Exhibit (d)(4)
EXECUTION COPY
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LICENSE AGREEMENT
Dated as of April 11, 2000,
By and between
BEN & JERRY'S HOMEMADE HOLDINGS, INC.
and
BEN & JERRY'S HOMEMADE, INC., on the one hand,
And
UNILEVER N.V.
and
UNILEVER PLC, on the other hand.
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LICENSE AGREEMENT
THIS AGREEMENT, made as of April 11, 2000 by and between (i)
BEN & JERRY'S HOMEMADE HOLDINGS, INC., a Vermont corporation, and BEN & JERRY'S
HOMEMADE, INC., a Vermont corporation (together, "LICENSOR"), on the one hand,
and (ii) UNILEVER N.V., a corporation formed under the laws of The Netherlands,
and UNILEVER PLC, an English public limited company (together, "LICENSEE"), on
the other hand.
W I T N E S S E T H
WHEREAS Licensee wishes to obtain a License (the "LICENSE"),
with the right to grant sublicenses to its Affiliates so long as they remain
Affiliates (as hereinafter defined), to use the Licensed Xxxx and Licensed
Technology (each, as hereinafter defined) in connection with the development,
manufacture, marketing, marketing, distribution, promotion and sale of Products
having Super Premium Status (each, as hereinafter defined) in all countries
throughout the world, subject to Section 9 and with the exception of (i) the
United States (including the territories and commonwealths thereof), (ii) the
Caribbean as outlined on the map attached as Annex A hereto, (iii) countries
designated by Licensee pursuant to Section 2(a)(ii)(C) or otherwise becoming
available exclusively to Licensor pursuant to Section 2 or Section 18 and (iv)
Japan (collectively from time to time, the "TERRITORY");
WHEREAS, in connection with such development, manufacture,
marketing, distribution, promotion and sale of Products under the Licensed Xxxx,
Licensee views as essential the furtherance of the essential integrity of the
Principal Licensed Xxxx (as hereinafter defined); and
WHEREAS Licensor is willing to grant such a License on the
terms and conditions hereinafter appearing.
NOW, THEREFORE, in consideration of these recitals, of the
following covenants and other good and valuable consideration, Licensor and
Licensee hereby agree as follows:
1. DEFINITIONS
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(a) "AFFILIATE" shall mean any person or entity controlling, controlled
by, or under common control with such party, and in the case of Licensee,
includes, without limitation, any entity a majority of the voting control of
which is owned, directly or indirectly, by Unilever N.V. or Unilever PLC, or
both of them together.
(b) "BANKRUPTCY CODE" shall have the meaning assigned to it in Section
18(b).
(c) "BUSINESS" shall have the meaning assigned to it in Section
2(a)(i).
(d) "CHANGE OF CONTROL" shall have the meaning assigned to it in
Section 18(c)(ii).
(e) "COMMITTEE ON JOINT PLANNING" shall have the meaning assigned to it
in Section 5(b).
(f) "CONFIDENTIAL INFORMATION" shall have the meaning assigned to it in
Section 17.
(g) "CONTRACT YEAR" shall mean a calendar year (January 1-December 31),
except that the first Contract Year shall commence on the date hereof and end on
and include December 31, 2000.
(h) "CURE" shall have the meaning assigned to it in Section 18(a)(iii).
(i) "DESIGNATE" shall have the meaning assigned to it in Section
2(a)(ii)(C).
(j) "ESSENTIAL INTEGRITY OF THE PRINCIPAL LICENSED XXXX" shall mean the
essential integrity of the Principal Licensed Xxxx that has been used by
Licensor, including the essential "social mission" of Licensor, to market
Products throughout the Territory, including the essential "social mission" of
Licensor (certain objectives of which are set forth in the "Statement of Leading
with Progressive Values Across our Business", attached as Exhibit A hereto) that
is one of three parts of Licensor's corporate mission.
(k) "INITIAL TERM" shall have the meaning assigned to it in Section 3.
(l) "LICENSED XXXX" shall mean the trademarks, logos, slogans and names
owned by Licensor, including, without limitation, those listed in Schedule 10,
including all registrations therefor for marks covering
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Products including, without limitation, those listed on Schedule 10 (but subject
to limitations thereon, including disclosures on Schedule 10) and all variations
or derivatives thereof, designs associated therewith, whether or not registered
as trademarks, and such other names, symbols, initials or marks as may be added
to the coverage of the License pursuant to the provisions of Sections 11 and 13,
whether contained on Schedule 10, but, in every case, including only items
pertaining to Licensor's conduct of the Business in the Territory.
(m) "LICENSED TECHNOLOGY" shall mean the patents (if any), inventions,
discoveries, trade secrets, improvements, formulae, practices, processes,
methods, technology, know-how, including, without limitation, any of the
foregoing in the process of development, and similar proprietary rights owned by
Licensor, including, without limitation, those material items which will be
listed on Schedule 10, which Licensee shall provide within 60 days after the
date hereof, and such other technology as may be added to the coverage of the
License by agreement of the parties, but, in every case, (i) including only
items pertaining to Licensee's conduct of the Business in the Territory and (ii)
excluding any of the foregoing that Licensee has independently developed and any
of the foregoing that are in the public domain other than by a breach of this
Agreement by Licensee.
(n) "LICENSOR'S GROUP" shall have the meaning assigned to it in Section
15(a).
(o) "LOSSES" shall have the meaning assigned to it in Section 15(a).
(p) "MANUFACTURED PRODUCTS" shall have the meaning assigned to it in
Section 5(d).
(q) "MATERIAL DEFAULT" shall have the meaning assigned to it in Section
18(a)(ii).
(r) "MATERIAL LICENSED TECHNOLOGY" shall have the meaning assigned to
it in Section 22(a).
(s) "NET SALES" shall mean the gross invoiced amount for Products
bearing the Licensed Xxxx shipped and invoiced by Licensee or any of its
Affiliates to third party customers (including sales through Licensee-owned
retail stores and to franchisees) less: (i) actual or accrued discounts; (ii)
temporary price reductions, including off-invoice price reductions, trade
expenses,
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rebates and customer allowances; (iii) returns; (iv) freight charges paid by
customers for delivery of such Products; (v) sales taxes, excise taxes and
duties which are billed to customers and collected by Licensee or its Affiliates
for submission to a taxing authority; and (vi) value added, excise or sales
taxes incorporated into the sales price pursuant to governmental requirement
(I.E., the net invoice price to customers). For the purposes of this Agreement,
a sale shall not be deemed to have occurred when Products bearing the Licensed
Xxxx are transferred or "sold" by Licensee or its permitted sublicensees to
their respective Affiliates for resale, but only upon the resale by Licensee or
any Affiliate to a third party. Licensee represents that this Section 1(s) is
the definition of "Net Sales" used by Licensee in its business.
(t) "PARTNER SHOP" shall have the meaning assigned to it in Section
7(e)(ii).
(u) "PERCENTAGE ROYALTY" shall have the meaning assigned to it in
Section 6(a).
(v) "PERSON" shall mean any individual, firm, corporation, partnership,
limited liability company, trust, joint venture, governmental entity or other
entity.
(w) "PRINCIPAL LICENSED XXXX" shall mean the "BEN & JERRY'S" trade
name.
(x) "PRODUCTS" shall mean ice cream, frozen yogurt, sorbet, novelties,
flavored ice products and any frozen dessert (including low-fat frozen desserts)
of similar type.
(y) "REGION" shall mean each of Unilever's business regions, namely,
each of Europe, North America, Africa, Central Asia and Middle East, Central and
Eastern Europe, East Asia Pacific (including China) and Latin America.
(z) "SOCIAL MISSION DEFAULT" shall have the meaning assigned to it in
Section 7(e)(x)(A).
(aa) "SOCIAL MISSION MATERIAL DEFAULT" shall have the meaning assigned
to it in Section 7(e)(x)(B).
(bb) "SECTION 7 DEFAULT" shall have the meaning
assigned to it in Section 7(e)(x)(B).
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(cc) "SUPER PREMIUM PRODUCTS" shall mean the following Products (other
than novelty Products and cake Products): (i) full-fat ice cream that (A) does
not exceed 40% overrun, (B) is produced with a mix base that exceeds 14.0%
butterfat, is sweetened only with sucrose, and uses only cream as a source of
butterfat, and skim milk or condensed milk solids as a source of non-fat milk
solids and (C) to the extent applicable, contains inclusions and/or variegates
that displace more than 20% of the total, saleable volume in a product
container; (ii) frozen yogurt that (A) does not exceed 40% overrun and (B) is
produced with a mix base that is flavored with a minimum of 10% cultured yogurt,
made only with cream and fluid milk or condensed milk solids, and is sweetened
with only sucrose and/or corn sweeteners; (iii) low fat ice cream that (A) does
not exceed 40% overrun, (B) is produced with a mix base made only with cream and
fluid milk or condensed milk solids, and is sweetened with only sucrose and/or
corn sweeteners and (C) to the extent applicable, contains inclusions and/or
variegates that displace more than 20% of the total, saleable volume in a
product container; and (iv) sorbet or frozen fruit desserts that (A) do not
exceed 40% overrun, (B) in the case of frozen fruit desserts and sorbet, the
total fruit content (by weight) of which exceeds 20% and (C) produced with a mix
base that is sweetened with only sucrose and/or corn sweeteners.
(dd) "SUPER PREMIUM STATUS" shall mean Super Premium Products that are
sold at a recognized market price premium to premium products in the category.
(ee) "TERRITORY" shall have the meaning assigned to it
in the Preamble.
(ff) "VALUES PARTNERSHIP COMMITTEE" shall have the
meaning assigned to it in Section 7(b).
2. GRANT OF LICENSE
(a) (i) Subject to Section 9 and except as disclosed on Schedule 10,
Licensor hereby grants to Licensee a license throughout the Territory to use
both the Licensed Xxxx and the Licensed Technology in connection with the
development, manufacture, marketing, promotion, distribution (wholesale and
retail) and sale (including Licensee-owned and franchisee-owned retail store
services in compliance with Section 7(e)(ii)) of Products having Super Premium
Status under the Licensed Xxxx (collectively, the "BUSINESS").
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(ii) During the term of this Agreement, Licensor shall not,
and shall not grant a license to any other Person to, develop, manufacture,
market, distribute (wholesale and retail) or sell Products (including novelties)
in the Territory (including for purposes of this Section 2(a)(ii) Canada and the
Benelux countries), except (A) if Licensee is in Material Default, which
Material Default has not been Cured within 60 days following receipt of written
notice from Licensor that complies with the requirements of Section 18(a), (B)
as to a particular Region, if Licensee is in Regional Default with respect to
such Region, which Regional Default has not been Cured within 60 days following
receipt of written notice from Licensor that complies with the requirements of
Section 18(d) or (C) as to any particular country, if Licensee has provided
written notice to Licensor that Licensee does not intend to conduct the Business
("DESIGNATE") in such country or Region. The foregoing shall not apply to sales
of Products having Super Premium Status bearing the Principal Licensed Xxxx (x)
in Canada by Delicious Alternative Desserts, Ltd. or (y) in the Benelux
countries by Sfeerbeheer B.V.
