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Exhibit 10(e)
TRADE NAME AND TRADEMARK LICENSE AGREEMENT
between
GULTON INDUSTRIES, INC.
and
XXXX XX INDUSTRIES, INC.
Dated as of February 10, 1997
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TRADE NAME AND TRADEMARK LICENSE AGREEMENT
TRADE NAME AND TRADEMARK LICENSE AGREEMENT (the "License
Agreement"), dated as of February 10, 1997, between XXXX XX INDUSTRIES, INC., a
Delaware corporation ("Licensor"), and GULTON INDUSTRIES, INC., a Delaware
corporation ("Licensee," and together with Licensor, the "Parties" or
individually a "Party").
W I T N E S S E T H
WHEREAS, Licensor, Licensee, Xxxx XX PLC and Greenwich Street Audio,
LLC are parties to a Purchase Agreement, dated as of December 12, 1996, and
amended as of December 18, 1996 (the "Purchase Agreement"), providing, among
other things, for execution and delivery of this License Agreement (capitalized
terms used herein without definition shall have the meanings set forth in the
Purchase Agreement);
WHEREAS, Licensor is the owner of, and, in connection with the Audio
Products Business, has used directly or indirectly through its subsidiaries the
trade names, service marks and trademarks "XXXX XX", "XXXX XX AUDIO CONTROL
TECHNOLOGY", "XXXX XX AUDIO SYSTEMS", "XXXX XX AUDIO NORTH AMERICA", "XXXX XX
CINEMA SYSTEMS" and "XXXX XX PRO AUDIO" (such names and marks, together with any
and all common law rights pertaining thereto, are referred to collectively as
the "Licensed Marks");
WHEREAS, Licensor desires to license to Licensee and Licensee
desires to obtain the right for itself and any Audio Products Group Company to
use the Licensed Marks in connection with the Audio Products Business on the
terms set forth herein;
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NOW, THEREFORE, in consideration of the foregoing premises, the
mutual premises and covenants contained herein, and other good and valuable
consideration, the receipt and sufficiency of which is hereby acknowledged, the
Parties agree as follows:
1. Grant of License
1.1 Grant. (a) Subject to the terms and conditions set forth in this
License Agreement, Licensor hereby grants to Licensee and Licensee hereby
accepts, a nonexclusive royalty-free right and license, with the right to
sublicense as permitted by this Section 1, of utilizing all rights of Licensor
that exist on the date hereof in and to the Licensed Marks in any jurisdiction
in the world in which Licensee conducts the Audio Products Business (the
"Territory") as its trademarks, service marks and trade names, and the
trademarks, service marks and trade names of any or all of the Audio Products
Group Companies, for the purposes and the periods set forth in this Section 1.
(b) To the extent that any member of the Audio Products Group is, as
of the date hereof, using either or both of the Licensed Marks as part of its
corporate name, such Audio Products Group Company may continue to use such
Licensed Xxxx as necessary or useful in connection with the conduct of its
business until such time as the applicable corporate name change contemplated by
Section 1.3 has been effected. In addition, to the extent any member of the
Audio Products Group uses, as of the date hereof, either or both of the Licensed
Marks on stationery, signage, invoices, receipts, forms, packaging, products,
advertising, promotional materials, training and service literature and
materials and similar items ("Marked Materials"), and to the extent either or
both of the Licensed Marks appear on any inventory at the time of Closing, the
Audio Products Group Companies may (i) use the existing supplies of such Marked
Materials or (ii) sell such inventory without altering or modifying such Marked
Materials or inventory or removing such trademarks, service marks, brand names
or trade, cor-
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porate or business names for a period of eighteen months after the Closing. With
respect to tooling bearing either or both of the Licensed Marks, the Audio
Products Group Companies may use such tooling to manufacture products of the
Audio Products Business for a period of twelve months following the Closing and,
thereafter, may sell any inventories of such products bearing such Licensed Xxxx
until the earlier to occur of the following (x) such inventories are exhausted,
or (y) 36 months after the Closing. If requested in writing by Licensor
following the expiration of the time periods set forth in Section 1.3, Licensee
will provide written confirmation of its compliance with the requirements of
such Section .
(c) Licensee may grant a sublicense of any rights granted to
Licensee hereunder to any Audio Products Group Company during the Term (as
defined in Section 6.1 hereof), provided, however, that no sublicensee pursuant
to this Section 1 shall be permitted to sublicense to any other party the rights
granted to it, and provided, further, that any such permitted sublicensee shall
be bound by the terms and conditions of this License Agreement and expressly
shall acknowledge that Licensor is an intended third party beneficiary of such
sublicense with respect to the ownership, validity and maintenance of the
Licensed Marks and quality control and other restrictions on such sublicensee's
use of the Licensed Marks.
