INTELLECTUAL PROPERTY MATTERS AGREEMENT between SARA LEE CORPORATION and HANESBRANDS INC.
TABLE OF CONTENTS
Page | ||||
ARTICLE I TRADEMARK MATTERS |
1 | |||
Section 1.1 Limited License |
1 | |||
Section 1.2 Ownership and Protection of the Xxxx Xxx Marks |
2 | |||
Section 1.3 Quality Control and Use of the Xxxx Xxx Marks |
3 | |||
Section 1.4 Term and Termination of Trademark License |
3 | |||
Section 1.5 Trademark Ownership Acknowledgement |
4 | |||
Section 1.6 Trademark Database |
4 | |||
Section 1.7 Xxxx Xxx Redirection of URLs, Domain Names and E-mails |
4 | |||
Section 1.8 Further Assurances and Cooperation |
5 | |||
ARTICLE II SOFTWARE LICENSE |
5 | |||
Section 2.1 Internal Use License Grant |
5 | |||
Section 2.2 License Restrictions |
5 | |||
Section 2.3 Intellectual Property |
6 | |||
Section 2.4 Confidentiality |
6 | |||
Section 2.5 Notice of Infringement |
6 | |||
Section 2.6 Acknowledgment Regarding No Further Actions |
6 | |||
Section 2.7 Third Party Consents |
6 | |||
Section 2.8 Term and Termination of Software License |
6 | |||
ARTICLE III MISCELLANEOUS |
7 | |||
Section 3.1 Survival; No Cross-Defaults |
7 | |||
Section 3.2 Disclaimer of Warranties |
7 | |||
Section 3.3 Limitation of Liability |
7 | |||
Section 3.4 Conflict with Separation Agreement |
8 | |||
Section 3.5 Independent Contractors |
8 | |||
Section 3.6 Compliance with Laws |
8 | |||
Section 3.7 Entire Agreement |
8 | |||
Section 3.8 Amendments and Waivers |
8 | |||
Section 3.9 No Implied Waivers; Cumulative Remedies; Writing Required |
8 | |||
Section 3.10 Parties In Interest |
9 | |||
Section 3.11 Assignment; Change of Control; Binding Agreement |
9 | |||
Section 3.12 Notices |
9 | |||
Section 3.13 Severability |
10 | |||
Section 3.14 Construction |
10 | |||
Section 3.15 Counterparts |
10 | |||
Section 3.16 Delivery by Facsimile and Other Electronic Means |
10 | |||
Section 3.17 Governing Law |
10 | |||
Section 3.18 Submission to Jurisdiction |
11 | |||
Section 3.19 Waiver of Jury Trial |
11 | |||
Section 3.20 Amicable Resolution |
11 |
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Section 3.21 Arbitration |
11 | |||
ARTICLE IV DEFINITIONS |
11 |
This Intellectual Property Matters Agreement (this “Agreement”), dated as of August
31, 2006, is by and between Xxxx Xxx Corporation, a Maryland corporation (“Xxxx Xxx”), and
Hanesbrands Inc., a Maryland corporation (“HBI”).
RECITALS
WHEREAS, the board of directors of Xxxx Xxx has determined that it is appropriate and
desirable to separate the Branded Apparel Business of Xxxx Xxx from its other businesses;
WHEREAS, in order to effectuate the foregoing, Xxxx Xxx and HBI have entered into a Master
Separation Agreement dated as of August 31, 2006 (as amended, modified and/or restated from time to
time, the “Separation Agreement”), which provides, among other things, subject to the terms
and conditions set forth therein, for the Separation and the Contribution, and for the execution
and delivery of certain other agreements in order to facilitate and provide for the foregoing; and
WHEREAS, the Parties desire to set forth in this Agreement certain rights and obligations
related to Intellectual Property matters necessary in order to ensure an orderly transition under
the Separation Agreement.
NOW, THEREFORE, in consideration of the mutual agreements, provisions and covenants contained
herein, and subject to and on the terms and conditions herein set forth, the Parties hereby agree
as follows.
ARTICLE I
TRADEMARK MATTERS
Section 1.1 Limited License.
(a) Trademark License Grant. Subject to the terms and conditions of this Agreement,
Xxxx Xxx grants to HBI a fully-paid-up, royalty-free, non-exclusive and non-transferable (except as
expressly provided in Section 3.11 of this Agreement) license, without the right to sublicense
(except as expressly permitted in this Section 1.1(a)), (i) to use the Xxxx Xxx Marks, and (ii) to
permit its Affiliated Companies to use the Xxxx Xxx Marks, in each case in the Territory and solely
in connection with Xxxx Xxx Materials. HBI shall be responsible for causing any of its Affiliated
Companies so licensed hereunder to comply with the terms and conditions of the Trademark License
Agreement. Furthermore, the Parties expressly agree that HBI and its Affiliated Companies may
sublicense the Xxxx Xxx Marks to agents and contractors of HBI and its Affiliated Companies who are
retained to provide services to HBI or its Affiliated Companies to use the Xxxx Xxx Marks solely in
connection with Xxxx Xxx Materials for purposes of providing such services to HBI and its
Affiliated Companies, HBI and its Affiliated Companies being and remaining responsible for
compliance of such third parties with this Trademark License Agreement in such use.
(b) Obligation to Discontinue Use. HBI shall use its reasonable best efforts to
discontinue use of, or to remove the Xxxx Xxx Marks from, all Xxxx Xxx Materials as soon as
possible
after the Distribution Date. Notwithstanding the foregoing, upon expiration or termination
of the Trademark License Agreement, all rights of HBI to use the Xxxx Xxx Marks shall terminate
immediately and shall revert to Xxxx Xxx, and HBI shall discontinue all use of the Xxxx Xxx Marks
and Xxxx Xxx Materials as soon as is commercially reasonable. In connection with the foregoing,
upon Xxxx Xxx’x written request, a corporate officer of HBI shall certify that, based upon a
reasonable investigation, HBI has either: (i) destroyed the Xxxx Xxx Materials as of the effective
date of such termination or expiration; or (ii) removed the Xxxx Xxx Marks from the Xxxx Xxx
Materials. The obligation to discontinue use described in this Section 1.1(b) shall not apply to
Xxxx Xxx Materials that, as of the date of expiration or termination of the Trademark License
Agreement, HBI or any of its Affiliated Companies has released into the stream of commerce and that
are no longer under HBI’s control.
