Exhibit 10.11
SALE AND LICENSE AGREEMENT
THIS AGREEMENT, made on August 16, 1996, by and between ST. XXXXX
ASSOCIATES ("Licensor"), a New York limited partnership, having its principal
office at 000 Xxxxx Xxxxxx, Xxx Xxxx, Xxx Xxxx 00000 and THE NEW YORK RESTAURANT
GROUP, LLC ("Licensee"), a New York limited liability company, having its
principal office at 0000 Xxxxx Xxxxxx, Xxx Xxxx, Xxx Xxxx 00000.
W I T N E S S E T H:
WHEREAS, Licensor is the owner of the restaurants/bars currently
located at 000 Xxxxx Xxxxxx, Xxx Xxxx, Xxx Xxxx which are operated under the
marks "Xxxxx & Wollensky" and "Wollensky's Grill", respectively (collectively,
the "NY Restaurant");
WHEREAS, Licensor is the owner of the marks "Xxxxx & Wollensky" and
"Wollensky's Grill," the good will associated therewith, and all associated
service marks, trademarks, trade names and trade dress utilized in conjunction
with the marks and/or with the operation of the NY Restaurant;
WHEREAS, Licensee has requested Licensor to grant to Licensee the
right to use said marks and the rights associated therewith throughout the
United States and the world (exclusive of the Reserved Territory, as hereinafter
defined) (the "Territory") in connection with the sale of goods bearing the
marks and the
opening and operation of additional restaurant/bars which are substantially
similar to the NY Restaurant, all upon the terms and conditions hereinafter set
forth.
NOW THEREFORE, in consideration of the mutual covenants and
undertakings hereinafter set forth, the parties hereto agree as follows:
1. DEFINITIONS
As used herein, the following terms shall have the respective
meanings provided below:
a. "Marks" shall mean "Xxxxx & Wollensky" or any variations thereof
heretofore, currently or hereafter utilized by Licensor, and specifically
including the Registrations as well as any other trademarks and service marks
pertaining to said marks currently or hereafter owned by Licensor in any
jurisdiction (the "Registrations" mean the marks listed on Schedule A annexed
hereto and made a part hereof and any other xxxx which is registered with the
United States Patent Office or the appropriate office in any foreign country).
b. "Associated Rights" shall mean the goodwill associated with the
Marks and all associated trade names, trade dress, decor, menus, concepts or
other marketing devices heretofore, currently or hereafter utilized in
conjunction with the
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Marks and/or the operation of the NY Restaurant, including, without limitation,
"Wollensky's Grill";
c. "Reserved Territory" shall mean the area encompassed by a circle
with the present location of the NY Restaurant at its center and extending for a
radius of 100 miles, but excluding the area located within ten (10) miles of
City Hall in Philadelphia, Pennsylvania. "Restricted Area" shall mean the
Reserved Territory exclusive of the area encompassed by a circle with the
present location of the NY Restaurant at its center and extending for a radius
of 25 miles.
d. "Affiliate" shall mean any limited liability company, corporation
or other entity which now or in the future shall (i) control, (ii) be under the
control of, or (iii) be under common control with, Licensee. The term "control"
as used herein shall be deemed to mean ownership of more than fifty (50%)
percent of the outstanding voting stock of a corporation, or majority equity and
control interest of a limited liability company or other entity. The term
"Affiliate" shall also include any limited liability company, corporation or
other entity which Xxxx X. Xxxxxxxx ("Xxxxxxxx") "controls", that is (x) in the
case of a corporation, where Xxxxxxxx possesses the power to direct the
management of the entity through ownership of a majority of the
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voting securities, by voting trust agreement or otherwise, and (y) in the case
of a partnership or limited liability company where Xxxxxxxx or any Affiliate of
his is designated as managing general partner or manager, as the case may be.
e. "Restaurant" shall mean any restaurant or bar operating under the
Marks which is owned by Licensee or any Sublicensee (as hereinafter defined);
provided, however, that in no event shall the NY Restaurant be considered a
"Restaurant."
f. "Restaurant Sales" shall mean all monies (whether paid in cash,
by credit card or otherwise) received as operating revenues in the ordinary
course of business and derived from the sale of food and beverages at
Restaurants or from off-premises catering originating from Restaurants and the
fair market value of any goods or services received in exchange for such food,
beverage or catering, less bona fide refunds to customers, gratuities and tips
in fact paid out to employees, the value of beverages and/or meals served by
Licensee to employees or for courtesy or promotional purposes, taxes imposed and
paid on customer checks and credit card fees. Restaurant Sales shall include any
proceeds received by any Restaurant from business interruption insurance carried
thereby.
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g. "Non-Restaurant Sales" shall mean all monies (whether paid in
cash, by credit card or otherwise) received as operating revenues in the
ordinary course of business and derived from the sale of all goods, services,
merchandise or other products which utilize the Marks (other than such sales
which constitute Restaurant Sales) whether sold from the Restaurants or
otherwise, and any proceeds received by any Restaurant from business
interruption insurance carried thereby (to the extent not included in Restaurant
Sales) less bona fide refunds to customers, the value of products given to
employees or for courtesy or promotional purposes, taxes imposed and paid on
customer sales and credit card fees. Non-Restaurant Sales shall exclude,
however, any income from the sale of goods bearing the xxxx of other restaurants
that are owned and/or managed by Licensee or any Affiliate thereof, such as
Manhattan Ocean Club, Cite or Post House, notwithstanding the fact that such
goods are sold from Restaurants, the NY Restaurant or elsewhere.
h. "Consumer Price Index" shall mean the Consumer Price Index for
all Urban Consumers (1982-4 = 100), U.S. City Average, issued monthly by the
Bureau of Labor Statistics of the United States Department of Labor, or any
other successor or substitute index appropriately adjusted.
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2. LICENSE AND GRANT
Licensor hereby grants to Licensee, upon the terms and conditions of
this Agreement, the exclusive right and license to use the Marks and Associated
Rights throughout the Territory (the "License") Licensor hereby reserves unto
itself the exclusive right to utilize the Marks and Associated Rights within the
Reserved Territory, provided, however, that without obtaining Licensee's prior
written consent (which Licensee may withhold in its sole and absolute
discretion), Licensor shall not have the right to open any restaurants within
the Restricted Area utilizing the Marks or Associated Rights or grant any
sublicenses or other rights to the Marks or Associated Rights for use therein.
Nothing herein is intended to preclude or limit Licensor from relocating the NY
Restaurant within the Reserved Territory (but outside of the Restricted Area) or
from opening additional restaurants outside of the Restricted Area but within
the Reserved Territory, which for purposes of this Agreement will not be deemed
to be "Restaurants." Licensor specifically relinquishes any right to use the
Marks and Associated Rights outside of the Reserved Territory.
3. TERM
The License granted herein shall commence upon the execution of this
Agreement (the "License Commencement Date") and
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shall be irrevocable and perpetual unless terminated in accordance with the
terms of this Agreement.
4. LICENSE FEES
In consideration of the grant of the License and the rights granted
pursuant to this Agreement, Licensee agrees to make the following payments:
a. License Purchase Price. Within three (3) business days following
the execution and delivery of this Agreement (time being of the essence),
Licensee shall pay to Licensor the sum of Two Million Five Hundred Thousand
($2,500,000) Dollars by certified or bank check or wire transfer of immediately
available funds to Licensor's bank account.
b. Additional Sale Price Payment. As additional consideration for
the sale and License granted hereby, Licensee shall make a one-time payment to
Licensor upon the opening of each new Restaurant (or conversion of a restaurant
into a Restaurant) (the "Additional Sale Price Payment"). The Additional Sale
Price Payment shall be payable to Licensor within three (3) business days
following the date on which each such new Restaurant shall open for business to
the general public and be calculated as follows:
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(i) From the License Commencement Date to and including
December 31, 1998, the Additional Sale Price Payment shall be Two Hundred
Thousand ($200,000.00) Dollars.
(ii) For calendar year 1999 and each subsequent calendar year,
the Additional Sale Price Payment shall be an amount equal to the Additional
Sale Price Payment applicable for the immediately preceding year, increased by
an amount equal to the percentage amount by which the Consumer Price Index has
increased from January 1st of the immediately preceding year to and including
December 31st of such immediately preceding year; provided, however, that in no
event shall the Additional Sale Price Payment for a given year be more than 105%
of the Additional Sale Price Payment for the immediately preceding year. For
example, if the Consumer Price Index in effect as of December 31, 1998 were 7%
higher than that in effect as of January 1, 1998, then the Additional Sale Price
Payment applicable for calendar year 1999 would be $210,000 and not $214,000.
