LICENSE AGREEMENT
THIS AGREEMENT is entered into as of September 30, 1996, by and between
the Zoological Society of San Diego, a California corporation ("Licensor") with
mailing address at X.X. Xxx 000, Xxx Xxxxx, Xxxxxxxxxx 00000-0000, and Healthy
Planet Products, a Delaware corporation ("Licensee"), with principal offices at
0000 Xxxxxxxxx Xxxxxx, Xxxxxxxx, XX 00000, with reference to the following
facts:
RECITALS
A. Licensor is the owner of the following trade names, trademarks and
service marks: "Zoological Society of San Diego," "Center for Reproduction of
Endangered Species" and "CRES" (which are herein referred to as the "Licensed
Marks").
B. Licensor has used certain of the Licensed Marks as trade names for
its non-profit association and to sponsor, endorse, sell and license the sale of
many goods and services, including without limitation books, magazines, wildlife
films, zoological services, ecology workshops, educational services and
materials providing instruction in conservation, nature, ecology and
environmental awareness.
C. Licensor desires to increase its membership and to promote
conservation and raise funds for conservation and expects that the promotion of
Licensed Goods by Licensee will further such purposes.
D. Licensee desires to obtain from Licensor a license to use the
Licensed Marks in connection with the manufacturing, marketing, and sale of
Nature Baby(R): greeting cards, excluding holiday cards, stationery, tablets,
journals, bookmarks, matted prints, posters, and magnets (the "Licensed Goods").
E. Licensor and Licensee desire to safeguard, promote and maintain the
reputation associated with the Licensed Marks and to cause all use of the same
by Licensee to enure to the benefit of Licensor.
NOW, THEREFORE, in consideration of the premises and mutual covenants
herein contained, the parties agree as follows:
1. License Granted.
1.1 Grant of License. Subject to the terms and conditions of
this Agreement, Licensor grants to Licensee a non-exclusive, non-transferable
license throughout the United States and Canada (the "Territory") to use the
Licensed Marks solely for the purpose of manufacturing, marketing and sale of
Licensed Goods in the retail market, subject to the limitations, terms and
conditions set forth herein.
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1.2 Term.
1.2.1 Initial Term. The term of this Agreement and the license
granted hereunder shall commence upon the date first set forth above and shall
continue until September 30, 1999 unless sooner terminated as provided herein.
1.3 Limitations on License.
1.3.1 General. Licensee acknowledges that Licensor grants
licenses to numerous persons for use of the Licensed Marks for the manufacture,
sale, endorsement or promotion of various goods and services, and that the
definition of Licensed Goods is to be strictly construed to avoid any conflict
with rights of other present or prospective licensees of Licensor. Licensor may
license a similar type of goods as Licensed Goods, or a portion thereof, at
other price ranges or of another type of construction or design or sizes or
materials, or for other methods of sale or distribution to third parties, since
such goods are not "Licensed Goods" as herein defined.
1.3.2 Rights Retained by Licensor. Licensor retains, and this
Agreement is subject to, the absolute right of Licensor to create, make, have
made, manufacture, promote, market, distribute and sell the same type of goods
as are described herein as Licensed Goods for sale by or on behalf of Licensor
at stores and other outlets on the premises of Licensor or at other locations or
through catalog and other sales promotional programs conducted by or on behalf
of Licensor.
1.4 No Sublicenses. Licensee may not grant sublicenses with
respect to any of the rights granted hereunder and the license granted herein is
not transferable by operation of law or otherwise, is indivisible and
non-assignable and may not be encumbered without Licensor's prior written
approval.
1.5 Licensor's Proprietary Rights. Licensee acknowledges
Licensor's exclusive right, title and interest in and to the Licensed Marks, and
acknowledges that the use of the Licensed Marks in connection with the Licensed
Goods or otherwise without the benefit of a license agreement is an infringement
of the Licensed Marks and constitutes unfair competition. During the term of
this Agreement and thereafter, Licensee will not contest Licensor's exclusive
right, title and interest in and to, or the validity of, the Licensed Marks.
Licensee agrees that Licensor may obtain trademark registration or copyright the
Licensed Marks for the class of goods which includes the Licensed Goods and
Licensee will cooperate with Licensor in obtaining such registration or
copyright.
