ASSIGNMENT AND AMENDMENT OF LICENSE AGREEMENT,
AMENDMENT OF GUARANTY
AND CONSENT
THIS ASSIGNMENT AND AMENDMENT OF LICENSE AGREEMENT, AMENDMENT OF
GUARANTY AND CONSENT (this "Assignment and Amendment") is hereby made and
entered into by and among X.X. Xxxxx, Inc. ("Licensor"), Blue Concept, LLC
("Assignor") and Innovo Azteca Apparel, Inc. ("Assignee").
WHEREAS, Licensor and Assignor have entered into a Letter Agreement
executed on January 8, 2004, (the "License Agreement"), a copy of which is
attached hereto and incorporated herein as Exhibit A, pursuant to which Licensor
has granted to Assignor a license to exploit the "Xxxxxx Xxxxxxx" trademark on
specified categories of apparel under the terms and conditions set forth in said
License Agreement; and
WHEREAS, as an inducement to enter into the License Agreement, Licensor
and Xxxx Xxxx, as Managing Member of Assignor, ("Xxxx Xxxx"), entered into a
Guaranty Agreement with Licensor executed on January __, 2004 ("Guaranty
Agreement"), a copy of which is attached hereto and incorporated herein as
Exhibit B, whereby Xxxx Xxxx personally guaranteed the payment of contractually
obligated royalty payments to be paid to Licensor pursuant to the License
Agreement; and
WHEREAS, Assignor wishes to assign all of its right, title and interest
in and to the License Agreement to Assignee and Assignee wishes to accept and
assume the same; and
WHEREAS, Licensor and Xxxx Xxxx wish to amend paragraph 6 of the
Guaranty Agreement to clarify the continuity of the Xxxx Xxxx guaranty upon the
execution of this Assignment and Amendment; and
WHEREAS, the parties wish to amend paragraph 1 of the License Agreement
to acknowledge the potential creditworthiness of the Assignee in lieu of the
Xxxx Xxxx guaranty upon the expiration of the initial term of the License
Agreement; and
WHEREAS, Licensor has joined in this Assignment and Amendment as
evidence of its consent thereto and to the amendment of the Guaranty Agreement.
NOW, THEREFORE, for good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, the parties agree as follows:
1. Assignor does hereby assign, transfer, and set over to Assignee, its
successors, and assigns, all of Assignor's right, title, and interest in and to
the License Agreement. Assignor agrees to cooperate with Assignee and to execute
and deliver to Assignee all papers, instruments, and assignments as may be
necessary to vest all right, title, and interest in and to the aforesaid License
Agreement.
2. Assignee hereby assumes and agrees to perform all of the covenants,
conditions and agreements of the License Agreement required to be made, kept and
performed by Assignor from and after the date of this Assignment and Amendment.
3. Licensor joins in this Assignment and Amendment as evidence of its
consent to the same.
1
4. Licensor and Guez hereby delete Provision 6 of the Guaranty
Agreement in its entirety and replace it with the following new Provision 6 as
follows:
"6. A permitted assignment of the License Agreement shall in no
way extinguish the obligations of Xxxx Xxxx as Guarantor of the contractually
obligated royalty payments set forth in the License Agreement."
5. Licensor, Assignor and Assignee hereby amend Provision 1 of the
License Agreement to replace the second paragraph of Provision 1 with the
following paragraph:
"Should both Licensor and Licensee be satisfied with the
relationship, this agreement will be renewed for an additional three-year term
(the "Renewal Term"). The parties agree to negotiate in good faith the maximum
guaranteed royalties and minimum net sales for the Renewal Term beginning 120
days prior to the expiration of the Initial Term. In addition, should a Renewal
Term be entered into between the parties, the Guaranty Agreement will not
automatically renew and must be extinguished or renegotiated. Licensor agrees
that it will examine the creditworthiness of the Licensee, Assignee or any of
Assignee's corporate body affiliates in determining the necessity of an ongoing
guaranty."
6. This Assignment and Amendment shall be construed in accordance with
and governed by the laws of the State of New York. This Assignment and Amendment
shall be binding upon and inure to the benefit of the parties and their heirs,
legal representatives, successors and permitted assigns. This Assignment and
Amendment may be executed in two or more counterparts, each of which shall be
deemed to be an original.
IN WITNESS WHEREOF, this Assignment and Amendment has been executed to
be effective as of the 3rd day of February, 2004.
[REMAINDER OF THIS PAGE INTENTIONALLY LEFT BLANK.
SIGNATURE PAGE TO FOLLOW.]
2
Licensee/Assignor: Assignee:
------------------ ---------
BLUE CONCEPT, LLC INNOVO AZTECA APPAREL, INC.
/s/ Xxxx Xxxx /s/ Xxxxxx X. Xxxxxx, Xx.
------------------------------- -------------------------------
By: Xxxx Xxxx By: Xxxxxx X. Xxxxxx, Xx.
Its: Managing Member Its: Chief Executive Officer
Licensor: Guarantor:
--------- ----------
X.X. XXXXX, INC. XXXX XXXX
/s/ Xxxxxxx Xxxxx /s/ Xxxx Xxxx
------------------------------- -------------------------------
By: Xxxxxxx Xxxxx Xxxx Xxxx
Its: Vice President / Owner
3
