Exhibit 10.6
AMENDED AND RESTATED
SUBLICENSE AGREEMENT
for
Other Pillsbury Proprietary Information
between
NESTLE USA - PREPARED FOODS DIVISION, INC.
and
NESTLE ICE CREAM COMPANY, LLC
THIS AGREEMENT is entered into as of this 1st day of September, by and between
SUBLICENSOR and SUBLICENSEE.
WHEREAS, SUBLICENSOR is the licensee of Other Pillsbury Proprietary Information
pursuant to the Other Pillsbury Proprietary Information License Agreement (the
"Other Pillsbury Proprietary Information License Agreement"), dated as of
December 26, 2001, by and among SUBLICENSOR and Pillsbury Group, and has the
right to sublicense same to SUBLICENSEE;
WHEREAS, SUBLICENSEE and SUBLICENSOR entered into that certain Sublicense
Agreement for Other Pillsbury Proprietary Information, dated as of December 26,
2001 (the "Previous Agreement"), whereby SUBLICENSEE acquired an exclusive
sublicense to use the Other Pillsbury Proprietary Information to import,
purchase, market, distribute, promote and sell Frozen Dessert Products in the
Territory; and
WHEREAS, the parties desire to amend and restate the Previous Agreement in its
entirety as set forth herein.
NOW IT IS HEREBY AGREED AS FOLLOWS:
1. CERTAIN DEFINITIONS
1.1 "Affiliate" means, with reference to a specified Person, a
Person that, directly or indirectly, through one or more intermediaries,
controls, is controlled by, or is under common control with, the specified
Person, provided, however, that, for purposes of this Agreement, NICC, New
December, Inc., and any direct or indirect subsidiary of New December, Inc.
shall be deemed not to be an "Affiliate" of Nestle Group or any of its
Affiliates.
1.2 "Agreement" means the terms and conditions set forth herein.
1.3 "Applicable Law" means, with respect to any Person, any domestic
or foreign, federal, state or local statute, law (including principles of common
law), ordinance, rule, administrative interpretation, regulation, order, writ,
injunction, legally binding directive, judgment, decree or other requirement of
any Governmental Authority applicable to such Person or any of its Affiliates or
any of their respective properties, assets, officers, directors, employees,
consultants or agents (in connection with such officer's, director's,
employee's, consultant's or agent's activities on behalf of such Person or any
of its Affiliates).
1.4 "Claimant" shall have the meaning set forth in Section 6.2(a) of
this Agreement.
1.5 "Confidential Information" of a Person (a "Covered Person")
means all trade secrets and other confidential information of such Covered
Person including, without limitation, (a) any and all trade secrets concerning
the business and affairs of such Covered Person, records, files, letters,
memoranda, reports, laboratory notebooks, program listings, product
specifications, product formulas, ingredient listings, recipes, data, know-how,
improvements, discoveries, concepts, formulae, compositions, processes, designs,
sketches, photographs, graphs, drawings, samples, inventions and ideas, past,
current and planned research and development, past, current and planned
manufacturing and distribution methods and
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processes, techniques, customer lists, current and anticipated customer
requirements, price lists, market studies, business plans, computer software and
programs (including object code and source code), computer software and database
technologies, systems, structures and architectures of which may be licensed to
such Covered Person (and other items related thereto); (b) any and all
information concerning the business and affairs of such Covered Person (which
includes historical financial statements, financial projections and budgets,
historical and projected sales, capital spending budgets and plans, strategic
and operating plans, the names and backgrounds of key personnel, personnel
training and techniques and materials), however documented; and (c) any and all
notes, analysis, compilations, studies, summaries, and other material prepared
by or for such Covered Person containing or based, in whole or in part, on any
information included in the foregoing; provided, however, that with respect to a
Person (or any Affiliate thereof) using Confidential Information ("Using
Persons") of a Covered Person, Confidential Information of such Covered Person
shall not include any material of the Covered Person that the Using Person can
establish through documentation (i) is or becomes generally known to and
available for use by the public other than as a result of the fault of the Using
Persons or their respective advisors or Representatives; or (ii) is or becomes
available to the Using Persons or their respective advisors or Representatives
on a non-confidential basis from a source other than the Covered Person or its
Affiliates or their advisors or Representatives prior to, on or after the date
of this Agreement, provided that the source of such information was not known by
the Using Persons, after reasonable investigation, to be bound by a
confidentiality agreement with or other contractual, legal or fiduciary
obligation of confidentiality to the Covered Person or its Affiliates with
respect to such material.
1.6 "Delaware Courts" shall have the meaning set forth in Section
8.9 of this Agreement.
1.7 "Dipped Form" means the retail sale of Frozen Dessert Products
where: (a) the Frozen Dessert Products are presented to the public in
association with the Haagen-Dazs name; (b) the Frozen Dessert Products are
scooped, dipped or dispensed from a soft serve machine and sold in cones or
dishes; (c) the Frozen Dessert Products are sold from a non-temporary food
service establishment; and (d) it would be reasonably expected by the retail
seller that a significant portion of the Frozen Dessert Products would be
consumed away from the food service establishment.
1.8 "Frozen Dessert Products" means ice cream, sorbet, frozen
yogurt, sherbet, frozen mousse, ice milk, frozen juice bars, ice pops, water
ice, ice cream cakes, soft serve (soft bodied, machine made) ice cream, frozen
fudge bars, frozen novelty dessert products (such as bars, cones, sandwiches,
smoothies, and cup products based on or primarily delivered from any of the
foregoing), frozen dessert products for pets and other products based on or
primarily derived from any of the foregoing that are marketed and sold under
third party trademarks listed on Exhibit A, trademarks licensed from SUBLICENSOR
or any of its Affiliates or Pillsbury Licensed Trademarks, or that are
unbranded.
