EXHIBIT 10.28
LICENSE AGREEMENT
This LICENSE AGREEMENT (this "Agreement") is made and entered into as of
February 10, 2003 by and between Weatherbeeta PTY LTD ("Licensor"), an
Australian corporation and Dover Saddlery, Inc. ("Licensee"), a Delaware
corporation.
RECITALS
I. As described in a letter agreement dated February__, 2003, between
Licensee and Licensor (the "Letter Agreement"), Licensor has acquired certain
rights to the Marks and the goodwill appurtenant thereto pursuant to a secured
party sale by The Bank of New York to Licensor's nominee Weatherbeeta USA, Inc.,
which has assigned all of said rights to Licensor.
II. Licensee desires to license from Licensor certain of those rights.
NOW THEREFORE, for good and valuable consideration, the receipt and
sufficiency of which is hereby acknowledged by Licensor the parties agree that:
1. As used in this Agreement the following terms shall have the following
meanings:
"Domain Name" means the URL address and domain name
xxx.xxxxxxxxxxxxx.xxx.
"Marks" means the trademarks and tradenames "Millers" and "Xxxxxx'x
Harness", whether registered or common law marks, and including, but not limited
to those trademarks registered with the U.S. Patent and Trademark Office as
Registration Nos. 1087381,1608811, and 0885095; that Trademark registered with
the Canada Intellectual Property Office as Registration No. 240890; that
Trademark registered with the Mexican Industrial Property Office as Registration
No. 504551; those trademarks registered with the Brazil Instituto Nacional Da
Propriedade Industrial as Registration Nos. 816641200, 816641196 and pending
applications with Processing Numbers 817201564 and 817201572; and the xxxx
attached hereto as Exhibit A.
"Territory" means Xxxxx Xxxxxxx, Xxxxxxx Xxxxxxx xxx Xxxxx Xxxxxxx.
2. Licensor hereby grants to Licensee, and Licensee hereby accepts from
Licensor, a perpetual, exclusive right, license and privilege (subject only to
the Debtor's License, described below), in accordance with the terms and
conditions of this Agreement, to utilize the Marks in the Territory in
connection with: (i) a retail mail order sales catalog distributed within the
Territory for retail sales of equestrian products and apparel; and (ii) an
Internet web site that uses the Domain Name for retail sales of equestrian
products and apparel ((i) and (ii) hereafter collectively referred to as the
"Field"). Licensee shall have no right to use the Marks or the Domain Name for
any other purpose outside of the Field. Specifically, but not by way of
limitation, Licensee shall have no right to make, have made, or import products
bearing the Marks or the Domain Name, and may only sell and offer to sell such
products purchased from authorized licensees of Licensor. Licensee acknowledges
that its license granted herein overlaps with the non-exclusive license (the
"Debtor's License", attached hereto) granted to English Equestrian Group LLC and
Xxxxxx Harness Company, Inc. (the "Debtors") and to The Bank of New York to
utilize certain rights, including the Marks and the Domain Name, in the
Territory until April 30, 2003, solely in connection with the distribution,
marketing and/or sale of certain inventory currently owned by the Debtors.
Licensor agrees that it will not 1) extend or otherwise amend the Debtor's
License and 2) grant any other licenses permitting any third party to use the
Marks or the Domain Name in the Field and within the Territory.
3. Licensee accepts its rights hereunder "AS IS", without any
representation or warranty whatsoever, express or implied. Licensor expressly
disclaims any and all warranties with respect to the Marks and the Domain Name
and the rights therein, including, but not limited to, any warranty that
Licensor has good title to the Marks or valid registration of the Domain Name,
that the Licensor has the power or authority to grant the rights purportedly
granted herein, that the Marks or Domain Name do not infringe upon the rights of
any third party, or that no third party has rights superior to those granted
herein. Licensee acknowledges that it has had the opportunity to conduct due
diligence with respect to Licensor's acquisition of the Marks and the Domain
Name and the rights that Licensor has acquired in such Marks and the Domain
Name.
4. Licensor agrees that during the term of this Agreement, no fee, royalty
or other payment or compensation shall be due to Licensor for the license
granted pursuant to this Agreement. Licensee agrees that the nature and quality
of all services rendered by Licensee in connection with the Marks, and all
related advertising, promotional and other uses of the Marks by Licensee shall
conform to standards set by and under the control of Licensor.
