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EXHIBIT 10.1
LICENSING AGREEMENT
THIS LICENSING AGREEMENT (this "Agreement"), made and entered into as
of this 30th day of March, 1997, by and between XXXXX XXXXX ENTERPRISES, INC.
(hereinafter referred to as "Licensor") having an address at Xxx Xxxxxxxx Xxxxx,
Xxxxx 0000, Xxxxxxxxx, Xxxx 00000, and THE XXXXXX XXXXXX GOLF COMPANY of 0000
Xxxxxxxx Xxxx Xxxx, Xxxxxxxx, Xxxxxxxxx 00000 (hereinafter referred to as
"Company");
WITNESSETH:
WHEREAS, Company desires to obtain the right to use the name, likeness
and endorsement of Xxxxx Xxxxx (hereinafter called "Golfer") in connection with
the advertisement, promotion and sale of "Licensed Products" (hereinafter
defined);
WHEREAS, Golfer has granted such exclusive rights to Licensor together
with the right to sublicense such rights;
NOW, THEREFORE, for and in consideration of the premises and of the
mutual promises and conditions herein contained, the parties do hereby agree as
follows:
1. Definitions. As used herein, the following terms shall be defined as
set forth below:
(a) "Golfer Identification" shall mean the full name XXXXX XXXXX,
the facsimile signature of Xxxxx Xxxxx, the Trademarks
(defined below), and the image, likeness, photograph and
endorsement of Golfer, and any combination thereof as may be
approved in advance by Licensor.
(b) "Trademarks" shall mean those trademark registrations owned or
controlled by Licensor or Golfer in any country or territory
of the world for the name Xxxxx Xxxxx, the facsimile signature
of Xxxxx Xxxxx, and any "Golfer Logo."
(c) "Products" as used herein shall mean golf clubs and components
thereof (heads, shafts and grips), golf caddy bags and golf
caddy bag accessories (travel covers, etc.), golf gloves, golf
shoes, golf balls, golf practice and training devices, and
golf apparel including golf rainwear and golf headwear.
(d) "Licensed Products" shall mean all Products of Company which
have any part of the Golfer Identification affixed or attached
thereto in any permanent, non removable manner or which are
sold in packages which bear the Golfer Identification.
(e) "Contract Period" shall mean that period often (10) Contract
Years which shall commence January 1, 1998 and which shall
continue until December 31, 2007 unless terminated earlier
pursuant to the terms hereof. If [Xxxxx Xxxxxx] agrees to and
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does release Licensor from its current contract with [Xxxxx
Xxxxxx] on or before August 31, 1997, then the Contract Period
shall commence as of September 1, 1997.
(f) "Contract Year" shall mean a period of twelve (12) successive
months commencing on any first day of January and ending on
the last day of December during the Contract Period, except
that if [Xxxxx Xxxxxx] agrees to and does release Licensor
from its current contract with [Xxxxx Xxxxxx] on or before
August 31, 1997 the first Contract Year shall commence as of
September 1, 1997 and end on December 31, 1998.
(g) "Contract Territory" shall mean the world.
2. Grant of Rights. Licensor hereby grants to Company, subject to all
of the terms and conditions of this Agreement, the exclusive right and license
to use the Golfer Identification during the term of the Contract Period
throughout the Contract Territory in connection with the manufacture,
advertisement, distribution and sale of Licensed Products. The right to use the
Golfer Identification will not be granted to any third party (any party other
than Company) for use anywhere in the Contract Territory during the Contract
Period in connection with the advertisement, promotion, distribution or sale of
Products. The foregoing exclusive rights to distribute and sell Licensed
Products shall include the right to make catalogue sales of Licensed Products,
and the right to distribute Licensed Products by direct sales to consumers.
Company shall be solely responsible for ensuring that all uses of Golfer
Identification and the manufacture, advertisement, distribution and sale of the
Licensed Products comply with applicable law.
3. Marketing Efforts. Company agrees that, during the Contract Period,
it will use its diligent efforts to actively and aggressively promote the sale
of Licensed Products throughout the Contract Territory. Company agrees that it
will budget and spend, each Contract Year, for the advertising and promotion of
Licensed Products within the Contract Territory, an amount which is no less than
the corresponding "Advertising Commitment" set forth in the schedule as follows:
Contract Year Advertising Commitment
------------- ----------------------
First US$1,000,000
Second US$1,400,000
Third US$2,000,000
Fourth US$2,400,000
Each Contract Year US$2,700,000
thereafter
Within forty-five (45) days following the conclusion of each Contract Year,
Company shall deliver to Licensor a report on the foregoing marketing
expenditures (including invoices) evidencing the required level of expenditure.
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4. Subcontract Manufacturers; Sublicenses. (a) Company shall have the
right to make arrangements for the subcontract manufacture, finishing, packaging
and storing of Licensed Products, provided that Company shall ensure that no
such subcontractor shall take any action contrary to or inconsistent with the
terms and conditions set forth in this Agreement and that Licensor is
acknowledged as an intended third party creditor beneficiary with respect to any
such arrangement, and further provided that no corporate name, trade name or
brand name other than Company's may be used on or in connection with Licensed
Products.