(b) Licensee may use the Licensed Xxxx in connection with the Business
throughout the Territory; PROVIDED, HOWEVER, that Licensee may only use the
Licensed Xxxx together with Licensee's other trademarks with Licensor's written
approval, which approval may be withheld in Licensor's sole discretion;
PROVIDED, FURTHER, that Licensor's approval shall not unreasonably be withheld
if the requirements of applicable law require such use.
(c) (i) Licensee shall use commercially reasonable efforts to exploit
fully the rights herein granted throughout the Territory and to sell under the
Licensed Xxxx the maximum quantity in each Contract Year of Products having
Super Premium Status therein, in each case in a manner consistent with Products
having Super Premium Status, good business practice, with the standards
hereinafter provided and with all appropriate long-term brand-building
philosophy.
(ii) As provided in Section 5(c), the Committee on Joint
Planning shall meet on a regular basis to develop collaboratively a plan for the
phased geographic expansion of the Business in the Territory that will maximize
the quantity in each Contract Year of Products having Super Premium Status sold
under the Licensed Xxxx, consistent with good business practice, the Essential
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Integrity of the Principal Licensed Xxxx and with an appropriate long-term
brand-building philosophy.
(d) The License hereby granted includes the right of Licensee to use
promotional items with the Licensed Xxxx (except as disclosed on Schedule 10) in
the Territory that are given away or sold solely in an ancillary promotion to
the marketing, promotion, distribution and sales of Products, including
accessories, T-shirts and caps, to the extent they are approved by Licensor,
which approval shall not unreasonably be withheld or delayed. Licensee agrees
that all such promotional items shall be manufactured in accordance with fair
labor standards, as such standards (to the extent such standards are applicable
to international manufacture) are used from time to time by Licensor in the
manufacture of its promotional items.
(e) The License hereby granted includes the right of Licensee to use
the Licensed Xxxx in connection with Products having Super Premium Status in all
media and shall also include the right to use the Licensed Xxxx as part of, or
as the name of, any division or business unit, but not as the name of a
corporation or similar entity, which Licensee may organize for the purposes of
manufacturing and distributing for sale Products bearing the Licensed Xxxx.
(f) Licensor reserves all rights to the Licensed Xxxx and Licensed
Technology except as specifically granted herein to Licensee. Without limiting
the first sentence of this Section 2(f), Licensor reserves the right to use, and
to grant to any other person the right to use, the Licensed Xxxx in the
Territory on or in connection with goods and services other than Products (it
being the intent of the parties, however, to avoid any confusion, mistake or
deception in the marketplace as between Products sold by Licensee hereunder and
other Products bearing the Licensed Xxxx), subject to Section 2(d). Licensor
reserves the right to use, and to grant to any other person, a right to use, the
Licensed Xxxx outside the Territory on or in connection with goods and services,
including Products.
(g) Licensee agrees to grant to Licensor for use only in connection
with Products, on a non-exclusive basis, a license, which Licensor may not
sublicense (except to its Affiliates), for the use outside the Territory of (i)
names and formulae relating to new flavors of Products developed by Licensee
bearing the Licensed Xxxx, (ii) enhancements to the Licensed
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Technology, other than those enhancements that (A) are derived in significant
part from technology developed by Licensee in connection with Products of
Licensee other than Products bearing the Licensed Xxxx or (B) have a primary
application to Products of Licensee other than Products bearing the Licensed
Xxxx and (iii) innovations in marketing and promotional techniques that are
developed by Licensee (or jointly in collaboration with Licensor hereunder) in
its conduct of the Business in the Territory. The license granted pursuant to
this Section 2(g) shall be royalty free, non-exclusive and shall survive the
termination or expiration of this Agreement. Use of information licensed to
Licensor pursuant to this Section 2(g) by suppliers of Licensor in providing
supplies and/or materials for use on Products shall not require a sublicense.
(h) The parties agree that (i) the Licensed Technology may be used only
in connection with Products bearing the Licensed Xxxx and (ii) Licensee and its
Affiliates will not during the term of this Agreement manufacture, market,
distribute or sell Products having Super Premium Status in any country in the
Territory other than Products bearing the Licensed Xxxx, except that Licensee
shall not in any way be restricted from further developing, manufacturing,
marketing, distributing or selling Products having Super Premium Status that
Licensee is currently developing, manufacturing, marketing, distributing or
selling and any modifications (including any new flavor variations or any uses
of such Products) thereof. The parties agree that this Section 2(h)(ii) shall be
deemed not to be breached by reason of the acquisition by Licensee or any of its
Affiliates of any business that, in the last full fiscal year prior to execution
of the acquisition agreement derived less than 40% of its consolidated revenues
from any of the development, manufacture, marketing, distribution (wholesale and
retail) or sales of Products having Super Premium Status; PROVIDED, HOWEVER,
that Licensee or its Affiliate, as applicable, will sell or close such business
within 18 months of being requested to do so by Licensor. The parties further
agree that Licensee will not engage in any activity that would otherwise be
prohibited by clause (ii) of this Section 2(h) for (x) one year after the
expiration of this Agreement pursuant to notice given in accordance with Section
3 and (y) three years following termination of this Agreement, in its entirety,
pursuant to Section 18(a) by reason of Licensee's Material Default.
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3. TERM.
This Agreement shall commence on the date hereof and end on and include
December 31, 2010 (the "INITIAL TERM"). Thereafter, this Agreement shall be
extended automatically for successive terms, each of which shall be for a
five-year period, unless Licensee shall give notice of termination not less than
one year prior to the end of the Initial Term or any successive term, as the
case may be.
4. STANDARD OF QUALITY.
(a) Licensee shall ensure that Products bearing the Licensed Xxxx and
their manufacture, distribution and packaging shall be of a high standard and of
such style, appearance and quality as shall be suited to the protection of the
good will pertaining thereto, and shall conform to Licensor's manufacturing and
packaging standards as set forth on Exhibit B hereto (which shall be provided
within 60 days of the date hereof). All such Products shall be manufactured,
sold, labeled, packaged, distributed and marketed in accordance, in all material
respects, with all applicable laws concerning Products in the Territory.
(b) Licensee specifically acknowledges that the product development
process is a collaborative process and that it will actively and timely seek to
obtain Licensor's creative input, including input relating to the social mission
requirements contained in Section 7, with respect to the styles, designs,
containers, packaging contents and quality of all Licensee's Products bearing
the Licensed Xxxx and creative marketing. Before selling or distributing any
such Product, Licensee shall deliver to Licensor for its approval two samples of
each such Product together with its containers, labels and packaging as well as
proposed marketing materials, which approval shall not unreasonably be withheld
or delayed. The foregoing approval process shall also apply to changes in the
formula for any Product with respect to a given country. Licensee shall bear the
cost of any and all such changes.
(c) Licensor and its authorized representatives shall have the right,
during normal business hours and upon reasonable prior notice, for the duration
of the Agreement, (i) to inspect all facilities utilized by Licensee in
connection with its manufacture of Products pursuant hereto and to examine
Products in process of manufacture, and (ii) to gain reasonable access to the
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records of Licensee relating to quality control, in each case so long as
Licensor does not unreasonably disrupt the normal operations of Licensee.
Licensee and its Affiliates shall maintain, at their respective main offices,
books and records regarding customers, permitted co-packers and sublicensees,
product complaints and claims and all other particulars necessary for verifying
compliance with the terms of this Agreement. Licensee and its Affiliates shall
make such books and records available to Licensor and its designated
representatives, from time to time, during normal business hours and upon
reasonable prior notice. Such records shall be maintained by Licensee and its
Affiliates for a period of 24 months after expiration or termination of this
Agreement; PROVIDED, HOWEVER, that such books and records need not be retained
longer than four years following the end of the year to which such books and
records relate. Licensor shall be entitled to make copies, at its expense, of
any such records.
(d) Sections 4(a) and 4(c), the first sentence of each of Section
4(e)(i) and 7(e)(i), and the first sentence of Section 7(e)(iv) and Exhibit B
shall apply equally to any co-packer (or manufacturing sublicensee). Licensee
shall use commercially reasonable efforts to cause any co-packer or
(manufacturing sublicensee) to give reasonable notice of any recall, retrieval
or withdrawal of which it becomes aware and to cease and desist from the
continued manufacture or labeling of Products in violation of the standards
contained in Exhibit B. Licensee shall not use any co-packer (or manufacturing
sublicensee) without the prior written consent of Licensor, which consent shall
not unreasonably be withheld or delayed. In requesting such consent, Licensee
shall concurrently furnish to Licensor an agreement (in English) with such
co-packer (or manufacturing sublicensee) reasonably satisfactory to Licensor
with respect to the applicable requirements contained in this Section 4(d).
(e) (i) Licensee shall, upon written notice to Licensor in accordance
with notification procedures to be mutually agreed upon by the parties, recall,
retrieve or withdraw Licensee's Products bearing the Licensed Xxxx in the
Territory if required or requested to do so by any governmental agency. In the
event of a recall, retrieval or withdrawal Licensee agrees to spend such monies
as Licensee and Licensor mutually and reasonably deem necessary in advertising
and promotional activities to protect the goodwill associated with the Licensed
Xxxx.
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(ii) If, in the absence of a government request or requirement
of a recall, retrieval or withdrawal, Licensor or Licensee reasonably believes
that a recall, retrieval or withdrawal of Licensee's Products bearing the
Licensed Xxxx in the Territory is necessary to protect the Essential Integrity
of the Principal Licensed Xxxx, Licensee and Licensor shall work together to
determine in good faith whether Licensee should, at its own expense, recall,
retrieve or withdraw such Products from any applicable market in the Territory;
PROVIDED, HOWEVER, that in the event that Products bearing the Licensed Xxxx are
not manufactured in compliance with the standards set forth in Exhibit B or are
otherwise manufactured or labeled in violation of this Agreement and such
manufacturing or labeling of the Products does not have a material effect on the
Principal Licensed Xxxx or on the Essential Integrity of the Principal Licensed
Xxxx, then Licensee shall not be obligated to recall, retrieve or withdraw
Licensee's Products bearing the Licensed Xxxx but shall only be obligated to
cease and desist from the continued manufacturing or labeling of such
non-compliant Products.
(iii) In the event a party becomes aware of any recall,
retrieval or withdrawal, or request for a recall, retrieval or withdrawal, by
any governmental body or regulatory authority, of Products bearing the Licensed
Xxxx, such party shall give telephonic notice (to be confirmed in writing) to
the other party within 48 hours of becoming aware of the occurrence of such
event. Additionally, in the event of any significant accident involving the
manufacture, distribution or sale of Products bearing the Licensed Xxxx, each
party shall provide the other party with notice as set in the preceding
sentence.