Notwithstanding the foregoing, no Additional Sale Price Payment
shall be due or payable for a new Restaurant if such Restaurant is located
within a five (5) mile radius of a Restaurant which has closed within the two
(2) year period immediately
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preceding the day such new Restaurant shall open for business to the general
public.
5. Royalties
a. Except as provided in subparagraph 5(b) below, Licensee shall pay
to Licensor an annual royalty (the "Percentage Royalty") of two (2%) percent of
the amount of Restaurant Sales and Non-Restaurant Sales made during the calendar
year for which the Percentage Royalty is being calculated. As a credit against
the Percentage Royalty, Licensee shall pay to Licensor a guaranteed minimum
royalty ("the Minimum Royalty") in the amounts set forth below regardless of the
number of Restaurants that may be in operation during such year:
Prior to January 1, 1998 No Minimum
Calendar Year 1998 $200,000
Calendar Year 1999 $300,000
Calendar Year 2000 $400,000
Calendar Year 2001 $500,000
Calendar Year 2002 $600,000
Calendar Year 2003 $700,000
Calendar Year 2004 and
each calendar year thereafter $800,000
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b. If Licensee or any Affiliate thereof shall hereafter (i) be
engaged as the manager of a new restaurant commonly identified or considered by
the public as a steakhouse (hereinafter referred to as a "Manager" or
"Management"), or (ii) purchase the right to utilize any steakhouse name such as
Sparks, The Palm, Morton's or Outback and thereafter shall open new
steakhouse(s) utilizing such name, then only such new steakhouse(s) as are
thereafter opened and such new steakhouse(s) as come under such Management
described in (i) above in this paragraph 5(b) shall be considered "Restaurants"
solely for purposes of this subparagraph (b) and an annual Percentage Royalty of
one (1%) percent (instead of two (2%) percent) shall be payable on the
Restaurant Sales and Non-Restaurant Sales of such new restaurant(s); provided,
however, that no Percentage Royalty or fee or other compensation shall be
payable by Licensee to Licensor in respect of any such steakhouse restaurant(s)
as are in existence at the time of such acquisition or at the commencement of
such Management by Licensee or any Affiliate thereof so long as such restaurants
do not utilize the Marks. By way of example, if Licensee or any Affiliate
hereafter shall acquire or Manage Sparks or all or any portion of the Xxxxxx'x
Steakhouse chain, no Percentage Royalty would be payable by Licensee to Licensor
with
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respect to restaurants which are acquired or Managed by Licensee or any
Affiliate utilizing such other steakhouse's name which are in operation as of
the date of the acquisition or commencement of Management; only new restaurants
thereafter opened or which thereafter became subject to Management by Licensee
or any Affiliate as steakhouses would be considered "Restaurants" hereunder
entitling Licensor to a one (1%) percent Percentage Royalty in respect to the
Sales thereof.
6. PAYMENT OF PERCENTAGE ROYALTIES: STATEMENTS
a. Within forty-five (45) days after the end of each calendar
quarter, Licensee will pay to Licensor the greater of twenty-five percent (25%)
of the Minimum Royalty for the applicable calendar year or the Percentage
Royalty for such quarter. Such payment shall be accompanied by a written
statement, of the manager or chief financial officer of Licensee, setting forth
for such quarter in reasonable detail, by Restaurant, the computation of the
Restaurant Sales, the Non-Restaurant Sales and the amount of Percentage
Royalties, if any, payable hereunder; provided, however, that if the Percentage
Royalty for any quarter in question, when added to the previously paid quarterly
payments for such year, equal or exceed the accrued, cumulative Minimum Royalty
and Percentage Royalty payments due through the end of such quarter,
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then that quarterly payment shall be reduced to the amount required to satisfy
the Minimum Royalty due through the end of such quarter. Within one hundred five
(105) days after the close of each calendar year, Licensee will deliver to
Licensor a true and complete audited special report, setting forth in reasonable
detail, by Restaurant, the computation of the Restaurant Sales, the
Non-Restaurant Sales and the amount of Percentage Royalties, if any, payable
hereunder for the preceding calendar year. All such annual statements will be
prepared and certified by the firm of certified public accountants regularly
employed by Licensee, in accordance with generally accepted accounting
principles, consistently applied. When rendering such annual statements,
Licensee will pay an amount, if any, equal to the difference between the total
royalties paid during the calendar year and the total royalties due to Licensee
for such calendar year based on the audited statement of Restaurant Sales and
Non-Restaurant Sales, together with interest on such balance, if any, from the
close of such calendar year at the prime rate of interest as then charged by
Chase Manhattan Bank, New York (the "Prime Rate"). Similarly, Licensee will be
entitled to a credit against the first royalty fees due Licensor in the next
succeeding calendar year for any overpayment of royalties made with
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respect to a calendar year based on the audited year end statement plus interest
thereon as computed above.
b. Licensee shall keep and maintain complete and accurate books and
records with respect to all transactions relating to the License granted herein.
Such books and records shall be open to the inspection of Licensor or its
representatives or agents during normal business hours upon reasonable advance
notice, and Licensor's representatives or agents shall be entitled, not more
than once annually, to conduct an audit at its own expense for the purpose of
verifying the accuracy of the figures reported in any statement furnished to
Licensor hereunder. If Licensor shall claim that Licensee underpaid any amount
due hereunder and Licensee shall deny such claim, then such claim shall be
submitted to arbitration in accordance with subparagraph 19(d) hereof and no
Event of Default (as hereinafter defined) shall be deemed to have occurred
hereunder unless and until such arbitration shall have been determined adverse
to Licensee, a final order or judgment confirming such award has been entered in
a court of competent jurisdiction and Licensee shall have failed to pay any
award to Licensor within ten (10) days of such entry. Licensee shall preserve
and keep available all such books and records for at least three (3) years after
the year to which they relate.
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c. Upon the opening of any Restaurant using the Marks, Licensee
shall provide Licensor with a copy of the relevant Sublicense agreement, if
applicable, and with written notice to Licensor of the name and address of the
owner and manager and the seating capacity of the Restaurant.
d. Unless otherwise so directed by Licensor in writing, all payments
which are due Licensor pursuant to this Agreement shall be paid to Licensor at
its address set forth in subparagraph 18(e) below.
e. Provided that any item of expense which is shared among Licensor
and other restaurants owned or managed by Licensee or its Affiliates amounts to
a share to be borne by Licensor of at least $2,500.00 in any quarter, Licensee
shall furnish Licensor with a written report for such quarter identifying, by
item, the cost paid by Licensor and each of the other restaurants owned or
managed by Licensee or its Affiliates and the basis of such allocations.
7. SUBLICENSES
Except as expressly permitted hereby, Licensee shall not have the
right to sublicense all or any portion of the License granted hereby without
obtaining Licensor's prior written consent. Notwithstanding the foregoing,
Licensee shall have the right,
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without obtaining Licensor's consent, to grant sublicenses of any or all rights
granted to Licensee by Licensor hereunder to (i) Affiliates, or (ii) any other
entity so long as Licensee shall exercise and maintain managerial control over
all Restaurants owned by such entity substantially in the manner that Licensee
currently exercises managerial control over the NY Restaurant (each such
sublicensee being herein referred to as a "Sublicensee"). Each sublicense will
contain the provisions set out in this Agreement as the last sentence of this
paragraph, subparagraph 6(b), subparagraphs 15(e) through (k) below and
provisions (a) confirming Licensor's ownership of the Marks and Associated
Rights which are the subject of the sublicense, (b) declaring that the
sublicense will be deemed automatically assigned by Licensee to Licensor upon
any lawful termination of this Agreement (provided, however, that Licensor shall
have the option, to be exercised within fifteen (15) days of such termination,
to reject such sublicense by notice to the Sublicensee), (c) requiring the
Sublicensee to comply with the applicable terms and conditions of this Agreement
and to maintain the operating and quality standards prescribed herein, (d)
giving Licensor the right to determine directly whether or not such operating
and quality standards are being maintained, and (e) prohibiting further
sublicensing of the rights granted under the
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sublicense except in compliance with the terms and provisions of this paragraph.