(b) Licensor agrees that Company shall have the right to sublicense any
of the rights herein granted to Company provided that any such sublicensee
agrees to be bound by the terms hereof and any such sublicense shall be
co-terminus with the term hereof. Company agrees to use its best efforts to
monitor and enforce such compliance.
5. Ancillary Marketing Services of Golfer. (a) To facilitate Company's
usage of the exclusive right and license to the Golfer Identification, as
provided herein, Licensor agrees, at the request of Company and upon adequate
notice provided Company is not in default hereunder and subject always to
Golfer's personal and professional schedule, to provide the ancillary marketing
services as set forth below. Licensor shall cause Golfer to attend the following
one-half day sessions (each such session referred to hereafter as a "Service
Day"):
(i) during the first Contract Year, up to six (6) Service
Days for development and review of Licensed Products
of Licensed Products ("Review Days"), and up to one
additional Service Day for production of print and/or
television advertising ("Production Days"); and
(ii) during the second and each subsequent Contract Year,
up to four (4) Review Days and up to one Production
Day.
(b) All such Service Days shall be at a mutually convenient location
selected by Licensor and on such dates and times as are mutually convenient.
Service Days shall not exceed four (4) hours of Golfer's time (excluding lunch
or break time and providing that transportation time for such day does not
exceed two hours). Company is not entitled to substitute Review Days for
Production Days (or vice versa). In addition, unused Service Days may not be
carried forward or backward from one Contract Year to another. Failure to
utilize any or all of the ancillary services as provided above shall not result
in any reduction in remuneration payable to Licensor in accordance with this
Agreement.
(c) With respect to the ancillary marketing services provided by
Golfer, Company agrees to provide Golfer and one (1) traveling companion with
reasonable first class travel expenses, hotel, meals and local ground
transportation required in connection with the foregoing services.
(d) If Licensor confirms Golfer's availability for any Service Day, and
an illness, injury or other emergency prevents Golfer from appearing on that
date, Licensor shall so notify Company immediately and then the parties will
attempt in good faith to reschedule for another mutually agreed upon date,
subject always to prior bona fide commitments. Golfer's nonappearance for the
foregoing
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reasons is not a breach of this Agreement; and neither Licensor nor Golfer is
responsible for any expenses incurred by Company in connection with such
nonappearance.
(e) Licensor agrees that during the period of the First through Fifth
Contract Years (collectively), Licensor will cause Golfer to participate in no
fewer than fifty (50) LPGA sanctioned ladies professional golf tournaments,
provided that if Golfer shall become ill or injured and, as a result, is
prevented from playing professional golf for any period, then the foregoing term
(the First through Fifth Contract Years) during which Golfer is required to
participate in such minimum number of tournaments shall (for these purposes) be
extended until such time that Golfer shall have participated in the required
minimum number of tournaments. Company acknowledges that such extension shall be
Company's sole remedy in such event.
(f) It is understood that neither Licensor nor Golfer shall have any
liability at all to Company or any third party with respect to such development
or review input provided hereunder.
(g) In addition to and separate from any other remuneration, if Company
uses any performance or service of Golfer hereunder in any way that is subject
to the jurisdiction of any applicable artists' union, guild or other
organization (including, without limitation, SAG, ACTRA and AFTRA), Company
shall pay directly to such organization all payments, dues and/or fees (for
benefit plans or otherwise) required by such entity to be made with respect to
Golfer' performance or services. Without limiting the foregoing, the parties
agree for the purposes of this subparagraph that the value of Company's use of
Golfer's appearance in any television commercial(s) shall be an amount equal to
the then-existing minimum or scale payments required to be paid to principal
performers appearing in a commercial shot and used in accordance with applicable
provisions of the applicable ACTRA, AFTRA or SAG contracts or other collective
bargaining agreement. Any such minimum or scale payments so required to be paid
(and actually paid) to Golfer shall be credited against amounts otherwise
payable to Golfer hereunder. This provision shall survive any expiration or
termination of this Agreement.
6. Use of Licensed Products. (a) Company acknowledges that Licensor has
developed a valuable right in the Golfer Identification which is an integral
part of this Agreement and subject to an exclusive license to Company as
provided herein. In an effort to maintain and enhance the goodwill associated
with the Golf Identification and to assist Company in the usage of the Golfer
Identification, and provided that Company is not in default of any of its
obligations hereunder, and provided further that Company shall supply Golfer at
no cost or expense with sufficient quantities of Licensed Products (including,
as to golf clubs, irons, driver and xxxxx) which are fully acceptable to Golfer
for her use in tournament play, then Licensor agrees that Golfer will use
Licensed Products exclusively whenever she participates publicly in any golf
tournament, exhibition, clinic, or other similar golf-related event in which she
participates publicly anywhere in the world. Company shall have the right to
have those Licensed Products used by Golfer hereunder identified with the Golfer
Identification in the same manner such Licensed Products are identified when
distributed and sold to consumers. It is understood, however, that any such
identification must be of a size, shape and location not in conflict with LPGA
rules or the rules governing any professional golf tournament in which Golfer
participates. Company further acknowledges that Licensor shall have the right to
display one advertising patch on the golf caddy bag (which shall be
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a Product of Company) used by Golfer and two advertising patches (one on each
sleeve) of the shirt and/or any outerwear worn by Golfer during her
participation in golf tournaments, exhibitions and other golf related events in
which she participates any where in the world during the Contract Period. It is
understood, however, that any such advertising patch shall not incorporate any
name, logo or identification of any third party involved in the manufacture,
advertising, distribution or sale of articles of the same generic type as
Licensed Products.