(c) Obligation to Cease Ordering Materials. As of the Distribution Date, HBI shall
cease creating and ordering any Materials bearing the Xxxx Xxx Marks.
(d) Corporate Name. Subject to the terms and conditions of this Agreement, Xxxx Xxx
grants to HBI a fully-paid-up, royalty-free, non-exclusive and non-transferable license, without
the right to sublicense (except as expressly permitted in this Section 1.1(d)), to use, and to
permit its Affiliated Companies to use, the Xxxx Xxx Marks solely as part of the HBI corporate
names set forth on Schedule 4 attached hereto in the same manner such corporate names were
used immediately prior to the Distribution Date, provided, however, that HBI and its Affiliated
Companies shall diligently pursue discontinuation of the use of such corporate names by completing
the name change process as soon as practicable after the Distribution Date, but in no event later
than the applicable name change deadline set forth on Schedule 4.
Section 1.2 Ownership and Protection of the Xxxx Xxx Marks.
(a) Xxxx Xxx’x Ownership. HBI shall not directly or indirectly challenge Xxxx Xxx’x
sole and exclusive ownership of all right, title and interest in and to the Xxxx Xxx Marks,
including the goodwill associated therewith. All goodwill arising from HBI’s or its Affiliated
Companies’ use of the Xxxx Xxx Marks shall inure solely to the benefit of Xxxx Xxx. Neither HBI
nor its Affiliated Companies shall acquire any ownership rights in the Xxxx Xxx Marks, variations
thereon, or marks confusingly similar thereto, as a result of exercise of any rights under this
Agreement.
(b) Prohibited Actions. HBI shall not adopt, use, register or apply for registrations
anywhere in the world for the Xxxx Xxx Marks or any other Trademarks that (i) are confusingly
similar to the Xxxx Xxx Marks; (ii) are variations of the Xxxx Xxx Marks; or (iii) incorporate the
Xxxx Xxx Marks. In using the Xxxx Xxx Marks pursuant to this Agreement, HBI shall in no way
represent that it has any rights, title or interest in the Xxxx Xxx Marks other than those
expressly granted under this Agreement.
(c) Notice of Infringement. HBI shall give Xxxx Xxx prompt written notice of any
potential infringement of the Xxxx Xxx Marks by any third party that comes to the attention of (i)
an officer of HBI or its Affiliated Companies, (ii) any general manager of or Person holding a
senior management position with any business segment of HBI or any of its Affiliated Companies, or
(iii) an intellectual property administrator or attorney in the intellectual property law
department of HBI
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or any of its Affiliated Companies. Xxxx Xxx shall have the sole and exclusive
right to enforce any rights in the Xxxx Xxx Marks with respect to the potential infringement. HBI
shall provide Xxxx Xxx, at Xxxx Xxx’x written request and expense, all reasonable assistance that
may be required in any action to enforce Xxxx Xxx’x rights in the Xxxx Xxx Marks.
(d) Protection of Rights in Xxxx Xxx Marks. HBI shall reasonably assist Xxxx Xxx, at
Xxxx Xxx’x written request and expense, to the extent reasonably necessary to protect any of Xxxx
Xxx’x rights in the Xxxx Xxx Marks.
(e) Reservation of Rights. Any rights not expressly granted to HBI with respect to
the Xxxx Xxx Marks under this Agreement are expressly reserved by Xxxx Xxx.
Section 1.3 Quality Control and Use of the Xxxx Xxx Marks.
(a) Quality Control. HBI shall use the Xxxx Xxx Marks only as expressly permitted in
Section 1.1(a) and Section 1.1(d) of this Agreement. HBI shall use the Xxxx Xxx
Marks only in connection with goods or services of a high quality in keeping with the reputation
and goodwill of Xxxx Xxx as of the Distribution Date. HBI shall not, by any act or omission,
tarnish, disparage, or injure the reputation of the Xxxx Xxx Marks or Xxxx Xxx, and the goodwill
associated therewith.
(b) Inspection. HBI shall reasonably cooperate with Xxxx Xxx in facilitating Xxxx
Xxx’x ability to determine the nature and quality of the activities of HBI and its Affiliated
Companies in connection with the Xxxx Xxx Marks. Upon reasonable advance notice (which shall not
be less than three (3) Business Days) and during regular business hours, HBI shall permit Xxxx Xxx
to inspect the relevant facilities and records related to HBI’s or its Affiliated Companies’ use of
the Xxxx Xxx Marks.
(c) Required Notices. In using the Xxxx Xxx Marks in connection with the Xxxx Xxx
Materials, HBI shall duly include all notices and legends with respect to the Xxxx Xxx Marks as are
or may be reasonably requested in writing by Xxxx Xxx or required by applicable federal, state or
local trademark laws.
(d) Compliance. HBI shall comply with all applicable laws and regulations pertaining
to its activities in connection with the Xxxx Xxx Marks.
Section 1.4 Term and Termination of Trademark License.
(a) Term. Except as expressly set forth in Section 1.1(d) of this Agreement
and unless earlier terminated in accordance with Section 1.4(b) of this Agreement, the
Trademark License Agreement shall be in effect from the Distribution Date until the first
anniversary of the Distribution Date.
(b) Termination. The Trademark License Agreement shall automatically terminate upon
HBI’s failure to cure any material breach of this Article I within thirty (30) days after the
receipt of written notice of such material breach from Xxxx Xxx.
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Section 1.5 Trademark Ownership Acknowledgement. The Parties hereby acknowledge that,
as between the Parties, Xxxx Xxx is the sole and exclusive owner of all right, title and interest
in and to the Xxxx Xxx Marks. Further to Section 4.2(a) of the Separation Agreement, the
Parties hereby acknowledge that, as between the Parties and as of the Distribution Date, HBI is the
sole and exclusive owner of all right, title and interest in and to the HBI Trademarks.
