Exhibit 10.14
EXCLUSIVE DOMESTIC LICENSE AGREEMENT BHPC.12
THIS AGREEMENT is made and entered into this 1st day of June, 1993 by and
between BHPC Marketing, Inc., a corporation duly organized and existing under
the laws of California, having its principal place of business at 000 Xxxx
000xx Xxxxxx, Xxxxxxx, Xxxxxxxxxx 00000 (hereinafter referred to as
"LICENSOR"), and Xxxxxxx-Xxxxx XX Industries, Inc., a California corporation,
having its principal place of business at 0000 Xxxxxxx Xxxxxx, Xxx Xxxx,
Xxxxxxxxxx, 00000 (hereinafter referred to as "LICENSEE").
WHEREAS, LICENSOR is the owner with the right to grant licenses of the
Trademarks illustrated in Exhibit "A" attached hereto (the "Trademarks"); and
WHEREAS, LICENSEE is desirous of obtaining the exclusive right to use the
aforesaid Trademarks in connection with the import or manufacture and sale of
certain licensed products defined herein.
NOW, THEREFORE, it is agreed by the parties as follows:
1. DEFINITIONS
The following terms shall have meanings as set forth below:
a. "Trademarks" shall mean the Trademarks set forth in Exhibit "A",
b. "Territory" shall mean that geographical area defined in item 1 of
the attached License Agreement Detail Schedule.
c. "Licensed Product" shall be defined as set forth in item 2 of the
attached License Agreement Detail Schedule.
d. *
2. RIGHTS GRANTED
LICENSOR here grants to LICENSEE, upon the terms and conditions set forth
herein, an exclusive, personal, non-transferable, non-assignable license,
without the right to grant sublicenses, to use the Trademarks solely on
or in conjunction with the design, manufacture, import, distribution,
advertising, promotion, shipment, and sale of the Licensed Product in the
Territory. This license is extended to and includes
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
wholesale sales only and does not include retail sales.
3. *
4. GOOD WILL AND PROMOTIONAL VALUE
a. LICENSEE recognizes the value of the good will associated with the
Trademarks and acknowledges that the Trademarks, and all rights
therein and the good will pertaining thereto, belong exclusively to
LICENSOR. LICENSEE further recognizes and acknowledges that the
Trademarks have acquired secondary meaning in the mind of the public.
b. LICENSEE agrees that its use of the Trademarks shall inure to the
benefit of LICENSOR and that LICENSEE shall not, at any time, acquire
any rights in the Trademarks by virtue of any use it may make of the
Trademarks.
c. LICENSEE acknowledges that LICENSOR is entering into this Agreement
not only in consideration of the royalties paid hereunder but also
for the good will and promotional value to be secured by LICENSOR for
the Trademarks as a result of the manufacture, offering for sale,
sale, advertising, promotion, shipment and distribution of the Licensed
Product by LICENSEE.
5. *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
2
*
d. LICENSEE agrees that the Licensed Product and all Promotional and
Packaging Material shall contain only those legends, markings and/or
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
3
notices as required from time to time by LICENSOR to give appropriate notice
to the consuming public of LICENSOR's right, title and interest thereto.
*
6. ADVERTISING/USE OF THE TRADEMARK
a. LICENSEE will adopt and carry out its own marketing and advertising
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
4
program with respect to the Licensed Product. LICENSEE agrees that
LICENSEE'S advertising, public relations and sales promotion activities
will be subject to prior consultation with, and written approval by,
LICENSOR as to the general form and content only with respect to the
use of the Trademarks and other notices.
b. *
c. LICENSEE agrees that upon request of LICENSOR, it shall loan a
reasonable number of products to LICENSOR and its other licensees for
advertising and promotional purposes.
d. *
e. Advertising directed to the public may not feature the name of
LICENSEE. If approved, advertising directed to the trade may feature
the following: BHPC Marketing, Inc. under Trademark License to (Name of
LICENSEE). Advertising expenditures by LICENSEE are not credited
toward the Advertising Fund provision of Subparagraph 8a (ii).
f. LICENSEE agrees that the Trademark will appear on each Licensed Product
and its packaging, if any. LICENSEE shall use only those tags, labels
and packaging materials which have been previously approved in writing.
All tags, labels and packaging materials bearing the Trademark must be
submitted on the "Advertising Approval Form" (Exhibit "B-3").
g. LICENSEE shall affix such legends, markings and notices on all License
Product as are required by LICENSOR and the law.
h. LICENSEE must submit for approval to LICENSOR a printer's proof of each
item before final printing.