(b) Notwithstanding the foregoing, it is understood and agreed that if
Golfer shall find in her sincere good faith judgment that any Licensed Products
as previously supplied by Company are not satisfactory for her use, then
Licensor shall immediately so notify Company, and Company shall use its best
efforts to supply Golfer with Licensed Products which are fully satisfactory to
Golfer. In no event shall Golfer be required to use Licensed Products which are
unsatisfactory, including during any period in which Company is attempting to
replace such Licensed Products with satisfactory ones.
7. Remuneration. (a) Fixed Royalty. In consideration of the rights
herein granted and the ancillary marketing services to be provided hereunder,
Company shall pay to Licensor, with respect to each Contract Year during the
Contract Period, annual non-refundable amounts set forth as follows ("Fixed
Royalty"):
CONTRACT YEAR FIXED ROYALTY
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First US$100,000
Second US$125,000
Third US$150,000
Fourth US$150,000
Fifth US$125,000
Each Contract US$ 75,000
Year thereafter
Each such Fixed Royalty amount shall be payable in two (2) equal semi-annual
installments due on or before the first day of January and the first day July
during the relevant Contract Year.
(b) Fixed Royalty on Licensed Products. In consideration of the rights
herein granted and the ancillary marketing services to be provided hereunder,
Company shall pay to Licensor, with respect to each Contract Year, fixed
royalties on Licensed Products ("Fixed Royalties on Licensed Products") in the
amounts set forth as follows:
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FIXED ROYALTY ON
CONTRACT YEAR LICENSED PRODUCTS
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First US$106,500
Second US$154,000
Third US$224,500
Fourth US$293,000
Each Contract US$351,000
Year Thereafter
Each such Guaranteed Fixed Royalty on Licensed Products shall be payable in two
(2) equal semi-annual installments due on or before the first day of January and
the first day July during the relevant Contract Year.
(c) Overflow Royalty. In consideration of the rights herein granted and
the ancillary marketing services to be provided hereunder, Company agrees to pay
to Licensor additional royalties (the "Overflow Royalty") at the rate of three
and one-quarter percent (3.25%) of the total "Net Sales Price" of all Licensed
Products sold hereunder by Company during the relevant Contract Year; provided,
however, that the full amount of the Fixed Royalty on Licensed Products payable
to Licensor by Company as described above which is applicable to the Contract
Year concerned shall first be credited against the payment of any Overflow
Royalties with respect to Licensed Products sold during such Contract Year. No
part of any Fixed Royalty on Licensed Products shall be carried forward (or
back) as a credit from one Contract Year to another. Overflow Royalties shall be
payable within forty-five (45) days following the conclusion of each calendar
year half period during each Contract Year with respect to sales made during
such quarterly period. Company's "Net Sales Price" for Licensed Products shall
mean Company's invoiced billing price to its customers or distributors, less
only shipping charges, freight, duties, insurance, sales taxes, value-added
taxes, customary discounts and credits allowed for returned or defective
merchandise (but no reserve for returns). All Overflow Royalties due Licensor
shall accrue upon the sale of the Licensed Products regardless of the time of
collection by Company. Licensed Products shall be considered "sold" as of the
date on which said Licensed Products are invoiced, shipped or paid for,
whichever first occurs. If sales are made to any party affiliated with or
related to Company, Overflow Royalties shall be computed based upon the regular
price for such Licensed Products charged to unrelated third parties. There shall
be no deduction from "Net Sales Price" for uncollectible accounts. For purposes
of calculating Overflow Royalties, Products that are the same as Licensed
Products, except for the labeling or packaging, shall be considered Licensed
Products.
(d) Bonuses. In recognition of the increased value of the Golfer
Identification resulting from any of the following achievements, Company shall
pay to Licensor the following bonuses ("Bonuses") during each Contract Year:
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(i) U.S. Open, Nabisco Xxxxx Xxxxx, LPGA Championships,
and Skins Game.
Achievement Bonus
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Winner US$30,000
Runner Up (or tie) US$10,000
Third-Fifth (or tie) US$ 2,500
(ii) Any LPGA Tournament (other than the above)
Achievement Bonus
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Winner US$10,000
Runner Up (or tie) US$ 5,000
Third-Fifth (or tie) US$ 2,000
(iii) Named U.S. LPGA Player of the Year: Bonus in the
amount of US$25,000.
(iv) Awarded Vare Trophy: Bonus in the amount of
US$25,000.
If any one or more of the above-named tournaments or awards are canceled,
Licensor and Company shall agree in good faith upon an appropriate replacement.
All Bonuses payable under this section shall be in addition to amounts otherwise
payable hereunder to Licensor. All Bonuses due for each tournament shall be paid
within thirty(30) days after the conclusion of the tournament or the date of the
achievement concerned (on thirty (30) days after Company has received
verification of the achievement and an invoice with respect to such amount, if
later) and shall be payable in accordance with the procedures set forth below.
