Exhibit 10.1
Licensing Agreement - Xxxxxxxx Enterprises
LICENSING AGREEMENT
THIS AGREEMENT, dated as of the 31st day of May, 1996 (the "Effective
Date"), is by and between XXXXXXXX ENTERPRISES INCORPORATED, a Florida
corporation having its principal offices at 0000 X.X. 00xx Xxxxxx, Xxxxx 000,
Xx. Xxxxxxxxxx, Xxxxxxx 00000-0000 ("Licensor") and PRODUCTS THAT PRODUCE, INC.,
a Florida corporation having its principal offices at 1003 SE 00 Xxxxxx
Xxxxxxxx, Xxxxx 000, Xx. Xxxxxxxxxx, XX 00000 ("Licensee"). Licensor and
Licensee are sometimes referred to in this Agreement as the "parties."
WHEREAS, Licensor represents that it owns all rights, title and interest
in and to the marks (i) "Mr. Food", used in connection with entertainment
services, namely, production of television programs dealing with culinary
topics, and specifically including, without limitation, U.S. Service Xxxx
Registration No. 1,339,606 dated June 4, 1985, from the United States Patent and
Trademark office, a copy of which is attached hereto as Exhibit A, (ii) "Mr.
Food" together with a caricature of Xxxxxx Xxxxxxxx as television personality
Mr. Food ("Talent") as used in connection with entertainment services, namely,
production of television programs dealing with culinary topics, and specifically
including, without limitation, U.S. Service Xxxx Registration No. 1,361,086,
dated September 17, 1985, from the United States Patent and Trademark office, a
copy of which is attached as Exhibit B, (iii) a caricature of the Talent, as
television personality Mr. Food used in connection with printed advertisements
containing food recipes, and specifically/ including, without limitation, U.S.
Trademark Registration No. 1,610,561, dated August 21, 1990, from the United
States Patent and Trademark Office, a copy of which is attached hereto as
Exhibit C, and (iv) the words "Ooh It's So Good!!" used in connection with
entertainment services, namely production of television programs dealing with
culinary topics, and specifically including, without limitation U.S. Service
Xxxx Registration No. 1,955,190, dated February 6, 1996, from the United States
Patent and Trademark Office, a copy of which is attached hereto as Exhibit D,
all of which are herein are collectively referred to as the "Registered Marks";
and
WHEREAS, Licensee has assigned any and all common law rights that it may
have in and to the xxxx AlloFresh (the "AlloFresh Xxxx") to Licensor; and
WHEREAS, Licensor has common law rights to Talent's likeness
("Unregistered Marks") together with any and all related rights and privileges
to the Registered Marks, the AlloFresh Xxxx and the Unregistered Marks provided
under trademark, copyright, trade secret and other laws of the United States,
individual states thereof, and jurisdictions foreign thereto (collectively, the
"Proprietary Rights") , and the goodwill associated with respect to which the
Proprietary Rights relate. The Registered Marks, the Unregistered Marks and the
Proprietary Rights are herein collectively referred to as "Marks"; and
WHEREAS, the parties acknowledge that the Marks have been used in all
media, including, without limitation, radio and television, as well as in
connection with promotional and advertising material for a variety of products
and services, and that the Marks are well-known and recognized by the general
public and are associated with Licensor; and
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WHEREAS, Licensor wishes to grant a License, as described in Section 2
below, to use the Marks within the United States, its territories and
possessions and Canada (collectively, the "Territory") , pursuant to the terms
and conditions set forth in this Agreement and the Licensee wishes to accept
such License; and
WHEREAS, the Licensee is engaged in the business (the "Business") of the
marketing, distribution and sale of the product more specifically described on
Schedule 2(b) hereto (the "Product"); and
WHEREAS, except as specifically set forth in this Agreement the Licensee
owns all rights, title and interest in the Product, and all related rights and
privileges provided under patent, trademark, copyrights, trade secret and other
laws of the United States, individual states thereof, and jurisdictions foreign
thereto, and the goodwill associated with respect thereto.
NOW THEREFORE, in consideration of the mutual agreements set forth herein
and for other good and valuable consideration, the receipt of which is hereby
acknowledged, the parties hereby agree as follows:
1. RECITALS. The above recitals are true, correct and are incorporated
herein by reference.