7. DURATION OF THE AGREEMENT
a. This Agreement shall continue for three (3) consecutive Contract Years
in respective durations as set forth in item 3 of the attached License
Agreement Detail Schedule (hereinafter collectively the "Initial Term")
and shall then expire unless sooner terminated in accordance with the
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
5
terms and conditions set forth herein.
b. If LICENSEE fully performs according to all of the terms and conditions
hereof including, without limitation, the terms and conditions
specifically enumerated below, LICENSEE shall have three (3)
consecutive options to renew this Agreement for three (3) consecutive
contract periods, i.e. Contract Years, of one (1) year each
(hereinafter collectively the "Renewal Term"). In order to exercise
each individual option, LICENSEE must provide LICENSOR with written
notice of its intention to exercise each respective option and such
written notice must be received by LICENSOR no later than * prior to
the expiration of the Initial Term or immediately preceding Contract
Year of the Renewal Term. * Except as specifically set
forth herein to the contrary, LICENSEE's performance in the Renewal
Term shall be pursuant to the same terms and conditions recited herein
for the Initial Term.
8. ROYALTIES
a. "Royalty", as used in this Agreement, shall consist of the sum of the
following:
(i) LICENSEE agrees to pay LICENSOR, during the term of this
Agreement, a Royalty *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
6
b. *
c. *
d. *
e. LICENSEE shall keep complete, detailed and accurate records of all
Promotional and Off-priced Merchandise sales, which records shall be
available to LICENSOR for inspection during regular business hours.
f. *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
7
*
9. PAYMENT
a. *
b. LICENSEE's statements and all amounts payable to LICENSOR by LICENSEE
shall be submitted to:
BHPC Marketing, Inc.
000 Xxxx 000xx Xxxxxx
Xxxxxxx, Xxxxxxxxxx 00000
Attn: Royalty Receivables Department
c. *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
8
*
d. All payments made hereunder shall be in the United States currency or
checks drawn on a United States bank.
e. *
10. GUARANTEES
a. Guaranteed Annual Royalty Payments - LICENSEE shall pay, for each
Contract Year during the term of this Agreement, beginning with the
First Contract Year, the respective Guaranteed Annual Royalty Payments
set forth in item 7 of the attached License Agreement Detail Schedule.
b. Guaranteed Target Net Shipments - If, in any Contract Year, LICENSEE
does not achieve the Guaranteed Target Net Shipment Volume figure set
forth in item 7 of the attached License Agreement Detail Schedule
LICENSOR may, at its option, immediately thereafter terminate this
Agreement in writing.
c. Guaranteed Net Shipments - If, in any Contract Year, LICENSEE does not
achieve the Guaranteed Net Shipments figure set forth in item 7 of the
attached License Agreement Detail Schedule LICENSOR may, at its option,
immediately thereafter terminate this Agreement in writing.
d. *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
-9-
*
e. *
11. EXPLOITATION BY LICENSEE
a. LICENSEE agrees to commence, and diligently continue thereafter, the
distribution, shipment and sale of each category of the Licensed
Product in commercially reasonable quantities in the Territory on or
before the respective distribution date set forth next to each category
of the Licensed Product described in item 2 of the attached License
Agreement Detail Schedule.
b. LICENSEE agrees that the Licensed Product will be sold, shipped and
distributed outright, at a competitive price that does not exceed the
price generally and customarily charged the trade by LICENSEE, and not
on an approval, tie-in, consignment, or "sale or return" basis.
LICENSEE further agrees that the Licensed Product will only be sold to
retailers, jobbers, wholesalers and distributors for sale, shipment and
distribution to retail stores and merchants commonly considered and
referred to in the industry as fine department stores and better
specialty stores and/or to fine department stores and better specialty
stores for sale, shipment and distribution direct to the public.
