Exhibit 10.1
LICENSE AGREEMENT
Agreement dated the 24th day of November, 2003, Between ▇▇▇▇ TM, LLC., a
Delaware Limited Liability Corporation, with its principal offices at ▇▇▇▇
▇▇▇▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇▇ ▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇ (hereinafter referred to as "LICENSOR"),
and BIB Ltd., a Corporation doing business under the laws of New York, with its
principal offices at ▇ ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇ (hereinafter
referred to as "LICENSEE").
A. LICENSOR is the owner of all right, title and interest in and to the
trademark, ▇▇▇▇▇▇▇ ▇▇▇▇▇▇ and associated ▇▇▇▇ "▇. ▇▇▇▇▇▇" as depicted in Exhibit
A in the United States of America. Exhibit A shall constitute the Licensed ▇▇▇▇.
LICENSEE recognizes the great value of the goodwill associated with the Licensed
▇▇▇▇ and that all rights to the Licensed ▇▇▇▇ and its associated goodwill belong
exclusively to LICENSOR, and the Licensed ▇▇▇▇ has acquired a secondary meaning
to the public.
B. LICENSEE is principally and presently engaged in the business of
manufacturing, promoting and selling Missy, Junior and Young Men's Denim Apparel
for purposes of distribution at wholesale throughout the United States; and
LICENSEE desires to use the Licensed Marks on and in connection with the
manufacture, promotion, sale and distribution of the "Articles" as set forth and
defined in schedule "A" in the United States (the "Territory").
C. LICENSOR is willing to grant the Non-Exclusive right to use the
Licensed ▇▇▇▇ on and in connection with the Articles upon the terms and
conditions of this Agreement.
1. DEFINITIONS. (a) Whenever used in this Agreement, the words "First Year"
shall mean that period from the date of execution hereof to April 30, 2005; the
words "Second Year" shall mean that period from May 1, 2005 to April 30, 2006;
the words "Third Year" shall mean that period from May 1, 2006 to April 30,
2007.
(b) Whenever used in this Agreement, "Net Sales" shall mean gross sales of
the Articles by LICENSEE, less returns actually received, normal trade discount
and allowances usually granted, provided, however, that the amount of normal
trade discounts and allowances actually granted by LICENSEE shall not exceed an
amount equal to Five (5%) Percent of gross sales in any year of this Agreement.
(c) Whenever used in this agreement, "Licensed Article" or "Licensed
Articles" shall mean any Articles which bear any of the Licensed Marks.
2. EXCLUSIVE GRANT OF RIGHTS. (a) Upon the terms and conditions of this
Agreement, LICENSOR hereby grants to LICENSEE the Exclusive right and license to
use the Licensed ▇▇▇▇ in the Territory on and in connection with the Articles
manufactured from designs provided by LICENSEE and approved by LICENSOR but not
on or in connection with Articles not approved by LICENSOR or any goods other
than Articles, for retail sale in the Territory only, without the consent of
LICENSOR. LICENSOR reserves the right to produce, sell and market under the
Licensed ▇▇▇▇ the Articles licensed under this Agreement. In the Event the
LICENSOR elects to manufacture and distribute the Articles granted under this
License Agreement the parties agree to negotiate in good faith for a reduction
of minimum sales and minimum royalties. All Articles manufactured from designs
approved by LICENSOR shall bear the Licensed ▇▇▇▇. During the term of this
Agreement, LICENSEE shall use its best efforts to exploit the rights herein
granted throughout the Territory. LICENSEE shall not attempt to register the
▇▇▇▇ "▇.▇▇▇▇▇▇" in its own name for its own benefit in any country in the world.
LICENSEE agrees that it will not knowingly directly or indirectly infringe the
"▇.▇▇▇▇▇▇" trademark in countries outside the Territory and will not contribute
to or induce such infringement by selling Licensed Articles to persons whom
LICENSEE knows, or reasonably has reason to know, intend to infringe the "▇.
▇▇▇▇▇▇" trademark outside the Territory.
(b) LICENSEE shall not sell or distribute any products that compete or are
in competition with the Licensed Articles.
(c) Nothing herein shall be construed to grant a license for the ▇▇▇▇
"▇▇▇▇▇▇▇ ▇▇▇▇▇▇". This License relates solely to the ▇▇▇▇ "▇. ▇▇▇▇▇▇" as
depicted on Exhibit A.
3. TERM. The "Term" of this Agreement shall commence upon the date of execution
hereof and expire on April 30, 2009, unless sooner terminated as provided
herein.