(iv) Sections 4(e)(i) and 4(e)(ii) shall survive termination
or expiration of this Agreement.
5. BUSINESS OPERATION.
(a) Licensor shall provide, without additional charge, to Licensee all
Licensed Technology owned by Licensor and its Affiliates for use under this
Agreement that relates to the Business. Licensor further agrees to make
available for consulting to Licensee such employees of Licensor or its
Affiliates as Licensee may reasonably request in connection with the foregoing
provision of information.
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(b) Licensee agrees regularly to consult with Licensor concerning
Licensee's business plans, and the implementation thereof, for Products having
Super Premium Status in the Territory bearing the Licensed Xxxx, it being agreed
that there should be joint cooperation and consultation in order for Licensee to
consider Licensor's creative input. Licensee shall present to Licensor a draft
of its Annual Marketing Plan with respect to Products bearing the Licensed Xxxx
once a year for Licensor's qualitative review and creative input prior to the
implementation of such Annual Marketing Plan.
(c) Licensee and Licensor agree to establish an advisory committee (the
"COMMITTEE FOR JOINT PLANNING") composed of two representatives designated from
time to time by Licensor and two representatives designated from time to time by
Licensee in order to facilitate the cooperation and consultation referred to in
Section 5(b). Among other matters, the Committee for Joint Planning shall also
be responsible for establishing a plan for the phased geographic expansion of
the Business in the Territory, as contemplated by Section 2(c), and shall
oversee the consultation and cooperation required under Sections 5 and 8. The
Committee for Joint Planning shall meet at least once each calendar quarter at
such times and places as it may designate.
(d) Subject to Licensor's capacity to manufacture the quantities
reasonably requested by Licensee within the requested time periods, Licensor
agrees to sell to Licensee quantities of Products bearing the Licensed Xxxx
("MANUFACTURED PRODUCTS") necessary to meet Licensee's demand in any country in
the Territory to the extent that at such time Licensee is not engaged in the
Business in such country at a level sufficient to manufacture such Products on
commercially reasonable terms. To the extent that Licensor is supplying
quantities of Products to Licensee pursuant to the preceding sentence,
Licensee's obligations with respect to manufacturing standards contained herein,
including, without limitation, the manufacturing standards in Section 4(a) and
Exhibit B, shall have been assumed to have been met. Licensee shall purchase
such Manufactured Products from Licensor at Licensor's ex-factory cost plus 8%,
F.O.B. Licensor's plant, and such purchases shall be subject to Licensor's
standard terms and conditions for sales to distributors and subject to a
mutually satisfactory co-packing agreement.
(e) Notwithstanding any other provision of this Agreement, Licensee
shall reimburse Licensor for out-of-
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pocket expenses and a pro rata (based on actual service time) portion of
applicable salaries (including benefits), in each case without xxxx-up, in
connection with all consulting, assistance and other services provided by
Licensor under this Agreement within 30 days of receipt of an invoice from
Licensor; PROVIDED, HOWEVER, that such expenses are approved in writing in
advance by Licensee and Licensor and, if applicable, its Affiliates, provide
supporting documentation reasonably satisfactory to Licensee. The foregoing
shall not require any reimbursement in connection with (i) the participation by
any Person on the Committee for Joint Planning or the Values Partnership
Committee or (ii) the exercise by Licensor of its rights under Section 4(c),
other than in the case of an inspection or audit by Licensor that uncovers or
confirms a material breach of quality control standards in a production run or a
material breach of this Agreement by Licensee and in such case Licensee shall
reimburse Licensor pursuant to the first sentence of this Section 5(e).
(f) Licensee shall have no obligation to conduct the Business hereunder
in any country in the Territory where the Principal Licensed Xxxx or Material
Licensed Technology infringes or interferes with the rights of third parties;
PROVIDED, HOWEVER, that Licensee shall cooperate with Licensor to conduct the
Business in the Territory so as not to cause such infringement or interference.
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6. PAYMENT OF ROYALTY.
(a) (i) In consideration of the license granted hereunder, Licensee
shall pay to Licensor a royalty (the "PERCENTAGE ROYALTY") computed at the rate
of 5% of Net Sales of Products sold under the Licensed Xxxx (subject to Section
7(e)(ix)) and 5% of Net Sales of promotional items sold (including sales at
retail where applicable) in accordance with Section 2(d)(subject to Section
7(e)(ix)) and 5% of all up-front franchise fees collected by Licensee from its
subfranchisees.
(ii) Licensee shall receive a credit against amounts payable
as the Percentage Royalty for each quarter in an amount equal to 8% of the
amount paid by Licensee to Licensor for Manufactured Products purchased by
Licensee from Licensor during such quarter. For purposes of determining whether
sales of Products bearing the Licensed Xxxx are sales of Manufactured Products,
the parties agree that Manufactured Products shall be deemed to be the last
Products bearing the Licensed Xxxx put into Licensee's inventory and shall be
deemed to be the first Products bearing the Licensed Xxxx sold by Licensee to
third parties.
(b) All payments of the Percentage Royalty by Licensee shall be made to
Licensor in New York, New York or such other country and city as Licensor shall
reasonably designate from time to time; PROVIDED, HOWEVER, that such designation
must be in accordance with applicable law. The Percentage Royalty shall be paid
in U.S. Dollars. Where sales of Products bearing the Licensed Xxxx are made in a
currency other than U.S. Dollars, the Percentage Royalty and other amounts shall
be computed on the basis of the conversion rate used by Licensee in its regular
internal accounting mechanisms.
(c) Licensee shall pay any withholding taxes that any governmental
authority may impose with respect to the payment of the Percentage Royalty. The
amount of such taxes shall be appropriately deducted from the amount of
Percentage Royalty otherwise payable to Licensor. Licensee shall furnish
Licensor with a copy of an official receipt promptly after each payment of such
taxes. Licensor may request Licensee not to withhold any specified tax;
PROVIDED, HOWEVER, that (i) such request is reasonable and (ii) in any such
case, Licensor shall indemnify Licensee for all resulting liability attributable
to Licensor's request not to withhold.
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(d) The Percentage Royalty payments hereunder shall be accounted for
and paid within 45 days following the close of each calendar quarter and,
subject to Section 6(a)(ii), shall be computed on the basis of Net Sales during
such quarter. The Percentage Royalty payable for each such quarter shall be
computed on the basis of Net Sales made for the Contract Year through the end of
such quarter with a credit for the Percentage Royalty previously paid for such
Contract Year. Licensee shall deliver to Licensor at the time each payment of
the Percentage Royalty is due a written statement, indicating by year-to-date,
the amount of Net Sales. Such statement shall show the total amount of gross
sales of all Products bearing the Licensed Xxxx shipped during the period
covered by such payment, the Percentage Royalty and the amount of discounts and
credits to arrive at Net Sales. In the event that Licensee has not made its
required payments under this Section 6 within the specified time periods,
Licensee shall pay interest on such past due amounts at the 30-day London
Interbank Offered Rate plus 5%; PROVIDED, HOWEVER, that the foregoing shall not
apply to any amounts withheld by Licensee as a result of a good faith dispute
regarding the amount owed to Licensor.
(e) Licensee shall furnish to Licensor, not later than 60 days
following the close of each Contract Year (or portion thereof in the event of
prior termination in accordance with this Agreement), a statement containing the
information required to be contained in the quarterly statements referred to in
Section 6(d), as well as a computation of the Percentage Royalty earned by
Licensor. Licensor shall be permitted, for a period of two years after the
receipt of each such annual accounting statement, to object to such statement in
writing, describing such objections with specificity. If no such written
objection is made, the said annual statement shall be binding on both parties.
If Licensor timely objects in writing, the dispute shall be resolved in
accordance with the provisions of Section 27. This Section 6(e) shall survive
the termination or expiration of this Agreement.
(f) Licensee shall keep records adequate for verification of all
statements and payments made to Licensor hereunder. A certified public
accountant or other representative of Licensor's selection shall have access
upon reasonable notice and at reasonable business hours to those records to the
extent necessary to certify the statements and payments. Such accountant or
representative shall have the right to audit such records
16
for two years after the Contract Year to which they relate. Licensor shall bear
the cost of such audit unless such audit discloses a variance of more than 10%
from the amount due, in which event, Licensee shall bear the full cost of such
audit. All such books of account, records and documents shall be kept available
by Licensee for Licensor's inspection for at least three years after the
Contract Year to which they relate. This Section 6(f) shall survive the
termination or expiration of this Agreement.
(g) Licensee acknowledges that Licensor may have certain existing
royalty obligations to third parties relating to the Licensed Xxxx. Accordingly,
Licensee agrees to provide Licensor, upon Licensor's request and within a
time-period reasonably requested by Licensor, any and all information required
by Licensor in order to calculate such royalty payments (as set forth in Exhibit
C, which shall be provided within 60 days following the date hereof). With
respect to any third-party royalty obligations on the part of Licensor arising
after the date hereof, Licensor agrees to provide promptly after Licensor agrees
to such third-party royalty obligations Licensee with written notice of the
information Licensor may reasonably require to make any such third-party royalty
payments. This Section 6(g) shall survive the termination or expiration of this
Agreement.
(h) If Licensee has either underpaid or overpaid Licensor amounts
payable as the Percentage Royalty under this Agreement, in the former case,
Licensee shall within 10 days of the discovery of such discrepancy pay to
Licensor the amount of such underpayment, and, in the later case, Licensor shall
within 10 days of the discovery of such discrepancy pay to Licensee the amount
of such overpayment, together, in each case, with interest on the amount of the
underpayment or overpayment, as applicable, at a rate equal to the
yield-to-maturity of U.S. treasury securities as published in the Wall Street
Journal with a maturity that most closely equals the period of time beginning on
the date of such underpayment or overpayment, as applicable, and ending on the
date such amount is paid to Licensor or Licensee pursuant to this Section 6(h),
as applicable.
7. SOCIAL MISSION.
(a) Licensee agrees that the following will apply to its conduct of the
Business in the Territory. Products bearing the Licensed Xxxx shall be
developed,
17
introduced, promoted and marketed by Licensee in a manner so as to further the
Essential Integrity of the Principal Licensed Xxxx, as such Essential Integrity
of the Principal Licensed Xxxx is now embodied in the business conducted by
Licensor in the United States (and certain countries outside the United States),
and as it may evolve hereafter in a manner consistent with its current
embodiment. Accordingly, Licensee shall integrate sufficient aspects of
Licensor's social mission into its conduct of the Business in the Territory to
preserve the Essential Integrity of the Principal Licensed Xxxx in the Territory
as it may evolve, as noted above.