Section 1.6 Trademark Database.
(a) Trademark Database Copies. It is the intention of the Parties that, on or before
the Distribution Date, each of Xxxx Xxx and HBI shall possess a copy of the Trademark Database for
each Party’s use. To the extent a Party does not have such a copy, the Parties shall cooperate to
ensure that the Party is able to obtain the copy of the Trademark Database. Each Party shall be
responsible for ensuring that its copy of the Trademark Database and software relating thereto is
properly licensed to such Party by CPi.
(b) HBI Data Deletion. At such time as the Parties deem appropriate in writing, but
in any event within thirty (30) days of the termination or expiration of the Trademark License
Agreement, HBI shall use its reasonable best efforts to delete all data relating to the Xxxx Xxx
Marks that exists in HBI’s copy of the Trademark Database and all such data relating to such Xxxx
Xxx Marks that is otherwise in HBI’s possession or control. At such time as the Parties deem
appropriate in writing, but in any event within thirty (30) days of notice from Xxxx Xxx, HBI shall
use its reasonable best efforts to delete all data relating to the Xxxx Xxx Trademarks (other than
the Xxxx Xxx Marks) that exists in HBI’s copy of the Trademark Database and all such data relating
to such Xxxx Xxx Trademarks (other than the Xxxx Xxx Marks) that is otherwise in HBI’s possession
or control. Within thirty (30) days after each such deletion, HBI shall use reasonable best
efforts to require CPi to certify to Xxxx Xxx that such deletion has occurred, and HBI shall take
all necessary actions to enable CPi to certify such deletion.
Section 1.7 Xxxx Xxx Redirection of URLs, Domain Names and E-mails.
(a) Redirection of URL’s and Domain Names. For a period of twelve (12) months
following the Distribution Date, Xxxx Xxx shall cause all Persons seeking to access or otherwise
utilize the URLs or domain names set forth on Schedule 3 of this Agreement, or the
websites, website content, or web services associated therewith, to be redirected as promptly
and as interruption-free as is reasonably commercially practicable, to the URLs or domain names
designated by, and in accordance with the reasonable instructions of, HBI or its Affiliated
Companies within fifteen (15) days of Xxxx Xxx’x receipt of written notice from HBI designating
such URLs, domain names and providing such instructions, provided that, HBI maintains such
recipient URLs and domain names so that they are current and accessible to the general public.
(b) Redirection of E-mails. For a period of twelve (12) months following the
Distribution Date, Xxxx Xxx shall cause all e-mail messages addressed to an HBI employee who has an
active e-mail account on Xxxx Xxx’x e-mail system as of the Distribution Date to be redirected as
promptly and as interruption-free as is reasonably commercially practicable to such HBI employee’s
active e-mail account on HBI’s e-mail system, provided that Xxxx Xxx shall only be responsible for
redirecting such e-mail messages (i) that are accurately addressed to the applicable Xxxx Xxx
e-mail account; and (ii) to the extent that the characters preceding the “@” sign in the applicable
HBI
4
employee’s HBI e-mail address are identical to, and appear in the same order as, such HBI
employee’s e-mail address prior to the Distribution Date.
Section 1.8 Further Assurances and Cooperation. Each Party, upon the written request
and at the expense of the other Party, shall provide such reasonable cooperation, shall perform
such further reasonable acts, and shall execute and deliver such reasonable documents and
affidavits that may be necessary to: (i) maintain the registration of the Xxxx Xxx Marks or the HBI
Trademarks, (ii) document and record each Party’s rights in the Xxxx xxx Marks and the HBI
Trademarks that it owns as of the Distribution Date; and (iii) prosecute, enforce or defend the
Xxxx Xxx Marks or the HBI Trademarks and any related registrations. Each Party shall reasonably
cooperate with the other Party at such other Party’s expense, in connection with written requests
made pursuant to and in accordance with this Agreement relating to the requesting Party’s
Trademarks, portions of the Trademark Database relating to the requesting Party’s Trademarks, and
the requesting Party’s obligations to any Person, which shall include, without limitation: (x)
locating and/or providing Trademark-related records pertaining to the Xxxx Xxx Marks or the HBI
Trademarks; (y) ensuring appropriate personnel are available to respond to the requesting Party’s
requests; and (z) producing information that is reasonably requested on a timely basis with respect
to the requesting Party’s Trademarks. The rights and obligations set forth in this Section 1.8
shall be in effect from the Distribution Date until such time as the Parties deem appropriate in
writing, but in any event within thirty (30) days after the termination or expiration of the
Trademark License Agreement.
ARTICLE II
SOFTWARE LICENSE
Section 2.1 Internal Use License Grant. To the extent Xxxx Xxx has the right to grant
the following licenses and rights, Xxxx Xxx hereby grants to HBI a limited, fully paid-up,
royalty-free, perpetual, non-transferable (except as expressly provided in Section 3.11 of
this Agreement), non-sublicensable (except as expressly provided in this Section 2.1),
non-exclusive license, (i) to use, copy, perform, display, distribute,
execute, modify and make derivative works of (collectively, “Use”) the Licensed Software
(including the source code and documentation to such Licensed Software) and (ii) to permit its
Affiliated Companies to Use the Licensed Software (including the source code and documentation to
such Licensed Software), in each case solely for Internal Use in the Territory. Furthermore, the
Parties expressly agree that HBI and its Affiliated Companies may sublicense the Licensed Software
to agents and contractors of HBI and its Affiliated Companies who are retained to provide services
to HBI or its Affiliated Companies to Use the Licensed Software for purposes of providing such
services, HBI and its Affiliated Companies being and remaining responsible for (i) compliance of
such third parties with this Software License Agreement in such Use; and (ii) requiring and
verifying that such third parties have destroyed any copies of the Licensed Software in their
possession upon termination.
