Exhibit 10.11
Trademark License Agreement, Between Purchaser and Old Whiskey River
TRADEMARK LICENSE AGREEMENT
THIS AGREEMENT, effective as of the 9th day of December, 2002,
by and between: Drinks Americas Inc., a corporation organized and existing under
the laws of Delaware, with offices located at 000 Xxxxxxx Xxxx, Xxxxxx,
Xxxxxxxxxxx (hereinafter called "Licensee"), and Old Whiskey River Distilling
Company LLC, a limited liability company organized under the laws of the State
of Hawaii, with offices located at 0000 Xxxxx Xxxxx Xxxx, Xxxxx, Xxxxxx 00000
(hereinafter called "Licensor").
WHEREAS, this Agreement is being entered into pursuant to the
Distributor Rights Agreement by and between the Licensor and Licensee and dated
the date hereof (the "Distributor Rights Agreement");
WHEREAS, pursuant to a License Agreement between Xxxxxx Xxxxxx
("Owner") and Licensor, effective June 19, 2001, attached hereto as Exhibit A
(the "License Agreement"), Licensor has a license to use the trademark OLD
WHISKEY RIVER and the name and likeness of Xxxxxx Xxxxxx (collectively, the
"Trademarks") in connection with the production, marketing, advertising, sale
and distribution of whiskey (the "Product"); and
WHEREAS, pursuant to the License Agreement, Licensor has the
right to grant sub-licenses to use the Trademarks subject to written consent of
the Owner attached hereto as Exhibit B; and
WHEREAS, Licensee is desirous of using the Trademarks in
connection with the distribution and sales of the Product.
NOW, THEREFORE, in consideration of the foregoing and of the
mutual promises hereinafter set forth, the parties agree, as follows:
GRANT OF LICENSE - TERRITORY
Subject to the provisions and conditions of this Agreement, Licensor
grants to Licensee an exclusive "Sub-License" to use the Trademarks worldwide
(the "Territory") in connection with the distribution, marketing, advertising
and sale of the Product, and Licensee accepts the Sub-License subject to the
provisions and conditions set forth herein. Licensee shall have the right to
further sub-license the use of the Trademarks in connection with the
distribution, marketing, advertising and sale of the Products in the Territory,
provided the Licensee shall comply with the terms of the License Agreement.
OWNERSHIP OF TRADEMARK
Licensee acknowledges the ownership of the Trademarks in Owner in
the Territory, agrees that it will do nothing inconsistent with such ownership
and that all use of the Trademarks by Licensee shall inure to the benefit of and
be on behalf of Owner, and agrees to assist Owner or Licensor, if requested, in
recording this Agreement with appropriate governmental authorities. Licensee
agrees that nothing in this Sub-License shall give Licensee any right, title or
interest in the Trademarks, other than the right to use the Trademarks in
accordance with this Sub-License and Licensee agrees that it will not attack the
title of Owner to the Trademarks or attack the validity of the License or of
this Sub-License.
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QUALITY STANDARDS
Licensee agrees that the nature and quality of goods sold by
Licensee in connection with the Trademarks shall, in all respects, conform to
standards set by Licensor and shall be in conformity with each product formula
approved by the Licensor and filed with and approved by the Federal Bureau of
Alcohol, Tobacco and Firearms. Unless and until changed by Licensor, Licensee
agrees that the Products will at minimum conform to the quality standard
commonly associated with premium bottled whiskey.
QUALITY MAINTENANCE - INSPECTION
Licensee agrees to cooperate with Licensor in facilitating
Licensor's monitoring of Trademarks' quality, to permit reasonable inspection of
Licensee's business, and to supply Licensor with specimens of use of the
Trademarks upon request. Licensee shall comply with all applicable laws and
regulations and obtain all appropriate governmental approvals pertaining to the
sale, distribution and advertising of goods and Products covered by this
License.
FORM OF USE
Licensee agrees to use the Trademarks only in the form and manner
and with appropriate legends as prescribed from time to time by Licensor and
that any use of Owner's name, image, signature or other intellectual property
right shall be subject to the prior written approval of Owner.
