EXHIBIT 10.47
LICENSE AGREEMENT
THIS LICENSE AGREEMENT (this "Agreement") is made as of the 23rd day of
October, 1998, by and between XXXX XXXXXXXXX ("Xxxxxxxxx"), and GARGOYLES,
INC., a Washington corporation ("Gargoyles").
RECITALS
A. Gargoyles designs, assembles, markets and distributes a broad range of
sunglasses and eyewear products.
X. Xxxxxxxxx is a world-class driver and NASCAR professional.
C. Subject to the terms and conditions of this Agreement, Gargoyles desires
to obtain the services of Xxxxxxxxx in connection with the marketing and sale
of its products, and Xxxxxxxxx desires to assist Gargoyles in such efforts.
AGREEMENT
NOW, THEREFORE, in consideration of the premises and the mutual agreements
contained herein, the parties hereto hereby agree as follows:
1. Product Description.
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The products that are the subject of this Agreement include GARGOYLES
PERFORMANCE EYEWEAR brand sunglasses and related products (the "Products").
2. License.
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Subject to the terms and conditions of this Agreement, Xxxxxxxxx hereby
grants to Gargoyles an exclusive worldwide license to adapt, distribute,
perform, reproduce and use Xxxxxxxxx'x name, likeness, autograph and voice on
the Products and/or in advertisements, commercials, packaging, signs and other
advertising and promotional formats, materials or media to advertise, market,
promote and sell the Products throughout the world. Xxxxxxxxx will not
endorse, wear, or support, or authorize or permit any third party to use his
name, likeness, autograph or voice in connection with any other sunglasses
anywhere in the world during the term of this Agreement. Notwithstanding the
foregoing, Gargoyles acknowledges that Xxxxxxxxx does not wear a Gargoyles
Product while driving during racing events, and Gargoyles agrees that
Xxxxxxxxx'x use of another product during races is not a violation by Xxxxxxxxx
of this Agreement.
3. Term; Termination of Prior Agreement.
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Subject to earlier termination as described herein, the term of this
Agreement shall commence on January 1, 1999 and shall expire on December 31,
2001. Upon the execution of this Agreement by Gargoyles and Xxxxxxxxx, that
certain License Agreement dated as of August 14, 1996 by and between Xxxxxxxxx
and Gargoyles shall terminate as of December 31, 1998 and shall be of no
further force or effect and shall be replaced in its entirety by this Agreement
effective as of January 1, 1999.
4. Advertising Materials.
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Gargoyles shall be responsible for producing the advertising and
promotional materials in any form or medium (e.g. publicity photographs,
advertisements, commercials, contests, film or video footage, etc.) deemed
necessary in connection with the marketing of the Products. Prior to
commercial production and distribution of any such materials using the name,
likeness, autograph or voice of Xxxxxxxxx, Gargoyles shall submit to Xxxx
Xxxxxxxxx, Inc. for its review and written approval on behalf of Xxxxxxxxx the
form of each item containing any such name, likeness, autograph or voice of
Xxxxxxxxx. Xxxx Xxxxxxxxx, Inc. shall not withhold its approval unreasonably
and shall use its best efforts to notify Gargoyles of its approval or
objections within 14 business days of receipt of such promotional materials.
Any approved materials may also be used by Gargoyles in company literature,
annual reports or other investor-related information.
5. Consideration.
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As consideration for the grant of the license, Gargoyles shall pay to
Xxxxxxxxx certain fees and royalties as set forth below:
5.1 Annual License Fee.
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Gargoyles shall pay Xxxxxxxxx an annual license fee of *** Dollars
($***) payable in two equal installments of $*** on each January 1 and July 1
during the term of this Agreement.
5.2 Royalties.
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Gargoyles will pay Xxxxxxxxx a royalty on sales of Xxxxxxxxx
signature series sunglasses, namely the XXXXXXXXX GOLD MEDALIST CLASSIC and
`85's, and the XXXXXXXXX BLACK/BLACK ICE CLASSIC AND 85'S, in accordance with
the following schedule:
***% of net sales on first 20,000 units sold;
***% of net sales on units 20,001 to 30,000;
***% on units sold over 30,000.
For purposes of this paragraph 5.2, "net sales" is defined as Gargoyles' list
wholesale price for the Products less dealer discounts and adjustments for
Product returns.
5.3 Payment of Royalties and Accounting.
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Royalty payments shall be calculated quarterly and paid within 30
days after the end of each calendar quarter. With each royalty payment made to
Xxxxxxxxx, Gargoyles shall submit a full and accurate statement showing the sku
number of the Products sold, the quantity sold, the price charged, and the
corresponding royalty amount. Royalty payments made more than ten days after
the due date shall bear interest at the rate of twelve percent (12%) per annum.
