Exhibit 10.2
TRADEMARK LICENSE AGREEMENT
This Trademark License Agreement (the "AGREEMENT"), dated as of February
24, 2003 (the "EFFECTIVE DATE") is made by and between xXXxX*s Brand LLC, a
Delaware limited liability company, located at 000 Xxxxxx Xxxxxx, Xxx Xxxx, Xxx
Xxxx 00000 ("LICENSOR") and xXXxX*s Corp., a Delaware Corporation located at 000
Xxxxxx Xxxxxx, Xxx Xxxx, Xxx Xxxx 00000 ("LICENSEE").
WHEREAS Licensor is the owner of the trademarks listed on Schedule A
("the Licensed Marks");
WHEREAS Licensee desires a license to use the Licensed Marks in connection
with its business, and Licensor desires to grant such a license to Licensee;
NOW, THEREFORE, in consideration of the foregoing and the mutual covenants
contained in this Agreement, and for other good and valuable consideration, the
receipt and adequacy of which are hereby acknowledged, the parties agree as
follows:
TERMS AND CONDITIONS
1. TRADEMARK OWNERSHIP.
1.1 Licensee acknowledges and agrees that Licensor is the sole and
exclusive owner of the entire right, title, and interest (including any and all
accompanying goodwill) in and to the Licensed Marks. All goodwill developed in
the Licensed Marks through Licensee's use will inure to the sole benefit of
Licensor.
1.2 During the Term and thereafter, Licensee will not challenge or
otherwise contest, either offensively or defensively, (i) the validity,
ownership or enforceability of the Licensed Marks or Licensor's copyrights or
other intellectual property rights, (ii) any of Licensor's current or subsequent
registrations or applications for registration of the Licensed Marks or (iii)
Licensor's exclusive right to own and register the Licensed Marks within and
outside the Licensed Territory.
1.3 Licensee will not directly or indirectly apply for or attempt to
register for itself or others any of the Licensed Marks or any logos within or
outside the Licensed Territory except as provided in Section 6.
1.4 Licensee will cooperate with Licensor to achieve as good a reputation
and press as possible for the Licensed Marks and Licensed Products. Licensee
understands and acknowledges the meanings of counterfeit goods, diverted goods
and parallel goods and Licensee will use all commercially reasonable means to
prevent the creation of any such goods by its employees, agents, representatives
and any others operating under its direction, supervision or control. Licensee
will reasonably cooperate with Licensor to prevent unlawful use of the Licensed
Marks, including without limitation counterfeiting, and to prevent diversion of
Licensed Products outside the Licensed Territory and/or Permitted Channels of
Trade. Licensor will have the right, but not the obligation, to institute legal
action or take any other actions that it deems necessary to protect its interest
in the Licensed Marks, and Licensee will fully cooperate with Licensor in any
such action.
1.5 Licensee recognizes the great value of the publicity and goodwill
associated with the Licensed Marks and, in such connection, acknowledges that
such goodwill belongs exclusively to Licensor, and that the Licensed Marks have
acquired secondary meaning in the minds of the purchasing public.
1.6 Licensee agrees that it will use the Licensed Marks only within the
scope of the License, and that all other uses of the Licensed Marks are
prohibited.
1
1.7 Licensee expressly acknowledges that Licensor is entering into a
license agreement (the "Master License") with JLP Daisy LLC, a Delaware limited
liability company (the "Master Licensee") that permits it to use the Licensed
Marks to advertise, promote and market the Licensed Products in any medium in
the Licensed Territory, and to sublicense to permitted sublicensees (as defined
in the Master License) the right to use the Licensed Marks during the Term in
connection with the manufacture, sale and distribution of the Licensed Products
within the Permitted Channels of Trade in the Licensed Territory (as those terms
are defined in the Master License), and advertising, marketing and promotion
incidental thereto, and that the activities of Licensor and the Master Licensee
in accordance with the terms and conditions of the Master License are not in any
way violative of this Agreement.
2. TERM.
The "Term" of this Agreement will be perpetual. Notwithstanding the
foregoing, the Term may be terminated earlier pursuant to Section 13.2.