5. Licensee agrees to cooperate with Licensor in facilitating Licensor's
control of the nature and quality of the services rendered by Licensee in
connection with the Marks, to permit reasonable inspection of Licensee's
operations, and to supply Licensor with specimens of all uses of the Marks upon
reasonable request accompanied by advance notice of at least fifteen (15)
business days. Licensee shall comply with all applicable laws, regulations, and
obligations, and shall obtain all appropriate government approvals pertaining to
the uses of the Marks and the Domain Name covered by this Agreement.
6. Licensee agrees to notify Licensor of any unauthorized use of the Marks
by others promptly as it comes to Licensee's attention. Licensor hereby grants
to Licensee the right to bring infringement or unfair competition proceedings
against third
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parties for unauthorized usage of the Marks or the Domain Name in the Territory
and within the Field. Licensor agrees to reasonably cooperate with Licensee in
connection with all such proceedings, at Licensee's expense. Licensor shall have
the right, in its discretion and at its sole expense, to join and participate in
all such proceedings initiated by Licensee. Any recovery as a result of such
action by Licensee shall belong solely to Licensee, except to the extent that
such recovery represents damage to Licensor, in which case any such recovery
shall be paid to Licensor. In the event Licensee shall fail to take action
against third party infringers, Licensor shall retain the right to initiate such
proceedings on its own behalf, and shall have the right to join Licensee in such
proceedings to the extent it is deemed a necessary party by any judicial or
arbitral body. Any recovery as a result of such action by Licensor shall belong
solely to Licensor, except to the extent that such recovery represents damage to
Licensee, in which case any such recovery shall be paid to Licensee.
7. As between Licensor and Licensee, Licensee acknowledges that Licensor
is the sole owner of the Marks, agrees that it will not do anything inconsistent
with such ownership, and that all use of the Marks by Licensee shall inure to
the benefit of Licensor. Except as provided in Section 8 below, nothing in this
Agreement shall give Licensee any right, title or interest in the Marks other
than the right to use the Marks and the Domain Name in accordance with this
Agreement. Licensee will not attack the title of Licensor to the Marks, nor will
Licensee attack the validity of this Agreement.
8. The license rights granted to Licensee hereunder shall remain in effect
in perpetuity unless earlier terminated in accordance with the terms of the
Agreement. This Agreement may be terminated by either party if the other party
breaches any of its material obligations or representations under this
Agreement, provided that (i) the non-breaching party gives notice to the
breaching party of the breach and (ii) the breaching party does not, within
sixty (60) days from the date of receipt of the notice, cure the breach
described in the notice or contest its existence. Upon the failure to cure
within the cure period, the aggrieved party shall have the right, without legal
action or further notice to terminate this Agreement at the end of the such
sixty (60) days by sending a written notice of termination to the breaching
party. In addition, this Agreement may be terminated immediately by Licensor if
Licensee becomes the subject of any bankruptcy, insolvency, or reorganization
proceeding, or generally seeks relief from its debts, or becomes or is declared,
by any court of competent jurisdiction, to be insolvent. Licensee shall have the
right to terminate this License in accordance with the above procedure in the
event that Licensor has committed acts that materially and adversely affect
Licensee's rights to maintain its usage of, and enforce its rights in, the Marks
pursuant to the license granted hereunder, in which event, upon such
termination, Licensor shall assign to Licensee that portion of its right, title
and interest in the Marks limited to use of the Marks in the Field and within
the Territory. The termination of the Agreement by reason of this paragraph
shall not relieve the breaching party of liability for any damages properly
assessable by reason of the said breach
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9. The parties hereto are independent contractors and engage in the
operation of their own respective businesses. No party hereto is to be
considered the agent or legal representative of the other for any purpose
whatsoever. No party has any right or authority to enter into any contracts or
assume any obligations for any other party or make any warranties or
representations, express or implied, on behalf of any other party or to bind any
other party in any manner whatsoever. Nothing in this Agreement shall be
construed to establish a relationship of partners or joint venturers between or
among the parties. No party will incur any expenses chargeable to any other
party.
10. This Agreement shall be binding on and inure to the benefit of the
parties, and their respective successors and assigns. This Agreement and any
rights granted hereunder may not be assigned by Licensee without the prior
written consent of the Licensor; provided, however, that either party shall have
the right to assign all of its rights, obligations and privileges hereunder,
upon advance notice to but without any requirement to obtain the consent of the
other party, to a purchaser or successor-in-interest to its business in
connection with a merger, consolidation or sale of all or substantially all of
such party's assets or assets to which this Agreement pertains.
11. This Agreement shall not confer any rights or remedies upon any person
other than the parties and their respective successors and permitted assigns.
12. This Agreement (together with the Letter Agreement) constitutes the
entire agreement between the parties relating to the subject matter hereof and
supersedes any prior understandings, agreements, or representations by or
between the parties, written or oral, to the extent they have related in any way
to the subject matter hereof.