Section 2.2 License Restrictions. Except as expressly authorized under this Agreement,
HBI shall not knowingly cause or permit the: (i) use, copying, modification, rental, lease,
transfer, sale, assignment, timeshare or distribution of the Licensed Software; or (ii) access to
or Use of the Licensed Software by a third party including in connection with a service bureau,
website or other configuration whereby a third party may have access to and/or Use the Licensed
Software. HBI shall cooperate with Xxxx Xxx in facilitating Xxxx Xxx’x ability to determine the
nature of the
5
activities in connection with the Licensed Software. Upon reasonable advance notice
(which shall not be less than three (3) Business Days) and during regular business hours, HBI shall
permit Xxxx Xxx to inspect its relevant operations and records related to HBI’s use of the Licensed
Software.
Section 2.3 Intellectual Property. As between the Parties, Xxxx Xxx shall retain
ownership of all Intellectual Property rights in the Licensed Software. As between the Parties,
HBI shall own all right, title and interest in and to the HBI Modifications.
Section 2.4 Confidentiality. HBI acknowledges and agrees that the Licensed Software
shall constitute Confidential Operational Information and, subject to Sections 2.1 and
2.2 of this Agreement, shall be treated accordingly under Section 5.3 of the
Separation Agreement.
Section 2.5 Notice of Infringement. In the event (a) an officer of a Party or its
Affiliated Companies, (b) any general manager or Person holding a senior management position with
any business segment of a Party or any of its Affiliated Companies , or (c) any intellectual
property administrator of or an attorney in the intellectual property law department of a Party
becomes aware (i) of circumstances reasonably indicating that a Party’s use of the Licensed
Software may infringe or misappropriate a third party’s Intellectual Property rights; (ii) that a
third party may claim or has claimed that a Party’s use of the Licensed Software infringes or
misappropriates such third party’s Intellectual Property rights; or (iii) that a third party may be
infringing or misappropriating Xxxx Xxx’x Intellectual Property rights in the Licensed Software,
such Party shall notify the other Party of the foregoing as applicable.
Section 2.6 Acknowledgment Regarding No Further Actions. HBI hereby acknowledges that
it possesses a complete and working copy of each Licensed Software program. Notwithstanding
anything to the contrary in this Agreement, the Separation Agreement, or any other Ancillary
Agreements, the Parties hereby acknowledge that Xxxx Xxx shall have no obligation to perform any
actions with respect to the Licensed Software, including, without limitation, to provide delivery,
acceptance testing, custom modifications, training, support, or maintenance (including, without
limitation, providing upgrades, fixes, patches or repairs).
Section 2.7
Third Party Consents. HBI shall be responsible for obtaining all required
licenses, rights, and Consents, if any, from third parties in connection with HBI’s use of the
Licensed Software, including, without limitation, all licenses, rights and Consents from MLM
Information Services.
Section 2.8 Term and Termination of Software License.
(a) Term. The Software License Agreement shall be in effect as of the Distribution
Date and shall remain in effect unless terminated pursuant to this Agreement.
(b) Termination for Breach. The Software License Agreement shall automatically
terminate upon the earlier of the dates on which (i) HBI fails to commence cure of, and use
reasonable, continuing and diligent efforts to cure, any breach of this Software License Agreement
within thirty (30) days after receipt of written notice of such breach from Xxxx Xxx; or (ii) HBI
fails to cure any breach of this Software License Agreement one hundred and twenty (120) days after
HBI’s receipt of written notice of a such breach from Xxxx Xxx.
6
(c) Termination for Convenience. HBI may terminate the Software License Agreement at
any time, in its sole discretion, upon thirty (30) days written notice to Xxxx Xxx.
(d) Effect of Termination. Upon termination of the Software License Agreement, all
rights of HBI and permitted third parties to Use the Licensed Software shall terminate immediately.
Upon termination of the Software License Agreement, HBI shall promptly return to Xxxx Xxx or, at
Xxxx Xxx’x option, destroy all copies of the Licensed Software.
ARTICLE III
MISCELLANEOUS
Section 3.1 Survival; No Cross-Defaults.
(a) Survival. Section 1.2(a), Section 1.2(b), Section 1.2(e), Section 1.4, Section
1.5, Section 1.6, Section 1.7, Section 2.3, Section 2.4, Section 2.8, Section 3.2, Section 3.3, and
Article IV shall survive any expiration or termination of this Agreement in part or in whole.
(b) No Cross-Defaults. For the avoidance of doubt, the termination or expiration of
the Trademark License Agreement or the Software License Agreement shall not affect the validity and
maintenance in force of the other license agreement.
Section 3.2 Disclaimer of Warranties. THE XXXX XXX MARKS AND THE LICENSED SOFTWARE
ARE PROVIDED “AS IS.” XXXX XXX DOES NOT MAKE ANY REPRESENTATIONS OR WARRANTIES OF ANY KIND,
WHETHER ORAL OR WRITTEN, WHETHER EXPRESS, IMPLIED, OR ARISING BY STATUTE, CUSTOM, COURSE OF DEALING
OR TRADE USAGE, WITH RESPECT TO THE SUBJECT MATTER OF THIS AGREEMENT, IN CONNECTION WITH THIS
AGREEMENT, THE XXXX XXX MARKS, OR THE LICENSED SOFTWARE. XXXX XXX SPECIFICALLY DISCLAIMS ANY AND
ALL IMPLIED WARRANTIES OR CONDITIONS OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, AND
NON-INFRINGEMENT IN CONNECTION WITH THIS AGREEMENT, THE XXXX XXX MARKS, AND THE LICENSED SOFTWARE.
XXXX XXX MAKES NO REPRESENTATION OR WARRANTY THAT THE LICENSED SOFTWARE WILL BE FREE FROM DEFECTS,
ERRORS OR HARMFUL CODE, OR THAT THE OPERATION OF THE LICENSED SOFTWARE WILL BE UNINTERRUPTED,
ERROR-FREE, OR IN ACCORDANCE WITH ANY DOCUMENTATION OR SPECIFICATIONS, OR THAT DEFECTS IN THE
LICENSED SOFTWARE WILL BE CORRECTED.