3. GRANT OF LICENSE.
3.1 Licensor hereby grants to Licensee (a) a non-exclusive, royalty-free
license to use the Licensed Marks as trademarks in the Territory in connection
with the manufacture, distribution, marketing, promotion, advertising, and sale
of Licensed Products, but only to be sold through catalogs, Internet sales,
mail-order, and other direct marketing methods, as well as xXXxX*s-branded
retail stores and affiliate programs; (b) an exclusive, royalty-free license,
including the right to sublicense, to use the Licensed Marks as trademarks and
service marks in the Territory in connection with the operation of Licensee's
business, namely, the business as heretofore conducted by xXXxX*s Corp. and its
subsidiaries, including the operation of xXXxX*s-branded specialty retail
stores, commercial Internet websites, affiliate programs and catalogs marketing
apparel, accessories and home furnishings principally to teenage girls and young
women; and (c) a non-exclusive, royalty-free license, including the right to
sublicense, to manufacture, sell, distribute, advertise, promote, and market
Licensed Products bearing the xXXxX*s Artwork (as defined below) in the
Territory, and to reproduce and distribute advertising, marketing and
promotional materials that include the xXXxX*s Artwork through catalogs,
Internet sales, mail-order, and other direct marketing methods, as well as
xXXxX*s-branded retail stores and affiliate programs, all subject to the terms
conditions of this Agreement. "xXXxX*s Artwork" means any copyrightable artwork
developed by Licensor and used by Licensor and/or Licensee or its Affiliates on
or in connection with the advertising and sale of Licensed Products.
3.2 As part of the License granted in Section 3.1, Licensor grants
Licensee the right to use all logos and designs associated with the Licensed
Marks. Licensee will not use any other logos, designs, or other artwork in
conjunction with the Licensed Marks unless approved by Licensor in advance, such
approval not to be unreasonably withheld.
3.3 To the extent that a Secured Transferee has a security interest in the
Member's Membership Interest, and in the event of foreclosure upon such security
interest, such Secured Transferee that forecloses upon the Member's Membership
Interest shall be entitled only to the economic benefits of the Member's
Membership Interest and, except to the limited extent necessary to cause
distributions to be paid in accordance herewith, such transfer will not confer
any voting rights on such Secured Transferee absent the written consent of the
Special Manager; PROVIDED, HOWEVER, that if such Secured Transferee elects to
sell such Membership Interest following a foreclosure the purchaser thereof
shall be entitled to all the rights and benefits associated with such Membership
Interest; PROVIDED, FURTHER, that if such a sale occurs prior to the Expiration
Date, the consummation of such sale shall be expressly conditioned upon the
survival of all the rights afforded to the Special Manager in this Agreement.
3.4 Licensee will not sell, and will not allow any of its sublicensees to
sell, any Licensed
2
Product in any wholesale or retail store transaction in the Licensed Territory
other than sales in owned stores or close-outs, PROVIDED that revenues with
respect to any third-party closeouts will not exceed (x) 15% of revenues
generated by sales of watches, (y) 25% of revenues generated by sales of
sunglasses and (z) 10% of revenues generated by sales of all other goods (by
product category), in each case on an annual basis.
4. EFFORTS.
During the Term, Licensee will use best efforts to use the Licensed Marks
in a professional manner in order to preserve and enhance Licensor's goodwill
associated with the Licensed Marks.
5. LICENSED PRODUCTS:
The "Licensed Products" are those goods listed on Schedule B.
6. TERRITORY.
The "Territory" is all countries and territories worldwide. Before using
the Licensed Marks on any Licensed Products in any territory in which Licensor
has not yet obtained a trademark registration for the Licensed Marks ("New
Territory"), Licensee will notify Licensor of Licensee's intention to enter into
the New Territory in sufficient time for Licensor to make any and all necessary
or appropriate filings for trademark or other protection in the New Territory.