Notwithstanding the foregoing to the contrary, LICENSOR agrees that the
Licensed Product may also be sold to those retail stores commonly
considered and referred to in the industry as "Warehouse Clubs" * so
long as the total Net Shipment volume of Licensed Product sold to such
"Warehouse Clubs" does not exceed twenty five percent (25%) of
LICENSEE's annual Net Shipment volume. *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
-10-
* The manner and scope of the distribution of the Licensed Product,
availability, variety, fabrication, colors and sizes are critical to
the promotion, enhancement and protection of the Trademarks and their
associated goodwill. *
c. *
12. *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
11
*
13. INSURANCE
LICENSEE shall, throughout the term of this Agreement, obtain and
maintain at its own cost and expense from a qualified insurance company
acceptable to LICENSOR, a policy or policies of insurance, insuring
against those risks customarily insured against under broad form
comprehensive general liability policies arising out of any defects or
failure to perform, alleged or otherwise, of the Licensed Product or any
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
12
use thereof, including "product liability", "completed operations",
"advertisers' liability insurance", etc and any liability of LICENSEE
arising out of Paragraph 20, below. *
The policies shall provide for ten (10) days notice to LICENSOR from the
insurer by Registered or Certified Mail, return receipt requested, in the
event of any modification, cancellation or termination. LICENSEE agrees
to furnish LICENSOR a certificate of insurance or copy of the policies
evidencing same within thirty (30) days after execution of this Agreement
and from time to time as requested by LICENSOR within ten (10) days of
LICENSOR's request; in no event, shall LICENSEE manufacture, offer for
sale, sell, advertise, promote, ship and/or distribute the Licensed
Product prior to receipt by LICENSOR of such evidence of insurance. If
LICENSEE fails to procure, maintain and/or pay for at the times and for
the durations specified in this Agreement, the insurance required
hereunder, or fails to carry insurance required by any governmental
requirement, LICENSOR may (but without obligation to do so), and without
notice to LICENSEE, perform such obligations on behalf of LICENSEE, and
the cost thereof, together with interest thereon at the maximum rate
allowed by law, shall immediately become due and payable to LICENSOR.
14. USE, DISPLAY, AND SALE INVOLVING THE TRADEMARKS AND COPYRIGHT
A. In order to protect the Trademarks and LICENSOR's reputation, LICENSEE
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
13
will manufacture, distribute and sell the Licensed Product in compliance
with all applicable laws. *
b. *
c. LICENSEE shall exercise all reasonable efforts, within the limits
allowed by the laws and governmental regulations in effect in the
Territory, to ensure that its merchandising and sale of the Licensed
Product shall conform to policies and methods suitable for goods of high
quality sold under a prestigious label of worldwide repute.
15. OWNERSHIP OF THE TRADEMARKS
a. LICENSEE agrees that nothing in this Agreement shall give LICENSEE any
right, title or interest in the Trademarks other than the license to use
the Trademarks on the Licensed Product; that such marks are the sole
property of LICENSOR; that all such uses by LICENSEE of such marks shall
inure only to the benefit of LICENSOR; and it being understood that all
right, title and interest relating thereto are expressly reserved by the
LICENSOR except for the rights being licensed hereunder.
b. LICENSEE recognizes that LICENSOR may already have entered into, and may
in the future enter into, license agreements with respect to the
Trademarks for products which fall into the same general product category
as the Licensed Product, but which are not sold to the same retail store
departments as the Licensed Product, and which may be
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
14
similar to, but not the same as, the Licensed Product in terms of
function, or otherwise. LICENSEE hereby expressly concedes that the
existence of said licenses does not and shall not constitute a breach of
this Agreement by the LICENSOR.
c. *
d. *
16. COMPLIANCE WITH LIMITATIONS ON USE OF TRADEMARKS
LICENSEE agrees that the Licensed Product, and all labels, hang tags,
packaging and other trade dress, used in connection with such Licensed
Products, shall not violate any restrictions on use or display of the
marks as provided in *
17. *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
15
*
18. ASSIGNABILITY AND MANUFACTURING
a. The license granted hereunder is, and shall remain, personal to LICENSEE
and shall not be granted, assigned, or otherwise conveyed by any act of
LICENSEE or by operation of law. For the purposes of this Paragraph 18,
any sale or transfer of any ownership interest in LICENSEE shall
constitute a prohibited assignment of the license granted hereunder.
LICENSEE shall have no right to grant any sublicenses without LICENSOR's
prior express written approval. Any attempt on the part of LICENSEE to
arrange to sublicense or assign to third parties its rights under this
Agreement, shall constitute a material breach of this Agreement.
b. LICENSOR shall have the right to assign its rights and obligations under
this Agreement without the approval of LICENSEE.
19. NO AGENCY, JOINT VENTURE, PARTNERSHIP
The parties hereby agree that no agency, joint venture, or partnership is
created by this Agreement, and that neither party shall incur any
obligation in the name of the other without the other's prior written
consent.
20. *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
16
*
21. TERMINATION
a. In addition to the termination rights provided elsewhere in this
Agreement, LICENSOR will have the right to terminate this Agreement in the
event that:
*
b. *
22. EFFECT OF EXPIRATION OR TERMINATION
a. Upon expiration or termination of this Agreement, all rights and
licenses granted to LICENSEE hereunder shall immediately expire, shall
forthwith revert to LICENSOR, and LICENSEE shall immediately cease and desist
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
from using the Trademarks and any technical information supplied by LICENSOR
to LICENSEE hereunder. To this end, LICENSEE will be deemed to have
automatically assigned to LICENSOR, upon such expiration or termination, the
Trademarks, equities, good will, titles, and other rights in or to the
Licensed Product and all adaptations, compilations, modifications,
translations and versions thereof, and all other trademarks used in
connection therewith which have been or may be obtained by LICENSEE or which
may vest in LICENSEE and which have not already been assigned to LICENSOR.