1.2 Alternative Grant. In the event that the laws of a specific
country in the Territory do not permit licensing of the Licensed Marks as
contemplated herein (e.g., because such Licensed Marks are not subject to a
trademark registration in such country), Licensor shall, at the request of
Licensee, enter into an agreement expressly allowing Licensee to use the
Licensed Marks on the terms and conditions of this License Agreement, to the
extent such terms and conditions are applicable and legally permissible, and
forebearing from objecting to any such use by Licensee of the Licensed Marks in
such country as contemplated herein.
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1.3 Restrictions on Use. Within 60 days of the Closing, Licensee
shall change the corporate names of the Audio Products Group Companies organized
in the United States so that such names do not include the Licensed Marks or any
name confusingly similar to the Licensed Marks. Within 6 months of the Closing,
Licensee shall change the corporate names of the Audio Products Group Companies
organized outside the United States so that such names do not include the
Licensed Marks or any name confusingly similar to the Licensed Marks.
1.4 Exceptions. Notwithstanding anything set forth in this License
Agreement to the contrary, if, prior to the Closing Date, Licensor or any of the
Audio Products Group Companies has licensed the Licensed Marks to any entity
pursuant to terms that Licensee cannot rescind or terminate without payment or
other costs or expenses, then, only with respect to such non-rescindable or
non-terminable licenses, Licensee shall not be required to cease use of the
Licensed Marks within the time periods otherwise specified herein.
2. Quality Standards and Control.
2.1 Quality Control. Licensee agrees to use the Licensed Marks in
accordance with such commercially reasonable quality standards and
specifications as may be set by Licensor and communicated in writing to Licensee
from time to time (the "Quality Standards"), provided, that Licensor
acknowledges that it is aware of the Quality Standards currently maintained by
the Audio Products Group Companies, that such Quality Standards are acceptable
to Licensor and that Licensee shall be in compliance with the terms of this
paragraph 2.1 throughout the Term so long as it maintains Quality Standards of
an equal or higher level.
2.2 Inspection and Approval. From time to time, upon Licensor's
reasonable request in writing, Licensee shall, at Licensor's expense, (i)
provide Licensor with representative samples of ways in which the Licensed Marks
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are then being used by Licensee (or photographs depicting the same), and (ii)
permit Licensor to inspect the places of business where the Licensed Marks are
used, in each case for Licensor's inspection and approval of such use.
2.3 Deficiencies. In the event Licensor notifies Licensee in writing
of its failure to maintain proper Quality Standards with respect to the use of
the Licensed Marks, Licensee shall use reasonably diligent efforts to cure the
cause of such failure or, if cure is not possible within a reasonable period of
time under the circumstances of the use at issue, to discontinue such
non-conforming uses; provided, however, that Licensee shall be deemed to have
maintained appropriate Quality Standards if the quality of such uses is not
materially different from uses previously approved by Licensor or made by
Licensor prior to the commencement of the Term hereof.
3. Compliance with Laws. Licensee shall use the Licensed Marks only
in compliance with applicable law. Upon Licensor's reasonable written request,
Licensee shall include any notice or legend concerning ownership and/or license
of the Licensed Marks that Licensor reasonably deems advisable or required by
law.
4. Ownership. (a) All uses to be made by Licensee of the Licensed
Marks shall inure to the benefit of the Licensor. Licensee shall acquire no
right, title or interest in the Licensed Marks or any goodwill associated
therewith apart from the rights granted to Licensee herein.
(b) This License Agreement shall not affect Licensor's right to
enjoin or obtain relief against any acts by third parties of trademark
infringement, dilution or unfair competition.
(c) At the reasonable request of Licensor, Licensee shall, at
Licensor's expense, execute and deliver any and all documents necessary to enter
Licensee as a
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registered user of the Licensed Marks in each country of the Territory to the
extent required by law.
(d) Licensee shall not seek to register with the United States
Patent and Trademark Office, any state trade xxxx office, or the equivalent
trademark office in any foreign or other jurisdiction, either during or after
the Term, any name, xxxx, symbol, device, configuration, or other designation
confusingly similar to the Licensed Marks.
(e) Licensor makes no representation or warranty as to the scope or
validity of Licensor's right to use the Licensed Marks other than as provided
herein.
5. Infringement. Each Party will promptly notify the other upon
becoming aware of any and all infringement, imitation, dilution or illegal use
of the Licensed Marks. Licensor shall have the right, but not the obligation, to
bring action against any infringement, imitation, dilution or illegal use of the
Licensed Marks and to take any other actions that it may deem proper or
necessary for the protection of the Licensed Marks. Upon Licensor's request,
Licensee shall cooperate in connection with any such action brought by Licensor,
at Licensor's expense.