Licensee will take all appropriate steps to exercise quality control over the
goods and services provided by each Sublicensee in order to ensure that the
operating and quality standards required by this Agreement are being maintained.
Notwithstanding anything to the contrary contained herein, Licensor shall not
have the right to terminate this Agreement or the License granted hereby for any
default which may arise hereunder by reason of the acts or omissions of any
Sublicensee so long as (i) Licensee shall use its best efforts to cause such
Sublicensee to comply with the applicable terms and conditions of this Agreement
and to maintain the operating and quality standards prescribed herein, and (ii)
if such efforts fail to cause the Sublicensee to comply with such terms and
conditions or maintain such standards within a reasonable time period not to
exceed ninety days, Licensee shall immediately terminate or cause to be
terminated the applicable sublicense.
8. ASSIGNMENTS
a. Except as expressly permitted hereby, Licensee shall not assign
all or any portion of its rights granted hereunder without obtaining Licensor's
prior written consent. Notwithstanding the foregoing, this Agreement and all
rights and
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obligations hereunder may be assigned or transferred by Licensee, without
Licensor's consent, only upon Licensee's compliance with subparagraph (b) below
and upon the condition that the assignee agrees in writing to be bound by the
terms and provisions of this Agreement and such assignee (or the manager of the
Restaurant(s) to be owned by such assignee) is either (i) an Affiliate, (ii) a
reputable restaurant operator that has managed high quality, fine dining
restaurants continuously during the five (5) year period immediately preceding
the effective date of such assignment, or an entity controlled by a manager
having such experience, or (iii) a nationally known reputable company active in
the food service or hospitality business such as, but not limited to, Restaurant
Associates or the Hilton or Marriot companies. Licensee shall not have the right
to assign its rights hereunder to any entity that, on the effective date of such
assignment, either is in bankruptcy or has lawsuits pending against it which, if
determined adversely to the assignee, would have a material adverse impact on
the financial condition of such assignee. If the assignee is not an experienced
restaurant operator as described above, but instead utilizes a third party
satisfying the requirements of subparagraphs (ii) or (iii) above to manage its
Restaurant(s), then such third party manager must be engaged by the assignee as
manager of the
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Restaurant(s) for not less than five (5) years. If such manager is not succeeded
by a like experienced manager, then Licensee shall be deemed in default
hereunder.
b. Licensee may, without Licensor's consent, assign its interest in
this License (i) to any corporation or other entity which is a successor to
Licensee either by merger or consolidation, or (ii) to a purchaser of all or
substantially all of Licensee's assets (provided such purchaser shall have also
assumed all of Licensee's obligations hereunder). Licensee shall, within ten
(10) days after execution thereof, deliver (a) a duplicate instrument of
assignment duly executed by Licensee and (b) an instrument duly executed by the
assignee, in which such assignee shall assume observance and performance of, and
agree to be bound by, all of the terms, covenants and conditions of this License
on Licensee's part to be observed and performed. Except as set forth above,
either a transfer of a controlling interest in Licensee (if Licensee is a
limited liability company or partnership) or a transfer of a controlling
interest in the shares of Licensee (if Licensee is a corporation) at any one
time or over a period of time through a series of transfers shall be deemed an
assignment of this License and shall be subject to all of the provisions of this
paragraph 8. For purposes of this paragraph 8, the sale, transfer or issuance of
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shares on or through the "over-the-counter market" or any other recognized stock
exchange or in connection with any employee stock ownership plan shall not be
considered an assignment or transfer of this License and shall not require
Licensor's consent. In furtherance thereof, Licensor's consent shall not be
required in connection with a public offering of shares or other ownership
interests by either Licensee or any Affiliate thereof. Any transfer of shares or
interests by and among the existing members or shareholders of Licensee or
occurring by reason of the death or incapacity of any member or shareholder of
Licensee shall not be deemed an assignment hereunder. In the event of an
assignment, as permitted pursuant to this paragraph, Licensee shall remain
jointly and severally liable with the assignee, for the assignee's due
performance of each and every obligation of Licensee pursuant to this Agreement,
provided, however, that if Licensee shall sell or otherwise transfer its entire
business (as opposed to merely its rights under this Agreement), whether
simultaneously or subsequent to any assignment permitted hereby, then this
Agreement and all rights of the Licensee hereunder shall terminate
simultaneously with such sale unless prior thereto, Licensee or its assignee
shall (i) furnish to Licensor then current financial statements demonstrating
that such assignee has a net worth of not less than
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$20 Million (determined in accordance with generally accepted accounting
principles and after giving effect to the assignment but excluding the value of
the assets acquired from Licensee), and (ii) delivers to Licensor a letter of
credit naming Licensor as beneficiary thereunder to secure the payment to
Licensor of all moneys payable to it hereunder and the performance of all
obligations on Licensee's part to be performed hereunder. Such letter of credit
shall be in form and issued by a bank that is acceptable to Licensor in its
reasonable discretion and be in an amount equal to $2 Million for the first year
following such sale, $3 Million for the second year following such sale, $4
Million for the third year following such sale and $5 Million for the fifth and
each subsequent year following such sale, provided, however, that if the sum of
Percentage Royalty payments and Additional Sale Price Payments for the two (2)
year period preceding the applicable year shall amount to more than the letter
of credit amount herein specified for such year, then the letter of credit for
such year shall be increased to such greater amount.
9. OPERATING AND QUALITY STANDARDS
a. All Restaurants shall be first class operations which offer food
and/or beverage services and provide decor and an ambiance that is substantially
similar to the NY Restaurant. In
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particular: (i) the quality of meat and seafood sold at a Restaurant shall be at
least as high as that served at the NY Restaurant, (ii) the decor and employee
uniforms of the Restaurants shall be substantially similar to that encompassed
within and utilized at the NY Restaurant, (iii) Restaurants shall maintain
sophisticated wine lists and provide service of the type provided at the NY
Restaurant, (iv) Restaurants shall be maintained in a clean, orderly and
sanitary condition at all times, and (v) Restaurants shall utilize steak knives,
chalkboards and other trade dress substantially similar to that utilized at the
NY Restaurant.
b. Notwithstanding the foregoing, Licensee may modify the aforesaid
requirements including, but not limited to (and by way of example only), menu
items and decor, to accommodate local variations in tastes, customs and attire
upon notice to and consent by Licensor, which consent shall not be unreasonably
withheld or delayed. If Licensee does not receive notice of disapproval from
Licensor (specifying Licensor's reason(s) for such disapproval) within twenty
(20) days after receipt by Licensor of written notice of such proposed
modification, then the proposed modification shall be deemed approved. In
addition, in no event shall Licensee be limited to locating Restaurants in
buildings similar to that in which the NY Restaurant is located, it being
understood that
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Licensee may open Restaurants in any location it deems appropriate outside of
the Reserved Territory, including, but not limited to, office buildings,
shopping centers and single user facilities. Licensor hereby acknowledges that
owing to local market conditions Licensee may adopt a pricing structure for any
Restaurant that differs from that of the NY Restaurant.
c. Licensor shall have the right to change, modify or add to the
operating and quality standards specified herein provided such changes,
modifications or additions are reasonably necessary to protect or enhance
standards of quality and service of the business and provided further that such
operating and quality standards are adopted and employed at the NY Restaurant.
d. All goods, merchandise or other products which utilize the Marks
shall be of high standard and of such style, appearance and quality as to be
consistent with the image projected by the NY Restaurant.
e. Licensor's representatives shall have the right to inspect any
Restaurant or other facility maintained for the sale of goods, merchandise or
other products utilizing the Marks at reasonable times and upon reasonable
advance notice, for purposes of examining such Restaurant, conferring with
Licensee, its agents and employees and inspecting and checking food quality,
xxxxxxx-
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dise, decor and operating methods, provided such inspection shall be conducted
in such manner as will not unreasonably interfere with Licensee's business
operation.
