Exhibit 10.19
LICENSE AGREEMENT
This License Agreement (the "License Agreement") is made on the 1st day of
January, 2011 (the "Effective Date"), by and between AMINCOR, INC., a Nevada
corporation, having an office and principal place of business at 0000 Xxxxxx xx
xxx Xxxxxxxx, 00xx Xxxxx, Xxx Xxxx, XX 00000 (hereinafter "Licensor"), and
BRESCIA APPAREL CORP., a [New York] corporation, having an office and principal
place of business at 000 X. 00xx Xxxxxx, #000, Xxx Xxxx, XX 00000 (hereinafter
"Licensee").
STATEMENT
Licensor is the owner of U.S. Trademark Registration No. 1,319,471 for the
xxxx XXXXXXX HARBOR, covering men's "outerwear, namely rainwear and coats" (the
"Trademark"). Licensor and Licensee have agreed to enter into this License
Agreement whereby Licensor will grant to Licensee the exclusive right and
license in North America to use the Trademark in the category noted above as
part of Licensee's corporate name and in connection with the sale and
distribution of outerwear, limited specifically to men's outerwear and rainwear
both in textile goods, which are all Licensed Products made from man made
fabrics ("Textile Goods") and leather goods, which are all Licensed Products
made from animal skin ("Leather Goods"), which bear, incorporate or refer to the
Trademark, or which are otherwise used in connection with the Trademark
(collectively, the "Licensed Use").
NOW, THEREFORE, in consideration of the mutual promises and covenants
contained herein and for good and valuable consideration, the receipt and
sufficiency of which is hereby acknowledged, it is agreed as follows:
1. Grant of License, License Fee and Advertising Expenditures.
a) Grant of License. Licensor hereby grants to Licensee and Licensee hereby
accepts the exclusive right and license in North America to use the
Trademark for and in connection with the design, manufacture, distribution
and sale at wholesale of the Licensed Products (as defined below)
throughout North America, under the terms and conditions hereinafter set
forth. Licensee may use the Trademark on invoices, order forms, stationery,
and telephone and directory listings, on or in connection with all Licensed
Products, business materials, on advertising, and on all Packaging
Materials (as defined below). Licensee shall take all reasonable steps to
ensure that all of Licensee's suppliers, sources and contract
manufacturers, as well as Licensee's own manufacturing facilities (if any)
shall be in full compliance with all of the terms and conditions of this
Agreement, and otherwise in full compliance with all applicable laws,
regulations and ordinances (including those relating to the payment of fair
wages and the use of underage labor).
b) License Fee. In consideration of the grant of license, Licensee agrees to
pay Licensor a fee (the "License Fee") as a percentage of Net Sales in
accordance with the following schedule:
Year License Fee as a Percentage of Net Sales
---- ----------------------------------------
1. (January 1, 2011 through 10% of Textile Goods Net Sales and 5% of
June 30, 2012) Leather Goods Net Sales
2. (July 1, 2012 through 10% of Textile Goods Net Sales and 5% of
June 30, 2013) Leather Goods Net Sales
3. (July 1, 2013 through 7% of Textile Goods Net Sales and 5% of
June 30, 2014) Leather Goods Net Sales
4. (July 1, 2014 through 7% of Textile Goods Net Sales and 5% of
June 30, 2015) Leather Goods Net Sales
5. (July 1, 2015 through 7% of Textile Goods Net Sales and 5% of
June 30, 2016) Leather Goods Net Sales
c) "Net Sales" shall mean the total of Licensee's gross wholesale sales of
products bearing the Trademark (collectively, the "Licensed Products")
shipped by Licensee, exclusive of transportation costs or taxes separately
stated on the invoices, less returns, markdowns and allowances in the
ordinary course of business. Except as specifically provided for herein, no
deductions shall be made for other discounts, advertising allowances,
rebates, uncollectible accounts or other costs associated with
manufacturing or sourcing the Licensed Products. The License Fee shall be
due on each January 1, April 1, July 1 and October 1 based on the Net Sales
of the previous quarter (each a "Due Date") during the Term (as defined
below), and paid no later than sixty (60) days after the applicable Due
Date.