6. Photographic Sessions; Personal Appearances.
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During each year of this Agreement, Xxxxxxxxx shall be available for at
least one (1) day as mutually scheduled by the parties for filming,
photographic, and recording sessions as may be reasonably necessary to produce
promotional materials. Each year Xxxxxxxxx also will use his best efforts to
sign approximately 100 promotional items furnished by Gargoyles. Gargoyles
acknowledges and agrees with Xxxxxxxxx that any autographed items and other
results of such filming, photographic or recording sessions are not for resale
and may be used by Gargoyles for promotional purposes only. In addition,
Xxxxxxxxx will make one (1) personal appearance (of approximately four hours
duration) in each calendar year during the term of this Agreement. Such
personal appearance will be in a limited, controlled access and secure area at
such promotional events as may be mutually agreed upon by Xxxxxxxxx and
Gargoyles to assist Gargoyles in promoting Products at such event.
7. Promotional Efforts of Gargoyles and Xxxxxxxxx.
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Throughout the term of this Agreement, Gargoyles agrees to aggressively
promote and market Xxxxxxxxx and his image in connection with the marketing of
its Products. In addition, Gargoyles agrees to participate with other
Xxxxxxxxx licensees in cross-promotional efforts related to the Products.
Throughout the term of this Agreement Xxxxxxxxx will exert his best efforts to
promote and publicize the Products. Xxxxxxxxx will not disparage or criticize
the Products. Xxxxxxxxx will wear the Products at all times when it is
convenient and appropriate for him to do so, and Xxxxxxxxx will not publicly
wear any sunglass products that have not been manufactured by Gargoyles (except
during races as described in paragraph 2 hereof).
8. Personal Sunglasses.
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Gargoyles will make available to Xxxxxxxxx and his immediate family, at no
charge, a reasonable number of Products for personal use during the term of
this Agreement.
9. Press Release.
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Upon the signing of this Agreement, Gargoyles will issue a press release
announcing this Agreement and Gargoyles and Xxxxxxxxx'x continuing
relationship. Gargoyles will provide Xxxxxxxxx with a copy of the press
release for his review and approval before it is issued.
10. Representations And Warranties.
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Xxxxxxxxx represents to Gargoyles that: (i) he has full capacity, right
and authority to enter into this Agreement and to be legally bound hereby; and
(ii) there are no other agreements to which he is a party or is bound that
conflict with this Agreement or with his ability to perform his obligations
under this Agreement. Gargoyles represents that it has: (i) the staff,
knowledge and experience to market the Products in a suitable commercial
manner; and (ii) the right and authority to enter into this Agreement and to be
legally bound hereby.
11. Confirmation of Authority.
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If any manufacturer, advertiser or other person or entity questions the
authority of Gargoyles to use Xxxxxxxxx'x name, likeness, autograph or voice as
authorized under this Agreement, upon Gargoyles' request, Xxxxxxxxx promptly
will execute such additional documents or make such communications as may be
reasonably necessary to confirm Gargoyles' authority.
12. Ownership.
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Xxxxxxxxx acknowledges that the Products are being developed and
customized as Gargoyles' eyewear products. Except for Xxxxxxxxx'x rights in
and to his name, likeness, autograph, and voice as used on a Product or related
materials, Gargoyles retains ownership of, and Xxxxxxxxx has not rights in and
to, any patent, copyright, trademark, trade secret or other intellectual
property rights in or used in connection with the manufacture, sale or use of
the Products or any related materials. Any contribution made by Xxxxxxxxx with
respect to any Product or related materials to the extent permitted by law
shall constitute "works made for hire". Xxxxxxxxx will assign, and does hereby
assign to Gargoyles, any and all right, title and interest he may have in the
Products and such related materials not deemed to be "works made for hire".
Xxxxxxxxx will cooperate with Gargoyles in the transferring to Gargoyles and
registering of all such right, title and interest in such intellectual property
rights and to execute and deliver any necessary documents to effect the same.
13. Default and Termination
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13.1 Events of Default.
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Either party may, in its discretion, terminate this Agreement and/or
exercise any other right or remedy available to it under applicable law,
including, without limitation, the right to recover damages if the other party
breaches or is in default under any provision of this Agreement, and such
breach or default is not cured within ten (10) days after written notice
thereof shall have been given to such defaulting party by the other party,
which notice shall specify the event or events constituting the default or
breach hereof.
13.2 Death; Disability; Retire from Racing.
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Gargoyles may terminate this Agreement by written notice to Xxxxxxxxx
upon the occurrence of any of the following events: (i) the death or permanent
disability of Xxxxxxxxx, (ii) Xxxxxxxxx shall make his best efforts to continue
to endorse Gargoyles as a car owner should he decide to retire prior to the
term of this Agreement, or (iii) Xxxxxxxxx becomes the subject of any
significant adverse publicity, including, but not limited to, publicity
relating to a felony criminal conviction or moral turpitude, such that
Xxxxxxxxx'x name and persona, in the reasonable discretion of Gargoyles, are no
longer conducive to the promotion of the Products.
