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EXHIBIT 10.2
LICENSE AGREEMENT
This LICENSE AGREEMENT (the "Agreement"), dated as of June 25, 1999, is
by and between TUFCO, LP, a Delaware limited partnership ("Licensor") and GREEN
BAY CONVERTING, INC., a Wisconsin corporation ("Licensee").
WHEREAS, Licensor and Licensee have entered into that certain Asset
Purchase Agreement, dated as of the date hereof (the "Asset Purchase
Agreement"), pursuant to which, among other things, Licensee has agreed to
purchase from Licensor and assume certain of Licensor's assets, liabilities and
obligations, upon the terms and conditions set forth in the Asset Purchase
Agreement;
WHEREAS, Licensor is the owner of the trademark "EXECULINE" (the
"Trademark") and of the pending application to register the Trademark in the
United States Patent and Trademark Office, Serial No.: 75/395,814;
WHEREAS, as a condition to the consummation of the transactions
contemplated by the Asset Purchase Agreement, Licensor has agreed to license to
Licensee, on an exclusive, royalty-free basis solely in the Away From Home
industrial marketplace, the Trademark for use on the Licensed Products (as
hereinafter defined) the Licensee manufactures, distributes, converts and sells
in its AFH Business (as hereinafter defined).
NOW, THEREFORE, for good and sufficient consideration, the sufficiency
of which is hereby acknowledged, the parties hereto agree as follows:
1. DEFINITIONS
1.1 "AFH Business" means the business of manufacturing and distributing
the Products.
1.2 "Products" mean the following products in the "Away From Home"
industrial marketplace: (i) multifold and single fold towels; (ii) C-fold
towels; (iii) center-pull towels; (iv) hard roll and kitchen towels; (v) jumbo
roll tissue; (vi) single roll tissue (one- and two-ply); (vii) untreated facial
tissue; and (viii) other products and services provided or supplied in the Away
From Home industrial marketplace (i.e., products and services used in washrooms
and workstations outside the home).
1.3 "Licensed Products" means Products which use or incorporate the
Trademark.
1.4 "Term" means the period beginning on the date hereof, and ending on
June 30, 2024, except as otherwise provided for in this Agreement.
2. General Terms And Conditions.
2.1 Description of Rights Granted. During the Term of this Agreement,
Licensor grants to the Licensee, and the Licensee accepts from Licensor, the
exclusive, royalty-free, right, license and privilege of using the Trademark
solely on the Products in the Away From Home Business. The rights granted in
this Section 2.1 are subject to all other terms and conditions contained in this
Agreement, including, without limitation, Section 7.4 below. Licensee shall have
no other rights in and to the Trademark except as described in this Agreement.
Nothing in this Agreement shall be construed to
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prevent Licensor from granting any other licenses for the use of the Trademark,
or from using the Trademark in any manner whatsoever, outside the Away from Home
Business.
2.2 Quality Control. Licensee hereby covenants and agrees to maintain
the highest standards of quality of the Licensed Products that have heretofore
been maintained by Licensor and associated with the Trademark. During the Term,
and upon delivery of written notice to the Licensee, Licensor shall have the
right, from time to time, to demand that Licensee provide Licensor with a
reasonable quantity of samples of the Licensed Products for Licensor's review.
If following such review, Licensor shall determine, in its reasonable judgment,
that the Licensed Products do not meet those high standards of quality, then
Licensor shall notify the Licensee in writing of such fact, and the Licensee
shall have thirty (30) days within which to deliver to Licensor Licensed
Products that meet such standards. If the Licensee fails to deliver Licensed
Products that meet such standards within such thirty (30) day period (provided
that if Licensee has commenced efforts in good faith to correct such standards
but such correction is not capable of being completed within said 30-day notice
period, said 30 days shall be extended to 90 days, provided Licensee continues
to make such efforts), the Licensor shall have the unilateral right, upon
delivery of written notice to Licensee, to terminate this Agreement.
3. Additional Representations, Warranties and Covenants Given by Licensee.
3.1 Licensed Products in Compliance with Applicable Laws. Licensee
agrees that the Licensed Products shall be manufactured, sold and distributed in
accordance with all applicable laws and regulations of the United States and any
other jurisdiction or territory in which the Licensed Products may be
manufactured, sold and/or distributed.