(e) In consideration of the rights herein granted and the ancillary
marketing services to be provided hereunder, simultaneously with the execution
hereof, Company is granting to Licensor an option (the "Option") to purchase up
to 200,000 shares of common stock par value $.50 per share of Company (the
"Shares") at an exercise price equal to the Market Price (as defined in the
option agreement being entered into simultaneously herewith (the "Option
Agreement") on the date hereof, as such price and such number of Shares may be
adjusted pursuant to the Option Agreement. The Option shall be exercisable, from
time to time, in whole or in part, as set forth and in accordance with the terms
of the Option Agreement.
8. Books and Records. (a) Company shall supply Licensor with a sales
report with respect to all sales of Licensed Products sold by Company during
each calendar year quarter during each Contract Year, said sales reports to be
delivered to Licensor within forty-five (45) days following the conclusion of
each such quarterly period. Such sales report shall indicate, separately for
each category of Licensed Products, the number of each item of Licensed Products
sold during each month and the Net Sales Price of each such item.
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(b) Company shall keep and maintain accurate books and records with
respect to all sales of Licensed Products and the computation of remuneration
earned or accrued with respect thereto, which books and records shall be
available upon reasonable advance notice for inspection and copying by Licensor
or its authorized agents or representatives during ordinary business hours prior
to the conclusion of a two-year period following the conclusion of the relevant
quarterly period. In the event that an error is discovered in the calculation of
the amount of amounts payable to Licensor, the party that received the benefit
of the error shall promptly thereafter pay to the other the amount of
overpayment or underpayment, as the case may be. An underpayment by Company
based on an error in such calculation shall not be deemed to be a breach of this
Agreement so long as the calculation was made in good faith. If any underpayment
by Company for a period examined by Licensor is 3% or more, Company shall pay
Licensor's reasonable out-of-pocket costs with respect to such examination and
the next subsequent reexamination. Receipt or acceptance by Licensor of any
statement, or any of the sums paid hereunder, shall not preclude Licensor from
challenging the correctness of a royalty statement, or any part or portion
thereof, at any time.
9. Payments. All payments to Licensor pursuant to this Agreement shall
be made by wire transfer as follows:
Huntington National Bank
000 Xxxxxx Xxxxxx
Xxxxxxxxx, Xxxx 00000
Name: Xxxxx Xxxxx Enterprises, Inc.
ABA Route No. 044-000024
Account No. 03668644096
(Please note the name of the payee and the purpose of
the payment.)
Past due payments hereunder shall bear interest at the rate of (i) one and
one-half percent (1.5%) per month, or (ii) the maximum interest rate permissible
under law, whichever is less. All payments hereunder shall be subject to
deduction of the relevant governmental withholding tax, but shall otherwise be
paid without deduction of any cable charges, bank charges, remittance charges,
or any other fees or expenses.
10. Approval of Licensed Products. (a) Company agrees that Licensor
shall have the right to approve or disapprove in advance of sale the quality,
style, colors, appearance, material and workmanship of all Licensed Products and
the packaging therefor, and to approve or disapprove any and all endorsements,
trademarks, trade names, designs and logos (whether using Golfer Identification
or not) used in connection with Licensed Products Company shall not distribute
or sell any such Product which has not been approved by Licensor or which is, at
any time, disapproved by Licensor in accordance with the provisions hereinbelow.
In all instances, Licensor's approval shall not be unreasonably withheld.
(b) Before selling or distributing any Licensed Products hereunder,
Company shall submit to Licensor, at the address set forth herein, for its
examination and approval or disapproval,
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a production sample thereof together with its containers, labels and the like.
Licensor agrees that it will promptly examine and either approve or disapprove
such samples, and that Licensor will promptly notify Company of its approval or
disapproval. Licensor agrees that it will not unreasonably disapprove any item
and, if any is disapproved, that Company will be advised of the specific reasons
in each case. Licensor agrees that any item submitted for approval hereunder at
the address set forth herein may be deemed by Company to have been approved
hereunder if the same is not disapproved in writing within ten (10) days after
receipt thereof.
11. Approval of Use of Golfer Identification. (a) Company agrees that
Licensor shall have the right to approve or disapprove in advance the contents,
appearance and presentation of any and all materials which incorporate the
Golfer Identification. Company agrees that it will not produce, publish or in
any manner distribute any such materials which have not been approved in advance
by Licensor or which are, at any time, disapproved by Licensor in accordance
with the provisions hereinbelow. In all instances, Licensor's approval shall not
be unreasonably withheld.
(b) Before producing, publishing or distributing any materials
hereunder, Company shall submit to Licensor, at the address set forth herein,
for its examination and approval or disapproval, a sample thereof together with
text, coloring and a copy of any photograph proposed to be used. Licensor agrees
that it will promptly examine and either approve or disapprove such sample
material, and that Licensor will promptly notify Company of its approval or
disapproval. Licensor agrees that it will not unreasonably disapprove any sample
material and, if any is disapproved, that Company will be advised of the
specific reasons in each case. Licensor agrees that any item submitted for
approval hereunder at the address set forth herein may be deemed by Company to
have been approved hereunder if the same is not disapproved in writing within
ten (10) days after receipt thereof.
