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Exhibit 10.33
AGREEMENT
THIS AGREEMENT made and entered into this 7th day of February, 1952 by
and between X. X. Xxxxx Corporation, an Ohio corporation having its principal
office at 00 Xxxx Xxxxxxxx Xxxxxx, Xxxxxxxx, Xxxx (hereinafter referred to as
"Xxxxx"), and Xxxxxxxx Xxxxx (hereinafter referred to as "Zacks").
WITNESSETH:
WHEREAS, Zacks has heretofore created and designed certain products
now manufactured by Xxxxx and for which she has been receiving various
designer's fees as from time to time agreed upon by the parties, and
WHEREAS, the parties desire to ratify and confirm the basis for
payments previously made by Xxxxx to Zacks and to evidence in writing the
agreement of the parties as to future payments to be made by Xxxxx to Zacks;
NOW THEREFORE in consideration of the premises and the mutual
covenants hereinafter contained, it is agreed by and between the parties as
follows:
Zacks agrees that Xxxxx may manufacture and sell and Xxxxx agrees to
pay to Zacks three percent (3%) of all gross income received by Xxxxx from the
sale of the following products created and designed by Zacks, to-wit:
1. All snap-on shoulder pads including those known as and sold under
the names Xxxxx Foam and Xxxxx Xxxx.
2. All slippers known as and sold under the names of Angel Treads for
women, Xxxx Xxxxx Angel Treads for men and Platforms.
3. Laundry bags known as and sold under the name of Swishees.
4. Any new items hereafter created and designed by Zacks and
manufactured and sold by Xxxxx.
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Gross income is hereby defined as total sales less returns. excluding,
however, the proceeds from sales of any seconds, close-outs or merchandise sold
below regular list price.
With respect to any new items no fee shall be payable to Zacks from
Xxxxx until such time as Xxxxx shall show a profit on any such new item, profit
to be calculated in accordance with the customary past practice of Xxxxx.
All sums due and payable to Zacks in accordance with the terms of this
agreement shall be credited to her account on or before the last day of each
succeeding month with respect to all products billed during the preceding month.
Xxxxx agrees to make full and true returns to Zacks (which returns
shall be under oath if requested) within one month after the close of each
fiscal year of Xxxxx of all gross income received by the corporation from the
sale of the articles herein licensed to it for manufacture and sale.
All license fees due Zacks from Xxxxx shall be accrued monthly but
Xxxxx may defer payment thereof up to two and one-half months after the close of
each fiscal year of Xxxxx. Upon failure of Xxxxx to make returns as herein
provided or to make payment to Zacks of the license fees as herein provided
within two and one-half months after the close of each fiscal year of Xxxxx,
Zacks may terminate this license by serving written notice upon Xxxxx; but Xxxxx
shall not thereby be discharged from any liability to Zacks for any license fees
due at the time of the service of said notice.
This contract shall not apply to certain shoulder pads created and
designed by Xxxxxxxx Xxxxx covered by patents assigned by her to Xxxxx with
respect
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to which a special agreement entered into by the parties under date of April 7,
1947 shall remain in full force and effect. The parties are also executing as of
this date separate licensing agreements with respect to the manufacture by Xxxxx
of shoulder pads covered by U. S. Patent No. 2,497,808, and washable scuffs with
foam rubber soles covered by U. S. Patent No. 2,563,092, which patents are owned
by Zacks, and with respect to said articles the terms of said special licensing
agreements shall supercede this agreement.
Zacks agrees that she will offer and make available to Xxxxx
exclusively for manufacture and sale all products which may hereafter be created
and designed by her. In the event, however, Xxxxx shall not agree to undertake
the manufacture and sale of any new product, the manufacturing and sale rights
of which shall be offered to it by Zacks, within thirty (30) days after such
offer, Zacks shall be free to offer such new products and the rights of
manufacture and sale therefor to persons, firms or corporations other than
Xxxxx, if she so desires.
In the event Xxxxx shall undertake the manufacture and sale of any
product or products created and designed by Zacks, it shall have the exclusive
privilege to continue the manufacture and sale thereof subject to the
limitations hereinafter contained. Xxxxx agrees that it will not sell, transfer
or assign to any other person, firm or corporation the rights hereby granted to
it by Zacks without her consent in writing.