1.9 "Governmental Authority" means any foreign, domestic, federal,
territorial, state or local governmental authority, quasi-governmental
authority, instrumentality, court government or self-regulatory organization,
commission, tribunal or organization or any
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regulatory, administrative or other agency, or any political or other
subdivision, department or branch of any of the foregoing.
1.10 "Haagen-Dazs International Business" means substantially all of
the assets comprising the business of the production, importation, purchase,
marketing, distribution, promotion and sale (including export sale from a
facility not owned by SUBLICENSEE) of Frozen Dessert Products outside of the
Territory and Canada under the Haagen-Dazs brand name and under brand names
licensed to Pillsbury by third parties outside the Territory and Canada, but
excludes the ownership, management and operation of Haagen-Dazs Stores inside
and outside the Territory and Canada which business is currently conducted by
Pillsbury.
1.11 "Haagen-Dazs International Co-Pack Agreement" means the Co-Pack
Agreement relating to the Haagen-Dazs International Business dated as of October
8, 1999, between SUBLICENSEE and Pillsbury.
1.12 "Haagen-Dazs Japan Co-Pack Agreement" means the Co-Pack
Agreement relating to the Pillsbury Japan Joint Venture dated as of October 8,
1999, between SUBLICENSEE, Pillsbury and Nestle USA.
1.13 "Haagen-Dazs Stores" means, collectively, (a) the
Haagen-Dazs-branded retail outlets (whether stand-alone or in conjunction with
another retailer) owned by The Haagen-Dazs Shoppe Company, Inc. ("Shoppes") that
serve Frozen Dessert Products in Dipped Form and (b) the Haagen-Dazs-branded
retail outlets (whether stand-alone or in conjunction with another retailer) not
owned by Shoppes which are franchised by Shoppes to and operated by third
parties and that serve Frozen Dessert Products in Dipped Form and Shoppes'
franchise rights therein; in each case as of and after December 26, 2001.
1.14 "Haagen-Dazs Stores Business" means the development,
franchising, marketing, operation and ownership of Haagen-Dazs Stores,
including, without limitation, the following:
(a) all written and oral agreements granting rights to
develop, franchise, operate and own Haagen-Dazs Stores, all rights to enter such
agreements after December 26, 2001, and all franchise, royalty or other fees and
income resulting from such agreements and arrangements;
(b) all of the concepts, standards, specifications,
requirements, guidelines, instructions and procedures, existing in any form as
of December 26, 2001 and as may be developed by the owners of the Haagen-Dazs
Stores Business after December 26, 2001, in each case, to the extent relating to
the development, franchising, marketing, operation and ownership of Haagen-Dazs
Stores;
(c) the development and ownership of all Confidential
Information of Pillsbury (or any Affiliate of Pillsbury), existing as of
December 26, 2001 and as may be developed by the owners of the Haagen-Dazs
Stores Business after December 26, 2001, in each case, to the extent relating to
the development, franchising, marketing, operation and ownership of Haagen-Dazs
Stores;
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(d) the development and ownership of all advertising,
marketing, promotional materials, plans and programs, and other similar items,
existing as of December 26, 2001 and as may be developed by the owners of the
Haagen-Dazs Stores Business after December 26, 2001 in each case, to the extent
relating to the development, franchising, marketing, operation and ownership of
Haagen-Dazs Stores;
(e) without limiting the exclusive license of Nestec and SPN
to use the Pillsbury Licensed Property in the Territory (which for purposes of
the Pillsbury Trademark/Technology License Agreement does not include the
Haagen-Dazs Stores or the Haagen-Dazs Stores Business), all trademarks, trade
names, service marks, logos, commercial symbols, phrases, slogans, tag lines,
copyrights, distinctive interior and exterior building designs, decor,
furnishings, menus, uniforms, signs and color combinations, existing as of
December 26, 2001 and as may be developed after December 26, 2001, in each case,
to the extent relating to the development, franchising, marketing, operation and
ownership of Haagen-Dazs Stores; and
(f) the sole and exclusive right (whether within or outside
the Territory) to grant to any Person the right to serve Frozen Dessert Products
in Dipped Form.
1.15 "Indemnifying Party" shall have the meaning set forth in
Section 6.2(a) of this Agreement.
1.16 "Liability" means, with respect to any Person, any liability,
expense or obligation of such Person of any kind, character or description,
whether known or unknown, absolute or contingent, accrued or unaccrued,
liquidated or unliquidated, secured or unsecured, joint or several, due or to
become due, vested or unvested, executory, determined, determinable or otherwise
and whether or not the same is required to be accrued on the financial
statements of such Person.
1.17 "Losses" means any and all costs, losses, Taxes, Liabilities,
damages, lawsuits, deficiencies, claims, demands, and expenses (whether or not
arising out of third-party claims), including without limitation interest,
penalties, costs of mitigation, lost profits and other losses resulting from any
shutdown or curtailment of operations, damages to the environment, reasonable
attorneys' fees and all amounts paid in investigation, defense or settlement of
any of the foregoing.
1.18 "Nestec" means Nestec Ltd., a corporation organized and
existing under the laws of Switzerland and having its registered office in
1800 Vevey, Canton of Vaud, Switzerland.
1.19 "Nestle Canada" means Nestle Canada, Inc., a Canadian
corporation and wholly owned subsidiary of Nestle S.A.
1.20 "Nestle Covered Products" means the products to be provided by
SUBLICENSEE pursuant to the terms of the Nestle International Co-Pack Agreement.
1.21 "Nestle International Business" means the Frozen Dessert
Products Business of Affiliates of Nestle USA conducted outside the Territory.
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1.22 "Nestle International Co-Pack Agreement" means the Co-Pack
Agreement relating to the Nestle International Business dated as of October 8,
1999, between SUBLICENSEE and Nestle USA, as may be amended, restated or
substituted from time to time.
1.23 "Nestle USA" means Nestle USA - Prepared Foods Division,
Inc., a corporation organized and existing under the laws of Pennsylvania and
a wholly owned indirect subsidiary of Nestle S.A.
