EXHIBIT 10.4
LICENSE AGREEMENT
THIS LICENSE AGREEMENT is made effective February 1, 2002, by and
between XXXXXX XXXXXX MARINE, INC., a California corporation ("DWM"), and XXXXXX
X. XXXXXXX, individually ("Xxxxxxx").
RECITALS AND REPRESENTATIONS
WHEREAS, DWM is engaged in the design, manufacture, marketing and
distribution of a line of boating apparel, accessories and decorative items
under the Xxxxxx WalkerTM brand name.
WHEREAS, Xxxxxxx is Chairman of the Board, Chief Executive Officer,
Chief Marketing Officer and a majority shareholder of DWM.
WHEREAS, the Xxxxxx WalkerTM brand name is inspired by a sixty-three
foot, wooden-hulled Nova Scotian trawler named "The Xxxxxx Xxxxxx."
WHEREAS, Xxxxxxx is the sole owner of The Xxxxxx Xxxxxx and has title
to The Xxxxxx Xxxxxx free and clear of all liens, encumbrances and claims of
others.
WHEREAS, since October 10, 2000, there has been an oral agreement
between DWM and Xxxxxxx whereby Xxxxxxx has allowed DMW to use the "Xxxxxx
Xxxxxx" name and the likeness and image of The Xxxxxx Xxxxxx.
WHEREAS, DWM currently has eight (8) trademark applications pending in
the United States Patent and Trademark Office that include the words "Xxxxxx
Xxxxxx Built 1951 Authentic Marine" and a picture of The Xxxxxx Xxxxxx.
WHEREAS, to support and permit the development of the Xxxxxx WalkerTM
brand name, DWM desires to continue using the "Xxxxxx Xxxxxx" trademark and
brand name and the likeness and image of The Xxxxxx Xxxxxx in accordance with
the terms and conditions of this Agreement, and Xxxxxxx wishes to allow DMW to
continue to use the "Xxxxxx Xxxxxx" trademark and brand name and to license the
use of the likeness and image of The Xxxxxx Xxxxxx to DWM in accordance with the
terms and conditions of this Agreement.
AGREEMENT
NOW, THEREFORE, in consideration of the mutual covenants herein
contained, the adequacy and sufficiency of which are acknowledged, the parties
agree as follows:
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(Xxxxxxx) (DWM)
ARTICLE I: CONSENT, GRANT OF LICENSE AND RELEASE
SECTION 1.1 Subject to all of the terms and conditions of this
Agreement, Xxxxxxx hereby consents to the exclusive use by DWM of the "Xxxxxx
Xxxxxx" trademark and brand name, and grants to DWM an exclusive license to use
the likeness and image of The Xxxxxx Xxxxxx in the United States of America, and
the rest of the world (the "Territory"), in connection with the design,
manufacture, marketing and distribution of a line of apparel, accessories and
decorative items, and any other products and/or services of DWM now existing or
hereafter created, by DWM.
SECTION 1.2 Xxxxxxx acknowledges and agrees that (i) he does not, and
shall not, have any right, title, interest or claim to the "Xxxxxx Xxxxxx"
trademark and brand name, nor does he, or shall he, have the right to use, or
license others to use, the "Xxxxxx Xxxxxx" trademark and brand name and (ii)
pursuant this Agreement, he shall no longer have the right to use, or license
others to use, the likeness and image of The Xxxxxx Xxxxxx.
SECTION 1.3 DWM shall have the exclusive right to use the "Xxxxxx
Xxxxxx" trademark and brand name and the likeness and image of The Xxxxxx Xxxxxx
in connection with any and all activities and products, within and without the
Territory.
SECTION 1.4 DWM shall not have the right to transfer the license, or
sublicense any rights, granted hereby to any party that is not a subsidiary or
other related entity of DWM without the prior written consent of Xxxxxxx, which
consent shall not be unreasonably withheld.
SECTION 1.5 Xxxxxxx hereby releases DWM and all distributors,
purchasers and users of DWM products and services from any and all claims,
demands, and rights of action which Xxxxxxx may have on account of any
infringement or alleged infringement of Xxxxxxx'x rights to the "Xxxxxx Xxxxxx"
name and the likeness and image of The Xxxxxx Xxxxxx prior to the effective date
of this Agreement.
ARTICLE II: TERM
SECTION 2.1 Unless sooner terminated in accordance with the provisions
of this Agreement, this Agreement shall remain in full force and effect for an
initial term of ninety-nine (99) years (the "Initial Term"), commencing on the
effective date of this Agreement. DWM shall be entitled to renew this Agreement,
at its option, for additional ninety-nine year terms ("Renewal Terms") by
providing notice to Xxxxxxx at least ninety (90) days prior to the expiration of
the Initial Term and each Renewal Term.
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(Xxxxxxx) (DWM)
ARTICLE III: FEES
SECTION 3.1 The fee due from DWM to Xxxxxxx for the Initial Term of
this Agreement is $100 which shall be due upon execution of this Agreement.
