AMENDED TRADEMARK LICENSE AGREEMENT
AGREEMENT made this date by and between XXXXXX XXXXXX CORPORATION
(hereinafter called ''Licensor''), and XXXXXX XXXXXX MARKETING
CORPORATION (hereinafter called ''Licensee''):
WHEREAS Licensor owns the valuable federally registered trademark
''Xxxxxx Xxxxxx (and design)" (hereinafter referred to as the
''Trademark''), said Trademark having been used over the facilities of
numerous stations in radio and/or television broadcasting in allied
fields, and in promotional and advertising material in different
businesses and being well known and recognized by the general public and
associated in the public mind with Licensor, and
WHEREAS Licensee desires to utilize the Trademark upon and in
connection with the manufacture, sale and distribution of articles
hereinafter described,
NOW, THEREFORE, in consideration of the mutual promises herein
contained, it is hereby agreed:
1. GRANT OF LICENSE.
(a) LICENSED PRODUCTS. Upon the terms and conditions hereinafter
set forth, Licensor hereby grants to Licensee the right and license to
use the Trademark, and Licensee hereby accepts the right, license and
privilege of utilizing the Trademark solely and only upon and in
connection with the manufacture, sale and distribution of the following
articles:
uniViewTM large screen televisions (31" and larger),
specialized VCRs, other electronic appliances
(including uniViewTM Set-top units), and related
products.
such articles being hereinafter referred to as the "Licensed Products."
["uniViewTM" is a trademark of Licensee which pertains to a category of
electronic appliances manufactured and sold by Licensee utilizing
proprietary hardware and software which operates through the television
medium to provide access to the Internet, e-mail, fax capabilities,
current television program listings, and a full duplex speaker phone,
among other features.]
(b) TERM. The term of the license hereby granted shall be
effective on the date of execution of this Agreement and shall continue
for fifteen (15) years, unless sooner terminated in accordance with the
provisions hereof. At the end of this term, and at the end each term
thereafter, this license shall be automatically renewed for a five (5)
year term, unless either party hereto shall be given written notice to
the contrary at least one year prior to the expiration date of the then
current term. Licensor agrees that it will exercise its option of
nonrenewal only for good cause shown.
2. TERMS OF PAYMENT.
(a) RATE. Licensee agrees to pay to Licensor as royalty a sum
equal to one and one-half percent (1.5%) of gross receipts from sales of
the Licensed Products by Licensee or any of its affiliated, associated or
subsidiary companies. The term ''gross receipts'' shall mean gross
monies actually collected by Licensee, less returns.
(b) ROYALTY PAYMENTS. Royalties shall be due within thirty (30)
days after the close of each calendar quarter in which earned, during the
term of this Agreement or any extension hereof, and payment shall
accompany the statements furnished as required below. The receipt or
acceptance by Licensor of any of the statements furnished pursuant to
this Agreement or of any royalties paid hereunder (or the cashing of any
royalty checks paid hereunder) shall not preclude Licensor from verifying
the correctness thereof at any time, and in the event that any
inconsistencies or mistakes are discovered in such statements or
payments, they shall immediately be rectified and the appropriate payment
made by Licensee.
(c) PERIODIC STATEMENTS. (i) Within thirty (30) days after the
close of each calendar quarter during the term of this Agreement or any
extension hereof, Licensee shall furnish to Licensor, a complete and
accurate statement certified to be accurate by Licensee showing the
number, description, gross sales price, itemized deductions from gross
sales price, and gross receipts from the sale of the Licensed Products
distributed and/or sold by Licensee during the preceding calendar
quarter, together with any returns made during the preceding calendar
quarter. Such statements shall be furnished to Licensor whether or not
any of the Licensed Products have been sold during the preceding calendar
quarter.
(ii) Within sixty (60) days after the end of each calendar
year during the term of this Agreement or any extension hereof, Licensee
shall furnish to Licensor, a statement showing the number, description,
gross sales price, itemized deductions from gross sales price, and gross
receipts from the sale of the Licensed Products distributed and/or sold
by Licensee during the preceding calendar year, together with any returns
made during the preceding calendar year, as shown on Licensee's business
books and records. If such statement discloses any underpayment of
royalties for that year, Licensee shall pay the amount of the
underpayment to Licensor at the time of the statement required under this
paragraph. Any overpayment shall be credited by Licensor to Licensee's
account.
(iii) All books and records maintained by Licensee relating to
operations concerning this License shall be available for inspection by
Licensor or any of its designated representatives at any reasonable,
mutually agreeable time and Licensee shall cooperate with any person
making such examination on behalf of Licensor. All books of account and
records shall be kept available for at least two (2) years after the
termination of this license.
3. EXCLUSIVITY. Nothing in this Agreement shall be construed to
prevent Licensor from granting any other licenses for the use of the
Trademark or from otherwise utilizing the Trademark in connection with
products not covered by this Agreement. Licensor agrees that it will not
use, and will grant no other licenses for the use of, the Trademark in
connection with the sale of the Licensed Products during the term of this
Agreement or any extension hereof.
