LICENSE AGREEMENT
| Confidential Materials omitted and filed separately with the Securities and Exchange Commission. Double asterisks denote omissions. |
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| Exhibit 10.9 |
THIS LICENSE AGREEMENT (the “Agreement”), effective as of December 1, 2012 (the “Effective Date”), is made by and between XXXX FOODS COMPANY, a Delaware corporation, with its principal place of business located at 0000 Xxxxx Xxxxxxx Xxxxxx, Xxxxx 0000, Xxxxxx, XX 00000 (hereinafter referred to as “Licensor”) and WWF OPERATING COMPANY, a Delaware corporation, with its principal place of business located at 00000 Xxxxxxx Xxx, Xxxxxxxxxx, XX 80021(hereinafter referred to as “Licensee”). Licensor and Licensee are collectively known as the “Parties”.
3. OWNERSHIP OF FORMULAS; DEVELOPMENT OF NAMES, DESIGNS AND SLOGANS: Licensee and Licensor each acknowledge and agree that the formulations for each Licensed Product and all new formula development concerning the Licensed Products shall be owned exclusively by Licensor. The formulas for the Licensed Products constitute a valuable
trade secret and shall be subject to the provisions of Section 25 below concerning protection of Licensor’s trade secrets. Licensee agrees that the formulas shall not be used to produce any products other than the Licensed Products to be produced pursuant to this Agreement.
The parties agree that Licensee may develop names, designs and/or slogans which may be used in connection with the Licensed Products, upon Licensor’s approval. Ownership of any such names, designs and/or slogans shall be owned by Licensor, and added to Exhibit A.
City of Industry, California
Dallas, Texas
| Year |
Minimum Royalty | |
| 2013 | $ [**] | |
| 2014 | $[**] | |
| 2015 | $[**] | |
| 2016 | $[**] | |
| 2017 | $[**] |
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c. All quarterly payments shall be made in U.S. Dollars and shall be paid within forty-five (45) days of the end of each calendar quarter. All payments shall be submitted to the following address: Xxxx Foods Company, 0000 Xxxxx Xxxxxxx Xxxxxx, Xxxxx 0000, Xxxxxx, XX 00000.
| Contract Year |
Minimum Sales Volume (In Units) | |
| 2017 | [**] Units | |
| 2018 (if any) | [**] Units or the actual sales volume (whichever is greater) plus the percent growth of sales in the chocolate milk category for the current year over such sales for Contract Year 2017 (per IRI or similar data) | |
| Subsequent Contract Years (if any) | Previous Contract Year Minimum Sales Volume or actual sales volume plus the percent growth of sales in the chocolate milk category for such Contract Year over the immediately preceding Contract Year (per IRI or similar data) | |
For the purposes of determining whether the Minimum Sales Volumes have been met for a Contract Year, the parties agree that they will, on September 30, 2017 and each September 30 thereafter, review the previous twelve (12) month period performance against IRI data with respect to Minimum Sales Volumes or the minimum Unit Volumes for Calendar Year 2017 to determine whether the Agreement will be extended by an additional one (1) year. For example, if on September 30, 2018, the percent sales growth for the chocolate milk category (“Category Growth Target”) for the period from October 1, 2017 through September 30, 2018 is equivalent to the actual sales growth for the Licensed Products, then the Agreement shall be extended for an additional year, to expire December 31, 2019, Notwithstanding anything to the contrary contained in this Agreement, in the event that a determination made on any September 30 indicates that Licensee has failed to meet the Category Growth Target, Licensee may have the option to cure such failure to meet the Category Growth Target by reviewing the previous twelve month performance at any date between September 30 and December 31 in the period during which the Category Growth Target was not met.
For purposes of this Agreement, a “Contract Year” shall be each twelve (12) month period commencing January 1 and ending each December 31 during the Initial Term and Extended Term, if any.
The definition of “Unit” as used in this Agreement shall mean each 237 ml tetra prisma package containing Licensed Product.