(b) The parties further agree to establish a committee (the "VALUES
PARTNERSHIP COMMITTEE") composed of (i) senior executives and members of the
board of directors of Licensor and (ii) senior executives of Licensee engaged in
its U.S. and its international ice cream businesses. Licensor and Licensee shall
each from time to time designate an equal number of representatives to the
Values Partnership Committee. The Values Partnership Committee shall meet three
times a year, or such other number of times a year as the Values Partnership
Committee shall determine, at such time and place as may be designated by the
Values Partnership Committee. The Values Partnership Committee shall, in
addition to any other responsibilities conferred on it by any other provision of
this Agreement, (i) find new opportunities to develop and preserve the Essential
Integrity of the Principal Licensed Xxxx, (ii) monitor and oversee the
performance by Licensee of its obligations in this Section 7 in its conduct of
the Business in the Territory and (iii) monitor and oversee Licensor's provision
of assistance to Licensee in an effort to introduce from time to time other
applications of Licensor's social mission to Licensee's conduct of the Business
in the Territory.
(c) The parties acknowledge that, to the extent appropriate for
particular customs and market conditions, the promotion and marketing of
Products bearing the Licensed Xxxx will need to be adjusted for particular
countries in which Licensee will sell Products, but shall not be adjusted in a
way that, as a whole in any country, would compromise the Essential Integrity of
the Principal Licensed Xxxx. Accordingly, and without limiting any other
provision of this Agreement, Section 2(d) provides Licensor with an approval
right with respect to promotional items and Section 8(c) provides Licensor with
an approval right before Licensee may launch Products in any country.
18
(d) The parties agree that the performance by Licensee of its
obligations in this Section 7 is a material and fundamental element of this
Agreement and is essential to preserve the Essential Integrity of the Principal
Licensed Xxxx.
(e) In connection with Licensee's commitment to preserve the Essential
Integrity of the Principal Licensed Xxxx, set forth below in clauses (i) through
(vi), as supplemented by clauses (vii) and (viii), are certain elements of
Licensor's social mission that Licensee has specifically agreed to implement
during the term of this Agreement in its conduct of the Business in the
Territory.
(i) With respect to certain raw materials used in the
manufacture of Products bearing the Licensed Xxxx (E.G., vanilla, coffee and
cocoa), Licensee agrees to purchase and use "fair trade" products, to the extent
available at commercially reasonable prices, when Licensee commences production
at each production facility in the Territory of Products bearing the Licensed
Xxxx. The determination as to whether a product purchased and used by Licensee
is a "fair trade" product shall be made by reference to lists certified by The
Xxx Xxxxxxxx Foundation, any member of the Fairtrade Labeling Organizations
International or any other "fair trade" federation of similar reputable standing
selected by Licensor, subject to the reasonable approval of Licensee. As
supplies of other "fair trade" raw materials used in the manufacture of Products
bearing the Licensed Xxxx become available for purchase in appropriate
quantities and at commercially reasonable prices, Licensee agrees to expand its
purchase of "fair trade" products to include such additional raw materials. The
obligations contained in this Section 7(e)(i) shall be applied on a
country-by-country basis. The parties acknowledge that commercially reasonable
prices with respect to "fair trade" products in general may be somewhat higher,
but not significantly higher, than the price of non-"fair trade" products.
(ii) In connection with the development of a plan for
Licensee's phased geographic expansion of the Business pursuant to Section 2(c),
Licensor and Licensee shall jointly determine in which countries it is
commercially feasible for Licensee to franchise or operate scoop shops. Once
Licensee has established an economically successful scoop shop in a country, it
shall cooperate with Licensor to find an appropriate partner in order to
establish Licensee's next scoop shop in such
19
country as a Partner Shop; PROVIDED, HOWEVER, that if Licensee opens several
scoop shops in one wave in such country (I.E., it opens several scoop shops
contemporaneously in such country), Licensee shall cooperate with Licensor to
find a partner to open a Partner Shop in the second wave of scoop shops in such
country. After the opening of the first Partner Shop in a country, Licensee
shall open up at least one new Partner Shop during each successive Contract Year
in such country with the objective of having Partner Shops constitute at least
20% of the scoops shops in such country. "PARTNER SHOP" shall mean a franchised
scoop shop that is awarded to a not-for-profit organization that serves as an
employment resource, and potentially a source of revenue, for the not-for-profit
organization, and that is exempted from payment of the normal up-front franchise
fee, and such term shall be modified from time to time to reflect modifications
made by Licensor in its practice of franchising scoop shops to not-for-profit
organizations in the United States, PROVIDED that such modifications are
reasonable, in terms of commercial feasibility, for Licensee to adopt in
countries outside the United States. It being understood that the parties shall
within 12 months of the date hereof negotiate a master franchising agreement.
(iii) Commencing as of the date hereof, Licensee agrees to
explore in good faith, and in cooperation with Licensor, and both parties agree
to commit sufficient resources to, the development of a commercially feasible
organic line of Products bearing the Licensed Xxxx for sale in the Territory.
Once Licensee has successfully developed an organic line of Products bearing the
Licensed Xxxx to the mutual satisfaction of the parties, Licensee shall make a
commercially meaningful introduction within 12 months of such organic Products
bearing the Licensed Xxxx in the Territory.
(iv) Licensee agrees to use unbleached paper in the packaging
for Products bearing the Licensed Xxxx to the extent available at commercially
reasonable prices. To the extent unbleached paper is not so available, Licensee
shall use commercially reasonable efforts to encourage suppliers to make
unbleached paper available at commercially reasonable prices. The parties
acknowledge that commercially reasonable prices with respect to unbleached paper
in general may be somewhat higher, but not significantly higher, than the prices
of bleached paper. Licensee agrees to continue the efforts of Licensor to make
packaging for Products bearing the
20
Licensed Xxxx in the Territory more environmentally friendly. The foregoing
obligation shall be applied on a country-by-country basis.
(v) By the end of the first year of production at any
production facility in the Territory operated by Licensees (or its permitted
co-packers or manufacturing sublicensee), Licensee agrees, if commercially
feasible, to purchase a portion of the raw materials or other ingredients used
by it in Products bearing the Licensed Xxxx in such production facility produced
from suppliers owned by persons which constitute not-for-profit entities
(understanding that commercial feasibility may require some managerial and other
assistance, including financial assistance, from Licensee to establish such
supplier as a reasonably suitable vendor to Licensee). It is understood by the
parties that use by Licensor of Greyston Bakery as a supplier in the United
States is an illustration of such practice. While the foregoing is primarily an
obligation of Licensee, Licensor shall work together with Licensee to identify
qualified suppliers under this clause (v). Licensee shall increase, to the
extent that it is commercially feasible, the amount of raw materials or other
ingredients purchased by Licensee (or its permitted co-packers or manufacturing
sublicensees) for use in Products bearing the Licensed Xxxx from such suppliers
each year. The parties acknowledge (A) that in determining commercially
feasibility with respect to increasing the amount of raw materials and other
ingredients purchased pursuant to this Section 7(e)(v), Licensee may consider
its dependence on each such supplier as well as the ability of each such
supplier to provide the raw materials and other ingredients on a dependable
basis and (B) that the prices of raw materials or other ingredients from such
suppliers may be somewhat higher, but not significantly higher, than the prices
from suppliers not owned by not-for-profit entities. The foregoing obligation
shall be applied on a country-by-country basis.
(vi) By the end of the first year of production of Products
bearing the Licensed Xxxx at any production facility in the Territory operated
by Licensee (or its permitted co-packers or manufacturing sublicensees),
Licensee agrees, if commercially feasible, to purchase a portion of the raw
materials or other ingredients used by it in Products bearing the Licensed Xxxx
produced in such production facility from suppliers owned by persons which
constitute economically disadvantaged groups (understanding that commercial
feasibility may require some managerial and other assistance, including
financial
21
assistance, from Licensee to establish such supplier reasonably satisfactory to
Licensee). While the foregoing is primarily an obligation of Licensee, Licensor
shall work together with Licensee to identify qualified suppliers under this
clause (vi). Licensee shall increase, to the extent commercially feasible, the
amount of raw materials or other ingredients purchased by Licensee (or its
permitted co-packers or manufacturing sublicensees) for use in Products bearing
Licensed Xxxx from such suppliers each year. The parties acknowledge (A) that in
determining commercial feasibility with respect to increasing the amount of raw
materials and other ingredients purchased pursuant to this Section 7(e)(vi),
Licensee may consider its dependence on each such supplier as well as the
ability of each such supplier to provide the raw materials and other ingredients
on a dependable basis and (B) that the prices of raw materials or other
ingredients from such suppliers may be somewhat higher, but not significantly
higher, than the prices from suppliers not owned by economically disadvantaged
groups. The foregoing obligation shall be applied on a country-by-country basis.
(vii) Licensee shall provide Licensor within 45 days following
the close of each calendar quarter (and 60 days following the close of each
calendar year) with a report detailing Licensee's performance of its obligations
under this Section 7 in its conduct of the Business in the Territory. In the
case of quarterly reports, such reports shall be summary reports and, if
applicable, comply substantially with the level of detail provided in and the
form of analogous quarterly reports produced by Licensor as of the date hereof.
In the case of annual reports, such reports shall be formatted in substantially
the same form as the "Social Performance Reports" as it appears in Licensor's
1998 Annual Report.
(viii) Xxx Xxxxx and Xxxxx Xxxxxxxxxx, individually, shall
have the right (but not the obligation) to participate, in a manner mutually
satisfactory to Licensor and Licensee (including by way of public appearances),
in Licensee's roll-out of Products bearing the Licensed Xxxx in each country in
the Territory. It is understood that, wherever this Agreement calls for Licensor
to provide consultation, services, promotional activities or assistance, such
requirement does not include consultation, services or assistance from Xxx Xxxxx
or Xxxxx Xxxxxxxxxx, except at the option of each of them. To the extent they
are not as designees of Licensor on any committee, they shall be
22
entitled to such compensation/reimbursement as shall be agreed between Licensor
and Licensee.
(ix) (A) If Licensor notifies Licensee in writing with
reasonable specificity that Licensee has materially breached any of its
obligations under Sections 7(e)(i) through (e)(vi) with respect to a country (a
"SOCIAL MISSION DEFAULT"), Licensee shall endeavor to Cure the Social Mission
Default. Subject to Section 7(e)(ix)(C), if after 90 days from the date of
receipt of such notice Licensee has not Cured the Social Mission Default, the
Percentage Royalty with respect to the Region which includes the country in
which such Social Mission Default occurred shall be increased to 8% as provided
in Section 7(e)(ix)(C).
(B) Subject to Section 7(e)(ix)(C), in the event that a breach
of this Section 7 constitutes a Material Default (a "SOCIAL MISSION MATERIAL
DEFAULT" and, together with a Social Mission Default, a "SECTION 7 DEFAULT"),
Licensee shall have one year after receipt by Licensee of written notice from
Licensor specifying the breach in reasonable detail to Cure such Social Mission
Material Default, and the Percentage Royalty shall be increased to 8% and such
increased rate shall continue to be in effect for so long as such Social Mission
Material Default is continuing and is not Cured.
