EXHIBIT 10.10
TRADEMARK LICENSE AGREEMENT
THIS AGREEMENT, dated as of June 7, 1996, is made between Golden Bear
International, Inc. (hereinafter, "Licensor"), a Florida corporation with its
principal offices at 00000 X.X. Xxxxxxx Xx. 0, Xxxxx Xxxx Xxxxx, Xxxxxxx 00000,
and Golden Bear Golf, Inc. (hereinafter, "Licensee"), a Florida corporation,
with its principal offices at 00000 X.X. Xxxxxxx Xx. 0, Xxxxx Xxxx Xxxxx,
Xxxxxxx 00000.
RECITALS:
A. It is the intention of the parties that Licensee will take over
Licensor's interest in the ownership and operation of various businesses
currently operated by Licensor and operated by third parties under license from
Licensor as more particularly described in the attached Schedule A (the
"Transferred Businesses"), and that Licensor will license Licensee to conduct
and sub-license the Transferred Businesses under the marks and names presently
or hereafter owned or used by Licensor; and
B. It is the further intention of the parties that Licensee will have
the exclusive right, subject to the terms and conditions of this Agreement, to
develop future business opportunities utilizing the goodwill developed by
Licensor and the marks and names licensed under this Agreement, except for those
existing lines of business and business opportunities expressly reserved to
Licensor, as more particularly described in the attached Schedule A (the
"Retained Businesses").
UNDERTAKINGS:
NOW, THEREFORE, in consideration of the foregoing, the mutual covenants
contained herein, and other good and valuable consideration being extant, the
parties agree as follows:
1. GRANT OF LICENSE.
A. Licensor hereby grants to Licensee the exclusive license to use the
GOLDEN BEAR trade name and trademark, as well as all of the other marks shown on
the attached Schedule B (hereinafter referred to individually and collectively
as "Licensed Marks") in connection with the manufacture, advertising, sale and
distribution of all of the goods and rendering of all of the services included
within the description of the Transferred Businesses in Schedule A, including
those goods and services set forth in the registrations and applications on
Schedule B, except as otherwise noted in such Schedule (hereinafter,
collectively, the "Licensed Goods"). The Licensed Goods shall include line
extensions, except as expressly reserved herein.
B. Licensor further grants to Licensee the right to use the
name, image, likeness, nickname, biographical data, and other
identifying characteristics of Xxxx X. Xxxxxxxx (hereinafter
the "Nicklaus Image") in connection with the advertising,
promotion, or sale of the goods or the rendering of the
services covered by the Licensed Goods.
C. Licensor also grants to Licensee those limited rights in
Licensor's copyrighted works indicated on Schedule C
(hereinafter "Licensed Copyrights"). Licensor expressly
reserves all other copyright rights in the
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Licensed Copyrights not expressly granted by such Schedule,
including without limitation, the right to make derivative
works other than those derivative works authorized by such
Schedule.
D. The license granted herein does not include the right of
Licensee to use the personal services of Xxxx X. Xxxxxxxx as a
model or spokesman, or to attribute specific statements,
claims or endorsements to Xx. Xxxxxxxx as an individual. The
right to such personal services of Xx. Xxxxxxxx as an
individual will be the subject of written agreements
separately negotiated between Licensee and Xxxx X. Xxxxxxxx,
including an Employment Agreement between the parties which
will become effective as of the Effective Date (as defined
below).
E. In addition to the licenses granted herein, Licensor
acknowledges and agrees that Licensee shall have the exclusive
right to develop new business opportunities utilizing the
Licensed Marks, Licensed Copyrights and the Nicklaus Image in
connection with product and service lines outside of the
current scope of the Licensed Goods, and that the scope of the
licenses granted herein will be extended to include such
business opportunities subject to the further terms and
conditions of this Agreement, including P. 5, below.
Notwithstanding the foregoing, Licensee acknowledges that
Licensor has expressly reserved its exclusive right to utilize
and license the Retained Marks (as defined in xxx-xxxxxxxxx
0X, xxxxx), the Nicklaus Image, and the Licensed Copyrights in
connection with the Retained Businesses, and that Licensee
shall not be permitted, by virtue of the licenses granted
above or any extension of such licenses, to make or license
any use of the Licensed Marks, the Nicklaus Image or the
Licensed Copyrights which infringes upon or is in the same
field of use as any of the Retained Businesses, or would cause
substantial or irreparable damage to Licensor or any of
Licensor's material business relationships in connnection with
any of the Retained Businesses.
2. SCOPE. This License shall be exclusive and worldwide.
3. ROYALTIES. This License is paid in full and shall be royalty free.
4. QUALITY STANDARDS.
A. Licensee understands and acknowledges that Licensor has the
right to establish and to change the standards of quality of
the Licensed Goods identified by the Licensed Marks, subject
to the further terms of this Paragraph 4.
B. Licensor expressly adopts the standards of quality of the
Licensed Goods identified by the Licensed Marks as they
existed on the Effective Date (as defined below) of this
Agreement.
C. Licensor agrees that it will maintain quality standards for
the goods and services provided by Licensor and its licensees
in the Retained Businesses under those marks which are the
same as or substantially
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similar to the Licensed Marks (hereinafter, the "Retained
Marks") at a level consistent with or superior to the quality
standards in effect for such trademarks of Licensor on the
date of this Agreement, provided that Licensor may make
reasonable modifications to such standards to conform them
with quality standards for the Licensed Goods proposed by
Licensee and approved by Licensor under sub-paragraph E,
below. In order to permit Licensee to monitor Licensor's
adherence to the foregoing covenant, Licensor further agrees
that if it intends to enter into any new license with a third
party to use any of the Retained Xxxx in connection with
Licensor's Retained Businesses, Licensor shall submit the
proposed quality standards for the goods or services to be
offered under such license to the Licensee at least thirty
(30) days prior to the date such license with the third party
becomes a binding agreement of Licensor. If Licensee objects
to the proposed standards during such thirty (30) day period,
Licensor will not adopt such standards until the parties have
resolved such objections.
D. Licensor agrees that it will not change the standards of
quality for any of the Licensed Goods without giving Licensee
at least sixty (60) days written notice of the change and,
further, that any such changes will not be required to be made
by the Licensee until the Licensee has exhausted its inventory
of goods made in accordance with the Licensor's prior
standards. Licensee agrees to conform to such standards as
Licensor may establish from time to time, provided that the
new standards do not (i) materially increase the cost of
production or distribution of the Licensed Goods affected by
such changes over the existing standards, (ii) materially
depart from the quality standards established by Licensor for
the Retained Businesses, or (iii) materially depart from the
quality standards in effect as of the Effective Date.
E. Licensee may propose new standards for adoption by Licensor
for Additional Goods (as defined in P. 5, below), and it may
suggest changes in existing standards for the Licensed Goods
bearing the Licensed Marks. Such proposed standards shall be
submitted in writing for approval by Licensor, which approval
shall not be withheld or delayed if such proposed standards
are consistent with existing standards applicable to the
Licensed Goods and the Retained Businesses. If the Licensor
does not respond in writing to the Licensee regarding such new
or changed standards within thirty (30) days of its receipt of
the Licensee's written proposal, the Licensor's consent
thereto shall be conclusively presumed.