Xxxxx reserves the right to discontinue the manufacture and sale of
any product or products created and designed by Zacks at any time. If, however,
Xxxxx shall discontinue the manufacture and sale of any such product or products
for a period of three (3) months, Zacks shall be free to license any other
person, firm or corporation to manufacture and sell such product or products
created and designed by her and also to terminate the right of Xxxxx to
manufacture and sell the same in the event Zacks shall so desire. In the event
Xxxxx shall be adjudged a bankrupt or if it shall be placed in receivership, or
if it shall make an assignment for the benefit of its creditors, then and in any
one of such events Zacks shall be free to license any
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other person, firm or corporation to manufacture and sell all or
any of the products covered by this agreement created and designed by her, and
also to terminate all or any of the rights herein granted to Xxxxx in the event
Zacks shall so desire.
This agreement shall supercede all previous agreements between the
parties with respect to creator's and designer's fees and royalties payable by
Xxxxx to Zacks.
IN WITNESS WHEREOF, the parties hereto have executed this agreement as
of the day and year first above-mentioned.
In the Presence of: X. X. XXXXX CORPORATION
/s/ Xxxxxxx X. Xxxxx By: /s/ Xxxxx Xxxxx
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/s/ Xxxx X. Xxxxxxxx Sec & treasurer
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/s/ Xxxxxxx X. Xxxxx /s/ Xxxxxxxx Xxxxx
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Xxxxxxxx Xxxxx
/s/ Xxxxxxx X. Xxxxx
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AGREEMENT OF AMENDMENT
THIS AGREEMENT, made and entered into this 18th day of September,
1961, by and between X. X. XXXXX CORPORATION (hereinafter referred to as
"XXXXX"), and XXXXXXXX XXXXX (hereinafter referred to as "ZACKS"), WITNESSETH:
WHEREAS, Xxxxx and Zacks under date of February 7, 1952 entered into
an agreement whereby Zacks agreed that Xxxxx may manufacture and sell, and Xxxxx
agreed to pay to Zacks three percent (3%) of all gross income received by Xxxxx
from the sale of certain products created and designed by Zacks, all as in said
agreement more particularly set forth, and
WHEREAS, Xxxxx desires to make a public offering of 100,000 shares of
its stock of the par value of $1.00 each at $5.00 per share through Xxxxxx
Xxxxxx & Co., Inc. as Underwriter, and said Underwriter is reluctant to
undertake the sale of said shares at such price unless there is a reduction in
the rate of the payments to be made by Xxxxx to Zacks under the aforementioned
agreement, and is insistent that a substantial reduction be made as a condition
precedent to the proposed underwriting, and
WHEREAS, the new capital to be received by Xxxxx from such a sale of
additional shares may enable it to increase its business generally with a
resulting increase in the manufacture and sale of the products created and
designed by Zacks, and
WHEREAS, Zacks desires to be helpful in connection with the issuance
by Xxxxx of stock to the public,
NOW, THEREFORE, in consideration of the premises it is agreed by and
between the parties hereto as follows:
If, on or before February 15, 1962, Xxxxx, pursuant to Underwriting
Agreement with Xxxxxx Xxxxxx & Co., Inc., shall sell all of 100,000 shares of
its stock of the par value of
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$1.00 each at $5.00 per share less underwriting discounts, commissions and
expenses, then and in such event the percentage to be paid Zacks by Xxxxx for
1961 and each subsequent year under the aforesaid agreement of February 7, 1952
for the right to manufacture and sell products of Zack's design, not patented,
shall be one and one-half percent (1-1/2%) instead of three percent (3%).
It is expressly understood that this Agreement of Amendment shall be
effective only in the event of consummation of the sale of shares of Xxxxx
hereinabove set forth, and that if such sale be not consummated, this Amendment
shall be of no force and effect.