1.6 Names of Purchasers. Licensee shall quarterly forward to
Licensor the names of all program customers of Licensed Goods.
2. Use of Licensed Marks.
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2.1 Scope of Use. Licensee will not use the Licensed Marks or
any xxxx or name similar thereto other than in connection with the promotion and
sale of Licensed Goods pursuant to this Agreement.
2.2 Licensee Status. Licensee will not in any manner represent
that it has any interest in the Licensed Marks except as a licensee of Licensor.
Use of the Licensed Marks by Licensee shall not confer upon Licensee any right,
title or interest in or to the Licensed Marks, but all such use by Licensee
shall enure to the benefit of Licensor.
2.3 Quality Control; Compliance with Laws. Licensee agrees
that the Licensed Goods shall be of high standards of quality, shall be safe,
adequate and suited to their intended use, shall enhance the Licensed Marks,
shall be created, promoted, sold and distributed in accordance with all
applicable federal, state and local laws and regulations, and that the policy of
sale, distribution and utilization by Licensee shall be of high standards and
shall in no manner adversely reflect upon the Licensed Marks or the good name
and reputation of Licensor.
2.4 Licensor Approval of Advertising, etc. The quality, art
work and style of such Licensed Goods, as well as of any labels, cartons,
containers, packaging or wrapping materials, and promotional, advertising or
sales materials relating to Licensed Goods and any modifications thereof, shall
be subject to prior written approval of Licensor, which will not be unreasonably
withheld. To this end, before commercially producing, selling or distributing
any Licensed Goods or utilizing or publishing any promotional materials in
connection therewith, Licensee shall furnish to Licensor or to an authorized
representative of Licensor as Licensor shall direct in writing, free of cost,
for its written approval, samples of each of the Licensed Goods and of cartons,
labels, containers, packaging and wrapping materials and promotional,
advertising or sales materials, relating to Licensed Goods to be used in
connection therewith. Licensor shall have ten (10) working days to review
materials, and must respond to Licensee in writing the approval, disapproval
and/or corrections that need to be made. After samples have been approved
pursuant to this section, Licensee shall not depart therefrom in any material
respect without Licensor's prior written consent. From time to time during the
term of this Agreement, in order for Licensor to insure that the standards of
quality set forth above are being maintained, Licensee, upon Licensor's
reasonable request, shall furnish to Licensor, or to an authorized
representative of Licensor, as Licensor shall direct in writing, free of cost,
current samples of each type of Licensed Goods being manufactured, sold, or
distributed by Licensee hereunder, together with any cartons, labels,
containers, packaging and wrapping materials and promotional, advertising or
sales materials relating to Licensed Goods used in connection therewith. If such
samples do not meet the above standards, Licensor may require Licensee to make
such modifications as will satisfy such standards and Licensee shall comply
therewith.
2.5 Legends. The following legend shall appear on all Licensed
Goods, labels, cartons, containers, signs, packaging, wrapping, advertising and
sales and promotional materials or the like which bear the Licensed Marks:
""Zoological Society of San Diego," "Center for Reproduction of Endangered
Species" or "CRES" (as applicable) is a trademark of the Zoological Society of
San Diego." Whenever the Licensed Marks appear on Licensed Goods, labels,
cartons, containers, signs, packaging, wrapping, advertising, sales and
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promotional materials or the like, each such use of the Licensed Marks shall be
followed by a TM symbol or other registration notice in the form set forth on
Exhibit A attached hereto or as Licensor shall otherwise notify Licensee from
time to time.
2.6 Inspection. Licensor shall have the right, at its expense,
to visit and inspect the offices and plants of Licensee at reasonable times
during regular business hours.
2.7 Additional Covenants. Licensee also covenants and warrants
that: (a) it will use best commercial efforts to market and sell high quality
Licensed Goods; (b) it will not create any expenses chargeable to Licensor; and
(c) it will not use Licensed Goods for combination sales, premiums, giveaways or
any other use or disposition, without the prior written consent of Licensor,
which consent will not be unreasonably withheld.
