EXHIBIT 10.34
TRADEMARK LICENSE AGREEMENT AND ASSIGNMENT OF RIGHTS
THIS TRADEMARK LICENCE AGREEMENT AND ASSIGNMENT OF RIGHTS (the
"Agreement") is entered into as of March 31, 2000 (the "Effective Date"), by and
between Y, LLC, a Delaware limited liability company wholly-owned by Xxx Xxxxxxx
("Y, LLC"), and OAKLEY, INC., a Washington corporation ("Oakley").
RECITALS
a. Y, LLC sponsors (the "Sponsorship") Xxxxxx Xxxxxx ("Xxxxxx"), a
National Hot Rod Association ("NHRA") driver, pursuant to which Y, LLC
has the right (the "Right") to purchase a truck and trailer to travel
the NHRA circuit and to sell certain products, within the NHRA
guidelines, at NHRA sanctioned events, in exchange for royalties on
the products payable to the NHRA.
x. Xxxxxx owns certain trademarks ("Trademarks"), identified on Exhibit A
hereto.
c. Y, LLC desires to assign the Right to Oakley and Oakley desires to
obtain the Right from Y, LLC. Oakley desires to place the Trademarks
on various locations in connection with the Sponsorship and therefore
desires to grant a license to Y, LLC to utilize the Trademarks, all in
accordance with the terms and conditions set forth in this Agreement.
NOW, THEREFORE, in consideration of the premises and the mutual promises
herein made, and in consideration of the representations, warranties, and
covenants herein contained, the parties agree as follows.
i. LICENSE.
(1) In connection with the Sponsorship, Y, LLC hereby agrees to
prominently place (the "Placement") the Oakley logo identified on
Exhibit A in various locations to be agreed on between Y, LLC and
Oakley, including on (i) the right and left doors and on the rear wing
of the funny card dragster driven by Xxxxxx, (ii) the team
transporter, and (iii) the uniforms of the crew members.
(2) Oakley hereby grants to Y, LLC a nonexclusive, non-transferable
license and right to use the Trademarks to effectuate the Placement,
subject to the terms and conditions of this Agreement.
(3) Y, LLC shall comply with all reasonable quality standards and
protocols communicated by Oakley to Y, LLC regarding the Trademarks.
(4) Y, LLC shall permit duly authorized representatives of Oakley to
inspect, at reasonable times, the placement of the logos for the
purposes of enabling Oakley to verify that Y, LLC is complying with
the requirements of this Agreement.
ii. ASSIGNMENT OF RIGHT. Y, LLC hereby assigns and transfers to Oakley all of Y,
LLC's right, title and interest in , to and under the Right. Oakley accepts the
assignment by Y, LLC and agrees to be bound by the guidelines of the NHRA as
they may be amended from time to time, a current summary of which is attached as
Exhibit B hereto, and undertakes, assumes and agrees to perform when due, and
otherwise in accordance with their respective terms, all agreements, covenants,
conditions, obligations, and liabilities of Y, LLC with respect to the Right
arising on or after the Effective Date, other than Y, LLC's obligation to make
royalty or other payments to third parties (including without limitation to the
NHRA).
ii. Fees and Royalties.
(a) Oakley agrees to pay Y, LLC an annual fee of $100,000 for the
Placement.
(b) Oakley agrees to pay the following royalty rates on net revenues
(after sales tax and returns) from sale by Oakley of the merchandise
indicated. Such royalty payments to each of the respective parties set
forth below are in compliance with all obligations of Oakley to make
such payments.
iv.
Royalty Party to whom Royalty to be
Merchandise Rate Paid by Oakley
----------- ---- --------------
All merchandise sold at NHRA 20% NHRA
sanctioned events
Merchandise bearing Xxxxxx'x 10% Y, LLC
likeness
Die-cast collectible cars (bearing 25% Y, LLC
the funny car dragster paint
scheme)
In accordance with the NHRA guidelines, Oakley shall pay the NHRA, prior to
each event, a minimum of $1,500 (the "Advance") (the exact payment to be
determined by the NHRA prior to each event) as an advance against the 20%
royalty payable to the NHRA.
Within 30 days following the end of each quarter, Oakley shall prepare and
deliver to Y, LLC a report showing net revenues from sales of the foregoing
merchandise by Oakley and the corresponding royalty payable to Y, LLC. Oakley
shall, concurrent with the delivery of such report, make payment to Y, LLC of
the royalties due hereunder. Oakley shall provide, at the request of the NHRA, a
summary of its net revenue for each type of merchandise sold at NHRA events.
v. OTHER SERVICES. Oakley will perform accounting services for Y, LLC as
agreed upon between Oakley and Y, LLC and will be compensated in cash for
such services by Y, LLC at a fair market rate to be determined in good
faith by Oakley's Board of Directors.
vi. TERM.
