Trademark License and Services Agreement
Exhibit
10.2
This
Trademark License and Services Agreement (this "Agreement") is made as of
September 7, 2006, between Vita Ventures, LLC, a Delaware Limited Liability
Company ("Licensee"), 0 Xxxxxxxxx Xxxxx, Xxxx Xxxxxxxx, Xxx Xxxxxx 00000,
Attention: Xxxxx Xxxxxxx, and G-Nutritional, LLC, a Delaware limited liability
company ("GN" and together with Licensee, the "Parties"), c/o Xxxxxx Xxxxxxx
Enterprises, Inc., 000 Xxxxx Xxxxxx-Xxxxx Xxxx., 0xx Xxxxx, Xxxxxx-Xxxxx, XX
00000, Attention: Xxxxx Xxxxxxxxx. Terms not otherwise defined herein shall
have
the meanings ascribed to them in the Operating Agreement (defined
below).
WHEREAS,
concurrently herewith, Vitaquest International LLC ("VQT") and GN have entered
into a certain Operating Agreement (the "Operating Agreement");
WHEREAS,
GN controls right to use the name and likeness (the "Property") of Xxxxxx
Xxxxxxx ("Celebrity") in connection with the sale of products principally
related to wellness, vitamins and nutritional supplements (the "Products");
WHEREAS,
GN has the power and authority to grant to Licensee the right, privilege and
license to use the Property in connection with the sale of the Products; and
WHEREAS,
Licensee desires to obtain from GN a license to use the Property in connection
with the sale of the Products.
NOW,
THEREFORE, in consideration of the Operating Agreement and the foregoing
premises and for other good and valuable consideration, the receipt and
sufficiency of which is hereby acknowledged, the Parties hereby agree as
follows:
Section
1. Grant.
Subject
to the terms and conditions hereof, GN hereby grants Licensee the world-wide
non-exclusive license to use the Property during the Term (as defined below)
in
connection with the sale of the Products.
Section
2. Services.
2.1. GN
shall
cause Celebrity to perform such services, at no charge except as otherwise
provided herein, for the purpose of shooting one (1) infomercial as may be
approved in advance by GN (the "Services") during the Term. Notwithstanding
any
implication herein to the contrary, in no event will Celebrity be required
to
perform more than three (3) days of services hereunder during the Term (of
which
no more than two (2) days may be consecutive, unless Celebrity otherwise agrees
in writing) in connection with the shooting of the single infomercial, exclusive
of travel time.
2.2. Celebrity
shall perform the Services at times and places reasonably convenient to
Celebrity. Licensee acknowledges that Celebrity shall not be required to perform
services on any Saturday or Sunday, nor to perform services on any Wednesday
outside of Houston or that would conflict with Celebrity's community and
religious obligations on such day.
Section
3. Term
and Termination.
3.1. The
license granted pursuant to this Agreement will commence on the date hereof
and
continue through the term of the Operating Agreement (the "Term"), unless sooner
terminated pursuant to this Agreement or the Operating Agreement. For the
purposes of clarity, this Agreement shall automatically terminate upon
termination of the Operating Agreement for any reason.
3.2. Licensee
may terminate this Agreement by giving written notice to GN in the event that
GN
is in breach of any of its material obligations under this Agreement and such
breach is not cured within thirty (30) days following delivery by Licensee
to GN
of written notice of such breach.
3.3. Without
prejudice to any other rights or remedies available to GN, GN may terminate
this
Agreement at any time by giving written notice to Licensee in the event that
Licensee is in breach of any of its material obligations under this Agreement
or
VQT is in breach of any of its material obligations under the Operating
Agreement and such breach is not cured within thirty (30) days following
delivery by GN to Licensee or VQT, as applicable, of written notice of such
a
breach pertaining to any such obligations hereunder or thereunder; provided,
however, that if Licensee is in breach of (a) any of the approval rights of
GN
hereunder or (b) any of the provisions of Sections 4, 5, 7, 9 or 11 hereunder,
GN may terminate this Agreement immediately by giving written notice to Licensee
(i.e., without the necessity of providing any opportunity to cure).
