EXHIBIT 10.33
THIRD AMENDMENT TO LICENSE AGREEMENT
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AMENDMENT to License Agreement, made as of the 16th day of March, 1998, by
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and between XXXXX INVESTMENT CO. ("Xxxxx"), a Delaware corporation, and XXXXXXX
SHOE COMPANY INC. ("Licensee"), a Delaware corporation.
W I T N E S S E T H:
WHEREAS, Xxxxx and Licensee are parties to a certain License Agreement
dated as of the 1st day of July, 1993, as amended by a First Amendment to
License Agreement dated as of the 2nd day of October, 1995 and as further
amended by a Second Amendment to License Agreement dated as of the 14th day of
April, 1997 (as so amended, the "Agreement"); and
WHEREAS, Xxxxx and Licensee are now desirous of further amending the
Agreement; and
WHEREAS, all terms used but not otherwise defined herein shall have the
meanings given to them in the Agreement.
NOW, THEREFORE, in consideration of the premises contained herein and their
mutual promises, the parties hereby amend the Agreement, effective as of the
date first above written, as follows:
1. Paragraph 4.3 is amended in its entirety to read in full as follows:
"4.3 Restriction on Other Marks. During the Term, Licensee shall not
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manufacture, sell, distribute or promote or enter into any
license or other agreement to manufacture, sell, distribute
or promote any product or category of products included in
the Merchandise bearing any trademark, trade name or other
xxxx (including, without limitation, Licensee's own
corporate name or trade name), except the Marks in
accordance with this Agreement, if such merchandise would
be, in price range, quality or style, in direct competition
with Xxxxx Merchandise."
2. A new section 4.8 is hereby added to the Agreement as follows:
"4.8 Licensee Personnel Matters. During the Term, Licensee (i) shall
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employ an employee to work exclusively on a full-time basis
to design and develop Xxxxx Merchandise, (ii) shall
promptly identify to Xxxxx the names of all Licensee
personnel and any and all changes thereof (which personnel
shall at all times be acceptable to Xxxxx) who are
responsible for the design, sales, merchandising and product
development of Xxxxx Merchandise (MSC Xxxxx Merchandise
Personnel) and, (iii) shall not change, divert, or relocate
any MSC Xxxxx Merchandise Personnel without the prior
consent of Xxxxx."
3. Clause (iv) of Subparagraph 8.3.1 (a) is amended in its entirety as
follows:
"(iv) Xxxx Xxxxxxx is no longer Chief Executive Officer
of the Licensee."
4. Paragraph 8.3.1(a) is further amended by adding subparagraph (vi) to
read as follows:
"(vi) Any one beneficial stockholder or affiliated group of
beneficial stockholders is at any time the beneficial
holder of 15% or more of the licensee's voting stock. The
right of termination under this subparagraph (vi) to be
exercised within 60 days of Xxxxx receiving notice of such
event."
5. Paragraph 9.3.2(a) is amended in its entirety to read in full as
follows:
"9.3.2 (a) This Agreement is personal to Licensee and Licensee may
not, without the prior written consent of Xxxxx, assign,
sublicense or otherwise transfer all or any portion of this
Agreement or any rights or obligations hereunder, whether
voluntarily, involuntarily, by operation of law or otherwise,
and any such attempted assignment or other transfer shall be
null and void and of no effect. Notwithstanding the
foregoing, Licensee may (i) merge with a newly formed
corporation, with no liabilities, solely for the purpose of
reincorporation and (ii) assign and sublicense retail license
rights hereunder to SLJ Retail as contemplated by the
Trademark Sublicense Agreement attached hereto as Exhibit A
and Xxxxx hereby acknowledges the consent to the terms of
such sublicense."
6. Paragraph 9 is hereby amended so as to add a new Paragraph 9.12, which
shall read in full as follows:
"9.12 Licensee shall promptly cause the Trademark Sublicense
Agreement to be amended so that Paragraph 9.3.2 of said
Trademark Sublicense Agreement
shall read as follows:
9.3.2 This Agreement is personal to the Company, and the Company may
not, without the prior written consent of Xxxxxxx and Xxxxx, assign,
sublicense or otherwise transfer all or any portion of this Agreement or
any rights or obligations hereunder, whether voluntarily, involuntarily,
by operation of law or otherwise, and any such attempted assignment or
other transfer shall be null and void and of no effect."
IN WITNESS WHEREOF, the parties have hereunto executed this Amendment to
the Agreement by officers thereto duly authorized as of the day and year first
above written.
XXXXX INVESTMENT CO., INC.
By: /s/ Xxxxxx X. Xxxxxx
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Xxxxxx X. Xxxxxx
Vice President
XXXXXXX SHOE COMPANY INC.
BY: /s/ Xxxx X. Xxxxxxx
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Xxxx X. Xxxxxxx
President
