Exhibit 10.3.2
PAISANO PUBLICATIONS, INC.
LICENSE AGREEMENT
TRADEMARK/COPYRIGHT
"EASYRIDERS CAFE"
LICENSEE: NEWRIDERS, INC.
Para. Page
1. Definitions 4
(a) Property 4
(b) Licensed Article 4
(c) Licensed Territory 4
(d) Affiliate 4
(e) Sale 4
(f) Gross Sales 5
(g) Premium 5
2. Grant of License 5
(a) Grant 5
(b) Official Licensed Product 5
(c) Scope of Exclusivity 5
(d) Prohibition Against Extra
Territorial Sales 5
(e) Term 5
3. Compensation and Statement 6
(a) Royalty Rate 6
(b) Advance Payment 6
(c) Minimum Royalty 6
(d) Statement and Payments 6
(e) Administrative Fee 6
(f) Interest 6
(g) Payment on Termination 6
4. Quality and Approvals 6
(a) Standards 6
(b) Samples and Trade Dress 7
(c) Advertising 7
5. Records 7
6. Termination 8
7. Disposal of Stock 9
8. Remedies 9
9. Indemnification and Insurance 10
10. Best Efforts and Distribution
Requirements 10
11. Notices 11
12. No Joint Venture 11
13. Title to Property 11
(a) Cooperation 11
(b) Ownership 12
14. Protection of Property 12
15. Government Approvals 13
16. Combination and Premium Sales 13
17. Assignment 13
18. Miscellaneous 13
19. Severability 14
20. Survivorship of Provisions 14
21. Confidentiality 14
22. Costs 14
SIGNATURE PAGE 15
EXHIBIT A 16
EXHIBIT B 17
EXHIBIT C 18
EXHIBIT D 19
LICENSE AGREEMENT
AGREEMENT made this 15th day of January, 1997 by and between PAISANO
PUBLICATIONS, INC., a California corporation, with its principal place of
business at 00000 Xxxxxxx Xxxxx, Xxxxxx, XX 00000 (hereinafter referred to as
"Paisano" or "Licensor") and NEWRIDERS, INC. a California corporation, with
its principal place of business at 0000 X. Xxxxxxxxxx, Xxxxxx, XX, 00000
(hereinafter referred to as "Licensee");
WITNESSETH:
X. XXXXXXX is the owner of certain proprietary rights in and to the
PROPERTY, defined in paragraph 1(a) below, and PAISANO is willing to grant to
LICENSEE such rights to use the PROPERTY on the LICENSED ARTICLES as defined
in paragraph 1(b) below, in the LICENSED TERRITORY, as defined in paragraph
1(c) below, on the terms herein; and
B. LICENSEE desires to use the PROPERTY in association with the
manufacture, sale, advertisement, and distribution of the LICENSED ARTICLES,
on the terms herein.
THEREFORE, in consideration of the mutual promises herein, the parties
agree as follows:
1. Definitions for the purposes hereof.
(a) "Property" means and includes the marks, names, literary, pictorial,
graphic, sculptural, audiovisual works, designs, logos, characters, symbols,
likenesses, visual representations, and each component thereof identified and
depicted in EXHIBIT A.
(b) "Licensed Articles" means the goods and services as specified and
limited in EXHIBIT B which contain any of the PROPERTY. It does not include
any goods which incorporate the LICENSED ARTICLE in any larger assembly or
compilation or as a component.
(c) "Licensed Territory" means the geographic territory, channels of
trade, and fields of use as specified in EXHIBIT C.
(d) "Affiliate" means (1) any person or entity which owns any part of
LICENSEE or is owned in any part by LICENSEE; or (2) any person or entity
having ownership or control which is common to both it and LICENSEE when the
common ownership or common control is at least ten percent (10%) in both it
and LICENSEE.
(e) "Sale" means the sale or other distribution of LICENSED ARTICLES by
LICENSEE or its AFFILIATE to any customer. A LICENSED ARTICLE is sold when
shipped and invoiced by or at the direction of LICENSEE or LICENSEE'S
AFFILIATE.
