EXHIBIT 10.26
LICENSE AGREEMENT
THIS LICENSE AGREEMENT (the "Agreement"), dated as of March 2, 1996, by and
between Ruby Tuesday (Georgia), Inc., a Georgia corporation ("Ruby Tuesday
(Georgia)"), and Xxxxxxxx Health Care, Inc., a Georgia corporation ("MHCI")
(collectively, the "Parties").
RECITALS
WHEREAS, in furtherance of the Plan of Distribution (as defined below), it
is desirable to license certain trademark rights between the Parties to provide
for the continued conduct of the Parties' respective businesses;
WHEREAS, the Parties desire that certain rights under the Xxxx (as defined
below) enjoyed by the Parties prior to the Distribution Date (as defined below)
should continue following the Distribution Date.
NOW, THEREFORE, in consideration of the mutual agreements, undertakings and
covenants herein, the Parties hereby agree as follows:
I. DEFINITIONS. As used in this Agreement, the following terms shall have the
following meanings:
"Fine Dining Services" shall mean the operation of the specialty
restaurant business as now operated by Ruby Tuesday (Georgia) and
hereafter operated by Ruby Tuesday (Georgia) during the term of this
Agreement, including, without limitation, the operation of Ruby
Tuesday, Mozarella's Cafe, Silver Spoon Cafe and Tia's restaurants.
"Distribution Date" shall mean the effective date of the distribution
of shares of common stock of Ruby Tuesday (Georgia) as contemplated by
the Plan of Distribution.
"Health Care Services" shall mean the health care food and nutrition
service business as now operated by MHCI and hereafter operated by
MHCI during the term of this Agreement.
"Xxxx" shall mean the trademark FIT N'TRIM, as used by Ruby Tuesday
(Georgia) and as evidenced by U.S. Reg. No. 1,805,467.
"Other Services" shall mean all services which are not within the
definition of Fine Dining Services or Health Care Services.
"Plan of Distribution" shall mean the Plan of Distribution dated
September 26, 1995, adopted by the Board of Directors of Xxxxxxxx
Restaurants Inc.
II. OWNERSHIP OF MARKS. The Parties acknowledge and agree that Ruby Tuesday
(Georgia) owns all right, title and interest in and to the Xxxx.
III. LICENSES.
3.1 Exclusive License. Ruby Tuesday (Georgia) hereby grants to MHCI,
-----------------
effective as of the Distribution Date, a royalty-free, worldwide, exclusive,
nonassignable (except as specified herein) license to utilize the Xxxx in
connection with Health Care Services. The exclusivity of this license applies
against Ruby Tuesday (Georgia), and Ruby Tuesday (Georgia) may not utilize the
Xxxx in connection with Health Care Services.
3.2 Nonexclusive License; Limitations on Ruby Tuesday (Georgia)'s Use of
--------------------------------------------------------------------
the Xxxx. Xxxx Tuesday (Georgia) hereby grants to MHCI, effective as of the
--------
Distribution Date, a royalty-free, worldwide, nonexclusive, nonassignable
(except as specified herein) license to utilize the Xxxx in connection with such
Other Services as are requested in writing by MHCI and consented to in writing
by Ruby Tuesday (Georgia) prior to the use of the Xxxx in connection therewith,
which consent shall not be unreasonably withheld by Ruby Tuesday (Georgia).
Ruby Tuesday (Georgia) agrees that it will not use the Xxxx in connection with
any Other Services without obtaining the prior written consent of MHCI, which
consent shall not be unreasonably withheld.
IV. USE OF XXXX.
4.1 Use. MHCI agrees that it will use the Xxxx under the licenses granted
---
hereunder only in connection with goods and services meeting the standards,
specifications and qualities established (a) during the period prior to the
Distribution Date, or (b) by mutual agreement of the Parties following the
Distribution Date.
4.2 Monitoring. Ruby Tuesday (Georgia) shall have the right, at
----------
reasonable times, to inspect and monitor MHCI's use of the Xxxx to verify the
continued quality of MHCI's goods and services.
4.3 Respective Rights of the Parties. The requirement under Section 3.2
--------------------------------
that each Party obtain consent prior to using the Xxxx in connection with Other
Services is in consideration of the Parties' concurrent use of the Xxxx and the
parties' desire to continue the quality of goods and services provided in
connection with the Xxxx and to maintain the goodwill associated therewith.
2
V. TERM AND TERMINATION.
5.1 Term. This Agreement and the licenses granted hereunder shall
----
continue for so long as Ruby Tuesday (Georgia) owns rights in the Xxxx or until
otherwise terminated as provided herein. In the event Ruby Tuesday (Georgia)
abandons or otherwise loses its rights in and to the Xxxx so as to prevent the
continued license of the Xxxx by MHCI, MHCI's rights in the Xxxx shall not
thereby be abandoned, and it shall be deemed to have established ownership
rights in the Xxxx by virtue of this Agreement and MHCI's use of the Xxxx.