(a) During the "First Year", November 11, 2003 through April 30, 2005
LICENSEE shall guarantee minimum net sales of $10,000,000 for Schedule "A".
(b) During the "Second Year", May 1, 2005 through April 30, 2006 LICENSEE
shall guarantee minimum net sales of $15,000,000.
(c) During the "Third Year", May 1, 2006 through April 30, 2007 LICENSEE
shall guarantee minimum net sales of $20,000,000.
(d) During the "Fourth Year", May 1, 2007 through April 30, 2008 LICENSEE
shall guarantee minimum net sales of $25,000,000.
(e) During the "Fifth Year", May 1, 2008 through April 30, 2009 LICENSEE
shall guarantee minimum net sales of $30,000,000.
(f) LICENSEE shall have the option to renew this Agreement for one (1)
additional term of one (1) year ("First Renewal Term") thereafter only if;
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(i) During the "Fifth Year" of this Agreement, LICENSEE has made at
least the net sale of Licensed Articles that would be needed to support
the minimums for the fifth year and has paid all appropriate royalties and
advertising money thereon to LICENSOR; and
(ii) LICENSEE is in compliance with all of the terms and conditions
of this Agreement, both at the time the option is exercised and on the
last day of the initial term; and
(iii) Written notice of the election to exercise said option is
delivered to LICENSOR at its address stated above not less than four (4)
months prior to expiration of the Initial Term.
(g) LICENSEE shall have the option to renew this Agreement for an
additional term of one (1) year ("Second Renewal Term") thereafter, only if;
(i) During the "First Renewal Term" of this Agreement, LICENSEE has
made at least the net sale of Licensed Articles that would be needed to
support the minimums for such year of this Agreement and has paid all
appropriate royalties and advertising money thereon to LICENSOR; and
(ii) LICENSEE is in compliance with all of the terms and conditions
of this Agreement, both at the time the option is exercised and on the
last day of the "First Renewal Term"; and
(iii) Written notice of the election to exercise said option is
delivered to LICENSOR at its address stated above not less than four (4)
months prior to the expiration of the "First Renewal Term".
(h) LICENSEE shall have the option to renew this Agreement for an
additional term of one (1) year ("Third Renewal Term") thereafter, only if;
(i) During the "Second Renewal Term" of this Agreement, LICENSEE has
made at least the net sale of Licensed Articles that would be needed to
support the minimums for such year of this Agreement and has paid all
appropriate royalties and advertising money thereon to LICENSOR; and
(ii) LICENSEE is in compliance with all of the terms and conditions
of this Agreement, both at the time the option is exercised and on the
last day of the "Second Renewal Term"; and
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(iii) Written notice of the election to exercise said option is
delivered to LICENSOR at its address stated above not less than four (4)
months prior to the expiration of the "Second Renewal Term".
(i) LICENSEE shall have the option to renew this Agreement for an
additional term of one (1) year ("Fourth Renewal Term") thereafter, only if;
(i) During the "Third Renewal Term" of this Agreement, LICENSEE has
made at least the net sale of Licensed Articles that would be needed to
support the minimums for such year of this Agreement and has paid all
appropriate royalties and advertising money thereon to LICENSOR; and
(ii) LICENSEE is in compliance with all of the terms and conditions
of this Agreement, both at the time the option is exercised and on the
last day of the "Third Renewal Term"; and
(iii) Written notice of the election to exercise said option is
delivered to LICENSOR at its address stated above not less than four (4)
months prior to the expiration of the "Third Renewal Term".
(j) LICENSEE shall have the option to renew this Agreement for an
additional term of one (1) year ("Fifth Renewal Term") thereafter, only if;
(i) During the "Fourth Renewal Term" of this Agreement, LICENSEE has
made at least the net sale of Licensed Articles that would be needed to
support the minimums for such year of this Agreement and has paid all
appropriate royalties and 2 advertising money thereon to LICENSOR; and
(ii) LICENSEE is in compliance with all of the terms and conditions
of this Agreement, both at the time the option is exercised and on the
last day of the "Fourth Renewal Term"; and
(iii) Written notice of the election to exercise said option is
delivered to LICENSOR at its address stated above not less than four (4)
months prior to the expiration of the "Fourth Renewal Term".