(f) "Gross Sales" means the price of all LICENSED ARTICLES as invoiced by
LICENSEE and LICENSEE's AFFILIATE to their customers for the sale of LICENSED
ARTICLES, less sales taxes, shipping costs, and returns actually made and
allowed. In computing Gross Sales, no costs incurred in manufacturing,
selling, advertising or distributing the LICENSED ARTICLES covered by this
AGREEMENT shall be deducted, nor shall any deduction be made for uncollectible
accounts. cash discounts or similar allowances. LICENSEE warrants that all
invoices will accurately reflect the actual price charged to its customers for
sales of LICENSED ARTICLES.
(g) "Premium" means any article used for the purpose of increasing the
sale, promoting, or publicizing any goods or services, including but not
limited to incentives for sales forces, the trade or the consumer.
2. Grant of License
(a) Grant: Subject to the limitations set forth in this AGREEMENT,
PAISANO hereby grants to LICENSEE the "non-exclusive" and non-transferable
right, without the right of sublicense, to use the PROPERTY for the
manufacture, offer for sale, sale, advertisement, promotion, shipment, and
distribution of the LICENSED ARTICLES in the LICENSED TERRITORY.
(b) Official Licensed Product: ALL LICENSED ARTICLES, as well as all
packaging and advertising therefor, shall have imprinted thereon the words
"EASYRIDERS, Official Licensed Product" in any approved form including, as
depicted in EXHIBIT A, subject to mutual agreement as to size and placement.
PAISANO, in its sole discretion, may also require LICENSEE to place any other
indicia or symbols on the LICENSED ARTICLES, as well as all packaging and
advertising therefor, as a means of further identifying LICENSEE and/or the
LICENSED ARTICLES.
(c) Scope of Exclusivity: Nothing in this AGREEMENT shall be construed to
prevent PAISANO from: (i) granting any other licenses for the use of the
PROPERTY; (ii) utilizing the PROPERTY on any goods or services whatsoever that
PAISANO itself may elect to sell to its dealers, distributors and other
customers; or (iii) utilizing the PROPERTY in any other manner whatsoever.
(d) Prohibition Against Extra-Territorial Sales: The grant hereby extends
only to the LICENSED TERRITORY. LICENSEE agrees that it will not use,
manufacture or sell, nor authorize any use, manufacture, or sale of any goods
or services which use the PROPERTY outside of the LICENSED TERRITORY, and that
it will not sell any goods or services using the PROPERTY for resale or
distribution outside of the LICENSED TERRITORY.
(e) Term: This AGREEMENT shall be effective on January 15, 1997 and shall
expire automatically on January 15, 2002 unless sooner terminated in
accordance with the provisions hereof, as attached to existing franchise
agreement dated January 15, 1997.
3. Compensation and Statement
(a) Royalty Rate: LICENSEE agrees that it will pay PAISANO an amount
equal to ten percent (10%) of all GROSS SALES made during the term of this
AGREEMENT and during any period of any permitted extension or renewal. All
payments made hereunder shall be in U.S. currency.
(b) Advance Payment: Upon execution of this AGREEMENT, LICENSEE shall pay
PAISANO the amount of USD$ 0.00. This amount is comprised of USD$ 0.00 which
is non-refundable (except as provided in paragraph 3(g) below), but credited
against royalties due during term of this AGREEMENT and USD$ 0.00 per calendar
quarter which is a non-refundable payment of administrative licensing costs of
LICENSEE, which is not credited against royalties.
(c) Minimum Royalty: For each year of the term of this AGREEMENT,
LICENSEE agrees to pay PAISANO a non-refundable annual minimum royalty of USD
$0.00 which is due and payable on each anniversary of this AGREEMENT to be
credited against any royalties which may be due for the succeeding year.
Minimum royalty payments may not be accrued and credited against any year
other than the year next succeeding the minimum royalty due date. See
Addendum/Exhibit "D".