LICENSOR may thereafter, in its sole discretion enter into such arrangements
as it deems desirable, with any other party, for the manufacture, promotion
and sale of the Licensed Product in the Territory. Any Licensed Product,
finished or in progress, shall be disposed of as follows: *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
*
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
19
*
23. MODIFICATION; WAIVER
No modification of any of the terms or provisions of this Agreement shall be
valid unless contained in a writing signed by the parties. No waiver by
either party of a breach or a default hereunder shall be deemed a waiver by
such party of a subsequent breach or default of a like or similar nature.
Resort by LICENSOR to any remedies referred to in this Agreement or arising
by reason of a breach of this Agreement by LICENSEE shall not be construed as
a waiver by LICENSOR of its right to resort to any and all other legal and
equitable remedies available to LICENSOR.
24. FORCE MAJEURE
Neither LICENSOR nor LICENSEE shall be liable to each other or be deemed in
breach or default of any obligations contained in this Agreement, for any
delay or failure to perform due to causes beyond its reasonable control,
including but not limited to delay due to the elements, acts of the United
States Government, acts of a foreign government, acts of God, fires,
floods, epidemics, embargoes, riots,
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
20
strikes, any of the foregoing events being referred to as a "Force
Majeure" condition. In such event, dates for performance shall be
extended for the period of delay resulting from the Force Majeure
condition. The party affected by a Force Majeure condition shall, as
soon as practicable, notify the other party of the nature and extent of
such condition.
25. NOTICE
All notices, approvals, consents, requests, demands, or other
communications to be given to either party in writing may be effected by
personal delivery or by depositing the same in the United States mail,
certified and return receipt requested, postage prepaid. Such
communication shall be addressed to LICENSEE and LICENSOR at their
respective addresses as set forth in the preamble above.
26. CONSTRUCTION; VENUE
This Agreement shall be construed in accordance with the laws of the
State of California, U.S.A., and the parties agree that it is executed
and delivered in that state, and any claims arising hereunder shall, at
LICENSOR's election, be prosecuted in the appropriate Court of the State
of California in Los Angeles County or any Federal District Court
therein.
27. ENTIRE AGREEMENT
This Agreement, contains the entire understanding of the parties and
there are no representations, warranties, promises, or undertakings
other than those contained herein. This Agreement supersedes and cancels
all previous agreements between the parties hereto.
28. *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
21
*
29. *
30. *
31. BINDING EFFECT
This Agreement shall be binding on the parties, and their successors and
assigns.
32. SURVIVAL OF THE RIGHTS
Notwithstanding anything to the contrary contained herein, such
obligations which remain executory after expiration of the term or
termination of this Agreement shall remain in full force and effect
until discharged by performance and such rights as pertain thereto shall
remain in force until their expiration.
33. SEVERABILITY
In the event that any term or provision of this Agreement shall for any
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
22
reason be held to be invalid, illegal or unenforceable in any respect,
such invalidity or unenforceability shall not affect any other term or
provision and this Agreement shall be interpreted and construed as if
such term or provision, to the extent the same shall have been held to
be invalid, illegal or unenforceable, had never been contained herein.
34. CAPTIONS
The captions used in connection with the paragraphs and subparagraphs of
this Agreement are inserted only for purpose of reference. Such
captions shall not be deemed to govern, limit, modify or in any other
manner affect the scope, meaning or intent of the provisions of this
Agreement or any part thereof nor shall such captions otherwise be given
any legal effect.
35. INCORPORATION OF EXHIBITS
LICENSOR and LICENSEE acknowledge and agree that the provisions of
Exhibits "A" through "C" attached hereto (the "Exhibits") are integral
to this Agreement and that the provisions of the Exhibits are all hereby
incorporated herein and made a part hereof as if set out in full in this
Agreement.
IN WITNESS WHEREOF, the parties hereto agree that this Agreement shall
take effect as of the date and year first above written above.