IN WITNESS WHEREOF, the parties hereto have executed this agreement as
of the day and year first abovementioned. In the Presence of:
X. X. XXXXX CORPORATION
/s/ Xxxxxx X. Xxxx By /s/ Xxxxx Xxxxxx
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Xxxxxx X. Xxxx Xxxxx Xxxxxx, President
/s/ Xxxxxxx X. Xxxxx /s/ Xxxxxxxx Xxxxx
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Xxxxxxx X. Xxxxx Xxxxxxxx Xxxxx
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SECOND AMENDMENT TO
AGREEMENT
THIS AGREEMENT, made and entered into this 15th day of April, 1968, by
and between X. X. XXXXX CORP. (hereinafter referred to as "XXXXX") and XXXXXXXX
XXXXX (hereinafter referred to as "ZACKS",
W I T N E S S E T H:
WHEREAS, XXXXX and ZACKS, under date of February 7, 1952, entered into
an agreement whereby ZACKS agreed that XXXXX would manufacture and sell, and
XXXXX agreed to pay to ZACKS three percent (3%) of all gross income received by
XXXXX from the sale of certain products created and designed by ZACKS, all as in
said agreement more particularly set forth, and
WHEREAS, under date of September 18, 1961, the aforesaid agreement was
amended to reduce from three percent (3%) to one and one-half percent (1-1/2%),
the fees to be paid by XXXXX to ZACKS, and
WHEREAS, XXXXX and ZACKS mutually desire to remove any ambiguity in
the original agreement regarding the period of time said agreement is to be in
force, and
WHEREAS, XXXXX desires in connection with a proposed secondary
underwriting to have its liability under the aforesaid agreement more definite
and certain, and
WHEREAS, ZACKS feels it is in her best interest at this time to
resolve any doubt as to the term of said agreement, and to reduce on a sliding
scale the fees to be paid by XXXXX to ZACKS in the event a successful secondary
underwriting can be achieved.
NOW, THEREFORE, in consideration of the premises, it is agreed by and
between the parties hereto that said agreement of February 7, 1952, as amended
September 18, 1961, be, and is hereby further amended as follows:
l. After the death of XXXXX, XXXXX shall continue to have the right
to manufacture and sell as set forth in the original agreement of February 7,
1952. For a period of five (5) years commencing on the date of ZACKS' death,
XXXXX shall be obligated to make payments in the same manner and respect as if
ZACKS were still living. XXXXX shall pay such sums to such beneficiaries as
ZACKS may designate in a writing delivered to the company. In the absence of
such a designation, XXXXX shall make such payments to the estate of ZACKS.
2. Commencing one (1) year after the completion of a secondary stock
underwriting, the consideration to be paid ZACKS by XXXXX shall be changed from
one and one-half percent (1-1/2%) of gross income from the sale of products
created and designed by ZACKS to one and four-tenths percent (1-4/10%); one (1)
year thereafter the consideration to be paid ZACKS by XXXXX shall be further
changed from one and four-tenths percent (1-4/10%) of said gross income to one
and three-tenths percent (1-3/10%); one (1) year thereafter the consideration
shall be changed from one and three-tenths percent (1-3/10%) of said gross
income to one and two-tenths percent (1-2/10%); one (1) year thereafter said
consideration shall be
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changed from one and two-tenths percent (1-2/10%) of said gross income to one
and one-tenth percent 1-1/10%) and one (1) year thereafter the consideration to
be paid ZACKS by XXXXX shall be changed from one and one-tenths percent 1-1/10%)
of said gross income to one percent (1%). Thereafter, the consideration to be
paid ZACKS by XXXXX shall remain at one percent (1%) of gross income from the
sale of products created and designed by ZACKS until the termination of this
agreement, as provided for in paragraph 1 of this Second Amendment to the
Agreement.
IN WITNESS WHEREOF, the parties hereto have executed this agreement as
of the day and year first above mentioned.