1.24 "Other Pillsbury Proprietary Information" means any and all
trade secrets and other information (including, without limitation, drawings,
samples, customer lists, current and anticipated customer requirements, market
studies, and notes) and all artwork, advertising and marketing materials,
brochures, books, menus, instructions, displays, packaging, cartons, containers,
wrappers, point of sale materials, coupons, television and radio spots, trade
materials, sales materials, commercials, jingles, catalogs, product lists and
similar marketing-related materials, in each case (a) relating to the sale of
Frozen Dessert Products in the Territory and (b) owned by Pillsbury Group as of
October 8, 1999 and used by SUBLICENSEE as of December 26, 2001 in the
importation, purchase, marketing, distribution, promotion and sale of Frozen
Dessert Products in the Territory.
1.25 "Person" means and includes an individual, a corporation, a
partnership, a limited liability company, a trust, an unincorporated
organization, a government or any department or agency thereof, or any entity
similar to any of the foregoing.
1.26 "Pillsbury" means The Pillsbury Company, a corporation
organized and existing under the laws of Delaware and its permitted successors
and assigns.
1.27 "Pillsbury Confidential Information" means Confidential
Information of Pillsbury Group and Affiliates thereof.
1.28 "Pillsbury Group" means, collectively, Pillsbury and
Pillsbury License Sub.
1.29 "Pillsbury Improved Products" means the Nestle Covered Products
to which improvements have been made using Pillsbury Licensed Technology.
1.30 "Pillsbury License Sub" means HDIP, Inc., a Delaware
corporation, and its permitted successors and assigns.
1.31 "Pillsbury Sub" means HD JV Holding Co., a Delaware
corporation.
1.32 "Pillsbury Trademark/Technology License Agreement" means the
Trademark/Technology Agreement between Pillsbury and Pillsbury License Sub, on
the one hand, and Nestec and SPN, on the other hand, dated as of December 26,
2001, as may be amended, restated or substituted from time to time.
1.33 "Representative" means any officer, director, principal,
attorney, agent, employee or other representative.
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1.34 "SPN" means Societe des Produits Nestle S.A., a corporation
organized and existing under the laws of Switzerland and having its registered
office in 1800 Vevey, Canton of Vaud, Switzerland.
1.35 "SUBLICENSEE" means Nestle Ice Cream Company, LLC, a Delaware
limited liability company, formerly known as Ice Cream Partners USA, LLC.
1.36 "SUBLICENSEE Personnel" shall have the meaning set forth in
Section 4.2 of this Agreement.
1.37 "SUBLICENSEE Personnel Confidentiality Agreement" shall have
the meaning set forth in Section 4.2 of this Agreement.
1.38 "SUBLICENSOR" means Nestle USA.
1.39 "Tax" means all taxes, levies, imposts and fees imposed by any
Governmental Authority (domestic or foreign) of any nature including but not
limited to federal, state, local or foreign net income tax, alternative or
add-on minimum tax, profits or excess profits tax, franchise tax, gross income,
adjusted gross income or gross receipts tax, employment related tax (including
employee withholding or employer payroll tax, FICA or FUTA), real or personal
property tax or ad valorem tax, sales or use tax, excise tax, stamp tax or duty,
any withholding or back up withholding tax, value added tax, severance tax,
prohibited transaction tax, premiums tax, occupation tax, together with any
interest or any penalty, addition to tax or additional amount imposed by any
Governmental Authority (domestic or foreign) responsible for the imposition of
any such tax.
1.40 "Term" shall have the meaning set forth in Section 7.1 of this
Agreement.
1.41 "Territory" means the fifty (50) states and the District of
Columbia currently forming the United States of America; provided, however, that
the Haagen-Dazs Stores and the Haagen-Dazs Stores Business shall not be included
in the Territory.
2. LICENSE AND OWNERSHIP OF TECHNOLOGY
2.1 Grant of Other Pillsbury Proprietary Information.
Subject to the qualifications and restrictions set forth herein, SUBLICENSOR
hereby grants to SUBLICENSEE for the Term of this Agreement the exclusive,
non-transferable, royalty-free and fully paid up right and sublicense to use the
Other Pillsbury Proprietary Information in the importation, purchase, marketing,
distribution, promotion and sale of Frozen Dessert Products in the Territory,
and (a) to the extent requested by Pillsbury (i) to co-pack Frozen Dessert
Products for sale to Pillsbury for delivery to Pillsbury's joint venture in
Japan for resale in Japan pursuant to the terms of the Haagen-Dazs Japan Co-Pack
Agreement and (ii) to co-pack Frozen Dessert Products for sale to the
Haagen-Dazs International Business pursuant to the terms of the Haagen-Dazs
International Co-Pack Agreement, (b) if requested by Nestle USA or an Affiliate
thereof, for delivery of Pillsbury Improved Products to the Nestle International
Business pursuant to the terms of the Nestle International Co-Pack Agreement
(but only to the extent such Pillsbury Improved Products may be supplied by
SUBLICENSEE to the Nestle International Business
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pursuant to Section 2.7 of the Pillsbury Trademark/Technology License
Agreement), and (c) to supply Frozen Dessert Products to Nestle Canada for
distribution and sale in Canada pursuant to the terms of agreements that may be
entered into from time to time between SUBLICENSEE and Nestle Canada.
Notwithstanding the exclusivity of the license grant, fifteen (15) years after
December 26, 2001, Pillsbury and its Affiliates may use the Other Pillsbury
Proprietary Information in the importation, purchase, marketing, distribution,
promotion and sale of Frozen Dessert Products in the Territory; provided, that
Pillsbury may not sub-license, transfer or assign its rights to use the Other
Pillsbury Proprietary Information in the importation, purchase, marketing,
distribution, promotion and sale of Frozen Dessert Products in the Territory.
