EXHIBIT 2.8
INTELLECTUAL PROPERTY LICENSE AGREEMENT
THIS INTELLECTUAL PROPERTY LICENSE AGREEMENT is entered into as of the last date
of execution below, by and between Gates, XxXxxxxx & Company, a corporation
organized and existing under the laws of Ohio, with offices at 0000 Xxxx Xxx
Xxxxx, Xxxxxxxx, Xxxx, 00000 ("Licensor") and Xxxxxx Acquisition Sub, Inc., a
Missouri corporation with offices at 0000 Xxxxxx Xxxxx, Xx. Xxxxx, XX 00000
("Licensee").
WHEREAS, Licensor is the owner of all right, title and interest in and to the
trademarks, service marks, domain names and trade names listed on the annexed
Schedule A (the "Marks"), as attached, which schedule may be updated from time
to time; and
WHEREAS, Upon the consummation of the Asset Purchase Agreement from the Licensor
to the Licensee, the Licensor desires to grant to Licensee and Licensee desires
to take a license to use the Marks designated on Schedule A for a limited period
during transition of Licensee's unemployment compensation business as a result
of the Asset Purchase Agreement.
NOW, THEREFORE, the parties agree that the Licensee may use the Licensor's Marks
during the Term of this Agreement as follows:
1. GRANT OF LICENSE. Subject to the terms and conditions of this Agreement and
for good and valuable consideration, the receipt and sufficiency of which is
hereby acknowledged, Licensor grants to Licensee a non-exclusive,
non-transferable, limited license to use the Marks on or in connection with the
business referenced above solely in the United States. Licensee may only use the
Marks as approved by Licensor. All rights not specifically granted to Licensee
under this Agreement are reserved to Licensor.
2. ACKNOWLEDGMENT OF RIGHTS. Licensor represents and Licensee acknowledges the
proprietary nature of all the Marks, and that the Marks have achieved secondary
meaning in the mind of the public, and that all right, title and interest in and
to the Marks belong to Licensor and any use Licensee has made or will make of
the Marks has conferred and will confer no ownership rights or benefits upon
Licensee.
3. TERM. This Agreement shall remain in effect for six months from the date of
execution (the "Term") subject to the right of Licensee to automatically renew
this Agreement at the end of such Term, unless terminated pursuant to Section 9
of this Agreement. The automatic renewal will be limited to one subsequent Term
of six (6) months and any such desire by Licensee to enter an agreement to
license the Marks for an additional term will require monetary compensation.
Following conclusion of the Term, Licensee may make no reference in any
marketing materials distributed to the general public or in any other manner its
prior affiliation with Licensor (or any other prior connection with the Marks)
without Licensor's prior consent.
4. QUALITY CONTROL AND APPROVALS. All items or materials bearing the Marks
produced or distributed by Licensee shall be maintained at a high-quality
standard acceptable to
Licensor (which standard shall be consistent with Licensor's own policies and
procedures applicable to the Marks). Licensee shall comply with all laws,
regulations and standards relating or pertaining to the manufacture, sale,
advertising of products or services sold under the Marks. At least 30 days prior
to each use, Licensee agrees to furnish Licensor for its approval, free of cost,
a sample of each item bearing the Marks prior to any distribution of such items
by Licensee. Any matter submitted to Licensor for approval shall be deemed NOT
APPROVED if Licensor does not approve such matter in writing within thirty (30)
days of its receipt by Licensor. Licensor agrees to promptly respond in good
faith to any such matters submitted to it for its approval. Revocation of
approval may be made as to the use of the Marks if it is reasonably determined
by Licensor that such use is non-conforming as to the Licensor's quality
standards, or such use is not in compliance with all relevant laws, regulations
or standards relating to the manufacturing, sale, or advertising of related
products and services sold under the Marks.
5. NOTICES AND REGISTRATIONS. All uses of the Marks shall follow Licensor
branding standards, including notice designations specified by Licensor in such
standards (e.g., "(R)", "SM" or "TM"). Licensor shall have the right to revise
the notice requirements. Upon request, Licensee shall deliver to Licensor the
required number, type of specimens, and example of each item using the Marks at
no cost.