d) Minimum Net Sales. Licensee shall be responsible to pay Licensor the
License Fee due on each January 1, April 1, July 1 and October 1 throughout
the Term of this License Agreement. The minimum Net Sales shall be as
follows:
Year Minimum Net Sales
---- -----------------
1. (January 1, 2011 through $0
June 30, 2012)
2. (July 1, 2012 through $1,000,000 (approximately 60% Leather Goods/
June 30, 2013) 40% Textile Goods)
3. (July 1, 2013 through $3,000,000 (approximately 60% Leather Goods/
June 30, 2014) 40% Textile Goods)
4. (July 1, 2014 through $5,000,000 (approximately 60% Leather Goods/
June 30, 2015) 40% Textile Goods)
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5. (July 1, 2015 through $8,000,000 (approximately 60% Leather Goods/
June 30, 2016) 40% Textile Goods)
e) Minimum License Fee: So long as this Agreement is in effect, Licensee shall
be obligated to pay Licensor a minimum License Fee based on the Minimum Net
Sales thresholds set forth herein, irrespective of whether Licensee
achieves such Minimum Net Sales for the respective year.
By way of example, in year 2 of the First Renewal Term, Licensee shall be
obligated to pay Licensor a minimum License Fee of $70,000 (Leather Goods
Net Sales (approximately $600,000) x .05 + Textile Goods Net Sales
(approximately $400,000) x .10 = $30,000 + $40,000 = $70,000 minimum
License Fee for year 2 of the First Renewal Term.
Similarly, in year 3 of the First Renewal Term, Licensee shall be obligated
to pay Licensor a minimum License Fee of $210,000 (Leather Goods Net Sales
(approximately $1,800,000) x .05 + Textile Goods Net Sales (approximately
$1,200,000) x .10 = $90,000 + $120,000 = $210,000 minimum License Fee for
year 3 of the First Renewal Term, and so on so forth as applicable for the
respective year.
f) Licensee shall keep proper books of record and account in which full, true
and correct entries in conformity with prudent business practices and all
requirements of law shall be made of all dealings and transactions related
to this License Agreement and permit Licensor during normal business hours
and upon reasonable notice to review, examine, audit and make copies of
Licensee's books and records at any reasonable time and as often as may
reasonably be desired to verify Net Sales or any other financial condition
of Licensee.
2. Term.
a) This License Agreement shall commence on the Effective Date and shall
continue for an initial term of one and one-half (1.5) years extending up
to and through June 30, 2012 (the "Initial Term"), unless sooner terminated
as provided herein.
b) Unless Licensee shall have given Licensor one-hundred twenty (120) days
written notice before the end of the Initial Term of its intent to
terminate this License Agreement, then this License Agreement shall
automatically renew for a renewal period of four (4) years, commencing upon
the expiration of the Initial Term through June 30, 2016 (the "First
Renewal Term"), provided that Licensee is not in breach of any material
obligation under this License Agreement as of the date of the commencement
of the First Renewal Term. All terms and conditions of this License
Agreement shall remain in full force and effect for the First Renewal Term,
unless the parties mutually agree otherwise in writing signed by or on
behalf of all parties. The Initial Term, the First Renewal Term and the
Second Renewal Term (as defined below), if any, shall constitute the
"Term." The "Term" shall also be deemed to refer to only the Initial Term
if Licensee shall have given Licensor one-hundred twenty (120) days written
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notice before the end of the Initial Term of its intent to terminate this
License Agreement.
c) Unless Licensee shall have given Licensor one-hundred twenty (120) days
written notice before the end of the First Renewal Term of its intent to
terminate this License Agreement, then this License Agreement shall
automatically renew for a renewal period of four (4) years, commencing upon
the expiration of the First Renewal Term through June 30, 2020 (the "Second
Renewal Term"), provided that Licensee is not in breach of any material
obligation under this License Agreement as of the date of the commencement
of the Second Renewal Term. All terms and conditions of this License
Agreement shall remain in full force and effect for the Second Renewal
Term, unless the parties mutually agree otherwise in writing signed by or
on behalf of all parties.