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a. Licensee agrees that during the Term, Licensee shall, at its sole cost and expense, diligently and continuously produce, distribute and sell the Licensed Products, and that it shall use reasonable commercial efforts to make and maintain adequate arrangements for the distribution of the Licensed Products in the Licensed Channels of Trade throughout the Licensed Territory so as to develop and maintain a substantial, and expanding business in such Licensed Products.
b. Licensor and Licensee shall each designate one employee to serve as the central contact for any discussions concerning this Agreement.
c. Representatives of Licensor and Licensee shall meet at least once per year to review and discuss the sales results and trends for the Licensed Products, labeling, packaging, potential new Licensed Products, to adjust any performance criteria based upon then current market conditions, and any other matters relevant to this Agreement and to approve marketing and sales plans for the Licensed Products. Licensor and Licensee shall work together in good faith to address and resolve any issues identified and to implement any actions agreed upon as much as practicable.
a. The quality and type of the Licensed Products and proofs of all packaging material as well as proofs of every use of the Licensed Trademarks whether on packaging material, labels, advertising and sale promotion material or otherwise shall be subject to the express written approval of Licensor prior to distribution and sale thereof by Licensee; provided, however, that Licensee shall not be required to receive express written approval of uses of the Licensed Trademarks which have been previously approved for use by Licensor if a material change in the use has not occurred (e.g., using Licensed Trademarks label in an online application or advertisement). Licensee shall allow at least fifteen (15) days for Licensor to approve materials. Licensor shall approve or disapprove materials within fifteen (15) business days. Licensee’s right to use the Licensed Trademarks in advertising and promotion of the Licensed Products shall be limited to use of precise reproductions of the Licensed Trademarks as actually used with the Licensed Products unless Licensor expressly authorizes other uses. Subject to the proviso contained in the first sentence of this Subsection 9(a), before promoting, selling or distributing any of the Licensed Products, Licensee shall furnish to Licensor free of cost the following;
i. actual or electronic sample proofs of all packaging material used with each Product and copies of proofs of representative tags, labels, imprints or other devices used in connection with any Licensed Products.
ii. actual samples of the Licensed Products on a quarterly basis as may be requested by the Licensor for the purposes of ensuring the continued quality of the Licensed Products.
iii. Before advertising any of the Licensed Products, Licensee shall obtain Licensor’s express written approval of copies of all proofs of advertising, promotional or
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display material, bearing the Licensed Trademarks and/or Licensed Products (including, with respect to video advertising, if used, story boards and scripts and video footage, of a reasonable size designated by Licensor, of all proposed video or film advertising) intended to be used by Licensee. Licensee shall request such approval by furnishing copies of all such materials to Licensor free of cost or by other method of delivery.
iv. In the event expedited approval is required for public relations materials (e.g. press releases) relating to Licensor, the Licensed Trademarks or the Licensed Products, Licensee may request that such approval be expedited. Such requests must be made in writing and must contain special written notice that expedited handling is specifically requested.
b. After samples have been approved pursuant to this Section, Licensee shall not depart there from in any material respect without the prior, express, written approval of Licensor. All samples shall conform to the trademark and copyright notice requirements of Section 14. Licensor shall not unreasonably withhold, condition or delay approvals requested by Licensee and any disapproval shall be accompanied by the reason(s) therefore.
a. Licensee warrants that the Licensed Products will not be adulterated or misbranded within the meaning of the federal Food, Drug and Cosmetics Act or the various regulations promulgated there under (the “Act”) and will not be prohibited from being introduced into interstate commerce under the provisions of Sections 404 and 505 of the Act.
b. Licensee shall comply with all good manufacturing and storage practices and all laws and regulations having application to the production, storage and sale of the Licensed Products using the Licensed Trademarks and upon request, shall provide to Licensor written certification that the Licensed Products using the Licensed Trademarks meet all applicable specifications required by law, industry standards, and applicable federal, state and local regulatory bodies, Licensee shall promptly notify Licensor of any significant discrepancies noted during any inspection by the United States Food and Drug Administration related to the production of a Licensed Product, the United States Department of Health, or any other legally authorized federal, state or local regulatory agencies of a production facility where the Licensed Products are produced. Upon reasonable notice and at a time mutually agreed upon by the parties, Licensor shall be permitted to review copies of any inspection reports issued by the above referenced governmental agencies only as it pertains to the manufacturing and storage of Licensed Products.