Section 3.3 Limitation of Liability. TO THE MAXIMUM EXTENT ALLOWED UNDER APPLICABLE
LAW, IN NO EVENT WILL XXXX XXX BE LIABLE FOR ANY INDIRECT, SPECIAL, INCIDENTAL, CONSEQUENTIAL,
EXEMPLARY OR PUNITIVE DAMAGES ARISING OUT OF OR IN CONNECTION WITH THIS AGREEMENT, INCLUDING BUT
NOT LIMITED TO DAMAGES FOR LOST DATA, LOST PROFITS OR COSTS OF PROCUREMENT OF SUBSTITUTE GOODS OR
SERVICES, HOWEVER CAUSED AND UNDER ANY THEORY OF LIABILITY, WHETHER BASED IN CONTRACT, TORT
(INCLUDING NEGLIGENCE), STATUTE OR OTHERWISE, AND WHETHER OR NOT XXXX XXX WAS OR SHOULD HAVE BEEN
AWARE OR ADVISED OF THE POSSIBILITY OF
7
SUCH DAMAGE. EXCEPT WITH RESPECT TO HBI’S OBLIGATIONS
UNDER Section 1.1(a), Section 1.2 AND Section 1.3 OF THIS AGREEMENT, AND TO
THE MAXIMUM EXTENT ALLOWED UNDER APPLICABLE LAW, IN NO EVENT WILL HBI OR ANY OF ITS AFFILIATED
COMPANIES BE LIABLE FOR ANY INDIRECT, SPECIAL, INCIDENTAL, CONSEQUENTIAL, EXEMPLARY OR PUNITIVE
DAMAGES ARISING OUT OF OR IN CONNECTION WITH THIS AGREEMENT, INCLUDING BUT NOT LIMITED TO DAMAGES
FOR LOST DATA, LOST PROFITS OR COSTS OF PROCUREMENT OF SUBSTITUTE GOODS OR SERVICES, HOWEVER CAUSED
AND UNDER ANY THEORY OF LIABILITY, WHETHER BASED IN CONTRACT, TORT (INCLUDING NEGLIGENCE), STATUTE
OR OTHERWISE, AND WHETHER OR NOT HBI WAS OR SHOULD HAVE BEEN AWARE OR ADVISED OF THE POSSIBILITY
OF SUCH DAMAGE.
Section 3.4 Conflict with Separation Agreement. In the event of any conflict between the terms and conditions of this Agreement and the
terms and conditions of the Separation Agreement, the terms and conditions of this Agreement shall
control.
Section 3.5 Independent Contractors. The Parties each acknowledge that they are
separate entities, each of which has entered into this Agreement for independent business reasons.
The relationships of the Parties hereunder are those of independent contractors and nothing
contained herein shall be deemed to create a joint venture, employer/employee, partnership or any
other relationship.
Section 3.6 Compliance with Laws. Each Party shall comply with all applicable laws,
rules, regulations and orders of the United States, all other jurisdictions and any agency or court
thereof.
Section 3.7 Entire Agreement. This Agreement, the Separation Agreement and the
Ancillary Agreements constitutes the entire agreement among the Parties with respect to the subject
matter hereof and thereof and supersedes all prior agreements and understandings, both written and
oral, between the Parties with respect to the subject matter hereof and thereof. All Schedules and
Exhibits referred to herein are hereby incorporated in and made a part of this Agreement as if set
forth in full herein.
Section 3.8 Amendments and Waivers. This Agreement may be amended and any provision
of this Agreement may be waived, provided that any such amendment or waiver shall be binding upon a
Party only if such amendment or waiver is set forth in a writing executed by such Party. No course
of dealing between or among any Persons having any interest in this Agreement shall be deemed
effective to modify, amend or discharge any part of this Agreement or any rights or obligations of
any Party hereto under or by reason of this Agreement.
Section 3.9 No Implied Waivers; Cumulative Remedies; Writing Required. No delay or
failure in exercising any right, power or remedy hereunder shall affect or operate as a waiver
thereof; nor shall any single or partial exercise thereof or any abandonment or discontinuance of
steps to enforce such a right, power or remedy preclude any further exercise thereof or of any
other right, power or remedy. The rights and remedies hereunder are cumulative and not exclusive
of any rights or remedies that any Party hereto would otherwise have. Any waiver, permit, consent
or approval of any kind or character of any breach or default under this Agreement or any such
waiver of any
8
provision of this Agreement must satisfy the conditions set forth in Section
3.12 of this Agreement and shall be effective only to the extent in such writing specifically
set forth.
Section 3.10 Parties In Interest. Except for the right to use the Licensed Software granted to HBI’s Affiliated Companies,
agents and contractors under Section 2.1 of this Agreement, nothing in this Agreement is
intended to confer on any Person other than the Parties, and their respective successors and
permitted assigns, any rights or remedies of any nature whatsoever under or by virtue of this
Agreement. Notwithstanding anything to the contrary contained in this Agreement, no Person (except
HBI’s Affiliated Companies) shall be deemed a third-party beneficiary of this Agreement.
Section 3.11
Assignment; Change of Control; Binding Agreement. This Agreement,
including the rights granted hereunder to HBI, are personal to HBI. HBI shall not voluntarily, or
by operation of law or otherwise, assign, transfer, sublicense (except as expressly provided in
Sections 1.1(a) and 2.1 of this Agreement), pledge, encumber or otherwise dispose of all or any
part of HBI’s interest in this Agreement without Xxxx Xxx’x prior written consent, to be granted or
withheld in Xxxx Xxx’x absolute discretion. Any attempted assignment, transfer, sublicense (except
as expressly provided in Sections 1.1(a) and 2.1 of this Agreement), pledge, encumbrance or other
disposal without such consent shall be void and shall constitute a material default and breach of
this Agreement. For purposes of this Agreement, a merger, consolidation, or other corporate
reorganization, or a transfer or sale of a controlling interest in a party’s stock, or of all or
substantially all of its assets shall be deemed to be a prohibited transfer under this Agreement.
Xxxx Xxx may assign this Agreement or any of the rights, interests or obligations under this
Agreement, in whole or in part. Subject to the foregoing, this Agreement will be binding upon,
inure to the benefit of, and be enforceable by, the Parties and their respective successors and
permitted assigns.
