AMENDED AND RESTATED
TRADEMARK LICENSE AGREEMENT
AGREEMENT, dated as of October 31, 1998 among Xxxxxx & Xxxxx College
Bookstores, Inc, a New York corporation having an office located at 00 Xxxx 00xx
Xxxxxx, Xxx Xxxx, Xxx Xxxx 00000 ("Licensor"), xxxxxxxxxxxxxx.xxx llc, a
Delaware limited liability company having an office located at 00 Xxxxx Xxxxxx,
00xx Xxxxx, Xxx Xxxx, Xxx Xxxx 00000 ("Licensee"), and xxxxxxxxxxxxxx.xxx inc.
(formerly known as Xxxxxx & Noble Online, Inc.) ("Online"), amending and
restating that certain Trademark License Agreement dated as of January 15, 1997
between Licensor and Online (the "Prior Agreement").
WHEREAS, Licensor is the registered owner of the trademark "Xxxxxx &
Xxxxx" and the owner of the trademark "xxxxxxxxxxxxxx.xxx" (collectively, the
"Trademark") and uses the name "Xxxxxx & Noble" in the operation of its
business;
WHEREAS, Licensor and Online have entered into the Prior Agreement;
WHEREAS, Online is transferring substantially all of its assets and
business to Licensee for a 100% membership interest in Licensee and will
thereafter assign its interest in Licensee to an entity that will be entering
into an Amended and Restated Limited Liability Company Agreement with XXX.XX
Online, Inc. (the "LLC Agreement"; capitalized terms used herein without
definition shall have the meanings assigned to them in the LLC Agreement); and
WHEREAS, in connection therewith, Licensor, Licensee and Online
desire to amend and restate the Prior Agreement.
NOW, THEREFORE, in consideration of the mutual promises and
agreements herein contained and for other good and valuable consideration, the
receipt and sufficiency of which is hereby acknowledged, the parties hereto
hereby agree as follows:
1. Grant of License. Licensor hereby grants to Licensee an exclusive,
perpetual (except as set forth in Section 2 below), worldwide right and license
(the "License") to use the Trademark in the operation of the Business, to
sublicense the Trademark to BOL and parties operating under the BOL name solely
in order to develop and maintain the links described in Article II of the LLC
Agreement, and to further sublicense the "xxxxxxxxxxxxxx.xxx" name as the BN
Managers, in their sole discretion, see fit in connection with the operation of
the Business, all on the terms and conditions set forth herein, provided,
however, that the License does not include the right to use the Trademark for
the promotion or sale of college textbooks through Websites (except as otherwise
provided in Section 3(e) below). Nothing in the License is intended to permit
Licensee to use the
Business, all on the terms and conditions set forth herein, provided, however,
that the License does not include the right to use the Trademark for the
promotion or sale of college textbooks through Websites (except as otherwise
provided in Section 3(e) below). Nothing in the License is intended to permit
Licensee to use the Trademark for any other purpose, including, without
limitation, the operation of retail bookstores.
2. Term; Effects of Termination. (a) The term of this Agreement (the
"Term") shall commence on the date hereof and shall continue until terminated as
provided herein. Licensor may terminate this Agreement, on prior written notice
to Licensee, in the event that: (i) Licensee is in default of the terms of this
Agreement and such default continues for more than thirty (30) days after
written notice thereof to Licensee and BAG, provided that such default is not
principally as a result of the action or inaction of the BN Managers; or (iii)
Licensee files a petition in bankruptcy or is adjudicated a bankrupt or
insolvent, or makes an assignment for the benefit of creditors, or an
arrangement pursuant to any bankruptcy law, or if Licensee discontinues or
dissolves its business or if a receiver is appointed for Licensee or for
Licensee's business and such receiver is not discharged within 30 days.
Additionally, Licensor may terminate this Agreement in accordance with the terms
of Section 7.5(b) of the LLC Agreement.
(b) Upon termination of this Agreement: (i) the License shall
terminate; (ii) Licensee shall cease to use the Trademark; and (iii) Licensee
shall execute and deliver to Licensor any documents reasonably requested by
Licensor to confirm Licensor's ownership of the Trademark and the termination of
the License.
3. Restrictions on Use. (a) Licensee shall use the Trademark only in
a manner and form: (i) designed to maintain the high quality of the Trademark;
(ii) consistent with the use of the Trademark by Licensor and its other
licensees; (iii) that protects Licensor's ownership interest therein; and (iv)
that complies will all applicable federal, state, local and foreign laws, rules
and regulations, including, without limitation, all applicable trademark laws,
rules and regulations.
(b) Licensee expressly acknowledges that its use of the
Trademark hereunder inures to the benefit of Licensor and shall not confer on
Licensee any proprietary rights to the Trademark, which shall at all times
remain with Licensor and its assignees.
(c) Licensee shall not question, contest or challenge, either
during or after the Term, Licensor's ownership of the Trademark, and Licensee
shall claim no interest therein, except the right to use the Trademark on the
terms and conditions
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set forth herein. Licensee shall not attempt to register the Trademark.
(d) Licensee shall, at its expense, take such action, including,
without limitation, commencing litigation or other legal proceedings, as
Licensee considers necessary to protect the xxxxxxxxxxxxxx.xxx trademark from
infringement by any person or party, and Licensee shall be entitled to all
amounts received in connection therewith. Nothing in this Agreement is intended
to nor shall it limit or impair Licensor's rights, during or after the Term, to
protect the Trademark from infringement by any person or party, including
without limitation Licensee. During and after the Term Licensor may, but shall
not be obligated to, take such action as it deems necessary or appropriate to
prevent or stop such infringement. Licensee shall promptly notify Licensor in
writing of any infringement or suspected infringement involving the Trademark.