F. Licensee agrees to furnish to Licensor, at Licensor's
request, a reasonable number of samples of each of the
Licensed Goods identified by the Licensed Marks, without cost
to Licensor, not to exceed twenty (20) samples of any one
product in any one year period. Additional samples shall be
furnished to Licensor at its request and expense, based on
Licensee's wholesale price plus shipping. The limitation of
this paragraph
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shall not apply to samples of the Licensed Goods which are
necessary for Licensor to obtain or maintain the registration
of the Licensed Marks or for the enforcement of rights in such
marks.
G. Licensee shall not advertise, distribute, offer for sale,
render, or sell Licensed Goods identified by the Licensed
Marks which do not meet the quality standards established
hereby. However, Licensee shall have the right to dispose of
any Licensed Goods not made in accordance with the Licensor's
standards or which are no longer in style in accordance with
the then prevailing custom and practice of the trade for like
goods.
H. Licensee shall permit Licensor or its designees to inspect
Licensee's premises, facilities, and equipment, during normal
business hours for the purpose of insuring Licensor's control
over the quality of the Licensed Goods identified by the
Licensed Marks. Licensee, however, shall not be required to
permit any such inspection by Licensor where the inspection
would disclose one or more trade secrets of the Licensee.
I. So long as Xxxx X. Xxxxxxxx is actively involved in the
management of Licensor, all final decisions by Licensor
regarding the standards of quality or the approval or
disapproval of Additional Goods shall be made personally by
Xxxx X. Xxxxxxxx, unless Licensee waives such requirement.
5. EXPANSION OF EXISTING RIGHTS. The parties acknowledge that the Licensed Marks
and Nicklaus Image have enjoyed worldwide renown as a result of the fame of Xxxx
X. Xxxxxxxx and the business, marketing and licensing activities conducted by
Licensor prior to the date of this Agreement. Subject to the terms of this
paragraph, Licensor hereby agrees to grant Licensee the right, on an exclusive
worldwide basis, to expand the current scope of the business conducted under the
licenses granted by this Agreement to any reasonable category of goods or
services that either party proposes to offer or license which is outside of the
scope of the Retained Businesses (the "Additional Goods"), and to provide for
any reasonable extension of the Licensed Goods and Licensed Marks under this
Agreement to cover such expansion.
A. Licensee may, but shall have no obligation whatsoever to,
undertake the development of a new product or service which is
within the Additional Goods. In the event that Licensee
desires for such product to be advertised, promoted, or sold
or such service to be rendered using any of the Licensed Marks
or the Nicklaus Image, Licensee will provide Licensor with
written notice of its intention to develop such Additional
Goods and a reasonable description of the product(s) or
service(s) involved, the Licensed Marks which Licensee
proposes to utilize, and Licensee's proposed quality standards
for such Additional Goods. Licensor shall have thirty (30)
days after its receipt of such notice to make written
objection to such proposal if Licensor reasonably believes
that the use of the Licensed Marks in connection with the
Additional Goods proposed in Licensee's notice: (i) will be in
the same field of use as any of
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the Retained Businesses, or would cause substantial damage to
any of Licensor's material business relationships in
connnection with the Retained Businesses, (ii) will associate
the goodwill of the Licensed Marks with a product or service
category or distribution network having a reputation which
would substantially harm the public image of Licensor or any
of its Retained Businesses, or (iii) would substantially harm
the personal reputation or image of Xxxx X. Xxxxxxxx or
compromise his integrity as a public figure.
B. Unless Licensor makes a timely written objection to
Licensee's proposal to add Additional Goods to this Agreement,
the product(s) and/or service(s) described in Licensee's
notice shall be added to the Licensed Goods subject to this
Agreement, and Schedule B shall be deemed amended as set forth
in such notice without further action of the parties. In the
event that Licensor objects to Licensee's notice within the
required time period, the parties will make reasonable efforts
to address Licensor's objections and, to the extent
practicable under the circumstances, to reach agreement upon a
revised description for the Additional Goods which resolves
such objection, which description shall be incorporated in a
written amendment to Schedule B to this Agreement. If the
parties are unable to resolve Licensor's objections, the
Additional Goods described in Licensee's notice shall not be
licensed under this Agreement. In the event that Licensee in
good faith believes that Licensor has no reasonable basis for
any objection raised under sub-paragraph A, above, Licensee
shall have the right to seek relief as provided in Paragraph
17, below.
C. If Licensor undertakes to develop any new product or
service, or if it receives an offer from a third party to
license a new product or service, which is within the scope of
the Additional Goods, and for which the Licensor intends to
use or license the use of any marks which are the same as or
substantially similar to the Licensed Marks or any part of the
Nicklaus Image, Licensor shall first offer Licensee the right
to develop or sublicense such product(s) or service(s) under
exclusive royalty-free license as part of the Licensed Goods
in accordance with the terms of this Agreement. Such offer
shall be in writing and shall state Licensor's intention to
develop or license such Additional Goods, shall provide a
reasonable description of the product(s) or service(s)
involved and the trademarks which Licensor proposes to utilize
as Retained Marks in connection with such business, and shall
identify the names of any prospective third party licensees
and the material licensing terms offered by them to Licensor.
If such offer is made by Licensor in response to a third party
licensing offer, Licensor's offer shall include the option, in
Licensee's discretion, to pursue such licensing opportunity
with such third party without compensation to Licensor in the
event that Licensee accepts the opportunity relating to the
offered goods or services. In the event that Licensee accepts
the offer to develop or sublicense the Additional Goods
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identified in such offer, the product(s) and/or service(s)
described in Licensor's offer shall be added to the Licensed
Goods and the proposed marks shall be added to the Licensed
Marks subject to this Agreement, and Schedule B shall be
deemed amended as set forth in such offer without further
action of the parties.
D. In the event that Licensee fails to accept any offer made
by Licensor under sub-paragraph C., above, within a sixty (60)
days of its receipt thereof, Licensor may request that such
Additional Goods be added to the Retained Businesses
identified in this Agreement by further written notice
renewing the terms of its prior offer and stating Licensor's
intention to add such Additional Goods to the Retained
Businesses if such renewed offer is rejected and such addition
is approved in writing by Licensee. Licensee agrees to respond
in writing to any such request as soon as reasonably
practicable, provided however, that Licensee shall not be
required to accept Licensor's prior offer or to approve
Licensor's request to add the proposed Additional Goods to the
Retained Businesses if Licensee reasonably determines that (i)
such Additional Goods are not appropriate to the brand image
established by Licensee for the Licensed Goods, (ii) such
Additional Goods would compete with any of the Licensed Goods,
(iii) such Additional Goods would be an appropriate business
opportunity for Licensee to exploit at a future date, or (iv)
the proposed expansion of the Retained Businesses would cause
substantial damage to any of Licensee's material business
relationships.
E. If Licensee approves Licensor's request under sub-paragraph
D to add Additional Goods to the Retained Businesses reserved
by Licensor under this Agreement, the product(s) and/or
service(s) described in Licensor's request shall be added to
such Retained Businesses, and Schedule A shall be deemed
amended as set forth in such offer without further action of
the parties.