2. LICENSE.
(a) GRANT OF LICENSE. Upon the terms and conditions set forth
herein, Licensor grants to Licensee, and Licensee hereby accepts, an exclusive
license (the "License,') to use the Marks solely as shown on the attached
Schedule 2(a), in connection with the sale of the Product within the Territory
and solely in connection with the marketing, sales and distribution of the
Product; and
(b) DISTRIBUTION, MARKETING AND SALES OF THE PRODUCT WITHIN THE
TERRITORY.
(1) Licensee shall distribute, market and sell the Product
within the Territory through a variety of retail vehicles including, without
limitation, distributors, supermarkets, mass-merchants, department and specialty
stores, the QVC home shopping television network, the Internet and minimercials.
(2) Licensee shall not distribute, market or sell the Product
within the Territory via any home shopping television show or network other than
QVC without prior written permission from Licensor.
(c) Within thirty (30) days from the Effective Date of this
Agreement, packaging for the Product will bear the Marks.
(d) Talent shall be the sole personality identified with the
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Product during the Term of this Agreement.
(e) The parties intend for Licensee to only market, distribute and
sell the Product in connection with the Marks during the Term of this Agreement.
Accordingly, notwithstanding any other provision in this Agreement to the
contrary, the parties agree that Licensee shall market, distribute and sell the
Product within the Territory labeled with Licensor's Marks exclusively.
(f) MINIMERCIALS. The parties shall create no more than three
minimercials each year of the Term of this Agreement. The following shall apply
to all such minimercials:
(1) Licensee shall pay all costs associated with the creation
of said minimercials, including, without limitation, production and editing
costs and cable television airing costs;
(2) Each minimercial shall be up to ninety seconds (:90) in
length;
(3) Production of any and all minimercials to be produced
during any given year during the Term of this Agreement shall take place on the
same calendar date in such year in Licensor's Fort Lauderdale, Florida studio;
(4) Licensor shall have final approval on any and all scripts
for said minimercials;
(5) Licensee shall pay to Licensor a royalty of fifteen
percent (15%) on any and all Gross Retail Sales (as defined herein) of the
Product via said minimercials; and
(6) The minimercial shall be aired solely on cable television
networks and on those national network affiliates on which Licensor's television
vignettes are aired as more particularly listed on Schedule 2 (f) to this
Agreement. if Licensor does not air its television vignettes in a given
television market, Licensee may approach any network in such television market
for purposes of airing the minimercial.
(7) Licensee shall air on a cable television station at least
one minimercial on or before the sixtieth (60th) day after its final completion
("Airing Date"). If Licensee fails to air such minimercial pursuant to this
Agreement on or before the Airing Date, Licensee shall pay to Licensor Five
Thousand Dollars ($5,000) within thirty (30) days of the Airing Date for such
minimercial.
(g) EXPANSION OF TERRITORY. The Territory shall be expanded to cover
any additional countries upon which the parties may agree in writing (the
"Expanded Territory") ; provided that the Licensee shall not (1) make, or
authorize any use, directly or indirectly, of the Marks outside of the Territory
and the Expanded Territory, or (2) sell the Product to any person, firm or
corporation which the Licensee, upon reasonable inquiry, believes intends or is
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likely to resell the Product outside the Territory of the Expanded Territory.
(h) RESERVATION OF RIGHTS . Other than specifically set forth in
this Agreement, the Licensor specifically reserves all rights in and to the
Marks.
(i) LICENSEE'S OTHER PRODUCTS. During the Term (as hereinafter
described) and prior to the distribution or sale of any other products by
Licensee for which Licensee intends to incorporate (1) a xxxx that is associated
with a personality or (2) an endorsement by a personality, Licensee shall notify
the Licensor in writing (the "Notice") of the Licensee's intent and the terms
and conditions upon which it intends to do so and the Licensor and/or the
Talent, as applicable, shall have thirty (30) days in which to evaluate the
product and agree to negotiate the term of the Agreement.
3. PUBLIC DOMAIN. Notwithstanding any other provisions set forth in this
Agreement, the rights and obligations of Licensee shall not apply with respect
to any element of the Marks that are in the public domain, free and clear for
any third party to use, without violation of any of the Proprietary Rights in
the Marks.
4. TERM OF LICENSE.
(a) The term of the License and all associated rights hereby granted(the
"Term") shall begin on the Effective Date and shall end and automatically
terminate on the date which is the second anniversary of the Effective Date,
unless sooner terminated or extended in accordance with the provisions hereof.