3. Royalties.
3.1 Percentage Royalties. As consideration for the license
herein granted, Licensee agrees to pay Licensor royalties equal to three percent
(3%) of the adjusted gross invoice price (which means the gross price of
Licensed Goods sold by or on behalf of Licensee, less deductions for returns and
customary trade discounts in connection with such sales) or the bona fide fair
market value price of Licensed Goods disposed of as described in Section 3.3
hereof, whichever is greater. Such royalties shall be payable within thirty (30)
days following the close of each calendar quarter for sales during such quarter,
beginning with the calendar quarter in which the first sale or disposition of
Licensed Goods occurs.
3.2 Definition of Sold. Licensed Goods shall be considered
sold when shipped, billed, or paid for, whichever first occurs.
3.3 Sales at Less Than Fair Market Value. Sales or
distributions of Licensed Goods at less than the bona fide fair market value
price (for example, introductory offers, samples, or sales at special prices)
shall be valued at the bona fide fair market value price, which means the price
which would have been charged in a bona fide arm's length sale.
3.4 Minimum Royalty. Licensee will guarantee the payment to
Licensor of a minimum royalty of Five Thousand Dollars ($5,000) for the term
hereof. The Five Thousand Dollar guarantee ($5,000) shall be payable upon
execution of this Agreement. The minimum royalty payment paid to Licensor shall
be credited against the royalty obligation of Licensee described in Section 3.1.
hereof, as such obligation accrues.
3.5 Additional Consideration. Licensee agrees that, as a
condition of the license granted from Licensor to Licensee in subsection 1.1
("Grant of License"), Licensee shall include a pre-approved statement about CRES
(Exhibit B), subject to space availability. The CRES logo will be included in
catalogs, sell sheets, and at point of sale subject to product and packaging
size constraints.
4. Records and Payments.
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4.1 Periodic Statement. Licensee shall maintain accurate
records showing the quantity and sales price of Licensed Goods manufactured,
sold or otherwise disposed of by Licensee. Within 30 days after the end of each
calendar quarter, Licensee shall deliver to Licensor a complete and accurate
statement in writing, duly certified to be correct by an officer of Licensee
relating to the preceding calendar quarter which will state:
(a) the quantity of Licensed Goods sold or otherwise
disposed of during the preceding quarter, indicating the nature of such other
disposition;
(b) the gross invoice price or fair market value, as
applicable, of all Licensed Goods sold or disposed of during such quarter, the
dollar amounts of all returns, customary trade discounts, sales taxes, and
shipping costs paid during such quarter, and the adjusted gross invoice price of
all Licensed Goods sold during such quarter;
(c) the amount of any credit against accrued
royalties for such quarter permitted under Section 4.4 hereof; and
(d) an itemized statement of royalties due Licensor
for sales and dispositions made during such quarter.
Receipt or acceptance by Licensor of any statements
referred to herein shall not preclude Licensor from questioning the correctness
of any such statements and/or royalties paid or payable.
4.2 Examination of Books and Records. Licensor may examine the
books and records of Licensee during normal business hours and at reasonable
times with prior notice through Licensor's own employees or representative(s) to
obtain or verify the information described in Section 5.1; provided, however, if
it is determined that Licensor is entitled to royalties in the amount which is
equal to or greater than two percent (2%) of the sums reported by Licensee and
as due Licensor, then Licensee shall be obligated to pay and shall pay to
Licensor the costs and expenses directly or indirectly incurred by Licensor in
the examination of the books and records of Licensee. Such costs and expenses as
herein provided shall not limit any other damages, costs or expenses, or
remedies to which Licensor may be entitled.
5. Indemnity. Licensee hereby agrees to indemnify, defend and hold
harmless Licensor from and against any and all losses, expenses, damages,
injuries, liabilities and claims (including reasonable attorney's fees) whether
based upon strict liability, negligence, tort, contract or otherwise, arising
out of or relating to (i) the manufacture, sale, use, advertising, promotion,
offering for sale, or distribution of Licensed Goods, (ii) the merchantability,
quality, design, nonconformity or fitness for a particular purpose of the
Licensed Goods, (iii) any claim that the use of the Licensed Goods violates any
copyright, trademark, right of privacy, or similar right or contains anything
libelous or defamatory or (iv) the breach by Licensee of any of the terms or
conditions of this Agreement.