10. MARKINGS
a. Licensee will cause the Registrations, Marks and Associated
Rights to be displayed only in such form or manner as may be used by Licensor,
or in such other form and manner as may be approved by Licensor, provided, that,
with respect to the Marks (excluding the Registrations) and Associated Rights,
such approval shall not be unreasonably withheld or delayed. Licensee shall have
the right to modify the Marks (excluding the Registrations) and Associated
Rights so that they conform to or are appropriate for use in other geographic
locations, subject to the prior written approval of Licensor which shall not be
unreasonably withheld or delayed. If Licensee does not receive notice of
disapproval from Licensor (specifying Licensor's reason(s) for such disapproval)
within twenty (20) days after receipt by Licensor of written notice of such
proposed variation or modification, then the proposed variation or modification
shall be deemed approved. Notwithstanding anything to the contrary contained
herein, Licensee, without the consent of Licensor (i) may modify the Marks by
replacing the picture of the NY Restaurant contained in the logo
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with a picture of another Restaurant and/or including a location designation
such as "Xxxxx & Wollensky - Chicago", and (ii) may not use or sublicense the
use of any Registration in any form other than as registered and shall at all
times use each Registration with proper indicia of registration (i.e. (R)).
b. Licensee shall use the Marks and Associated Rights in accordance
with all applicable legal requirements. Licensee shall cause to appear on all
materials in connection with which the Marks are used, such legends, markings,
indications and notices necessary to give notice of any trademark, trade name,
copyright or other rights owned by Licensor pertaining thereto.
11. ADVERTISING AND PROMOTION
The parties acknowledge that it may be mutually advantageous to
simultaneously advertise or promote the NY Restaurant, the Restaurants and/or
other restaurants that may be owned or operated by Licensee or its Affiliates
including without limitation Xxxxxxx & Xxxxxxxx. Any expenses incurred by
Licensee or its Affiliates for advertising or promoting the Marks and other
restaurants owned or managed by Licensee and its Affiliates shall be apportioned
between Licensor and Licensee, based upon the number of restaurants owned by
each party depicted or referred to in the advertisement or promotion, provided,
however, that if any such
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advertisement or promotion shall depict or refer to any Restaurant, then the
entire cost thereof shall be paid by Licensee.
12. DEFAULT; TERMINATION
a. Each of the following events shall be an "Event of Default"
hereunder:
(i) if Licensee shall default in the payment when due of any
Additional Sale Price Payment or Percentage Royalty payment hereunder and
Licensee shall fail to remedy such default within fifteen (15) days after
Licensee shall have received written notice of such default;
(ii) (aa) if Licensee shall generally not, or shall be unable to, or
shall admit in writing its inability to, pay its debts as they become due; or
(bb) if Licensee shall commence or institute any case,
proceeding or other action (x) seeking relief on its behalf as debtor, or to
adjudicate it a bankrupt or insolvent, or seeking reorganization, arrangement,
adjustment, winding-up, liquidation, dissolution, composition or other relief
with respect to it or its debts under any existing or future law of any
jurisdiction, domestic or foreign, relating to bankruptcy, insolvency,
reorganization or relief of debtors, or (y) seeking appointment of
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a receiver, trustee, custodian or other similar official for it or for all or
any substantial part of its property; or
(cc) if Licensee shall make a general assignment for the
benefit of creditors; or
(dd) if any case, proceeding or other action shall be
commenced or instituted against Licensee (x) seeking to have an order for relief
entered against it as debtor or to adjudicate it a bankrupt or insolvent, or
seeking reorganization, arrangement, adjustment, winding-up, liquidation,
dissolution, composition or other relief with respect to it or its debt under
any existing or future law of any jurisdiction, domestic or foreign, relating to
bankruptcy, insolvency, reorganization or relief of debtors, or (y) seeking
appointment of a receiver, trustee, custodian or other similar official for it
or for all or any substantial part of its property, which either (i) results in
any such entry of an order for relief, adjudication of bankruptcy or insolvency
or such an appointment or the issuance or entry of any other order having a
similar effect or (ii) remains undismissed for a period of sixty (60) days; or
(ee) If any case, proceeding or other action shall be
commenced or instituted against Licensee seeking issuance of a warrant of
attachment, execution, distraint or similar process
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against all or any substantial part of its property which results in the entry
of an order for any such relief which shall not have been vacated, discharged,
or stayed or bonded pending appeal within sixty (60) days from the entry
thereof; or
(ff) if Licensee shall take any action in furtherance of, or
indicating its consent to, approval of, or acquiescence in, any of the acts set
forth in clauses (bb), (cc), (dd) or (ee) above.
(iii) if Licensee shall default in the observance or performance of
any other term, covenant or condition of this License on Licensee's part to be
observed or performed and Licensee shall fail to remedy such default within
thirty (30) days after written notice by Licensor to Licensee of such default;
provided, however, that if such default is of such a nature that it cannot be
completely remedied within said thirty (30) day period, no Event of Default
shall be deemed to have occurred hereunder if Licensee shall make good faith
efforts to remedy such default within such thirty (30) day period and shall
thereafter take all steps necessary to diligently prosecute same to completion.
(iv) if either Licensee or Xxxxxxxx or any Affiliate of Xxxxxxxx
shall hereafter open and own or manage any new steakhouses not utilizing the
Marks, provided, however, that it shall not be an
27
Event of Default hereunder if (x) Licensee or its Affiliates shall own or manage
new restaurants which sell steak incidentally (offering not more than four (4)
steak items at each such restaurant, without limitation as to the number of meat
items) and are not commonly identified as steakhouses, (y) either Licensee or
any Affiliate thereof shall purchase steakhouse(s), such as, but not limited to,
Sparks, The Palm, Xxxxxx'x or Outback which will continue to be operated under
their names or open additional restaurant(s) outside of the Reserved Territory
utilizing the name of such steakhouse(s) or (z) Licensee or any Affiliate shall
hereafter be engaged in Management of steakhouse(s) outside of the Reserved
Territory.
(v) if Licensee shall fail to timely pay the License Purchase Price
called for in paragraph 4 (a)
If an Event of Default shall have occurred and thereafter Licensor
shall give written notice to Licensee stating that this License shall expire and
terminate on the date specified in such notice, which date shall not be less
than ten (10) days after the giving of such notice, then this License and the
term hereof and all rights of Licensee under this License shall expire and
terminate as of the termination date specified in Licensor's notice. In the
event of such termination:
28
(aa) the rights and license granted to Licensee herein shall
forthwith terminate and automatically revert to Licensor;
(bb) Licensee shall discontinue the use of the Marks and Associated
Rights or any variant thereof at all of the Restaurants, change the decor and
design and discontinue the use of all signs, emblems, marks and color schemes
indicative of "Xxxxx & Wollensky" at such Restaurants;
(cc) Licensee shall notify each Sublicensee of such termination and
of Licensor's right to terminate such Sublicensee's sublicense; and
(dd) all Percentage Royalties and any other accrued payments due
Licensor to the date of expiration or termination plus the $2 Million
Termination Fee referred to in the next paragraph shall become immediately due
and payable.
Licensee shall have the unilateral right to terminate this Agreement
and the License granted hereby for any reason whatsoever or for no reason by
giving not less than thirty (30) days' prior notice thereof to Licensor,
provided such termination shall not be deemed effective unless and until
Licensee shall have complied with subsections (aa) through (dd) above and paid
to Licensor the Termination Fee (as hereafter defined) . For purposes hereof,
the "Termination Fee" shall be an amount equal to Two
29
Million ($2,000,000) Dollars if Licensee. shall pay such amount to Licensor by
the termination date, provided, however, that Licensee shall have the right to
pay the Termination Fee in installments over a four (4) year period and if it
shall so elect to pay the Termination Fee in installments, then (x) the
Termination Fee shall be an amount equal to Two Million Five Hundred Thousand
($2,500,000) Dollars, (y) Licensee shall notify Licensor of such election in
Licensee's termination notice, and (z) the Termination Fee shall be payable by
Licensee to Licensor as follows: $156,250.00 by the termination date and the
balance in fifteen (15) equal consecutive quarter-annual payments of principal
each with interest at the Prime Rate in effect at the date of payment on the
then unpaid principal balance. If Licensee shall elect to pay the Termination
Fee in installments it shall furnish annual audited financial statements to
Licensor and if its net worth thereafter shall decrease below $1 Million, then
the balance of the Termination Fee and any accrued interest shall become
immediately due and payable to Licensor.
Unless the termination is pursuant to this subsection (iv), Licensee
shall not be liable to Licensor for any damages, consequential or otherwise, or
other payments in the event of any termination of this License.