(d) Statement and Payments: On or before the 15th day of each calendar
month, whether or not any Sales of any LICENSED ARTICLES have been made,
LICENSEE shall submit to PAISANO a full and accurate statement certified by a
knowledgeable officer as accurate, showing the quantity, description, and
Gross Sales of all LICENSED ARTICLES distributed and/or sold during the
preceding calendar month. Simultaneously therewith LICENSEE shall make any
payments due to PAISANO under provisions of paragraphs 3, 4 and 5 of this
AGREEMENT.
(e) Administrative Fee: Any delay in making my report required under this
AGREEMENT, or the making of any incomplete report, entities PAISANO to an
additional administrative delay fee of $100.00 per report.
(f) Interest: Any sums which have not been timely paid by LICENSEE,
including without limitation the sums due under paragraphs 3 and 4 and the
costs of any PAISANO examination under paragraph 5 shall accrue interest
compounded daily from the final date on which LICENSEE could cure any late
payment of each sum until the date of actual receipt of payment at the annual
rate of twelve percent (12%).
(g) Payment on Termination: Upon expiration, or in the event Paisano
terminates this AGREEMENT pursuant to section 6, then all amounts owed, under
this AGREEMENT, by LICENSEE to PAISANO, shall become due and payable
immediately.
4. Quality and Approvals
(a) Standard: LICENSEE agrees that the LICENSED ARTICLES covered by this
AGREEMENT shall be of such style, appearance and quality as to be suited to
their exploitation to the best advantage and to the protection and enhancement
of the PROPERTY and the goodwill pertaining thereto; that such LICENSED
ARTICLES will be manufactured, sold and distributed in accordance with all
applicable federal, state and local laws, and industry codes and standards;
that LICENSEE's policies of sale, distribution and/or exploitation shall be of
high standard; and that the foregoing shall in no manner reflect
adversely upon the good name of PAISANO or any of its products or the
PROPERTY.
(b) Samples and Trade Dress: LICENSEE shall, before selling or
distributing any LICENSED ARTICLES, furnish to PAISANO free of cost, for
written approval, two samples of each LICENSED ARTICLE, together with all of
each LICENSED ARTICLE's trade dress, (including packaging and labels), and all
containers (including packing and wrapping material), and any additional
samples as may be requested by PAISANO. Notwithstanding the foregoing, Paisano
shall be entitled to 20 samples at no cost; any additional samples requested
shall be purchased from Licensee at Licensee's wholesale price. It is a
material requirement of this AGREEMENT, that within sixty (60) days of the
beginning of the term of this AGREEMENT, LICENSEE shall submit to PAISANO for
its written approval, the proposed samples of the LICENSED ARTICLES and all
proposed trade dress and containers. The LICENSED ARTICLES, all trade dress,
and all containers, shall be of a quality, appearance and style approved by
PAISANO before any advertising, sales, distribution or use of it. Any LICENSED
ARTICLE, its trade dress, and containers (including packing and wrapping
material), submitted and not disapproved by PAISANO within thirty (3 0) days
after receipt, shall be deemed to have been approved. After samples of such
items have been approved pursuant to this paragraph, LICENSEE shall not change
any aspect thereof without the prior written consent of PAISANO. From time to
time after LICENSEE has commenced selling the LICENSED ARTICLES, and upon
PAISANO's written request, LICENSEE shall furnish without cost to PAISANO no
more than two (2) additional random samples of each LICENSED ARTICLE being
manufactured and sold by LICENSEE hereunder, together with all trade dress and
all containers (including packing and wrapping material) used in connection
therewith. In the event PAISANO determines in its sole discretion there is a
material departure from the approved sample, trade dress, or containers for
such materials, PAISANO shall have the right in its sole discretion to
withdraw its approval of any such materials and/or terminate this AGREEMENT
upon written notice for LICENSEE's breach of its duties under this paragraph,
unless LICENSEE cures such breach within thirty (30) days of its receipt of
PAISANO's written notice of termination.
(c) Advertising: LICENSEE agrees that he shall use his best efforts to
promote the sale of the LICENSED ARTICLES throughout the licensed territory.