4. EXCLUSIVITY OF RIGHTS. LICENSOR will not grant any other license effective
during the term of this Agreement for the use of the Licensed ▇▇▇▇ on or in
connection with the Articles in the Territory. LICENSOR may use or grant others
the right to use the Licensed ▇▇▇▇ (a) on or in connection with goods not
licensed hereunder in the Territory or (b) on or in connection with Articles
outside the Territory. LICENSOR reserves the right to produce, sell and market
under the Licensed ▇▇▇▇ the Articles licensed under this Agreement. In the Event
the LICENSOR elects to manufacture and distribute the Articles granted under
this License Agreement the parties agree to negotiate in good faith for a
reduction of minimum sales and minimum royalties. LICENSEE will not, during the
term of this Agreement or thereafter, use any business name utilizing the trade
name "▇. ▇▇▇▇▇▇", attack LICENSOR's title in and to the Licensed ▇▇▇▇, attack
the validity of the Licensed ▇▇▇▇, attack the registration in any country by
LICENSOR of the "▇. ▇▇▇▇▇▇" ▇▇▇▇, or attack the validity of this License.
However, in any other license agreement entered into by LICENSOR for the use of
the Licensed ▇▇▇▇ in connection with the sale and distribution of the Articles
outside the Territory, LICENSOR shall affirmatively require in such agreement
that said Articles may not be sold and/or distributed in the Territory by that
licensee.
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5. QUALITY OF ARTICLES. (a) Because the availability and quality of promotion
and service at retail outlets affect the goodwill of LICENSOR and the
competitiveness of items bearing the ▇▇▇▇, the quality of all Articles produced
and sold by LICENSEE under this Agreement and bearing the Licensed ▇▇▇▇ shall be
of a high quality relative to other Articles, and shall be intended for sale
through the retail stores only as prestige, better-priced merchandise and shall
be marketed accordingly and shall not be sold to jobbers or distributors. All of
the Articles will be manufactured, labeled, sold, distributed and advertised in
accordance with all applicable national, state and local laws or regulations.
(b) A list of customers for the Articles is defined in Exhibit B. LICENSEE
shall submit all changes in its customer list with the regular statement of
royalties, or more frequently if needed. LICENSOR shall have the right to
disapproveof all or any portion of the list. LICENSEE will not sell Articles
bearing the ▇▇▇▇ to customers without first obtaining approval of LICENSOR.
(c) Before selling or distributing any Articles bearing the Licensed ▇▇▇▇,
LICENSEE shall submit to LICENSOR for its approval, a sample of each article,
its containers, labels and the like.
(d) During the term of this Agreement, LICENSEE periodically, but at least
once each year, shall submit then current production samples, patterns, designs,
and material selections of each Article marketed under this Agreement so that
LICENSOR may assure itself of the maintenance of the quality standards.
(e) In order to maintain an image of high quality Articles bearing the
Licensed ▇▇▇▇, LICENSOR agrees that it will maintain such image with other
Articles bearing the Licensed ▇▇▇▇ that its sells, and that it will require and
enforce high quality standards from all other Licensees of the Licensed ▇▇▇▇.
6. REQUIRED MARKINGS. LICENSEE shall display the Licensed ▇▇▇▇ only in such form
and manner as are specifically approved in writing by LICENSOR. LICENSEE also
shall cause to appear on the Articles produced under this Agreement, or on their
containers and labels and the like and on all advertising and promotional
material used in connection with them, such legends, markings and notices as may
be required by law or regulation in the Territory and as LICENSOR reasonably may
request.
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All Licensed Articles produced under this Agreement shall contain
LICENSEE's identifying ▇▇▇▇ so that the origin of the Articles can be
determined. Before producing Articles bearing the Licensed ▇▇▇▇, LICENSEE shall
submit to LICENSOR for its approval, finished artwork sufficiently in advance of
production to permit LICENSOR to correct, to the extent necessary, the legends,
markings and notices and the form and manner in which the Licensed ▇▇▇▇ is
displayed.
7. APPROVALS. LICENSEE must submit all samples or artwork to LICENSOR for
approval. Any approval of LICENSOR required under this Agreement shall not be
withheld unreasonably. After any sample or artwork has been approved, LICENSEE
shall not make any change without LICENSOR's prior approval. LICENSOR reserves
the right to approve or disapprove any sample based on current marketability. If
any sample or artwork is disapproved by LICENSOR, LICENSEE shall not release
that Article or artwork for public distribution without LICENSOR's specific
written authorization.