c. Licensor shall be permitted, during regular business hours and upon reasonable notice at a time mutually agreed upon by the parties, to inspect the manufacturing facilities used to produce the Licensed Products using the Licensed Trademarks and any storage facilities used to store the Licensed Products using the Licensed Trademarks. A Licensee
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employee shall be permitted to accompany Licensor’s representatives at all times during the inspection. Licensor’s representatives shall comply with all reasonable health, confidentiality and safety procedures in effect at the manufacturing facility. During such inspection, Licensor may review quality control and manufacturing reports as it may reasonably request pertaining to the Licensed Products. Licensee agrees to make available laboratory reports or other documents provided to federal, state or local regulatory authorities during the twelve (12) month period prior to the date of such audit, Licensee’s pest control records for such twelve (12) month period and reports of inspection of the Licensed Plants performed by any federal, state or local regulatory authorities during the twelve (12) month period prior to the date of such audit to the extent such reports, documents or records relate to any of the Licensed Products or facilities in which such Licensed Products are produced or stored.
d. Licensee shall provide to Licensor’s Quality & Regulatory Compliance department a GFSI certification for each manufacturing/co-manufacturing operation, annually, or other mutually agreed-upon food safety standard assessment for each Licensee manufacturing or contract manufacturing facility that produces a Licensed Product. Compliance to annual certification with any standard other than GFSI requires Licensee to provide full assessment report with corrective actions.
e. Licensor shall have the right to request from Licensee reasonable quantities, at reasonable times, of production samples of the Licensed Products for purposes of verifying that Licensee is adhering to the quality standards for such Licensed Products set forth herein.
f. The Parties recognize that the need for protection of consumers and of the public is of paramount consideration and that no approval granted by Licensor under this Agreement will release Licensee of its responsibilities to comply with all of the provisions hereof, including, without limitation, those relating to product quality, advertising, packaging and marketing. In addition to its undertaking to protect consumers and the public, Licensee shall subject the Licensed Products to a quality control program designed by Licensee, which program is approved by Licensor in writing prior to the first production of Licensed Products for commercial sale and distribution. Licensee shall modify such quality control program to conform to any reasonable requests made by Licensor and shall not alter such program in a manner that would affect either the quality or safety of the Licensed Products without the prior written approval of Licensor. Licensee shall report to Licensor all material alterations to such program and shall revise such alterations to such program to comply with any reasonable request for such revision as Licensor may make. The Parties understand that Licensee’s processing methods and quality control program shall be in compliance with Licensor’s standards.
g. Licensee shall print a toll free number or website address that enables a consumer to reach a live operator on all packages of the Licensed Products directing consumers to call that number with questions regarding the Licensed Products. The toll free phone number and website address shall be manned by live operators during regular business hours. Licensee will provide sufficient trained consumer response staff to handle consumer calls or other correspondence about the Licensed Products, will keep a log of all such contacts received about the Licensed Products, will use commercially reasonable efforts to satisfy consumer complaints or concerns about the Licensed Products as quickly as possible, and will provide detailed information or records generated through this consumer relations program to Licensor in mutually agreed-upon
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format(s) and frequency. Licensee shall provide a report on consumer comments on a quarterly basis to Licensor Quality & Regulatory Compliance. The report shall include: product name; consumer comment; lot code; manufacture location; and Licensee’s corrective action. In addition, Licensee shall contact Licensor Quality & Regulatory Compliance immediately should a consumer of the Licensed Product communicate potential alleged illness or injury, or potential contact of any government agency or news media.
a. Licensee shall establish, in writing, a product recall program for the Licensed Products, a summary of which shall be subject to the prior written approval of Licensor. Licensee shall modify such program to conform to any reasonable requests made by Licensor. Licensee shall report to Licensor all alterations to such program and shall revise such alterations to such program to comply with any reasonable request for such revision as Licensor may make. Such program shall provide that Licensee shall immediately advise Licensor of any Product recall considerations or deliberations and provide Licensor with the right to attend and participate in such deliberations.
b. Licensee shall have complete responsibility for recalls related to the Licensed Products. Notwithstanding the foregoing, Licensor shall have the absolute right to recall any Product, if it determines that the use and/or distribution of the same may, in its sole opinion, pose a risk to the health and welfare of the public in a manner consistent with established United States Food and Drug Administration policy or damage or endanger the good will of the Licensed Trademarks. Notwithstanding Licensor’s right to recall any Product as set forth in the preceding sentence, Licensor agrees to coordinate its activities with respect to such recall with Licensee as long as Licensee has commenced and is diligently prosecuting to completion a recall as required herein. Upon notice of any such recall, including oral notice, Licensee shall immediately recover all materials required by Licensor to be recovered and shall dispose of such materials as directed by Licensor or applicable regulatory authority.