Licensor will make such filings as Licensor, in its sole discretion, deems
appropriate. Licensee will fully cooperate with Licensor as Licensor may request
in furtherance of Licensor's application, prosecution, or registration of any
such filings. If Licensor notifies Licensee that Licensor declines to file,
maintain, or renew an application or registration in any New Territory, Licensee
will be entitled to file, maintain, and/or renew such applications or
registrations, at Licensee's expense, in the name of and on behalf of Licensor
provided such filing is (1) limited to the Licensed Products, (2) is made with
prior written notice to Licensor in each instance, and (3) Licensor is informed
of such applications and any resulting registrations and, upon its request, is
provided copies of the documents filed by any person in connection therewith.
Other than as expressly provided for in this section, Licensee agrees that it
will not directly or indirectly make application for or aid others to seek
trademark registrations in any state, country, or territory of any xxxx or
design that includes any of the Licensed Marks. All registrations, goodwill, and
uses by Licensee of or for any of the Licensed Marks in any New Territory will
inure to the exclusive benefit of Licensor.
7. QUALITY CONTROL
7.1 Both parties understand and agree that it is necessary for Licensor to
maintain reasonable control over the use of the Licensed Marks by Licensee to
avoid abandonment of the Licensed Marks and to maintain and enhance the goodwill
associated with the Licensed Marks. The parties agree that the Licensed Products
must meet or exceed Licensor's high quality standards, including the product
quality standards currently in place for products bearing the Licensed Marks,
and that the style, appearance and quality of the Licensed Products will be
consistent with such standards, and that Licensee will comply in all material
respects with all laws governing the use of the Licensed Marks and the provision
of the goods and services under the Licensed Marks.
7.2 Upon reasonable notice to Licensee, Licensor may require Licensee to
send to Licensor (i) representative samples of advertising and promotional
materials bearing the Licensed Marks, and (ii) other documents as may be
reasonably requested by Licensor that may permit Licensor to determine
3
whether the use of the Licensed Marks meets the standards, specifications and
directions set forth above.
7.3 (a) Licensee represents that Licensee will require the Licensed
Products to be manufactured, marketed, sold and distributed in accordance with
all applicable laws, regulations and safety codes worldwide and in compliance
with any regulatory or governmental agency that has jurisdiction over such
matters. Licensee represents and warrants, and will require each of its
sublicensees to represent and warrant, that the proper use of the Licensed
Products will not cause any harm or injury to any person or property. Licensee
additionally represents and warrants and covenants, and will require each of its
sublicensees to represent and warrant and covenant that it does not and will not
engage in any activity that would violate any applicable labor law, rule,
regulation or practice, or engage in any form of discrimination based on race,
color, religion, sex, sexual orientation or national origin, and Licensee will,
and will require in its agreements with its sublicensees and any subcontractors
that such persons comply, and Licensee will cause its officers, employees and
agents to comply, with applicable labor laws, rules, regulations and practices,
and not to engage in any form of discrimination based on race, color, religion,
sex, sexual orientation, national origin or other prohibited basis.
(b) Licensee represents and warrants that its performance under this
Agreement will not violate any applicable law, rule or regulation. Licensee
represents and warrants that it has not violated and will not violate the
Foreign Corrupt Practices Act. Licensee will not by act or omission breach any
agreement to which it is a party relating to the Licensed Products. Licensee
agrees that it will not sublicense to any individual or entity that is in
violation of any applicable laws. Licensee will provide Licensor with copies of
all government filings relating to the Licensed Marks or the Licensed Products
before Licensee makes any such filings. Licensor will have the right to instruct
Licensee to modify the content of such filings; provided, that, Licensor will
comply with governing laws in all respects and will not impede Licensee from
complying with such laws. Licensee agrees that it will not engage, and will
require its sublicensees not to engage, in tying practices, illegal restraints
of trade, or selling practices that exclude any members of the retail trade for
any reasons other than poor credit history, known lack of integrity or disregard
for rights of Licensor and/or any of its Affiliates.
7.4 If Licensee engages in advertising or promotion of the Licensed
Products or the Licensed Marks, Licensee will do so in a manner that will
enhance the goodwill associated with the Licensed Marks.