30
13. RESTAURANT CLOSURES
Notwithstanding anything to the contrary contained herein, upon
prior written notice to Licensor, Licensee shall have the right in its sole
discretion to close any Restaurant without liability to Licensor. Additionally,
at any time upon prior written notice to Licensor, Licensee shall have the right
without liability to Licensor to convert any Restaurant to another restaurant
(other than to a restaurant commonly identified or considered by the public as a
"steakhouse" unless otherwise permitted hereby) utilizing a name other than the
Marks. If Licensee shall elect to close a Restaurant or convert a Restaurant
from a Xxxxx & Wollensky steakhouse, then as to such Restaurant only, Licensee
shall (i) discontinue the use of the Marks and Associated Rights or any variant
thereof at such Restaurant, (ii) change the decor and design and discontinue the
use of all signs, emblems, marks and color schemes indicative of "Xxxxx &
Wollensky" at such Restaurant, and (iii) not be required to make any further
Percentage Royalty or other payments in respect thereof.
14. REPRESENTATIONS AND WARRANTIES.
a. Licensor represents and warrants to Licensee as follows:
31
(i) Licensor has the legal power, authority and capacity to execute,
deliver and perform this Agreement and this Agreement and the transaction
contemplated hereby have been fully approved by all requisite partnership
action; and
(ii) This Agreement has been duly executed and delivered and
constitutes a valid and binding obligation legally enforceable against Licensor
in accordance with its terms. The execution and delivery of this Agreement by
Licensor and the performance of its obligations hereunder are not in violation
of, and do not conflict with or constitute a default under, any of the terms or
provisions of Licensor's Agreement of Limited Partnership.
b. Licensee represents and warrants to Licensor as follows:
(i) Licensee has the legal right, power, authority and capacity to
execute, deliver and perform this Agreement;
(ii) this Agreement constitutes the legal, valid and binding
obligation of Licensee, enforceable in accordance with its terms;
(iii) Licensee has (or will have) the financial capability to comply
with the terms and provisions of the Agreement and to perform its obligations
hereunder; and
32
(iv) this Agreement has been duly executed and delivered and
constitutes a valid and binding obligation legally enforceable against Licensee
in accordance with its terms. The execution and delivery of this Agreement by
Licensee and the performance of its obligations hereunder are not in violation
of, and do not conflict with or constitute a default under, any of the terms or
provisions of Licensee's Articles of Organization or any agreement, indenture or
instrument to which it is bound, or any law, regulation, order, decree, judgment
or award to which it is subject.
15. COVENANTS OF LICENSOR AND LICENSEE
a. From and after the date hereof and for so long as this Agreement
shall be in force and effect and the NY Restaurant shall be open, Licensor shall
continue to operate the NY Restaurant in the same manner as heretofore operated
and shall use its best efforts to preserve the goodwill of the business and
protect and defend the Marks and Associated Rights. In furtherance thereof,
Licensor, at its cost and expense, shall take all reasonable actions to renew
the Registrations when required and to make such further filings and
registrations to protect and defend the Registrations, Marks and Associated
Rights, including bringing suit against any infringement thereof.
33
b. Licensor shall not encumber, mortgage or grant any security
interest or lien in the Marks and/or the Associated Rights.
c. Licensor shall not open additional Xxxxx & Wollensky restaurants
outside of the Reserved Territory or within the Restricted Area nor shall
Licensor grant any third party a license to utilize the Marks or Associated
Rights outside of the Reserved Territory or within the Restricted Area.
d. Licensor shall not be precluded from selling or closing the NY
Restaurant and the Additional Sale Price Payments and Percentage Royalty
payments required hereby shall continue notwithstanding any such sale or closure
unless and until the Registrations shall be terminated or abandoned, provided,
that the foregoing is not intended to permit Licensor to voluntarily abandon or
terminate the Registrations or otherwise affect Licensor's obligations under
paragraphs 16 and 17 below.
e. Licensee shall not denigrate or cause the denigration of any of
the Marks or Associated Rights, and shall not take, or permit any of the
Sublicensees to take, any other action that is in Licensor's judgment (which
judgment shall not be unreasonably exercised) harmful (or potentially harmful)
to or
34
which disparages or demeans, directly or indirectly, the goodwill and reputation
of licensor, the Marks or the Associated Rights.
f. At such time as Licensee is operating a Restaurant or marketing
any merchandise which would constitute Non-Restaurant Sales, Licensee shall, at
its sole cost and expense, procure and maintain policies of insurance with a
nationally recognized insurance carrier with the following types and amount of
coverage:
(i) Liquor Liability: Not less than $1 Million per occurrence.
(ii) Worker's Compensation: In compliance with statutory
requirements of each state in which Licensee is required to provide worker's
compensation coverage.
(iii) Comprehensive Business Liability: Not less than $1 Million per
occurrence.
(iv) Advertising: Not less than $1 Million per occurrence.
The foregoing policies, and any other insurance policies that insure Licensee or
its property, shall name Licensor as an additional insured, shall state that the
policies will not be changed or terminated without at least twenty days' prior
written notice to Licensor, and shall state that the insurer has waived its
subrogation rights against Licensor. Upon Licensor's request,
35
Licensee shall deliver to Licensor a certificate of insurance indicating that
the coverage required by this subparagraph (f) is in full force and effect.
g. Licensee shall comply in all material respects with all Federal,
state, local or foreign laws, ordinances, regulations and orders applicable to
its business, including all health, sanitary and safety codes, rules and
regulations.
h. Licensee will obtain and maintain all licenses, permits and
consents required to operate the Restaurants and market the merchandise which
would result in Non-Restaurant sales.
i. Licensee shall implement regulations in each Restaurant that
prohibit patrons or employees from using drugs, the possession and use of which
are illegal in the jurisdiction in which the Restaurant is located, from
participating in prostitution and from engaging in activities involving
pornography or violence.
j. Licensee shall not mortgage, encumber or otherwise subject this
Agreement to any security interest or lien, except that, without obtaining the
consent of Licensor, (i) Licensee shall have the right to grant a security
interest in its rights hereunder to any institutional lender having assets in
excess of $500 Million, provided, however, that any assignee of this Agreement
must satisfy the requirements of paragraph 8 hereof, and, (ii) a
36
security interest in this Agreement may be granted to Licensee in connection
with any purchase money financing which Licensee gives in connection with an
assignment or other transfer of Licensee's rights hereunder.
k. Licensee shall not use any trade names or trademarks which are
confusingly similar to the Marks. Notwithstanding anything to the contrary
contained herein, Licensee shall have the right to engage in cooperative
advertising and cooperative promotional activities using other trademarks and
tradenames in conjunction with the Marks and Associated Rights.
l. Each of the foregoing covenants (e) through (k) shall, in
substance, be included in any Sublicense; provided, however, that Licensee in
its discretion may increase the minimum insurance required by it from its
Sublicensees.
16. OWNERSHIP
a. During the term of this Agreement, Licensor shall file, at its
sole cost and expense, all applications and documents necessary to maintain its
exclusive ownership of the Registrations, including any modifications made in
conformance with this Agreement in the United States and those countries listed
on Schedule A annexed hereto. All applications, registrations and renewals of
the Registrations shall be in the name of Licensor. Licensee, at
37
its sole cost and expense, shall have the right, but not the obligation, to
register the Marks and/or Associated Rights in the name of Licensor in
jurisdictions outside of the United States in which Licensor shall not have
previously filed for registration. Before seeking to register any of the Marks
in any jurisdiction outside of the United States, Licensee shall give Licensor
notice of its intention to register, which notice shall identify the Xxxx to be
registered and the intended country of registration. Licensor shall have the
right, on notice to Licensee, to pursue such registration instead of Licensee,
provided it shall give Licensee notice thereof within twenty (20) days of its
receipt of Licensee's notice. If Licensee shall pursue registration of a Xxxx
outside of the United States, then it shall provide Licensor (or its designated
counsel) with copies of all applications and other documents to be filed with
the applicable authorities at least twenty (20) days before filing the same.