3.4. Provided
Licensee is not in breach hereof, this Agreement is not terminated, and subject
to GN's rights under the remainder of this Section 3.4, Licensee is entitled
on
a nonexclusive basis to sell finished units of the Products which it may still
have in stock (but it may not manufacture additional Products) for a maximum
period of two hundred forty (240) days after the expiration (but not the
termination) of the Term of this Agreement. Upon expiration of the Term, or
upon
earlier termination for any reason, Licensee agrees that GN shall have the
right
(but not the obligation) to purchase from Licensee all or part of Licensee's
then existing inventory of Products at Licensee's actual manufacturing cost
therefor. If GN elects not to so purchase all or part of such inventory within
two hundred forty (240) days following expiration or termination, Licensee
shall
thereupon immediately destroy such inventory and immediately discontinue any
and
all use of the Property and furnish to GN a certificate of destruction therefor
in affidavit form, duly sworn by an officer of Licensee. Licensor shall have
the
right, at Licensor's election, to have a representative, selected by Licensor,
observe such destruction. Notwithstanding the foregoing, if this Agreement
is
terminated, Licensee shall immediately discontinue any and all use of the
Property upon such termination.
Section
4. Scope
of Use.
Use
of
the Property by Licensee will be limited to use in electronic media, and in
periodicals, newspapers, television, radio and cable broadcasting, the Internet,
printed catalogs and direct mail materials, all solely in connection with the
sale of the Products, and all subject to the terms and conditions hereof,
including, without limitation, Section 9 hereof.
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Section
5. Representations,
Warranties and Covenants.
5.1. GN
warrants and represents that it is the owner of or controls the right to use
the
Property in connection with the sale of the Products, that it has the right
and
power to grant the license granted herein, and that there are no other
agreements or commitments with any other party in conflict herewith. GN further
warrants and represents that to the best of its knowledge the Property does
not
infringe any valid right of any third party.
5.2. Licensee
represents and warrants that it is fully authorized to enter into and perform
this Agreement without violating the legal or equitable rights of any third
party and that this Agreement has been duly and validly executed by Licensee
and
constitutes a valid and binding obligation upon Licensee enforceable against
Licensee in accordance with its terms.
5.3. Licensee
represents, warrants and agrees that it will not knowingly permit, do or commit
any act or thing that would degrade, tarnish or deprecate Celebrity, Xxxxxx
Xxxxxxx Productions, Inc. ("GFPI") or GN, or Celebrity's, GFPI's or GN's public
image in society or standing in the community.
5.4. Licensee
represents, warrants and agrees that any and all incidents, dialogue,
characters, actions, "gags," material, ideas, inventions, ad lib, and other
literary, dramatic and musical material written, composed, submitted, added,
improvised, interpolated and invented and/or used by Licensee pursuant to this
Agreement shall be wholly original and shall not, to the best of its knowledge,
infringe upon or violate any copyright of or the right of privacy or any other
rights of any person or entity and shall not constitute a libel or slander
of
any person, firm or corporation.
5.5. Licensee
represents, warrants and agrees that Licensee will comply with all applicable
laws, regulations, orders, and ordinances in connection with the distribution
of
the Products and any other endeavors contemplated in this Agreement or otherwise
and the engagement of Celebrity's services hereunder.
5.6. Licensee
represents, warrants and agrees that neither Licensee nor any of its
representatives, agents or employees will disclose to any party or utilize
any
confidential or proprietary information obtained hereunder xxxxxxxxx XX, XXXX
or
Celebrity.
Section
6. Indemnity.
6.1. Licensee
hereby indemnifies and holds GN, GFPI and Celebrity and their respective
parents, subsidiaries and affiliates, and the shareholders, members, officers,
directors, employees and representatives of each (collectively, "Licensor
Indemnitees") forever harmless from and against any and all liability, claims
and causes of action, for personal injury or otherwise, arising from Licensee's
activities hereunder or the use of the Property and/or the Products, including
without limitation, their manufacture or distribution, or from infringement
of
any patent, trademark, copyright or other proprietary right (other than a cause
of action relating to the Property) in connection with the Products or any
other
materials created in connection with this Agreement, from any defect whether
related to design, workmanship or materials or any other factor and whether
or
not the Products or such other materials have been approved by GN, from any
claim of a breach or alleged breach of any of Licensee’s
representations,
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warranties
and agreements hereunder, and from any other activity related to the Products
or
any other materials created in connection with this Agreement, which results
in
any Licensor Indemnitee being sued. None of GN, GFPI or Celebrity shall be
liable for loss of profits or consequential damages.