5. Records
(a) LICENSEE agrees to keep accurate books of account and records
covering all transactions relating to the subject matter hereof. Upon at least
five (5) business days written notice to LICENSEE PAISANO and its duly
authorized representatives shall have the right at all reasonable hours of any
business day to examine such books of account and records in LICENSEE's
possession or under its control with respect to the subject matter and terms
of this AGREEMENT, and shall have free and full access thereto for such
purposes and for the purpose of making copies and extracts therefrom. All such
books of account and records shall be kept available for at least four years
after the termination or expiration of this AGREEMENT. LICENSEE further agrees
that, to facilitate the examination of its books and records with respect to
any amounts due, it will designate a symbol or number which will be used
exclusively in connection with the LICENSED ARTICLES and with no other
articles which LICENSEE may manufacture, sell or distribute.
(b) In the event an examination of LICENSEE's books reveals a deficiency
in sums owed to PAISANO in excess of 10% for the term and (i) LICENSEE agrees
with such figures; or (ii) the parties settle on some other figure in excess
of the amounts set out; or (iii) it is adjudicated that there is a deficiency
in excess of such amount then LICENSEE shall bear the cost of reasonable
accountants fees related to the conduct of such audit.
6. Termination
(a) PAISANO shall have the right to terminate this AGREEMENT prior to its
expiration upon written notice to LICENSEE at any time if
(i) LICENSEE shall fail to make any payment due hereunder or to deliver
any of the statements herein referred to or if LICENSEE shall fail to comply
with any other term or condition of this AGREEMENT, if such failure shall
continue for a period of thirty (30) calendar days after written notice of
such failure is received by LICENSEE by certified maiI, telex, telegram, or
telecopier to LICENSEE; or
(ii) LICENSEE files a petition in bankruptcy, is adjudicated a bankrupt or
files a petition or otherwise seeks relief under or pursuant to any
bankruptcy, insolvency or reorganization statute or proceeding, or if a
petition in bankruptcy is filed against it or it becomes insolvent or makes an
assignment for the benefit of its creditors or a custodian, receiver or
trustee is appointed for it or a substantial portion of its business or
assets, this AGREEMENT shall terminate automatically, provided such
circumstance shall not be cured within thirty (30) days of the commencement of
the above-stated event. This AGREEMENT is entered into by PAISANO based upon
and in reliance upon the personal services of LICENSEE. No assignee for the
benefit of creditors, custodian, receiver, trustee in bankruptcy, sheriff or
any other officer of the court of official charged with taking over custody of
LICENSEE's assets or business shall have any right to continue this AGREEMENT
or to exploit or in any way use the PROPERTY if this AGREEMENT terminates
pursuant to this paragraph. Notwithstanding the foregoing provisions, in the
event that, pursuant to the U.S. Bankruptcy Code, a trustee in bankruptcy of
LICENSEE or LICENSEE, as debtor, is permitted to assume this AGREEMENT and
does so and, thereafter, desires to assign this AGREEMENT to a third party,
which assignment satisfies the requirements of the Bankruptcy Code, the
trustee or LICENSEE, as the case may be, shall notify PAISANO of same in
writing. Said notice shall set forth the name and address of the proposed
assignee, the proposed consideration for the assignment and all other relevant
details thereof. The giving of such notice shall be deemed to constitute an
offer to PAISANO to have this AGREEMENT assigned to it or its designee for
such consideration, or its equivalent in money, and upon such terms as are
specified in the notice. The aforesaid offer may be accepted only by written
notice given to the trustee or LICENSEE, as the case may be, by PAISANO within
thirty (30) days after PAISANO's receipt of the notice from such party. If
PAISANO fails to give its notice to such party within this period, such party
may complete the assignment referred to in its notice, but only if such
assignment is to the entity named in said notice and for the consideration and
upon the terms specified therein. Nothing contained herein shall be deemed to
preclude or impair any rights which PAISANO may have as a creditor in any
bankruptcy proceeding.
(b) PAISANO shall be under no obligation to terminate this AGREEMENT on
the happening of any or all of the events set forth in this paragraph 6, and
its failure to do so in any instance shall not be deemed a waiver of its
rights to do so. PAISANO's rights under this paragraph 6 are in addition to
all other rights which PAISANO may have against LICENSEE for damages and
equitable relief.