Licensee shall make such amendments, changes or supplements to any such
applications as Licensor, or its counsel, shall reasonably require.
b. All trademarks, copyrights, patents, trade dress, design patents,
and other proprietary rights relating to any design element, shape, or style on
or with all products, packaging, labels, names and logos used in connection with
the Restaurants or
38
on or with respect to any products or services bearing the Marks shall belong to
Licensor and all applications and registrations thereof shall be filed in the
name of Licensor; provided however that Licensee may seek or obtain protection,
including registration (in the name of Licensor), of the Marks and Associated
Rights with the prior written consent of Licensor (which shall not be
unreasonably withheld or delayed) or if Licensor fails to seek or obtain the
requisite protection. If Licensee does not receive notice of disapproval from
Licensor (specifying Licensor's reason(s) for such disapproval) within twenty
(20) days after receipt by Licensor of such proposed registration, then Licensor
shall be deemed to have consented to Licensee proceeding with the proposed
registration.
c. Licensee acknowledges that as between Licensor and Licensee,
except for the rights expressly granted to Licensee herein, Licensor is the
holder of all right, title and interest in and to the Marks. Licensee recognizes
the value of the goodwill associated with the Marks and acknowledges that the
Marks and Associated Rights have acquired a secondary meaning in the mind of the
public. All use by Licensee of the Marks and the Associated Rights shall be
deemed to have been made by Licensee for the
39
benefit of Licensor and all goodwill thereunder shall inure to the benefit of
Licensor.
d. Licensee shall not challenge Licensor's right to, or the validity
of, the Marks and Associated Rights, or any application by Licensor for
registration or renewal thereof during the term of this Agreement.
e. Licensee shall, at Licensor's request, execute any documents
reasonably required by Licensor to confirm its ownership of all rights in and to
the Marks and Associated Rights and the respective rights of the parties
pursuant to this Agreement. Licensee shall, at Licensor's expense, cooperate
with Licensor in connection with the filing and prosecution of applications by
Licensor to register or renew the Marks and Associated Rights and the
maintenance of such registrations.
f. In the event Licensor's ownership and right to the existing U.S.
Trademark for "Xxxxx & Wollensky" are terminated for any reason whatsoever, this
Agreement shall terminate as of the date of such expiration or termination,
without either party incurring any liability thereby and thereafter Licensee
shall not be obligated to pay the Termination Fee to Licensor or make further
Additional Sale Price Payment, Percentage Royalty or other payments to Licensor.
40
g. All rights in the Marks and Associated Rights, other than those
specifically granted herein are reserved by Licensor for its own use and
benefit.
17. INFRINGEMENTS
If Licensee learns of any use by any person of a trademark or trade
name similar to the Marks or Associated Rights, then Licensee shall as soon as
practicable notify Licensor. Licensor shall take all reasonable and prudent
actions to stop any activity which constitutes an infringement of the Marks or
Associated Rights and/or the rights granted to Licensee hereunder and shall do
so at Licensor's sole cost and expense; provided, however, that Licensor shall
not be obligated to enjoin any infringement occurring outside of the United
States. Licensee agrees to cooperate fully with the prosecution of any action
brought by Licensor in connection with any such claim of infringement. If
Licensor shall not take appropriate steps to stop an infringement of the rights
granted to Licensee or an infringement of the Marks or Associated Rights
occurring within the United States within thirty (30) days of receiving written
notice thereof from Licensee, then Licensee, at Licensee's sole cost and
expense, may take such actions as Licensee in its reasonable discretion deems
advisable, including hiring attorneys and suing
41
for infringement, provided, however, that if Licensee's actions shall pertain to
an infringement that commences following the date of this Agreement, then
Licensor shall be obligated to reimburse Licensee within thirty (30) days of
demand therefor for any expenses, including reasonable attorneys' fees, incurred
in connection with enjoining such infringement. If Licensee shall bring any
action to enjoin an infringement of the Marks or Associated Rights or the rights
granted to Licensee hereunder (whether in the United States following Licensor's
failure to do so or outside of the United States), then Licensee shall be
entitled to retain any award or damages received in connection therewith. Any
such action brought by Licensee in connection with an alleged infringement may
be brought in the name of Licensor, Licensee or any Affiliate or Sublicensee, or
any combination thereof, as Licensee deems reasonably appropriate. Licensee
shall have the right to select counsel for any such infringement action that it
elects to commence, subject to the prior approval of Licensor which shall not be
unreasonably withheld or delayed. If Licensee does not receive notice of
disapproval from Licensor (specifying Licensor's reason(s) for such disapproval)
within twenty (20) days after receipt by Licensor of Licensee's counsel
selection, then
42
Licensor shall be deemed to have consented to Licensee utilizing such counsel.
18. MISCELLANEOUS
a. This Agreement is not to be construed as a franchise agreement,
nor shall the parties hereto be considered partners or joint venturers, in any
way, manner or form, at any time or for any purpose. Nothing herein contained
shall create or be deemed to create any agency between the parties hereto, and
Licensee shall have no power or authority to obligate or bind Licensor in any
manner whatsoever.
b. The parties hereto agree that the representations and warranties
contained in this Agreement shall survive the execution and delivery of this
Agreement.
c. Each of the parties shall execute and deliver or cause to be
executed and delivered to the other and shall do or make or cause to be done or
made, from time to time, all instruments, consents, assignments, documents,
actions and things which may be necessary or advisable to consummate and make
effective the transactions contemplated by, or to carry out the terms of, this
Agreement, including, without limitation, subject to the provisions of paragraph
16 hereof, to maintain and enforce applications and registrations with respect
to the Marks and
43
Associated Rights and any modifications thereof. The parties hereto agree to
execute such other documents or agreements as may be necessary or desirable for
the implementation of this Agreement and the consummation of the transactions
contemplated hereby.
d. Except as provided below, any controversy or claim arising out of
or relating to this Agreement or the breach thereof, shall be settled by
arbitration administered by the American Arbitration Association under its
Commercial Arbitration Rules, and judgement on the award rendered by the
arbitrator(s) may be entered in any court having jurisdiction thereof.
Notwithstanding the foregoing, either party may bring an action in any court of
competent jurisdiction where such party seeks equitable relief enjoining the use
of the Registrations, Marks or Associated Rights. Either general partner of
Licensor, without the consent of the other, may enforce Licensor's rights
pursuant to this Agreement.
e. All notices, approvals, requests or consents permitted or
required under this Agreement shall be in writing and shall be deemed to have
been duly given when sent by certified or overnight mail or nationally
recognized overnight delivery service with return receipt requested or
acknowledged receipt or delivered personally, to the parties at their respective
addresses set forth as follows:
44
In the case of Licensee:
c/o The New York Restaurant Group, LLC
0000 Xxxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
In the case of Licensor:
St. Xxxxx Associates
000 Xxxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
both parties shall send copies of all notices
to:
Xxxxxx X. Xxxxxx, Esq.
Xxxxxxx Xxxxxxxx Xxxxx Xxxxxxxxxxx & Kuh
000 Xxxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
or to such other person or address as any party hereto shall specify hereunder.
Notices shall be deemed received on the earlier of actual receipt or five (5)
business days following the date such notice shall have been duly sent. Either
party may change the address hereunder or the person to whom any notice or
delivery shall be directed by a notice sent in conformance with the terms of
this paragraph. Payments by Licensee to Licensor hereunder shall be made to
Licensor at the following address unless otherwise notified in writing by
Licensor:
c/o The New York Restaurant Group, LLC
0000 Xxxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
45
f. Licensor hereby acknowledges that Licensee, Xxxxxxxx and their
Affiliates are currently engaged in other business ventures and activities which
could be considered to be competitive with the NY Restaurant and any other
Restaurants which may hereafter be opened. Subject to the specific limitations
contained herein, Licensee, Xxxxxxxx and their Affiliates may engage in other
business ventures of every nature and description, independently or with others,
including without limitation restaurant businesses in all its phases, even if
the same compete with the NY Restaurant or any Restaurants, and except as
expressly provided herein, neither Licensor nor any partner thereof shall have
any rights in or claims with respect to said ventures, or the income or profits
derived therefrom. Licensor hereby acknowledges that Affiliates of Xxxxxxxx
manage both Licensor and Licensee and have ownership interests therein. Xxxxxxxx
has fully disclosed such conflict of interests to Licensor and Licensor has
elected to utilize separate and independent counsel in the negotiation of this
License Agreement.
g. This Agreement represents the entire understanding and agreement
between the parties hereto with respect to the subject matter hereof and can be
amended, supplemented or changed, and any provisions hereof can be waived only
by written instrument
46
making specific reference to this Agreement and signed by the party to be
charged. This Agreement may be executed in more than one counterpart, each of
which shall be deemed an original, but all of which together shall constitute
one and the same instrument.