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6. Insurance. Licensor shall be named as an added insured in a general
liability all risks insurance policy issued by reliable and licensed insurers,
which policies shall be maintained by Licensee during the term of this Agreement
covering liability, including product liability, relating to the Licensed Goods
and those risks enumerated in Section 6 hereof, in amounts customary in the type
of business conducted by Licensee. Such policies shall require delivery of
written notice to Licensor at least thirty (30) days prior to any expiration,
cancellation or decrease in coverage. Licensee shall forward to Licensor proof
of such insurance coverage, and that it is in full force and effect at such
times as reasonably requested by Licensor.
7. Termination.
7.1 Termination by Licensor. Licensor shall have the right to
terminate this Agreement and the license granted hereunder as follows:
7.1.1 Upon a breach by Licensee of any of the terms
or conditions of this Agreement, which breach is not cured within thirty (30)
days after delivery of notice specifying such breach; or
71.2 In the event Licensee shall apply for or consent
to the appointment of a receiver, trustee or liquidator or shall otherwise be
the subject of any bankruptcy, reorganization, or insolvency proceedings, or
makes an assignment for the benefit of creditors, or becomes insolvent or
discontinues substantially all its business, or a receiver is appointed for it
or its business.
7.2 Partial Termination; Reduction of Rights. As a portion of
the consideration for the grant of the license described herein, Licensee has
agreed to diligently and continuously sell all categories of Licensed Goods
throughout the Territory during the term hereof. In the event that Licensee
shall fail to sell a reasonable amount of Licensed Goods, any of each category
thereof as evidenced by the payment to Licensor of a commercially reasonable
amount of sales-based royalties, within a portion of the Territory, during a
continuous period of more than one hundred eighty (180) days, Licensor shall
have the right upon delivery of notice to Licensee, to terminate this Agreement
and the license granted hereunder, as to such category of Licensed Goods
identified in such notice.
7.3 Sale of Licensed Goods Following Expiration or
Termination. Licensee shall cease to manufacture or sell the Licensed Goods
forthwith following expiration or termination of this Agreement [or as required
due to any partial termination or reduction under Section 8.2 hereof].
Notwithstanding the foregoing, upon the expiration of this Agreement at its
scheduled expiration date without renewal, and if Licensee is not in breach of
any of the terms or conditions of this Agreement as of such date, if Licensee
has an inventory of any Licensed Goods (including finished goods or goods in
process) as of the date of such expiration, Licensee may thereafter sell such
Licensed Goods subject to all the terms and conditions of this Agreement,
including, but not limited to, maintenance of quality, the payment of royalties
and submission of reports; provided, however, in no event shall Licensee sell
any Licensed Goods after the expiration of six (6) months following expiration
of this Agreement, and further
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provided, that Licensee's right to sell Licensed Goods during such period shall
be non-exclusive. Within thirty (30) days following any expiration or
termination of this Agreement, Licensee shall advise Licensor in writing of the
type and quantity of any inventory of Licensed Goods still held by Licensee.
7.4 Use of Licensed Marks After Termination. Except as
provided in Section 7.3 hereof, Licensee shall not use the Licensed Marks or any
xxxx similar thereto after expiration or termination of this License Agreement.
7.5 Continuing Obligations. The continuing obligations of
Licensee, including but not limited to those under subsection 1.5 and 1.6, and
Sections (including subsections thereof) of 2, 3, 4, 5 and 6, shall survive
expiration or termination of this Agreement, provided that Licensee's
obligations under Section 1.6, 2.3 through 2.6, 4 and 5 shall not continue after
the cessation of Licensee's sales of Licensed Goods.
8. Infringement and Other Proceedings. The decision of Licensor on all
matters concerning its Licensed Marks shall be final and conclusive on Licensee.
Licensor may, in the exercise of its sole discretion, defend its Licensed Marks
as its sole cost and expense, in which case Licensee shall provide Licensor,
without cost to Licensor, all reasonable assistance requested by Licensor in
connection with any such action or proceeding. If Licensor shall fail or refuse
to defend its Licensed Marks, then on thirty (30) days' written notice to
Licensor, Licensee shall have the right to defend such Licensed Marks at its own
cost and expense. Licensor shall not be liable to Licensee for any loss or
damage suffered by Licensee by reason of the use of the Licensed Marks or as a
result of any litigation or other proceedings involving the Licensed Marks.
