Exhibit 10.57
LICENSE AGREEMENT
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AGREEMENT made as of August 7, 2000 by and among XxXxxxxxxx Apparel
Holdings Inc., a South Carolina corporation having its principal office and
place of business at 0000 Xxxxx Xxxxxx Xxxxxxxxxx Xxxxxxxxx, Xxxxx Xxxxx, XX
00000, (hereinafter referred to as "LICENSOR"), and Xxxx-Xx Knitwear, Inc., a
New York corporation (hereinafter referred to as "LICENSEE").
W I T N E S E T H:
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WHEREAS, LICENSOR is the owner of certain trademarks, together with
the registrations thereof, as set forth in Exhibit A attached hereto, and of
such additional registrations thereof as may be issued and applications for
registrations thereof as may be filed from time to time and be added to the said
Exhibit A (hereinafter referred to as the "Trademarks"); and
WHEREAS, LICENSEE is desirous of using the Trademarks in connection
with its business; and LICENSEE acknowledges hereby that it will continue to
stand behind all services and products identified by or in connection with the
Trademarks and will continue to preserve the same quality services and products
thereunder;
NOW, THEREFORE, in consideration of good and valuable consideration
received by LICENSOR from LICENSEE, the receipt and sufficiency of which is
hereby acknowledged, and of the representations and covenants hereinafter set
forth, the parties hereto hereby agree as follows:
1. Grant of License. LICENSOR hereby grants to LICENSEE the non-
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exclusive authorization to make use of the Trademarks in its corporate name and
its business throughout the world, it being understood that LICENSOR reserves
the right to grant licenses of the Trademarks to other affiliated entities.
2. Quality Standards. (a) Anything in this Agreement to the contrary
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notwithstanding, LICENSEE agrees that its services and products shall be of such
high standard and quality as to be adequate and suited to their utilization to
the best advantage and to the protection and enhancement of the Trademarks, that
such services shall be performed and products manufactured and delivered in
accordance with all applicable federal, state and local laws and regulations,
and that the policy of performance of such services by LICENSEE shall be of a
high standard and shall in no manner reflect adversely upon the good name of
LICENSOR or upon the reputation or value of the Trademarks. The quality and
style of such services and products (including without limitation advertising,
promotional and other materials bearing the Trademarks) shall be subject to the
prior written approval of LICENSOR, which may be granted or withheld in
LICENSOR'S sole discretion, it being understood that the present format and
quality controls are satisfactory to LICENSOR.
(b) LICENSEE shall provide LICENSOR or its authorized
representative with access to the business offices and other premises of
LICENSEE at all reasonable times, in order that LICENSOR or its authorized
representative may determine
whether LICENSEE'S uses of the Trademarks conform with the high standards and
quality which have been set forth in paragraph 2(a) hereof, and LICENSEE shall
abide by the decision of LICENSOR in this respect.
(c) In the event that LICENSEE at any time makes any changes in
its business procedures that may alter the performance of any of the services or
the delivery of products upon or in relation to which LICENSEE uses or intends
to use the Trademarks, LICENSEE shall promptly give notice in writing thereof to
LICENSOR so that LICENSOR may determine through supplemental investigation, if
necessary, in LICENSOR'S sole judgment, whether conformance with the high
standards and quality which have been set forth in paragraph 2 hereof is being
maintained, and LICENSEE shall abide by the decision of LICENSOR in this
respect.
3. Form of Use. (a) All advertising, promotional or other materials
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bearing the Trademarks to be used by LICENSEE shall be submitted to LICENSOR or
its authorized representative for its prior approval. Any such advertising,
promotional or other materials submitted to and not disapproved by LICENSOR or
its authorized representative within fifteen (15) days after receipt by LICENSOR
shall be deemed to be approved.
(b) LICENSEE shall, whenever it uses the Trademarks, use in
connection therewith such symbols and abbreviations and otherwise give such
notice of its status as may be required by LICENSOR or by applicable laws to
preserve and protect the Trademarks.
4. Royalty. (a) In consideration of the license granted hereby,
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LICENSEE agrees to pay to LICENSOR a royalty equal to five percent (5%) of
LICENSEE's net sales, as calculated in accordance with generally accepted
accounting principles. As soon as practicable (and in any event within sixty
(60) days after the end of each fiscal quarter of the LICENSEE, LICENSEE is to
deliver to LICENSOR or its duly authorized representative a statement certified
by the financial officer of LICENSEE showing a computation of net sales and the
amount of royalty payable hereunder. The royalty payable hereunder shall be due
within ten (10) days of the date of such certified statement. LICENSEE shall
also provide to LICENSOR or its duly authorized representative such financial
and other information that LICENSOR or its duly authorized representative shall
reasonably request in connection with the determination of its royalty.
5. Records. LICENSEE shall keep records in sufficient detail to
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enable LICENSOR or its duly authorized representative to determine the extent
and the manner in which it has used the Trademarks and LICENSEE shall permit
LICENSOR or its duly authorized representative to examine and make copies of
such records at all reasonable times.
