7.4;
7.3.2 Licensee shall execute and deliver to
Licensor, in such form as Licensor shall request, any and all documents which
may be necessary or useful to cancel the license granted hereunder and otherwise
to fully vest all of the Granted Rights in Licensor;
7.3.3 Licensee shall be deemed, at Licensor's
election, to have assigned, transferred and conveyed to Licensor any agreements,
purchase orders, goodwill and other right, title and interest in and to or
arising from the Granted Rights which may have been obtained by or vested in
Licensee as a consequence of any endeavors of Licensee, and Licensee shall
execute any instruments requested by Licensor to accomplish the same. Where the
Licensee has already manufactured the relevant Licensed Products, the Licensee
shall be under an obligation to supply such goods to the Licensor, at cost price
if Licensor so elects to purchase said Licensed Products. Where the Licensee has
not already manufactured the relevant Licensed Products, the Licensee shall be
under an obligation, if so required by the Licensor, to manufacture such goods
solely for the purpose of supplying them to the Licensor, at cost price;
7.3.4 Licensor and any new Licensee or other party
authorized by Licensor may ship Licensed Products to customers within the
Territory;
7.3.5 except as specifically provided herein to
the contrary, all royalties on Net Sales made through the date of such
termination, and if such termination is not due solely to Licensor’s breach, all Annual Minimum Royalties through the
remainder of the term set forth in Section 2.2, shall become immediately due and
payable without need for demand; and
10
7.3.6 within thirty (30) days after the date of
such termination, Licensee shall deliver to Licensor a detailed written
statement showing the following: (i) the amount, description and locations of
its then existing inventory of each of the Licensed Products in Licensee's
possession, or located at any Licensed Facility, in transit, or in the
manufacturing process as of such date; (ii) the names and addresses of each
manufacturer of any of the Licensed Products, together with their correct
manufacturer registration number or other national identification number,
together with the amounts of all then outstanding confirmed orders from Licensee
to each such manufacturer for each of the Licensed Products; and (iii) the
amounts of all then outstanding confirmed orders from Licensee's customers for
each of the Licensed Products. Licensor shall have the right to take a physical
inventory count to verify the aforementioned statement. Failure of Licensee to
furnish such statement or cooperate in such physical inventory count shall
forfeit Licensee's rights under Section 7.4.
7.4 Disposal of
Stock Upon Termination: Upon termination of this Agreement, except pursuant to
Section 7.1 or 7.2, Licensee may, on a nonexclusive basis subject to the
limitations of this Section 7.4, sell reasonable quantities of the Licensed
Products which are on hand in Licensee's warehouse, in transit, or in the
manufacturing process on the date of termination, for a period of ninety (90)
calendar days; provided that no such sales shall be made until the accounting
required under Paragraph 7.3.6 shall have been submitted to Licensor; provided
further that sales are made, royalties on Net Sales during such period are paid,
and statements for such period furnished, all in accordance with the provisions
of this Agreement; and provided further that during such period royalties shall
be reported, due and payable monthly no later than the fifteenth (15th) calendar
day following the close of each month. If Licensee wishes to sell all or
substantially all of its then remaining inventory to a single purchaser or group
of related purchasers, Licensee shall advise Licensor of the identity of such
prospective purchaser or purchasers and the terms of the proposed sale, and
Licensor or its designee shall have the right of first refusal to buy the
remaining inventory upon the same terms and the right to receive an assignment
and assumption of any or all then outstanding orders from Licensee to its
manufacturers, and from Licensee's customers to Licensee, for the Licensed
Products. Licensee may not order Licensed Products for delivery within the last
quarter of the last year of the Agreement in excess of one hundred twenty
percent (120%) of Licensee’s orders for Licensed Products for delivery in the
last quarter of the immediately preceding year. Except as specifically provided
to the contrary hereunder, immediately upon termination of this Agreement for
any reason whatsoever, Licensee shall discontinue any and all use of the Granted
Rights, and all work-in-process, tags, labels, packaging, advertising or other
materials used in the manufacture or marketing of the Licensed Products shall,
at Licensor's election and at Licensee's expense, either be immediately
destroyed or delivered to Licensor.