7. Disposal of Stock
(a) After the expiration or termination of this AGREEMENT, LICENSEE shall
have no further right to manufacture, advertise, distribute, sell, or
otherwise deal in any LICENSED ARTICLES except as hereinafter provided. Upon
such expiration or termination, LICENSEE may dispose of finished LICENSED
ARTICLES on hand or in process at the time of such expiration or termination,
for a period of ninety (90) days thereafter, provided all further payments due
with respect to that ninety (90) day period are made in accordance with
paragraph 3 hereof.
(b) If this AGREEMENT is terminated for any reason excepted in the
previous paragraph, then LICENSEE shall have no rights of disposal under the
previous paragraph and LICENSEE shall immediately ship to PAISANO, without
cost to PAISANO, all existing inventory of LICENSED PRODUCTS and all items
utilized in the manufacture of LICENSED ARTICLES and within its control,
except for those items which contain information proprietary to LICENSEE (e.g.
positive films) and all trade dress and containers embodying the property
along with a written inventory of LICENSED ARTICLES remaining and on hand,
which shall be certified by an officer of LICENSEE. PAISANO's receipt of such
inventory, written inventory and other materials shall not constitute a waiver
by PAISANO of its right to recover any amounts due PAISANO or a waiver of its
right to exercise any other remedies which are provided by law or this
AGREEMENT.
8. Remedies
LICENSEE acknowledges that its failure (except as otherwise expressly
provided herein) to cease the manufacture, sale or distribution of the
LICENSED ARTICLES upon the termination or expiration of this AGREEMENT will
result in immediate and irreparable damage to PAISANO. LICENSEE acknowledges
and admits that there is no adequate remedy at law for such failure to cease
manufacture, sale or distribution, and LICENSEE agrees that in the event of
such failure the goods shall be deemed counterfeit and PAISANO shall be
entitled to equitable relief including, without limitation, temporary and
permanent injunctions and such other and further relief as any court or agency
with jurisdiction may deem just and proper. Resort to any remedy referred to
hereinabove shall not be construed as a waiver of any other rights and
remedies to which PAISANO is entitled under this AGREEMENT or under applicable
law.
9. Indemnification and Insurance
(a) LICENSEE shall be solely responsible for, and defend and indemnify
PAISANO, and the officers and directors of both of the foregoing (hereinafter
collectively "Indemnities"), and hold such Indemnities harmless from any and
all claims, demands, causes of action, damages, costs and expenses whatsoever
(including but not limited to reasonable attorneys' fees and product warranty
and recall expenses. if any) arising directly or indirectly from or out of
LICENSEE's use of the PROPERTY, out of the design, manufacture, sale,
distribution, use or misuse of the LICENSED ARTICLES or otherwise arising
directly or indirectly from or out of any alleged action or omission of
LICENSEE, any affiliate, or any of their customers.
(b) LICENSEE will obtain and maintain at all times product liability
insurance for the LICENSED ARTICLES in the amount of coverage specified below.
Such product liability insurance shall be in a form and substance acceptable
to PAISANO and shall cover any claims, demands, causes of action or damages,
including reasonable attorneys' fees, arising from or out of any alleged
defects in the LICENSED ARTICLES, or otherwise from or out of any use or
misuse of the LICENSED ARTICLES. A certificate of insurance evidencing same,
along with the name, address and telephone number of the insurance
underwriter, shall be sent, pursuant to paragraph 11, to PAISANO. Such
insurance policy shall name the Indemnities as additional insureds and shall
provide that it may not be canceled without at least thirty (30) days prior
written notice to PAISANO. LICENSEE shall furnish PAISANO with a certificate
of such insurance showing compliance with the foregoing requirements. LICENSEE
agrees that, for the initial term of this AGREEMENT, such insurance policy or
policies shall contain a combined single limit of no less than $1,000,000. for
bodily injuries and property damage arising out of each occurrence. LICENSEE
shall give immediate notice to PAISANO of all occurrences that might
reasonably be expected to result in any claim against it or any one or more of
the Indemnities or which could impose any liability upon any one or more of
the Indemnities.