12. Notices and Submissions. (a) All notices or submissions to be made
or delivered by Company to Licensor pursuant to this agreement shall be
delivered to the address of Licensor as follows:
Xxxxx Xxxxx Enterprises, Inc.
c/o International Management, Inc.
Xxx Xxxxxxxx Xxxxx, Xxxxx 0000
Xxxxxxxxx, Xxxx 00000-0000
Attention: Xxxxx Xxxxxxx
All such materials shall be delivered to Licensor free of all charges such as,
for example, shipping charges or customs charges. In the event that any such
charges are paid by Licensor, Company agrees to make prompt reimbursement.
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(b) All notices or submissions to be made or delivered by Licensor to
Company pursuant to this Agreement shall be delivered to the address of Company
as follows:
The Xxxxxx Xxxxxx Golf Company
0000 Xxxxxxxx Xxxx Xxxx
Xxxxxxxx, Xxxxxxxxx 00000
Attention: President
13. Products for the Use of Golfer. During the Contract Period, Company
shall supply Licensor, at no charge, with such amounts of Licensed Products (up
to $2,000 wholesale sales value per Contract Year) as Licensor may reasonably
request for Golfer's and Golfer's family's personal use as and when Licensor so
requests.
14. Trademarks. (a) Licensor represents and warrants that there is set
forth in subparagraph (g) immediately below a full and complete list of all
trademark registrations and applications owned or controlled by Licensor and/or
Golfer, anywhere in the world in those trademark classes which relate to the
Licensed Products. Licensor agrees that it will use its diligent efforts, at its
own expense, to maintain in effect those registrations set forth in subparagraph
(g) immediately below. As used herein, the full name XXXXX XXXXX and the
facsimile signature of Xxxxx Xxxxx are hereinafter referred to as the "Existing
Marks."
(b) If, at any time during the Contract Period, Company should intend
or desire to create and use in connection with Licensed Products any new or
additional names, words, logos, designs or devices which include any part of the
Existing Marks and/or any other part of the Golfer Identification (such a
newly-created xxxx being hereinafter referred to as a "Golfer Logo"), then and
in such event Company may at its election and at its cost and expense create one
or more sample proposed Golfer Logos and submit the same to Licensor. Licensor
shall have the right to approve or disapprove any such proposed Golfer Logo in
its sole discretion, and Company agrees it will not make any use of any proposed
Golfer Logo until the same shall have been approved in writing by Licensor.
Approval of any Golfer Logo by Licensor shall not be unreasonably withheld.
(c) Following approval by Licensor of the Golfer Logo, as described
immediately above, Licensor agrees that Company shall have the right to
undertake procedures to apply for and seek registration of such Golfer Logo
(and/or, at the election of Company, any Existing Xxxx) in the name of Golfer
(or such other name as Licensor may from time-to-time notify Company) in any one
or more countries or territories of the world (as Company may select) in any
trademark class or classes which relate to Licensed Products. Company agrees to
use its diligent efforts to obtain final registration of such applications, but
the parties hereto acknowledge that the Golfer Logo may or may not be capable of
registration in one or more countries of the world in one or more trademark
categories.
(d) All costs and expenses of Licensor in filing those trademark
applications, and in applying for and seeking the registrations, referred to in
the subparagraph immediately above, including, without limitation, trademark
search fees, trademark filing fees, the fees and expenses of local trademark
attorneys (which will be retained in consultation with Licensor's trademark
counsel)
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and all other fees, costs and expenses related thereto, shall be paid by
Company, and Company shall record such expenses in an account referred to as the
"Trademark Account." Company agrees to maintain receipts and other evidence of
payment of all expenses recorded in the Trademark Account. All costs and
expenses set forth in the Trademark Account shall be solely for the account of
Company, provided, however, that Licensor shall reimburse Company, on an annual
basis, for amounts recorded in the Trademark Account up to a total of US$12,000
during any Contract Year, such reimbursements to be made within thirty (30) days
following the conclusion of each Contract Year (limited to the First-Fifth
Contract Years). Excess amounts in the Trademark Account which are not
reimbursed during a particular Contract Year may be carried forward by Company
for reimbursement in a later Contract Year (limited to the First-Fifth Contract
Years) provided that the total reimbursement shall not exceed US$60,000.
(e) Upon the registration of the Golfer Logo in any trademark class in
any country or territory of the world, or upon the registration of an Existing
Xxxx in any trademark class in any country or territory of the world (each such
registration being hereinafter referred to as a "Licensed Trademark"), Licensor
agrees to grant and does hereby grant to Company the exclusive right to use such
Licensed Trademark within the relevant trademark class within the relevant
jurisdiction on or in connection with Licensed Products, which right shall be
coextensive and coterminous with the rights hereinbefore granted to Company for
the use of the Golfer Identification.
(f) Any other provisions herein to the contrary notwithstanding, if
Company shall intend or desire to manufacture, advertise, distribute or sell
Licensed Products with the use of any one or more of the Golfer Logos in any one
or more countries or territories of the world in any trademark class or classes
whether or not the relevant Xxxx has theretofore been registered, such use shall
be at the sole risk and liability of Company.
(g) Licensor represents that Golfer is the owner of Japanese trademark
registration No. 1,571,425, registered March 2S, 1993, in Japanese Class 17
(apparel) for the xxxx XXXXX XXXXX.