6. Term; Effects of Termination.
6.1 Term. The term (the "Term") of this License Agreement shall
commence upon the date hereof and shall continue in effect until the last right
and license granted herein has terminated.
6.2 Effects of Termination. Upon termination of this License
Agreement, all rights of Licensee to use the Licensed Marks shall cease, and
Licensee shall execute all documents reasonably necessary to evidence and record
with the proper authorities the termination of Licensee's trademark license
rights granted herein.
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7. Notices. All notices, requests, demands and other communications
required or permitted hereunder shall be in writing and shall be deemed to have
been duly given: (a) if delivered by hand, when delivered; (b) if sent by telex,
telecopy, cable (and confirmed by telephone) or by overnight delivery, when
received, or (c) if sent by mail,
five days after being mailed, certified or registered mail, with postage
prepaid:
(a) if to Licensor, to it at:
Xxxx XX Industries, Inc.
One Town Centre
000 Xxxx Xxxxx Xxxxxxx Xxxxxxx
Xxxxxxx, Xxx Xxxx 00000
Attention: Xxxx X. Xxxxx
Telecopy:
with a copy to:
Lippes, Xxxxxxxxxxx, Xxxxxxx
& Xxxxxx, LLP
700 Guaranty Building
00 Xxxxxx Xxxxxx
Xxxxxxx, Xxx Xxxx 00000
Attention: Xxxxxx X. Xxxxxx, Esq.
Telecopy: (000) 000-0000
or to such other person or address as Licensor shall furnish
to Licensee in writing.
(b) if to Licensee, to it at:
Gulton Industries, Inc.
000 Xxxxx Xxxxxx
Xxxxxxxx, Xxxxxxxx 00000
Attention: Xxxxxx X. Xxxxx
Telecopy: (000) 000-0000
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with a copy to:
Debevoise & Xxxxxxxx
000 Xxxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Attention: Xxxxxx X. Xxxxxx, Esq.
Telecopy: (000) 000-0000
or to such other person or address as Licensee shall furnish to Licensor in
writing.
All such notices, requests, demands, waivers and other
communications shall be deemed to have been received (w) if by personal
delivery, on the day after such delivery, (x) if by certified or registered
mail, on the seventh business day after the mailing thereof, (y) if by next-day
or overnight mail or delivery, on the day delivered, (z) if by telecopy or
telegram, on the next day following the day on which such telecopy or telegram
was sent, provided that a copy is also sent by certified or registered mail.
8. Miscellaneous.
8.1 Entire License Agreement. This License Agreement sets forth the
entire agreement and understanding of the Parties hereto in respect of the
subject matter contained herein, and supersedes all prior agreements, promises,
covenants, arrangements, communications, representations or warranties, whether
oral or written, between the Parties with respect to the subject matter hereof.
8.2 Amendment and Modification. This License Agreement may be
amended, modified and supplemented only by written agreement of the Parties
hereto.
8.3 Waiver of Compliance. Any failure of Licensor or Licensee to
comply with any obligation, covenant, agreement or condition herein may be
expressly waived in writing by the President or a Vice President of
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Licensor or Licensee, but such waiver or failure to insist upon strict
compliance with such obligation, covenant, agreement or condition shall not
operate as a waiver of, or estoppel with respect to, any subsequent or other
failure.
8.4 Assignment. This License Agreement and all of the provisions
hereof shall be binding upon and inure to the benefit of the Parties hereto and
their respective successors and permitted assigns, but neither this License
Agreement nor any of the rights, interests or obligations hereunder shall be
assigned by either of the Parties hereto without the prior written consent of
the other Party; provided, that Licensee may assign this License Agreement to
any subsidiary of Licensee, or to any lender to Licensee or any subsidiary or
affiliate thereof as security for obligations to such lender, and provided,
further, that no assignment to any such lender shall in any way affect
Licensee's obligations or liabilities under this License Agreement.
8.5 No Agency. Licensor and Licensee are in dependent contractors
with respect to each other, and nothing herein shall create any association,
partnership, joint venture or agency relationship between them.
8.6 Third Parties. Except as specifically set forth or referred to
herein, nothing herein expressed or implied is intended or shall be construed to
confer upon or give to any person or corporation other than the Parties hereto
and their successors or assigns, any rights or remedies under or by reason of
this License Agreement.