However, LICENSOR's approval of any sample or artwork shall not be
construed to mean that LICENSOR has determined that the sample or artwork
conforms to the laws or regulations of any jurisdiction referred to above, or
that it is not in conflict with any other licensed articles and shall not bear
any liability for such approval. In the event the high standard, style,
appearance or quality of any Article bearing the Licensed ▇▇▇▇ ceases t be
acceptable to LICENSOR, LICENSOR shall have the right in reasonable exercise of
its sole discretion to withdraw its approval of such Articles. Upon receipt of
written notice from LICENSOR of its elections to withdraw such approval,
LICENSEE shall immediately cease the use of the Licensed ▇▇▇▇ in connection with
the promoting, advertising, sale, manufacture, distribution or use of such
Articles bearing the Licensed ▇▇▇▇ licensed hereunder. Notice of such election
by LICENSOR to withdraw approval shall not relieve LICENSEE from its obligation
to pay royalties on such Articles for sales made by LICENSEE to the date of
disapproval or thereafter as permitted herein.
8. USE OF OTHER TRADEMARKS. LICENSEE may not use or associate the Licensed ▇▇▇▇
with any other trademark, except when used in combination with prestige store
labels and except as permitted in Paragraph 10, hereof.
9. ROYALTIES. (a) LICENSEE shall pay to LICENSOR and account for a royalty of:
(i) Five Percent (5%) of LICENSEE 's Net Sales of Articles bearing
the Licensed ▇▇▇▇ during each year. Three Percent (3%) royalty shall be
paid on "off price goods", which shall be limited to no more than 5% of
total sales within any Contract Year.
(b) Statements - Within twenty (20) days after the end of each quarter
during the term of this Agreement, LICENSEE shall furnish to LICENSOR a full and
accurate statement showing the number, description and invoice price of each
Licensed Article sold, and the gross sales, returns actually received, normal
trade discounts and allowances actually granted and sales taxes, if any,
deducted (relative to the Licensed Articles) and the Net Sales of all Articles
sold under this Agreement. Receipt or acceptance by LICENSOR of any of the
statements furnished, or of any sums paid pursuant to this Agreement, shall not
preclude LICENSOR from questioning their correctness at any time within a three
(3) year period to commence with the receipt by LICENSOR of LICENSEE 's
statement. LICENSEE shall have a separate system of invoicing and billing for
all Licensed Articles sold under this Agreement and shall maintain a perpetual
inventory of all Licensed Articles which shall be available to LICENSOR upon
request.
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(c) Books and Records - LICENSEE shall maintain appropriate books of
account in which accurate entries shall be made concerning all transactions
within the scope of this Agreement, and LICENSOR shall have the right, through
any accountant or other authorized financial representative of its choice, on
reasonable advance notice to LICENSEE, to examine and copy all or part of these
books of account and all other records, documents and material in the possession
or under the control of LICENSEE with respect to subject matter of this
Agreement. LICENSOR shall have the right to examine all shipping documents of
manufacturers used by LICENSEE, including letters of credit. LICENSEE shall
supply LICENSOR with a list of all foreign and domestic manufacturers used for
production of the Licensed Articles, which shall be subject to the approval of
LICENSOR. In addition, LICENSEE shall cause all manufacturers to enter into an
agreement that all designs used for the production of Articles licensed
hereunder shall be strictly confidential and not used for any other licensee or
importer. All books and account and records shall be kept available by LICENSEE
for at least three (3) years after the year to which they relate.
LICENSEE shall also provide, at LICENSOR' s request, a copy of any
computerized tape or disk if its sales records are kept on such computerized
tapes or disks.
(d) LICENSEE shall also provide LICENSOR with the following information:
(i) Licensee shall furnish copies of their April 30th, August 31St,
and December 31St review statements within (90) days from the end of the
fiscal period.
(e) In addition to its right to inspect, LICENSOR shall have the right at
any time, by its own personnel or its agents, to audit all books and records
which LICENSEE is required to maintain pursuant to this Agreement. In the event
an audit discloses that LICENSEE has understated Net Sales or underpaid
royalties for any report period, LICENSEE shall pay to LICENSOR the amount, if
any, by which the actual royalties exceed royalties paid. If LICENSEE underpays
royalties by more than one (1%),percent for any calendar year, LICENSEE shall
pay to LICENSOR all reasonable and necessary costs, fees and expenses incurred
by LICENSOR in conducting such audit.