7.5 Licensee will provide at Licensor's reasonable request during normal
business hours all internal design patterns, colors and coordination
information.
8. ASSIGNMENT OF INTELLECTUAL PROPERTY RIGHTS.
8.1 Licensee hereby grants, transfers and assigns to Licensor,
irrevocably, throughout the world and in perpetuity, all rights of copyright in
and to any and all materials and works authored or created by or for Licensee
under the License (including without limitation under any sublicense of the
Licensed Marks except as provided in Section 8.2(b) or otherwise in the course
of Licensee's performance under this Agreement, in each case related to the
Licensed Marks (all such works and derivatives thereof hereinafter referred to
as "Works"), and all rights of copyright in and to any Work. For purposes
hereof, the Works include without limitation all artwork, designs, prototypes,
packaging, and promotional material of or for Licensed Products. Licensor will
own all rights of copyright in and to the Works whether or not such Works were
approved by Licensor, or ultimately manufactured, distributed, sold and/or
promoted. Licensee will never apply to obtain a copyright registration anywhere
in the world covering any Work. If Licensee engages any third parties to create
or author any Work, Licensee will cause each such third party to agree that all
rights, including rights of copyrights, in and to the Work will be owned by
Licensor and will cause each such third party to execute documents necessary to
reflect that ownership status, including without limitation assignment and/or
recordation documents. At the request of Licensor, Licensee will execute all
documents confirming Licensor's
4
rights in and to the Works including without limitation assignments of copyright
in form and substance satisfactory to Licensor. If Licensee will fail or refuse
to sign any such documents, then Licensor will be entitled to sign such
documents for and on behalf of Licensee and, for this purpose, Licensee hereby
irrevocably appoints Licensor its attorney-in-fact with power of substitution to
sign all such documents as may be required. This power of attorney is coupled
with an interest and is irrevocable.
8.2 (a) Licensee will require that each sublicensee will be required to
grant, transfer and assign to Licensor, irrevocably, throughout the world and in
perpetuity, all rights of copyright in and to any and all artwork authored or
created by or for such sublicensee and used on Licensed Products (all such works
and derivatives thereof hereinafter referred to as "Sublicensee Artworks"), and
all rights of copyright in and to any Sublicensee Artworks. Licensor will own
all rights of copyright in and to the Sublicensee Artworks that are used on
Licensed Products that are manufactured, distributed, sold and/or promoted, even
if not specifically approved by Licensor. Licensor will also own all rights of
copyright in and to the Sublicensee Artworks that are specifically approved by
Licensor, even if such Sublicensee Artworks are not ultimately used on Licensed
Products that are manufactured, distributed, sold and/or promoted. Licensee will
require that no sublicensee ever apply to obtain a copyright registration
anywhere in the world covering any of such Sublicensee Artworks. Licensee will
further require that if any sublicensee engages any third parties to create or
author any such Sublicensee Artworks, such sublicensee will require each such
third party to agree that all rights, including rights of copyrights, in and to
such Sublicensee Artworks will be owned by Licensor and will require each such
third party to execute documents necessary to reflect that ownership status,
including without limitation assignment and/or recordation documents. At the
request of Licensor, such sublicensee will execute all documents confirming
Licensor's rights in and to such Sublicensee Artworks including without
limitation assignments of copyright in form and substance satisfactory to
Licensor. If any sublicensee fails or refuses to sign any such documents, then
Licensor will be entitled to sign such documents for and on behalf of such
sublicensee and, for this purpose, the applicable sublicense will irrevocably
appoint Licensor as attorney-in-fact for such sublicensee with power of
substitution to sign all such documents as may be required, which power of
attorney will be coupled with an interest and be irrevocable.