3.2 Manufacturing Operations in Compliance with Applicable Laws. (a)
Licensee agrees that the manufacturing operations used to make the Licensed
Product shall comply with all applicable laws, including but not limited to
legal requirements related to (i) the use of force labor or child labor, (ii)
environmental laws, or (iii) the transshipment of products for the purpose of
reducing tariffs or evading quota or country-of-origin restrictions. At
Licensor's request, Licensee agrees to provide written reports and/or completed
questionnaires that relate to Licensee's compliance with this Section 3.2(a).
Licensee shall immediately notify Licensor in writing if and when Licensee
becomes aware of a violation under this Section 3.2(a).
(b) Licensee agrees that Licensor and/or its designated agents
(including third parties) shall have the right to engage in reasonable
monitoring activities to confirm compliance with this Section 3.2(b). Licensor
shall limit such monitoring activities to no more than two inspections per
manufacturing site per year.
3.3 Licensor's Continuing Rights in the Trademark. Licensee agrees to
cooperate fully and in good faith with Licensor, at Licensor's expense, for the
purpose of preserving Licensor's rights in and to the Trademark. The parties
agree that nothing 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 or
Licensor's name except as specifically provided for in this Agreement, and that
all other rights in the Trademark are retained by Licensor. The parties hereto
agree that at the expiration or earlier termination of this Agreement, Licensee
will be deemed to have assigned, transferred and conveyed to Licensor any trade
rights, equities, goodwill, titles or other rights in and to the Trademark which
may have been obtained by Licensee or which may have vested in Licensee, and
that Licensee will execute any instruments requested by Licensor to
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accomplish or confirm the foregoing. Any such assignment, transfer or conveyance
shall be without consideration other than the mutual covenants and
considerations of this Agreement.
4. Additional Representations, Warranties and Covenants Given by Licensor.
4.1 Licensor's Representations of Ownership Rights in the Trademark.
Licensor represents, warrants and covenants that it is the owner of the
Trademark and of the pending application to register the Trademark in the in the
United States Patent and Trademark Office, under the Serial No.: 75/395,814.
5. Licensee's Agreement to Indemnify Licensor. Licensee agrees to indemnify
Licensor, its directors, officers, stockholders, affiliates, agents and
employees (collectively the "Indemnitees") and agrees to defend the Indemnitees
against and hold them harmless from any claims, suits, loss and damage arising
out of any allegedly unauthorized use of any patent, process, idea, method,
device, trademark, or design by Licensee (other than the use of the Trademark as
provided for in this Agreement) in connection with the Licensed Products and
also from any claims, suits, loss and damage arising out of any alleged defects
in the Licensed Products. Licensee agrees that it will obtain, at its own
expense, product liability insurance from a recognized insurance company
authorized to do business in the United States, including contractual liability
endorsement, providing adequate protection (at least in the unencumbered amount
of $1,000,000 combined single limit) for the Indemnitees (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 the Indemnitees as additional insured parties
will be submitted to Licensor by Licensee before any Licensed Product is
distributed or sold.
6. Breach of the Agreement; Effects of the Expiration or Termination of the
Agreement.
6.1 Party's Right to Terminate Agreement Upon Breach by the Other
Party. If the Licensee or Licensor materially breaches any of its obligations
under this Agreement, the non-breaching party shall have the right to terminate
this Agreement upon thirty days' written notice to the breaching party, and such
notice of termination shall become effective unless the breaching party shall
cure the breach within the thirty-day notice period (provided that if within
said 30-day period, Licensee has commenced efforts in good faith to cure such
breach, and the breach is not capable of being cured within said 30-day notice
period, said 30 days shall be extended to 60 days, provided Licensee continues
to make such efforts). The above notwithstanding, the License shall terminate
immediately upon a breach of Sections 2.1, 5 and/or 7.4 hereof.
7. Miscellaneous Provisions.
7.1 Excuse for Nonperformance. Licensee and Licensor shall be
temporarily relieved from their obligations under this Agreement in the event
that governmental regulations or other causes arising out of a state of national
emergency or war or causes beyond the reasonable control of the parties render
performance impossible. The relief shall last as long as such conditions last.
If such conditions last for more than ninety days, either party may, at its
option, terminate the Agreement by providing the other party with thirty days'
prior written notice.