(e) Nothing in this Agreement is intended to nor shall it limit
or impair Licensor's rights, during the Term, to: (i) use or otherwise license
the Trademark to the extent not licensed to Licensee hereunder; or (ii) to use
or license the Trademark for use to sell textbooks and other items customarily
sold by Licensor in its college bookstores, whether through stores, Websites or
otherwise, and Licensee agrees that it will not promote the sale of or sell
textbooks in its conduct of the Business. Licensor agrees that sales of
textbooks by Licensee in the Business that are immaterial, incidental and
unsolicited shall not be a violation of the foregoing restriction. Similarly,
Licensee agrees that sales by Licensor, or its other licensees, through Websites
or otherwise, of books and other merchandise promoted by Licensee in the
Business that are immaterial, incidental and unsolicited shall not be a
violation of the exclusive license granted to Licensee hereunder.
(f) Nothing in this Agreement is intended to nor shall it limit
or impair Licensor's rights, after the Term, to use or license the Trademark in
any way whatsoever.
4. Representations and Warranties; Indemnity. (a) Licensor represents
and warrants to Licensee that: (i) it is the registered owner of the "Xxxxxx &
Xxxxx" trademark and the owner of the "xxxxxxxxxxxxxx.xxx" trademark; (ii) it
has the right and power to grant the License to Licensee as provided herein; and
(iii) the grant of the License to Licensee as provided herein does not require
the consent of any third party.
(b) Licensor shall indemnify and hold Licensee harmless against
any and all claims, actions, suits or proceedings asserting that Licensee's use
of the Trademark pursuant to this Agreement infringes the statutory or common
law trademark rights of any third party. Licensor shall, at its sole
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cost and expense, defend all such claims, actions, suits and proceedings on
behalf of Licensee, with counsel of Licensor's choice, provided that Licensee
promptly notifies Licensor of such claims, actions, suits or proceedings.
5. Injunctive Relief. Licensee acknowledges that money damages would
not adequately compensate Licensor in the event of a breach by Licensee of its
obligations hereunder, and that injunctive relief would be essential for
Licensor to adequately protect itself hereunder. Accordingly, Licensee agrees
that, in addition to any other remedies available to Licensor at law or in
equity, Licensor shall be entitled to injunctive relief in the event Licensee is
in breach of any covenant or agreement contained herein.
6. Miscellaneous. (a) This Agreement shall be governed by the
internal laws of the State of New York without giving effect to the conflict of
law principles thereof.
(b) This Agreement sets forth the entire agreement between the
parties hereto with respect to the subject matter hereof and is intended to
supersede all prior negotiations, understandings and agreements. This Agreement
supersedes, and amends in its entirety, the Prior Agreement. No provision of
this Agreement may be waived or amended, except by a writing signed by Licensor
and Licensee.
(c) This Agreement may be executed in one or more counterparts,
each of which shall be deemed an original and together which shall constitute
one and the same instrument.
(d) The failure of any party to exercise any right or remedy
provided for herein shall not be deemed a waiver of any right or remedy
hereunder.
(e) If any provision of this Agreement is determined by a court
of competent jurisdiction to be invalid or otherwise unenforceable, such
determination shall not affect the validity or enforceability of any remaining
provisions of this Agreement. If any provision of this Agreement is invalid
under any applicable statute or rule of law, it shall be enforced to the maximum
extent possible so as to effect the intent of the parties, and the remainder of
this Agreement shall continue in full force and effect.
(f) Any and all notices or other communications hereunder shall
be sufficiently given if in writing and sent by hand, telecopier, reputable
overnight courier or by certified mail, return receipt requested, postage
prepaid, addressed to the party to receive the same at its address as set forth
on page 1 hereof, or to such other address as the party to receive the same
shall have specified by written notice given in the manner
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provided for in this Section 6(f). Such notices or other communications shall be
deemed to have been given on the date of such delivery. Any party may change its
address for the purpose of this Agreement by notice to the other parties given
as aforesaid.
(g) This Agreement shall be binding upon and inure to the
benefit of each of the parties hereto and their respective successors and
assigns, provided that Licensee may not assign any of its rights hereunder
without the prior written consent of Licensor.
(h) The section headings used herein are for the convenience of
the parties only, are not substantive and shall not be used to interpret or
construe any of the provisions contained herein.
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IN WITNESS WHEREOF, the parties hereto have executed this Agreement
on the date first set forth above.
XXXXXX & XXXXX COLLEGE
BOOKSTORES, INC.
By: /s/ Xxxxxxx X. Xxxxx
---------------------------------
Name: Xxxxxxx X. Xxxxx
Title: Secretary
xxxxxxxxxxxxxx.xxx llc
By: xxxxxxxxxxxxxx.xxx inc.,
its managing member
By: /s/ Xxxxx X. Xxxxxxxxx
-----------------------------
Name: Xxxxx X. Xxxxxxxxx
Title: Executive Vice President,
Finance
xxxxxxxxxxxxxx.xxx inc.
By: /s/ Xxxxx X. Xxxxxxxxx
---------------------------------
Name: Xxxxx X. Xxxxxxxxx
Title: Executive Vice President,
Finance
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