(h) Company agrees that it will not, during the Contract Period,
sanction any other party to use any xxxx identical with or confusingly similar
to any part of the Golfer Identification, except to the extent permitted by the
license herein granted or sublicenses permitted hereunder.
(i) Company agrees that nothing herein contained shall give to Company
any right, title or interest in the Existing Marks, any Golfer Logo, or any
other part of the Golfer Identification (except the licensed rights in
accordance with this Agreement), and that each and every part of the Golfer
Identification and any xxxx registered pursuant to this paragraph is the sole
property of Licensor and that any and all use by Company of any part of the
Golfer Identification, and the goodwill arising therefrom, shall inure to the
benefit of Licensor.
(j) Company agrees never to raise or to cause to be raised any question
concerning, or objection to the validity of, the Golfer Identification or the
right of Licensor thereto, on any grounds whatsoever.
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(k) Company agrees that it will not, during the Contract Period or
thereafter, file any application for any xxxx (other than in the name of
Licensor or Golfer as provided herein), or obtain or attempt to obtain ownership
of any xxxx or trade name, in any country of the world, which refers to or is
suggestive of the name Xxxxx Xxxxx, any other part of the Golfer Identification,
or any xxxx, design or logo intended to identify Golfer.
(l) In the event that Licensor makes application for trademark
registration of any part of the Golfer Identification, Company agrees to provide
Licensor all reasonable assistance towards obtaining such registration,
including the execution of documents deemed necessary or desirable by Licensor.
(m) In no event shall an Existing Xxxx, a Golfer Logo, or any other
part of the Golfer Identification, be commingled with any trademarks of Company,
or elements thereof, in such a manner as to create a separate logo or trademark.
15. Trademark Indemnity. (a) In the event a third party should make or
file against Company any claim or action in which it is alleged that use by
Company of the Trademarks in compliance with this Agreement (and not together
with any other intellectual property) infringes the trademark rights of such
claimant, then Company shall promptly notify Licensor of such claim, and
thereafter Licensor shall undertake diligent efforts to have such claim
withdrawn, compromised, or defended. In this connection, Company shall cooperate
with Licensor's efforts (for example, by providing Licensor at Licensor's
request with evidence of Company's use of the Golfer Identification in
advertising, labels, packaging and otherwise).
(b) Licensor shall, at its sole expense and in accordance with its own
reasonable business judgment, take whatever steps it deems necessary or
appropriate to finally dispose of such claim (including, at Licensor's election,
defending any legal action to final judgment). If such claim is disposed of by
the payment of money to the claimant, Licensor shall be solely responsible for
such payment. If such claim is disposed of by an agreed suspension in the sales
of Licensed Products or limitation on the items of merchandise on which the
Golfer Identification may be used (or if any court shall direct such suspension
or limitation), then Company shall, upon notice from Licensor to that effect, so
suspend or limit its sales of Licensed Products and Company and Licensor shall
promptly meet to discuss an appropriate adjustment in the rate of royalty to be
paid by Company to Licensor. Licensor shall not agree to any such suspension
without first consulting with Company and attempting to secure an adequate
sell-off period for inventory on hand and in process.
(c) Neither Licensor nor Golfer is responsible for initiating action
against, enjoining or otherwise attempting to dissuade any person or entity not
licensed by Licensor or Golfer, including without limitation, any former
licensee of Licensor or Golfer, the media or any advertiser, promoter or other
entity, which in contravention of this Agreement or otherwise makes unauthorized
use of anything, including without limitation, any unauthorized use of the
Golfer Identification, in promoting or advertising any product (or products) or
services whatsoever, including without limitation, any products which are the
same as or similar to or directly competitive with the Company Products. Neither
Licensor nor Golfer shall incur any liability to Company or any third party
arising out of any such activity by any such person or entity. If there should
occur any
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infringement of the Trademarks by third parties, Licensor shall have the right
in the first instance to take action at its sole expense in response to any such
infringing activities. In the event that Licensor fails to file suit to seek
injunctive relief and/or damages for such infringing activities within thirty
(30) days of learning of such activities, Company shall have the right to file
such a suit at its sole expense. Each party agrees to consult with the other
with regard to any suits filed pursuant to this Section, and to execute such
consents or other documents as may be reasonably necessary for the other party
to file or pursue a suit (for example, a consent for Company to file suit in
Licensor's or Golfer's name) pursuant to this Section. Any monetary proceeds of
any enforcement action taken pursuant to this Section shall be retained by, and
be the sole property of, the party taking the enforcement action or, if both
parties participate in such action, the proceeds shall be divided pro rata based
on the amounts expended by each party in pursuing the action.
16. Labels. Company agrees that each Licensed Product advertised,
promoted, distributed and sold by Company shall have affixed thereto a permanent
label or imprint stamped on the container or packaging for Licensed Products
which includes some element of the Golfer Identification. It is understood that
each unit of Licensed Products shall have affixed thereto, either on the
product, itself, or on the packaging therefor, a trademark which identifies
Company.