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10. ADVERTISING AND PROMOTION. (a) LICENSEE shall submit its program for
national advertising to LICENSOR for prior approval, including LICENSEE's trade
releases announcing the introduction of Articles bearing the Licensed ▇▇▇▇. No
consumer advertising or promotional material shall contain reference to
LICENSEE's name except that LICENSEE's tags and labels which have been approved
by LICENSOR may utilize the following statement: "▇. ▇▇▇▇▇▇ (* TM of ▇▇▇▇ TM,
LLC. used under license by BIB Ltd. )" only on approved Licensed Articles.
(b) LICENSEE shall maintain a separate area for exhibition of Licensed
Articles within LICENSEE's showroom and shall designate an exclusive line of ▇.
▇▇▇▇▇▇ (as defined in Schedule "A").
11. INDEMNITY. LICENSEE will indemnify and hold LICENSOR harmless from any
claim, suit, loss, damage or expense (including reasonable attorney's fees)
arising out of any alleged defect in any Article produced by LICENSEE under this
Agreement, or the manufacture, labeling, sale, distribution or advertisement of
any Article by LICENSEE in violation of any national, state or local law or
regulation. LICENSOR shall give the LICENSEE notice of any such claim or suit.
LICENSEE will further indemnify and hold LICENSOR harmless from any claim,
suit, loss, damage or expense (including reasonable attorney's fees) arising
out. of the use of the Licensed ▇▇▇▇ "▇. ▇▇▇▇▇▇" in any Article produced by
LICENSEE under this Agreement, or the manufacture, labeling, sale, distribution
or advertisement of any Article by LICENSEE in violation of any national, state
or local law or regulation. Such indemnification shall specifically include
claims for trademark infringement and unfair competition under Federal and State
law. LICENSOR shall give the LICENSEE notice of any such claim or suit.
12. INSURANCE POLICY. LICENSEE shall maintain at its own expense in full force
and effect at all times during which Articles bearing the Licensed ▇▇▇▇ are
being sold, with a responsible insurance carrier acceptable to LICENSOR, at
least FIVE MILLION ($5,000,000.00) DOLLARS of product liability insurance and
trademark insurance with respect to the Articles. This insurance shall be for
the benefit of LICENSOR, and LICENSEE shall give at least ten (10) days prior
written notice to LICENSOR of the cancellation of, or any substantial
modification in, such insurance policy. This insurance may be obtained for
LICENSOR by LICENSEE in conjunction with a policy which covers products other
than the Licensed Articles bearing the Licensed ▇▇▇▇.
13. EVIDENCE OF INSURANCE. LICENSEE shall, from time to time, upon reasonable
request by LICENSOR, promptly furnish or cause to be furnished to LICENSOR
evidence in form and substance satisfactory to LICENSOR, of the maintenance of
the insurance required by Paragraph 12 above, including, but not limited to
originals, copies of policies, certificates of insurance (with applicable riders
and endorsements) and proof of premium payments.
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14. TRADEMARK OWNERSHIP OF THE LICENSED MARKS.
(a) LICENSEE acknowledges LICENSOR's ownership of the Licensed Marks, and
agrees not to challenge their validity and ownership by LICENSOR. All use of the
Licensed Marks by LICENSEE shall inure to the benefit of LICENSOR. LICENSEE
shall not do or commit any act which would effect the validity of the Licensed
Marks, or LICENSOR's ownership thereof. LICENSEE shall at any time, whether
during or after the Term of this Agreement, execute any documents reasonably
requested by LICENSOR to confirm its ownership rights. All rights in the
Licensed Marks other than those specifically granted in this Agreement are
reserved by LICENSOR for its own use and benefit. This Agreement shall also
include all future trademarks of LICENSOR using the name "▇. ▇▇▇▇▇▇" or its
logos. LICENSEE acknowledges that the Licensed ▇▇▇▇ has not yet been registered
and is pending before the U.S. Patent and Trademark Office. Simultaneously
herewith LICENSEE shall assign all trademark applications and registration for
the ▇▇▇▇ "▇. ▇▇▇▇▇▇". Such assignment shall include all "good will" associated
with the ▇▇▇▇ and shall be in a form acceptable to LICENSOR. LICENSEE hereby
assumes all risk associated with the use of the Licensed ▇▇▇▇ "▇. ▇▇▇▇▇▇" on the
Licensed Articles.
(b) DESIGN OWNERSHIP. All rights (including copyright rights) to designs
for the Licensed Articles, and to any package design, label, advertising or
promotional material or the like bearing the Licensed Marks (hereinafter the
"Design Rights") shall be the property of LICENSOR (regardless whether such
designs were created by LICENSOR, LICENSEE, or LICENSEE's employees, officers,
directors, stockholders or independent contractors). LICENSEE shall make or
procure all assignments necessary for this purpose. LICENSEE shall place
appropriate notices on the Licensed Articles, packages, labels, and advertising
and promotional materials in order to protect the Design Rights (including
copyrights) therein. During the Term of this Agreement, LICENSEE may use the
Design Rights in the Territory in connection with its exercise of the trademark
license of the preceding Paragraph 2. All Articles manufactured from designs
submitted by LICENSEE and approved by LICENSOR, shall bear the Trademarks.