F. If Licensor decides to abandon its use of the Retained
Marks for any material part of the Retained Businesses
(considered on an individual product line or category of
service basis in any geographic jurisdiction where such
Retained Marks may be exploited by Licensee in a commercially
reasonable manner), rather than offering to assign, transfer
or otherwise convey its ownership interest in such trademarks
and/or the related assets of such business in a transaction
subject to sub-paragraph 13 B, below, Licensor shall provide
Licensee with reasonable prior written notice identifying the
products and/or services and jurisdictions affected by such
decision and the time after which Licensor reasonably
anticipates that such rights will be available for use by
Licensee. Licensee shall have the exclusive right during the
term of this Agreement to utilize such Retained Marks as
Licensed Marks for the purposes stated in such notice, and the
products and services identified in such notice may thereafter
be included in subsequent requests under this Paragraph to add
Additional
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Products to the schedule of Licensed Goods in the discretion
of Licensee. Licensor shall not be required under this
Agreement to continue its use of the Retained Marks in any
part of the Retained Businesses pending Licensee's exercise of
its option rights under this Agreement, nor will Licensor be
responsible for any diminution of its trademark rights in the
Licensed Marks caused by delay on the part of Licensee in
making an election under this sub-paragraph to utilize any
trademark rights which become available for Additional
Products.
6. NEW MARKS.
A. Licensee shall have the right to adopt and use in
connection with the Licensed Goods any xxxx which is similar
in sound or appearance to any of the Licensed Marks, without
the Licensor's prior written approval, provided that the xxxx
is used with goods or services which meet the Licensor's
standards for such goods or services. Such similar marks shall
be considered as part of the Licensed Marks.
B. Licensee shall have the right to request the adoption of
new marks by the Licensor as Licensed Marks for the Licensed
Goods which are not similar to the existing Licensed Marks,
and Licensee shall have the obligation to make such request if
Licensee intends to use the Nicklaus Image or any form or
variant of the Licensed Marks in connection with such new
marks or the advertisement or promotion of the goods and
services identified by such marks to the public. Any such
proposed new marks shall be submitted in writing to Licensor
for approval by Licensor, which approval shall not be
unreasonably withheld. If the Licensor does not respond in
writing to the Licensee regarding such new xxxx within twenty
(20) days of its receipt of Licensee's written proposal, the
Licensor's approval thereto shall be conclusively presumed.
Upon approval by Licensor, the new marks shall be considered
part of the Licensed Marks. In addition, Licensor shall be
free to utilize such marks or any reasonable variant thereof
approved by the parties as Retained Marks in connection with
the Retained Businesses to the extent that such use may be
appropriate.
C. In the event that Licensor desires to adopt any new marks
for the Retained Businesses which are not similar to the
existing Licensed Marks, and Licensor intends to use the
Nicklaus Image or any form or variant of the Licensed Marks in
connection therewith, Licensor shall provide Licensee with a
written description of such marks prior to their adoption.
Licensee shall have the right to object to Licensor's adoption
of such marks if, in the reasonable opinion of Licensee, the
proposed marks contain any scandalous or offensive matter, or
their association with the Nicklaus Image or Licensed Marks
could reasonably be expected to have a material adverse effect
upon the business of Licensee, the goodwill associated with
the Licensed Marks, or the market for the Licensed Goods. Iif
Licensee makes any such objections in writing to the Licensor
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regarding such new xxxx within twenty (20) days of its receipt
of Licensor's written description, the parties will be
required to mutually resolve such objections as a condition to
the adoption of such xxxx by Licensor. Upon adoption by
Licensor, the new marks shall be considered part of the
Retained Marks, unless otherwise mutually agreed by the
parties, and Licensee shall be free thereafter to utilize such
marks or any reasonable variant thereof approved by the
parties as Licensed Marks in connection with the Licensed
Goods to the extent that such use may be appropriate.
D. Licensee shall have the right to adopt, use and own any
xxxx in connection with the Licensed Goods free of the
limitations and restrictions of sub-paragraph A of this
paragraph if (i) the xxxx is not similar to any of the
Licensed Marks; and (ii) Licensee does not intend to use the
Nicklaus Image in connection therewith. In order to avoid
confusion as to the source of goods and services offered under
such marks as may be acquired or adopted under this
sub-paragraph, Licensee hereby covenants and warrants that it
will not use or license any xxxx adopted under this
sub-paragraph in any manner which will associate such xxxx
with the Nicklaus Image in advertising, marketing or
promotional activities during the term of this Agreement, nor
use or license any such xxxx in any business competitive with
any of the Retained Businesses until such earlier time, if
any, as Licensor has transferred or assigned its rights with
respect to the affected Retained Businesses to an unaffiliated
third party in a transaction subject to sub-paragraph 13 B.,
below.
E. Licensor shall have the right to adopt, use and own any
xxxx in connection with the Retained Businesses free of the
limitations and restrictions of sub-paragraph C of this
paragraph if (i) the xxxx is not similar to any of the
Licensed Marks; and (ii) Licensor does not intend to use the
Nicklaus Image in connection therewith. In order to avoid
confusion as to the source of goods and services offered under
such marks as may be acquired or adopted under this
sub-paragraph, Licensor hereby covenants and warrants that it
will not use or license any xxxx adopted under this
sub-paragraph in any manner which will associate such xxxx
with the Nicklaus Image in advertising, marketing or
promotional activities during the term of this Agreement.
F. The parties further acknowledge that each of them shall be
entitled to own, utilize and register any xxxx adopted by them
under P. P. 6D or 6E free and clear of the other restrictions
and limitations of this Agreement, provided however, that the
insurance and indemnification provisions of P. 11 shall apply
to any claim made against or loss sustained by a party as a
result of the other party's use or licensing of any such marks
during the term of this Agreement.
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7. LABELING AND ADVERTISING.
A. All advertising and labeling of Licensee for the Licensed
Goods identified by the Licensed Marks and/or Nicklaus Image
shall conform to good industry practice and shall comply with
all governmental laws and regulations.
B. Licensee shall submit copies of any new labeling or
advertising bearing the Licensed Marks and/or Nicklaus Image
to Licensor not less than thirty (30) days prior to its first
use by Licensee. If Licensor reasonably objects to any such
labeling or advertising within ten (10) days after its receipt
of such copies, the Licensee shall thereafter not use it until
it meets with Licensor's approval, which approval shall not be
unreasonably withheld or delayed.
C. Licensee shall use the Licensed Marks only in the manner
and format specified by Licensor. The parties acknowledge that
Licensor has established formats and standards for use of the
Licensed Marks and Retained Marks prior to the date of this
Agreement and agree that such formats and standards will form
the basis for Licensor's specifications under this
sub-paragraph with respect to the Licensed Marks. Licensee
shall have the right to propose for Licensor's review new
formats and standards for use of the Licensed Marks, which
standards shall form the basis for future specifications by
Licensor with respect to such Licensed Marks under this
sub-paragraph upon approval by Licensor. Licensor shall not
unreasonably withhold or delay its approval of any new formats
or standards proposed by Licensee hereunder, and Licensor
shall be deemed to have approved any such formats and
standards unless written objection is made to Licensee within
twenty (20) days of Licensor's receipt of a written proposal
from Licensee requesting such approval under this
sub-paragraph.