17. Company Indemnity; Insurance. (a) Company agrees to protect,
indemnify and save harmless Licensor and Golfer, or either of them, from and
against any and all expenses, damages, claims, suits, actions, judgments and
costs whatsoever, including reasonable attorneys' fees, arising out of, or in
any way connected with, any claim or action for personal injury, death or
property damage resulting from actual or alleged defects in Licensed Products,
or any breach by Company of any statutory or regulatory obligation, any actual
or threatened breach by Company of any provision hereof; any actual or alleged
infringement by Company of the patent rights, copyrights, trademarks, design
rights, personal or proprietary rights of any third party (not including any
claim falling within the scope of Licensor's indemnity set forth above); any use
of the Golfer Identification; or any services of Golfer hereunder.
(b) Company shall provide and maintain, at its own expense, commercial
general liability insurance, including product liability and advertising injury
coverage, with limits of not less than Five Million Dollars ($5,000,000.00), and
shall cause such policy to be endorsed to state that Licensor and Golfer are
additional named insureds thereunder. A certificate of insurance evidencing such
coverage shall be furnished to Licensor within thirty (30) days of the full
execution of this Agreement. Such insurance policy shall provide that the
insurer shall not terminate or materially modify such policy or remove Licensor
or Golfer as additional named insured without prior written notice to Licensor
at least twenty (20) days in advance thereof.
18. Termination for Default. If either party at any time during the
Contract Period shall (a) fail to make any payment of any sum of money herein
specified to be made, or (b) fail to observe or perform any of the covenants,
agreements, or obligations hereunder (other than the payment of money), the
non-defaulting party may terminate this Agreement as follows: as to (a) if such
payment is not made within ten (10) days after the defaulting party shall have
received written notice of such failure to make payment, or as to (b) if such
default is not cured within thirty (30) days after the defaulting party shall
have received written notice specifying such default. Failure to terminate this
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Agreement pursuant to this section shall not effect or constitute a waiver of
any remedies the non-defaulting party would have been entitled to demand in the
absence of this section, whether by way of damages, termination or otherwise.
Termination of this Agreement for whatever reason shall be without prejudice to
the rights and liabilities of either party to the other in respect of any matter
arising under this agreement.
19. Prohibition on Premium Sales. Company agrees that Licensed Products
will not be sold or otherwise supplied to any third party if such Licensed
Products are intended to be given away free of charge or sold at a substantial
discount by such third party as a part of any plan intended to promote the
products, services or business of any third party.
20. Force Majeure. If at any time during the term of this Agreement,
Licensor is prevented from or hampered or interrupted or interfered with in any
manner whatever in fully performing its duties hereunder, by reason of any
present or future statute, law, ordinance, regulation, order, judgment or
decree, whether legislative, executive or judicial (whether or not later
repealed or determined to be invalid), act of God, earthquake, flood, fire,
epidemic, accident, explosion, casualty, lockout, boycott, strike, labor
controversy (including but not limited to threat of lockout, boycott or strike),
riot, civil disturbance, war or armed conflict (whether or not there has been an
official declaration of war or official statement as to the existence of a state
of war), invasion, occupation, intervention of military forces, act of public
enemy, embargo, delay of a common carrier, inability without fault on Licensor's
part to obtain sufficient material, labor, transportation, power or other
essential commodity required in the conduct of its business; or by reason of any
other cause or causes of any similar nature (all of the foregoing being herein
referred to as an "event of force majeure"), then Licensor's obligations
hereunder shall be suspended as often as any such event occurs and during such
periods of time as such events exist and such nonperformance shall not be deemed
to be a breach of this agreement.
21. Use of Golfer Identification After Termination. It is understood
and agreed by Company that from and after the termination or expiration of the
Contract Period, all of the rights of Company to the use of the Golfer
Identification shall, except as hereinafter expressly provided in the paragraph
next following, cease absolutely, and Company shall not thereafter manufacture
or sell any item whatsoever with the use of the Golfer Identification or use the
Golfer Identification in any way whatsoever.
22. Inventory of Licensed Products on Termination. Any Licensed
Products that may have been manufactured by or for Company prior to the early
termination or expiration (if good faith negotiations regarding extension or
renewal of the Agreement were being conducted during the six months immediately
preceding such expiration date) of the Contract Period, or which were in the
process of manufacture by Company, or were required to fill purchase orders from
customers accepted by Company on or prior to date of termination or expiration
(if good faith negotiations regarding extension or renewal of the Agreement were
being conducted during the six months immediately preceding such expiration
date), may be sold by Company during the two hundred seventy (270) day period
next following the date of termination, provided that:
(a) Company is not in default of any term or condition of this
Agreement;
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(b) the quantity of such Licensed Products in inventory at the
time of such termination is not in excess of a reasonable
quantity taking into account Company's sales requirements for
Licensed Products;
(c) Company shall furnish to Licensor within thirty (30) days
after the effective date of the termination of the Contract
Period a written statement of the number and description of
such Licensed Products in inventory as of the effective date
of termination.
(d) Company shall continue to pay to Licensor with respect to such
sales an earned royalty at the rate specified in Paragraph
7(c) hereof without credit or set-off of any other amounts;
(e) earned royalty amounts payable pursuant to this Paragraph
shall be paid within thirty (30) days following the end of
said sell-off period.