LICENSOR: LICENSEE:
BHPC MARKETING, INC., XXXXX XX INDUSTRIES, INC.
a California Corporation a California Corporation
BY: /s/ Xxx Xxxxxxxx BY: /s/ Xxxxxx X. Xxxxx
-------------------------- --------------------------
Xxx Xxxxxxxx Xxxxxx X. Xxxxx
Licensing Director President
Date: 3/18/93 Date: 3/13/93
------------------------ ------------------------
23
LICENSE AGREEMENT DETAIL SCHEDULE
1. Definition of Territory: The United States, its territories and
possessions
2. Definition of Licensed Product (by category): DISTRIBUTION DATE:
Missy, large size and petite coordinated August 1, 1993
sportswear
3. Initial Term: FROM TO
First Contract Year: June 1, 1993 November 30, 1994
Second Contract Year: December 1, 1994 November 30, 1995
Third Contract Year: December 1, 1994 November 30, 1996
4. Renewal Term:
Fourth Contract Year (if any): December 1, 1996 November 30, 1997
Fifth Contract Year (if any): December 1, 1997 November 30, 1998
Sixth Contract Year (if any): December 1, 1998 November 30, 1999
5. *
6. Royalty Rate:
6%
Plus 2% of Net Sales for Advertising Royalty
7. Guarantees:
(A) (B) (C) (D)
Guaranteed Guaranteed Guaranteed
Target Guaranteed Annual Monthly
Net Net Royalty Royalty
Shipments Shipments Payments Payments
--------------------------------------------
First Contract Year * * * *
Second Contract Year * * * *
Third Contract Year * * * *
INITIALS
LICENSOR: ----------
LICENSEE: ----------
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
SECTION (I)
NET SHIPMENT STATEMENT
----------------------
The written statement of Net Shipments of Licensed Product (a copy of which
is attached hereto as Exhibit "F") referred to in Paragraph 9a must be
certified as accurate by LICENSEE and will include, but will not be limited
to, information as to: *
SECTION (II)
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
EXHIBIT "C"
Page 1 of 3
SECTION (III)
INSURANCE REQUIREMENTS
----------------------
*
The policies shall provide for ten (10) days notice to LICENSOR from the
insurer by Registered or Certified Mail, return receipt requested, in the
event of any modification, cancellation or termination. LICENSEE agrees to
furnish LICENSOR a certificate of insurance or copy of the policies
evidencing same within thirty (30) days after execution of this Agreement and
from time to time as requested by LICENSOR within ten (10) days of LICENSOR'S
request; in no event, shall LICENSEE manufacture, offer for sale, sell,
advertise, promote, ship and/or distribute the Licensed Product prior to
receipt by LICENSOR of such evidence of insurance.
SECTION (IV)
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
EXHIBIT "C"
Page 2 of 3
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
EXHIBIT "C"
Page 3 of 3
Int. Ch: 25
Prior U.S. Ch: 39
Reg. No. 1,429,311
United States Patent and Trademark Office Registered Feb. 17, 1997
--------------------------------------------------------------------------------
TRADEMARK
PRINCIPAL REGISTER
[LOGO]
EXHIBIT A
PAGE ______ OF ____
DATE ______________
FORM MUST BE SUBMITTED COMPLETE SUBMIT TO THE ATTENTION OF:
BHPC MARKETING, INC.
000 X. 000xx Xxxxxx
Xxxxxxx, XX 00000
SAMPLE APPROVAL FORM
(FOR STYLE ONLY! SEE SWATCH APPROVAL FORM FOR FABRIC)
NAME OF LICENSEE ______________________________________________________________
LICENSED PRODUCT ______________________________________________________________
LICENSEE'S ADDRESS ____________________________________________________________
PLEASE PICTURE BELOW
SEASON ____________________
STYLE # ___________________
FABRICATION _______________
WHOLESALE PRICE ___________
COLORS ____________________
___________________________
SIZES _____________________
START TAKING ORDERS _________________________
END TAKING ORDERS ___________________________
START SHIP __________________________________
END SHIP ____________________________________
_____________________________ ___________________________
SIGNATURE OF LICENSEE SIGNATURE OF LICENSOR
APPROVED ______________ DISAPPROVED __________
COMMENTS ______________________________________________________________________
_______________________________________________________________________________
DATE RETURNED TO LICENSEE ___________________________
BHPC MARKETING, INC., 000 Xxxx 000xx Xxxxxx, Xxxxxxx, XX 00000
EXHIBIT "B-1"
PAGE ______ OF ____
DATE ______________
FORM MUST BE SUBMITTED COMPLETE SUBMIT TO THE ATTENTION OF:
BHPC MARKETING, INC.