8. INDEMNITY: Defects; Breach of
Warranty: Licensee hereby agrees to indemnify and defend Licensor and hold
Licensor harmless from and against any and all claims, judgments, liabilities,
damages, penalties, losses, costs or expenses (including reasonable attorneys
fees) incurred by reason of, or arising out of, any alleged or actual defect in
any Licensed Product or in any other manner connected with the manufacture,
advertising, promotion, sale or distribution of the Licensed Products, use of
the Licensed Xxxx, exploitation of the Granted Rights, or any breach of this
Agreement by Licensee or by any of its Sublicensees or sub-contractors.
11
9. MISCELLANEOUS PROVISIONS
9.1 Confidentiality:
Licensee shall regard and preserve as confidential all information related to
the business of the Licensor which may be prepared by Licensor or Licensee or
obtained by it from any source as a result of this Agreement, or otherwise, and
information respecting designs, advertising, promotions and other information
which Licensor may provide to Licensee to assist it in the development of the
Licensed Products. Licensee shall confine and limit the use of all such
information and ideas exclusively to the development of the Licensed Products,
and shall not use or adopt such information and ideas in connection with any
product which is not a Licensed Product. Without limiting the generality of the
foregoing:
9.1.1 Licensee shall not, without first obtaining
the Licensor's written consent, at any time, whether during the term of this
Agreement or thereafter, disclose to any person, firm, agency, authority or
other enterprise, or in any way use for its benefit any information related to
customer lists, pricing, methods, processes, apparatus, program practices,
employees, or other material conceived, designed, created, developed or
assembled for or by it, its licensees, or its agents, which is not in the public
domain;
9.1.2 Licensee shall instruct its employees having
access to such information not to copy, duplicate or otherwise use or disclose
such information to third parties, except as otherwise contemplated by this
Agreement. Licensee shall effect reasonable security precautions to safeguard
such information from theft or from access by persons other than its employees
using it in accordance with this Agreement, and shall promptly notify Licensor
in writing of the nature of any unauthorized possession or use that may take
place;
9.1.3 This Section 9.1 shall survive the
termination of this Agreement.
9.2 No Joint
Venture: Licensee shall not use the name, reputation, or credit of Licensor in
any manner whatsoever not specifically authorized hereunder, nor incur any
obligation in Licensor's name. Nothing herein contained shall be construed to
constitute the parties joint venturers, nor shall any similar relationship be
deemed to exist between them.
9.3 Sublicensing:
The license hereby granted is and shall be personal to Licensee, and shall not
be assignable by any act of Licensee or by operation of law. Licensee shall not
grant any sublicense in respect of any of the Granted Rights without Licensor's
prior written approval of the sublicensee and the sublicense agreement, which
approval shall be at Licensor’s sole and absolute discretion. In the event of
any approved sublicense or assignment, Licensee shall continue to be primarily
liable hereunder. Any attempt by Licensee to grant a sublicense, or to assign,
encumber or otherwise transfer or convey any interest in the Granted Rights, or
any of its rights hereunder, without Licensor's prior written approval, shall be
void and shall constitute a material breach of this Agreement which breach may
not be remedied by Licensee and may, at the discretion of Licensor, result in
the immediate termination of this Agreement. Any dissolution, merger,
consolidation or other reorganization of Licensee, or the sale of any
substantial portion of the assets of Licensee except in the ordinary course of
business, shall be deemed an assignment. No sublicense or assignment shall
release Licensee from any of its obligations under this Agreement and Licensor
shall be entitled to enforce the terms and provisions of this Agreement against
Licensee, Licensee's Sublicensee or assignee, or all of them, as Licensor shall,
in its absolute discretion, determine, and shall not be required to join any
other in any action against any of them. In all events, upon any such sublicense
or assignment, Licensee and Licensee's Sublicensee or assignee shall be jointly
and severally liable for the obligations of Licensee under this Agreement.
12
9.4 Successors and
Assigns: Except as expressly herein provided to the contrary, this Agreement
shall inure to the benefit of and be binding upon the parties and their
respective successors and assigns. This Agreement is not for the benefit of any
third party and shall not be construed to confer any right or remedy upon any
person other than Licensor and Licensee.