Section 3.12 Notices. All notices, demands and other communications given under this
Agreement must be in writing and must be either personally delivered, telecopied (and confirmed by
telecopy answer back), mailed by first class mail (postage prepaid and return receipt requested),
or sent by reputable overnight courier service (charges prepaid) to the recipient at the address or
telecopy number indicated below or such other address or telecopy number or to the attention of
such other Person as the recipient Party shall have specified by prior written notice to the
sending Party. Any notice, demand or other communication under this Agreement shall be deemed to
have been given when so personally delivered or so telecopied and confirmed (if telecopied before
5:00 p.m. Eastern Standard Time on a business day, and otherwise on the next business day), or if
sent, one business day after deposit with an overnight courier, or, if mailed, five business days
after deposit in the U.S. mail.
Xxxx Xxx Corporation,
Three First Xxxxxxxx Xxxxx
Xxxxxxx, Xxxxxxxx 00000-0000
Attention: General Counsel
Facsimile Number: (000) 000-0000
Three First Xxxxxxxx Xxxxx
Xxxxxxx, Xxxxxxxx 00000-0000
Attention: General Counsel
Facsimile Number: (000) 000-0000
Hanesbrands Inc.
0000 Xxxx Xxxxx Xxxx Xxxx
Xxxxxxx-Xxxxx, Xxxxx Xxxxxxxx 00000.
Attention: General Counsel
0000 Xxxx Xxxxx Xxxx Xxxx
Xxxxxxx-Xxxxx, Xxxxx Xxxxxxxx 00000.
Attention: General Counsel
Facsimile Number: (000) 000-0000
9
Section 3.13 Severability. The Parties agree that (i) the provisions of this
Agreement shall be severable in the event that for any reason whatsoever any of the provisions
hereof are invalid, void or otherwise unenforceable, (ii) any such invalid, void or otherwise
unenforceable provisions shall be replaced by other provisions which are as similar as possible in
terms to such invalid, void or otherwise unenforceable provisions but are valid and enforceable,
and (iii) the remaining provisions shall remain valid and enforceable to the fullest extent
permitted by applicable law.
Section 3.14 Construction. The descriptive headings herein are inserted for
convenience of reference only and are not intended to be a substantive part of or to affect the
meaning or interpretation of this Agreement. Whenever required by the context, any pronoun used in
this Agreement shall include the corresponding masculine, feminine or neuter forms, and the
singular forms of nouns, pronouns, and verbs shall include the plural and vice versa. Reference to
any agreement, document, or instrument means such agreement, document, or instrument as amended or
otherwise modified from time to time in accordance with the terms thereof, and if applicable
hereof. The use of the words “include” or “including” in this Agreement shall be by way of example
rather than by limitation. The use of the words “or,” “either” or “any” shall not be exclusive.
The words “hereby,” “herein,” “hereunder” and words of similar import refer to this Agreement as a
whole (including any Schedules, Attachments and Exhibits) and not merely to the specific section,
paragraph or clause in which any such word appears. The Parties have participated jointly in the
negotiation and drafting of this Agreement. In the event an ambiguity or question of intent or
interpretation arises, this Agreement shall be construed as if drafted jointly by the Parties
hereto, and no presumption or burden of proof shall arise favoring or disfavoring any Party by
virtue of the authorship of any of the provisions of this Agreement. The Parties agree that prior
drafts of this Agreement shall be deemed not to provide any evidence as to the meaning of any
provision hereof or the intent of the Parties hereto with respect hereto.
Section 3.15 Counterparts. This Agreement may be executed in multiple counterparts
(any one of which need not contain the signatures of more than one Party), each of which shall be
deemed to be an original but all of which taken together shall constitute one and the same
agreement.
Section 3.16 Delivery by Facsimile and Other Electronic Means. This Agreement, and
any amendments hereto, to the extent signed and delivered by means of a facsimile machine or other
electronic transmission, shall be treated in all manner and respects as an original contract and
shall be considered to have the same binding legal effects as if it were the original signed
version thereof delivered in person. At the request of any Party, each other Party shall
re-execute original forms thereof and deliver them to the other Party. No Party shall raise the
use of a facsimile machine or other electronic means to deliver a signature or the fact that any
signature was transmitted or communicated through the use of facsimile machine or other electronic
means as a defense to the formation of a contract and each such Party forever waives any such
defense.
Section 3.17 Governing Law. All questions concerning the construction, validity and
interpretation of this Agreement shall be governed by and construed in accordance with the domestic
laws of the State of Illinois, without giving effect to any choice of law or conflict of law
provision (whether of the State of Illinois or any other jurisdiction) that would cause the
application of the laws of any jurisdiction other than the State of Illinois.
10
Section 3.18 Submission to Jurisdiction. EACH OF THE PARTIES IRREVOCABLY SUBMITS (FOR
ITSELF AND IN RESPECT OF ITS PROPERTY) TO THE JURISDICTION OF ANY STATE OR FEDERAL COURT SITTING IN
CHICAGO, ILLINOIS, OR GREENSBORO, NORTH CAROLINA, IN ANY ACTION OR PROCEEDING ARISING OUT OF OR
RELATING TO THIS AGREEMENT AND AGREES THAT ALL CLAIMS IN RESPECT OF THE ACTION OR PROCEEDING MAY BE
HEARD AND DETERMINED IN ANY SUCH COURT. EACH PARTY ALSO AGREES NOT TO BRING ANY ACTION OR
PROCEEDING ARISING OUT OF OR RELATING TO THIS AGREEMENT IN ANY OTHER COURT. EACH OF THE PARTIES
WAIVES ANY DEFENSE OF INCONVENIENT FORUM TO THE MAINTENANCE OF ANY ACTION OR PROCEEDING SO BROUGHT
AND WAIVES ANY BOND, SURETY, OR OTHER SECURITY THAT MIGHT BE REQUIRED OF ANY OTHER PARTY WITH
RESPECT THERETO. ANY PARTY MAY MAKE SERVICE ON ANY OTHER PARTY BY SENDING OR DELIVERING A COPY OF
THE PROCESS TO THE PARTY TO BE SERVED AT THE ADDRESS AND IN THE MANNER PROVIDED FOR THE GIVING OF
NOTICES IN Section 3.12 OF THIS AGREEMENT. NOTHING IN THIS SECTION 3.18, HOWEVER, SHALL
AFFECT THE RIGHT OF ANY PARTY TO SERVE LEGAL PROCESS IN ANY OTHER MANNER PERMITTED BY LAW OR AT
EQUITY. EACH PARTY AGREES THAT A FINAL JUDGMENT IN ANY ACTION OR PROCEEDING SO BROUGHT SHALL BE
CONCLUSIVE AND MAY BE ENFORCED BY SUIT ON THE JUDGMENT OR IN ANY OTHER MANNER PROVIDED BY LAW OR AT
EQUITY.