SUBLICENSOR shall retain the exclusive right to use the Other Pillsbury
Proprietary Information in the importation, purchase, marketing, distribution,
promotion and sale of Frozen Dessert Products outside the Territory and in the
importation, purchase, marketing, distribution, promotion and sale of products
other than Frozen Dessert Products, whether or not for the importation,
purchase, marketing, distribution, promotion and sale within the Territory, and
all other rights to the Other Pillsbury Proprietary Information not expressly
granted SUBLICENSEE hereunder; provided, however, that SUBLICENSEE shall have
the right to use the Other Pillsbury Proprietary Information in the importation,
purchase, marketing, distribution, promotion and sale of Frozen Dessert Products
pursuant to the terms of the Haagen-Dazs Stores Supply Agreement.
2.2 Co-Packing.
Except as specifically set forth in Section 2.1, SUBLICENSEE shall not co-pack,
nor engage a third party to co-pack on its behalf, Frozen Dessert Products using
the Other Pillsbury Proprietary Information without SUBLICENSOR's prior written
consent. In the event SUBLICENSEE engages a third party to co-pack on its
behalf, SUBLICENSOR may require SUBLICENSEE to seek customary protections for
the Other Pillsbury Proprietary Information from such co-packer as a condition
to providing such consent.
2.3 Ownership of Other Pillsbury Proprietary Information.
SUBLICENSEE acknowledges that its use of the Other Pillsbury Proprietary
Information shall not create in SUBLICENSEE any right, title or interest in or
to the Other Pillsbury Proprietary Information, except for the rights granted to
SUBLICENSEE by the express terms of this Agreement, and covenants not to in any
manner represent that SUBLICENSEE has ownership of the Other Pillsbury
Proprietary Information. SUBLICENSEE also agrees that it will not use or permit
the use of any element of the Other Pillsbury Proprietary Information in a
manner which infringes upon the rights of third parties.
3. LIMITATION OF OTHER PILLSBURY PROPRIETARY
INFORMATION
SUBLICENSOR reserves all rights in the Other Pillsbury Proprietary Information
not specifically granted to SUBLICENSEE pursuant to this Agreement. SUBLICENSEE
hereby acknowledges that nothing contained in this Agreement shall be construed
to grant SUBLICENSEE any trademark or trade dress rights.
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4. CONFIDENTIALITY
4.1 SUBLICENSEE acknowledges and agrees that all Pillsbury
Confidential Information known or obtained by SUBLICENSEE, whether before or
after December 26, 2001, is the property of Pillsbury Group and that SUBLICENSEE
shall not have any interest or rights with respect thereto except to the extent
expressly provided in this Agreement. Therefore, SUBLICENSEE agrees that the
Pillsbury Confidential Information shall not at any time be disclosed by
SUBLICENSEE to any Persons other than SUBLICENSEE Personnel in accordance with
Section 4.2, whether SUBLICENSEE has such information in memory, embodied in
writing or other physical form, or embodied in electronic form, without the
prior written consent of SUBLICENSOR which may be withheld in SUBLICENSOR's sole
discretion.
4.2 SUBLICENSEE agrees not to use, except in connection with the
utilization of the rights granted under this Agreement, or disclose the Other
Pillsbury Proprietary Information or Pillsbury Confidential Information to any
Person other than those Representatives of SUBLICENSEE or its Affiliates
specifically requiring the relevant knowledge in connection with their duties to
SUBLICENSEE as they relate to the utilization of the rights granted in this
Agreement (the "SUBLICENSEE Personnel"). As a condition to obtaining access to
any such Other Pillsbury Proprietary Information or Pillsbury Confidential
Information, SUBLICENSEE shall require all SUBLICENSEE Personnel to execute a
confidentiality agreement in a form that is customarily used in similar types of
situations (naming Pillsbury Group as third party beneficiaries thereto) (the
"SUBLICENSEE Personnel Confidentiality Agreement"). If SUBLICENSEE becomes aware
of any violation by any SUBLICENSEE Personnel of any of the terms of any
SUBLICENSEE Personnel Confidentiality Agreement relating to the Other Pillsbury
Proprietary Information or Pillsbury Confidential Information, it shall
immediately notify SUBLICENSOR in writing and take all reasonable steps required
to prevent further disclosure. At SUBLICENSOR's request, SUBLICENSEE shall take
such actions as SUBLICENSOR may consider necessary to protect the
confidentiality of the Other Pillsbury Proprietary Information or Pillsbury
Confidential Information and to prevent any unauthorized use or disclosure of
the Pillsbury Confidential Information or Other Pillsbury Proprietary
Information except as expressly permitted in this Agreement. SUBLICENSEE shall
be jointly and severally liable with any breaching SUBLICENSEE Personnel for any
breach of any SUBLICENSEE Personnel Confidentiality Agreement, and any such
breach by SUBLICENSEE Personal shall be deemed a breach of this Agreement by
SUBLICENSEE.
4.3 If SUBLICENSEE or any of its Representatives or Affiliates is
requested or required (by oral questions, interrogatories, requests for
information or documents in legal proceedings, subpoena, civil investigative
demand or other similar process) or is required by operation of law to disclose
any Pillsbury Confidential Information or the Other Pillsbury Proprietary
Information, SUBLICENSEE shall, to the extent legally permitted, provide
SUBLICENSOR with prompt written notice of such request or requirement, which
notice shall, if practicable, be at least seventy-two (72) hours prior to making
such disclosure, so that SUBLICENSOR or its designee may seek a protective order
or other appropriate remedy and/or waive compliance with the provisions of this
Agreement. If, in the absence of a protective order or other remedy or the
receipt of such a waiver, SUBLICENSEE or any of its Representatives is
nonetheless, in the opinion of legal counsel, legally compelled to disclose any
of the Pillsbury
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Confidential Information or the Other Pillsbury Proprietary Information, then
SUBLICENSEE may disclose solely that portion of the Pillsbury Confidential
Information or the Other Pillsbury Proprietary Information which such counsel
advises is legally required to be disclosed (in which case, prior to such
disclosure, SUBLICENSEE will, if legally permitted, advise and, if requested by
SUBLICENSOR, consult with SUBLICENSOR or its designee and its counsel as to such
disclosure and the nature of such disclosure), provided that SUBLICENSEE shall
use its reasonable efforts to preserve the confidentiality of the Pillsbury
Confidential Information or the Other Pillsbury Proprietary Information,
whereupon such disclosure shall not constitute a breach of this Agreement.