INFRINGEMENT OF PROCEEDINGS
Licensor represents and warrants that it has the exclusive and
unrestricted right to use the Trademarks in the Territory as applied to the
Products. Licensor warrants and represents that the Trademarks have been duly
registered and shall undertake to protect the Trademarks from acts of any
third-party infringers and, to the extent such Trademarks have not been duly
registered, Licensor shall file applications to register the Trademarks in the
US Patent and Trademark Office and shall maintain any registrations maturing
therefrom at Licensor's sole expense. Licensee agrees to promptly notify
Licensor of any unauthorized use of the Trademarks by others as it comes to
Licensee's attention. Licensee agrees to cooperate fully with Licensor or Owner
in providing any information or documentation in support of any action against
unauthorized use by third parties. In the event Licensee notifies Licensor of an
alleged infringement by a third party, Licensor shall be responsible for all
legal expenses incurred in seeking protection, and agrees to indemnify Licensee
for the authorized use of the Trademarks. In the event Licensee notifies
Licensor of an alleged infringement by a third party and Licensor declines to
undertake to enforce its trademark rights, upon written request from the
Licensee, Licensor shall provide Licensee with any authorizations necessary in
order that the Licensee may protect the Trademarks at Licensor's expense and
with Licensor's full cooperation.
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TERM
This Agreement shall continue in full force and effect for the term
of the License Agreement.
EFFECTIVE TERMINATION
Upon termination of this Agreement, Licensee agrees:
dd. to immediately discontinue all use of the Trademarks and any
term confusingly similar thereto, except as permitted under the Distributor
Rights Agreement;
ee. to cooperate with Licensor or its appointed agent to apply to
the appropriate authorities to cancel any recording(s) of this Agreement from
all governmental records;
ff. to destroy all materials bearing the Trademarks; and
gg. that all rights in the Trademarks and the goodwill connected
therewith shall remain the property of Owner.
MISCELLANEOUS.
hh. Insurance. Licensee shall carry and maintain at its own cost and
expense with a responsible insurance carrier acceptable to the Licensor, product
liability, advertising claims and general liability insurance in an amount not
less than $5,000,000 per claim or suit at all times during which Products
bearing any Trademarks are being sold, and shall name the Licensor as an
additional named insured or each such policy. Such coverage shall apply no
matter when any such claim or suit is asserted, and by its terms may not be
terminated or modified without at least 20 days' prior written notice to the
Licensor. This insurance may be obtained by Licensee in conjunction with a
policy which covers products other than Products. Licensee shall from time to
time, upon reasonable request by the Licensor, promptly furnish to the Licensor
evidence, in form and substance satisfactory to the Licensor of the maintenance
of the insurance, including, without limitation, copies of policies,
certificates of insurance (with applicable riders and endorsements) and proof of
premium payments.
ii. Waiver. Any failure of a party to exercise any rights hereunder
shall not be considered as a waiver, nor shall it preclude subsequent exercise
of such rights. To be effective, a waiver must be in writing duly executed by
the party charged with the waiver.
jj. Successors and Assigns. This Agreement is binding upon, and
shall inure to the benefit of, the parties hereto and their respective legal
representatives, heirs and assigns.
kk. This Agreement may be executed and endorsed in one or more
original or facsimile counterparts and each such facsimile counterpart shall,
for all purposes, be deemed to be an original, and all counterparts shall
together constitute one and the same instrument.
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INTERPRETATION OF AGREEMENT.
This Agreement shall be governed by, and be construed in accordance
with, the laws of the State of New York, excluding its conflict of laws rules.
Any controversy, claim, or dispute arising out of, or in connection with, or
relating to this Agreement, or the breach or performance thereof, shall be
submitted to arbitration in the City of New York, pursuant to the rules then
obtaining of the American Arbitration Association. Any decision or award
rendered by such arbitration shall be final and binding upon the parties hereto
and judgment may be entered in any Court having authority to do so. Any decision
or award by the arbitrator(s) rendered pursuant to this Agreement shall be
limited to the specific parties involved and the specific issues determined
therein. The decision and award of the arbitrator(s) shall not be given any
collateral estoppel effect with regard to issues of fact or law determined or
necessarily determined thereby.
NOTICE.
All notices, requests, demands or other communications under or with
respect to this Agreement shall be in writing and shall be deemed to have been
duly given if delivered personally or sent by certified or registered mail,
return receipt requested, postage prepaid, a nationally recognized overnight
courier service or sent by facsimile transmission to the parties at the
respective addresses set forth above, or at such other address as shall be
designated by a party in a written notice to the other parties.
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IN WITNESS WHEREOF, the parties hereto have caused this Agreement to
be executed as of the day and year first above written.
Old Whiskey River Distilling Company LLC Drinks Americas Inc.
By: /s/ By: /s/
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Name: Xxxx Xxxxxx Name: J. Xxxxxxx Xxxxx
Title: Title: Chief Executive Officer
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