Licensee shall promptly advise Licensor of any use in the Territory of any xxxx
which may infringe the Licensed Marks. Licensor may, in the exercise of its sole
discretion, take or decline to take any action, legal, equitable or otherwise,
which Licensor deems appropriate with respect to such alleged infringement. In
all such events, Licensee shall provide Licensor, without cost to Licensor, all
reasonable assistance requested by Licensor in connection with such action or
proceeding.
9. Arbitration. Any controversy or claim arising out of or relating to
the terms and conditions of this License Agreement, either party's performance
or failure to perform hereunder or any other claim or dispute arising out of or
resulting from this License Agreement, or the propriety of the conduct of the
parties with respect thereto, shall be settled by binding arbitration in
accordance with the Commercial Arbitration Rules of the American Arbitration
Association ("AAA"), and the procedures set forth below. In the event of any
inconsistency between such rules and the procedures set forth below, the
procedures set forth shall control. Judgment upon the award rendered by the
arbitrators may be enforced in any court having jurisdiction thereof.
(a) Either party shall have the right to institute the
procedure designated in this Section by making written demand on the other
party, specifying in reasonable detail the nature of the dispute and the intent
to arbitrate. The parties shall promptly select the designated
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arbitrator(s) within the next ten (10) days. If the other party fails to respond
within ten days after receiving said written demand, the arbitration shall
nevertheless proceed.
(b) Location. The location of the arbitration shall be in San
Diego, California.
(c) Selection of Arbitrators. The arbitration shall be
conducted by a panel of at least one and not more than three neutral arbitrators
who are independent and disinterested with respect to the parties, this
Agreement, and the outcome of the arbitration, and who are intimately familiar
with the licensing industry, and specifically with respect to merchandising and
licensing.
(d) Discovery. Unless the parties mutually agree in writing to
some additional and specific pre-hearing discovery, the only pre-hearing
discovery shall be (a) reasonably limited production of relevant and
non-privileged documents, and (b) the identification of witness to be called at
the hearing, which identification shall give the witness name, general
qualifications and position, and a brief statement as to the general scope of
the testimony to be given by the witness. The arbitrator(s) shall decide any
disputes and shall control the process concerning these pre-hearing discovery
matters. Pursuant to the Rules of AAA, the parties may subpoena witness and
documents for presentation at the hearing.
(e) Case Management. Prompt resolution of any dispute is
important to both parties; and the parties agree that the arbitration of any
dispute shall be conducted expeditiously. The arbitrator(s) is/are instructed
and directed to assume case management initiative and control over the
arbitration process (including scheduling of events, pre-hearing discovery and
activities, and the conduct of the hearing), in order to complete the
arbitration as expeditiously as is reasonably practical for obtaining a just
resolution of the dispute but in any event on or before the expiration of 30
days from the date on which the matter was submitted for arbitration.
(f) Remedies. It is the intent of the parties that the primary
focus of the arbitration shall be the resolution of the dispute brought before
the arbitrators, and that after such resolution that this Agreement will
continue in force and effect. Notwithstanding the foregoing, the arbitrator(s)
may grant any legal or equitable remedy or relief that the arbitrators deem just
and equitable, including without limitation termination of the Agreement,
injunctive relief and provisional remedies, to the same extent that remedies or
relief could be granted by a state or federal court, provided however, that no
punitive damages may be awarded. No court action may be maintained seeking
punitive damages.
(g) Expenses. The expenses of the arbitration, including the
arbitrators' fees, expert witness fees, and attorney's fees, may be awarded to
the prevailing party, in the discretion of the arbitrators, or may be
apportioned between the parties in any manner deemed appropriate by the
arbitrators. Unless and until the arbitrators decide that one party is to pay
for all (or a share) of such expenses, both parties shall share equally in the
payment of the arbitrator's fees as when billed by the arbitrator.
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10. Miscellaneous.
10.1 Notices. All notices and reports in connection with this
Agreement and payments required hereunder, shall be in writing and shall be
given by postpaid registered or certified mail, return receipt requested,
addressed to the addresses set forth in the preamble hereof, or to such other
address as either party may notify in writing to the other party. Notice shall
be deemed given when mailed.