c. In recognition of the paramount importance of protecting the health and welfare of the public and the good will associated with the Licensed Trademarks, Licensor and Licensee agree to take whatever steps are necessary to xxxxx any health risk or possible damage to the good will of the Licensed Trademarks as quickly and effectively as possible. Licensee shall contact Licensor’s Quality & Regulatory Compliance department immediately if consideration is being given to involve a Licensed Product in a recall or market withdraw, or if a consumer alleges illness or injury or threatens to contact any government agency or media. Licensee shall provide Licensor with the right to have input into recall or market withdraw considerations and into responses to government agency or media communications.
13. MODIFICATIONS TO LABELING AND PACKAGING:
a. The Parties will, in good faith, discuss any changes requested by Licensor or Licensee. In the event Licensor requests a change in packaging material or design that is required by law or necessary to ensure the safety or quality of the Licensed Products, then Licensee shall be responsible for all costs of such change; provided, however, that Licensee shall not be required to incur costs for greater than ninety (90) days worth of packaging inventory. If such
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change is not required by law or necessary to ensure the safety or quality of the Licensed Products, then the party requesting the change shall be responsible for all costs of such change.
b. Notwithstanding the above, Licensor in its sole discretion may require changes to the packaging design and graphics once during the Initial Term and once during each successive Renewal Term if desired to maintain consistency of brand and product appearance and consumer presentation. Licensee agrees that it will implement and Licensor shall be responsible for the costs of such change.
c. Licensee shall be responsible for complying with all packaging quality standards, including but not limited to color matching, color standards, packaging graphics and packaging composition.
15. OTHER NAMES AND LICENSED TRADEMARKSS:
a. The Licensee may not, without the prior, express written consent of the Licensor, use any corporate name, trade name or trademark in connection with the packaging, advertising, offering for sale or sale of any Licensed Products, whether said other name or xxxx be that of Licensee or of any other person. In the event that applicable law shall require the identification of Licensee on packaging or labeling, such identification shall be given the minimum prominence consistent with such law. The packaging or labeling of all Licensed Products shall bear the following legend: TRU MOO used under license from Xxxx Foods Company.
b. Licensee shall use its own corporate name on all business letterheads, order xxxxxx, xxxx heads, contracts, and other documents pertaining to its relationship with trade customers and suppliers and other persons furnishing goods or services to Licensee. In connection with its relations with such customers, suppliers and furnishers of goods and services, Licensee will not use the Licensed Trademarks in such a manner, or otherwise act, so as to lead such persons to believe that Licensee and Licensor are the same corporation or are affiliates of each other, or that one is the agent for the other.
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18. UNDERTAKINGS OF LICENSOR: Licensor represents, warrants and agrees that:
a. Licensor is duly incorporated in the United States and has foil power and authority to execute and deliver this Agreement and perform its obligations hereunder; and (ii) this Agreement constitutes the legal, valid and binding obligation of Licensor, enforceable against it in accordance with the terms hereof; and (iii) Licensor’s execution, delivery, and performance of this Agreement does not and will not conflict with, result in the breach of, or constitute a default under any arrangement or agreement to which it is a party or by which it is bound.
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b. To the best of Licensor’s knowledge, the Licensed Trademarks does not violate or infringe the intellectual property rights of any third party when used in accordance with the terms of this Agreement.
c. As of the date of this Agreement, the Licensed Trademarks is not the subject of any pending claim of ownership or infringement by any third party for the goods licensed herein.
d. Licensor owns the Licensed Trademarks in the United States, and has applied to register the Licensed Trademarks in Canada and Mexico.
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22. ASSIGNMENT AND SUB-LICENSING:
a. The License granted hereunder is and shall be personal to Licensee, and shall not be assignable by any act of Licensee or by operation of law without the express written consent of Licensor. Notwithstanding the above, this Agreement may be assigned without Licensor’s consent in connection with (i) any merger of Licensee with a subsidiary or affiliate of or controlled by Licensee provided such assignment would not violate other terms of this Agreement, or (ii) of any transaction in which the Parent Company’s (as such term is defined below) securities become publicly traded.
b. Licensee shall have no right to grant any sub-licenses. Any attempts by Licensee to grant sub-licenses or to assign or part with possession or control of the License granted hereunder or any of Licensee’s rights hereunder other than as provided herein shall constitute a material breach of this Agreement.