10. Best Efforts and Distribution Requirements
LICENSEE agrees to maximize the sales of LICENSED ARTICLES and to use its
best efforts to continuously, diligently and competitively design, sell,
advertise, promote, distribute, inventory and supply each of the LICENSED
ARTICLES throughout the LICENSED TERRITORY. This requires in part the
maintenance of adequate facilities and trained personnel. LICENSEE shall
maintain sufficient facilities and hire sufficient personnel for the broadest
possible distribution of LICENSED ARTICLES through-out the LICENSED TERRITORY.
It is a material requirement of this AGREEMENT that, within ninety (90) days
of the beginning term of this AGREEMENT, LICENSEE begin the bona fide
manufacture, distribution and sale of all LICENSED ARTICLES. PAISANO or its
designee shall be entitled to view and inspect any and all locations
pertaining to the manufacture, distribution, and sale of LICENSED ARTICLES
upon reasonable notice to LICENSEE.
11. Notices
All notices and statements to be given, and all payments to be made
hereunder, shall be given or made at the respective addresses of the parties
as set forth below unless notification of a change of address is given in
writing. Any notice which is posted in the United States and forwarded by
registered or certified mail, telegram, mailgram, telex, or telecopier shall
be deemed to have been given at the time it is mailed. Any other form of
notice shall be deemed given at the time of receipt.
If to PAISANO: PAISANO PUBLICATIONS, Inc.
00000 Xxxxxxx Xxxxx
Xxxxxx Xxxxx, XX 00000
Attention: Xxx Xxxxxx or Xxxxx Xxxx
If to LICENSEE: NEWRIDERS INC.
0000 X. Xxxxxxxxxx
Xxxxxx, XX 00000
Attn: Xxxx Xxxxxxx
12. No Joint Venture
Nothing herein contained shall be construed to place the parties in the
relationship of partners, joint venturers or agents, and LICENSEE shall have
no power or right to obligate or bind PAISANO in any manner whatsoever.
13. Title to Property
(a) Cooperation: LICENSEE agrees to cooperate fully and in good faith
with PAISANO for the purpose of securing and preserving PAISANO's (or any
grantor of PAISANO) rights in and to the PROPERTY. LICENSEE shall, at
PAISANO's request and expense, register or cooperate with PAISANO to register
in all states and countries, a copyright, trademark and/or service xxxx in
the appropriate class(es), all in the name of PAISANO or, if PAISANO so
requests, in LICENSEE's own name. However, it is agreed that nothing
contained in this AGREEMENT shall be construed as an assignment or grant to
LICENSEE of any right, title or interest in or to the PROPERTY, or any
registration or application therefore referred to above, it being understood
dig all rights relating thereto are reserved by PAISANO, except for the
LICENSEE's right to use the PROPERTY as expressly provided in this AGREEMENT.
LICENSEE hereby agrees that it will, at any time upon request of PAISANO,
assign, transfer and convey to PAISANO any trade rights, trademarks, service
marks or copyright equities and registrations, goodwill, title and all other
rights in and to the same which may be obtained by LICENSEE or which are
contemplated hereby. LICENSEE shall execute any instruments presented to it by
PAISANO to accomplish or confirm the foregoing. Any such assignment, transfer
or conveyance shall be without other consideration, other than the mutual
covenants set forth in this AGREEMENT. LICENSEE hereby agrees that it shall
not at any time acquire any rights in the PROPERTY by virtue of any use it may
make of the PROPERTY. In furtherance of the foregoing, LICENSEE hereby grants
to PAISANO an irrevocable power of attorney to sign, on behalf of LICENSEE,
any and all applications and other documents relating to copyright and/or
trademark protection and registration of the property in order to insure
ownership thereof in PAISANO.
(b) Ownership: Any rights, including worldwide copyright, in all marks,
names, literary, pictorial, graphic, sculptural, audio- visual works, designs,
logos, characters, symbols, likenesses, visual representations, and/or other
works (hereinafter called WORKS) conceived or created by LICENSEE and used in
association with any LICENSED ARTICLE, its trade dress, its containers, or its
advertising, shall become the sole and exclusive property of PAISANO.