6. Term and Termination. (a) This Agreement shall commence as of
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August 7, 2000, and will continue through July 31, 2010 and from year to year
thereafter until terminated by mutual written consent, or by either Licensee or
Licensor on sixty (60) days prior written notice to the other or such shorter
time period as the parties may mutually agree to or unless earlier terminated
pursuant to any of the following subparagraphs (b), (c) or (d) of this Paragraph
6:
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(b) If, in LICENSOR'S sole judgment, LICENSEE fails to maintain
the high standards and quality which have been set forth in paragraph 2(a)
hereof for the services or products, LICENSOR may by giving notice in writing to
LICENSEE terminate this Agreement forthwith.
(c) If, during the period of this Agreement, either LICENSOR or
LICENSEE shall be in breach of any other provision thereof, the other party
shall be entitled to give notice in writing to the party in breach specifying
the breach and requiring it to be rectified, and, if the party in breach shall
refuse, neglect or be unable to rectify such breach within ten (10) days after
the giving of such notice, the party giving such notice may by giving further
notice in writing to the party in breach terminate this Agreement forthwith.
(d) In the event that either party files for relief under the
bankruptcy laws of the United States or is adjudged a bankrupt thereunder, such
bankruptcy laws of the United States shall govern and control the rights and
obligations of the parties hereunder.
7. Effect of Termination. Upon termination of this Agreement by
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either of the parties for whatever cause, LICENSEE shall forthwith cease to use
the Trademarks in any manner whatsoever, and LICENSEE shall, within fifteen (15)
days after such termination, destroy or deliver to LICENSOR or its authorized
representative for destruction, any and all advertising, promotional or other
materials bearing the Trademarks within LICENSEE'S possession, custody or
control. At termination, in addition to the other required acts by the
LICENSEE, the LICENSEE will promptly take all necessary steps to change its
corporate name to a name which does not contain any of the Trademarks or any
word similar to the Trademarks and will promptly deliver evidence of such change
of name to LICENSOR.
8. Ownership of Trademarks. LICENSEE acknowledges the validity of
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and LICENSOR'S exclusive ownership of all rights, title and interest, in and to
the Trademarks and agrees that, except as contemplated hereunder, any use by
LICENSEE of the Trademarks shall inure solely to the benefit of LICENSOR.
LICENSEE shall not at any time (either during or after the termination of this
Agreement) directly or indirectly take any action which might impair the
validity of or the rights of LICENSOR in the Trademarks, but LICENSOR makes no
representation or warranty that the Trademarks are valid or validly registered
in the United States or any other country. LICENSEE shall not at any time
(either during or after the termination of this Agreement) use any xxxx which
shall be identical or confusingly similar to the Trademarks, except as expressly
permitted by this Agreement. The termination of this Agreement shall not affect
the obligations of LICENSEE under this paragraph.
9. Infringement Proceedings. (a) LICENSEE shall promptly notify
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LICENSOR in the event that LICENSEE shall acquire knowledge of any claim that
use of the Trademarks by LICENSEE infringes the rights of others or of the
institution of any action or proceeding against LICENSEE or otherwise arising
out of the use of the Trademarks by LICENSEE. LICENSOR and its duly authorized
representative shall have the right (but not the obligation) to take charge of
the defense of any such claim, action or proceeding (and of any negotiations for
the settlement thereof). If LICENSOR declines, after the request of LICENSEE,
to defend any such claim, action or proceeding, LICENSEE may do so. LICENSOR
and
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LICENSEE each shall pay their own expenses and retain any costs or damages
awarded to each in any such claim, action or proceeding. LICENSOR shall not make
any settlement of any such claim, action or proceeding, brought against LICENSEE
involving a monetary payment by LICENSEE without the consent in writing of
LICENSEE. LICENSOR shall not be liable in any event to LICENSEE in respect of
any damages assessed or asserted against LICENSEE in, or any liability incurred
by or imposed upon LICENSEE in connection with, any such claim, action or
proceeding. LICENSOR and LICENSEE agree to cooperate with each other in all
respects in any such claim, action or proceeding.
(b) In the event that LICENSEE shall acquire knowledge of any
use by a third party (other than any party known to have a license agreement
with LICENSOR) of the Trademarks, it shall not take any action whatsoever but
shall promptly notify LICENSOR. LICENSOR shall have the right (but not the
obligation) to take whatever action it deems appropriate, including the
institution of any action or proceeding against such third party or otherwise,
to obtain a discontinuance of such use. If LICENSOR takes any such action,
LICENSOR shall pay its own expenses and retain any costs or damages awarded to
it therein. LICENSEE agrees to cooperate with LICENSOR in all respects and to
provide LICENSOR with all assistance requested of it by LICENSOR in any such
action.