D. Licensee shall use such trademark notices - for example,
the encircled "R" symbol of registration - as Licensor may
reasonably require.
E. In order to maintain the goodwill of the Nicklaus Image and
protect the common interests of Licensor and Licensee in the
preservation of such goodwill, the parties agree to consult
with each other and the other licensees involved in the
marketing of the Licensed Goods and Retained Businesses
regarding appropriate uses of the Nicklaus Image to promote
their respective marketing activities. Neither Licensor nor
Licensee shall materially depart from or authorize any
material departure from the standards and practices
established prior to the date of this Agreement for
utilization of the Nicklaus Image in advertising and
promotional materials generated during the term hereof unless
such departure is mutually discussed and approved by the
parties prior to the dissemination of such materials, which
approval shall not be unreasonably withheld or delayed.
Licensor agrees to use its reasonable efforts to provide
copies and
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samples of advertising and labeling generated by Licensor and
its other licensees in connection with the Retained Businesses
to Licensee for review as soon as practicable after such
materials become available to Licensor in order to allow the
parties to discuss the effective utilization of the Retained
Marks and Nicklaus Image and to promote uniform brand
standards.
8. REPRESENTATIONS AND ACKNOWLEDGMENTS CONCERNING LICENSED MARKS.
A. Licensor represents, warrants and agrees that:
i. It is the owner of all right, title and
interest in and to the trademark and service xxxx
registrations and applications listed on Schedule B.
ii. It will maintain the registrations on
Schedule B for so long as the Licensee is using the
xxxx on any of the goods or the rendering of the
services set forth in such registration(s).
iii. It will, on request by Licensee, file
applications to register the Licensed Marks in any
country where the marks are not presently registered
for any goods and services within the scope of this
License.
iv. It will file applications at Licensee's
expense to register any new marks suggested by
Licensee and approved by Licensor pursuant to P. P.
6(A), and (B) in any classes and countries requested
by Licensee, and it may file such additional
applications, at Licensor's expense, in all other
classes and countries which it considers appropriate,
and seek reimbursement from Licensee for the
reasonable costs of filing any such registration in
the event such Licensed Xxxx is later utilized by
Licensee in any jurisdiction or product category
covered by such registrations.
v. It has agreements regarding the use of
the GOLDEN BEAR name, the Licensed Marks or related
trademarks, and the Nicklaus Image with the parties
shown on Schedule D, and this License is subject to
those agreements.
vi. It has pending administrative or court
actions involving the Licensed Marks as set forth on
Schedule E.
B. Licensee represents, warrants and agrees that:
i. Any and all use of the Licensed Marks
shown on the attached Schedule B, or any variants
thereof, as well as any new marks adopted by the
parties under P. 6(A), (B) and (C) and used by
Licensee pursuant to this Agreement shall inure to
the benefit of the Licensor as owner of the Licensed
Marks and Retained Marks.
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ii. During the term of this Agreement and
thereafter, Licensee agrees that nothing herein shall
give it any right, title or interest in or to the
Licensed Marks, except the right to use in accordance
with the terms of this Agreement. Nothing herein
shall preclude Licensee from acquiring a right, title
or interest in the Licensed Marks or in any other of
the marks reserved by Licensor pursuant to separate
agreements.
iii. During the term of this Agreement and
thereafter, Licensee agrees not to raise or cause to
be raised any objection on any ground whatsoever to
the validity of the Licensed Marks, the Licensor's
ownership thereof, or the Licensor's right to
register said marks as Licensed Marks for the
Licensed Goods or as Retained Marks for the Retained
Businesses, provided that such registrations are made
in conformity with the terms and conditions of this
Agreement.
iv. Except as provided in clause A.iv,
above, Licensee will reimburse Licensor for all
reasonable costs in connection with the filing and
maintenance of registration of the Licensed Marks for
the Licensed Goods, including the costs and
attorney's fees relating to the recording of the
Licensee and its sub-licensees as registered users,
as well as for all other costs related to the
protection of the Licensed Marks for the Licensed
Goods. Licensee agrees, on request by Licensor, to
advance government fees and out-of-pocket expenses,
including attorney's fees, in connection with the
filing and maintenance of registrations of the
Licensed Marks for the Licensed Goods and such other
registrations as may be filed at the request of
Licensee for protection of the interests of
Licensee's future rights with respect to Additional
Goods.
9. MAINTENANCE OF TRADEMARK RIGHTS; SPECIAL RIGHT OF TERMINATION.
A. The Licensor and Licensee agree that the non-use of the
Licensed Marks or of the Nicklaus Image by Licensee can have a
substantial adverse impact on the ownership rights of Licensor
in its Licensed Marks. Licensee agrees that the provisions of
this Paragraph shall apply in the event that Licensee does not
continue to make good faith, reasonable use of all of the
Licensed Marks in connection with the distribution and sale of
goods and rendering of services included within the Licensed
Goods, unless Licensor agrees in writing to waive its rights
under this sub-paragraph with respect to a particular xxxx,
geographical jurisdiction and/or product category. "Reasonable
Use" under this paragraph shall not require the sale of any
particular quantity or dollar value of Licensed Goods bearing
the Licensed Xxxx so long as Licensee or its authorized
sub-licensee(s) make BONA FIDE use of each Licensed Xxxx in
the ordinary course of trade in conformity with 15 U.S.C.
ss.1127, or such definition of
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trademark "use" as may be adopted in any successor statute or
regulation. The abandonment by Licensee of an obsolete variant
of a Licensed Xxxx in favor of a redesigned or updated
Licensed Xxxx adopted under this Agreement as provided in
Paragraph 6 to represent the same brand shall not subject
Licensee to the provisions of this Paragraph with respect to
such obsolete xxxx or give rise to any rights in Licensor to
an assignment of any rights with respect to such Licensed
Xxxx.
B. Licensor and Licensee agree and acknowledge that Licensee
may from time to time deem it necessary to change Licensee's
use of the Licensed Marks and the Nicklaus Image in order to
meet competitive conditions in the markets for the Licensed
Goods. In the event that Licensor believes, in good faith,
that such changes may create a substantial risk of abandonment
of any of the Licensed Marks for any class of Licensed Goods
in any jurisdiction, Licensee shall provide reasonable
assurances to Licensor of its intention to utilize the
affected Licensed Marks upon request unless Licensee elects to
abandon such trademarks under sub-paragraph C, below.