Section 3.19 Waiver of Jury Trial. AS A SPECIFICALLY BARGAINED FOR INDUCEMENT FOR
EACH OF THE PARTIES HERETO TO ENTER INTO THIS AGREEMENT (AFTER HAVING THE OPPORTUNITY TO CONSULT
WITH COUNSEL), EACH PARTY EXPRESSLY WAIVES THE RIGHT TO TRIAL BY JURY IN ANY LAWSUIT OR PROCEEDING
RELATING TO OR ARISING IN ANY WAY FROM THIS AGREEMENT OR THE MATTERS CONTEMPLATED HEREBY.
Section 3.20 Amicable Resolution. The Parties desire that friendly collaboration will
develop between them. Accordingly, they will try to resolve in an amicable manner all disputes and
disagreements connected with their
respective rights and obligations under this Agreement in accordance with Section 6.12
of the Separation Agreement.
Section 3.21 Arbitration. Except for suits seeking injunctive relief or specific
performance, in the event of any dispute, controversy or claim arising under or in connection with
this Agreement (including any dispute, controversy or claim relating to the breach, termination or
validity thereof), the Parties agree to submit any such dispute, controversy or claim to binding
arbitration in accordance with Section 6.13 of the Separation Agreement.
ARTICLE IV
DEFINITIONS
Capitalized terms used herein and not otherwise defined herein shall have the meanings set
forth in the Separation Agreement. In addition, for purposes of this Agreement, the following
terms shall have the following meanings:
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“Business Day” shall mean each weekday (Monday, Tuesday, Wednesday, Thursday and
Friday), excluding all federally mandated holidays in the United States.
“CPi” shall mean Computer Packages, Inc.
“HBI Modifications” shall mean any modifications, fixes, improvements, revisions, or
derivative works to the Licensed Software created by or on behalf of HBI or any of its Affiliated
Companies.
“HBI Trademarks” shall mean all Trademarks constituting HBI Assets under the
Separation Agreement.
“Internal Use” shall mean the installation, copying or other Use, solely in connection
with conducting the Branded Apparel Business, of the Licensed Software on computers owned, leased
or otherwise controlled by, or used for the benefit of, HBI or its Affiliated Companies and not for
any other purpose, including, without limitation, operation of the Licensed Software for other
entities on a service bureau basis.
“Licensed Software” shall mean the software programs set forth on Schedule 2
of this Agreement, including all object code and source code for each program and all
documentation, if any exists, for each program.
“Materials” shall mean packaging, catalogs, brochures, circulars, advertising
materials, point of sale materials, sampling materials, sales collateral materials, publicity and
public relations, signage, websites, website content and all other materials, stationery, business
cards, business forms and similar organizational items that are produced by or on behalf of HBI or
any of its Affiliated Companies and used to operate, market, promote and advertise HBI, any of its
Affiliated Companies, or any of their respective products or services.
“Parties” shall mean Xxxx Xxx and HBI.
“Xxxx Xxx Marks” shall mean the Trademarks set forth on Schedule 1.
“Xxxx Xxx Materials” shall mean any Materials bearing, displaying or otherwise using
the Xxxx Xxx Marks that are owned by, and in the control of, HBI or any of its Affiliated Companies
as of the Distribution Date.
“Xxxx Xxx Trademarks” shall mean all Trademarks owned by Xxxx Xxx including the Xxxx
Xxx Marks.
“Separation Agreement” shall have the meaning set forth in the preamble of this
Agreement.
“Software License Agreement” shall mean the rights and obligations set forth in
Article III and Article IV of this Agreement.
“Territory” shall mean all territory throughout the world.
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“Trademark Database” shall mean CPi Intellectual Property Management System
v.05.04.08 comprised of the follow three applications: Patent Management System, Trademark
Management System and General Matter Management System.
“Trademarks” shall mean trademarks, service marks, trade names, logos and slogans (and
all applications for registration, translations, adaptations, derivations and combinations of the
foregoing) and Internet domain names, including the goodwill relating to each of the foregoing.
“Trademark License Agreement” shall mean the rights and obligations set forth in
Article I and Article IV of this Agreement.
“URL” shall mean a Uniform Resource Locator.
“Use” has the meaning set forth in Section 2.1.
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IN WITNESS WHEREOF, each Party has caused this Intellectual Property Matters Agreement to be
executed on its behalf by its officers hereunto duly authorized on the day and year first above
written.