5. GOODWILL; ENFORCEMENT AND MAINTENANCE OF RIGHTS
5.1 Goodwill Ownership.
SUBLICENSEE agrees that all right, title and interest in and to the Other
Pillsbury Proprietary Information and the goodwill associated therewith is and
will remain Pillsbury Group's exclusive property. SUBLICENSEE agrees that
nothing herein, nor use hereunder, shall give to SUBLICENSEE, or any employee of
or other person associated with SUBLICENSEE, any right, title or interest in the
Other Pillsbury Proprietary Information, except for the right to use the Other
Pillsbury Proprietary Information in accordance with the terms of this
Agreement. SUBLICENSEE shall not, and shall not permit any employee of or other
Person associated with SUBLICENSEE, at any time do or suffer to be done any act
which would impair Pillsbury Group's rights in or to the Other Pillsbury
Proprietary Information. SUBLICENSEE shall not, and shall not permit any
employee of or other Person associated with SUBLICENSEE, at any time dispute,
challenge or contest, directly or indirectly, Pillsbury Group's exclusive right,
title and interest in and to the Other Pillsbury Proprietary Information or the
validity thereof. SUBLICENSEE agrees that it shall not, and shall not permit any
employee of or other Person associated with SUBLICENSEE, without the express
prior written consent of SUBLICENSOR, apply for registration or seek to obtain
ownership of any of the Other Pillsbury Proprietary Information in any state or
nation. SUBLICENSEE agrees to cooperate fully and in good faith with SUBLICENSOR
for the purpose of securing, preserving and protecting Pillsbury Group's rights
in and to the Other Pillsbury Proprietary Information. All use of the Other
Pillsbury Proprietary Information and the goodwill associated therewith by
SUBLICENSEE or any employee of or other person associated with SUBLICENSEE shall
at all times inure to the benefit of Pillsbury Group.
5.2 Maintenance of Rights.
SUBLICENSEE agrees to cooperate fully and in good faith with SUBLICENSOR for the
purpose of securing, preserving and protecting Pillsbury Group's rights in and
to the Other Pillsbury Proprietary Information. SUBLICENSEE shall have no right
to apply for registration, or to extend or renew existing registrations, of the
Other Pillsbury Proprietary Information. If any license agreement needs to be
recorded to protect the Other Pillsbury Proprietary Information in the
Territory, the parties agree, if it is appropriate, to enter into a short form
license consistent with the terms of this Agreement for that purpose.
SUBLICENSEE agrees to use any and all notices, legends and/or symbols designated
by SUBLICENSOR for the protection of the Other Pillsbury Proprietary
Information.
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5.3 Infringement of Rights.
SUBLICENSEE shall promptly advise SUBLICENSOR, in writing, upon becoming aware
of any infringement, potential infringement or threatened infringement of any of
the Other Pillsbury Proprietary Information in the Territory or any claim that
the Other Pillsbury Proprietary Information infringes the intellectual property
rights of another Person in the Territory. SUBLICENSOR or its designee shall
have the initial right to determine the appropriate action, if any, to be taken
with respect to any such infringement with regard to the Other Pillsbury
Proprietary Information. If SUBLICENSOR or its designee initiates an enforcement
suit or proceeding or intervenes to defend any claim of infringement of the
rights of another, it shall have the right to exclusive control of any such suit
or proceeding (provided, however, that SUBLICENSEE shall remain a party to such
suit to the extent so required). SUBLICENSEE shall cooperate with SUBLICENSOR
with respect to any such proceedings, including, without limitation, joining as
a party to any litigation, if required. If, on request by SUBLICENSEE,
SUBLICENSOR refuses to pursue infringers of the Other Pillsbury Proprietary
Information within a reasonable time, SUBLICENSEE shall be entitled to take
reasonable appropriate actions to challenge such infringement at its own
expense. If SUBLICENSEE institutes suit pursuant to this Section 5.3,
SUBLICENSOR shall (a) provide reasonable assistance to SUBLICENSEE and (b) have
the right to participate and represent its interests through other counsel of
its own choosing and at its own cost. In addition, in no event shall SUBLICENSEE
have the right, without the prior written consent of SUBLICENSOR, to acknowledge
the validity of a claim that the Other Pillsbury Proprietary Information
infringes the intellectual property rights of another Person, to obtain or seek
a license from such Person or to take any other action which might impair the
ability of SUBLICENSOR to contest the claim of such Person if SUBLICENSOR so
elects. SUBLICENSEE agrees at the request of SUBLICENSOR to make and have made
reasonable modifications requested by SUBLICENSOR in SUBLICENSEE's use of the
elements of the Other Pillsbury Proprietary Information in question or so long
as such modifications would not have a material adverse effect on SUBLICENSEE if
SUBLICENSOR, in its sole discretion, reasonably exercised, determines that such
action is necessary to resolve or settle the claim or suit or eliminate or
reduce the threat of a claim or suit by such Person.
5.4 Insurance.
SUBLICENSEE shall, at its cost, procure and maintain throughout the Term,
insurance policies with monetary limits that are customary in similar types of
agreements. All coverages required hereunder shall be carried with insurer(s)
reasonably acceptable to SUBLICENSOR. All insurance required to be carried under
this Article shall show SUBLICENSOR and its designee as additional insureds.
SUBLICENSOR does not in any way represent that the coverage of insurance
specified in this Article is sufficient or adequate to protect SUBLICENSEE's
interest.