(b) Licensee will require that each sublicensee will be required
to grant, transfer and assign to Licensor, irrevocably, throughout the world
and in perpetuity, all rights of copyright in and to any and all materials
and works (other than Sublicensee Artworks) authored or created by or for
such sublicensee specifically and uniquely for or relating to the Licensed
Marks or any Licensed Products (all such works and derivatives thereof
hereinafter referred to as "Sublicensee Works"), and all rights of copyright
in and to any Sublicensee Works; provided, however, that Licensor's right to
enforce its copyrights in Sublicensee Works against such sublicensee is
predicated in each case upon Licensor's using commercially reasonable efforts
to pursue its remedies against all actual third-party infringers (it being
understood that, so long as Licensor is acting in a commercially reasonable
manner, Licensor will not be required to pursue the same remedy against every
such infringer, only that Licensor pursue a remedy). For purposes hereof, the
Sublicensee Works include all designs, silhouettes, prototypes, packaging,
and promotional material authored or created by or for such sublicensee
specifically and uniquely for or relating to the Licensed Marks or any
Licensed Products; provided, however, that the Sublicensee Works will not
include any designs, silhouettes, prototypes, packaging and promotional
material that are generic in nature or that are then being used by any other
person or entity in the same industry. Licensor will own all rights of
copyright in and to the Sublicensee Works that are used on Licensed Products
that are manufactured, distributed, sold and/or promoted, even if not
specifically approved by Licensor. Licensor will also own all rights of
copyright in and to the Sublicensee Works that are specifically approved by
Licensor, even if such Sublicensee Works are not ultimately used on Licensed
Products that are manufactured, distributed, sold and/or promoted. Licensee
will require that no sublicensee ever apply to obtain a copyright
registration anywhere in the world covering any of such Sublicensee's Works.
Licensee will further require that if any sublicensee engages any third
parties to create or author any such Sublicensee's Works, such sublicensee
will require each such third party to agree that all rights, including rights
of copyrights, in and to such Sublicensee Works will be owned by Licensor and
will require each such third party to execute documents necessary to reflect
that ownership status, including without limitation assignment and/or
recordation documents. At the request of Licensor, such sublicensee will
execute all documents confirming Licensor's rights in and to such Sublicensee
Works including without
5
limitation assignments of copyright in form and substance satisfactory to
Licensor. If any sublicensee fails or refuses to sign any such documents,
then Licensor will be entitled to sign such documents for and on behalf of
such sublicensee and, for this purpose, the applicable sublicense will
irrevocably appoint Licensor as attorney-in-fact for such sublicensee with
power of substitution to sign all such documents as may be required, which
power of attorney will be coupled with an interest and be irrevocable.
9. WARRANTIES AND REPRESENTATIONS:
9.1 Licensee represents and warrants that its performance under this
Agreement will not violate any applicable law, rule or regulation. Licensee
represents and warrants that it has not violated and will not violate the
Foreign Corrupt Practices Act. Licensee will not by act or omission breach any
agreement to which it is a party relating to the Licensed Products. Licensee
agrees that it will not sublicense to any individual or entity that is in
violation of any applicable laws. Licensee will provide Licensor with copies of
all government filings relating to the Licensed Marks or the Licensed Products
before Licensee makes any such filings. Licensor will have the right to instruct
Licensee to modify the content of such filings; provided that Licensor will
comply with governing laws in all respects and will not impede Licensee from
complying with such laws. Licensee agrees that it will not engage, and will
require its sublicensees not to engage, in tying practices, illegal restraints
of trade, or selling practices that exclude any members of the retail trade for
any reasons other than poor credit history, known lack of integrity or disregard
for rights of Licensor and/or any of its Affiliates.
9.2 Licensee will not at any time do any act or thing that may in any way
impair or diminish the value of any of the Licensed Marks or the exclusive
ownership rights and interests of Licensor therein. Licensee will not, by any
act or omission, use any Licensed Xxxx in any manner that may tarnish, degrade,
disparage or reflect adversely on Licensor, its business or reputation, or the
Licensed Products. Licensee will not, by any act or omission, take any other
action that damages Licensor's reputation or that reflects negatively upon
Licensor or any of the Licensed Marks or Licensed Products.