4. ADVERTISING. Licensee agrees to use its best efforts to advertise
and promote the sale of the Licensed Products during the term of this
Agreement or any extension hereof.
5. GOOD WILL. Licensee recognizes the great value of the good will
associated with the Trademark, and acknowledges that the Trademark and
all rights therein and good will pertaining thereto belong exclusively to
Licensor, and that the Trademark has a secondary meaning in the mind of
the public.
6. MAINTENANCE OF TRADEMARK. Licensor will use its best efforts to
maintain, or cause to be maintained, the Trademark in the areas in which
the Licensed Products are sold to enable the Licensed Products to be
distributed and sold in those areas under the Trademark as provided
herein. Licensor will not permit any other person to use the Trademark
in connection with the Licensed Products.
7. PROTECTION OF TRADEMARK. Licensee and Licensor both agree to assist
the other to the extent necessary in the procurement of any protection or
to protect any of Licensor's rights to the Trademark, and either party
may commence or prosecute any claims or suits in its own name or join the
other as a party thereto. Licensee shall notify Licensor in writing of
any action that Licensee takes on account of any infringements or
imitations by others in the Trademark.
8. INDEMNIFICATION BY LICENSEE AND PRODUCT LIABILITY INSURANCE.
Licensee hereby indemnifies Licensor and undertakes to defend itself
and/or Licensor against and hold Licensor harmless from any claims,
suits, loss and damage arising out of any allegedly unauthorized use of
any trademark, patent, process, idea, method or device by Licensee in
connection with the Licensed Products or any other alleged action by
Licensee and also from any claims, suits, loss and damage arising out of
alleged defects in the Licensed Products. Licensee agrees that it will
obtain, at its own expense, product liability insurance in a reasonable
amount from a recognized insurance company, providing adequate protection
for Licensor (as well as for Licensee) against any claims, suits, loss or
damage arising out of any alleged defects in the Licensed Products. As
proof of such insurance, a fully paid certificate of insurance naming
Licensor as an additional insured party will be furnished to Licensor by
Licensee before any Licensed Product is distributed or sold. Any
proposed change in certificates of insurance shall be furnished to
Licensor within thirty (30) days after such change. Licensor shall be
entitled to a copy of the then prevailing certificate of insurance, which
shall be furnished to Licensor by Licensee within thirty (30) days after
request by Licensor.
9. QUALITY OF LICENSED PRODUCTS. Licensee agrees that the Licensed
Products shall be of high standard and of such style, appearance and
quality as to be adequate and suited to their exploitation to the best
advantage and to the protection and enhancement of the Trademark and the
good will pertaining thereto, that such articles will be manufactured,
sold and distributed in accordance with all applicable Federal, State and
local laws, including but not limited to, product safety and labelling,
and that the same shall not reflect adversely upon the good Trademark of
Licensor. Licensee shall use the Trademark only with the Licensed
Products manufactured by or for the Licensee in accordance with
specifications, directions, and processes approved by the Licensor or its
representatives or agents from time to time and the quality of the
Licensed Products shall be according to industry standards as approved by
Licensor, which approvals shall not be unreasonably withheld.
10. WARRANTY AND SERVICING. Licensee agrees to provide for the warranty
and servicing of all Licensed Products manufactured, distributed or sold
by Licensee, unless otherwise agreed in writing.
11. LABELING. (a) Licensee agrees that it will cause to appear on or
within each Licensed Product sold by it under this license and on or
within all advertising, promotional or display material bearing the
Trademark the appropriate statutory notice of registration thereof. In
the event that any Licensed Product is marketed in a carton, container
and/or packing or wrapping material bearing the Trademark, such notice
shall also appear upon the said carton, container and/or packing or
wrapping material. Each and every tag, label, imprint or other device
containing any such notice and all advertising, promotional or display
material bearing the Trademark shall be submitted to Licensor for its
approval, which shall not be unreasonably withheld. Approval by Licensor
shall not constitute a waiver of Licensor's rights or Licensee's duties
under any provision of this Agreement.
(b) Licensee agrees to cooperate fully and in good faith with
Licensor for the purpose of securing and preserving Licensor's rights in
and to the Trademark. Nothing contained in this Agreement shall be
construed as an assignment or grant to the Licensee of any right, title
or interest in or to the Trademark, it being understood that all rights
relating thereto are reserved by Licensor, except for the license
hereunder to Licensee of the right to use and utilize the Trademark only
as specifically and expressly provided in this Agreement. Licensee
hereby agrees that at the termination or expiration of this Agreement,
including any extension hereof, Licensee will be deemed to have assigned,
transferred and conveyed to Licensor any rights, equities, good will,
titles or other rights in and to the Trademark which may have been
obtained by Licensee or which may have vested in Licensee in pursuance of
any endeavors covered hereby, and that Licensee will execute any
instruments requested by Licensor to accomplish or confirm the foregoing.