5.5 Violation of Other Pillsbury Proprietary Information License
Agreement.
SUBLICENSEE shall not take any action which would result in SUBLICENSOR's breach
or other non-compliance with any of the terms of the Other Pillsbury Proprietary
Information License Agreement.
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6. INDEMNIFICATION
6.1 SUBLICENSEE shall indemnify SUBLICENSOR and each of its
Representatives and Affiliates and hold each of them harmless from and against
any and all Losses incurred by any of them in connection with, arising out of,
or resulting from (a) any breach of any representation or warranty made by
SUBLICENSEE in this Agreement, (b) any failure by SUBLICENSEE to perform in a
timely manner any agreement, covenant or obligation of SUBLICENSEE pursuant to
this Agreement, (c) the production, distribution, display, publication,
broadcast, incorporation and/or use by SUBLICENSEE after December 26, 2001 of
Other Pillsbury Proprietary Information in connection with Frozen Dessert
Products, or (d) SUBLICENSEE's failure to comply with Applicable Law.
6.2 The procedure for indemnification shall be as follows:
(a) The party claiming indemnification (the "Claimant") shall
promptly give written notice to the party from whom indemnification is claimed
(the "Indemnifying Party") of any claim, whether between the parties or brought
by a third party, specifying (i) in reasonable detail, the factual basis for
such claim and (ii) in good faith, the estimated amount of such claim. If the
claim relates to an action, suit or proceeding filed by a third party against
the Claimant, such notice shall be given by Claimant within fifteen (15)
business days after written notice of such action, suit or proceeding was
received by Claimant. The failure of the Claimant to provide such written notice
within the time period specified shall not relieve the Indemnifying Party of its
indemnification liability under Section 6.1, unless and except to the extent
that such failure materially prejudices the rights of the Indemnifying Party in
defending against the claim or action.
(b) Following receipt of notice from the Claimant of a claim,
the Indemnifying Party shall have thirty (30) days to make such investigation of
the claim as the Indemnifying Party deems necessary or desirable. For the
purposes of such investigation, the Claimant agrees to make available to the
Indemnifying Party and/or its authorized representative(s) the information
relied upon by the Claimant to substantiate the claim. If the Claimant and the
Indemnifying Party agree at or prior to the expiration of said thirty (30) day
period (or any mutually agreed upon extension thereof) to the validity and
amount of such claim, the Indemnifying Party shall immediately pay to the
Claimant the full amount of the claim. If the Claimant and the Indemnifying
Party do not agree within said period (or any mutually agreed upon extension
thereof), subject to clause (c) below with respect to third party claims, the
Claimant may seek appropriate legal remedy.
(c) With respect to any claim by a third party as to which the
Claimant is entitled to indemnification hereunder, the Indemnifying Party shall
have the right, at its own expense, to participate in or assume control of the
defense of such claim, and the Claimant shall cooperate reasonably with the
Indemnifying Party, subject to reimbursement for actual out-of-pocket expenses
incurred by the Claimant as the result of a request by the Indemnifying Party.
Claimant shall have the right to approve legal counsel selected by Indemnifying
Party, which approval shall not be unreasonably withheld. If the Indemnifying
Party elects to assume control of the defense of any third-party claim, the
Claimant shall have the right to participate in the defense of such claim with
legal counsel of its own selection; provided, however, that the
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Claimant shall pay the fees and expenses of such counsel unless the named
parties to any such claim include both the Claimant and the Indemnifying Party
and the Claimant has been advised by counsel that there may be one or more legal
defenses available to it which are different from or additional to those
available to the Indemnifying Party (in which case, if the Claimant informs the
Indemnifying Party in writing that it elects to employ separate counsel at the
expense of the Indemnifying Party, the Indemnifying Party shall not have the
right to assume the defense of such claim on behalf of the Claimant), it being
understood that the Indemnifying Party shall not, in connection with any one
claim, be liable for the fees and expenses of more than one separate firm of
attorneys at any time for the Claimant. If the Indemnifying Party does not elect
to assume control or otherwise participate in the defense of any third party
claim, it shall be bound by the results obtained by the Claimant with respect to
such claim; provided, however, that no settlement or compromise of any claim
which may result in any indemnification liability may be made by the Claimant
without the prior written consent of the Indemnifying Party which consent shall
not be unreasonably withheld. No settlement or compromise of any claim may be
made by the Indemnifying Party without the prior written consent of the Claimant
which consent shall not be unreasonably withheld. In the event of any conflict
between the provisions of this Section 6.2 and Section 5.3, the provisions of
Section 5.3 shall prevail.
(d) If a claim, whether between the parties or by a third
party, requires immediate action, the parties will make every effort to reach a
decision with respect thereto as expeditiously as possible.
(e) Upon satisfaction of any third party claim pursuant to
this Article VI, the Indemnifying Party shall be subrogated to all rights and
remedies of the Claimant against any third party with respect to such claim;
provided that such right of subrogation shall be limited in amount to the amount
actually received by the Claimant from the Indemnifying Party with respect to
such claim; and provided, further, that any claim by an Indemnifying Party
against any such third party resulting from such right of subrogation shall be
subordinated to any claim of the Claimant against such third party for amounts
in excess of the amount actually received by the Claimant from the Indemnifying
Party pursuant to this Article VI.
(f) The indemnification rights provided in Section 6.1 shall
extend to the shareholders, equityholders, Affiliates, members and
Representatives of the Claimant, although for the purpose of the procedures set
forth in this Section 6.2, any indemnification claims by such parties shall be
made by and through the Claimant.