6.2. GN
agrees
to defend, indemnify and hold Licensee, its officers, directors, agents and
employees, harmless against all liabilities, claims, causes of action, costs,
expenses and losses incurred through claims of third parties against Licensee
arising out of GN's breach of any representation or warranty
hereunder.
6.3. As
between Licensee and GN, GN shall be accorded full control of the defense and/or
settlement of any claims (including, without limitation, the right to settle
by
agreeing that Licensee will discontinue distribution of any allegedly infringing
items) and the right to designate counsel.
6.4. The
provisions of this section shall survive the expiration or termination of this
Agreement.
Section
7. Promotion.
During
the Term, GN shall have the right to approve the use by Licensee of any
spokesperson other than Celebrity to promote any products or services of any
of
such entities. Licensee represents and covenants to GN that none of the Products
nor any business operation of Licensee, VQT or Windmill Health Products
currently involves or shall involve the sale or distribution of alcohol or
tobacco products, firearms, political statements or sexual content and that
it
will not use the Property in connection with any product containing, or in
any
other context involving, alcohol, tobacco, firearms, political statements or
sexual content.
Section
8. Maintenance
and Protection of the Property.
Licensee
agrees to inform GN of any encroachment or infringement of the Property which
comes to the attention of Licensee. As between Licensee and GN, any litigation
or other action to police the Property and to xxxxx infringement shall be under
the complete control of GN, and Licensee agrees to cooperate in any such
litigation or action. As between Licensee and GN, GN may retain any money
judgment or settlement in such action, without obligation to Licensee.
Section
9. Approvals.
9.1. The
Products, all packaging and containers (collectively, "Packaging") and all
advertising, sales and other promotional materials and any other matter
containing the Property prepared or otherwise to be used in or in connection
with this Agreement (collectively "Other Materials") must be approved by GN
in
writing prior to their production and use (including, without limitation, the
manner in which the Property and the trademarks associated therewith, and other
elements licensed hereunder, may be presented). Licensee shall submit to GN
for
GN's review and written approval all preliminary and proposed final artwork
and
three-dimensional models which are to appear on, in or in connection with all
Products, Packaging and Other Materials; thereafter, a preproduction sample
of
all Products, Packaging and Other Materials; and
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thereafter
six (6) samples of all Other Materials from the first production run of each
supplier of Products, Packaging and Other Materials, as the case may be. GN
shall have the right of approval over the general format of (e.g., appearance
on
a talk-show), principal people involved with (e.g., host of a talk-show) and
other celebrities with whom Celebrity is to appear (but specifically excluding
other celebrities appearing at different times at the same event or on the
same
program) in connection with each personal appearance required of Celebrity
pursuant to this Agreement. GN shall endeavor to approve or disapprove any
submitted material or request within a reasonable period of time; provided
that
any submitted material shall, in each instance, be deemed disapproved, unless
within fifteen (15) days of GN's receipt of such submitted material, GN notifies
Licensee to the contrary in writing. Approval or disapproval shall, in each
such
instance, lie solely in GN's discretion. Any Products, Packaging or Other
Materials not so approved in writing shall be deemed unlicensed and shall not
be
manufactured, sold and/or distributed and, unless otherwise agreed to by GN
in
writing in its sole discretion, shall be destroyed.
9.2. Except
for the limited license specifically provided herein, it is agreed that GN
is
not transferring to Licensee any right to or interest in any copyright,
trademark or service xxxx relating to the Property or to any elements thereof
or
any other copyright, trademark, or service xxxx owned or controlled by GN or
to
any elements thereof. As between GN and Licensee, all rights not specifically
granted to Licensee hereunder are reserved by GN.