h. This Agreement shall be binding upon and shall inure to the
benefit of the parties hereto and their respective heirs, executors,
administrators, personal representatives, successors and assigns.
i. The paragraph headings contained in this Agreement are for
reference purposes only and shall not affect in any way the meaning or
interpretation of this Agreement.
j. If at any time subsequent to the date hereof, any provision of
this Agreement shall be held by any arbitration panel or court of competent
jurisdiction to be illegal, void or unenforceable, such provision shall be of no
force and effect, but the illegality or unenforceability of such provision shall
have no effect upon and shall not impair the enforceability of any other
provision of this Agreement.
k. This Agreement shall be deemed to have been entered into in the
State of New York, and shall be construed and interpreted in accordance with the
laws of the State applicable to agreements made and to be performed in the State
of New York
47
(without reference to principles of conflicts of laws or the location of
Restaurants), except that any and all disputes, controversies and claims arising
out of or relating to the ownership, registration or application for
registration of the Marks shall be determined under the United States federal
trademark law.
l. The failure of either party to claim or assert a right under this
Agreement will not be deemed a waiver thereof unless a time limit is provided in
this Agreement for the exercise of such rights. Any waiver, whether express or
implied of any provision of this Agreement shall not constitute a continuing
waiver of such provision or of any other provision of this Agreement. All
remedies specified herein or otherwise available shall be cumulative and in
addition to any and every other remedy provided herein or now or hereafter
available.
m. Licensee shall bear all of its own expenses incurred in
connection with its use of the Marks and Associated Rights, including the
payment of all applicable taxes (national, state, local and foreign). Licensor
shall pay all of its own taxes on royalty payments received by it, but shall not
be responsible for any portion of Licensee's taxes on Restaurant Sales or
Non-Restaurant Sales.
48
n. The provisions and covenants set forth in this Agreement are made
solely for the benefit of the parties to this Agreement and their permitted
successors and assigns and not for the benefit of any other person, and no other
person shall have any right to enforce these provisions and covenants against
any party to this Agreement.
IN WITNESS WHEREOF, the parties hereto have duly executed this Agreement
the day and year first above written.
ST. XXXXX ASSOCIATES (Licensor)
By: Chamblair Realty, Inc. and
Xxxxx & Wollensky Operating Corp.,
general partners
By: /s/ Xxxxxx X. Xxxxxx
----------------------------------------
Name: Xxxxxx X. Xxxxxx
Title: President, Chamblair
Realty Corp.
By: /s/ Xxxx X. Xxxxxxxx
----------------------------------------
Name: Xxxx X. Xxxxxxxx
Title: President, Xxxxx &
Wollensky Operating Corp.
THE NEW YORK RESTAURANT GROUP, LLC
(Licensee)
By: LaCite, Inc., its manager
By: /s/ Xxxx X. Xxxxxxxx
----------------------------------------
Name: Xxxx X. Xxxxxxxx
Title: President
49
SCHEDULE A
Registrations
Doc F-1 of Set #1
XXXXX & WOLLENSKY
Status: REGISTERED
Gds/Svcs: Int'l. Cl.: 42 (U.S. Cl.: 100)
RESTAURANT SERVICES.
First Use: 09/1977 In Commerce: 09/1977
Reg. No.: 1,271,216 Registered: 03/20/1984
Serial No.: 73-411479 Filed: 01/31/1983 Published: 12/27/1983
Affidavits: 8 & 15 09/06/1989
Corresp.: XXXX X. XXXXXX
FIDDLER & XXXXXX
000 0XX XXX.
XXX XXXX XX 00000
Registrant: ST. XXXXX ASSOCIATES, PARTNERSHIP COMPOSED OF XXXXX X. XXXXXXXX
(UNITED STATES CITIZEN) AND CHAMBLAIR REALTY, INC. (NEW YORK
CORPORATION) (NY PARTNERSHIP) 0000 XXXXX XXXXXX XXX XXXX, XX 00000
Doc F-2 of Set #1
WOLLENSKY'S GRILL
Status: REGISTERED
Gds/Svcs: Int'l. Cl.: 42 (U.S. Cl.: 100)
RESTAURANT SERVICES
First Use: 12/22/1980 In Commerce: 12/22/1980
Reg. No.: 1,399,014 Registered: 06/24/1986
Serial No.: 73-566896 Filed: 11/04/1985 Published: 04/01/1986
Owns: 1,271,216
Disclaims: "GRILL"
Affidavits: 8 & 15 12/15/1992
Owner: ST. XXXXX ASSOCIATES, COMPOSED OF XXXXX & WOLLENSKY OPERATING
CORP., A NEW YORK CORPORATION (NY LTD. PARTNERSHIP)
NEW YORK, NY
Registrant: ST. XXXXX ASSOCIATES, COMPOSED OF XXXX X. XXXXXXXX, A U.S. CITIZEN
AND CHAMBLAIR REALTY CORP., A N.Y. CORPORATION (NY LTD.
PARTNERSHIP) NEW YORK, NY
Assignments:
Assignee: ST. XXXXX ASSOCIATES (NY A LIMITED PARTNERSHIP) NEW YORK, NY
Assignor: ST. XXXXX ASSOCIATES (NY A LIMITED PARTNERSHIP)
Recorded: 10/19/1992 Assigned: 10/09/1992 Reel/Fr.: 0899/0126
Action: NUNC PRO TUNC JULY 1, 1986
[GRAPHIC OMITTED]
Int. Cl.: 42
Prior U.S. Cl.: 100
Reg. No. 1,572,565
Registered Dec.19, 0000
Xxxxxx Xxxxxx Patent and Trademark Office
--------------------------------------------------------------------------------
SERVICE XXXX
PRINCIPAL REGISTER
IF STEAK WERE A RELIGION, THIS WOULD BE ITS
CATHEDRAL
ST. XXXXX ASSOCIATES (PARTNERSHIP), FIRST USE 6-0-1986; IN COMMERCE
DBA XXXXX & WOLLENSKY 6-0-1986.
THE NEW YORK RESTAURANT GROUP, INC.
0000 XXXXX XXXXXX
XXX XXXX, XX 00000 SER. NO. 73-777,747, FILED 1-30-1989.
FOR: RESTAURANT SERVICES, IN CLASS
42 (U.S. CL. 100). XXXXXXX XXXX, EXAMINING ATTORNEY
[GRAPHIC OMMITTED]
BENELUX-MERKENBUREAU
BEWIJS VAN INSCHRIJVING
01 Inschrijvingsnummer
555703
Nummer en dagtekening (dag en uur) xxx xxx xxxxx
000000 09.06.1994,24.00
02 Vervaldatum
09.06.2004
00 Xxxx xxx xx xxxxxxxx
Xx. Xxxxx Associates, New York corporation
04 Adres (straat en nummer) van de deposant
c/o The New York Restaurant Group Inc.
0000 Xxxxx Xxxxxx
05 Postcode, plaats en land xxx xx xxxxxxxx
Xxx Xxxx - Xxx Xxxx 00000,
Xxx.Xx.x.Xx.
06 Naam en adres van de gemachtigde of vermelding van het correspondentie-adres
van de deposant
Nederlandsch Octrooibureau
Xxxxxxxxxxxxxxx 00
0000 XX'x-Xxxxxxxxxx
Xxxxxxxxx.
08 Woordmerk
XXXXX & WOLLENSKY
13 Klasse-aanduiding en opgave van de waren en diensten
Kl 42 Diensten van een restaurant.
14 Klasse-opsomming (00 = tot en met)
42
Publikatiedatum van de inschrijving
05/1995
Kenmerken van de deposant of de gemachtigde
ma 5786- 1 Ben 941492 wm/mjv
Den Xxxx, 02/05/1995 /s/ P. Rome
P. Rome
Directeur
INSTITUT NATIONAL DE LA PROPRIETE II USTRIELLE
DIVISION DES MARQUES - 00, xxx xxx Xxxxx Xxxxxxxx - 00000 NANTERRE Cedex
Telex: INPI DEF Tel.:(1) 46 92
614 096 F
MARQUES DE FABRIQUE,
DE COMMERCE
OU DE SERVICE
(Loi n (Degrees) 64-1360 du 31 decembre 1964
Decret n (Degrees) 65-621 du 27 juillet 1965)
Certificat d'enregistrement
Le Directeur General de l'Institut national de la propriete
industrielle certifie que la marque reproduite au verso a ete
enregistree.