9.3 Each Party will promptly notify the other if any legal action has been
or is likely to be instituted against the notifying Party relating to the
Licensed Marks, including by immediately forwarding to the other party's
attention copies of all documents directly relevant to such commenced or
possible legal action. If, for any reason, Licensee is prevented from using any
Licensed Xxxx, in any country, such will not be deemed a breach or default by
Licensor hereunder and Licensor will not be liable to Licensee on account
thereof.
10. INDEMNIFICATION AND INSURANCE.
10.1 INDEMNITY.
(a) Licensee will indemnify, defend (by counsel reasonably approved by
Licensor) and hold harmless Licensor and its officers, directors, stockholders,
Affiliates, agents, employees and other representatives (each a "Licensor
Indemnitee") against all damages, claims, liabilities, losses and other
expenses, including without limitation reasonable attorneys' fees and costs,
whether or not a lawsuit or other proceeding is filed, that arise out of or
relate to (1) Licensee's use of any of the Licensed Marks in a manner not
permitted by this Agreement, (2) alleged defects or other problems with any of
the Licensed Products manufactured, marketed, sold or distributed by Licensee,
(3) Licensee's promotion, advertising or other use of any of the Licensed Marks
or Licensed Products that has not been approved by Licensor in accordance with
the terms of this Agreement, (4) Licensee's transactions with third parties
and/or the operation of its business in connection herewith and/or (5)
inconsistencies (not previously approved by Licensor) between this Agreement and
any sublicense agreement entered into by Licensee with a sublicense; and/or (6)
any use of any Licensed Product
6
in conjunction with any new trademark being sought during the period prior to
the date such new trademark's registration is granted. If Licensee fails to
promptly indemnify and defend such claims and/or pay a Licensor Indemnitee's
expenses, as provided above, such Licensor Indemnitee will have the right to
defend itself, and in that case, Licensee will reimburse such Licensor
Indemnitee for all of its costs, damages and reasonable attorneys' fees incurred
in settling or defending such claims within 15 days of each of such Licensor
Indemnitee's written requests. Licensee may not settle any such claim without a
Licensor Indemnitee's prior written consent, which consent will not be
unreasonably withheld.
(b) Licensor will indemnify, defend (by counsel reasonably approved by
Licensee) and hold harmless Licensee and its officers, directors, stockholders,
Affiliates, agents, employees and other representatives (each a "Licensee
Indemnitee") against all damages, claims, liabilities, losses and other
expenses, including without limitation reasonable attorneys' fees and costs,
whether or not a lawsuit or other proceeding is filed, that arise out of or
relate to (1) the use of the Licensed Marks in accordance with this Agreement by
Licensee or any of Licensee's sublicensees, (2) alleged defects or other
problems with any products manufactured, marketed, sold or distributed by
Licensor, unless such product is a Licensed Product manufactured by a one of
Licensee's sublicensees pursuant to a sublicense entered into pursuant to this
Agreement, (3) failure by Licensor to transfer or maintain the Licensed Marks,
(4) failure by Licensor or its Affiliates to make any payment to one of
Licensee's sublicensees for merchandise purchased by Licensor from such
sublicensee pursuant to a sublicense entered into pursuant to this Agreement. If
Licensor fails to promptly indemnify and defend such claims and/or pay a
Licensee Indemnitee's expenses, as provided above, such Licensee Indemnitee will
have the right to defend itself, and in that case, Licensor will reimburse such
Licensee Indemnitee for all of its costs, damages and reasonable attorneys' fees
incurred in settling or defending such claims within 15 days of each of such
Licensee Indemnitee's written requests. Licensor may not settle any such claim
without a Licensee Indemnitee's prior written consent, which consent will not be
unreasonably withheld.
10.2 INSURANCE. Licensee will (and will cause each of its sublicensees),
at its sole expense, to procure and maintain during the Term (a) general
business liability insurance covering the manufacture, marketing, sale and
distribution of Licensed Products in the Licensed Territory, with a combined
limit of not less than $10,000,000 (which can include coverage under an umbrella
policy), and (b) product liability insurance covering the manufacture,
marketing, sale and distribution of Licensed Products in the Licensed Territory
and any defect or unsafe feature of such Licensed Products, with a combined
limit of not less than $10,000,000. Licensee will (and will cause each of its
sublicensees) to (i) have Licensor named as an additional insured and loss payee
on all such insurance policies and (ii) ensure that such insurance policies
provide that Licensor will be given at least 30 days' prior written notice
regarding the cancellation, non-renewal or other endorsement restricting or
reducing coverage under such policies. The insurance policies specified by this
Section 10.2 will be issued by insurance companies with an AAA rating or better
according to Best's Insurance Reports.