6. INSPECTION. Licensee will permit inspection of all goods published by
Licensee with which Licensee uses or intends to use the Marks, and Licensee
shall upon request of Licensor submit to Licensor, or its duly authorized
representatives, samples of the materials used bearing the Marks. If at any time
Licensor has cause to believe or know that goods or services are being sold
under the Marks are not of the best quality equal to the sample that Licensee
shall submit to Licensor for approval prior to its public or private
distribution, Licensor shall notify Licensee and inquire as to whether such
inferior goods or services emanate from Licensee. If such goods or services
emanate from Licensee, Licensee shall act promptly to correct any defect in the
quality of the goods or services. Any defect not cured within 14 days of notice
to cure from the Licensor, may be deemed a breach of this Agreement.
7. INDEMNIFICATIONS AND PROTECTIONS. Licensee shall defend, indemnify and hold
Licensor harmless from all claims, demands, liabilities, suits, judgments, and
proceedings, or other actions, including reasonable attorney's fees, brought or
alleged against Licensor based upon Licensee's use of the Marks that are the
subject matter of this Agreement (except to the extent that Licensor has an
indemnification obligation below).
Licensor shall defend, indemnify and hold Licensee harmless from all
claims, demands, liabilities, suits, judgments, and proceedings, or other
actions, including reasonable attorney's fees, brought or alleged against
Licensee asserting that Licensee's use of the Marks pursuant to this Agreement
infringes or dilutes the rights of a third party.
During any time of this Agreement, should goods or services that bear Marks
that infringe Licensor's Marks appear, Licensor may pursue infringement actions
against unauthorized users of the Marks but is not obligated to do so under the
terms of this Agreement.
8. SPECIFIC UNDERTAKINGS OF LICENSEE. Licensee agrees that it shall not:
a) Directly or indirectly attack Licensor's title to any of the Marks or
the validity of the license granted hereunder;
b) Seek to register any of the Marks or any designation confusingly
similar anywhere in the world or use any of the Marks or any
designation confusingly similar therewith in any manner other than as
licensed hereunder;
c) Harm, misuse or bring into disrepute any of the Marks;
d) Create or incur any expenses chargeable to Licensor relative to the
Marks under this Agreement.
9. TERMINATION. Licensor shall have the right to terminate this Agreement due to
a material noncompliance with this agreement or a material noncompliance with
any other regulatory standards that may bring disrepute to the Marks. Such
termination shall be without prejudice and is effected by written notice to the
Licensee.
Licensor shall also have the right to terminate this Agreement without prejudice
to any other rights and remedies it may have upon the occurrence of one or more
of the following events (collectively, "Defaults"). Any of the following
Defaults may be deemed a material breach of this Agreement.
A. A governmental agency or court of competent jurisdiction finds that
any of Licensee's goods or services fails to materially comply with
governmental laws or regulations;
B. Licensee is unable to pay its debts when due, or makes an assignment
for the benefit of creditors or an arrangement pursuant to any
bankruptcy law, or files or has filed against it any petition under
the bankruptcy or insolvency laws of any jurisdiction, county or
place, or suffers a receiver or trustee to be appointed for its
business or property, or is adjudicated a bankrupt or an insolvent. In
the event the license granted hereunder is terminated pursuant to this
paragraph, neither Licensee nor its receivers, representatives,
trustees, agents, administrators, successors and/or assigns shall have
any right to sell, exploit or otherwise deal with the Marks or
materials; or
C. Licensee is in material breach of the terms or undertakings of this
Agreement.
Upon termination by Licensor: (i) all rights, licenses, and privileges granted
to Licensee hereunder shall automatically revert to Licensor; (ii) Licensee
shall execute any and all documents requested by Licensor evidencing such
automatic reversion; and (iii) at Licensor's
discretion and Licensee's expense, within thirty (30) days of termination,
Licensee shall destroy or dispose of to Licensor's satisfaction all items and
other materials bearing or including any of the Marks; (iv) licensee shall
confirm compliance of this section in writing.