000 X. 000xx Xxxxxx
Xxxxxxx, XX 00000
SWATCH AND/OR COLOR APPROVAL FORM
(FABRIC AND COLOR ONLY! SEE SAMPLE APPROVAL FORM FOR STYLE)
NAME OF LICENSEE ______________________________________________________________
LICENSED PRODUCT ______________________________________________________________
LICENSEE'S ADDRESS ____________________________________________________________
SEASON ________________________________________________________________________
LIST STYLE NUMBERS OF GARMENTS TO BE MANUFACTURED IN THIS FABRIC ______________
_______________________________________________________________________________
FABRIC # AND NAME OF SUPPLIER _________________________________________________
_______________________________________________________________________________
FABRIC CONTENT AND WEIGHT _____________________________________________________
PLEASE ATTACH 1 SET OF SWATCHES BELOW
APPROVED ______________ DISAPPROVED __________
COMMENTS ______________________________________________________________________
_______________________________________________________________________________
_____________________________ ___________________________
SIGNATURE OF LICENSEE SIGNATURE OF LICENSOR
DATE RETURNED TO LICENSEE ___________________________
BHPC MARKETING, INC., 000 Xxxx 000xx Xxxxxx, Xxxxxxx, XX 00000
EXHIBIT "B-2"
PAGE ______ OF ____
DATE ______________
FORM MUST BE SUBMITTED COMPLETE SUBMIT TO THE ATTENTION OF:
BHPC MARKETING, INC.
000 X. 000xx Xxxxxx
Xxxxxxx, XX 00000
ADVERTISING APPROVAL FORM
NAME OF LICENSEE ______________________________________________________________
LICENSED PRODUCT ______________________________________________________________
LICENSEE'S ADDRESS ____________________________________________________________
CIRCLE THE FORM OF ADVERTISING WHICH IS BEING SUBMITTED: LABEL, HANGTAG,
BUSINESS CARDS, BUSINESS FORMS, RADIO SPOT, TV, FULL PAGE AD, 1/2 PAGE AD,
PACKAGING, DISPLAY, OTHER.
PLACE ADVERTISING TO BE SUBMITTED HERE OF AFFIX
TO THIS PAGE
1) USE PERIOD From _________________________________ To _____________________
2) IF SUBMISSION IS LABELS OR HANGTAG, PLEASE GIVE NAME & ADDRESS OF
SUPPLIER ___________________________________________________________________
3) IF AD IS TO RUN IN A PUBLICATION: NAME OF PUBLICATION ______________________
APPROVED ______________ DISAPPROVED __________
COMMENTS ______________________________________________________________________
_______________________________________________________________________________
_______________________________________________________________________________
_____________________________ ___________________________
SIGNATURE OF LICENSEE SIGNATURE OF LICENSOR
DATE RETURNED TO LICENSEE ___________________________
BHPC MARKETING, INC., 000 Xxxx 000xx Xxxxxx, Xxxxxxx, XX 00000
EXHIBIT "B-3"
[LOGO] STATEMENT OF ROYALTIES (DOM
FOR ____________________________TO _______________
(Month)
LICENSEE NAME
---------------------------
LICENSEE ADDRESS
------------------------
-----------------------------------------
LICENSEE PRODUCT(S)
---------------------
ITEM/ NUMBER OF NUMBER OF UNIT WHOLESALE GROSS LESS
STYLE NO UNITS SOLD UNITS RETURNED PRICE SALES ALLOWANCES*
-------- ---------- -------------- -------------- ----- -----------
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TOTALS
---------- ----------- ---------- ----- ----------
SEND STATEMENT TO: BHPC MARKETING, INC.
000 Xxxx 000xx Xxxxxx I CERTIFY THAT XXX
Xxxxxxx, XX 00000
-------------------
* PLEASE SEE THE LICENSE AGREEMENT -------------------
FOR THE AMOUNT OF PERMISSIBLE DEDUCTIONS.
SETTLELMENT AGREEMENT
This Settlement Agreement is made, in multiple originals, by and among
* will hereinafter be collectively referred to as the "Xxxxxxx Hills Polo
Club Parties."