Thereafter, DWM shall pay a $100 fee for each Renewal Term, which shall be due
on the first day of each Renewal Term.
ARTICLE IV: COVENANTS
SECTION 4.1 Xxxxxxx acknowledges the validity and value of the "Xxxxxx
Xxxxxx" trademark and brand name and DWM's rights thereto and the goodwill
represented thereby and agrees that at no time, during or subsequent to the term
of this Agreement, shall he directly or indirectly contest the validity of DWM's
rights to the "Xxxxxx Xxxxxx" trademark and brand name and the goodwill
represented thereby.
SECTION 4.2 Xxxxxxx shall notify DWM in writing upon becoming aware of
any activity by any unlicensed third party which uses the "Xxxxxx Xxxxxx"
trademark or brand name or the likeness and image of The Xxxxxx Xxxxxx.
SECTION 4.3 Xxxxxxx shall cooperate in any such action or proceedings
as, in DWM's sole direction, DWM believes necessary and appropriate under the
circumstances to cause the unauthorized use to be terminated. Any suit or other
proceeding on account thereof shall be prosecuted by DWM in its discretion and,
whenever necessary, in the name of Xxxxxxx, and Xxxxxxx hereby authorizes DWM to
so add it, and to conduct the prosecution of the action in joint name through
DWM's counsel, at DWM's expense and with any recovery to be retained by DWM.
SECTION 4.4 If any suit, action or other proceeding shall be instituted
or threatened against DWM by a third party with respect to the "Xxxxxx Xxxxxx"
trademark or brand name or the likeness and image of The Xxxxxx Xxxxxx, then DWM
shall have full control of the defense. Unless the suit against DWM is the
result of an act of Xxxxxxx in violation of this Agreement, DWM shall be liable
for the entire expense, of such suit, action or proceeding.
SECTION 4.5 Xxxxxxx shall, at the request of DWM, execute any lawful
papers or documents necessary to protect the rights of DWM in the "Xxxxxx
Xxxxxx" trademark and brand name and the likeness and image of The Xxxxxx
Xxxxxx.
Upon termination of this Agreement, DWM shall execute the necessary
documents to cancel the license granted by this Agreement.
ARTICLE V: ASSIGNMENT; NO CHANGE OF NAME; NO ENCUMBRANCES;
RIGHT OF FIRST REFUSAL
This Agreement may not be assigned without the written consent of the
other party, which consent shall not be unreasonably withheld, and any
assignment without such consent shall be void. Provided, however, while this
Agreement remains in effect:
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(Xxxxxxx) (DWM)
a. No vessel may be substituted for The Xxxxxx Xxxxxx under this
Agreement,
x. Xxxxxxx shall not change the name of The Xxxxxx Xxxxxx,
x. Xxxxxxx shall not pledge or otherwise encumber The Xxxxxx
Xxxxxx; and
d. DWM will have a right of first refusal to purchase The Xxxxxx
Xxxxxx at fair market value as determine by a mutually agreed
upon, qualified appraiser.
ARTICLE VI: INSURANCE
SECTION 6.1 Xxxxxxx will procure and maintain, at his sole cost,
adequate property and liability insurance for The Xxxxxx Xxxxxx and the
operation thereof at all times while this agreement is in effect. DWM shall
procure and maintain adequate general liability insurance for any persons or
property injured or damaged in connection with the use of The Xxxxxx Xxxxxx
during DWM corporate events, and adequate "Trip" insurance or other marine
insurance that may be required by the coast guard or any other governmental
agency. Xxxxxxx and DWM shall provide proof of such insurance as requested by
the other party.
ARTICLE VII: INDEMNIFICATION
SECTION 7.1 DWM shall indemnify and hold Xxxxxxx harmless from and
against all claims, demands and liabilities, and all costs and expenses
(including reasonable attorneys fees) incurred as a result of any claim or
action arising out of DWM's activities under this Agreement; except that Xxxxxxx
shall indemnify and hold DWM harmless from and against all claims, demands or
liabilities, and all costs and expenses (including reasonable attorneys fees)
incurred as a result of a breach by Xxxxxxx of the provisions of this Agreement.
ARTICLE VIII: MISCELLANEOUS
SECTION 8.1 Each party, at the request of the other and without
additional consideration, shall execute and deliver or shall cause to be
executed and delivered from time to time such further documents, and shall take
such other actions as the other party may require to accomplish the purposes of,
and transactions contemplated by, this Agreement.
SECTION 8.2 This Agreement and the transactions contemplated herein may
be terminated in the following instances:
a. By mutual consent of the parties;
b. By DWM in the event of a Casualty Loss as provided by Section 8.9
hereof;
c. By DWM if any condition or covenant set forth herein applying to
Xxxxxxx shall not be satisfied and is not waived; or
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d. By DWM upon thirty (30) days written notice given to Xxxxxxx.
In the event of termination as provided in this Section, DWM shall be
responsible for all payments due and payable pursuant to Section 1 up to the
effective date of such termination.