(C) Upon receipt of a notice pursuant to this Section
7(e)(ix), Licensee may within 20 days refer the determination of a Section 7
Default to an arbitrator in accordance with Section 27(b) of this Agreement. In
the event that arbitrator determines that the Section 7 Default is the result of
Licensee's actions, or inaction, the Percentage Royalty shall be increased to 8%
effective as of the date of the Section 7 Default and such increased rate shall
continue to be in effect for so long as such Section 7 Default is continuing and
is not Cured. If the arbitrator determines that the Section 7 Default is not the
result of Licensee's actions, or inaction, no Section 7 Default shall be deemed
to have occurred.
8. LAUNCH.
(a) Licensor acknowledges that the preparation to commence sales of
Products bearing the Principal Licensed Xxxx in any country where Licensor is
not currently manufacturing, marketing, distributing or selling such Products is
a time-consuming process. Accordingly, Licensee agrees to use commercially
reasonable efforts to commence sales of Products bearing the Principal Licensed
23
Xxxx in the Territory in conformity with the schedule to be agreed upon by the
Committee on Joint Planning.
(b) Licensor agrees to provide Licensee with a reasonable level of
technical and other assistance to enable Licensee to commence sales of Products
bearing the Principal Licensed Xxxx in any country in the Territory as may be
determined by the parties in accordance with Section 5(c).
(c) Licensor shall have the right to assist in the development of and
monitor the progress and implementation of Licensee's plans to commence sales of
Products bearing the Principal Licensed Xxxx in any country, and Licensee shall
seek Licensor's approval, which approval shall not be unreasonably withheld or
delayed (so long as Licensor cannot grant another license with respect to a
particular country in accordance with Section 2 or Section 18 or Licensee is not
in Social Mission Material Default, which Social Mission Material Default is not
Cured within 60 days following receipt of written notice from Licensor that
complies with the requirements of Section 18(a) in which event such approval may
be withheld in Licensor's sole discretion), prior to launching in any country in
the Territory. For purposes of the foregoing, Licensor reasonably may withhold
its approval under this Section 8(c) of Licensee's launch in any country deemed
by both Amnesty International and Freedom House to be engaged in significant
human rights abuses at such time.
9. STATUS OF LICENSE IN CERTAIN COUNTRIES.
(a) UK. Licensee or one of its Affiliates agree to acquire, and
Licensor agrees to sell, at net book value (without assigning any value to
goodwill or transferable tax losses, if any) Licensor's assets and related trade
liabilities incurred in the ordinary course of business related to the conduct
of the Business in the United Kingdom pursuant to an asset purchase agreement to
be mutually agreed upon by the parties hereto. Thereafter, Licensor shall supply
Products to Licensee for Licensee's conduct of the Business in the United
Kingdom in accordance with Section 5(d).
(b) FRANCE. Licensee or one of its Affiliates agrees to acquire, and
Licensor agrees to sell, at net book value (without assigning any value to
goodwill or transferable tax losses, if any) Licensor's assets and related trade
liabilities incurred in the ordinary course of business related to the conduct
of the Business in the
24
France pursuant to an asset purchase agreement to be mutually agreed upon by the
parties hereto. Thereafter, Licensor shall supply Products to Licensee for
Licensee's conduct of the Business in the France in accordance with Section
5(d).
(c) BENELUX. Licensor shall, at Licensee's request, assign to Licensee
all Licensor's rights under any and all licenses with respect to the
Netherlands, Luxembourg and Belgium.
(d) ISRAEL. Licensor shall use commercially reasonable efforts to
obtain (at Licensor's expense) for Licensee the right to conduct all facets of
the Business in Israel.
(e) CANADA. The parties acknowledge that Licensor has granted
previously a license for Canada to a third party and that Licensee will not be
able to conduct the Business in Canada on an exclusive basis until such license
expires or is terminated.
10. REPRESENTATIONS AND WARRANTIES.
(a) Licensor represents and warrants that it has full right, power and
authority to enter into this Agreement and to grant the rights, licenses and
privileges hereby granted by Licensor to Licensee in Section 2, including acting
as licensee of any Licensed Xxxx listed in Schedule 10, and that no consent of
any third party is required or that Licensor has obtained all consents which may
be required to permit Licensor to execute this Agreement and to perform its
obligations hereunder, or to permit Licensee to exercise fully the rights
granted hereunder. Licensor further represents and warrants that (i) it is the
owner, or licensee, of all right, title and interest in and to the Licensed Xxxx
and the Licensed Technology for use in connection with Products and (ii) it, or
owners of trademarks licensed to Licensee, have in the Territory obtained
registrations for the Licensed Xxxx that are valid, subsisting and in full force
and effect in the jurisdictions, as listed in Schedule 10; and it, or owners of
trademarks licensed to Licensees, are owners of and have filed trademark
applications for the Licensed Xxxx in the jurisdictions, as listed in Schedule
10. Licensor further represents and warrants that the Principal Licensed Xxxx is
in use or that Licensor otherwise has valid rights in the Licensed Xxxx in the
jurisdictions listed in Schedule 10 (the "EXISTING COUNTRIES"), and together
with the other intellectual property owned by or licensed to Licensee,
25
constitutes all of the intellectual property necessary to conduct the Business
in the Existing Countries. Licensor represents, to the best of its knowledge,
that Licensee's use of the Principal Licensed Xxxx and Material Licensed
Technology in the Existing Countries will not infringe on or interfere with the
rights of third parties. With respect to the jurisdictions which are not
identified as the Existing Countries in Schedule 10, Licensor represents and
warrants that it has made no inquiry but it has no actual knowledge or basis to
believe Licensee's use of the Licensed Xxxx will infringe on or interfere with
the rights of third parties. Except as listed in Schedule 10, Licensor is not
aware of any infringements of the Licensed Xxxx or Licensed Technology, and
Licensor has no knowledge of any pending conflicts.
(b) Licensee represents and warrants that it has full power, right and
authority to enter into this Agreement and to perform all its obligations
hereunder.
(c) Licensor further represents and warrants that it has not, and
covenants that it shall not, except as permitted by this Agreement, (i) grant to
any person, any right to use the Licensed Xxxx in the Territory for any Products
or retail store services related to Products, nor shall the Licensed Xxxx be so
used by Licensor, or (ii) design, develop, manufacture, market, distribute or
sell any Products in the Territory or assist anyone else to become so engaged.
(d) Licensor shall cause members of Licensor's or its Affiliates'
management team to be available to Licensee and its sublicensees at mutually
agreeable times and places for the purpose of consultation and promotional
activity.
(e) All representations and warranties contained in this Section 10 are
qualified by reference to Schedule 10.
11. OWNERSHIP OF TRADEMARKS.
(a) Licensee acknowledges that Licensor (or its third-party Licensor),
and not Licensee, is the owner of all right, title and interest in and to the
Licensed Xxxx in the Territory under this Agreement and is also the owner of the
good will attached, or which shall become attached, to the Licensed Xxxx.
Licensee shall not, at any time, do any act or thing which will materially
impair the rights of Licensor (or its third-party licensor) in and to the
Licensed Xxxx or any
26
registrations thereof or which will materially depreciate the value of the
Licensed Xxxx.
(b) Licensee shall cause to appear on all Products and on all materials
on or in connection with which the Licensed Xxxx is used, such legends, markings
and notices as may reasonably be necessary in order to give appropriate notice
of any trademark, trade name or other rights therein or pertaining thereto, as
instructed by Licensor, and Licensor shall hold Licensee harmless in any action
arising from such legend, markings or notices.
12. REGISTRATION OF TRADEMARKS.
(a) Licensor shall file an application to register, or, if applicable,
shall, where appropriate under the relevant third-party license, request that
the relevant third-party licensor file an application to register and maintain,
at its own cost but subject to Section 12(c), the Licensed Xxxx covering
Products in the countries of Licensor's choice or in such other countries as
Licensee may reasonably request. Upon receipt of Licensee's request, Licensor
shall file and prosecute, or, if applicable, where appropriate under the
relevant third-party license request that the relevant third-party licensor file
and prosecute, one or more applications for registration of the Licensed Xxxx in
the name of Licensor or such other name as Licensor, or, where appropriate under
the relevant third-party license, in the name of its third-party licensor, if
applicable, may determine, and Licensor shall maintain, or, if applicable, where
appropriate under the relevant third-party license shall request that the
relevant third-party licensor maintain, such registrations for the term of this
Agreement. In a case where, due to local regulations and, in particular,
restrictions regarding sublicenses or "registered users" status, the
registration may not be owned by Licensor, the registration shall be completed
in the name of Licensee or one of its Affiliates. Licensee expressly agrees
that, in the case of registration in the name of Licensee or its Affiliate for
the aforementioned reason, Licensee shall thereby not acquire proprietary rights
in respect to the Licensed Xxxx. Upon termination of this Agreement, Licensee
shall be deemed automatically to have assigned, transferred and conveyed to
Licensor for itself, and, if appropriate, for relevant third-party licensors of
Licensor, any and all trademarks, rights, equities, good will and all other
rights associated therewith which may have been obtained by Licensee or which
may have vested in Licensee as a result of Licensee's actions under this
Agreement, and Licensee
27
shall execute, and hereby irrevocably appoints Licensor its attorney-in-fact to
execute, if Licensee refuses to do so, any instruments requested by Licensor,
or, if applicable, by the relevant third-party licensor, to accomplish or
confirm the foregoing. Any such assignment, transfer or conveyance shall be
without consideration other than the mutual covenants and consideration of this
Agreement.
(b) Licensee shall cooperate with Licensor, or its third-party
licensor, as applicable, reasonably and in good faith in connection with the
filing and prosecution by Licensor, or the relevant third-party licensor, as
applicable, of any such applications, and the maintenance and renewal of any
registration for the Licensed Xxxx, and will supply Licensor, or the relevant
third-party licensor, as applicable, with such samples of products, packaging
and marketing materials bearing the Licensed Xxxx and such evidence of other
uses of the Licensed Xxxx, as may reasonably be requested by Licensor or its
relevant third-party licensor, as applicable, in connection with trademark and
service xxxx applications or registrations. Licensee shall provide Licensor with
60 days' prior written notice of its plans to begin conducting the Business in
any country in the Territory where no previous registration or application for
registration of the Licensed Xxxx has been obtained. Licensee shall execute all
documents which Licensor, or the relevant third-party licensor, as applicable,
may reasonably request in order to obtain or maintain a registration or to
establish or to maintain Licensor's or the relevant third-party licensor's, as
applicable, ownership of or rights in and to the Licensed Xxxx. The first
sentence of this Section 12(b) with respect to the cooperation of Licensee shall
survive the termination or expiration of this Agreement.
(c) Licensee shall reimburse Licensor for all filing, registration and
renewal fees, including reasonable attorneys' fees, for registrations and
renewals requested by Licensee of the Licensed Xxxx other than the Principal
Licensed Xxxx.