9.3. Licensee
agrees to manufacture the Products in strict conformity with the approved
preproduction samples. Licensee will, at GN's request, accord GN at reasonable
times and during business hours, access to the premises of Licensee including
Licensee's production facilities for the purpose of confirming Licensee's
adherence to the quality and other requirements imposed on Licensee pursuant
to
this Agreement. If, at any time, Licensee desires to have the Products
manufactured or distributed by a third party, Licensee must, as a condition
to
the continuation of this agreement, notify GN of its desire together with the
name and address of the proposed manufacturer or distributor, as applicable,
and
must obtain GN's prior written consent to do so, which consent is in GN's sole
discretion. Subject to the next sentence, Windmill Health Products is hereby
pre-approved by GN as distributor. If GN is prepared to grant such consent,
it
will be conditioned on the requirement that Licensee obtain a distribution
agreement in a form designated by GN and executed by such manufacturer or
distributor, as applicable.
9.4. Licensee
may not use all or any part of the Property (a) in any advertising or
promotional material which relates to any product or service other than the
Products or (b) in conjunction with any other name, character, symbol or design
not included in the Property, unless otherwise approved and agreed to in writing
by GN (in its sole discretion).
9.5. Any
and
all products sold in conjunction with any Products as "upsales" (i.e., any
other
products to which customers are directed by Licensee, and/or their
representatives or designees when purchasing or otherwise inquiring about any
Products) shall be required to be Products hereunder for all purposes. Without
limitation of the foregoing, all of such upsales shall be subject to all GN
approvals hereunder, shall be labeled as Products so they are further identified
as endorsed by the Celebrity, and shall be subject to the same financial
arrangement as all other Products as provided for in the Operating
Agreement.
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9.6. As
a
condition to the right of public distribution granted to Licensee hereunder,
all
Products, Packaging, advertising, sales and promotional materials and any other
matter containing the Property shall bear such trademark or other notices of
which GN may notify Licensee in writing. Licensee will comply with GN's
instructions as to form, location and content of the notice(s) as GN may
instruct from time to time.
9.7. Licensee
represents, warrants and agrees that all advertising materials and promotional
materials and all Products, Packaging and Other Materials shall comply with
all
applicable laws and regulations. GN's approval of the use or manner of use
of
any proposed advertising or other material hereunder shall not constitute an
opinion as to the legal appropriateness or adequacy of such use or manner of
use, and in Licensee's use of the advertising materials and promotional
materials, as between GN and Licensee, it shall be Licensee's sole
responsibility to comply with all applicable laws and regulations.
9.8. Licensee
represents, warrants and agrees that all Products, Packaging and Other Materials
shall be manufactured, distributed and/or performed, as applicable, in
compliance with all federal, state and local laws, regulations and industry
standards pertaining thereto (collectively, the "Laws, Regulations and
Standards"), including, without limitation, the U.S. Fair Labor Standards Act.
If pursuant to the terms hereof, any Products, Packaging or Other Materials
are
manufactured by a third party, then Licensee shall provide in its agreement
with
such third party that such party will comply with all Laws, Regulations and
Standards.
9.9. This
Section shall survive the expiration or termination of this Agreement.
Section
10. Product
Liability and Errors and Omissions Insurance.
Licensee
shall obtain and maintain at Licensee's expense, during the Term, and for three
(3) years thereafter, general liability, product liability and completed
operations insurance naming GN, GFPI and Celebrity as insured parties (including
their respective parents, affiliates, subsidiaries, officers, employees, agents
and representatives), from a qualified insurance carrier approved in writing
by
GN in the amount of at least Five Million Dollars ($5,000,000) for personal
and
bodily injury and identical additional amounts for property damage. This policy
shall specify that it covers all Products, Packaging and Other Materials
manufactured or distributed hereunder and that it may not be modified or
canceled by the insurer, except after thirty (30) days' prior written notice
by
the insurer to GN; if such cancellation takes place or the policy's coverage
is
diminished in any way, GN may terminate this Agreement. Prior to manufacturing
or distributing any Products, Packaging or Other Materials hereunder, Licensee
shall provide GN with a copy of such policy and a certificate of insurance
naming GN, GFPI and Celebrity and their respective parents, affiliates,
subsidiaries, officers, employees, agents and representatives as insured parties
as aforesaid. If any audio or audiovisual works (e.g., television commercials)
are produced hereunder using Celebrity or the Property, then Licensee shall
obtain errors and omissions insurance in similar amounts and with similar
requirements as aforesaid. Compliance herewith in no way limits Licensee's
obligations hereunder.