(1) TERM OF AGREEMENT. This Agreement commences as of the Effective Date
and shall continue for so long as the Sponsorship continues, unless
sooner terminated pursuant hereto.
(2) TERMINATION. This agreement may be terminated by either party upon 30
days written notice to the other party.
(3) EFFECT OF TERMINATION. Termination of this Agreement shall not affect
any accrued rights or liabilities of either party, including without
limitation any outstanding payment obligations of the parties under
Section 6 shall survive until all such accrued rights and liabilities
are discharged. Without limiting the foregoing, Y, LLC's license to
use the Trademarks shall cease upon termination of the Agreement.
vii. MISCELLANEOUS
(1) ENTIRE AGREEMENT. This Agreement (including the Exhibits hereto)
constitutes the entire agreement between the parties concerning the
subject matter hereof, and supersedes any prior understandings,
agreements, or representations by or between the parties, written or
oral, to the extent they related in any way to the subject matter
hereof.
(2) AMENDMENTS AND WAIVERS. No amendment of any provision of the Agreement
shall be valid the same shall be in writing and signed by all of the
parties. Except as otherwise expressly provided herein, any delay or
failure by any party to enforce at any time any of its rights under
any provision of the Agreement shall not be deemed to be a waiver of
that party's right thereafter to enforce those rights or a waiver of
such provision or of the party's right to resort to any remedy
available to it. A waiver on one occasion shall not be construed as a
waiver of any right on any future occasion.
(3) NO THIRD-PARTY BENEFICIARIES. This Agreement shall not confer any
rights or remedies upon any person other than the parties and their
respective successors and permitted assigns.
(4) NO ASSIGNMENT OF DELEGATION. Neither party shall assign or delegate
any of its rights or obligations arising under this Agreement, whether
voluntarily or by operation of law, without the written consent of the
other party, and any such purported assignment or delegation shall be
void and without effect; provided, that either party may assign or
delegate any of its rights or obligations hereunder at any time to any
of its affiliates.
(5) NOTICES. All notices, demands, claims, and other formal communications
hereunder will be in writing. Any such communication hereunder shall
be deemed duly given if delivered by any reasonable means, including
by personal delivery, recognized international courier service or
facsimile, to the following address of the party to which that notice
is to be given:
TO OAKLEY:
Oakley, Inc.
One Icon
Xxxxxxxx Xxxxx, Xxxxxxxxxx 00000
Attn: Link Xxxxxxx
Facsimile: (000) 000-0000
TO Y, LLC
Y, LLC
C/o Oakley, Inc.
One Icon
Xxxxxxxx Xxxxx, Xxxxxxxxxx 00000
Attn: Xxx Xxxxxxx
Facsimile: (000) 000-0000
Or to such other address of which a party may subsequently notify the
other party. Communications shall be effective upon actual receipt by
the intended recipient, provided that in the case of communications
sent by courier, such receipt shall be deemed to have occurred no
later than three (3) business days after such communication is sent.
(6) COUNTERPARTS. This Agreement may be executed in one or more
counterparts, each of which shall be deemed an original but all of
which together will constitute one and the same instrument.
(7) HEADINGS. The section headings contained in this Agreement are
inserted for convenience only and shall not affect in any way the
meaning or interpretation of this Agreement.
(8) SEVERABILITY. Any term or provision of the Agreement that is invalid
or unenforceable in any situation in any jurisdiction shall not affect
the validity or enforceability of the remaining terms and provision
hereof or the validity or enforceability of the offending term or
provision in any other situation or in any other jurisdiction.
(9) FORCE MAJEURE. Neither party shall be liable for any delay in
performance or any failure to perform any obligation under this
Agreement which arises from any contingency beyond that party's
reasonable control, including, but not limited to, acts of God,
governmental orders or restrictions, xxxx, threat of war, riot,
strikes, fires, floods, or transportation delays, whether such
contingency was known or contemplated to be possible at the time this
Agreement is made.
(10) GOVERNING LAW. This Agreement shall be governed by and construed in
accordance with domestic laws of the State of California, without
giving effect to any choice or conflict of law provision or rule.
(11) FURTHER ASSURANCES. The parties shall each from time to time, at the
request of the other, and without further consideration, execute and
deliver such instruments, and take such actions, as may be reasonably
necessary to effect the transactions contemplated by the Agreement.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement as of the
Effective Date.
Y, LLC
By: /s/ XXX XXXXXXX
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Xxx Xxxxxxx
Sole Member
OAKLEY, INC.
By: /s/ LINK XXXXXXX
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Link Xxxxxxx
Chief Operating Officer