(c) EXCLUSIVITY OF DESIGN. All designs used by LICENSEE for the Licensed
Articles shall be used exclusively for said Articles and may not be used under
any other trademark or private label without the consent of LICENSOR.
15. REGISTRATION. LICENSEE shall cooperate with LICENSOR in the execution,
filing and prosecution of any trademark or copyright applications that LICENSOR
may desire to file and for that purpose LICENSEE shall supply to LICENSOR from
time to time such samples, containers, labels and similar material as may be
reasonably required. The right of LICENSEE, pursuant to Paragraph 2 hereof,
shall include to the extent necessary, the right to use any registered
trademarks or copyrights secured by LICENSOR hereunder.
16. TERMINATION FOR BREACH. (a) If LICENSEE breaches any of its obligations
under this Agreement, LICENSOR shall have the right, without prejudice to any
other rights which LICENSOR may have, to terminate this Agreement by giving
Fifteen (15) days notice to LICENSEE, and this notice will automatically become
effective unless LICENSEE completely remedies the breach within the Fifteen (15)
day period.
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(b) Without prejudice any other rights LICENSOR may have, LICENSOR may
terminate this Agreement, without liability, at any time:
(i) If after achieving widespread commercial distribution of the
Articles within the Territory, LICENSEE fails to continue the bona fide
distribution and sale of the Articles for a consecutive period in excess.
of six (6) months; or
(ii) If at any time subsequent to the initial distribution of the
Articles, LICENSEE fails to adequately advertise, promote and merchandise
the Articles and LICENSEE has not instituted corrective measures within
thirty (30) days after receiving notice of such deficiency from LICENSOR;
or
(iii) If LICENSEE understates royalties due for any royalty report
by Two (2%) Percent or more or misrepresents or misstates material
information in any other report required or requested under this
Agreement; or
(iv) If the quality of Articles (other than seconds) is materially
lower (as determined by LICENSOR in its sole subjective discretion) than
those submitted for approval, and LICENSEE fails to correct the
deficiencies to the satisfaction of LICENSOR within ten (10) days of
written notice; or
(v) LICENSEE makes any cash or unreported sales.
(c) During the term of this Agreement, if LICENSOR gives notice to
LICENSEE for termination for breach, or gives notice of default for breach, more
than two (2) times, upon the third notice, LICENSEE shall no longer have the
right to remedy the breach and termination shall be effective at the time of
notice. The failure of LICENSOR to exercise this right to terminate for any
breach shall not effect its right to exercise the right upon a subsequent
breach.
(d) TERMINATION BECAUSE OF INSOLVENCY. If LICENSEE is adjudicated a
bankrupt, or if a petition in bankruptcy is filed against the LICENSEE, or if
LICENSEE makes any assignment for the benefit of its creditors, or if LICENSEE
commits any act of bankruptcy or takes the benefit of any insolvency law, or if
LICENSEE defaults on any obligation which is secured by a security interest, in
whole or in part in the Articles bearing the Licensed Marks, or if a receiver is
appointed for LICENSEE or a substantial part of it business interests, this
Agreement shall automatically terminate as of the earliest date on which any of
the above events occurred without prejudice to any other rights which LICENSOR
may have. Invalidity or unenforceability of Paragraph 16(d) of this Agreement
shall not affect or render any other clause of this Agreement invalid.
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(e) CHANGE OF BUSINESS. If LICENSEE sells or otherwise disposes of
substantially all of its business or assets to a third party, or control of
LICENSEE is transferred and the management thereby changed, LICENSOR will have
the right, without prejudice to any other right it may have to terminate this
Agreement by giving notice to LICENSEE effective immediately.
17. EFFECT OF TERMINATION. (a) Upon expiration or termination of this Agreement
for any reason whatsoever, all rights in the Licensed ▇▇▇▇ shall automatically
revert to LICENSOR. LICENSEE shall cease all use of the Licensed ▇▇▇▇ which have
been embodied in Articles bearing the Licensed ▇▇▇▇, except that, if the
Agreement is terminated other than pursuant to Paragraph 16(d) of this
Agreement, LICENSEE shall then have Three (3) months from the date of
termination to sell out its then existing inventory of Articles bearing the
Licensed ▇▇▇▇. LICENSEE shall account for, and pay royalties on, all these sales
not later than Thirty (30) days after the close of the Three (3) month period.