11. CONFIDENTIALITY
The Parties agree that during the performance of this Agreement, each
Party may disclose to the other, and to Licensee's sublicensees, on a
need-to-know basis subject to appropriate confidentiality agreements,
confidential information regarding its business, including financial data,
marketing information, methods of doing promotions and sponsorships, research
and development activities, accounting information, customer, supplier, vendor
and other contact lists and other proprietary information which constitute trade
secrets of a Party (collectively "Confidential Information"). The Confidential
Information of a Party may be marked and designated in writing as "Confidential"
or "Proprietary" or any information which normally would be categorized as
confidential. The Parties will not disclose, copy, modify, distribute or
otherwise transfer the other Party's Confidential Information, or any part
thereof, to any other Person. The obligations and restrictions herein will not
apply to Confidential Information that falls within any of the following
exceptions, provided a receiving Party proves by credible written evidence that
such information:
7
(a) is or becomes part of the public domain through no fault of a
receiving Party;
(b) was known by a receiving Party prior to the disclosure by the
other Party;
(c) was independently developed by or for a receiving Party
completely apart from the disclosures hereunder;
(d) has been properly received from a third party who is not under any
obligation to maintain the confidentiality of such information, and without
breach of this Agreement by a receiving Party; and/or
(e) is released pursuant to a court order or otherwise required by law
(including without limitations as required under federal or state securities
laws), provided that the receiving Party immediately notifies the disclosing
Party of such court order or legal requirement, and gives the disclosing Party a
reasonable opportunity and cooperates with the disclosing Party to contest,
limit or condition the scope of such required disclosure.
If a receiving Party wishes to rely on the exceptions contained in
subparagraphs (b), (c) or (d) above, then the receiving Party must demonstrate
to the disclosing Party the facts underlying why the exception applies within 30
days of receipt of the Confidential Information from the disclosing Party. The
Parties have the right to disclose the other's Confidential Information to their
Affiliates, and their respective employees or agents who have a specific need to
know to perform the obligations hereunder, but such Parties will be responsible
for all of their respective employees' actions. Licensor may disclose Licensee's
Confidential Information to its Master Licensee (as defined in Section 1.7)
provided such disclosure is made pursuant to and subject to the confidentiality
provisions in the Master License and is designated "Confidential Information"
under the Master License. Except as provided above, each Party will use the
other's Confidential Information only to properly fulfill their obligations
hereunder, and not for any other purpose. Upon either Party's request, the other
Party will return to the requesting Party the originals and all copies of the
requesting Party's Confidential Information within 10 days of such request.
12. ASSIGNMENT.
Licensee may not assign this Agreement or its rights to the Licensed Marks
without prior written consent of Licensor.
13. BREACH AND TERMINATION.
13.1 If Licensee breaches in any material way any material provision of
this Agreement, Licensee will be deemed to be in default under this Agreement.
In such event, Licensee will have 30 days from the date of Licensor's or Master
Licensee's notice setting forth with specificity such default to Licensee in
which to commence to cure such default. If Licensee fails to commence to cure
such default to Licensor's reasonable satisfaction within the cure period,
Licensor will be entitled to exercise all rights against Licensee at law or
equity, but not including termination, which can only be effected pursuant to
Section 13.2. Master Licensee shall have the remedies as set forth in the Master
License Agreement.
13.2 This agreement can only be terminated by Licensor if Licensee
willfully or recklessly commits or authorizes any act in connection with the
advertising, sale, distribution, or promotion of the Licensed Products that has
a material adverse effect on the value of any of the Licensed Marks, and if
Licensee fails to commence to cure such material adverse effect to Licensor's
reasonable satisfaction within 30 days of receipt of Licensor's notice setting
forth with specificity such acts and such material adverse effect.