10. Indemnification. LICENSEE hereby indemnifies and agrees to hold
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LICENSOR harmless from any and all claims, obligations or liabilities, arising
out of any violation by LICENSEE of any provision of this Agreement. LICENSEE
shall be entitled to participate, at its own expense, in the defense of any
action in this respect brought against LICENSOR. LICENSEE hereby assumes all
responsibility for and agrees to indemnify LICENSOR, its officers, directors,
employees, agents, successors and assigns, and to hold them harmless from and
against all claims, demands, losses, suits or causes of action for loss, damage,
cost or liability of any kind whatsoever, and agrees to pay any costs, damages
and other amounts, including reasonable attorneys' fees, incurred by and/or
awarded against LICENSOR resulting therefrom or in settlement thereof, arising
out of or relating to the manufacture, license, promotion, advertising, use or
sale of services and products under the Trademarks.
11. No Agency, Joint Venture. LICENSEE shall not be deemed to be an
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agent, joint venturer or partner, of LICENSOR as a result of or in any
transaction under or relating to this Agreement, and shall not, without the
authorization in writing of LICENSOR, in any way incur any obligation on behalf
of LICENSOR.
12. Notices. All notices required under the terms and provisions
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hereof shall be in writing, either delivered by hand, by certified mail, return
receipt requested or by telecopier and any such notice shall be effective when
received at the address specified below:
if to LICENSOR:
0000 Xxxxx Xxxxxx Xxxxxxxxxx Xxxxxxxxx,
Xxxxx Xxxxx, Xxxxx Xxxxxxxx 00000
Attention: President
Telecopy No.: (000) 000-0000
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with a copy to:
[Xxxxx & Xxx Xxxxx, PLLC
00 Xxxxxxx Xxxxxx, Xxxxx 000
Xxxxxxxxxx, Xxxxx Xxxxxxxx 00000
Attention:
Telecopy No.: (000) 000-0000]
if to LICENSEE:
000 Xxxxxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Attention: President
Telecopy No.: (000) 000-0000
with a copy to:
Torys
000 Xxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Attention: Xxxxxxx X. Cost, Esq.
Telecopy No.: (000) 000-0000
or, if to any of the foregoing parties, or their successors, at such other
address as such party or successors may designate from time to time by notice
duly given in accordance with the terms of this Section 12 to the other.
13. Governing Law. This Agreement shall be deemed made in South
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Carolina and construed and enforced in accordance with and governed by the laws
of the State of South Carolina and federal law applicable to trademarks, trade
names, service marks and patents generally.
14. Entire Agreement. This Agreement embodies the entire agreement
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between LICENSOR and LICENSEE with respect to the subject matter hereof, and no
understandings or agreements, oral or otherwise, in relation thereto, exist
between LICENSOR and LICENSEE, except as herein expressly set forth. Neither
this Agreement nor any provision thereof may be changed, modified, waived or
discharged orally, but only by an instrument in writing signed by the party
against which enforcement of the change, modification, waiver or discharge is
sought. If any provision or any portion of any provision of this Agreement
shall be held to be void or unenforceable, the remaining provisions of this
Agreement and the remaining portion of any provision held void or unenforceable
in part are to continue in full force and effect.
15. No Assignment by Licensee. LICENSEE may not, without the prior
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written consent of LICENSOR, sublicense or assign any of the licenses or other
rights granted
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hereunder, and any such attempted sublicense or assignment, whether voluntary or
by operation of law, is to be void and of no force and effect.
16. Successors. This Agreement shall inure to the benefit of and
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shall be binding upon the parties hereto and their respective successors and
permitted assigns; provided that the LICENSEE and LICENSOR may .collectively
assign this Agreement and their respective rights and entitlements hereunder to
any bank(s) or other financial institution(s) providing financing to LICENSEE or
LICENSOR and/or affiliates
17. Counterparts. This Agreement may be executed in counterparts,
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each of which shall be deemed to be an original but all of which taken together
shall constitute one and the same instrument.
* * *
IN WITNESS WHEREOF, the parties hereof have duly executed this
Agreement on the 15/th/ day of November 2000.
LICENSOR:
By: /s/ Xxxxxxx Xxxxxxxx
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Name: Xxxxxxx Xxxxxxxx
Title: Vice President
LICENSEE:
By: /s/ Xxxxxx Xxxxxx
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Name: Xxxxxx Xxxxxx
Title: Vice President
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Exhibit A TO
LICENSE AGREEMENT
INTELLECTUAL PROPERTY RIGHTS
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A. Trademarks - U.S.
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Cotton Spirit
Arendine
Currants (block form)
Currants (with design)
Xxxx-Xx
Energie bi Currants
Energie (stylized)
Xxxxx Xxxxx
E (stylized)
Energie Polar 2000
Polar 2000
B. Trademarks - Other Countries
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Xxxxx Xxxxx
(Mexico)
Currants
(Mexico)
Xxxxx Xxxxx
(Chile)