9.5 Horiyoshi
Styles: Subject to Section 7.4, Licensee shall not manufacture, promote,
advertise, sell or distribute, or cause to be manufactured, promoted,
advertised, sold or distributed, any current, future or past Horiyoshi styles of
the Licensed Products except under the Licensed Xxxx and in accordance with the
terms of this Agreement. Except in furtherance of Licensee’s obligations
hereunder, Licensee shall not disclose or permit to be communicated to any other
person, including any affiliate of Licensee, any styling information relating in
any manner to any current, future or past Horiyoshi styles of the Licensed
Products.
9.6 Disclaimer of
Representations and Warranties: Except as expressly set forth in this Agreement,
Licensor makes no representation or warranty of any kind, express or implied,
concerning the Licensed Xxxx, the Granted Rights, their ownership, or as to any
other matter. Licensor has no responsibility for the actions of third parties
not licensed by Licensor in the Territory which sell, distribute, trade in or
otherwise exploit Horiyoshi products or products resembling Horiyoshi products,
or attempt to do so, within or outside the Territory, and regardless of whether
such third parties obtained such products from authorized or unauthorized
sources. Notwithstanding the foregoing and anything herein to the contrary,
Licensor does hereby represent and warrant that it has the full power and
authority to enter into and perform under this Agreement, and that it owns and
controls the Licensed Xxxx.
9.7 Notices: All
notices hereunder shall be in writing and shall be delivered personally, by
facsimile, or by express courier or certified airmail. Delivery shall be deemed
effective: (i) at the time of delivery if personally delivered, (ii) immediately
in the event notice is delivered by facsimile, provided that the party to whom
the notice is delivered confirms receipt thereof, (iii) two (2) business days
after deposit thereof with Federal Express or similar express courier, properly
addressed with delivery charges prepaid, or (iv) five (5) business days after
dispatch thereof by certified airmail, with sufficient airmail postage, return
receipt requested. Any notice shall be given to:
If to Licensor:
Stone Corporation Inc.
Xxxxxx Xxxxx
#000
0-0-0 Xxxxxxx
Xxxxxxx-Xx, Xxxxx
Xxxxx 150-0002
Attn: Xxxxx
Xxx
Fax: x00 00 0000 0000
With a copy to:
Xx. Xxxxxxxxx Xxxxxx
Xxxxxx Xxxxx
#000
0-0-0 Xxxxxxx
Xxxxxxx-Xx, Xxxxx
Fax: x00 00 0000 0000
13
If to Licensee:
Horiyoshi The Third Limited
0000
X. Xxxxx Xxx.
Xxx Xxxxxxx, XX 00000 XXX
Attn: Xxxxxx Xxxxxx
Fax: x0 000-000-0000
With a copy to:
Xxxxxx X. Xxxxx, A Prof. Law Corp.
0000 Xxxxxxxx Xxxx., Xxxxx 000
Xxxxxxx Xxxxx, XX 00000 XXX
Attn:
Xxxxxx X. Xxxxx, Esq.
Fax: x0 000 000 0000
Any
party may, by written notice in compliance with this Section 9.7, alter or
change the address or the identity of the person to whom any notice, or copy
thereof, is to be delivered.
9.8 Interpretation: This
Agreement expresses the entire understanding of the parties hereto, and
supersedes all prior agreements and any communications, oral or written, between
the parties with respect to the subject matter hereof. The Licensee irrevocably
and unconditionally waives any right it may have to claim damages and/or rescind
this Agreement for any misrepresentation, whether or not contained in this
Agreement, unless such representation was made fraudulently. Section headings
are included solely for convenience or reference and shall not be considered a
part of this Agreement. Time is of the essence as to each provision of this
Agreement. The official language of this Agreement shall be Englishand in any
controversies or disputes between the parties the English text shall control.
9.9 Choice of Law:
This Agreement shall be governed by and construed in accordance with the laws of
the State of California, United States of America, applicable to contracts
entered into and fully to be performed in that State. Licensee hereby consents
to the jurisdiction of the courts of the State of California, and the United
States courts located in the State of California, in connection with any
lawsuit, action or proceeding arising out of or relating to this Agreement. Any
arbitration or litigation between the parties hereto shall be held in the County
of Los Angeles, California. Notwithstanding the foregoing, the Licensor shall be
entitled for its exclusive benefit to take proceedings against the Licensee in
any other territory including the Territory or the country where the Licensee
has its principal place of business.