23. PROTECTION OF LICENSOR’S LICENSED TRADEMARKS
a. All rights in the Licensed Trademarks other than those specifically granted herein are reserved to Licensor or its licensors for its own use and benefit. Licensee acknowledges that it shall not acquire any rights in the Licensed Trademarks, or any other Licensed Trademarks owned by Licensor, as a result of Licensee’s use of the Licensed Trademarks, and that all use of the Licensed Trademarks by Licensee shall inure to the benefit of Licensor or Licensor’s licensor as applicable. Licensee agrees that it shall not, directly or indirectly, during the term hereof or thereafter, attack the validity of the ownership of the Licensed Trademarks by Licensor or attack the validity of the license herein granted to Licensee in any proceeding whatsoever.
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b. Licensee acknowledges Licensor’s, and Licensor’s licensors as applicable, right, title and interest in and to the Licensed Trademarks, trade name and registrations of the same and will not in any way, directly or indirectly, do or cause to be done any act or thing contesting or in any way impairing or tending to impair any part of said right, title and interest in connection with the use of said Licensed Trademarks and trade name. Licensee shall not in any manner represent that it has any ownership in said Licensed Trademarks, trade name or any registration thereof and Licensee acknowledges that use of the Licensed Trademarks by it shall not create in said Licensee any right, title or interest in or to said Licensed Trademarks and trade name but all use of said Licensed Trademarks by said Licensee shall inure to the benefit of Licensor. Licensee covenants and agrees that it will at no time adopt or use any word or xxxx, or design which is identical to or likely to cause confusion with any trademark, trade name or packaging of Licensor.
24. TRADE SECRETS AND CONFIDENTIAL INFORMATION:
a. Upon execution of this Agreement, Licensee agrees to hold in confidence and not disclose to any third parties nor use for its own benefit, any information or data that it may acquire from Licensor with regard to the Licensed Products, including the formulation thereof, ingredients supplied by Licensor, Licensor’s manufacturing facilities, the terms of this Agreement and marketing or other information related to the Licensed Trademarks except for information which is or becomes part of the public domain, or which Licensee previously received from third parties, itself developed or later obtains from third parties not known by Licensee to owe a duty of confidence to Licensor. Upon the termination of this Agreement, Licensee shall cease to employ or utilize all information it receives from Licensor, other than information it has previously received from third parties, developed itself or may later obtain from public information sources or from third parties not owing a duty of confidence to Licensor.
b. Upon execution of this Agreement, Licensor agrees to hold in confidence and not disclose to any third parties nor use for its own benefit any confidential information or data that it may acquire from Licensee with regard to the Licensed Products or Licensee’s manufacturing facilities, except for information which is or becomes part of the public domain, or which Licensor previously received from third parties, itself developed or later obtains from third parties not known by Licensor to owe a duty of confidence to Licensee. Upon the termination of this Agreement, Licensor shall cease to employ or utilize all information it receives from Licensee, except for information deemed under this Agreement to be property of Licensor, other than information which it has previously received from third parties, developed itself or may later obtain from public information sources or from third parties not owing a duty of confidence to Licensee.
a. This Agreement and the license hereby granted may be terminated at any time by the Licensor on written notice effective automatically thirty (30) days after the receipt thereof by the Licensee upon the occurrence of the following:
i. The ownership or control or any incidents of ownership (including but not limited to the right to sell, to agree to sell, to pledge or to restrict the discretion in voting) of the securities of The WhiteWave Foods Company, a Delaware corporation and the parent
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company of Licensee (the “Parent Company”), changes such that a “Change of Control Event” as defined herein occurs and the party who attains control of Licensee is (a) a party whose primary business is in the daily products or daily beverage industry (in Licensor’s reasonable discretion), or (b) has a net worth at least 50% less than the net worth of Licensee; provided, however, that an initial public offering of securities of the Parent Company as contemplated in a Form S-l filed by Parent Company on August 7, 2012 (Registration Number 333-183112) or a distribution of Parent Company stock also as contemplated in such Form S-l shall not be deemed a Change in Control Event. As used herein, the term “control” as used with respect to an entity or business, shall mean possession, directly or indirectly, of the power to direct or cause the direction of the management or policies of such entity or business, whether through ownership of voting securities, contract or otherwise;
ii. Licensee shall fail, in any material respect, to perform any of the terms of this Agreement to be performed by Licensee and, unless otherwise provided herein, shall fail to correct such breach within thirty (30) days after receipt of written notification of the breach, or, if such breach is not capable of being cured within such thirty (30) day period, Licensee shall have an additional sixty (60) days to cure such breach as long as it is diligently pursuing such cure throughout the cure period;
iii. [Intentionally left blank.]