8
13.3 Upon termination of this Agreement pursuant to Section 13.2, this
License will automatically revert to Licensor, and Licensee will thereafter
immediately cease and refrain from using in any way the Licensed Marks or any
confusingly similar name or xxxx.
13.4 Upon the expiration or termination of this Agreement, Licensee will
have the limited right to sell and distribute its remaining inventory of
Licensed Products and/or complete and distribute its work in process of Licensed
Products which existed as of the date of expiration for a period of ninety (90)
days following the expiration date.
13.5 Both Parties agree that Licensor or Licensee will be irreparably
harmed and money damages would be inadequate compensation if either breaches any
provision of this Agreement. Accordingly, in addition to any other right or
remedy available to it, Licensor or Licensee, as the case may be, will be
entitled to an injunction restraining any breach or threatened breach of this
Agreement by the other and to specific performance of any provision of this
Agreement, and in either case no bond or other security will be required in
connection therewith, and Licensee or Licensor, as the case may be, hereby
consents to the issuance of any such injunction and to the ordering of specific
performance. This Section 13.5 and all other provisions of this Agreement that
protect the Licensed Marks will survive any termination or expiration of this
Agreement.
14. CONSENTS AND APPROVALS
No consent or approval required under this Agreement will be unreasonably
withheld, conditioned or delayed. Every proposed use of any Licensed Xxxx
submitted to Licensor for its approval must be approved or rejected by Licensor
within 10 days of such submittal or such use will be deemed approved. Any
rejection of any proposed use of a Licensed Xxxx must state in reasonable detail
the basis for such rejection.
15. GOVERNING LAW.
This Agreement will be interpreted and enforced under the laws of the
State of New York, without application of its conflicts or choice of law rules.
Both Parties irrevocably submit to the jurisdiction of the state and federal
courts located in the Borough of Manhattan, City of New York for any action or
proceeding regarding this Agreement, and both parties waive any right to object
to the jurisdiction or venue of the federal and state courts in the Borough of
Manhattan, City of New York.
16. WAIVER.
The failure of either party to enforce any of its rights hereunder or at
law will not be deemed a waiver or a continuing waiver of any of its rights or
remedies against the other party, unless such waiver is in writing and signed by
the party to be charged.
17. COUNTERPARTS.
This Agreement may be executed in several counterparts that together will
be originals and constitute one and the same instrument.
9
18. SEVERABILITY.
If any one or more of the provisions contained herein, or the application
thereof in any circumstance or in any jurisdiction, is held invalid, illegal or
unenforceable in any respect for any reason, the Parties will negotiate in good
faith with a view to the substitution therefor of a suitable and equitable
solution in order to carry out, so far as may be valid and enforceable, the
intent and purpose of such invalid provision; provided, however, that the
validity, legality and enforceability of any such provision in every other
respect and in every other jurisdiction and of the remaining provisions
contained herein will not be in any way impaired thereby, it being intended that
all of the rights and privileges of the Parties will be enforceable to the
fullest extent permitted by law.
19. ENTIRE AGREEMENT.
This Agreement constitutes the entire agreement between the Parties
regarding the subject matter hereof, and supersedes all prior or contemporaneous
understandings or agreements, whether oral or written. This Agreement may be
modified or amended only by a writing signed by both Licensor and Licensee.
IN WITNESS WHEREOF, a duly authorized representative of each of the
parties hereto has duly executed this agreement as of the date first written
above.
LICENSOR: LICENSEE:
xXXxX*s BRAND LLC xXXxX*s Corp.
By: xXXxX*s CORP, Sole Member
By: /s/ Xxxxxxx Xxxx By: /s/ Xxxxxxx Xxxx
-------------------------- ------------------------------
Name: Xxxxxxx Xxxx Name: Xxxxxxx Xxxx
Title: Chairman and Chief Executive Title: Chairman and Chief Executive
Officer Officer
10