13. NEW INTELLECTUAL PROPERTY.
(a) In the event that Licensor or its Affiliates should adopt
additional or new trademarks or trade names directly in its own name, or
indirectly through other business interests including, without limitation, by
license from a third party, in connection with Products having Super Premium
Status, Licensor shall promptly so
28
notify Licensee, and Licensor shall attempt, at Licensee's request, to extend
such License and, regardless of Licensor's success in such attempt, Licensor
shall inform Licensee of the results thereof so as to grant Licensee (on the
same basis that the trademarks or trade names are granted under Section 2 and
subject to any limitations on Licensor's rights to such additional trademarks or
trade names) the right in the Territory to those names in connection with such
Products and such additional names shall be included under the definition of
"Licensed Xxxx" in Section 1, and if Licensee elects, at its sole option, such
additional names may be used by Licensee and its permitted sublicensees pursuant
to the terms of this Agreement, subject to the payment of the Percentage Royalty
as provided for in Section 6. Licensee shall bear the cost of any such
extension.
(b) Licensee shall grant to Licensor a license as provided in Section
2(g).
14. INFRINGEMENT.
(a) Each of Licensee and Licensor shall promptly notify the other party
in writing of any use by any third party of a trade name or trademark which
might amount to infringement of the Licensed Xxxx that come to its attention.
(b) Licensor may, in its sole discretion, take proceedings in relation
to any alleged infringement of any Licensed Xxxx. Each party shall render all
reasonable assistance to the other in connection with any such proceeding.
(c) In the event that Licensee reasonably considers that any
infringement or alleged infringement of the Licensed Xxxx in the Territory is
causing detriment to its business and Licensor declines after reasonable notice
to promptly take proceedings in relation thereto, Licensee may file actions,
proceedings or suits against any third party in respect of such infringement or
alleged infringement in the Territory after first giving Licensor reasonable
notice of its intention to do so. Licensor shall, at Licensee's request, render
all reasonable assistance to Licensee in connection therewith, and take such
action as may be necessary to enable Licensee to pursue the proceedings,
including, if necessary, the grant of an appropriate power of attorney with full
power of substitution or consenting to join in any such action as a party
plaintiff.
29
(d) Neither party shall enter into any settlement or consent to any
judgment with respect to an infringement without the consent of the other party,
which consent shall not be unreasonably withheld or delayed. The party
initiating such infringement action and prosecution shall bear all expenses
incurred and shall receive all the proceeds (if any) recovered in connection
with such action, after reimbursement of all out-of-pocket expenses of each
party. If such expenses (including attorneys' fees) exceed the amount of the
proceeds recovered in connection with such action, then such reimbursement shall
be made pro rata (based on the out-of-pocket expenses of each party).
(e) If either Licensee or Licensor becomes aware of any claim by any
third party that the use of any of the Licensed Xxxx in connection with the sale
of Products hereunder infringes the right of any third party, it shall promptly
notify the other party in writing. The provisions of Sections 14(b), (c) and (d)
shall apply to the conduct of the defense of such claim in the same manner as to
an infringement; PROVIDED, HOWEVER, that each party may, pending the other
party's decision to defend such a claim, act in a manner not prejudicial to the
other party's interest in preserving the validity of ownership of the Licensed
Xxxx, to protect its individual position.
(f) Licensor and Licensee shall, before taking any action pursuant to
Section 14(b), (c) or (e), consult each other as to the appropriate steps in
proceedings and by which party these should be taken; PROVIDED, HOWEVER, that
this is without prejudice to the rights of the parties under Section 14(b), (c)
or (d).
(g) If any infringement action involving the Licensed Xxxx or the
Licensed Technology is in existence on the date of the termination or expiration
of this Agreement, each party shall render all reasonable assistance required to
be given pursuant to this Section 14 to the other party in connection therewith.
This Section 14(g) shall survive the termination or expiration of this
Agreement.
15. INDEMNIFICATION.
(a) Licensee shall defend, indemnify and hold harmless Licensor and its
respective officers, directors and employees (collectively, the "LICENSOR'S
GROUP") from and against any and all claims, losses, damages,
30
liabilities, obligations, costs and expenses, including reasonable attorneys'
fees (collectively, "LOSSES"), arising out of or resulting from the conduct of
the Business by Licensee, its Affiliates, agents, representatives, contractors,
co-packers, sublicensees or distributors, or arising out of or resulting from a
breach by Licensee of any provision of this Agreement except in each case to the
extent (but only to the extent) arising out of or resulting from (A) Licensor's,
or any member of the Licensor Group's, negligence or breach of any provision of
this Agreement, or (B) infringement of trademark, trade dress, copyright and
other intellectual property rights relating to the Licensed Xxxx.
(b) Licensor shall defend, indemnify and hold harmless Licensee from
and against any and all Losses arising out of or resulting from breach by
Licensor or any member of the Licensor's Group of any provision of this
Agreement or arising out of or resulting from any infringement of trademark,
trade dress, copyright and other intellectual property rights relating to the
Licensed Xxxx or Licensed Technology, except in each case to the extent (but
only to the extent) arising out of or resulting from Licensee's negligence or
breach of any provision of this Agreement.
(c) If any party (the "INDEMNIFIED PARTY") receives written notice of
the commencement of any action or proceeding, the assertion of any claim by a
third party or the imposition of any penalty or assessment for which
indemnification may be sought pursuant to this Section 15 (a "third party
claim") and such indemnified party intends to seek indemnity pursuant to this
Section 15, such indemnified party shall promptly provide the other party (the
"indemnifying party") with notice of such third party claim, provided that no
failure to do so will limit rights hereunder except to the extent the
indemnifying party is prejudiced thereby. Except in the case of claims seeking
equitable relief from the indemnified party, the indemnifying party shall be
entitled to assume the defense, appeal or settlement of such third party claim
with counsel selected by the indemnifying party and approved by the indemnified
party, which approval shall not be unreasonably withheld or delayed. The
indemnified party shall fully cooperate with the indemnifying party in
connection therewith. In the event that the indemnifying party fails to assume
the defense, appeal or settlement of any third party claim within twenty (20)
days after receipt of notice thereof from the indemnified party, such
indemnified party shall
31
have the right to undertake the defense, appeal or settlement of such third
party claim at the expense and for the account of the indemnifying party. The
indemnifying party shall not settle any third party claim the defense, appeal or
settlement of which is controlled by it without the indemnified party's prior
written consent, unless the terms of such settlement or compromise release such
indemnified party from any and all liability or obligation with respect to such
third party claim. The provisions of this Section shall survive expiration or
termination of this Agreement.
16. SALES BY LICENSOR'S CUSTOMERS.
Licensor agrees during the term of this Agreement to refrain, and to
cause its Affiliates to refrain, from engaging in any distribution and/or sales
of Licensor's Products having Super Premium Status to any person that the
Licensor knows or has reason to know is engaged in, or intends to engage in, any
manufacture, distribution and/or sale of such Products having Super Premium
Status in the Territory. In the event that Licensor learns that it is selling to
any person that is so engaged, or intends to so engage, Licensor shall
immediately notify Licensee and shall use commercially reasonable efforts,
subject to compliance with applicable law, to prevent such resales from
continuing. The parties acknowledge that Licensor may continue to have its
Products having Super Premium Status distributed and sold to U.S. military post
exchanges in the United States (which may export to the Territory in some cases
to some degree) but shall not distribute or sell directly to U.S. military post
exchanges in the Territory.
17. CONFIDENTIALITY.
Licensor and Licensee agree that all information which is communicated
from time to time by each party to the other pursuant to this Agreement (both at
the commencement of this Agreement and thereafter and whether oral, electronic
or written of any kind or nature), which are confidential and proprietary to the
person disclosing the same shall be deemed secret and confidential
("CONFIDENTIAL INFORMATION"). Licensor and Licensee agree that the Confidential
Information received by them from the other will be maintained in confidence and
that the same will not be disclosed to or used by any person, firm, or
undertaking except their own agents and employees or any permitted sublicensees,
subcontractors or distributors hereunder who need to know and/or use such
Confidential Information for the purposes of this
32
Agreement. If either party is required by law to disclose any Confidential
Information it has received, it will promptly inform the other party and will
cooperate with the other party, at the other party's expense, in seeking to
maintain the confidentiality of such Confidential Information. The provisions of
this Section shall survive expiration or termination of this Agreement.
18. RIGHT TO TERMINATE.
(a) DEFAULT
(i) Licensor and Licensee may, by giving written notice to the
other, terminate this Agreement and its obligations hereunder in the event of a
Material Default (other than a Social Mission Material Default) by the other
party that is not Cured within 60 days following receipt of written notice from
the non-defaulting party. In the case of a Social Mission Material Default,
Licensor may terminate this Agreement and its obligations hereunder if such
Social Mission Material Default is not Cured within one year after the date of
receipt of written notice from Licensor by Licensee. Such written notice shall
specifically describe the default. Such termination will not be deemed a waiver
of any damages or loss suffered by the non-defaulting party as a result of the
other's default, and the non-defaulting party may bring the damage issue to
arbitration for settlement in accordance with the provisions of Section 27.
(ii) "MATERIAL DEFAULT" shall mean a material breach of (A) a
covenant that relates to the payment by Licensee of money, (B) directly and
substantially affects the Essential Integrity of the Principal Licensed Xxxx or
(C) any of the first sentence of Section 2(c) or Section 2(h)(ii), 4(a), 8(a) or
21(a).
(iii) "CURE" shall mean (A) in the case of a Social Mission
Material Default or Material Default resulting from an action by a party hereto,
such party ceasing to engage in such action, and (B) in the case of a Social
Mission Material Default or Material Default resulting from an omission by a
party hereto, such party taking such action as required under this Agreement.
33
(b) BANKRUPTCY
(i) In the event that either Licensor or either Licensee files
a petition in bankruptcy, is adjudicated as bankrupt, goes into liquidation,
becomes insolvent, or makes an arrangement or assignment for the benefit of its
creditors, or any arrangement pursuant to bankruptcy law, or if a custodian,
receiver or trustee is appointed for it or a substantial portion of its business
or assets, then the other party to this Agreement who is not the subject of such
bankruptcy, receivership, liquidation, insolvency or creditor arrangement, shall
have the right to immediately terminate this Agreement by written notice.
(ii) No assignee for the benefit of creditors, custodian,
receiver, trustee in bankruptcy, sheriff or any other officer of the court or
official charged with taking over custody of the bankrupt party's assets or
business, shall have any rights to continue this Agreement or to exploit or in
any way use the Licensed Xxxx pursuant hereto if this Agreement is terminated by
Licensor or Licensee, as the case may be, pursuant to this Section 18(b).