SECTION 8.3 This Agreement constitutes the entire agreement between the
parties pertaining to the subject matter hereof, and supersedes all prior
agreements, understandings, negotiations and discussions, whether oral or
written, of the parties pertaining to the subject matter hereof. There are no
warranties, representations or other agreements between the parties in
connection with the subject matter hereof, except as specifically set forth
herein or in the documents delivered pursuant hereto. No supplement, amendment,
alteration, modification, waiver or termination of this Agreement shall be
binding unless executed in writing by the parties hereto.
SECTION 8.4 No waiver of any of the provisions of this Agreement shall
be deemed or shall constitute a waiver of any other provision hereof, nor shall
any waiver constitute a continuing waiver unless otherwise expressly provided.
SECTION 8.5 The captions in this Agreement are for convenience only,
and shall not be considered a part of, or affect the construction or
interpretation, of any provision of this Agreement.
SECTION 8.6 Nothing in this agreement shall be deemed to create any
right on the part of any person or entity not a party to this Agreement.
SECTION 8.7 This Agreement and other documents delivered pursuant
hereto and the legal relations between the parties shall be governed and
construed in accordance with the law of the State of California. Any dispute or
litigation with respect to the representations, warranties, terms and conditions
of this Agreement, shall be litigated in any court of competent jurisdiction in
the state of California, and Xxxxxxx and DWM hereby expressly consent to subject
matter and personal jurisdiction and venue in said courts.
SECTION 8.8 Any notice, communication, request, instruction or other
document required or permitted hereunder shall be given in writing by certified
mail, return receipt requested or courier mail, as follows:
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(Xxxxxxx) (DWM)
If to Xxxxxxx:
0000 Xxxxxxx Xxxxxx
Xx Xxxxx, XX 00000
If to DWM:
Xxxxxx Xxxxxx Marine, Inc.
0000 X. Xxxxxxx Xx.
Xxxxxxxxx, XX 00000
Attn: President
Either party may, by written notice, delivered to the other, change the
address to which delivery shall thereafter be made.
SECTION 8.9 If all or a substantial portion of The Xxxxxx Xxxxxx shall
be destroyed by casualty, or if all or a substantial portion of The Xxxxxx
Xxxxxx shall be taken in condemnation or eminent domain, or if the proceedings
for such purposes shall be pending or threatened, or if The Xxxxxx Xxxxxx shall
otherwise become unsuitable to fulfill the purposes of this Agreement (a
"Casualty Loss"), DWM may elect to terminate this Agreement effective
immediately upon written notice to Xxxxxxx. If the Agreement is not so
terminated, then the Agreement shall remain in full force and effect.
SECTION 8.10 The parties recognize that irreparable injury will result
from a breach of any provision of this Agreement and that money damages will be
inadequate to fully remedy the injury. Accordingly, in the event of a breach or
threatened breach of one or more of the provisions of this Agreement, any party
who may be injured (in addition to any other remedies which may be available to
that party) shall be entitled to one or more preliminary or permanent orders (i)
restraining and enjoining any act which would constitute a breach or (ii)
compelling the performance of any obligation which, if not performed, would
constitute a breach.
SECTION 8.11 This Agreement is binding upon, and inures to the benefit
of, the parties hereto and their respective heirs, executors, administrators,
personal and legal representatives, successors, and permitted assigns.
SECTION 8.12 If any provision of this Agreement, or the application of
such provision to any person or circumstance, shall be held invalid, the
remainder of this Agreement, or the application of such provision to persons or
circumstances other than those as to which it is held invalid, shall not be
affected thereby. In the event that any such provision is deemed to be invalid,
the parties agree that a court making such judgement shall have the ability to
interpret and apply such provision to the fullest extent permitted by law,
within such provisions original intent.
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(Xxxxxxx) (DWM)
SECTION 8.13 In the event of any litigation between the parties to
declare or enforce any provision of this Agreement, the prevailing party or
parties shall be entitled to recover from the losing party or parties, in
addition to any other recovery and costs, reasonable expenses, attorney's fees,
and costs associated with such litigation, in both the trial and in all
appellate courts.
SECTION 8.14 This Agreement or any section thereof shall not be
construed against any party due to the fact that said Agreement or any section
thereof was drafted by said party.
SECTION 8.15 This Agreement may be executed in several counterparts and
all so executed shall constitute one Agreement, binding on all the parties
hereto even though all the parties are not signatories to the original or the
same counterpart.
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(Xxxxxxx) (DWM)
IN WITNESS WHEREOF, DWM and Xxxxxxx have executed and delivered this
Agreement effective as of the date first set forth above.
XXXXXXX:
/s/ XXXXXX X. XXXXXXX
-----------------------------
Xxxxxx X. Xxxxxxx
DWM:
XXXXXX XXXXXX MARINE, INC.
By: /s/ XXXXX XXXXXXX XXXXXXX
--------------------------
Name: Xxxxx Xxxxxxx Xxxxxxx
Title: President
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