10.2 Costs. All costs and expenses relating to the
manufacture, promotion and sale of Licensed Goods by Licensee shall be paid by
Licensee.
10.3 Entire Agreement; Amendment. This Agreement constitutes
the entire agreement between the parties with respect to the subject matter
thereof. The provisions of this Agreement may not be waived, modified, altered
or amended except by a written document signed by duly authorized
representatives of both parties.
10.4 Governing Law; Forum. This Agreement shall be construed
and interpreted in accordance with the laws of the State of California. Any
litigation or other proceeding to interpret or enforce the provisions of this
Agreement or the parties rights and liabilities arising hereunder shall be
maintained only in the courts in the County of San Diego, California.
10.5 Remedies. Licensee recognizes the importance of the
Licensed Marks to the operations and activities of Licensor and that monetary
damages may not adequately protect or recompense Licensor in the event of breach
of this Agreement by Licensee. Therefore, Licensee acknowledges that Licensor
may seek, in addition to any other legal or equitable remedies available to it,
injunctive or other relief against Licensee and/or others to enforce the terms
and conditions of this Agreement in any court having jurisdiction thereof, to
prevent unauthorized use of the Licensed Marks.
10.6 Damages. Licensor shall in no case be liable for special,
indirect, incidental or consequential damages resulting in any manner from the
licensing of the Licensed Marks, fulfillment of its obligations under this
Agreement, or failure to comply with its obligations under this Agreement.
10.7 Past Due Royalty Payments. In addition to any other
remedies available to Licensor by reason of breach of this Agreement, if
Licensee fails to pay any royalties when due, Licensor may recover from
Licensee, to the extent legally permissible, interest on such unpaid amounts
computed at 2% above the prime rate of Citibank during the applicable period,
and if such rate of interest is not legally permissible, then the rate of
interest shall be the maximum legally permissible.
10.8 No Waiver. Failure of Licensor to insist upon strict
performance of any covenants, terms or conditions of this Agreement, or to
exercise any rights or remedies upon
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default, shall not constitute a waiver or relinquishment of its right to insist
upon strict compliance with this Agreement and to enforce all legal and
equitable rights as to any such default or breach, whether of like or unlike
kind.
10.9 Relationship of Parties. This Agreement does not
constitute, and shall not be construed as, an agency, partnership, or joint
venture between Licensor and Licensee.
10.10 Successors and Assigns; Assignment. This Agreement shall
be binding upon and inure to the benefit of Licensor, its successors and assigns
and may be assigned or transferred without the consent of Licensee. Licensee may
not transfer, assign or encumber this Agreement or any rights hereunder, or
delegate its duties hereunder, without the prior written consent of Licensor
which Licensor may grant or withhold in the exercise of its sole discretion.
10.11 Headings. Section headings used in this Agreement are
for convenience only and shall not be used in the construction or interpretation
of this Agreement.
10.12 Attorney's Fees. In the event of any litigation or other
proceeding to enforce or construe the provisions of this Agreement, the
prevailing party in such proceeding shall be entitled to reasonable attorney's
fees and costs, as fixed by the trier of fact.
10.13 Construction. The language in all parts of this
Agreement shall be in all cases construed according to its fair meaning and not
strictly for or against any of the parties hereto.
10.14 Counterparts. This Agreement may be executed in any
number of identical counterparts, each of which shall be deemed to be an
original, and all of which together shall be deemed to be one and the same
instrument when each party has signed one such counterpart.
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IN WITNESS WHEREOF, the parties, through their duly authorized
representatives, have executed this Agreement as of the date first set forth
above.
LICENSOR:
ZOOLOGICAL SOCIETY OF SAN DIEGO
By: s/Xxxxxxxxx X. Xxxxxx
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Its: Director of Finance
LICENSEE:
Healthy Planet Products
By: s/Xxxxx X. Xxxxxx
-------------------------
Its: President
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EXHIBIT A
Zoological Society of San Diego(R)
Center for Reproduction of Endangered Species(R)
CRES(R)
CRES
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EXHIBIT B
A portion of the proceeds from the sale of this product goes to the Zoological
Society of San Diego's Center for Reproduction of Endangered Species (CRES).
CRES supports endangered species through scientific research, captive
propagation and management, and international field conservation programs.
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