10. DAMAGE FROM BREACH. Licensee acknowledges that its failure to perform any of
the terms or conditions of this Agreement, including its failure to maintain the
high quality of items or services provided under the Marks, or its failure upon
termination of this Agreement to stop use of the Marks would result in immediate
and irreparable damage to Licensor, for which there would be no adequate remedy
at law, and would entitle Licensor to preliminary and permanent injunctive
relief in addition to all other available remedies.
11. WARRANTIES OF LICENSOR AND LICENSEE. Each party represents and warrants to
the other party as follows:
A. Licensor has the full authority to enter into this Agreement, that it
is the sole owner of all right, title and interest in, to and under
the Marks. To the best of Licensor's knowledge, any use of the Marks
by Licensor in connection with its unemployment compensation business
did not and does not infringe the intellectual property rights of a
third party.
B. Licensee has the full authority to enter into this Agreement and that
this Agreement will not affect or conflict with any agreements to
which Licensee is currently a party.
C. Licensee is not at this time a party to any actions or proceedings at
law or at equity, suits or proceedings, or oppositions of any kind.
12. NOTICES. All notices provided for herein shall be in writing, and directed
to the parties at the addresses first set forth above, unless a party gives
notice of a change of this address: to Licensor, to the attention of Xxxx X.
Xxxxxx, Office of General Counsel, at Licensor's address; and to Licensee, to
the attention of Xxxxxx Xxxxxx, General Counsel, at Licensee's address.
13. NON-ASSIGNABILITY. This Agreement is personal to Licensee, and Licensee
shall not assign, sell, sublease or franchise any of its rights hereunder.
14. GOVERNING LAW JURISDICTION. This Agreement, any dispute arising from this
Agreement, or the subject matter hereof shall be governed by the laws of the
United States and the State of Ohio, without regard to its conflicts of law
principles.
15. MISCELLANEOUS. No waiver, modification, or cancellation of any term or
condition or this Agreement shall be effective unless executed in writing signed
by authorized representative of both parties. No waiver by either party of any
breach of this Agreement shall be deemed to be a waiver of any preceding or
succeeding breach of the same or any other provision hereof. THIS AGREEMENT DOES
NOT CONSTITUTE AND SHALL NOT BE CONSTRUED AS CREATING AN AGENCY, PARTNERSHIP OR
JOINT VENTURE RELATIONSHIP BETWEEN LICENSEE AND LICENSOR. The determination that
any provision of this Agreement is invalid or unenforceable shall not
invalidate this Agreement, and the remainder of this Agreement shall be valid
and enforceable to the fullest extent permitted by law. This Agreement
represents the entire understanding between the parties with respect to the
subject matter hereof and supersedes all previous representations,
understandings or agreements, oral or written, between the parties with respect
to the Marks, which are the subject matter hereof. Paragraphs 2, 6, 7, 8, 9,10,
11, 13, 14, and 15 shall survive termination of this Agreement.
(signature page follows immediately)
IN WITNESS WHEREOF, the authorized representatives of the parties have read and
signed this Agreement.
XXXXXX ACQUISITION SUB, INC. GATES, XxXXXXXX & COMPANY
By: /s/ Xxxxxxx X. Xxxxxxxx By: /s/ Xxxxx Xxxxxxxxx
------------------------------ ------------------------------
Name: Xxxxxxx X. Xxxxxxxx Name: Xxxxx Xxxxxxxxx
---------------------------- ----------------------------
Title: President and Chief Title: President and COO
Executive Officer ---------------------------
--------------------------- Date: March 27, 2002
Date: March 27, 2002 ----------------------------
----------------------------
Attachments to this Agreement: Schedule A
The Registrant agrees to furnish supplementally a copy of any omitted schedule
to the Commission upon request.