iv. Other than as a result of Licensor’s breach under this Agreement, or any other action or omission of Licensor, Licensee becomes the subject of any governmental, labor or consumer action, proceeding, boycott or campaign which, in Licensor’s reasonable judgment, may injure or bring discredit upon the Licensed Trademarks or the good will represented thereby;
v. Licensor shall determine in good faith that Licensee is producing the Licensed Products under unsafe health and sanitation conditions and shall fail to correct such breach within forty-eight (48) hours after receipt of notification of Licensor’s determination, provided, however, that Licensee shall not produce any Licensed Products until Licensee has corrected such breach to Licensor’s reasonable satisfaction. Licensor’s determination that Licensee is producing the Licensed Products under unsafe health and sanitation conditions may be based upon either inspections by Licensor’s representatives and/or the actions of any federal, state or local governmental body in citing Licensee for violations of applicable health or sanitation laws or regulations;
vi. Licensor shall determine in good faith that Licensee is producing and/or selling a non-organic, shelf-stable flavored or white milk.
vii. Licensee fails to follow properly the specifications for the Licensed Products, or fails to meet any requirements of the quality control program and fails to cure such breach within thirty (30) days after receipt of written notice from Licensor, provided, however, that Licensee shall not produce any Licensed Products until Licensee shall have corrected such breach to Licensor’s reasonable satisfaction.
viii. During any Contract Year Licensee fails to pay Licensor any royalties due to be paid hereunder within ten (10) days of the date such payment is due if
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previously during such Contract Year Licensee failed to pay Licensor any royalties when such payment was due and as a result thereof received a written notice from Licensor that such payment was overdue.
ix. If Licensee shall fail to carry on the production, distribution and sale of the Licensed Products in accordance with the terms and intent of this Agreement, and shall fail to correct such breach within thirty (30) days after receipt of written notification from Licensor.
x. Licensor and/or Licensee receive notice of a claim of infringement related to this Agreement and Licensor in its reasonable judgment believes such termination is necessary to resolve such claim.
xi. If at the conclusion of the Initial Term Licensee fails to achieve the Minimum Sales Volumes or pay the Minimum Royalty set forth in Sections 6 and 7, as applicable.
Except with respect to the provisions of subparagraphs (a)(ii), (v), (vi) and (vii) of this Section, Licensee shall have no right to cure any defaults except upon the express, written permission of Licensor.
b. If Licensee files a petition in bankruptcy or is adjudicated bankrupt, or if a petition in bankruptcy is filed against Licensee which is not dismissed within ninety (90) days, or if Licensee becomes insolvent, or makes an assignment for the benefit of creditors, or an arrangement pursuant to any bankruptcy law, or if Licensee discontinues its business or if a receiver is appointed for Licensee or Licensee’s business who is not discharged within ninety (90) days, the license granted hereunder shall automatically terminate forthwith without any notice whatsoever being necessary, it being acknowledged by both Licensor and Licensee that Licensee possesses unique and special skills of a personal nature, upon which Licensor has relied in entering into this Agreement.
c. Licensor shall be under no obligation to terminate this Agreement on the happening of any or all of the events set forth in Section 25, and, unless Licensor notifies Licensee otherwise in writing, its failure to do so in any instance shall not be deemed a waiver of its right to do so. Licensor’s rights under Section 26 are in addition to all rights which Licensor otherwise may have against Licensee.