(iii) Notwithstanding the provisions of this Section 18(b), in
the event that it is determined by any court or bankruptcy trustee that this
Agreement may be assumed or assigned in connection with a case commenced by or
against either party under the Title 11 of the United States, as amended (the
"BANKRUPTCY CODE"), Licensor and Licensee hereby acknowledge that "adequate
assurance" of future performance under this Agreement (within the meaning of the
Bankruptcy Code) shall include, INTER ALIA adequate assurance: (A) that any and
all amounts due from Licensee to Licensor under or pursuant to this Agreement
shall be duly and timely paid and all breaches cured; (B) that the assumption or
assignment of this Agreement will not result in the breach by either party or
its Affiliates of any provision in any other license, contract or agreement
relating to the Licensed Xxxx or otherwise; (C) that any person or entity that
assumes this Agreement or to which this Agreement is assigned shall fully and
faithfully assume, observe and comply with all the covenants, requirements and
restrictions provided for under this Agreement and that termination rights for
breach of this Agreement shall continue to apply without change; and (D) that
the value of the Licensed Xxxx to Licensor shall not be reasonably likely to
diminish by reason of the assumption or assignment of this Agreement. Any person
or entity to
34
which this Agreement is assigned pursuant to the provisions of the Bankruptcy
Code shall be deemed without further act or deed to have assumed all of the
obligations arising under this Agreement on and after the date of such
assignment. Any such assignee shall upon demand execute and deliver to Licensor
or Licensee, as the case may be, an instrument confirming such assumption.
(c) CHANGE OF CONTROL
(i) Upon a Change of Control of Licensor, Licensee's
obligations to obtain the approval of Licensor or the Committee on Joint
Planning, as applicable, under certain provisions of this Agreement, including,
without limitation, Sections 2(b), 4(b), 4(d) and 8(c), shall be deemed to be an
obligation to keep Licensor or the Committee on Joint Planning, as applicable,
informed as to its activities, plans and uses of the Licensed Xxxx xxxxx to
commencing such activities, plans or uses; PROVIDED, HOWEVER, that Licensor
shall retain the rights under the last sentence of Section 8(c). The parties
acknowledge that following such a Change of Control Licensor shall no longer
have the right to approve or disapprove Licensee's actions but shall have an
obligation to keep Licensor informed as to its activities, plans and uses of the
Licensed Xxxx xxxxx to commencing such activities, plans or uses pursuant to the
aforementioned sections.
(ii) A "CHANGE OF CONTROL" of a party hereto means the earlier
to occur of (A) the acquisition by any Person or group of Persons acting in
concert of beneficial ownership of such party's securities, or any other trans
action with respect to beneficial ownership of such party or such party's
securities, that involves or results in either (x) the acquisition of beneficial
ownership of securities representing 20% or more of the voting power of such
party's outstanding equity securities or (y) the merger or consolidation of such
party with any Person in which the shareholders of such party would not,
immediately after such merger or consolidation, own securities representing at
least 20% of the voting power of the Person issuing the cash or securities in
such merger or consolidation, and (B) the sale of all or substantially all of
the assets of such party to one or more Persons; PROVIDED, HOWEVER, that a
Change of Control shall not be deemed to occur in the case of clause (A) or (B)
above if (x) a named founder of Licensor is the resulting controlling Person or
a member of the resulting controlling group of Persons and (y) all
35
other members of such group of Persons, if any, are charitable organizations.
"BENEFICIAL OWNERSHIP" of securities shall be determined in accordance with Rule
13d-3 under the Securities Exchange Act of 1934, as amended, as in effect on the
date of this Agreement, except that any agreement not to transfer securities and
any agreement to vote or not vote in a particular manner shall be deemed to
convey "beneficial ownership" of the securities subject thereto.
(d) REGIONAL DEFAULT. Without limiting the right of the
parties to terminate this Agreement pursuant to Section 18(a), Licensor or
Licensee may, by giving written notice to the other, terminate this Agreement
and its obligations hereunder with respect to a Region in the Territory in the
event of a Material Default or a Social Mission Material Default by the other
party with respect to such defaulting party's obligations hereunder in such
Region that is not Cured within 60 days, in the case of a Material Default, or
one year, in the case of a Social Mission Material Default, as applicable,
following receipt of written notice from the non-defaulting party. Such written
notice shall specifically describe the default in such Region. Such a
termination shall not be deemed a waiver of any damages or loss suffered by the
non-defaulting party as a result of the other's default, and the non-defaulting
party may bring the damages issue to arbitration for settlement in accordance
with the provisions of Section 27(b).
(e) TERMINATION OF THE MERGER AGREEMENT. This Agreement shall
terminate upon the termination by Licensor of the Agreement and Plan of Merger
(the "MERGER AGREEMENT") dated as of April 11, 2000, among Conopco, Inc.
("CONOPCO"), Vermont All Natural Expansion Company ("SUB") and Licensor as a
result of a material breach of the Merger Agreement by Conopco or Sub.
19. RIGHTS UPON TERMINATION.
(a) Except to the extent provided in Sections 19(b) and 19(c), upon
expiration or termination of this Agreement for any reason, neither Licensee nor
its Affiliates, receivers, representatives, agents, successors or assigns shall
have any rights to exploit or in any way use the Licensed Xxxx and the Licensed
Technology and shall forthwith discontinue all use of the Licensed Xxxx and
Licensed Technology in whole or, in the event of a termination in part, in
connection with such products, services or territories as to which such
termination pertains. In addition, Licensee shall not
36
thereafter, except as permitted in Section 19(b) or 19(c), use the Licensed
Technology or the Licensed Xxxx or any variation or simulation thereof, or any
xxxx which is or may be confusingly similar thereto, and hereby irrevocably
release and disclaim any right or interest in or to the Licensed Xxxx and the
Licensed Technology in whole or, in the event of a termination in part, in
connection with such products, services, or territories as to whether such
termination pertains.
(b) Upon any termination of this Agreement by Licensee pursuant to
Section 18, as to any plant in which Licensee or its permitted sublicensees
manufacture Products under the Licensed Xxxx, Licensor may, purchase all, but
not less than all, the inventories (including finished goods to Products bearing
the Licensed Xxxx (the "INVENTORIES")), of Licensee or its permitted
sublicensees, as applicable, at such plant that are saleable and in good
condition; PROVIDED, HOWEVER, that, if Licensor purchases the Inventories of any
plant, it shall purchase all the Inventories of all plants in same country as
such initial plant; PROVIDED, FURTHER, that if Licensor purchases the
Inventories at such plant, it shall have the right but not the obligation to
purchase all, but not less than all, of the inventories of raw materials and
packaging exclusive to Products bearing the Licensed Xxxx ("PROCESS
INVENTORIES") of Licensee or its permitted sublicensees, as applicable, at all
plants in the same country that are saleable and in good condition. To
consummate such a purchase, Licensor shall tender to Licensee within 30 days
following the effective date of termination, a sum equal to the cost to Licensee
of such Inventories (together with a sum equal to Licensee's cost of Process
Inventories, if purchased). In such event, Licensee shall take commercially
reasonable steps to discontinue or cancel all marketing which references the
Licensed Marks as soon as possible. No amounts shall be paid or payable as the
Percentage Royalty with respect to such Inventories sold to Licensor.
(c) To the extent that Licensor does not purchase all the Inventories
and Process Inventories of Licensee and pursuant to Section 19(b), Licensee
shall have the right, on a non-exclusive basis, to continue to sell, market and
promote Products bearing the Licensed Xxxx for a six-month period following the
effective termination date, or for such shorter period as is necessary to
dispose of all remaining Inventories and Process Inventories. During any such
period, Licensee shall pay the Percentage Royalty pursuant to Section 6.
Licensee's rights under this Section 19(c) shall be subject to
37
Licensee's continuing to manufacture, market, distribute and sell the
Inventories in a manner consistent with good business practice, Products bearing
the Licensed Xxxx having Super Premium Status, with all appropriate long-term,
brand-building philosophy, and in accordance with the provisions of this
Agreement, including Section 7.
(d) In the event that Licensee or any of its permitted sublicensees
have utilized any Licensed Xxxx in the name of a business unit or division
thereof, the name of such business unit or division shall be changed upon any
termination or expiration of this Agreement so that the Licensed Xxxx shall no
longer form part of the business unit or division name; PROVIDED, HOWEVER, that
if Licensee continues to conduct the Business in the Territory pursuant to
Section 19(c), the Licensed Xxxx shall no longer form part of the business unit
or division name, as applicable, at the expiration of the six-month period
provided for in Section 19(c).
(e) Upon termination or expiration of this Agreement, Licensee shall,
within 30 days of such termination or expiration (or such longer period as may
be necessary to permit Licensee to exercise its applicable rights under Section
19(c)), return in accordance with Licensor's reasonable instructions all
Licensed Technology provided to Licensee pursuant to this Agreement.
20. NOTICES.
All notices, request, claims, demands and other communications under
this Agreement shall be in writing and shall be deemed given upon receipt by the
parties at the following addresses (or at such other address for a party as
shall be specified by like notice):
If received by Licensee, to:
Unilever PLC
Xxxxxxxx Xxxxx
Xxxxxxxxxxx, Xxxxxx, XX0X 0XX
Attention: Xx. Xxxxxxx X. Xxxxxxxx,
Joint Secretary
Facsimile: 011-44-207-822-6108
38
with a copy to:
Unilever United States
000 Xxxx Xxxxxx, 00xx Xxxxx
Xxx Xxxx, XX 00000
Facsimile: (000) 000-0000
Attention: Xxxxxx X. Xxxxxxx, Esq.
If received by Licensor, to:
Ben & Jerry's Homemade, Inc.
00 Xxxxxxxxx Xxxxx
Xxxxx Xxxxxxxxxx, XX 00000
Facsimile: (000) 000-0000
Attention: Chief Executive Officer
with a copy to:
Ropes & Xxxx
Xxx Xxxxxxxxxxxxx Xxxxx
Xxxxxx, XX 00000
Facsimile: (000) 000-0000
Attention: Xxxxxx X. Xxxxxx, Esq.
21. NON-ASSIGNABILITY.
(a) This Agreement and the rights and obligations hereunder may not be
sold, transferred, assigned, pledged, mortgaged or otherwise disposed of by the
parties hereto except as is specifically herein provided or as may be expressly
consented to in writing; PROVIDED, HOWEVER, that this Agreement and the rights
and obligations hereunder may be assigned in connection with a merger or sale of
all or substantially all the assets of Ben & Jerry's Homemade Holdings, Inc. or
Ben & Jerry's Homemade, Inc. or a merger or sale of all or substantially all the
assets of Licensee; PROVIDED, FURTHER, that the Licensor's right to receive
monies hereunder may be pledged or mortgaged. It is expressly provided that
Licensee may assign or sublicense any or all its rights and obligations under
this Agreement (i) without Licensor's consent, to any Affiliate so long as it
remains an Affiliate; PROVIDED, HOWEVER, that such Affiliate agrees in writing
to be bound by the terms and conditions of this Agreement and Licensee agrees to
cause any and all such Affiliates to comply with such terms and conditions or
(ii) with Licensor's consent, which consent may be withheld in Licensor's sole
discretion, to any third party, including, without limitation, co-packers and
manufacturing sublicensees. Any attempted assignment
39
or sublicense in violation hereof, whether voluntary or by operation of law,
directly or indirectly, shall be void and of no force and effect.
