EXHIBIT 10.12
UNIFORMS LICENSE AGREEMENT
THIS LICENSE AGREEMENT is entered into and is effective as of the 5th
day of November, 1997 (the "Effective Date"), by and between I.C. Xxxxxx &
Company L.P. ("Licensor") and Brookhurst, Inc. ("Licensee") (each a "Party"
and collectively the "Parties").
R E C I T A L S
WHEREAS, Licensor is the successor in interest of Brookhurst, Inc. to
certain trademark rights in the United States of America relating to the
trademark BOSS; and
WHEREAS, Licensee desires to obtain a limited license to sell to United
Airlines and others its remaining inventory of career apparel bearing the
trademark BOSS in the form of a BOSS logo as depicted in Exhibit A hereto
(hereinafter the "Licensed BOSS Logo");
NOW, THEREFORE, in consideration of the mutual promises and covenants
herein, the receipt and sufficiency of which are hereby acknowledged, the
Parties agree as follows:
1. RIGHTS GRANTED
Without limiting Licensee's covenants under the Worldwide Rights
Acquisition Agreement between Licensor, Licensee and Xxxxxxx Xxx dated
September 30, 1997 (the "Rights Agreement"), Licensor hereby grants to
Licensee the non-exclusive right and license to continue to sell and
distribute throughout the Term (as hereinafter defined) all career apparel
garments bearing the Licensed BOSS Logo, which were in Licensee's inventory
as of the date hereof ("Career Apparel Garments"). This Agreement does not
include any right to sublicense or subcontract any of Licensee's right and
obligations hereunder. Licensee agrees that except as specifically provided
herein nothing set forth in this Agreement or by virtue of any activity or
conduct of Licensee hereunder shall give rise to any claim of right, title or
interest of Licensee in and to the Licensed BOSS Logo.
2. OBLIGATIONS OF THE PARTIES
2.1 Licensee hereby acknowledges Licensor's sole and exclusive right,
title and interest in and to the Licensed BOSS Logo and undertakes that it
will not take any action which may impair Licensor's rights therein,
including, without limitation, by challenging or opposing, or raising any
questions concerning, the validity or ownership of the Licensed BOSS Logo or
by seeking registration therefor or any confusingly similar name. Licensee
shall at Licensor's expense cooperate with and assist Licensor in protecting
and defending the Licensed BOSS Logo, and shall promptly notify Licensor in
writing of any written claims of infringement or actions by others in
derogation of, or claiming rights to, the Licensed BOSS Logo which it
receives.
2.2 Licensee shall permit reasonable inspection by Licensor on prior
written notice of the Licensed Products held in inventory and sold by
Licensee.
2.3 Simultaneously herewith, Licensee has paid to Licensor the annual
license fee of $3,500 (the "Fee") for the first one-year period. An
additional fee shall be payable for each subsequent annual period on or
before the commencement of each such period.
2.4 Within thirty (30) days after termination of this Agreement as set
forth in Section 4 hereof, Licensee will, in Licensee's sole discretion,
either (a) deliver any remaining inventory of Career Apparel Garments bearing
the Licensed BOSS Logo in its possession to Licensor together with an
affidavit of any officer of Licensee that all remaining inventory has been so
delivered, (b) destroy such inventory and provide to Licensor written proof
thereof in the form of an affidavit of an officer to Licensee, or (c) remove
the Licensed BOSS Logo from the Career Apparel Garments and from any labels,
tags and the like and provide to Licensor written proof thereof in the form
of an affidavit of an officer of Licensee.
2.5 Licensee agrees that it shall at all times conduct its activities
under this Agreement in a lawful manner.
3. REPRESENTATIONS AND WARRANTIES
3.1 Licensor represents and warrants that it has full corporate right,
power and authority to enter into this Agreement and to perform all of its
obligations hereunder. NOTHING IN THIS AGREEMENT IS INTENDED TO CREATE ANY
WARRANTY OR REPRESENTATION FOR THE BENEFIT OF LICENSEE OR ANY THIRD PARTY
WITH RESPECT TO THE LICENSED BOSS LOGO OR ANY SIMILAR XXXX, AND LICENSOR
EXPRESSLY DISCLAIMS ANY WARRANTIES, EXPRESS OR IMPLIED WITH RESPECT THERETO,
INCLUDING THE WARRANTIES OF TITLE AND NON-INFRINGEMENT.
3.2 Licensee represents and warrants that it has full right, power and
authority to enter into this Agreement and to perform all of its obligations
hereunder.