XXXX XXX CORPORATION |
||||
By: | /s/ Xxxxx X. Xxxxxxxx | |||
Xxxxx X. Xxxxxxxx | ||||
Senior Vice President | ||||
HANESBRANDS INC. |
||||
By: | /s/ Xxxxxxx X. Xxxx | |||
Xxxxxxx X. Xxxx | ||||
Chief Executive Officer |
Schedule 1
Xxxx Xxx Marks
Xxxx Xxx Marks
The “Xxxx Xxx Marks” shall include the following three trademarks:
1. XXXX XXX (word xxxx)
2. XXXX XXX (Stylized in White with Red or Black Background)
3. XXXX XXX (Stylized in Red)
4. Any and all trademarks, trade names and logos, comprised of one or more of the foregoing three
trademarks and additional elements, including, but not limited to the following:
XXXX XXX BRANDED APPAREL
XXXX XXX CORPORATION
XXXX XXX COMPANY
XXXX XXX FOUNDATION
XXXX XXX LEGAL
XXXX XXX LAW
XXXX XXX MEXICO
XXXX XXX BRAZIL
XXXX XXX ARGENTINA
XXXX XXX JAPAN
XXXX XXX PHILIPPINES
XXXX XXX SOUTH AFRICA
XXXX XXX INDIA
XXXX XXX SHANGHAI
XXXX XXX CENTER FOR WOMEN’S HEALTH
XXXX XXX SOCCER FIELDS
XXXX XXX UNDERWEAR
XXXX XXX HOSIERY
XXXX XXX SOCKS
XXXX XXX INTIMATES
XXXX XXX CASUALWEAR
XXXX XXX SPORTSWEAR
XXXX XXX CORPORATION
XXXX XXX COMPANY
XXXX XXX FOUNDATION
XXXX XXX LEGAL
XXXX XXX LAW
XXXX XXX MEXICO
XXXX XXX BRAZIL
XXXX XXX ARGENTINA
XXXX XXX JAPAN
XXXX XXX PHILIPPINES
XXXX XXX SOUTH AFRICA
XXXX XXX INDIA
XXXX XXX SHANGHAI
XXXX XXX CENTER FOR WOMEN’S HEALTH
XXXX XXX SOCCER FIELDS
XXXX XXX UNDERWEAR
XXXX XXX HOSIERY
XXXX XXX SOCKS
XXXX XXX INTIMATES
XXXX XXX CASUALWEAR
XXXX XXX SPORTSWEAR
Schedule 2
Licensed Software
Licensed Software
Xxxxxxxx-Xxxxx Control Deficiency Tool
GBR Validation
Custom Lease
Property Updates
Global Litigation Administration System (GLAS — Legal Fees)
LRN SSO (Application to allow Single Sign-on to Legal Ez Training)
Global Environmental Performance Measurement (GEPM)
Global Business Practice Annual Report (GBP_AR)
Global Environmental Mgmt System (GEMS)
Single Sign-on Solutions for Extensity, Ariba & InFlight
GDX Schedule Templates
Schedule 3
Domain Names and URLs
Domain Names and URLs
Corporate | ||||
Domain Name | Owner | |||
xxxxxxxxxxxxx.xxx |
SLC/SLBA | |||
xxxxxxxxxxxxxxxxxxxxxx.xxx |
SLC/SLBA | |||
xxxxxxxxxxxxxxxxxxxxxx.xxx |
SLC/SLBA | |||
xxxxxxxxxxxxxxxxxxxxxx.xxx |
SLC/SLBA | |||
xxxxxxxxxxxxxxxx.xxx |
SLC/SLBA | |||
xxxxxxxxxxxxxxxxx.xx |
SLC/SLBA | |||
xxxxxxxxxxxxxxxxx.xx |
SLC/SLBA | |||
xxxxxxxxxxxxxxxxx.xx |
SLC/SLBA | |||
xxxxxxxxxxxxxxxxx.xx.xx |
SLC/SLBA | |||
xxxxxxxxxxxxxxxxx.xx.xx |
SLC/SLBA | |||
xxxxxxxxxxxxxxxxx.xxx |
SLC/SLBA | |||
xxxxxxxxxxxxxxxxx.xxx.xx |
SLC/SLBA | |||
xxxxxxxxxxxxxxxxx.xx |
SLC/SLBA | |||
xxxxxxxxxxxxxxxxx.xx |
SLC/SLBA | |||
xxxxxxxxxxxxxxxxx.xx |
SLC/SLBA | |||
xxxxxxxxxxxxxxxxx.xxx.xx |
SLC/SLBA | |||
xxxxxxxxxxxxxxxxx.xx |
SLC/SLBA | |||
xxxxxxxxxxxxxxxxx.xx |
SLC/SLBA | |||
xxxxxxxxxxxxxxxxx.xx |
SLC/SLBA | |||
xxxxxxxxxxxxxxxxx.xx |
SLC/SLBA | |||
xxxxxxxxxxxxxxxxx.xxx |
SLC/SLBA | |||
xxxxxxxxxxxxxxxxx.xx |
SLC/SLBA | |||
xxxxxxxxxxxxxxxxx.xx |
SLC/SLBA | |||
xxxxxxxxxxxxxxxxx.xx |
SLC/SLBA | |||
xxxxxxx.xxx |
SLC/SLBA | |||
xxxxxxx.xxx |
SLC/SLBA | |||
xxxxxxxxxxxx.xxx |
SLC/SLBA | |||
xxxxxxxxxx.xxx |
SLC/SLBA | |||
xxxxxxxx.xxx |
SLC/SLBA | |||
xxx-x0x.xxx |
SLC/SLBA | |||
xxxxxxx.xxx |
SLC/SLBA | |||
xxxxxx.xxx |
SLC/SLBA | |||
xxx-xxxxxx.xxx |
SLC/SLBA | |||
xxxxxxx.xxx |
SLC/SLBA | |||
xxxxxxx.xxx |
SLC/SLBA | |||
xxxxxxx.xxx |
SLC/SLBA | |||
xxxx.xxx |
SLC/SLBA | |||
xxxxxxxxxxxx.xxx |
SLC/SLBA | |||
xxxx.xxx |
SLC/SLBA | |||
xxxxxxx.xxx |
SLC/SLBA | |||
xxx-xxxxxx.xxx |
SLC/SLBA | |||
xxxxxxxxxxx.xxx |
SLC/SLBA |
Schedule 4
Delayed Named Subsidiaries
Delayed Named Subsidiaries
Current Name | New Name | Name Change Deadline | ||
Xxxx Xxx Moda
Femenina S.A. de C.V
|
Servicios Rinplay, S. de X.X. de C.V. | September 30, 2006 | ||
Xxxx Xxx Knit
Products Mexico S.A.
de C.V.
|
Inmobilaria Rinplay S. De X.X. de C.V. | September 30, 2006 | ||
Xxxx Xxx Moda
Femenina S.A. de
C.V.
|
Servicios Rinplay, S. de X.X. de C.V. | December 31, 2006 |