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Section
11. Acknowledgments.
11.1. Licensee
acknowledges that all rights and goodwill associated with the Property will
be
used by Licensee or under its authority in the manner and pursuant to the terms
and conditions contained herein. Licensee will make all solicitations and sales
solely in its own name.
11.2. It
is
acknowledged that the rights and powers retained by GN hereunder are necessary
to protect the trademark and property rights of GN and, specifically, to
conserve the goodwill and good name of Celebrity and the Property, and therefore
Licensee agrees that it will not knowingly allow the same to become involved
in
matters which will or could detract from, or impugn the public acceptance and
popularity thereof, or impair their legal status.
11.3. Licensee
acknowledges that as between GN and Licensee, GN is the owner of all right,
title and interest in and to the Property and in all copyrights, trademarks
and
other rights associated therewith, and in all artwork, copy, literary text,
packaging, advertising and promotional material of any sort which utilize the
foregoing (including all such materials developed by or under the authority
of
Licensee), and the goodwill pertaining to all of the foregoing; Licensee hereby
assigns to GN all right, title and interest including all copyrights, and
renewals and extensions of copyright, in and to any and all such materials
developed by or under the authority of Licensee, and warrants that, following
the Term, GN will have the right to use and exploit and authorize the
exploitation of such materials in any manner as GN elects without obligation
to
Licensee or any other entity whatsoever.
Section
12. No
Assignment.
Licensee
may not sublicense, assign, or encumber the rights granted to it hereunder
or
delegate its obligations hereunder, in whole or in part without GN's prior
written consent which in each such instance shall be at GN's sole discretion.
Any sublicense, assignment or encumbrance in derogation of the foregoing shall
be null and void. The requirement of consent shall also apply in the case of
total or partial sale or other alienation of a substantial portion of Licensee's
assets, membership interests or business.
Section
13. Expenses.
13.1. Except
as
otherwise provided herein, each Party shall bear its own costs and expenses
(including legal and accounting fees and expenses) incurred in connection with
this Agreement and the transactions contemplated hereby.
13.2. All
out-of-pocket travel and other costs and expenses, including the cost of
transportation, lodging and meals, incurred by Celebrity and GN in connection
with Celebrity's appearances on behalf of Licensee shall be reimbursed by
Licensee within thirty (30) days of Licensee's receipt of documentation,
including receipts, of such costs and expenses. Licensee acknowledges that,
to
the extent Celebrity is required to travel more than 50 miles outside of
Houston, Texas in connection with the performance of his services, Celebrity
will be given a roundtrip first class ticket and, if used, a companion ticket
(by air, if appropriate, and between Houston, Texas and the destination),
exclusive ground transportation and separate first class hotel accommodations
for himself (suite, if available) and his companion (regular room).
Notwithstanding the foregoing, Celebrity may elect to arrange for alternate
means of
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transportation
in lieu of any air transportation otherwise to be provided for by Licensee
pursuant to the preceding sentence, for which Celebrity shall be entitled to
be
reimbursed, for his actual alternative transportation costs but in no event
to
exceed the costs of the first class air transportation offered by
Licensee.
Section
14. Miscellaneous.
14.1. All
notices permitted or required to be given to any Party hereunder must be given
in writing and will be deemed to be duly given on the date of delivery if
delivered in person or sent by facsimile transmission or on the earlier of
actual receipt or three (3) business days after the date of mailing if mailed
by
registered or certified mail, first class postage prepaid, return receipt
requested, to such Party, at such Party's address at the beginning of this
Agreement, unless a different address is designated in writing by such Party.
Copies of all notices to GN shall simultaneously be sent to Franklin, Xxxxxxx,
Xxxxxx & Xxxxxxxx, P.C., 000 Xxxxxxx Xxxxxx, Xxx Xxxx, XX 00000, Facsimile
Number (000) 000-0000, Attention: Xxxxxxx X. Xxxxxxx, Esq.
14.2. This
Agreement may be executed in several counterparts, each of which will be deemed
an original but all of which will constitute one and the same.