5.2 Termination by MHCI. MHCI may, for its convenience, terminate this
-------------------
Agreement and the license hereunder upon written notice to Ruby Tuesday
(Georgia).
5.3 Termination by Ruby Tuesday (Georgia). Ruby Tuesday (Georgia) may
-------------------------------------
terminate this Agreement and the license granted to MHCI hereunder if MHCI
utilizes the Xxxx in connection with Fine Dining Services and fails to cease
such use within ninety (90) days following written notice from Ruby Tuesday
(Georgia) of its objection to such use.
5.4 Termination by Mutual Agreement. This Agreement may be terminated at
-------------------------------
any time upon mutual written agreement of the Parties.
VI. REMEDIES. The Parties hereby acknowledge that there is no adequate remedy
at law for failure to comply with the provisions of this Agreement and that such
failure would cause immediate harm that would not be adequately compensable in
damages, and therefore agree that the covenants herein may be enforced with
equitable remedies, including, without limitation, specific performance and
injunctive relief, without proof of money damages, in each case without limiting
any remedies available at law. Each Party expressly agrees that it will submit
to specific performance as a remedy in the event that it violates the
restrictions on its use of the Xxxx imposed by this Agreement.
VII. MISCELLANEOUS.
7.1 Assignment; Sublicensing. The licenses granted herein may be assigned
------------------------
or transferred to any party succeeding to all or any material part of the
business of MHCI, provided that the assignee or transferee shall assume the
obligations herein in writing and promptly notify Ruby Tuesday (Georgia) of the
same. The licenses shall not be otherwise assignable by MHCI without the
express written consent of Ruby Tuesday (Georgia), which consent shall not be
unreasonably withheld. Either Party may sublicense its rights hereunder to
third parties, provided, however, that the scope of any such sublicense shall be
in writing and shall be expressly limited to the scope of the sublicensing
Party's rights under this Agreement. The provisions of this Agreement,
including, without limitation, the licenses granted herein to MHCI, shall be
binding upon, inure to the benefit of and be enforceable by the Parties and
their respective successors, permitted assigns or sublicensees.
3
7.2 Entire Agreement. This Agreement shall constitute the entire
----------------
agreement between the Parties with respect to the subject matter hereof and
shall supersede all previous negotiations, commitments and writings with respect
to such subject matter.
7.3 Notices. All notices and other communications hereunder shall be in
-------
writing and hand delivered or mailed by registered or certified mail (return
receipt requested) or sent by any means of electronic message transmission with
delivery confirmed (by voice or otherwise) to the Parties at the following
addresses (or such other addresses for a Party as shall be specified by like
notice) and will be deemed given on the date on which such notice is received:
To Ruby Tuesday, Inc.:
Ruby Tuesday, Inc.
0000 Xxxxxxxx Xxxxx
X.X. Xxx 000000
Xxxxxx, Xxxxxxx 00000
Attn: General Counsel
To Xxxxxxxx Health Care, Inc.:
Xxxxxxxx Health Care, Inc.
0000 Xxxxxxxxx Xxxx
Xxxxx 000
Xxxxxxx, Xxxxxxx 00000
Attn: General Counsel
7.4 Waivers. The failure of any Party to require strict performance by
-------
the other of any provision in this Agreement will not waive or diminish the
first Party's right to demand strict performance thereafter of that or any other
provision hereof.
7.5 Amendments. This Agreement may not be modified or amended except by
----------
an agreement in writing signed by both Parties.
7.6 Governing Law. This Agreement shall be governed by and construed in
-------------
accordance with the laws of the State of Georgia.
7.7 Severability. In the event that one or more of the provisions
------------
contained in this Agreement should be held invalid, illegal or unenforceable in
any respect, the validity, legality and enforceability of the remaining
provisions contained herein shall not in any way be affected or impaired
thereby. The Parties shall endeavor in good faith to replace the invalid,
illegal or unenforceable provision with a valid provision which comes as close
as possible to the intent and effect of the invalid, illegal or unenforceable
provision.
4
7.8 Counterparts. This Agreement may be executed in one or more
------------
counterparts, all of which shall be considered one and the same agreement.
IN WITNESS WHEREOF, the parties hereto have duly executed this Agreement as
of the day and year first above written.
RUBY TUESDAY (GEORGIA), INC.
By: /s/ J. Xxxxxxx Xxxxxxxxxx
------------------------------
Name: J. Xxxxxxx Xxxxxxxxxx
------------------------------
Title: Vice President
------------------------------
XXXXXXXX HEALTH CARE, INC.
By: /s/ J. Xxxxxxx Xxxxxxxxxx
------------------------------
Name: J. Xxxxxxx Xxxxxxxxxx
------------------------------
Title: Vice President
------------------------------
5