Signed in the presence of:
X. X. XXXXX CORPORATION
/s/ Xxxx X. Xxxxx By /s/ Xxxxx Xxxxxx
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Xxxxx Xxxxxx, Chairman of the Board,
Chief Executive Officer
/s/ Xxxxx X. Xxxxxxxx
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As to X. X. Xxxxx Corporation
/s/ Xxxx X. Xxxxx /s/ Xxxxxxxx Xxxxx
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Xxxxxxxx Xxxxx
now Xxxxxxxx Xxxxxx
/s/ Xxxxx X. Xxxxxxxx
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As to Xxxxxxxx Xxxxx
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THIRD AMENDMENT
THIS AMENDMENT is made this 31st day of October, 2000 by and between
X.X. Xxxxx Corporation, an Ohio corporation (the "Company"), and Xxxxxxxx Xxxxx
Xxxxxx ("Xxx. Xxxxxx");
W I T N E S S E T H:
WHEREAS, the Company and Xxx. Xxxxxx are parties to an Agreement dated
February 7, 1952, as amended by an Agreement of Amendment dated September 18,
1961 and a Second Amendment dated April 15, 1968 (the "Royalty Agreement")
pursuant to which Xxx. Xxxxxx granted to the Company the exclusive right to
utilize various product designs owned by her, including designs created by her
after the date of the Royalty Agreement, in exchange for the Company's agreement
to pay to Xxx. Xxxxxx royalties on its sale of products based on Xxx. Xxxxxx'x
designs;
WHEREAS, Xxx. Xxxxxx has also granted to the Company the exclusive
right to use all patent rights owned by her which relate to slippers and other
products manufactured or sold by the Company and its affiliates;
WHEREAS, Xxx. Xxxxxx has agreed to grant to the Company the option to
purchase and acquire her ownership interest in the product designs and patent
rights described above upon the occurrence of her death or a change of control
of the Company;
WHEREAS, the Company has agreed to grant to Xxx. Xxxxxx, her assigns
and estate, the right to require the Company to purchase and acquire the product
designs and patent rights described above on the occurrence of a change of
control; and
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WHEREAS, the parties hereto desire to amend the Royalty Agreement to
reflect their agreements described above;
NOW, THEREFORE, in consideration of the premises and the mutual
covenants of the parties contained herein and for other good and valuable
consideration, the receipt and sufficiency of which are hereby acknowledged, the
parties hereby agree to amend the Royalty Agreement as follows:
1. The following paragraphs are hereby added to the Royalty
Agreement:
A. Option of Company to Purchase Product Designs and Patent
Rights. Subject to the terms and conditions set forth below, Xxx.
Xxxxxx hereby grants to the Company the right and an option (the
"Company Option") to purchase all of her right, title and ownership
interest in and to the following (together, the "Optioned Property"):
(i) all slippers and other footwear products that have been designed
and/or created by Xxx. Xxxxxx, either alone or with others, including
all product designs, constructions, inventions, know-how and rights
related thereto, (ii) all other items, products, designs and
constructions created by Xxx. Xxxxxx which have been manufactured or
sold by the Company or which have been presented to the Company for
possible manufacture or sale by the Company, and (iii) all patents and
patent rights of Xxx. Xxxxxx which relate to the manufacture of
slippers and other footwear products. The Company Option may be
exercised by the Company at any time during the six-month period
following the earlier of (A) the death of Xxx. Xxxxxx or (B) the
occurrence of a Change of Control (as defined below) of the Company.
The Company Option shall be exercisable by the Company by giving
written notice (the "Company Exercise Notice") of exercise to Xxx.
Xxxxxx or to her assigns or estate, as applicable. The purchase price
(the "Purchase Price") for the
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Optioned Property shall be $750,000 if the Company Option is exercised
following a Change of Control of the Company that occurs prior to the
death of Xxx. Xxxxxx and $500,000 if the Company Option is exercised
following the death of Xxx. Xxxxxx if her death occurs prior to the
occurrence of a Change of Control of the Company.
The Company Exercise Notice shall set forth a date for the
closing of the purchase and sale of the Optioned Property, which shall
be a date not later than 15 days from the date the Company Exercise
Notice is mailed or otherwise delivered (the "Company Option
Closing"). At the Company Option Closing, Xxx. Xxxxxx or her assigns
or estate, as the case may be, shall execute and deliver to the
Company an assignment of the Optioned Property to the Company, free
and clear of any liens or other encumbrances, and the Company shall
pay the Purchase Price to Xxx. Xxxxxx or to her assigns or estate, in
cash or immediately available funds. Xxx. Xxxxxx or her assigns or
estate, as the case may be, shall also execute and deliver all other
instruments of transfer or conveyance that the Company reasonably
deems necessary to vest title in the Optioned Property in the Company.
For purposes of this Amendment, a "Change of Control" of the
Company shall be deemed to have occurred if (i) any individual or
entity or group of related individuals or entities (an "Acquiring
Person"), shall hereafter acquire (or disclose the previous
acquisition of ) beneficial ownership of common shares of the Company
which results in the Acquiring Person possessing more than 20% of the
total voting power of the Company's outstanding common shares; or (ii)
as the result of, or in connection with, any tender or exchange offer,
merger or other business combination, sale of assets or contested
election, or any combination of the foregoing transactions, the
individuals who
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were directors of the Company immediately before the completion of
such transaction shall cease to constitute a majority of the Board of
Directors of the Company or any successor to the Company.