23. Limit of Liability. Notwithstanding anything to the contrary
contained herein, in the event Company incurs any expenses, damages or other
liabilities (including, without limitation, reasonable attorneys' fees) in
connection herewith, Licensor's liability to Company hereunder (including, but
not limited to, pursuant to the indemnification provisions hereof) shall not
exceed cash fees, excluding reimbursement of expenses, actually paid to Licensor
by Company hereunder. In no event shall Licensor be liable for any
consequential, punitive, indirect, incidental, reliance, or special damages,
whether or not Licensor has been advised about the possibility thereof. It is
understood Golfer is not a party hereto and has no liability hereunder but is an
intended specific third party creditor beneficiary hereof.
24. Waiver. The failure of either party at any time or times to demand
strict performance by the other of any of the terms, covenants or conditions set
forth herein shall not be construed as a continuing waiver or relinquishment
thereof and each may at any time demand strict and complete performance by the
other of said terms, covenants and conditions.
25. Bankruptcy. If Company shall become bankrupt or insolvent, or if
Company's business shall be placed in the hands of a receiver, assignee or
trustee, whether by voluntary act of Company or otherwise, the Contract Period
shall, at the election of Licensor, immediately terminate.
26. Assignment. This Agreement shall bind and inure to the benefit of
Licensor, and the successors and assigns of Licensor. The rights granted Company
hereunder shall be personal to it and shall not, without the prior written
consent of Licensor, be transferred or assigned to any other party, which
consent shall not be unreasonably withheld. Likewise, Licensor may not assign it
rights or obligations hereunder to any third party other than Golfer or another
entity controlled by Golfer without the Company's prior written consent. In the
event of the merger or consolidation of Company with any other entity, and in
the event that Company is not the surviving entity, Licensor shall have the
right to terminate the Contract Period by so notifying Company in writing on or
before sixty (60) days after Licensor has received notice of such merger or
consolidation.
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27. Significance of Headings. Section headings contained herein are
solely for the purpose of aiding in speedy location of subject matter and are
not in any sense to be given weight in the construction of this agreement.
Accordingly, in case of any question with respect to the construction of this
agreement, it is to be construed as though such section headings had been
omitted.
28. Entire Agreement. This writing constitutes the entire agreement
between the parties hereto and may not be changed or modified except by a
writing signed by the party or parties to be charged thereby.
29. Governing Law. This agreement shall be governed and construed
according to the laws of the State of Tennessee without regard to conflict of
laws. The parties agree to submit to arbitration any dispute related to this
Agreement and agree that the arbitration process shall be the exclusive means
for resolving disputes which the parties cannot resolve. Any arbitration
hereunder shall be conducted under the Dispute Resolution Rules of the American
Arbitration Association ("AAA") as modified herein. Arbitration proceedings
shall take place in Cleveland, Ohio, before a single arbitrator who shall be a
lawyer. All arbitration proceedings shall be confidential. Neither party shall
disclose any information about the evidence produced by the other party in the
arbitration proceedings, except in the course of judicial, regulatory, or
arbitration proceeding, or as may be demanded by government authority. Before
making any disclosure permitted by the preceding sentence, a party shall give
the other party reasonable advance written notice of the intended disclosure and
an opportunity to prevent disclosure. In connection with any arbitration
provisions hereunder, each party shall have the right to take the deposition of
one individual and any expert witness retained by the other party. Additional
discovery may be had only where the arbitrator so orders, upon a showing of
substantial need. Only evidence that is directly relevant to the issues may be
obtained in discovery. Each party bears the burden of persuasion of any claim or
counterclaim raised by that party. The arbitration provisions of this Agreement
shall not prevent any party from obtaining injunctive relief from a court of
competent jurisdiction to enforce the obligations for which such party may
obtain provisional relief pending a decision on the merits by the arbitrator.
Each of the parties hereby consents to the jurisdiction of Ohio courts for such
purpose. The arbitrator shall have authority to award any remedy or relief that
a court of the State of Ohio could grant in conformity to applicable law, except
that the arbitrator shall have no authority to award attorneys' fees or punitive
damages. Any arbitration award shall be accompanied by a written statement
containing a summary of the issues in controversy, a description of the award,
and an explanation of the reasons for the award. The arbitrator's award shall be
final and judgment may be entered upon such award by any court.
30. Reservation of Rights. All rights not herein specifically granted
to Company shall remain the property of Licensor to be used in any manner
Licensor deems appropriate. Company understands that Licensor has reserved the
right to authorize others to use Golfer Identification during the Contract
Period in connection with all tangible and intangible items and services other
than Products themselves.
31. Joint Venture. This Agreement does not constitute and shall not be
construed as constituting a partnership or joint venture between Licensor and
Company. Neither party shall have
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any right to obligate or bind the other party in any manner whatsoever, and
nothing herein contained shall give, or is intended to give, any rights of any
kind to any third person.
IN WITNESS WHEREOF, the parties hereto have caused their duly
authorized representative to execute this agreement to be executed as of the
date first above written.
THE XXXXXX XXXXXX GOLF COMPANY XXXXX XXXXX ENTERPRISES, INC.
By: /s/ Xxxxxx X. Xxxxxxx By: /s/ Xxxxx Xxxxx
---------------------------------- --------------------------------
Name: Xxxxxx X. Xxxxxxx Name: Xxxxx Xxxxx
Title: Chairman & CEO Title: President
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