6.3 Notwithstanding any other provision of this Agreement to the
contrary, due to the fact that the unauthorized use, transfer or dissemination
of the Pillsbury Confidential Information or the Other Pillsbury Proprietary
Information, or the improper use thereof in violation of SUBLICENSOR's
instructions and/or Applicable Law, would diminish substantially the value
thereof and cause irreparable harm to SUBLICENSOR or Pillsbury Group which could
not be adequately addressed by monetary damages, if SUBLICENSEE breaches any of
the provisions of Articles II, IV or V or of Sections 7.3 or 8.1 of this
Agreement, SUBLICENSOR shall be entitled, without limiting its other rights or
remedies, to obtain equitable relief to prevent or restrain such breach
(including without limitation injunctive relief), without the need for posting a
bond or for any other undertaking, including without limitation proving the
inadequacy of monetary damages.
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7. TERM AND TERMINATION
7.1 Term.
Subject to the provisions of Section 7.2 hereof, this Agreement shall become
effective as of the date of this Agreement and shall remain in full force and
effect through December 31, 2009 (the "Term").
7.2 Termination.
Notwithstanding anything contained herein, SUBLICENSOR or SUBLICENSEE shall be
entitled at any time by notice given in writing to the other to terminate this
Agreement forthwith in any of the following events:
(a) if the other party shall go into liquidation other than a
voluntary liquidation for the purpose of reorganisation, reconstruction or
amalgamation;
(b) if the other party shall cease to carry on business
otherwise than due to circumstances as foreseen in clause (a) above;
(c) if the other party shall commit any material breach of any
of the provisions of this Agreement and shall fail within thirty (30) days of
being notified thereof to remedy such breach; or
(d) if the other party or a significant part or all of
its/their business and/or assets or the control, management, ownership, benefit
or utilisation thereof, or if the control, ownership or right of disposition of
its/their shareholders or equityholders in respect of their shares or equity
interests in that other party are confiscated, requisitioned, nationalised
and/or adjudicated or lost or in any other manner acquired without the consent
or against the will of that other party or its shareholders or equityholders, as
the case may be, by or on behalf of or under any law or at the instance of any
Governmental Authority de jure or de facto.
In addition, SUBLICENSOR shall have the right to terminate this Agreement
immediately upon notice to SUBLICENSEE if (i) Nestle S.A. ceases to own,
directly or indirectly, a sixty-six percent (66%) equity interest in
SUBLICENSEE, or (ii) SUBLICENSEE commits any breach of any provisions of
Articles II, IV, V or VI or of Sections 7.3 or 8.1, unless said breach is cured
to the reasonable satisfaction of SUBLICENSOR within five (5) days after receipt
by SUBLICENSEE of notice and a description of the breach; provided, however,
that if such cure is immediately undertaken but cannot be effected within five
(5) days, SUBLICENSEE shall have such additional period (not exceed an
additional ten (10) days) as may be reasonably necessary to complete such cure,
subject to the requirement that SUBLICENSEE shall diligently complete the cure
process.
7.3 Effects of Expiration or Termination.
Upon expiration or termination of this Agreement or any provision of this
Agreement, all rights and obligations of the parties under this Agreement or
under such provision shall cease. Except
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as otherwise agreed in writing by SUBLICENSOR, upon such expiration, SUBLICENSEE
shall immediately and forever cease all use of the Other Pillsbury Proprietary
Information and Pillsbury Confidential Information and SUBLICENSEE shall deliver
without delay to SUBLICENSOR all drawings, models, plans, manufacturing
instructions, laboratory instructions and any other documentation or materials
in its possession or under its control (without making or retaining copies
thereof) that are related to the Other Pillsbury Proprietary Information,
including without limitation any and all documentation or materials concerning
Pillsbury Confidential Information.
7.4 Survival.
Notwithstanding anything to the contrary contained herein, the provisions of
Sections 2.3, 5.1, 5.2, 7.1, 7.2, 7.3, 8.1, 8.2, 8.6, 8.9 and 8.10 and Articles
IV and VI of this Agreement shall survive any expiration or earlier termination
of this Agreement according to their respective terms.
8. MISCELLANEOUS
8.1 Assignment and Sublicensing.
This Agreement may not, without the prior consent of the other party hereto, be
assigned, transferred or sublicensed by either party hereto. Subject to the
foregoing, the benefits and obligations of this Agreement shall inure to the
benefit of and bind the parties and their respective successors and permitted
assigns. Notwithstanding anything contained herein to the contrary, SUBLICENSOR
shall be entitled to assign its performance of this Agreement and delegate its
rights and obligations hereunder, in whole or in part, for any period of time,
to any entity or Person in accordance with the terms of the Other Pillsbury
Proprietary Information License Agreement or to any Affiliate.
8.2 Notices.
Any notice to be given hereunder may be given by registered post, telegram,
telefax or cable to the address of the party concerned as follows:
To SUBLICENSOR
NESTLE USA - PREPARED FOODS DIVISION, INC.
c/o Nestle USA, Inc.
000 Xxxxx Xxxxx Xxxxxxxxx
Xxxxxxxx, Xxxxxxxxxx 00000
Attn.: General Counsel
Telecopy No.: (000) 000-0000
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With a copy to:
NESTLE S.A.
0000 Xxxxx
Xxxxxx xx Xxxx, Xxxxxxxxxxx
Attn.: General Counsel
Telecopy No.: 011 41 21 924 4568
To SUBLICENSEE
NESTLE ICE CREAM COMPANY, LLC
00000 Xxxxxxx Xxxxxxxxx, Xxxxx 000
Xxx Xxxxx, Xxxxxxxxxx 00000
Attn.: Chief Executive Officer
Telecopy No.: (000) 000-0000
With a copy to:
NESTLE HOLDINGS, INC.
c/o Nestle USA, Inc.
000 Xxxxx Xxxxx Xxxxxxxxx
Xxxxxxxx, Xxxxxxxxxx 00000
Attn.: General Counsel
Telecopy No.: (000) 000-0000
or such other addresses as may be notified by either party to the other for the
purposes of this Section 8.2. Any notice so sent shall, if sent by post, be
deemed to have been served at the expiration of seven (7) working days after it
is posted and, if sent by telegram, telefax or cable, be deemed to have been
served within twenty-four (24) hours after despatch of the telegram, telefax or
cable and in proving such service it shall be sufficient to prove that the
letter containing the notice or the telegram, telefax or cable was properly
addressed and posted or despatched, as the case may be.