Immediately upon usage of these WORKS on any LICENSED ARTICLE, its trade
dress, its containers, or its advertising, all right, title and interest vests
in PAISANO. LICENSEE shall affix to all LICENSED ARTICLES, its trade dress,
containers, and advertising all copyright and trademark notice(s) as provided
for by PAISANO in order to maintain, protect and enforce such rights under the
appropriate laws. With respect to all copyrightable works, LICENSEE will upon
request from PAISANO cause its employees or other persons or entities creating
same to transfer all ownership therein to PAISANO by assignment or as a "work-
made-for-hire" and furnish proof thereof to PAISANO.
14. Protection of Property
(a) LICENSEE recognizes the great value of the goodwill associated with
the PROPERTY, and acknowledges that the PROPERTY and all rights therein and
goodwill pertaining thereto belong exclusively to PAISANO, and that the
PROPERTY has a secondary meaning in the minds of the public. Accordingly,
LICENSEE agrees that it will not, during the term of the AGREEMENT or
thereafter, attack the title or any rights of PAISANO in and to the PROPERTY
or attack the validity of this AGREEMENT.
(b) In furtherance of the protection of the PROPERTY, to prevent dilution
of the value of the PROPERTY, to eliminate the likelihood of confusion and to
prevent deception to the public, LICENSEE agrees that it will not sell
LICENSED ARTICLES in territories, channels of trade, or fields of use not
expressly authorized by this AGREEMENT.
(c) LICENSEE agrees to assist PAISANO, at PAISANO's expense (except as
otherwise provided herein), to the extent necessary in the procurement of any
protection of PAISANO's rights to the PROPERTY, in the protection and defense
of the PROPERTY, the filing and prosecution of any trademark or copyright
application or other applications the recording of this AGREEMENT or any other
AGREEMENTS, and the publication of any notices or the doing of any other act
with respect to the PROPERTY, including the prevention of the use thereof by
any unauthorized person, firm or corporation, that in the judgment of PAISANO
may be necessary or desirable under any law, regulation or decree of the
LICENSED TERRITORY. If PAISANO so desires, at its expense, it may commence or
prosecute any claims or suits in its own name or in the name of LICENSEE, or
join LICENSEE as a party thereto. LICENSEE shall notify PAISANO in writing of
any infringements, possible infringements or any imitations by others of the
PROPERTY or the LICENSED ARTICLES which may come to LICENSEE's attention.
PAISANO shall have the sole right to determine whether or not any further
action shall be taken on account of any such infringements or imitations.
LICENSEE shall not institute any suit or take any action on account of any
such infringements or imitations without first obtaining the written consent
of PAISANO. LICENSEE shall not have any rights against PAISANO by reason of
PAISANO's failure to prosecute any such alleged infringements or imitations.
15. Government Approvals
LICENSEE agrees to obtain all necessary governmental approvals with
respect to LICENSEE's sale and advertising of LICENSED ARTICLES and LICENSEE's
rights to manufacture, promote, sell and distribute the LICENSED ARTICLES
throughout the LICENSED TERRITORY. LICENSEE shall promptly furnish copies of
all such approvals to PAISANO, if requested.
16. Combination and Premium Sales
LICENSEE warrants it will not use the LICENSED ARTICLES for combination
sales, PREMIUMS, giveaways or for any similar method of merchandising without
the prior written consent of PAISANO, and will refrain from distributing
LICENSED ARTICLES for purposes other than SALE without the prior written
consent of PAISANO.
17. Assignment
This AGREEMENT and all rights and duties herein are personal to LICENSEE
and shall not, without PAISANOs prior written approval, be assigned,
mortgaged, sublicensed or otherwise encumbered by LICENSEE or by operation of
law. Any attempt by LICENSEE to grant a sublicense or to assign or part with
possession or control of the AGREEMENT or any of LICENSEE's rights or duties
hereunder shall be void from the beginning and shall constitute a material
breach of this AGREEMENT. This AGREEMENT and all rights and duties may be
assigned by PAISANO without the consent of LICENSEE.