(b) It is understood that any person who is a distributor of Licensee
(I.E., purchases and resells but does not manufacture Products bearing the
Licensed Xxxx or have such Products manufactured) whether or not an Affiliate of
Licensee, is not a sublicensee for such purchase and resale and does not require
a sublicense hereunder in order to be able to sell Products under the Licensed
Xxxx.
22. MATERIAL LICENSED TECHNOLOGY.
(a) Prior to or promptly after the provision of the Licensed Technology
by Licensor to Licensee pursuant to Section 5(a), the parties shall reasonably
agree to a written schedule of items of Licensed Technology ("SCHEDULE 22"),
which may by mutual agreement be supplemented from time to time, that they deem
to be essential to the manufacture of Licensor's Products ("MATERIAL LICENSED
TECHNOLOGY"). Licensee shall within 90 days after the parties agree Schedule 22
provide Licensor with notice of the Material Licensed Technology that Licensee
has independently developed or had knowledge of prior to the provision of the
Licensed Technology by Licensor. To the extent that Licensee does not provide
such notice, Licensee shall be deemed not to have independently developed or had
knowledge of such Material Licensed Technology prior to the expiration of such
90-day period; PROVIDED, HOWEVER, that if a failure by Licensee to provide
notice that such Material Licensed Technology was independently developed or
known by Licensee is the result of a good-faith mistake, and Licensee provides
such notice prior to the time that such Material Licensed Technology is
commercially applied by Licensee, then such notice shall be deemed to have been
given by Licensor during such 90-day period.
(b) Subject to Section 2(h)(ii), after the expiration or termination of
this Agreement, Licensee shall be permitted to use the Licensed Technology to
the extent necessary to enable Licensee to use enhancements to the Licensed
Technology developed by Licensee.
(c) In the event of a dispute as to whether Licensee had knowledge of
or independently developed such Material Licensed Technology, the burden of
proof shall be on Licensee with respect to this Section 22.
40
23. NO AGENCY OR JOINT VENTURE.
Nothing herein contained shall be construed to constitute the parties
hereto as partners or as joint venturers, or either as agent or employee of the
other, and neither party shall have any power to obligate or bind the other in
any manner whatsoever.
24. FORCE MAJEURE.
If any event beyond the reasonable control of either party, including,
without limitation, an act of God, war or war condition, civil disorder,
government regulation or embargo, should impede the performance by a party of
all or part of its obligations under this Agreement, such nonperformance shall
be excused during and for a reasonable period after the continuance of such
event.
25. GOVERNING LAW.
This Agreement shall be considered as having been entered into in the
State of New York and this Agreement, and any disputes or actions relating
thereto (whether in contract, tort or otherwise), shall be governed in
accordance with the laws of the State of New York applicable to agreements made
and to be performed in New York, without regard to conflicts of law. However,
any and all disputes, controversies and claims pertaining to Licensor's
ownership of or the validity of any patent or application therefor or the
Licensed Xxxx or any registration thereof or any application for registration
thereof shall be construed and interpreted in accordance with the federal patent
or trademark laws, as applicable, and related laws, statutes, rules and
regulations of the United States unless there are no federal laws, statutes,
rules or regulations dispositive of such disputes, controversies and claims, in
which case any and all disputes, controversies and claims shall be construed and
interpreted in accordance with the laws of the State of New York.
26. NO WAIVER; CONSENT.
(a) The failure by any party hereto to enforce, at any period of time,
one or more of the terms and conditions of this Agreement shall not constitute a
waiver of such terms or conditions, or of the party's right thereafter to
enforce each and every term and condition of this Agreement. Neither tender of
payment by Licensee nor acceptance of payment by Licensor shall be deemed a
waiver of any violation of or default in any
41
of the provisions of this Agreement. No waiver shall be effective unless in
writing and signed by the party intended to be bound thereby.
(b) Whenever this Agreement requires the consent or approval of
Licensor or Licensee, such consent or approval shall be deemed to have been
given upon the expiration of 14 days from the date the written request for such
consent or approval has actually been received by Licensor or Licensee, as the
case may be, unless Licensor or Licensee, as the case may be, delivers notice of
disapproval or non-consent to Licensee or Licensor, as the case may be, within
said 14-day period.
27. ARBITRATION AND CONSENT TO JURISDICTION.
(a) The parties hereto recognize that disputes as to certain matters
may from time to time arise during the term of this Agreement that relate to
either party's rights and/or obligations hereunder. It is the objective of the
parties to establish procedures to facilitate the resolution of disputes arising
under or in connection with this Agreement, including without limitation all
financial disputes (except as set forth in Section 9(f)) and any disputes as to
the validity, construction, performance, default, or breach hereof, in an
expedient manner by mutual cooperation and without resort to litigation. To
accomplish this objective, the parties agree to follow the procedures set forth
in this Section 27 if and when such disputes arise under or in connection with
this Agreement between the parties. If the parties cannot resolve a dispute
within fifteen (15) days of formal request by either party to the other, any
party may, by written notice to the other, have such dispute referred to (i) in
the case of Licensor, the Chief Executive Officer of Licensor and (ii) in the
case of Licensee, the President of Unilever Foods North America, for attempted
resolution by good faith negotiations. If such personnel are unable to resolve
such dispute within fifteen (15) days after such notice is received, then such
dispute shall be finally resolved, but only if written notice is thereafter
served by one party on the other party specifically requesting binding
arbitration pursuant to Section 27(b).
(b) Except as specifically set forth in this Agreement any and all
disputes, controversies and claims arising out of or relating to this Agreement,
or with respect to the construction of this Agreement, or concerning the
respective rights or obligations hereunder of the parties hereto and their
respective successors and
42
permitted assigns, whether by operation of law or otherwise (except disputes,
controversies and claims relating to or affecting in any way Licensor's
ownership of or the validity of the Licensed Xxxx or any registration thereof,
or any application for registration thereof, as to which the parties hereto
hereby confer and agree to submit to the exclusive (both subject-matter and
personal) jurisdiction of the federal courts of the State of New York), shall be
settled and determined by arbitration in Boston, Massachusetts, in accordance
with and pursuant to the then existing rules of the American Arbitration
Association. The parties agree that the arbitrators shall have the power to
award specific performance or injunctive relief and reasonable attorneys' fees
and expenses to any party in any such arbitration and that the courts shall have
similar power with regard to that injunctive relief sought by either party
pursuant to this Agreement. The arbitrator shall provide a reasoned, written
decision. The arbitration award shall be final and binding upon the parties and
judgment thereon may be entered in the courts of the State of New York and the
federal courts in said State, the jurisdiction of which courts is hereby
consented to by the parties for such purposes. Any judgment on an award may be
enforced in the State of New York as well as any other appropriate jurisdiction.
The service of any notice, process, motion or other document in connection with
any other action or proceeding, may be effectuated by either personal service
upon a party or designated agent or by certified or registered mail to the party
at its address hereinabove provided. Each of the parties agrees to appoint an
agent to receive service of process on its behalf, such agent to be appointed in
New York within thirty (30) days of the commencement of the Initial Term of this
Agreement. Consistent with the foregoing, the parties hereto irrevocably and
unconditionally consent to the jurisdiction of, and waive any objection to the
laying of venue in the courts and arbitral forums (as set forth above) located
in New York City (both federal and state).
28. PUBLICITY
Any announcements concerning this Agreement or the License shall be in
a form approved by Licensor and Licensee.
43
29. COUNTERPARTS
This Agreement may be executed in counterparts, each of which shall be
deemed an original, but all of which together shall constitute a single
instrument.
30. SEVERABILITY.
In the event that any provision of this Agreement as applied to any
party or to any circumstance, shall be adjudged by a court of competent
jurisdiction to be void, invalid, unenforceable or inoperative as a matter of
law, then the same shall in No way affect any other provision in this Agreement,
the application of such provision in any other circumstance or with respect to
any other party, or the validity or enforceability of the Agreement as a whole
and to the extent permitted by applicable law, any such provision shall be
restricted in applicability or reformed to the minimum extent required for such
to be enforceable. This provision shall be interpreted and enforced to give
effect to the original written intent of the parties hereto prior to the
determination of such invalidity, unenforceability or inoperability.
31. ENTIRE AGREEMENT.
This Agreement contains the complete understanding of the parties with
respect to the subject matter hereof, supersedes all prior oral or written
understandings and agreements relating thereto and may not be modified,
discharged or terminated except by a written instrument signed by both Licensee
and Licensor.
44
IN WITNESS WHEREOF, the parties hereunto have duly executed this
Agreement as of the day and year first above written.
BEN & JERRY'S HOMEMADE, INC.,
By: /s/ XXXXX X. XXXX
--------------------------------
Name: Xxxxx X. Xxxx
Title: Chief Executive Officer
BEN & JERRY'S HOMEMADE HOLDINGS,
INC.,
By: /s/ XXXXX X. XXXX
--------------------------------
Name: Xxxxx X. Xxxx
Title: Vice President
UNILEVER N.V.,
By: /s/ X. X. XXXXXXXXXX
--------------------------------
Name: X. X. Xxxxxxxxxx
Title: Attorney A
UNILEVER N.V.,
By: /s/ X. XXXXXXXX
--------------------------------
Name: X. Xxxxxxxx
Title: Attorney B
UNILEVER PLC,
By: /s/ XXXXXXX X. XXXXXXXX
--------------------------------
Name: Xxxxxxx X. Xxxxxxxx
45
Title: Joint Secretary
EXHIBIT A
LEADING WITH PROGRESSIVE VALUES ACROSS OUR BUSINESS
We have a progressive, nonpartisan social mission that seeks to meet human needs
and eliminate injustices in our local, national and international communities by
integrating these concerns into our day-to-day business activities. Our focus is
on children and families, the environment and sustainable agriculture on family
farms.
- Capitalism and the wealth it produces do not create opportunity for
everyone equally. We recognize that the gap between the rich and the
poor is wider than at anytime since the 1920s. We strive to create
economic opportunities for those who have been denied them and to
advance new models of economic justice that sustainable and replicable.
- By definition, the manufacturing of products creates
waste. We strive to minimize our negative impact on
the environment.
- The growing of food is overly reliant on the use of toxic chemicals and
other methods that are unsustainable. We support sustainable and safe
methods of food production that reduce environmental degradation,
maintain the productivity of the land over time, and support the
economic viability of family farms and rural communities.
- We seek and support nonviolent ways to achieve peace and justice. We
believe government resources are more productively used in meeting
human needs than in building and maintaining weapons systems.
- We strive to show a deep respect for human beings inside and outside
our company and for the communities in which they live.