d. This Agreement and the license hereby granted may be terminated at any time by the Licensee on written notice effective automatically thirty (30) days after the sending thereof to Licensor in case:
i. Licensor shall fail to perform any of the other terms of this Agreement to be performed by Licensor and shall fail to correct such breach within sixty (60) days after receipt of written notification of the breach; or
ii. Licensor files a petition in bankruptcy or is adjudicated bankrupt, a petition in bankruptcy is filed against Licensor which is not dismissed within ninety (90) days, or Licensor becomes insolvent or a receiver of the business of Licensor is appointed who is not discharged within ninety (90) days, or Licensor makes an assignment for the benefit of creditors, or an arrangement pursuant to any bankruptcy law, or a petition under Chapter 11 of the
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Bankruptcy Act is filed on behalf of the Licensor, or Licensor terminates or suspends operations for a period in excess of ten (10) days as a result of the action of any creditor or creditors, or a substantial portion of Licensor’s assets are transferred to any creditor by foreclosure, peaceable possession or similar procedure; or
iii. Licensor fails to commence the defense of an infringement action filed against Licensee alleging that Licensee’s use of the Licensed Trademarks in accordance with this Agreement, violates the intellectual property rights of a third party or a judgment is rendered against Licensee or Licensor or a settlement is entered into by Licensor that requires or results in a material modification of the rights granted by Licensor to Licensee hereunder; or
e. Licensee shall be under no obligation to terminate this Agreement on the happening of any or all of the events set forth in Section 25, and, unless Licensee notifies Licensor otherwise in writing, its failure to do so in any instance shall not be deemed a waiver of its right to do so. Licensee’s rights under Section 26 are in addition to all rights which Licensee otherwise may have against Licensor.
a. Upon termination of this Agreement, Licensee shall have no right to use any of the (i) Licensed Trademarks, (ii) trade dress, (iii) packaging designs or (iv) formulations or specifications that have or may be developed by Licensee for use with the Licensed Products during the Term of this Agreement. Licensee’s obligations and duties under this Agreement shall survive any expiration or termination of this Agreement, except that Licensee’s obligation to pay the Minimum Royalty shall be terminated if this Agreement is terminated pursuant to Section 25. Licensee shall continue to have an obligation to pay a royalty on any Net Sales and the prorated amount of the Minimum Royalty which would have been due at the time of termination, whichever is greater.
b. If this Agreement is terminated, Licensee, its receivers, representatives, trustees, agents, administrators, successors and/or permitted assigns shall have no right to produce, sell, exploit or in any way deal with or in any Licensed Products or any packaging material, advertising, promotional or display material pertaining thereto except with and under the special consent and instructions of Licensor in writing which said Parties shall be obliged to follow.
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Trademarks or any further reference to them, directly or indirectly, in connection with the production, sale or distribution of Licensee’s Licensed Products. Licensee shall thereupon turn over to Licensor all materials which reproduce the Licensed Trademarks or, if requested by Licensor in writing, shall give Licensor satisfactory evidence of their destruction. Licensee shall be responsible to Licensor for any damage caused by unauthorized use by Licensee or others of such reproduction materials which are not turned over or destroyed.
29. APPLICABLE LAW; VENUE: This Agreement, whenever called upon to be construed, shall be governed by the laws of the State of Texas applicable to contracts executed and to be wholly performed therein without regard to Texas’ choice of law or conflicts of laws provisions.
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or agreements, oral or written, between the Parties with respect to the subject matter hereof and cannot be modified except by a written instrument signed by the Parties hereto.
| XXXX FOODS COMPANY (LICENSOR) | ||
| By: |
/s/ Xxxxxx Xxxxxx | |
| Name: |
Xxxxxx Xxxxxx | |
| Title: |
COO, FDD | |
| Date: |
11/14/12 | |
| WWF OPERATING COMPANY (LICENSEE) | ||
| By: |
/s/ Xxxxxxx X. Xxxxx | |
| Name: |
Xxxxxxx X. Xxxxx | |
| Title: |
President – Horizon Organic | |
| Date: |
December 4, 2012 | |
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Exhibit A
Licensed Trademarks
TRUMOO
A TRULY GOOD THING
SMART LUNCHBOX NUTRITION
Exhibit B
All DISTRIBUTORS must maintain the following policies of insurance at their own expense:
Commercial General Liability Insurance, on an occurrence basis, including a duty to defend, which must provide coverage for bodily injury and property damage with the following minimum limits of insurance:
| • $1,000,000 |
Each Occurrence Limit | |
| • $1,000,000 |
Personal and Advertising Injury Limit | |
| • $1,000,000 |
Products and Completed Operations Liability | |
| • $2,000,000 |
Aggregate Limit | |
The policy must contain a contractual liability coverage extension, either within the policy form or by endorsement. The policy must contain a CG2010 Endorsement (Including Product Completed Operations) naming Xxxx Foods Company, its parents, subsidiaries and affiliated entities, and its officers, directors and employees as additional insured.