7.2 Notices. All notices, demands, and other communications required by
this Agreement, and all payments to be made pursuant to this Agreement, shall be
sent to the addresses set forth below unless and until a notification of a
change of address is given in writing. All notices, demands, payments
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and other communications shall be deemed to have been duly given or made (i)
when delivered personally, (ii) when sent by telefax to the telefax number on
the address shown below, (iii) the second day following the day of delivery
prepaid to a national air courier service, or (iv) three business days after
deposit in the U.S. mails, certified or registered, postage prepaid, in each
case addressed to the party to whom notice is being given at the addresses set
forth below.
If to the Licensor: Xxxxx XxXxxxxx, CEO
Tufco, LP
0000 Xxxxx Xxxxx Xxxx
Xxxxx Xxx, XX 00000
(000) 000-0000
With a copy to: Xxxx X. xx Xxxxx, Esq.
Battle Xxxxxx LLP
00 Xxxx 00xx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
(000) 000-0000
If to the Licensee: Xxxxxxx X. Xxxxxxx, President
Green Bay Converting, Inc.
0000 Xxxxxx Xxxxx Xxxxx
Xxxxx Xxx, XX 00000
(000) 000-0000
With a copy to: Xxxxxxx X. Xxxxxxx, Esq.
Xxxxxxxxxx, Xxxx & xxXxxx, S.C.
00000 Xxxx Xxxxxxxxxx Xxxx, Xxxxx 000
Xxxxxxxxxx, XX 00000
(000) 000-0000
7.3 No Joint Venture. Nothing contained in this Agreement shall be
construed to place the parties in the relationship of partners or joint
venturers, and neither party shall have any power to obligate or bind the other
party in any manner. Consistent with a licensing arrangement, and without
limiting or otherwise affecting any term or condition of this Agreement,
Licensee acknowledges its responsibility to, among other things, manufacture
and/or source, package, transport, promote, advertise, distribute and sell the
Licensed Products as provided for under this Agreement.
7.4 No Sublease, Assignment, Etc. by Licensee. This Agreement, and all
rights and duties hereunder, are personal to the Licensee and shall not, without
Licensor's prior written consent, be assigned, mortgaged sublicensed, liened or
otherwise sold, transferred or encumbered.
7.5 Governing Law. This Agreement shall be construed in accordance with
the laws of the State of Wisconsin.
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7.6 Counterparts. This Agreement may be executed in one or more
counterparts, each of which shall be deemed an original, but all of which
together shall constitute a one and the same instrument.
7.7 Interpretation of the Agreement. The language of all parts of this
Agreement shall in all cases be construed as a whole, according to its fair
meaning and not strictly for or against either of the parties. Section headings
herein are for convenience of reference only and are without substantive
significance.
7.8 Survival of Obligations. The respective obligations of the parties
under this Agreement, which by their nature would continue beyond the expiration
or termination date of this Agreement, including but not limited to
indemnification, shall survive the expiration or termination of this Agreement
7.9 Severability of Provisions. The terms of this Agreement are
severable and the invalidity of any term of this Agreement shall not affect the
validity of any other term.
7.10 Exhibits. The various Exhibits referred to in this Agreement and
attached hereto are an integral part of this Agreement and are incorporated
herein by this reference.
7.11 Waiver; Entire Agreement. None of the terms of this Agreement can
be waived or modified except by an express agreement in writing signed by both
parties. The failure of either party to enforce, or delay in enforcing, any of
its rights under this Agreement shall not be deemed a continuing waiver or a
modification, and either party may, within the time provided by applicable law,
commence appropriate legal proceedings to enforce any or all of such rights.
This Agreement represents the entire understanding of the parties, and there are
no representations, promises, warranties, covenants or undertakings other than
those contained in this Agreement. No person, firm, group or corporation other
than Licensee and Licensor shall be deemed to have acquired any rights by reason
of anything contained in this Agreement.
[SIGNATURE PAGES FOLLOW]
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IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
executed as of the day, month and year first above written.
LICENSOR:
GREEN BAY CONVERTING, INC.
By: /s/ XXXXXXX X. XXXXXXX
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Xxxxxxx X. Xxxxxxx
President
LICENSEE:
TUFCO, LP
By: Tufco Tech, Inc., its General Partner
By: /s/ XXXXX XXXXXXXX
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Xxxxx XxXxxxxx
Chief Executive Officer