During the Second Renewal Term, Licensee shall be responsible to pay
Licensor the License Fee, based on the percentages of Net Sales listed
under Section 1(b) above, due on each January 1, April 1, July 1 and
October 1 throughout the Second Renewal Term of this License Agreement. The
minimum Net Sales for the Second Renewal Term shall be as follows:
Year of Second Renewal Term Minimum Net Sales
--------------------------- -----------------
1. (July 1, 2016 through $11,000,000 (approximately 60% Leather
June 30, 2017) Goods/40% Textile Goods)
2. (July 1, 2017 through $14,000,000 (approximately 60% Leather
June 30, 2018) Goods/40% Textile Goods)
3. (July 1, 2018 through $17,000,000 (approximately 60% Leather
June 30, 2019) Goods/40% Textile Goods)
4. (July 1, 2019 through $20,000,000 (approximately 60% Leather
June 30, 2020) Goods/40% Textile Goods)
d) Notwithstanding any language contained herein to the contrary, if Licensee
shall fail to meet the Minimum Net Sales requirement set forth herein for
the applicable year of this License Agreement, then Licensor shall have the
absolute right during the Initial Term, the First Renewal Term or the
Second Renewal Term to terminate this License Agreement upon ninety (90)
days written notice from Licensor to Licensee.
3. Quality Control and Standards.
a) Licensee will use the Trademark in a manner consistent with Licensor's
standards of, and reputation for, quality. Licensee agrees that the
Trademark has an established prestige and goodwill, is well recognized by
the trade and the public, and that the Trademark is of great importance and
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value to Licensor. Licensee agrees that all uses of the Trademark,
including all tags, labels, cartons, containers, wrapping and other
materials in which or with which Licensed Products are packaged or
displayed (the "Packaging Materials"), will be in a commercially acceptable
and responsible manner to protect the prestige of Licensor and the
Trademark. The manner in which Licensee uses the Trademark, and the quality
of products and/or services sold or offered by Licensee under the Trademark
(and all related advertising, promotion business materials and packaging),
will be commensurate with, and at least as high as, the quality, style, and
manner in which Licensor has used the Trademark. In the event that the
quality standards of the Trademark are not met or, in the event that said
quality standards are not maintained, Licensee shall, upon reasonable
written request by Licensor, discontinue such objectionable or
non-conforming use of the Trademark.
b) Licensee agrees that the style and quality of all Licensed Products
(including all trim and labeling) and their Packaging Materials shall be
subject to Licensor's approval (the "Approval Process"); and that the
Licensed Products will be manufactured, packaged, sold, distributed and
promoted in accordance with all applicable laws and regulations. Licensor
shall appoint a designated representative to conduct the Approval Process
(the "Representative"). Licensee shall submit to the Representative, for
prior review and approval at least one (1) representative sample or CAD of
all proposed Licensed Products which are intended to incorporate the
Trademark, including all designs, prototypes, trim and labels.
c) Licensee shall submit to the Representative, for prior review and approval
and keep Representative reasonably apprised of all channels of distribution
and advertising related to the Licensed Products. Representative shall have
the absolute and unconditional right to approve or disapprove of such
channels of distribution or advertising related to the Licensed Products.
4. Trademark Notice. Licensee agrees that it will not use the Trademark for any
other purpose, goods or services not covered by this License Agreement, unless
Licensor shall have consented to such additional use. Licensee agrees that it
shall cause appropriate trademark notices and indicia of ownership of the
Trademark to appear on any display thereof in accordance with Licensor's
reasonable instructions.
5. Property of Licensor. Licensee recognizes the great value of the goodwill
associated with the Trademark, and acknowledges that the Trademark and all
rights therein and goodwill pertaining thereto belong to Licensor, and that
Licensor owns the exclusive right to use and authorize others to use the
Trademark outside of North America, including but not limited to, the use of the
Licensed Products. To the extent any rights in and to the Trademark are deemed
to accrue to Licensee, as a matter of law or otherwise, Licensee hereby assigns
any and all such rights, at such time as they may be deemed to accrue, including
all related goodwill, to Licensor. If a secondary label or new logo format of
the Trademark is to be used by Licensee, it shall be subject to the prior review
and approval by Licensor and will be owned by Licensor. Additionally, Licensee
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may not use, or authorize others to use, the Trademark (or variations or
formatives thereof) as part of a trade name or corporate name, or as part of the
name of a division of Licensee (unless specifically approved in writing by
Licensor).