3.3 Licensee represents that it has inventories as set forth in
Paragraph 6.6 of the Worldwide Rights Acquisition Agreement.
3.4 Nothing herein contained shall be construed to constitute the
Parties as partners or as joint ventures or either as agent of the other,
and Licensee shall have no power to obligate or bind Licensor, and Licensor
shall have no power to obligate or bind Licensee.
4. TERM AND TERMINATION
4.1 This Agreement shall continue in effect for three (3) years from
the Effective Date of this Agreement, unless terminated earlier pursuant to
Paragraph 4.2 below (the "Term").
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4.2 In the event of a material breach of this Agreement, the
non-breaching party may terminate this Agreement upon ninety (90) days
written notice to the breaching party, specifying the material breach, with
the breaching party having that period in which to cure its breach. In the
event such cure is effected within such time period, this Agreement shall not
terminate as a result of such breach.
5. INDEMNIFICATION AND LIABILITY
5.1 Licensee hereby agrees and acknowledges that Buyer Indemnity
Claims under Section 8.2 of the Worldwide Rights Acquisition Agreement
between the parties of even date shall include any loss, damage, deficiency,
claim, liability, obligation, suit, action, fee, cost or expense of any
nature whatsoever caused to Licensor or any Buyer Affiliates (as defined in
said Agreement) arising out of, based upon or resulting from (i) any product
liability or similar claims arising with respect to products manufactured,
sold or distributed by Licensee, its affiliates or any of their sublicensees
or Xxxxxxx Xxx (the "Licensee Parties"), (ii) claims by third parties (other
than Hugo Boss AG or its affiliates, successors or assigns) arising with
respect to any products manufactured, sold or distributed by any Licensee
Party, and (iii) any breach of or action by any Licensee Party inconsistent
with the terms of this Agreement.
5.2 Notwithstanding any other provision of this Agreement, Licensor
makes no representations or warranties of any kind, and shall have no
responsibility, liability or obligations whatsoever to Licensee or any
Licensee Party as a result of this Agreement (including, without limitation,
for any claims of indemnity), with respect to any matter relating to the
Trademark Assets purchased by Licensor from Licensee under the Rights
Agreement relating to the quality of title, condition or use of the
Trademarks Assets, or the conduct of the business thereunder prior to the
time Licensor acquired the Trademark Assets.
6. GENERAL
Sections 9.1, 9.2, 9.3, 9.4, 9.5, 9.6, 9.7, 9.8, 9.9, 9.10, 9.11, 9.12,
9.13 and 9.14 of the Worldwide Rights Acquisition Agreement are hereby
incorporated herein by this reference, except that references to "Seller" or
"the Selling Parties" shall be deemed replaced by "Licensee" and references
to "Buyer" shall be deemed replaced by "Licensor," and references to
"paragraphs 1.1, 3.2, 3.3, 6.1, 6.2, 6.3, 6.4 and 6.5" in Section 9.4 shall
be deemed replaced by "Sections 2.1, 2.2, 2.3, 2.4 and 2.5" hereof.
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IN WITNESS WHEREOF, the Parties have executed this Agreement.
I.C. XXXXXX & COMPANY L.P., a Delaware
Limited Partnership
By: I.G. DESIGN, INC., a Delaware corporation,
its General Partner
By: /s/ Xxxxxx X. Xxxxx
------------------------------------------
Name: Xxxxxx X. Xxxxx
Title: Chairman and Co-Chief
Executive Officer
By: /s/ Xxxxxx X. Xxxx
------------------------------------------
Name: Xxxxxx X. Xxxx
Title: President and Co-Chief
Executive Officer
BROOKHURST, INC.
By: /s/ Xxxxxxx Xxx
------------------------------------------
Name: Xxxxxxx Xxx
Title: President
Hugo Boss AG signs below to evidence its consent to the making of the
foregoing license agreement by I.C. Xxxxxx & Company L.P.
HUGO BOSS AG
By: /s/ Jorg-Xxxxx Xxxxxx
------------------------------------------
Name: Jorg-Xxxxx Xxxxxx
Title: Chief Financial Officer
By: /s/ Xxxx-Xxxxxx Xxxxxx
------------------------------------------
Name: Xxxx-Xxxxxx Xxxxxx
Title: Attorney-in-Fact
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EXHIBIT A
Licensed BOSS Logo
[BOSS
by
BROOKHURST
FOR
UNITED AIRLINES
LOGO]
[BOSS
by
BROOKHURST
LOGO]