Any such assignment, transfer or conveyance shall be without other
consideration than the mutual covenants and considerations of this
Agreement.
(c) Licensee hereby agrees that its every use of such Trademark
shall inure to the benefit of Licensor and that Licensee shall not at any
time acquire any rights in such Trademark by virtue of any use it may
make of such Trademark.
12. PROMOTIONAL MATERIAL. In all cases where Licensee desires artwork
involving Licensed Products, the cost of such artwork and the time for
the production thereof shall be borne by Licensee. All artwork and
designs involving the Trademark, or any reproduction thereof, shall,
notwithstanding their invention or use by Licensee, be and remain the
property of Licensor and Licensor shall be entitled to use the same and
to license the use of the same by others.
13. DISTRIBUTION. Licensee agrees that during the term of this license
it will use its best efforts to manufacture, distribute and sell the
Licensed Products and that it will make and maintain adequate arrangement
for their distribution.
14. TERMINATION. (a) Should the Licensee fail to comply with any
material provision of this Agreement, the Licensor may terminate this
license upon sixty (60) days' written notice to the Licensee, provided
that the Licensee has not corrected such default during the notice
period.
(b) Termination of the license under the provisions of this
paragraph shall be without prejudice to any rights which Licensor may
otherwise have against Licensee. Upon the termination of this license,
notwithstanding anything to the contrary herein, all royalties on sales
theretofore made shall become immediately due and payable.
15. FINAL STATEMENT UPON TERMINATION OR EXPIRATION. Sixty (60) days
before the expiration of this license and, in the event of its
termination, ten (10) days after receipt of notice of termination,
Licensee shall furnish to Licensor a statement showing the number and
description of Licensed Products on hand or in process. Licensor shall
have the right to take a physical inventory to ascertain or verify such
inventory and statement, and refusal by Licensee to submit to such
physical inventory by Licensor shall forfeit Licensee's right to dispose
of such inventory, Licensor retaining all other legal and equitable
rights Licensor may have in the circumstances.
16. DISPOSAL OF STOCK UPON TERMINATION OR EXPIRATION. After
termination of the license under the provisions of paragraph 14, Licensee
may, except as otherwise provided in this Agreement, dispose of Licensed
Products which are on hand or in process at the time notice of
termination is received. Such disposal may occur for a period of six (6)
months after notice of termination, provided advances and royalties with
respect to that period are paid and statements are furnished for that
period in accordance with paragraph 2. Notwithstanding anything to the
contrary herein, Licensee shall not manufacture, sell or dispose of any
Licensed Products after an expiration or a termination of this license
which is based on the failure of Licensee to affix notice of trademark
registration or any other notice to the Licensed Products, cartons,
containers, or packing or wrapping material or advertising, promotional
or display material, or because of the departure by Licensee from the
quality and style approved by Licensor pursuant to paragraph 9.
17. EFFECT OF TERMINATION OR EXPIRATION. Upon and after the
expiration or termination of this license, all rights granted to Licensee
hereunder shall forthwith revert to Licensor, who shall be free to
license others to use the Trademark in connection with the manufacture,
sale and distribution of the Licensed Products and Licensee will refrain
from further use of the Trademark or any further reference to it, direct
or indirect, or anything deemed by Licensor to be similar to the
Trademark in connection with the manufacture, sale or distribution of
Licensee's products, except as provided in paragraph 16.
18. NOTICES. All notices and statements to be given, and all payments
to be made hereunder, shall be given or made at the current respective
addresses of the parties unless notification of a change of address is
given in writing, and the date of mailing shall be deemed the date the
notice or statement is given.
19. NO JOINT VENTURE. Nothing herein contained shall be construed to
place the parties in the relationship of partners or joint venturers, and
neither party shall have the power to obligate or bind the other in any
manner whatsoever.
20. NO WAIVER. None of the terms of this agreement can be waived or
modified except by an express agreement in writing signed by both
parties. There are no representations, promises, warranties, covenants
or undertakings other than those contained in this Agreement, which
represents the entire understanding of the parties. The failure of
either party hereto to enforce, or the delay by either party in
enforcing, any of its rights under this Agreement shall not be deemed a
continuing waiver or a modification thereof and either party may, within
the time provided by applicable law, commence appropriate legal
proceeding to enforce any or all of such rights. No person, firm, group
or corporation (whether included in the Trademark or otherwise) other
than Licensee and Licensor, and their successors, shall be deemed to have
acquired any rights by reason of anything contained in this Agreement.
IN WITNESS WHEREOF, the parties have caused this instrument to be
duly executed as of April 17, 1996.
LICENSOR: LICENSEE:
XXXXXX XXXXXX CORPORATION XXXXXX XXXXXX MARKETING
CORPORATION
By:____/s/ Xxxx Park____ By:_____/s/ Xxx Custer______
Xxxx Xxxx, Vice President Xxxxxxx X. Xxxxxx,President
Chief Operating Officer