6. Maintenance and Enforcement of Trademark. Licensee agrees to assist Licensor,
all at Licensor's cost and expense, to the extent reasonably necessary, to
perfect, maintain, protect and enforce rights in and to the Trademark.
7. Trademark Validity - No Challenge by Licensee. Licensee agrees that it will
not, during the Term of this License Agreement or thereafter, contest Licensor's
ownership rights to the Trademark or contest the validity of this License
Agreement. Except as expressly authorized herein, Licensee agrees not to use the
Trademark or other symbol or language which are substantially identical with,
colorably similar to, deceptively similar to or likely to be confused with the
Trademark, except as specifically authorized by Licensor.
8. Infringements. Licensee shall promptly notify Licensor in writing of any uses
which may come to Licensee's attention which may constitute infringements or
imitations by others (including suspected counterfeits) of the Trademark.
Licensor shall have the right to determine whether or not any action shall be
taken against any such infringements or imitations and Licensee shall not
institute any suit or take any action on its own. In the event that Licensor
determines, together with Licensee or acts at Licensee's request, to address any
infringement or other violation of the Trademark, Licensor and Licensee shall
share equally the total costs and expenses (including reasonable attorney's
fees) of such enforcement action. The selection of counsel and resolution of any
such actions shall be controlled solely by Licensor in its discretion.
9. Indemnification. Licensee hereby indemnifies Licensor and its parents,
subsidiaries, affiliates, officers, directors, shareholders, principals,
employees, agents and representatives, and their respective successors and
assigns individually and in the aggregate, against and save and hold each and
all of them harmless from any and all claims, losses, liability, damages and
expenses (including reasonable attorneys' fees and expenses) which may arise in
connection with Licensee's performance of this License Agreement, transactions
arising therefrom, and all matters relating to Licensee's use of the Trademark.
The provisions of this Section 9 and the obligations of Licensee set forth
herein shall survive expiration or other termination of this License Agreement.
10. Notices. All notices, requests, consents demands, approvals and other
communications, including the service of process, hereunder shall be deemed to
have been duly given, made or served if in writing and delivered personally or
sent by overnight carrier that requires the addressee to acknowledge receipt
thereof to the respective parties to this License Agreement as set forth below.
Informal communications between the parties may be properly transmitted by
e-mail or facsimile.
a) If to Licensor
Amincor, Inc.
0000 Xxxxxx xx xxx Xxxxxxxx, 00xx Xxxxx
Xxx Xxxx, XX 00000
Attn:
Fax:
e-Mail:
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b) If to Licensee:
Brescia Apparel Corp.
000 X. 00xx Xxxxxx, #000
Xxx Xxxx, XX 00000
Attn:
Fax:
e-Mail:
11. Applicable Law, Jurisdiction. This License Agreement is made pursuant to and
shall be governed by and construed in accordance with the laws of the State of
New York and, as applicable, the laws of the United States of America, as if
entered into and fully performed therein. Any dispute, controversy, difference
or issue which may arise between the parties, unless settled by mutual
consultation in good faith, shall be heard and determined exclusively in the
federal district court in New York City, New York (Manhattan), without regard to
choice of law or venue provisions; and each party hereby waives and relinquishes
all right to attack or vacate the personal jurisdiction or suitability of such
forum or venue. The parties each and all acknowledge and agree that all
judgments and directions by the forum court (including temporary, preliminary
and permanent injunctions) shall be complied with and enforceable against the
parties, wherever they may be located. The parties further agree and acknowledge
that all prior discussions concerning the subject matter of this License
Agreement are merged into and superceded hereby, and there are no oral or other
undertakings.
12. Severability. In the event that any term or provision of this License
Agreement shall for any reason be held to be invalid, illegal or unenforceable
in any respect, such invalidity, illegality or unenforceability shall not affect
any other term or provision, and this License Agreement shall be interpreted and
construed as if such term or provision, to the extent the same shall have been
held to be invalid, illegal or unenforceable, had never been contained herein.