14.3. This
Agreement constitutes the entire agreement between the Parties and contains
all
of the agreements between such Parties with respect to the subject matter
hereof. This Agreement supersedes
any and all other agreements, either oral or written, between such parties
with
respect to the subject matter hereof. There are no representations, warranties
or covenants by GN other than those set forth in this Agreement and the
Operating Agreement.
14.4. Wherever
possible, each provision hereof shall be interpreted in such manner as to be
effective and valid under applicable law, but in case any one or more of the
provisions contained herein shall, for any reason, be held to be invalid,
illegal or unenforceable in any respect, such provision shall be ineffective
to
the extent, but only to the extent, of such invalidity, illegality or
unenforceability without invalidating the remainder of such invalid, illegal
or
unenforceable provision or provisions or any other provisions hereof, unless
such a construction would be unreasonable.
14.5. This
Agreement may be amended only by a written agreement executed by both
Parties.
14.6. Subject
to Section 12 above, this Agreement will be binding upon and shall inure to
the
benefit of the parties, and their respective successors and permitted
assigns.
14.7. This
Agreement shall be governed by and construed in accordance with the laws of
the
State of New York applicable to contracts made and to be wholly performed
therein. Subject to Section 14.9 below, the Parties hereby consent to the venue
and personal jurisdiction in the Supreme Court of the State of New York or
the
United States District Court, Southern District of New York, and courts with
appellate jurisdiction therefrom.
14.8. In
resolving any dispute or construing any provision in this Agreement, there
shall
be no presumption made or inference drawn (a) because the attorneys for one
of
the parties
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drafted
this Agreement, (b) because of the drafting history of this Agreement, or (c)
because of the inclusion of a provision not contained in a prior draft or the
deletion of a provision contained in a prior draft.
14.9. Any
controversy or claim arising out of or relating to this Agreement or the breach
thereof shall be settled by arbitration in New York City administered by the
American Arbitration Association in accordance with its Commercial Arbitration
Rules, and judgment on the award rendered by the arbitrator(s) may be entered
in
any court having jurisdiction thereof. Notwithstanding the foregoing, nothing
herein contained shall be deemed to limit the right of the parties to seek
or
obtain injunctive relief from a court of law, pending ultimate disposition,
if
applicable, pursuant to arbitration as aforesaid.
14.10. Nothing
contained herein shall constitute this arrangement to be employment, a joint
venture or a partnership.
14.11. The
failure of either Party to exercise in any respect any right provided for herein
shall not be deemed a waiver of any right hereunder. The headings of sections
and other subdivisions of this Agreement are for convenient reference only,
and
shall not be used in any way to govern, limit, modify or construe this Agreement
or otherwise be given any legal effect. Licensee's remedies shall be limited
to
the right, if any, to obtain damages at law in the event of a breach hereunder
by GN, and Licensee shall not have the right in such event to equitable relief
or to enjoin or restrain the use and exploitation of the Property or the
services of Celebrity. It is understood and agreed that in the event an act
of
government, war, fire, flood, an Act of God or labor trouble, or any other
similar or dissimilar reasons beyond the control of a party to this Agreement
prevents the performance by such party of the provisions of this Agreement,
then
such nonperformance shall not be considered a breach of this Agreement and
such
nonperformance shall be excused while the conditions described herein
prevail.
[signature
page to follow]
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IN
WITNESS WHEREOF, the Parties have duly executed this Trademark License and
Services Agreement as of the date set forth above.
VITA
VENTURES, LLC
By:
G-Nutritional, LLC
By:
/s/ Xxxxx
Xxxxxxx
Name:
Xxxxx
Xxxxxxxxx
Title:
Member
Representative
By:
VITAQUEST INTERNATIONAL LLC
By:
/s/ Xxxxx
Xxxxxxx
Name:
Xxxxx
Xxxxxxx
Title:
Member
Representative
G-NUTRITIONAL,
LLC
BY:
Xxxxxx Xxxxxxx Ventures, LLC, Managing Member
By:
/s/ Xxxxx
Xxxxxxxxx
Name:
Xxxxx
Xxxxxxxxx
Title:
President
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