13. This Agreement may be executed in one or more counterparts, including
counterparts executed and delivered by facsimile, each of which shall be deemed
an original but all of which together will constitute one and the same
instrument.
14. All notices, requests, demands, claims, and other communications
required or permitted hereunder shall be in writing. Any notice, request,
demand, claim, or other communication hereunder shall be deemed duly given if it
is sent by registered or certified mail, return receipt requested, postage
prepaid (and then three business days after), and addressed to the intended
recipient as set forth below.
If to Licensor:
WEATHERBEETA PTY LTD
c/o Weatherbeeta USA, Inc.
00 Xxxxxxxxx Xxxxxx
Xxxxxx, Xxx Xxxxxx 00000
Attn: Xxxxx Xxxxxxx, President
Tel: (000)000-0000
Fax: (000) 000-0000
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with copies to:
Xxxxxxxxxx Xxxxxxx PC
00 Xxxxxxxxxx Xxxxxx
Xxxxxxxx, Xxx Xxxxxx
Attn: Xxxxx X. Xxxxxx, Esq.
Tel: (000)000-0000
Fax: (000)000-0000
If to Licensee:
Xxxxxxx X. Day, President
Dover Saddlery, Inc.
000 Xxxxx Xxxx
Xxxxxxxxx, XX 00000
With a copy to:
Xxxx X. Xxxxxxxx, Esq.
Preti, Flaherty, Beliveau, Pachios & Xxxxx, PLLC
X.X. Xxx 0000
Xxxxxxx, XX 00000-0000
Any party may send any notice, request, demand, claim, or other communication
hereunder to the intended recipient at the address set forth above using any
other means (including personal delivery, expedited courier messenger service,
telecopy, telex, ordinary mail, or electronic mail), but no such notice,
request, demand, claim, or other communication shall be deemed to have been duly
given unless and until it actually is received by the intended recipient. Any
party may change the address to which notice, demands, claims, and other
communications hereunder are to be delivered by giving the other Party notice in
the manner herein set forth.
15. This Agreement shall be governed by and construed in accordance with
the domestic laws of the State of New Jersey without giving effect to any choice
or conflict of laws provision or rule (whether of the State of New Jersey or any
other jurisdiction) that would cause the application of the laws of any
jurisdiction other than the State of New Jersey. Licensor and Licensee hereby
consent to the personal jurisdiction to the personal jurisdiction of the state
and federal courts of the State of New Jersey in connection with any dispute
relating to this Agreement (and the Letter Agreement).
16. No amendment of any provision of this Agreement shall be valid unless
the same is in writing and signed by the parties hereto. No waiver by any party
or any default, misrepresentation, or breach of warranty or covenant hereunder,
whether intentional, or not, shall be deemed to extend to any prior or
subsequent default,
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misrepresentation, or breach of warranty or covenant hereunder or affect in any
way any right arising by virtue of any prior or subsequent such occurrence.
17. If any provision of this Agreement shall be held to be illegal,
invalid or unenforceable, such illegality, invalidity or unenforceability shall
apply only to such provision and shall not in any manner affect or render
illegal, invalid or unenforceable any other provision of this Agreement, and
this Agreement shall be reformed, construed and enforced so as to most nearly
give lawful effect to the intent of the parties as expressed in this Agreement.
18. Except as expressly agreed otherwise herein, Licensor and Licensee
each agree to bear its own costs and expenses (including legal fees and
expenses) incurred in connection with this Agreement and the transactions
contemplated hereby.
19. Licensee agrees to refer to Licensor all inquiries regarding the
wholesale purchases of products that use the Marks.
20. The parties have participated jointly in the negotiation and drafting
of this Agreement. In the event an ambiguity or question of intent or
interpretation arises, this Agreement shall be construed as if drafted jointly
by the parties and no presumption or burden of proof shall arise favoring or
disfavoring any party by virtue of the authorship of any of the provisions of
this Agreement.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement as of
the date and year first above written
WEATHERBEETA PTY LTD, as Licensor
By: /s/ Xxxxx X. Xxxxxxx
------------------------------------
Name: Xxxxx X. Xxxxxxx
Title: Authorized Signatory
DOVER SADDLERY, INC., as a Licensee
By: /s/ Xxxxxxx X. Day
------------------------------------
Name: Xxxxxxx X. Day
Title: Its President
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EXHIBIT A
[XXXXXX'X LOGO]
000 Xxxx Xx.
Xxxxxxxxxx, XX 00000
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