Upon the date of termination, LICENSEE will promptly compute and inform LICENSOR
of the amount of its then existing inventory of the Licensed Articles bearing
the Licensed ▇▇▇▇. If, at any time during the Three (3) month period, LICENSEE
is willing to sell all or substantially all of its then remaining inventory to a
single purchaser or group of related purchasers, LICENSEE will advise LICENSOR
of the identity of the prospective purchaser(s) and the price and terms of the
proposed sale and LICENSOR will have a right of first refusal to buy the
remaining inventory at that price and on those terms following notice to
LICENSOR of such proposed sale.
LICENSEE SHALL NOT ACCEPT ANY ORDER FOR NEW PRODUCTION OF ARTICLES TO BE
MANUFACTURED NOR ACCEPT ANY ORDER WHATSOEVER THAT SHALL REQUIRE DELIVERY AFTER
THE CLOSE OF THE THREE (3) MONTH SELL-OFF PERIOD.
(b) NO INDEMNITY, ETC. Upon the expiration or termination of this
Agreement in accordance herewith, LICENSEE shall not be entitled to termination
payments, compensation, reimbursement, or damages on account of any loss of
prospective profits on anticipated sales or on account of expenditures,
including for advertising, promotion or for manufacturing facilities,
investments, leases, or other commitments relating to the business or good will
of LICENSEE, including without limitation, damages claimed by reason of
LICENSEE's reliance upon the continuance of this Agreement.
18. INFRINGEMENTS. If LICENSEE learns of any use by any person of a trademark or
design similar to any of the Licensed ▇▇▇▇ or a licensed design, it shall
promptly notify LICENSOR and, if requested by LICENSOR, shall join the LICENSOR,
at LICENSOR's expense, in such action as LICENSOR, in its reasonable discretion,
may deem advisable for the protection of its rights. LICENSEE shall have no
right to take any action with respect to the Licensed ▇▇▇▇ or designs without
LICENSOR's prior written approval.
19. REPRESENTATION AND WARRANTY. The parties respectively represent and warrant
that they are under no legal impediment which would prevent their signing this
Agreement or consummating the same.
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20. RELATIONSHIP OF PARTIES. Nothing contained in this Agreement shall be
construed to place the parties in the relationship of legal representatives,
partners, joint venturers, or agents, and LICENSEE shall have no power to
obligate or bind LICENSOR in any manner except as provided herein.
21. ASSIGNABILITY. LICENSEE may not assign or sublicense any or all of its
rights or delegate any of its duties under this Agreement without the written
consent of LICENSOR. Any attempted assignment or sublicense in violation of this
provision shall be void.
22. NOTICES. Any notice or other communication under this Agreement shall be in
writing and shall be considered given when sent by overnight delivery service,
telecopier or by registered mail, return receipt requested, to the parties at
the following addresses (or at such other address as party may specify by notice
to the other in the manner provided herein:
TO LICENSOR: ▇▇▇▇▇▇ ▇▇▇▇▇▇
Vice President Licensing
▇▇▇▇ TM, LLC.
▇▇▇▇ ▇▇▇▇▇▇▇▇ - ▇▇▇▇ ▇▇▇▇▇
▇▇▇ ▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇
Fax: ▇▇▇-▇▇▇-▇▇▇▇
WITH A COPY TO: ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇▇, ESQ.
▇▇▇▇ ▇▇▇▇▇▇▇▇ - ▇▇▇▇ ▇▇▇▇▇
▇▇▇ ▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇
Fax: ▇▇▇-▇▇▇-▇▇▇▇
TO LICENSEE: ▇▇▇▇ ▇▇▇▇▇▇, Chairman
BIB Ltd.
▇ ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇
▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇
Fax: ▇▇▇-▇▇▇-▇▇▇▇
WITH A COPY TO: ▇▇▇▇▇ ▇▇▇▇▇▇▇▇
▇▇▇▇▇▇▇, Hudders & ▇▇▇▇▇▇▇▇▇▇
The Paragon Centre Suite 300
▇▇▇▇ ▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇
Fax: ▇▇▇-▇▇▇-▇▇▇▇
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23. WAIVER. The failure of a party to insist upon strict adherence to any term
of this Agreement on any occasion shall not be considered a waiver or deprive or
limit that party of the right thereafter to insist upon strict adherence to that
term in the particular instance or any other term of this Agreement in any
instance. Any waiver must be in writing.