13. Integration, English Language. This License Agreement represents the entire
understanding between the parties hereto with respect to the subject matter
hereof and supersedes all previous representations, understandings or
agreements, oral or written, between the parties with respect to the subject
matter hereof. This License Agreement cannot be modified except by a written
instrument signed by the parties hereto. The English language version of this
License Agreement is and shall be deemed to be the only version hereof, valid
and enforceable in accordance with its terms in all jurisdictions, countries and
before all legal tribunals.
14. No Third Party Beneficiaries. Except as specifically identified herein,
there are no third party beneficiaries to this License Agreement.
15. No Election of Remedies. All rights and remedies that either party may have
hereunder or by operation of law are cumulative and the pursuit of one right or
remedy will not be deemed an election to waive or renounce any other right or
remedy.
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16. Further Assurances. The Parties shall execute such further documentation and
perform such further actions, including the recordation of such documentation
with appropriate authorities, as may be reasonably requested by either of the
parties hereto, to evidence or give effect to this License Agreement or to
enforce the Trademark.
17. Binding Agreement. This License Agreement will be binding upon, and inure to
the benefit of, the parties and their respective successors, heirs,
sub-licensees, assigns, transferees and agents.
18. Confidentiality. Licensee and Licensor acknowledge that all non-public
information relating to the business and operations of the other which it learns
during the Term of this Agreement or has learned during negotiation of this
Agreement (including any renewals, extensions or amendments thereof),
(hereinafter collectively referred to as "Data") are valuable property of the
providing party. Each of Licensor and Licensee acknowledges the need to preserve
the confidentiality and secrecy of the Data of the other and agrees that, both
during the Term of this Agreement and after the expiration or termination
hereof, it shall not use or disclose the other's Data (except, (a) as required
to perform under this Agreement, or (b) as may be reasonably necessary in
connection with any lawsuit or governmental proceeding (provided that each party
shall take reasonable steps to ensure its confidentiality in any such proceeding
and give written notice with ample time to the other prior to disclosure to take
any steps to maintain such confidentiality)). Each of Licensor and Licensee
shall take all necessary steps to ensure that its use and use by its authorized
designees (which use shall be solely as necessary for, and in connection with,
the manufacture, distribution, sale, advertising or promotion of Licensed
Products hereunder) shall preserve in all respects the confidentiality and
secrecy of the Data. Notwithstanding the foregoing, the obligation to retain any
Data as confidential shall terminate only at such time and to the extent that
such becomes available on a non-confidential basis or becomes public knowledge
and in the public domain through no fault of such party. This obligation shall
survive the expiration or termination of this Agreement.
19. Force Majeure. The parties hereto shall not be liable for failure of
performance hereunder if occasioned by war, declared or undeclared, fire, flood,
interruption of transportation, embargo, accident, explosion, inability to
procure or shortage of supply of material, equipment or production facilities,
prohibition of import or export of the Licensed Products, governmental orders,
regulations, restrictions, priorities or rationing, or by strikes, lockouts, or
other labor troubles, interfering with the supplies of raw materials entering
into their production or any other event, cause or circumstance beyond such
party's control. Any suspension of performance by reason of this provision shall
be limited to the period during which such cause of failure exists, but such
suspension shall not affect the running of the Term of this Agreement.
20. Counterparts. This License Agreement may be executed in any number of
counterparts, and any party may execute any such counterpart, each of which when
executed and delivered, including by facsimile signature, shall be deemed to be
an original, and all of which counterparts together will constitute one and the
same instrument. This License Agreement shall become binding when all
counterparts taken together have been executed and exchanged between the
Parties.
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By their execution below, the parties hereto have agreed to all of the terms and
conditions of this License Agreement.
AMINCOR, INC. BRESCIA APPAREL CORP.
By: /s/ Xxxxxx X. Xxxxxxxxx By: /s/ Xxxxxxx Xxxxxxx
------------------------------ ------------------------------
Name: Xxxxxx X. Xxxxxxxxx Name: Xxxxxxx Xxxxxxx
Title: VP Title: Pres
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