La date legale d'enregistrement est celle a laquelle la demande a
ete deposee.
Le depot produit ses effets pendant 10 ans a compter de cette date.
Toutefois, le depot en renouvellement xxxxxx a une duree de validite
de 10 ans a compter du jour de l'expiration du depot precedent.
L'enregistrement sera publie au Bulletin Officiel de la Propriete
Industrielle
n (Degrees) 91/56
Le Directeur general de l'Institut national
de la propriete industrielle
/s/ X.X. COMBALDIEU
X.X. COMBALDIEU
[GRAPHIC OMITTED]
CABINET LAVOIX
0 Xxxxx x'Xxxxxxxx x'Xxxxx
00000 XXXXX
XXXXX & WOLLENSKY
Enregistrement N(degrees) : 1 682 457
Depot du : 23 JUILLET 1991
a : I.N.P.I
sous le N(degrees) : 299 789
ST. XXXXX ASSOCIATES, (association regie salon les xxxx de
l'Etat de New-York), 0000 Xxxxx Xxxxxx, XXX-XXXX, Xxxx de
New-York 10021, ETATS UNIS D'AMERIOUE.
Mandataire: LE CABINET LAVOIX.
Produits ou service designes : Hotellerie, restauration.
Maisons de repos et de convalescence. Pouponnieres.
Accompagnement en societe. Agences matrimoniales. Salons do
beaute, de coiffure. Pompes funebres, fours crematoires.
Reservation de chambres d'hotel pour voyagours. Travaux
d'ingenieurs, consultations professionnelles et etablissement
de plans sans rapport avec la conduite des affaires. Travaux
du genie (pas pour la construction). Prospection. Forages.
Essais de materiaux. Laboratoires. Location de materiel pour
exploitation agricole, do vetements, de literie, d'appareils
distributeurs. Imprimerie.Programmation pour ordinateurs.
Classes de produits ou services : 42.
La protection est revendiquee pour la totalite des services
entrant dans la classe ci-dessus indiquee.
BUNDESREPUBLIK DEUTSCHLAND
[GRAPHIC OMITTED]
URKUNDE
Uber die Eintragung des umstehenden Zeichens
DEUTSCUES PATENTAMT
[GRAPHIC OMITTED]
Klasse Aktenzeichen
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42 S 52475/42 Xx
XXXXX & WOLLENSKY
10.6.91 St. Xxxxx Associates, New York, N.Y. (V.St.A.).
Vertr.: Xxxxxxxx, U., Xxxx, Dr.; Suchantka, J., Dipl.-Ing.; Xxxxx, A.,
Dipl.-Ing.; Kameke, A. v., Dr.; Xxxxxxx, I., Dipl.-Biol.; Franck, P., Dr.; Both,
G., Dr., Xxx.-Anwalte, 2000 Hamburg.
Geschaftesbetrieb: Restaurant.
Waren/Dienstleistungen: Bewirtung von Gasten. GK. 42.
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Eingetragen am Nummer
01.06.93 2037384
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Schutzdauer verlangert mit Wirkung vom:
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Bei Eintragung nach ss. 6a Warenzeichangesetz:
Widerspruchsverfahren abgeschlossen am
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Geloscht am
================================================================================
Internationale Registrierung
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Registriert unter Nr. am
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Geloscht am
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[GRAPHIC OMITTED]
MINISTERO DELL'INDUSTRIA DEL COMMERCIO E DELL'ARTIGIANATO
D.G.P.I. - UFFICIO ITALIANO BREVETTI E MARCHI
ATTESTATO DI REGISTRAZIONE PER XXXXXXX D'IMPRESA
Tipo PRIMO DEPOSITO
N. 00613631
Il presente attestato viene rilasciato per il xxxxxxx d'impresa oggetto della
domanda:
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num. data pres.
domanda xxxx X.X.X.X.X. domanda
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002930 91 ROMA 12/08/1991
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TITOLARE ST. XXXXX ASSOCIATES A NEW YORK, NEW YORK
(USA)
RAPPR.TE DE XXXXXX XXXXXXXX
INDIRIZZO BARZANO' E ZANARDO ROMA SPA
XXX XXXXXXXX 00
00000 XXXX
XXXXXXX L' ESEMPLARE DEL XXXXXXX PRODOTTI E SERVIZI
DA CONTRADDISTINGUERE SONO QUELLI INDICATI
NELLA UNITA DICHIARAZIONE DI PROTEZIONE
[GRAPHIC OMITTED]
Roma, 30 DICEMBRE 1993 IL DIRIGENTE
Xxx.xx XXXXX XXXXXX
Consegnato dal Direttore Xxxxx di Xxxx
x xxxxxxx funzione il FIRMA
14 SET. 1994 /s/ [ILLEGIBLE]
La registrazione dura dieci anni a partire dalla data di deposito
della domanda
RM 91 COO2930
[GRAPHIC OMITTED]
DICHIARAZIONE DI PROTEZIONE
di cui all'art.4 del Regolamento approvato con Decreto 8 Xxxxxx 1948, n. 795,
concernente la registrazione di un Xxxxxxx d'Impresa di servizio di primo
deposito a nome xxxxx Xxxxxxx:
ST. XXXXX ASSOCIATES (Societa costituita secondo le leggi dello Stato di New
York) 0000 Xxxxx Xxxxxx, Xxx Xxxx, Xxx Xxxx 00000, S.U.A. di nazionalita: S.U.A.
Il xxxxxxx consiste nella dicitura:
XXXXX & WOLLENSKY
(come xx xxxxxxxxx in calce)
Il xxxxxxx potra essere usato dalla Richiedente sui prodotti, involucri,
etichette, stampati, nella pubblicita (compresa la trasmissione radiotelefonica
e radiotelevisiva, la proiezione cinematografica ed ogni altro mezzo di
propaganda), ecc..., in qualsiasi dimensioni, caratteri e colori, essendo
riprodotto sia mediante stampa, impressione o rilievo, sia in ogni altro modo
canveniente.
Il xxxxxxx serve a contraddistinguere i seguenti servizi che la
Richiedente intende esercitare nel territorio dello Stato ed in ogni altro
territorio in cui spieghi efficacia xx xxxxx Italiana, o introdurre nel
territorio stesso per scopi commerciali: "Servizi di ristorante; Servizi di
ristorazione" (classe 42)
XXXXX & WOLLENSKY
Roma, 12 Agosto 1991
p.p. ST. XXXXX ASSOCIATES
Ing. Barzano & Zanardo Roma S.p.A.
/s/ Xxxxxxxx xx Xxxxxx
[ILLEGIBLE] MANDATARIO NdS/OG.-
[ILLEGIBLE]
Xxxxxxxx xx Xxxxxx
(Il d'iscr. 377)
[GRAPHIC OMITTED]
A TRADE MARKS [GRAPHIC OMITTED] Registration
REGISTRY Certificate
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Xxxxx Xxxxx Xxx 0000 of Great Britain and Northern Ireland
XXXXX & WOLLENSKY
The Xxxx shown above has been registered in Part B of the Register under No.
1466535 as of the date 07.06.1991 in respect of:
Class 42:
Restaurant and bar services; all included in Class 42.
In the name of:
St. Xxxxx Associates
(United States of America, New York)
Registration of this xxxx shall give no right to the exclusive use of the word
"Xxxxx".
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Sealed this day at my direction
/s/ Xxxx [ILLEGIBLE]
P.R.S HARTNACK, REGISTRAR
Filed July 24, 1996
Serial No. : Not yet assigned
SERVICE XXXX
1495-4024
APPLICANT - St. Xxxxx Associates, d.b.a. Xxxxx &
Wollensky, a New York Partnership
composed of the following general
partners: Xxxxx & Wollensky Operating
Corp., a New York Corporation and
Chamblair Realty, Inc., a New York
Corporation
ADDRESS - c/o The New York Restaurant Group,
L.L.C.
0000 Xxxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
DATE OF FIRST USE - At least as early as June, 1986
IN COMMERCE - At least as early as June, 1986
SERVICES - Class 42: Restaurant services
THE QUINTESSENTIAL NEW YORK CITY STEAKHOUSE
ATTORNEYS - XXXXXX & XXXXXXXX, L.L.P.
ADDRESS - 000 Xxxx Xxxxxx, Xxx Xxxx, Xxx Xxxx 00000
Ref.: 1495-4024