24. GOVERNING LAW. This Agreement shall be governed by and construed and
enforced in accordance with the laws of the State of New York.
25. ARBITRATION. (a) Any controversy arising out of or relating to this
Agreement shall be resolved by arbitration in the City of New York pursuant to
the rules then obtaining of the American Arbitration Association. The panel of
Arbitration appointed to settle any controversy or claim shall consist of three
(3) arbitrators.
(b) The Arbitrators sitting in any such controversy shall have no power or
jurisdiction to alter or modify any express provision of this Agreement or to
make any award which by its terms affect any such alteration or modification.
(c) The parties consent to the jurisdiction of the Supreme Court of the
State of New York and further consent that any demand for arbitration or any
process or notice of motion or other application to the Court or a Judge
thereof, in connection with the same may be served in or out of the State of New
York by registered mail or by personal service provided a reasonable time for
appearance is allowed.
(d) The provision for arbitration herein shall not be deemed any waiver of
the rights of either party to any provisional remedy provided under New York
Law. It is agreed that in the event of any violation hereof, the other party
hereto shall have the right to obtain a preliminary injunction enjoining any
further violation of this Agreement pending the arbitration hearing.
26. INTEREST. LICENSEE shall pay interest to LICENSOR upon all overdue amounts
payable under this Agreement at the prime rate, plus two percent (2%) per annum,
in effect at Chase Bank, N.A., covering the period from the due date to the date
of payment. However, such payment shall in no way affect the rights of LICENSOR
under this Agreement, including but not limited to 4those specified in Paragraph
17, hereof.
27. CROSS-DEFAULT. If any other agreement between the parties hereto is breached
and/or terminated pursuant to the terms thereof, such breach and/or termination
shall, in the sole discretion of LICENSOR, constitute an event of default under
this Agreement, and LICENSOR shall have the right, without prejudice to any
other rights it may have, to terminate this Agreement (with immediate effect) by
giving notice to LICENSEE.
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LICENSEE agrees that a breach or default under this Agreement shall, in
the sole discretion of LICENSOR, also constitute and be deemed a breach or event
of default under all existing agreements between the parties as of the date of
such breach or default; and upon any such termination and/or breach, LICENSOR
shall have the right, without prejudice to any other rights it may have, to
terminate any or all other such Agreements (with immediate effect) by giving
notice to LICENSEE. LICENSEE shall immediately pay all royalties and/or minimums
to LICENSOR as provided in all such Agreements.
28. IMPORTATION OF LICENSED ARTICLES. All Licensed Articles caused to be
manufactured by LICENSEE or an approved sublicense or subsidiary outside the
United States, shall be imported into the United States under the name of the
LICENSEE ONLY. Any and all Articles imported under a name other than that of
LICENSEE shall be deemed counterfeit by U.S. Customs and will be treated
accordingly. In order to prevent the importation of counterfeit merchandise,
LICENSEE shall use a customs broker designated or approved by LICENSOR for all
LICENSOR's Articles imported under this Agreement. LICENSOR shall not be liable
for any acts of or transaction with said broker.
29. COMPLETE AGREEMENT. This Agreement contains a complete statement of all
arrangements between the parties with respect to its subject matter, and cannot
be changed or terminated orally.
30. HEADINGS. The headings of this agreement are solely for convenience of
reference and shall not effect its interpretation.
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IN WITNESS WHEREOF, the parties hereto have set their hand and seal as of the
day first hereinabove written.
▇▇▇▇ TM, LLC
/s/ ▇▇▇▇▇▇ ▇▇▇▇▇▇
-----------------------------------
▇▇▇▇▇▇ ▇▇▇▇▇▇
Vice President Licensing
▇▇▇▇ TM, LLC
/s/ ▇▇▇ ▇▇▇▇▇▇
-----------------------------------
▇▇▇ ▇▇▇▇▇▇
Chairman
BIB LTD.
/s/ ▇▇▇▇ ▇▇▇▇▇▇
-----------------------------------
▇▇▇▇ ▇▇▇▇▇▇
Chairman
All terms of this License Agreement are guaranteed by BIB Holdings, Ltd.
/s/ ▇▇▇▇ ▇▇▇▇▇▇
-----------------------------------
▇▇▇▇ ▇▇▇▇▇▇
License Agreement between ▇▇▇▇ TM, LLC. and BIB LTD., dated November 24, 2003.
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