8.3 Titles and Subtitles.
The titles and subtitles in this Agreement are inserted for convenience only
and shall not affect the construction or interpretation of this Agreement.
8.4 Amendments.
No changes or modifications to this Agreement shall be effective unless made in
writing and signed by an authorised representative of each of the parties hereto
and, where required, approved by the relevant Governmental Authority in the
Territory.
8.5 Language.
This Agreement shall be executed in English.
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8.6 Applicable Law.
This Agreement shall be deemed to be made under, and to be governed by, the laws
of the State of New York, except for those questions concerning the Other
Pillsbury Proprietary Information which are compulsorily governed by
SUBLICENSEE's or any other national law.
8.7 Severability.
In the event that any provision of this Agreement or any word, phrase, clause,
sentence or other portion thereof (including, without limitation, the
geographical and temporal restrictions contained herein) should be held to be
unenforceable or invalid for any reason, such provision or portion thereof shall
be modified or deleted in such a manner so as to make this Agreement as modified
legal and enforceable to the fullest extent permitted under Applicable Laws. In
the event that any restrictive covenant of this Agreement, or any word, phrase,
clause, sentence or other portion thereof, is held unenforceable because of the
duration or geographic scope of such provision, it is the intention of the
parties that the arbitrator (or court, if applicable) shall have the power to
modify such provision to the extent necessary to render the provision
enforceable and such provision as so modified shall be enforced.
8.8 Further Assurances.
Each of the parties hereto does hereby covenant and agree on behalf of itself,
its successors, and its assigns, without further consideration, to prepare,
execute, acknowledge, file, record, publish, and deliver such other instruments,
documents and statements, and to take such other action as may be required by
law or necessary or reasonably requested to effectively carry out the purposes
of this Agreement.
8.9 Jurisdiction.
Each of SUBLICENSOR and SUBLICENSEE hereby for irrevocably consents and submits
to the jurisdiction of the state courts of the State of Delaware and the federal
courts sitting in the State of Delaware (collectively, the "Delaware Courts")
(and of the appropriate appellate courts therefrom) and the courts of
Switzerland in any suit, action or proceeding related to any such dispute, and
irrevocably waives, to the fullest extent permitted by law, any objection that
it may now or hereafter have to the assertion of personal jurisdiction by any
such court, or the laying of the venue of any such suit, action or proceeding in
any such court or any contention that any such suit, action or proceeding
brought in any such court has been brought in an inconvenient forum and agrees
not to object to personal jurisdiction or venue in such courts or to claim that
such forum is inconvenient. Each of SUBLICENSOR and SUBLICENSEE hereby agrees
that the service of process in any such suit, action or proceeding brought in
the Delaware Courts or in Switzerland court, as provided herein, may be served
on any party anywhere in the world, whether within or without the jurisdiction
of any such court and, without limiting the foregoing, shall be properly served
or delivered if delivered in the manner contemplated by Section 8.2 hereof.
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8.10 Parties in Interest.
Except for the rights of certain third parties to indemnification pursuant to
Section 6 above, nothing herein expressed or implied is intended to or shall be
construed to confer upon or give any person, other than the parties hereto, and
their respective successors and permitted assigns, any rights or remedies under
or by reason of this Agreement. Notwithstanding the foregoing, the parties
hereto agree that Pillsbury Group shall be deemed a third party beneficiary with
respect to the obligations of SUBLICENSEE under this Agreement, except for
SUBLICENSEE's obligations under Article VII hereof.
8.11 The parties acknowledge that SUBLICENSEE is an independent
contractor and is not an agent, partner, employee or joint venturer of
SUBLICENSOR. SUBLICENSEE shall not attempt to bind or obligate SUBLICENSOR in
any way nor shall SUBLICENSEE represent that SUBLICENSEE has any right to do so.
Neither party has any right or authority to assume or to create any obligation
or responsibility on behalf of the other party except as may from time to time
be provided by written instrument signed by both parties.
8.12 This Agreement may be executed in any number of multiple
counterparts, each of which shall be deemed to be an original copy and all of
which, when taken together, shall constitute one agreement, binding on all
parties hereto.
8.13 Entire Agreement.
This Agreement (including each of the exhibits attached hereto) amends and
restates the Previous Agreement in its entirety, and constitutes the entire
agreement among the parties with regard to the subject matter hereof, and
supersede all prior oral and written, and all contemporaneous oral agreements
and understandings relating thereto; provided, however, that any obligation
arising under the Previous Agreement prior to the date of this Agreement shall
survive the amendment and restatement of the Previous Agreement. There are no
agreements, understandings, restrictions, warranties or representations relating
to such subject matter among the parties other than those set forth herein or in
the agreements referenced herein. To the extent that the Pillsbury Brand Manual
(as defined in the Pillsbury Trademark/Technology License Agreement) may
contradict or make unclear the terms of this Agreement, the terms of this
Agreement shall prevail.
(Signature Page Follows)
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IN WITNESS WHEREOF these presents have been executed by duly
authorised representatives of the SUBLICENSOR and of SUBLICENSEE, respectively,
as of the day and year first above written.
NESTLE ICE CREAM COMPANY, LLC NESTLE USA - PREPARED FOODS
a Delaware limited liability company DIVISION, INC.,
a Pennsylvania corporation
By: /S/ XXXXX X. XXXXXXXX By: /S/ XXXXX X. ARGENTINE
--------------------------------- ---------------------------------
Name: Xxxxx X. Xxxxxxxx Name: Xxxxx X. Argentine
------------------------------ ------------------------------
Title: Chief Executive Officer Title: Executive Vice President
----------------------------- and Chief Financial Officer
-----------------------------