C. If Licensee elects to abandon its use of any of the
Licensed Marks or to abandon its activities with respect to
the sub-licensing and/or sales of the Licensed Goods entirely
in any jurisdiction within Licensor's existing business as of
the date of this Agreement or in any jurisdiction to which
Licensee extends the business hereafter, Licensee shall give
Licensor prior written notice of its intention to abandon such
use.
i. In the event Licensee gives written
notice of its intention to abandon pursuant to
sub-paragraph C., above, Licensee shall, upon written
request by Licensor, provide an assignment and
release of Licensee's further rights under this
Agreement with respect to its right to use such
individual Licensed Marks and the Nicklaus Image for
the affected classes of Licensed Goods in the
applicable jurisdiction; and Licensor thereafter
shall be free to use, license or sub-license such
rights in the applicable jurisdiction in order to
maintain its trademark rights as an addition to the
Retained Businesses authorized by this Agreement and
subject to the other terms applicable to such
Retained Businesses.
ii. The parties acknowledge that the
rights and obligations of the parties under this
sub-paragraph are intended to be severable, based
upon Licensee's intentions with respect to the use of
each Licensed Xxxx and the Nicklaus Image for each
class of Licensed Goods in each applicable
jurisdiction, and that the transfer by Licensee of
its rights with respect to any individual xxxx as a
trademark for any class of Licensed Goods in any
affected jurisdiction as a result of Licensor's
exercise of its rights under this sub-paragraph shall
not affect the rights of Licensee (i) to utilize
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such trademark in any other jurisdiction where it has not
elected to abandon its use of such trademark, (ii) to
utilize such trademark on any other classes of Licensed
Goods which may be offered by or under license from
Licensee in the affected jurisdiction, or (iii) to utilize
or adopt any other Licensed Xxxx or the Nicklaus Image in
the affected jurisdiction.
D. In the event that Licensee elects to abandon its use of all
or substantially all of the Licensed Marks in all or
substantially all of the countries included within the
Transferred Business conveyed to Licensee as of the date of
this Agreement and to which the Licensee hereafter extends
such business, other than territories where Licensee's rights
have been abandoned or surrendered to Licensor under
sub-paragraph C, above (hereafter the "Existing Territory"),
Licensor shall have the right to terminate this Agreement by
written notice to Licensee. Licensee may elect to abandon the
Licensed Marks by written notice to Licensor or by non-use of
all or substantially all of the Licensed Marks in all or
substantially all of the Existing Territory. The Licensee
shall have the right to withdraw any written election under
this sub-paragraph within thirty (30) days of its receipt of
Licensor's notice of termination. The Licensee shall also have
one hundred and eighty (180) days from the date of a notice of
termination from Licensor to cure any alleged abandonment
resulting from non-use by re-commencing use of the Licensed
Marks with respect to any commercially reasonable number of
the Licensed Goods in any commercially reasonable part of the
Existing Territory, provided that (I) LICENSEE SHALL PROMPTLY
ASSIGN AND RELEASE ITS RIGHTS AS PROVIDED UNDER CLAUSE II OF
SUB-PARAGRAPH C, ABOVE, IN ANY INDIVIDUAL LICENSED MARKS AND
LICENSED GOODS IN ANY JURISDICTIONS IN WHICH THE Licensee does
not intend to re-commence actual use, and (ii) Licensee shall
be required to promptly undertake and diligently continue
during such cure period those preliminary marketing activities
which are necessary or prudent to avoid a finding that such
any Licensed Marks have been abandoned or deemed abandoned
with respect to the Licensed Goods and territories which
Licensee seeks to retain under the laws and regulations of the
United States or any other applicable jurisdictions.
E. The failure of Licensor to request a release of trademark
rights from Licensee under this Agreement, or its failure to
elect to terminate this Agreement within the time provided by
this Agreement, shall not preclude Licensor from invoking the
provisions of sub-paragraph D of this paragraph at any
subsequent time, provided that it shall be required to give
Licensee ninety (90) days notice of its intention to invoke
such provisions, which notice shall be subject to the cure
rights provided in such sub-paragraph, during which notice
period Licensee shall be entitled to continue its rights under
the Agreement provided its use is in conformity with the
remaining terms of this Agreement.
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F. If Licensor exercises its special right of termination
under sub-paragraph D this paragraph, this Agreement shall
terminate on the date stated in the notice of termination, and
the parties shall be released from any further obligations to
each other except for those which relate to acts occurring
prior to the date of termination.
G. The exercise of Licensor's special right of termination
under this paragraph shall not be subject to arbitration under
this Agreement.
10. TRADEMARK INFRINGEMENT/UNFAIR COMPETITION CLAIMS.
A. Each party agrees to notify the other party of any claim
made against it with respect to the use of the Licensed Marks
by such party or its licensees, and of any claims of rights
conflicting with Licensor's exclusive ownership of the
Licensed Marks and the Nicklaus Image.
B. The Licensor shall have the first option to bring or defend
any trademark and/or unfair competition action arising from
the Licensee's use of the Licensed Marks, provided that such
right shall not apply to the prosecution or defense of any
claim which relates primarily to the activities and rights of
Licensee under this Agreement, or otherwise does not
materially affect the interests of Licensor in the use of the
Retained Marks in the Retained Businesses. Licensee shall have
the first option to bring or defend any action not subject to
Licensor's first option upon written notice to Licensor, which
notice shall describe the basis for such action, parties
involved and trademark and related rights in issue. If either
party does not exercise its option to bring or defend such an
action within ten (10) calendar days of its receipt of the
other party's written request to do so, the party making such
request may bring or defend such action in its name and in the
name of the other party as its interest appears in such
action. As between the Licensor and Licensee, the party
bringing the action shall have the right to control the
conduct of the proceeding, but in no circumstance shall either
party enter into any settlement, license or compromise of any
controversy which would affect Licensor's rights as owner of
the Licensed Marks and/or Nicklaus Image or Licensee's
exclusive rights to utilize them under this Agreement without
the prior written approval of the other party, which shall not
be unreasonably withheld.
C. In any action brought by Licensee involving the Licensed
Marks, the Licensor shall have the option to participate. In
any action brought by Licensor which relates to the Licensed
Marks or rights to license them under this Agreement, the
Licensee shall have the option to participate. In any action
involving the Licensed Marks, the party controlling such
action shall keep the other party reasonably advised regarding
the status of such proceedings, and the Licensor and Licensee
shall each render its fullest cooperation and assistance to
the other.
-14-
D. In any action which arises as a result of or relates to the
marketing or sale of the Licensed Goods under the Licensed
Marks, the Licensee shall bear all reasonable costs of itself
and of the Licensor, including out-of-pocket costs and
expenses of witnesses employed by Licensor, Licensor's
counsel, as well as all costs and reasonable expenses of any
material or expert witness. If the Licensor brings or defends
such an action, it shall have the right to set off its
out-of-pocket expenses, including attorney's fees, against any
monetary award or settlement proceeds actually received, and
the balance of any such receipts shall be remitted to
Licensee. If the Licensee brings such action, it shall
promptly pay all costs and expenses of Licensor as required by
this sub-paragraph, and upon payment of such costs and
expenses, Licensor agrees that Licensee shall have the right
to plead, prove and receive such amounts as part of its
damage, fees or taxable costs award in such proceedings
without further obligation to Licensor.
E. In any action which arises as a result of Licensor's
marketing or sale of goods or services included within the
Retained Businesses under the Retained Marks, the Licensor
shall bear all costs of itself and the Licensee, including
costs and related out-of-pocket expenses of witnesses employed
by Licensee, Licensee's counsel, as well as all costs and
reasonable expenses of any material or expert witness. In any
such action, the Licensor shall have the right to receive and
retain any monetary award granted by the court.
11. PRODUCT LIABILITY, INDEMNITY & INSURANCE.
A. Nothing in this Agreement shall be construed as a guaranty
or warranty of any kind on the part of Licensor with respect
to the Licensed Goods bearing the Licensed Marks which are
manufactured or rendered for or by Licensee.