B. Option of Xxx. Xxxxxx to Require Company to Purchase the
Optioned Property. Subject to the terms and conditions set forth
below, the Company hereby grants to Xxx. Xxxxxx, her assigns and
estate the right and option (the "Xxxxxx Option") to require the
Company to purchase the Optioned Property. The Xxxxxx Option may be
exercised by Xxx. Xxxxxx or her estate or assigns at any time during
the six-month period following a Change of Control of the Company that
occurs prior to the death of Xxx. Xxxxxx. The Xxxxxx Option shall be
exercisable by Xxx. Xxxxxx or her assigns or estate by giving written
notice (the "Xxxxxx Exercise Notice") of exercise of the Xxxxxx Option
to the Company. The Purchase Price for the Optioned Property upon
exercise of the Xxxxxx Option shall be $750,000.
The Xxxxxx Exercise Notice shall set forth a date for the closing
of the purchase and sale of the Optioned Property, which shall be a
date not later than 15 days from the date the Xxxxxx Exercise Notice
is mailed or otherwise delivered (the "Xxxxxx Option Closing"). At the
Xxxxxx Option Closing, Xxx. Xxxxxx or her assigns or estate, as the
case may be, shall execute and deliver to the Company an assignment of
the Optioned Property to the Company, free and clear of any liens or
other encumbrances, and the Company shall pay the applicable Purchase
Price to Xxx. Xxxxxx or to her assigns or estate, as applicable, in
cash or immediately available funds. Xxx. Xxxxxx or her assigns or
estate, as applicable, shall also execute and deliver all other
instruments of conveyance
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that the Company reasonably deems necessary to vest title in the
Optioned Property to the Company.
2. Until the Optioned Property is purchased by the Company in
accordance with this Amendment the Royalty Agreement shall remain in full force
and effect. The Royalty Agreement shall terminate automatically and without
further action of either of the parties as of the date of the Company Option
Closing or the Xxxxxx Option Closing (except that the Company shall remain
obligated to make payment of any royalties accruing prior to the date of the
Company Option Closing or the Xxxxxx Option Closing, as the case may be). At the
Company Option Closing or the Xxxxxx Option Closing, as the case may be, the
Company shall pay in full, all accrued and unpaid royalties under the Royalty
Agreement through the date of such closing.
3. This Amendment shall be deemed an amendment of the Royalty
Agreement. The Amendment and the Royalty Agreement (as amended hereby and as
previously amended) embody the complete agreement and understanding between the
parties with respect to the subject matter of such agreements and supersede and
preempt any prior understandings, agreements or representations between the
parties, written or oral, which may have related to the subject matter hereof in
any way.
4. This Amendment may be executed in separate counterparts, each of
which is deemed to be an original and all of which taken together shall
constitute one and the same agreement.
5. THE CONSTRUCTION, VALIDITY AND INTERPRETATION OF THIS AMENDMENT
WILL BE GOVERNED BY THE INTERNAL LAW, AND NOT THE LAW OF CONFLICTS, OF THE STATE
OF OHIO.
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6. This Amendment shall inure to the benefit of and be binding upon
the Company, its successors and assigns. This Amendment shall inure to the
benefit of and be binding upon Xxx. Xxxxxx and Xxx. Xxxxxx'x heirs, legatees,
personal representatives, administrators, executors, successors and assigns. The
rights and obligations of Xxx. Xxxxxx under the Royalty Agreement and this
Amendment may be assigned by Xxx. Xxxxxx without the consent of the Company;
provided, however, that any such assignment must include the transfer to the
assignee of the Optioned Property, which Option Property shall remain subject to
the terms of this Agreement.
7. Whenever possible, each provision of this Amendment shall be
interpreted in such manner as to be effective and valid under applicable law,
but if any provision of this Amendment is held to be prohibited by or invalid
under applicable law, such provision shall be ineffective only to the extent of
such prohibition or invalidity, without invalidating the remainder of this
Amendment.
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IN WITNESS WHEREOF, the parties hereto have executed this Amendment as
of the day and year first above mentioned.
/s/ Xxxxxxxx X. Xxxxxx X.X. XXXXX CORPORATION
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Xxxxxxxx Xxxxx Xxxxxx
By /s/ Xxxxxx X. Xxxxx
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Its CFO
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