13.3 Post Termination.
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Upon the expiration or termination of this Agreement, the license set
forth in paragraph 2 hereof shall automatically terminate and, except as
expressly provided herein, neither party shall have any further obligation,
both in terms of payments (other than amounts earned hereunder before such
termination) or performance, whatsoever under this Agreement. Notwithstanding
the foregoing, if this Agreement expires or is terminated for any reason other
than a breach or default of this Agreement by Gargoyles, Gargoyles and its
resellers may for a period not to exceed six (6) months continue to promote,
distribute, use and sell any Products and Product promotional material prepared
before such expiration or termination, provided Gargoyles continues to pay
Xxxxxxxxx royalties for such Product sales as provided in paragraph 5.2 hereof.
14. Right of First Approval.
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At least sixty (60) days before the expiration of the term of this
Agreement, Gargoyles and Xxxxxxxxx shall begin discussions for a renewal of
this Agreement for an additional period. If the parties are unable to reach
agreement, Xxxxxxxxx may negotiate an endorsement agreement with other sunglass
manufacturers but shall not enter into an agreement with any third party during
the three (3) month period after the expiration of the term of this Agreement
without first providing Gargoyles the right to match the terms of such
agreement. If Gargoyles elects to match such terms, Gargoyles and Xxxxxxxxx
shall promptly enter into such agreement in lieu of Xxxxxxxxx entering into the
agreement with such other manufacturer.
15. Miscellaneous.
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15.1 Relationship of the Parties.
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The relationship of Xxxxxxxxx to Gargoyles shall be that of an
independent contractor, and all acts performed by Xxxxxxxxx pursuant to this
Agreement during its term shall be deemed to be performed in his individual
capacity as an independent contractor and not as an agent or employee of
Gargoyles.
15.2 Notices.
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All notices required or permitted hereunder shall be given in writing
and shall be delivered by (i) hand delivery, (ii) overnight receipted courier
service, (iii) registered or certified mail, postage prepaid, or (iv)
telephonically confirmed facsimile transmission to the addresses or facsimile
numbers set forth below or to such other addresses or facsimile numbers as
either party shall designate in writing. Notices given in accordance with this
paragraph shall be effective upon receipt or when receipt is refused.
If to Xxxxxxxxx: Xxxx Xxxxxxxxx, Inc.
0000 Xxxxxx Xxxxx Xxx.
Xxxxxxxxxxx, XX 00000
Attn: Xxx Xxxx
Tel: 000-000-0000
Fax: 000-000-0000
If to Gargoyles: Gargoyles, Inc.
0000 X. 000xx Xxxxxx
Xxxx, Xxxxxxxxxx 00000
Attn: General Counsel
Tel: 000-000-0000
Fax: 000-000-0000
15.3 No Waiver.
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The failure of either party hereto to insist at any time upon the
strict observance or performance of any of the provisions of this Agreement or
to exercise any right or remedy as provided in this Agreement shall not impair
any such right or remedy or be construed as a waiver or relinquishment thereof
with respect to subsequent defaults. Every right and remedy given by this
Agreement to the parties hereto may be exercised from time to time and as often
as may be deemed expedient by the parties hereto, as the case may be.
15.4 Entire Agreement.
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This Agreement contains the entire agreement between the parties, and
supersedes all prior understandings, agreements or arrangements, oral or
written, between the parties, with respect to the subject matter hereof,
including that certain License Agreement by and between Gargoyles and Xxxxxxxxx
dated August 14, 1996, which, upon the commencement of the term of this
Agreement, shall terminate and shall be of no further force or effect. This
Agreement shall not be modified or amended except by written instrument signed
by both parties. This Agreement shall be binding upon and shall inure to the
benefit of the heirs, personal representatives, estates, successors and assigns
of the parties hereto.
15.5 Governing Law.
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This Agreement shall be governed by the laws of the state of
Washington without reference to its choice of law rules.
15.6 Attorneys' Fees.
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If either party brings an action to enforce this Agreement, the
prevailing party in such action shall be entitled to recover from the other all
costs and disbursements incurred in connection therewith, including reasonable
attorneys' fees.
15.7 Approvals.
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All approvals and consents required under this Agreement shall not be
unreasonably withheld and must be requested and responded to in writing.
15.8 Counterparts.
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This Agreement may be executed in counterparts, each of which shall
be an original, but all of which together shall constitute but one and the same
instrument.
IN WITNESS WHEREOF, the parties have caused this License Agreement to be
executed and delivered as of the date and year first above written.
/s/ Xxx Xxxx, President of Xxxx Xxxxxxxxx, Inc.
and attorney-in-fact for Xxxx Xxxxxxxxx
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XXXX XXXXXXXXX
GARGOYLES, INC., a Washington corporation
By /s/ Xxx Xxxxxxxxxxx
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Xxx Xxxxxxxxxxx, CEO and CFO