B. In no event shall Licensor be liable for any loss or damage
sustained by Licensee because of the manufacture, rendering,
sale or distribution of the Licensed Goods identified by the
Licensed Marks, except where the loss or damage is caused by
the negligence of the Licensor. In no event shall Licensee be
liable for any loss or damage sustained by Licensor because of
the manufacture, rendering, sale or distribution of goods or
services identified by the Retained Marks through the Retained
Businesses, except where the loss or damage is caused by the
negligence of the Licensee.
C. Licensee shall indemnify Licensor, its officers, directors,
agents, and employees harmless from, against and in respect of
any and all losses, liabilities, claims, causes of actions,
suits, damages and expenses (including attorney's fees), for
which any of them may become liable or which any of them may
incur, sustain or be compelled to pay in any action or claim
against the Licensor, its officers, directors, agents and/or
-15-
employees arising out of or with respect to any act or
omission that may be suffered or committed by Licensee or by
any individual, partnership, firm, corporation, or other
enterprise acting or purporting to act (whether or not so
authorized) for or on behalf of the Licensee, including
sub-licensees acting under color of this Agreement, unless
such claim, loss or damage is caused by the negligence of the
party seeking such indemnification.
D. Licensor shall indemnify Licensee, its officers, directors,
agents, and employees harmless from, against and in respect of
any and all losses, liabilities, claims, causes of actions,
suits, damages and expenses (including attorney's fees), for
which any of them may become liable or which any of them may
incur, sustain or be compelled to pay in any action or claim
against the Licensee, its officers, directors, agents and/or
employees arising out of or with respect to any act or
omission that may be suffered or committed by Licensor or by
any individual, partnership, firm, corporation, or other
enterprise acting or purporting to act (whether or not so
authorized) for or on behalf of the Licensor, including other
licensees involved in the Retained Businesses, unless such
claim, loss or damage is caused by the negligence of the party
seeking such indemnification.
E. During the term of this License, each party shall maintain
insurance in full force and effect covering general liability
(including contractual and products liabilities and completed
operations) and such other specific areas of liability as are
customarily insured against by parties domiciled in the United
States conducting business activities of the same general kind
and scope as those undertaken by Licensor and Licensee from
time to time, including appropriate umbrella coverage for
catastrophic events. The amounts of coverage to be provided by
each party (and deductibles or self insurance primary to such
coverage) shall be set in its reasonable discretion according
to customs in the businesses undertaken and general corporate
standards of prudent financial management, provided that
neither party shall materially reduce any insurance coverage
limits (or increase any deductibles or self insurance limits)
from the limits in force previous to such action without
providing reasonable written notice of such action to the
other party. Any policies of insurance effected hereunder
shall be placed with an insurance company of reasonable net
worth and reputation in the industry which is licensed in the
State of Florida, and any self insurance program effected by a
party in lieu of primary insurance coverage required hereunder
shall be designed and implemented in accordance with all
legal, regulatory and underwriting requirements applicable to
such programs and otherwise reasonably acceptable to the other
party.
F. Each party shall use reasonable efforts to name the other
party as an additional named insured party in any liability
policies effected by such
-16-
party under sub-paragraph E., above, where such insurance can
be obtained without material increase in premium or the party
so named agrees to pay the additional premium attributable to
such designation. Each party agrees to provide such other
party with certificates showing the policies obtained under
this paragraph, with the coverages and names of all insured
parties designated, and to cause its insurance carriers to
give copies of any official notice to such other party in the
event of a cancellation, non-renewal or material reduction or
limitation of coverage under any such policy.
12. BANKRUPTCY OR INSOLVENCY PROCEEDINGS.
A. If either Licensor or Licensee shall file a petition for
relief under the United States Bankruptcy Code, 11 U.S.C.
ss.101 ET SEQ., or if an involuntary bankruptcy petition is
filed under 11 U.S.C. ss.303 which results in entry of an
order for relief as to either Licensor or Licensee, then the
rights of Licensor and Licensee with respect to rejection of
this Agreement under 11 U.S.C. ss.365(a) including, without
limitation, all rights to enforce the exclusivity provisions
of this Agreement, shall be governed by 11 U.S.C. ss.365(n) as
it presently exists or is hereafter amended.
B. If Licensor makes an assignment for the benefit of
creditors, discontinues its business, or if a receiver or
custodian is appointed to take control of Licensor's property
or business, Licensor shall be in material default under this
Agreement, and Licensee shall have all of the rights of a
licensee under 11 U.S.C. ss.365(n) as it presently exists or
is hereafter amended, including, without limitation, all
rights to enforce the exclusivity provisions of this
Agreement.
13. LICENSEE'S PURCHASE OPTION RIGHTS.
A. If Licensor decides to assign, transfer or otherwise convey
its legal title and ownership interest in the Licensed Marks,
or in any other trademark right, trademark registration, or
publicity right which is licensed exclusively to Licensee
under this Agreement, Licensor shall offer to transfer to
Licensee its legal title and/or ownership interest in all
trademark rights, trademark registrations, and publicity
rights which are licensed exclusively to Licensee under this
Agreement, together with the goodwill of the businesses
symbolized thereby, for a consideration of ten dollars
($10.00), plus reimbursement to Licensor for all costs and
expenses, including attorney's fees, directly related to the
transfer of such title and/or interest to Licensee. Licensee
acknowledges that such transfer will include the right to
utilize GOLDEN BEAR in Licensee's corporate name, but will not
include any right to own or register any part of the Retained
Marks or Nicklaus Image in connection with the Retained
Businesses or the right to prevent Licensor from utilizing its
corporate name in connection therewith. As a condition to the
conveyance of Licensor's rights under this sub-paragraph,
Licensee shall cooperate with
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Licensor in concluding and filing such documents and
instruments as may reasonably be required by Licensor's legal
counsel to assure the appropriate division of legal rights in
the Licensed Marks, the Retained Marks and Nicklaus Image
between the parties, including without limitation, such
additional trademark registrations and concurrent use
agreements as may be required to effect such division.
B. In the event Licensor desires to negotiate with any third
party to: (i) assign, convey or transfer its ownership
interest in, or to license substantially all of its beneficial
interest in the right to license and utilize, any part of the
Retained Marks or the Nicklaus Image as used in connection
with any of the Retained Businesses, or (ii) otherwise divest
itself of all or substantially all of the assets, equity
holdings, and/or business opportunities relating to any of the
Retained Businesses (the foregoing being collectively referred
to as the "Business Interests"), Licensor agrees to enter into
good faith negotiations for a period of sixty (60) days with
Licensee regarding the acquisition by Licensee of any of the
Business Interests which Licensor desires to transfer to third
parties. Unless the parties have concluded an agreement for
Licensee to acquire the Business Interests which Licensor
intends to transfer within such negotiation period, Licensor
shall be free to offer and sell the Business Interests
included in such negotiations to third parties subject only to
the further provisions of this paragraph. In the event
Licensor proposes to make such a transfer to a third party
upon terms and conditions less favorable to Licensor than the
last offer of Licensee made during the negotiation period,
Licensor shall give Licensee written notice of the terms of
the proposed transfer, and the Licensee shall have the right
to accept the proposed transfer on the same terms and
conditions offered to or by said third party by accepting such
offer within thirty (30) days of the date such notice is
given, with the closing to be within sixty (60) days of the
Licensee's written notice of the exercise of its option. For
purposes of this sub-paragraph, a proposed change of control
of Licensor shall be deemed a transfer subject to the first
negotiation rights set forth herein, except as provided in
sub-paragraph C, below.