WITNESSETH:
WHEREAS, there are presently pending before the United States District
Court for the Central District of California two civil actions entitled
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
EXHIBIT "C"
*
WHEREAS, the parties hereto have vigorously contested the BHPC Action and
the * Action (collectively the "Civil Actions"), and have expended
considerable time and effort, and have incurred considerable expense, in
doing so; and
WHEREAS, in order to avoid the additional expense which would be
necessary for the continued prosecution of the Civil Actions, the parties are
willing to resolve the controversy among them and to settle the Civil Actions
under the terms and conditions set forth herein;
NOW, THEREFORE, in mutual consideration of the convenants and premises
contained herein, the parties agree as follows:
1. Except as provided in paragraph 3 hereunder, as of February 15, 1985,
the Xxxxxxx Hills Polo Club Parties, their affiliates, officers, agents and
employees and any person or entity under their direction or control, or in
active concert or participation with them, shall cease and desist from
anywhere in the world:
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
- 2 -
*
*
(c) Using as a design or decoration on or in connection with the Subject
Products and Services, including but not limited to related packaging,
labels, tags and other trade dress, or as a trademark or service xxxx, the
design of *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
- 3 -
which is shown in Exhibit A (the "*"), or any design which is a colorable
imitation or simulation thereof;
(d) Using as a design or decoration on or in connection with the Subject
Products and Services, including but not limited to related packaging,
labels, tags and other trade dress, or as a trademark, service xxxx or trade
name the design of a * which is shown in Exhibit B (the "BHPC Symbol"), or
any design which is a colorable imitation or simulation thereof or is
substantially similar thereto, in an overall size smaller than five and a
half inches by five and a half inches (5-1/2" x 5-1/2") (measured from mallet
head to hoof and from nose to tail), except as may be permitted by paragraph
2 hereof;
(e) Using either of the typefaces shown in Exhibit C (identified
hereinafter as the "Subject Typefaces") for the name "Xxxxxxx Hills Polo
Club";
(f) Placing or causing to be placed any advertisements or using any
materials of any type making reference, either directly or indirectly to
* or to * or their licensees and affiliates; and
(g) Using dark blue as the background color of any packaging, label, tag
or trade dress containing the words "Xxxxxxx Hills Polo Club", and/or the
BHPC Symbol.
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
- 4 -
2. Notwithstanding the size limitations imposed by paragraph 1(d)
hereof, the Xxxxxxx Hills Polo Club Parties may use the BHPC Symbol in an
overall size smaller than the five and a half inches by five and a half
inches (5 1/2" x 5 1/2") set forth in paragraph 1(d) hereof but only if
(a) the same is used in combination with and in close proximity to the
words "Xxxxxxx Hills Polo Club" in the configuration shown in Exhibit D
annexed hereto (the "Composite BHPC Logo") or the label shown in Exhibit E
annexed hereto (the "BHPC Label"); or
(b) the BHPC Symbol is used in a repetitive pattern covering
substantially all of the front or back of any of the Subject Products,
provided that the initials "BHPC" shall appear in close proximity to the
BHPC Symbol, and that somewhere on each of the Subject Products the words
"Xxxxxxx Hills Polo Club" shall be prominently displayed.
3. The Xxxxxxx Hills Polo Club Parties may sell or otherwise dispose of
any and all articles of clothing and accessories which are represented by
them to be in their possession or under their control as of February 15,
1985, as set forth in Exhibit F, to be added hereto not later than March 1,
1985, which would otherwise come within the prohibitions of paragraph 1 of
this Agreement, and may fill orders accepted on or before such date for any
clothing or accessories coming within such prohibitions so long as such
orders are filled within ninety (90) days of such date. Notwithstanding the
foregoing,
-5-
BHPC may have until June 15, 1985 to dispose of garments in the process of
manufacture in the Orient as of February 15, 1985. * or its attorneys or such
attorneys' agents, on reasonable notice, which notice shall not be required
to exceed ten (10) days, may review purchase orders, bills of lading, or
inventory records at the place of business of any Xxxxxxx Hills Polo Club
Parties sufficient to verify compliance with this paragraph. Such information
is to be used solely to verify and enforce compliance, and shall be held in
confidence by * attorneys or their agents.
4. Simultaneously with its execution of this settlement agreement,
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
-6-
5. Neither * nor any person or entity under its direction or control,
may oppose the registration by the Xxxxxxx Hills Polo Club Parties of any
trademark which the Xxxxxxx Hills Polo Club Parties are entitled to register
under this Agreement, nor shall they petition to cancel, either directly or
through court action the registration of any such trademark unless said xxxx
or registration is the basis for legal action by BHPC, Lang or any affiliated
entity against * or its licensees. If * learns that any of its licensees
objects to the registration by any of the Xxxxxxx Hills Polo Club Parties of
the words "Xxxxxxx Hills Polo Club," and/or the Composite BHPC Logo and/or
the BHPC Label, then * will inform such objecting licensee in writing of
the terms of this Agreement, and provide written confirmation thereof to BHPC.
6. The parties agree to entry in the Civil Actions of Final Judgment
Upon Consent in the form annexed hereto as Exhibit H, or in such other form
as the Court may require consistent with the terms and conditions of this
Settlement Agreement.