Workers’ Compensation Insurance covering all statutory benefits in the states of operation and Employers’ Liability, with limits of at least $1 million per accident or disease.
Business Auto Liability Insurance, with minimum combined single limits of $1 million per accident for bodily injury and property damage. The policy must include a duty to defend and cover all owned, non-owned, and leased or hired vehicles. The following endorsements must be included:
| • | MCS-90 Endorsement Limit of Liability of $1,000,000, If required by law |
| • | Truckers Intermodal Interchange Uniform Endorsement Limit of Liability of $1,000,000, to the extent this coverage would be applicable to the services provided hereunder. |
| • | Trailer Interchange Contract Legal Liability Insurance for Physical Damage to Trailers - $75,000 with Xxxx Foods Company as a Loss Payee for the stipulated value of the unit, to the extent this coverage would be applicable to the services provided hereunder. |
All Risk Cargo Legal Liability Insurance, written on an all risk, certificate cargo insurance basis to insure the full value of the load, and deductible amount not to exceed $25,000. The policy must provide refrigeration breakdown coverage.
Pollution Legal Liability Insurance, with minimum limits of $5 million per occurrence and $5 million aggregate combined single limit for bodily injury and property damage, including a duty to defend, arising from pollutants or environmental impairment. If this coverage is provided through the cargo legal liability policy or the auto liability policy, specify coverage, basis written and limits provided. Coverage provided within the distributor’s auto liability policy must be through the use of the CA9948 endorsement.
Commercial Umbrella/Follow Form Excess Insurance, with minimum limits of $4 million per occurrence and in the aggregate, in excess of the underlying policy limits. The policy must provide coverage at least as broad as the underlying policies and provide coverage excess of the required general liability, employer’s liability, and automobile liability coverages.
The following additional requirements shall apply:
| • | Insurance must be placed with insurance companies rated at least A, X (10) by the A.M. Best. |
| • | All liability policies must be endorsed to name Xxxx Foods Company, its parents, subsidiaries and affiliated entities, and its officers, directors and employees as additional insured utilizing ISO forms. |
| • | The automobile liability, general liability and workers’ compensation policy, if permitted by law, must have a waiver of subrogation in favor of Xxxx Foods Company, its parents, subsidiaries and affiliated entities, and its officers, directors and employees. |
| • | All insurance policies must apply as primary and non-contributory with respects to operations of DISTRIBUTOR. DISTRIBUTOR will bear any losses within insurance deductibles or self-insured retention amounts. |
| • | All insurance policies must be written on a per occurrence basis except Pollution Liability which is written on a limit of liability basis. |
| • | All insurance policies must be endorsed to provide Xxxx Foods Company with 30-days advance written notice of cancellation or material change in coverage. |
Subcontractors and Independent Truckers (for brokerage) DISTRIBUTOR will require DISTRIBUTOR’S subcontractors and independent truckers to carry the same insurance coverages as required of the DISTRIBUTOR. DISTRIBUTOR will maintain proof of subcontractors and independent truckers insurance coverage at all times.
Evidence of Insurance:
| • | Prior to the execution of this Agreement DISTRIBUTOR shall deliver to Xxxx Foods Company a certificate, executed by a duly authorized representative of each insurer, showing compliance with the insurance requirements set forth above. |
| • | Policy renewal dates must be noted, and new certificates must be provided, meeting the requirements noted above, throughout the entire term DISTRIBUTOR provides goods or services to Xxxx Foods Company or any of its affiliated entities. |
| • | Failure of Xxxx Foods Company to demand such certificate or other evidence of full compliance with these insurance requirements or failure of (Xxxx Foods Company to identify a deficiency from evidence that is provided shall not be construed as a waiver of DISTRIBUTOR’s obligation to maintain such insurance. |
| • | Certificates with disclaimers must have Additional Insured endorsement(s) attached. |
The insurance requirements set forth herein are minimum coverage requirements and are not to be construed in any way as a limitation on DISTRIBUTOR’S liability under this Agreement.
Failure to maintain the required insurance may result in termination of this contract at Xxxx Foods Company option.
Exhibit C
Foodservice Customers included in Licensee’s Territory
Chipotle
Dominos
Jason’s Deli
Corner Bakery
Xxxxxxxx Xxxx Group
Other customers may be added to this list if approved in writing by Licensor