C. The terms of this Paragraph 13 shall not apply to any
proposed transfer by Licensor to Xx. Xxxxxxxx, members of his
immediate family or their personal representatives or lineal
descendants, or to any entity or trust established to hold the
Licensed Marks, Retained Marks and/or Nicklaus Image for the
benefit of such persons and their authorized licensees,
provided that such transferee assumes all of the obligations
of this Agreement with respect to any intangible rights so
assigned.
14. ASSIGNMENTS & SUB-LICENSES.
A. Except as otherwise provided in this Paragraph 14, this
Agreement may not be assigned, transferred or hypothecated by
Licensee, whether
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by operation of law or otherwise, without the prior written
consent of Licensor.
B. This Agreement may not be assigned, transferred or
hypothecated by Licensor, without the prior written consent of
Licensee.
C. Any attempted assignment, or transfer or hypothecation of
this Agreement by either party without the written consent of
the other, where such consent is required, shall be null and
void and of no effect, and shall constitute a material default
hereunder.
D. Licensee may grant to any person, firm, corporation or
other entity a sub-license of any of its rights under this
License, provided that the sub-license is expressly subject to
the terms and conditions of this License.
E. Notwithstanding the restrictions of this paragraph,
Licensee shall be entitled without the consent of Licensor to
transfer this Agreement, by assignment or by operation of law,
to any entity which simultaneously acquires all or
substantially all of the business developed by Licensee under
this Agreement, provided that such entity agrees in writing to
accept and be bound by all of the terms and conditions of this
Agreement, to the extent such undertaking is not made by
operation of law.
15. RELATIONSHIP OF PARTIES.
A. Nothing in this Agreement shall create a joint venture or
establish the relationship of principal and agent or any other
relationship of a similar nature between the parties hereto.
Nothing contained in this Agreement shall be construed as in
any way granting to or conferring upon Licensee a "franchise"
within the meaning of any law, statute, rule, regulation,
order, decision or public policy.
B. In all of its transactions with third parties, the
Licensee shall assume sole responsibility for its commitments,
obligations, or representations made in connection therewith,
and it shall not attempt to bind or commit Licensor in any
matter whatsoever.
C. The parties acknowledge that, due to the common public
association of the Licensed Marks and Nicklaus Image with all
of the products and services offered by the parties and their
respective licensees utilizing the Licensed Marks and Nicklaus
Image, it is in their mutual best interests to furnish
reasonable cooperation to each other in order to support
common marketing efforts and a unified brand image, and to
assist each other and their respective licensees in preventing
the unauthorized use of the Licensed Marks and the Nicklaus
Image. Without limiting the rights of the parties to manage
and conduct their respective businesses independently as
contemplated by this Paragraph 15, the parties have agreed to
undertake the following obligations during the term of this
Agreement in support of their mutual interests in maintenance
of the goodwill represented by the Licensed Marks and Nicklaus
Image:
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i. During the Term of this Agreement,
Licensor and Licensee will keep each other advised of
the identity of any subsequent licensees or venture
partners authorized by the parties to utilize the
Licensed Marks and/or Nicklaus Image and the nature
of the business undertaken by them, and will provide
each other with reasonable advance notice of events
affecting their respective promotional activities
with respect to the Licensed Goods and Retained
Businesses or affecting public awareness of the
Licensed Marks and the common brand image developed
by the parties and their respective licensees.
ii. Licensor and Licensee will use all
reasonable efforts throughout the term of this
Agreement to meet periodically with each other at
least once per calendar quarter and, where
appropriate, with representatives of their respective
licensees to discuss matters of mutual importance to
them and complementary strategies with respect to the
effective world wide exploitation of the Licensed
Marks. In the event that either party elects to call
a general meeting of its staff and licensees or
venture partners to discuss matters of common market
strategy or business development, such party will
provide the other party with reasonable advance
notice of such meeting, and if requested by such
other party, the party calling such general meeting
will use reasonable efforts to schedule a plenary
session at such meeting where both parties and their
respective licensees and venture partners can attend
to exchange information and discuss matters of common
interest to them as persons utilizing the Licensed
Marks and Nicklaus Image. Unless otherwise agreed,
the expenses of any such plenary session shall be
shared by the parties on a PRO RATA basis according
to the number of attendees from each party. The
parties agree to hold any non-public marketing, sales
or business information obtained through such
meetings and discussions in strictest confidence, and
to treat such information in the same manner as their
own most sensitive confidential business information.
The parties further agree to impose similar
confidentiality restrictions upon their licensees in
a written document signed prior to the attendance of
any such party at any meetings where either party
reasonably believes that confidential information
will be discussed, unless the parties are satisfied
that the confidentiality provisions of the existing
license agreement with such party is sufficient to
protect their mutual interests under this clause.
iii. Without limiting the generality of the
cooperation to be furnished under this sub-paragraph
during the term of this Agreement: (i) Licensor
hereby agrees to use its reasonable efforts to
promote the use of the Licensed Goods by all parties
-20-
affiliated with Licensor and parties having
substantial ongoing licensing or business
relationships with Licensor in connection with the
Retained Businesses, to the extent that Licensor has
knowledge of such related parties' requirements for
goods or services of the type included within the
Licensed Goods, and (ii) Licensee hereby agrees to
use its reasonable efforts to promote the use of the
goods and services provided by the Retained
Businesses by all parties affiliated with Licensee
and parties having substantial ongoing licensing or
business relationships with Licensee in connection
with the Licensed Goods, to the extent that Licensee
has knowledge of such related parties' requirements
for goods or services of the type provided by the
Retained Businesses. The parties agree to cooperate
with each other and their respective licensees in the
development of advertising tie-ins and
cross-promotional activities using the Licensed Goods
and Retained Businesses wherever appropriate to the
common marketing objectives of the parties, and the
parties will make reasonable efforts to use branded
goods or services featuring the Licensed Marks and/or
Nicklaus Image throughout the term of this Agreement
in any of their other advertising or promotional
activities where use of such goods or services is
required.
iv. The parties acknowledge that the ready
availability of branded goods and merchandise bearing
the Licensed Marks and Nicklaus Image is important to
their common goals in promoting goodwill for their
respective businesses and securing long term brand
loyalties by supplying the requirements of affiliated
parties and business associates for products and
services endorsed by and associated with Xxxx
Xxxxxxxx. For that reason, the parties agree to
cooperate with each other on an ongoing basis to
provide reasonable access to goods and services
associated with the Licensed Marks and Nicklaus
Image, and to extend to each other and their
respective clients, licensees and venture partners to
the fullest extent practicable the benefits of any
supply arrangements negotiated by the parties with
respect to the Licensed Goods and any goods and
services distributed through the Retained Businesses
in support of the development and implementation of
advertising and promotional activities requiring the
use of such goods and services. It is understood that
neither party shall be required under this clause to
make any purchase, advance funds, or provide any
credit or financial accommodation to the other party
in connection with any such supply arrangement, it
being understood that the party requesting goods or
services shall in all events be required to meet the
customary price, quantity and payment terms of the
supplier of such goods and services as a condition to
purchasing any such goods and services and to accept
-21-
sole financial responsibility for any purchases made
under this clause.
v. The parties hereby agree to use all
reasonable efforts, as licensor and licensee, to
limit conflicts between themselves and their
respective licensees and licensed venture partners
with respect to uses of the Licensed Marks or the
Nicklaus Image, and subject to the provisions of
applicable law, to cooperate in the control of "grey
market" sales of Licensed Goods and any other goods
and services offered by the Retained Businesses.