18. Miscellaneous
This AGREEMENT constitutes the entire agreement and understanding between
the parties hereto and terminates and supersedes any prior agreement or
understanding relating to the subject matter hereof between PAISANO and
LICENSEE. None of the provisions of the AGREEMENT can be waived or modified
except in a written document signed by both parties. There are no
representatives, promises, agreements, warranties, covenants or undertakings
other than those expressly contained herein. The headings on each paragraph
hereof are for convenience purposes only and shall not be used to construe the
terms of this AGREEMENT. This AGREEMENT shall be deemed to have been accepted
and signed in Agoura Hills, California and shall be construed in accordance
with the laws of the State of California. In the event of any dispute arising
from this AGREEMENT, LICENSEE consents and agrees to in personam jurisdiction
and venue exclusively in either the Superior Court for Los Angeles County, or
the United States District Court for the Central District of California,
located in Los Angeles, California.
19. Severability
The provisions of this AGREEMENT are severable, and if any clause or
provision shall be held invalid and unenforceable in whole or in part, then
such invalidity or unenforceability shall affect only such clause or provision
or part thereof.
20. Survivorship of Provisions
Notwithstanding the expiration or termination of this AGREEMENT, all
rights, obligations and remedies which accrued prior to the termination or
expiration hereof shall survive such termination or expiration.
21. Confidentiality
LICENSEE shall at no time reveal, allow to be revealed, disclose, or
otherwise participate in the disclosure of the contents of this Agreement, or
the AGREEMENT itself without the express written consent of LICENSOR.
Furthermore, LICENSEE shall undertake at all times to maintain this AGREEMENT
in secrecy and take all reasonable efforts to insure this.
22. Costs
In any action to enforce this AGREEMENT, the prevailing party shall be
entitled to costs and reasonable attorney's fees incurred thereby.
IN WITNESS WHEREOF, the parties have executed this AGREEMENT through
authorized officers as of the date set forth above.
PAISANO PUBLICATIONS, INC.
----------------------
By /s/ Xxxxx Xxxx By: /s/Xxxx Xxxxxxx
Title: President Title: Chairman of the Board
Date: 1/15/97 Date: 1/15/98
Date
EXHIBIT A ( )Initials
PROPERTY
1. TRADEMARKS:
(a) EASYRIDERS
(b)
(c)
(d)
(e)
2. TRADE NAMES:
(a) EASYRIDERS CAFE
(b)
(c)
(d)
3. Literary, Pictorial, Graphic, Sculptural, Audio-visual Works, Designs,
Logos, Characters, Symbols, Likenesses, Visual
Representatives:
(a)
(b)
(c)
(d)
(e)
4. OTHERS (eg. phrases, inscriptions):
(a)
(b)
EXHIBIT B ( )Initials
LICENSED ARTICLES
1. GOODS:
(a) AS AGREED
(b)
(c)
(d)
(e)
2. SERVICES:
(a)
(b)
3. SIZE, STYLE AND DESIGN LIMITS:
(a)
(b)
(c)
(d)
(e)
4. PRODUCT PURPOSE: For ways customary in the trade
5. OTHER SPECIFICATIONS: None
EXHIBIT C ( )Initials
LICENSED TERRITORY
1. COUNTRIES:
(a) UNITED STATES
(b)
(c)
(d)
2. STATES/REGIONS:
(a)
(b)
(c)
(d)
3. COUNTIES/CITIES/SMSA's:
(a)
(b)
(c)
4. LOCATIONS:
(a)
(b)
5. CLASS OF CUSTOMERS:
(a)
(b)
(c)
6. CHANNELS OF TRADE:
(a) WAYS CUSTOMARY IN TRADE
(b)
EXHIBIT D
ADDENDUM TO AGREEMENT
DATED JANUARY 15,1997
(page 6)
License Royalty rate shall apply only to the goods sold outside the
distribution activity of the Easyriders Cafe sites.