8.7 Severability. The invalidity, illegality or unenforceability of
any provision, term, or agreement contained in or made a part of this License
Agreement in a particular jurisdiction shall not affect the validity, legality
or enforceability of the remainder of this License Agreement in such
jurisdiction or the validity, legality or enforceability of the provision, term
or agreement at issue in any other jurisdiction, and the Parties shall negotiate
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in good faith to replace the invalid, illegal or unenforceable provision, term
or agreement with a valid, legal and enforceable provision in such jurisdiction
that has the effect nearest to that of the provision, term, or agreement being
replaced.
8.8 Counterparts. This License Agreement may be executed
simultaneously in two or more counterparts, each of which shall be deemed an
original, but all of which together shall constitute one and the same
instrument.
8.9 Further Assurances. Each of the Parties hereto agrees to take
all further actions and to execute and deliver, in the name and on behalf of the
Licensee or the Licensor, all such documents and do, in the name and on behalf
of the Licensee or Licensor, all such other acts and things necessary, desirable
or proper to vest, perfect or confirm its right, title or interest in, to or
under any of the rights, privileges, immunities, powers, purposes, franchises,
properties or assets of the Licensee and otherwise to carry out the purposes of
this License Agreement.
8.10 Headings. The headings of the Sections of this License
Agreement are inserted for convenience only and shall not constitute a part
hereof or affect in any way the meaning or interpretation of this License
Agreement.
8.11 Governing Law and Jurisdiction. This License Agreement and the
legal relations among the Parties hereto shall be governed by and construed in
accordance with the internal laws of the State of New York without regard to its
conflicts of law doctrine.
8.12 Waiver of Jury Trial. EACH PARTY HERETO ACKNOWLEDGES AND AGREES
THAT ANY CONTROVERSY WHICH MAY ARISE UNDER THIS LICENSE AGREEMENT IS LIKELY TO
INVOLVE COMPLICATED AND DIFFICULT ISSUES, AND THEREFORE IT HEREBY IRREVOCABLY
AND UNCONDITIONALLY WAIVES ANY RIGHT IT MAY HAVE TO A TRIAL BY JURY IN RESPECT
OF ANY LITIGATION DIRECTLY OR
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INDIRECTLY ARISING OUT OF OR RELATING TO THIS LICENSE AGREEMENT, OR THE BREACH,
TERMINATION OR VALIDITY OF THIS LICENSE AGREEMENT, OR THE TRANSACTIONS
CONTEMPLATED BY THIS LICENSE AGREEMENT. EACH PARTY CERTIFIES AND ACKNOWLEDGES
THAT (A) NO REPRESENTATIVE, AGENT OR ATTORNEY OF THE OTHER PARTY HAS
REPRESENTED, EXPRESSLY OR OTHERWISE, THAT SUCH OTHER PARTY WOULD NOT, IN THE
EVENT OF LITIGATION, SEEK TO ENFORCE THE FOREGOING WAIVER, (B) IT UNDERSTANDS
AND HAS CONSIDERED THE IMPLICATIONS OF THIS WAIVER, (C) IT MAKES THIS WAIVER
VOLUNTARILY, AND (D) IT HAS BEEN INDUCED TO ENTER INTO THIS LICENSE AGREEMENT
BY, AMONG OTHER THINGS, THE MUTUAL WAIVERS AND CERTIFICATIONS IN THIS SECTION
8.12.
8.13 Equitable Relief. Each Party (the "Breaching Party")
acknowledges that the other Party (the "Non-Breaching Party") will suffer
irreparable harm as a result of the material breach by the Breaching Party of
any covenant or agreement to be performed or observed by the Breaching Party
under this License Agreement, and acknowledges that the Non-Breaching Party
shall be entitled to apply for and receive from any court or administrative body
of competent jurisdiction a temporary restraining order, preliminary injunction
and/or permanent injunction, without any necessity of proving damages, enjoining
the Breaching Party from further breach of this License Agreement or further
infringement or impairment of the rights of the Non-Breaching Party.
8.14 Construction of this License Agreement. In any construction of
this License Agreement, the License Agreement shall not be construed against any
Party based upon the identity of the drafter of the License Agreement or any
provision of it.
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IN WITNESS WHEREOF, the Parties hereto have caused this License
Agreement to be executed as of the date first above written.
XXXX XX INDUSTRIES, INC.
By /s/ XXXX X. XXXXX
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Name: Xxxx X. Xxxxx
Title: Vice President and
Chief Financial Officer
GULTON INDUSTRIES, INC.
By /s/ XXXXXXXXX X. VANDEN BEUKEL
-------------------------------
Name: Xxxxxxxxx X. Vanden Beukel
Title: Vice President and
Secretary
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