16. TERM OF AGREEMENT; TERMINATION.
A. Subject to the provision for prior termination as
hereinafter set forth, this Agreement and the licenses granted
hereunder shall be effective commencing upon the "Effective
Date", which for purposes of this Agreement shall have the
same meaning and be deemed to occur simultaneously with the
Effective Date defined in Section 4 of that certain Agreement
and Plan of Reorganization between Licensor and Licensee of
even date herewith, and shall continue in full force and
effect until December 31, 2026. Thereafter, this Agreement
shall automatically be renewed for successive ten (10) year
terms, subject to the terms of Paragraph 17, below.
B. Licensee may terminate this Agreement at any time upon
ninety (90) days prior written notice to the Licensor.
17. BREACH OF THIS AGREEMENT; ARBITRATION.
A. In the event that either party does not initiate action to
correct a breach of this License within ninety (90) days after
receipt of written notice from the other party, the party
giving such notice shall, as a condition to pursuing a
termination of this Agreement based upon such breach, demand
within ninety (90) days following the expiration of said
initial ninety (90) day period that the disputed matter be
submitted to arbitration by a single arbitrator in North Palm
Beach, Florida, or at such other site as the parties may
agree, in accordance with the Commercial Rules of the American
Arbitration Association. The cost and expenses (including
reasonable attorney's fees) of arbitration shall be
apportioned in such amounts and against such party or parties
as the arbitrator may determine.
B. The arbitrator shall have the right to issue reasonable
preliminary and final orders directing the parties to take
such actions or to cease and desist from such actions as may
be deemed necessary to ameliorate the effects of the alleged
breach on the aggrieved party or cause such party to honor its
financial commitments under this Agreement, provided that no
such award shall include incidental or consequential damages
or compensation for any losses sustained other than direct
costs incurred as
-22-
a result of such breach. Any orders so issued may be enforced
by preliminary or permanent injunction in any court of
competent jurisdiction subject to general principles of equity
applicable to such proceedings. The arbitrator shall also be
authorized to award and apportion reasonable attorneys' fees
to the prevailing party or parties in such action, in addition
to taxable costs of the arbitration.
C. In the event that Licensor declares a default under this
Agreement and requests termination as a remedy in its demand
for arbitration, it shall be the duty of the arbitrator to
determine whether the Licensee has committed a material breach
of any of the material covenants, terms or conditions of this
Agreement. If the arbitrator finds that there has been a
breach of any one or more of the terms thereof which is
material to the overall relationship of the parties under this
Agreement, the Licensee shall be afforded forty-five (45) days
from the date of the arbitrator's decision, or within such
additional time as the arbitrator may permit on request and
for good cause by Licensee, to cure such breach or to take
such actions or make such payments as the arbitrator may
require to ameliorate the effects of a default as a condition
to avoiding termination if such breach is not subject to cure.
If such material breach is curable and is not so cured, or if
such breach is not curable and the arbitrator does not
determine that there is an action or payment which would
appropriately ameliorate such breach, the Licensor shall have
the right to terminate this License upon written notice given
to Licensee within sixty (60) days of the later of (i) the
date of such arbitrator's decision, or (ii) the expiration of
the time afforded by the arbitrator for the cure. The
arbitrator may award such additional relief as the arbitrator
deems just, exclusive of termination, and may grant Licensor
the conditional right to terminate in the event Licensee fails
to comply with any remedies ordered by the arbitrator to
ameliorate the effects of a default which is not subject to
cure. The arbitrator's decision shall be final and binding
upon the parties, and it shall be a condition precedent to any
court action arising from an alleged breach of this License.
18. CESSATION OF USE OF LICENSED MARKS. Upon termination or expiration of this
Agreement, Licensee shall not thereafter use the Licensed Marks, including the
trade name GOLDEN BEAR, but it shall have the right to exhaust its inventory of
supplies bearing said marks, provided that they meet the Licensor's quality
standards. Licensee shall delete GOLDEN BEAR from its corporate name as soon as
reasonably practical after such expiration or termination.
19. NOTICES. Except as otherwise provided in this Agreement, all notices
required or permitted to be given hereunder shall be sent to the other in
writing and shall be valid and sufficient only if sent by facsimile transmission
and confirmed by registered or certified mail or the equivalent, postage
prepaid, addressed as follows:
LICENSOR: LICENSEE:
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President President
Golden Bear International, Inc. Golden Bear Golf, Inc.
00000 X.X. Xxxxxxx Xx. 0 00000 X.X. Xxxxxxx Xx. 0
Xxxxx Xxxx Xxxxx, XX 00000 Xxxxx Xxxx Xxxxx, XX 00000
Either party hereto may change its address by a notice given to the other party
in the manner set forth above.
20. ENTIRE AGREEMENT; AMENDMENTS. This Agreement represents the entire
understanding and agreement into which all prior negotiations and agreements are
merged between the parties hereto with respect to the subject matter hereof; and
it can be amended, supplemented or changed, or any provision hereof can be
waived, only by a written instrument making specific reference to this License
signed by the party against whom enforcement of any such amendment, supplement,
modification or waiver is sought.
21. SUCCESSORS AND ASSIGNS. This Agreement shall be binding upon and shall inure
to the benefit of the parties hereto and their respective successors and
permitted assigns.
22. PARAGRAPH HEADINGS. The paragraph headings contained in this Agreement are
for reference purposes only and shall not affect in any way the meaning or
interpretation of this Agreement.
23. APPLICABLE LAW. This Agreement shall be governed by the law of the State of
Florida.
24. SEVERABILITY. If any time subsequent to the date hereof, any provision of
this Agreement shall be held by any court of competent jurisdiction to be
illegal, void or unenforceable, in whole or in part, such provision (to the
extent of such illegality or unenforceability) shall be of no force and effect,
but the illegality or unenforceability of such revision shall have no effect
upon and shall not impair the enforceability of any other provision of this
Agreement.
25. CONSTRUCTION. All terms and words used in this Agreement, regardless of the
number, format or gender in which they are used, shall be deemed and construed
to include any other number (singular or plural), or any format (hyphenated or
capitalized), or any other gender (masculine, feminine or neuter), and the term
"and" shall include "or" and vice versa, as the contents or sense of this
Agreement may require, the same as if the words had been fully and properly
written in the proper number, format, gender or expression.
IN WITNESS WHEREOF, the parties hereto have duly caused this Agreement
to be executed by their duly authorized representatives as of the day and year
first above written.
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GOLDEN BEAR INTERNATIONAL, INC. GOLDEN BEAR GOLF, INC.
By:_________________________ By:___________________________
Title:________________________ Title:__________________________
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