9.10 Arbitration:
Any dispute arising out of or relating to this Agreement, including any
disagreement with respect to the scope or interpretation of this Section 9.12,
shall be settled by final and binding arbitration pursuant to the Commercial
Arbitration Rules of the American Arbitration Association. Discovery in
accordance with the California Code of Civil Procedure shall be allowed to the
extent the arbitral panel shall determine. Nothing contained herein shall
prevent either party from (i) seeking and obtaining equitable relief, including
but not limited to injunctions, specific performance or extraordinary writs,
(ii) filing legal action to effectuate any attachment, provided the party
seeking attachment stipulates in such action, upon the other party's request, to
arbitrate the merits of such case.
9.11 No Waiver: No
waiver or modification of any of the terms of this Agreement shall be valid
unless in writing and signed by both parties. No waiver by either party of a
breach hereof or a default hereunder shall be deemed a waiver by such party
of a subsequent breach or default of like or similar nature.
14
9.12 Remedies: All
rights and remedies provided for in this Agreement shall be cumulative, and
shall not be exclusive of one another or of any other remedies available at law
or in equity.
9.13 Attorneys Fees:
If any legal action or other proceeding is brought in connection with this
Agreement or its interpretation, the successful or prevailing party shall be
entitled to recover reasonable attorneys fees and other costs incurred in such
action or proceeding, in addition to any other relief to which such party may be
entitled.
0.00 Xxxxxx Xxxxxx
Dollars: All references to dollars in this Agreement are to United States
Dollars. All amounts to be paid under this Agreement shall be paid in legal
currency of the United States of America.
9.15 Corporate
Authority: Each party represents and warrants to the other that all necessary
corporate action has been taken, including the due adoption of a resolution by
its board of directors sufficient to enable the representing and warranting
party to enter into this Agreement, to be bound thereby and to perform fully as
required hereunder.
9.16 Further
Documents: Each party shall execute and deliver all such further instruments,
documents and papers, and shall perform any and all acts necessary, to give full
force and effect to all of the terms and provisions of this Agreement.
9.17 Counterparts: This
Agreement may be executed by the parties hereto in separate counterparts, each
of which when so executed shall be deemed to be an original and all of which
taken together shall constitute one and the same agreement.
9.18 Licensor may,
at its expense, register or record this Agreement in all countries within the
Territory in which such registration or recordal is required or, in Licensor’s
determination, desirable, at Licensor’s expense. Licensee will cooperate with
Licensor in effectuating such registrations or recordals, or any renewals or
amendments thereto. Licensee agrees to execute any amendments to this Agreement
which are reasonably required to allow recordation of this Agreement with the
Trademark Office having jurisdiction over this matter, as long as such
amendments do not materially and adversely affects the rights or obligations of
Licensee hereunder (and in no event shall any such amendment increase the
royalty rates, the Annual Guaranteed Minimum Royalties or the Sales Quota
Requirements).
9.19 Licensee may,
at its expense, cause this Agreement to be translated, and if Licensee so
elects, a copy of the translated version shall be promptly delivered to
Licensor. In the event that there is any conflict or discrepancy between the
English version and any translated version, the English version shall control.
9.20 Entire
Agreement. This Agreement sets forth the entire agreement and understanding
between the parties with respect to the subject matter hereof and supersedes any
and all prior negotiations, discussions and agreements relating to the subject
matter hereof. This Agreement may not be orally changed, altered, modified or
amended in any respect.
15
///
IN WITNESS WHEREOF, the parties hereto have executed
this Agreement as of the date first above written.
STONE CORPORATION INC. |
|
HORIYOSHI THE THIRD LIMITED |
(“Licensor”) |
|
(“Licensee”) |
|
|
|
|
|
|
/s/ Xxxxx Xxx |
|
/s/
Xxxxxx Xxxxxx |
|
|
|
Name: Xxxxx Xxx |
|
Name: Xxxxxx Xxxxxx |
|
|
|
Title: Director |
|
Title: CEO of Horiyoshi Worldwide Inc., |
|
|
parent company of Horiyoshi The Third |
|
|
Limited |
16
SCHEDULE A
LICENSED XXXX
Format of Xxxx: “Xxxxxxxxx XXX” and “Horiyoshi The Third”
Trademark registration:
Japan, U.S.A. and other countries under the Madrid
Protocol
17