7. *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
-7-
*
8. The parties will not initiate any publicity concerning the terms and
conditions of this Agreement and such terms and conditions shall be held in
confidence except as otherwise provided herein. The Xxxxxxx Hills Polo Club
Parties may provide a copy of this Settlement Agreement or portions or
summaries thereof to any person or entity licensed or otherwise permitted to
use the name "Xxxxxxx Hills Polo Club," the BHPC Symbol or the Composite BHPC
Logo, to potential licensees, to sales representatives or, upon inquiry being
made, to customers. Either party may refer to the terms and conditions of
this Agreement in conjunction with its registration, or judicial or
administrative protection or enforcement of its trademarks, trade names and
service marks.
9. This Settlement Agreement represents no concession by any party as
to the validity or merit of any of the claims raised in the Civil Actions by
any other party, except as may be set forth in the Final Judgment of Exhibit
H.
10. * and its officers, agents, employees and sales representatives
shall not make, directly or indirectly, any claim that the purchase of
products complying with the terms of this Agreement from BHPC or Lang or
their distributors or sublicensees constitutes trademark infringement, unfair
competition or trademark dilution, nor threaten sanctions with respect
thereto. This undertaking does not in any way admit or imply
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
-8-
that *, or anyone acting on its behalf, has in the past made any such
claims or threatened any such sanctions.
11. *
12. *
13. This Settlement Agreement represents the entire understanding between
the parties with respect to the subject matter hereof; shall not be varied or
amended except by a
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
-9-
writing signed by all parties; shall be binding upon the parties, their
successors and assigns; and shall, as respects contractual construction, be
governed by and construed in accordance with the laws of *. Neither party
hereby waives any claim as to the propriety of venue or as to the existence
of personal jurisdiction, in any lawsuit or other proceeding that may arise
concerning the subject matter of this Settlement Agreement.
14. * warrants and represents that it has full right and power to enter
into this Settlement Agreement.
15. Lang warrants and represents that it has full right and power to enter
into this Settlement Agreement.
16. BHPC warrants and represents that it has full right and power to enter
into this Settlement Agreement.
17. Xxxxxxx warrants and represents as follows:
(a) He is the president and sole shareholder of BHPC and Lang; and
(b) He has the full right, power and authority to enter into this
Settlement Agreement.
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
-10-
"polo clubs") or items of wearing apparel which have come to be described by
the word polo (e.g. "polo shirts" or "polo coats"), provided, however, that
any such use will not violate any of the terms and conditions of this
Agreement.
19. The Xxxxxxx Hills Polo Club Parties shall take all steps reasonably
necessary to ensure that any person or entity which is licensed or otherwise
permitted to use the term "Xxxxxxx Hills Polo Club", the BHPC Symbol or the
Composite BHPC Logo, complies fully with the restrictions set forth in
paragraph 1 hereof.
20. * acknowledges that the rights of any person or entity which it
licenses or otherwise permits to use the * Marks are subject to the terms
and conditions of this Agreement and that such rights cannot be used in
contravention of the provisions of paragraphs 5 and 10 hereof. * agrees to
inform any of its licensees whom it learns object to the use by the Xxxxxxx
Hills Polo Club Parties of any of the names or marks which they are permitted
to use hereunder of the foregoing acknowledgements.
21. In the event that a dispute arises between the parties as to the
subject matter of this Agreement, then the parties shall attempt to amicably
resolve the same prior to seeking judicial intervention. If the parties are
unable to resolve such dispute within thirty (30) days after it arises,
11
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
then either party may take such action as it deems appropriate to protect its
rights.
IN WITNESS WHEREOF, the parties have executed this Settlement on the days
indicated adjacent to their respective signatures below.
*
Dated: 2/15/85 By: /s/ *
------------- --------------------------------
*
XXXXXXX HILLS POLO CLUB, INC.
Dated: 2/20/85 By: /s/ Xxxxxxx Xxxxxxx, President
------------- --------------------------------
Xxxxxxx Xxxxxxx, President
XXXXXXX XXXXXXX
Dated: 2/20/85 By: /s/ Xxxxxxx Xxxxxxx
------------- --------------------------------
XXXXXXX XXXX, INC.
Dated: 2/20/85 By: /s/ Xxxxxxx Xxxxxxx, President
------------- --------------------------------
Xxxxxxx Xxxxxxx, President
12
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
[GRAPHIC]
EXHIBIT A
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[GRAPHIC]
EXHIBIT B
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[GRAPHIC]
EXHIBIT C
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[GRAPHIC]
Note: Typeface to be changed per Paragraph 1(e).
EXHIBIT D
---------
[GRAPHIC]
Note: Typeface to be changed per Paragraph 1(e).
EXHIBIT E
---------