For purposes of this Agreement, the "Term" shall include all extensions and
renewals
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(b) Notwithstanding Section 4 (a) , the Term shall, unless otherwise
terminated pursuant to this Agreement, be automatically renewed for successive
two-year periods subject, however, to either party' s right to terminate by
giving notice of non-renewal at least sixty (60) days prior to the expiration
date of any such renewal period.
(c) The Royal ties provided in Section 2(f)(5) and Section 5 of this
Agreement shall continue in effect throughout the Term.
5. ROYALTIES.
(a) On the Effective Date, Licensee shall pay to Licensor (in the
aggregate) as a non-refundable advance against Royalties earned, the sum of Six
Thousand Dollars ($6,000.00).
(b) Throughout the term of this Agreement, subject to the advance paid
pursuant to Section S(a), Licensee agrees to pay Licensor a royalty of five
percent (5%) of the total dollar amount attributable to sales of the Product,
which such amount shall not include any amounts added by line item to the
invoices for the sale of the Product, which represent applicable taxes and
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shipping costs to be paid by the purchaser of the Product (the "Gross Retail
Sales") . Notwithstanding the foregoing, the royalty rate set forth in section
2(f) (5) shall apply to Gross Retail Sales, if any, of the Product via
minimercial, via the QVC television shopping network, and via any other
television shopping network as permitted pursuant to Section 2(b)(2).
(c) The Licensee shall not deduct any amounts from the Gross Retail
Sales including, without limitation, any deductions for cash or other discounts,
uncollectible accounts, or any costs, or expenses in connection with the
processing, packaging, sales, distribution, marketing or exploitation of the
Product.
6. ACCOUNTING.
(a) Not later than the forty-fifth (45th) day following December 31,
March 31, June 30 and September 30 (and commencing June 30, 1996), Licensee
shall furnish to Licensor a full, complete and accurate statement showing the
location of sales, the number of units sold and the U.S. dollar amount of
Product sold by Licensee during the applicable fiscal quarter. Licensee shall
furnish to Licensor such a statement regardless of actual sales during the
applicable fiscal quarter.
(b) Simultaneously with the furnishing of each accounting described in
Section 6 (a) , subject to deduction of sums advanced under Section 5(a) of this
Agreement, Licensee shall pay to Licensor the amounts due to the Licensor for
the applicable fiscal quarter pursuant to Section 6 (a). All payments shall be
made in U.S. Dollars and shall be paid by check.
(c) For purposes of this Agreement, royalties shall be calculated at
such time as the Product is shipped and invoiced by the Licensee.
(d) Licensee shall keep full, complete and accurate books of account and
records covering all transactions relating to this Agreement and the Licensor,
through its designated authorized representative, shall have the right to
examine such books of account and records and other documents and material in
Licensee's possession or under its control insofar as these accounts, records or
other documents relate to the distribution and sale of the Product. Licensor
shall have free and full access to such documentation at any reasonable hour of
the day during which Licensee's offices are open. Licensee shall retain such
books of account and records and other documents and material in Licensee's
possession or under its control insofar as they relate to the distribution and
sale of the Product for at least two (2) years following the termination or
expiration of this Agreement.
7. QUALITY CONTROL.
(a) Licensee shall supply Licensor with five (5) samples (or such
additional number as the Licensor may reasonably request from time to time) of
the Product prior to the first sale or distribution of the Product for the
Licensor's use solely to evaluate the quality of the Product and compliance with
this Agreement.
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(b) Licensee acknowledges that if the Product is not as represented to
Licensor or of inferior quality in material, workmanship or function, the
substantial goodwill of the Licensor in the Marks will be impaired. Accordingly,
Licensee warrants that the Product will be of high standard and of such
appearance and quality as shall be adequate and suited to assure their sale to
retailers and consumers as well as their use by consumers. Licensee shall submit
to Licensor a working sample of the Product which shall be approved in writing
by Licensor before the Product is advertised, distributed or sold within the
Territory or the Expanded Territory. Any sample of the Product submitted to the
Licensor and not approved by the Licensor within fourteen (14) days of the
receipt of same by Licensor shall be deemed to have been approved.
(c) After samples of the Product have been approved pursuant to this
Section 7, Licensee shall not materially depart in the marketing of the Product
nor shall Licensee materially depart in the specification of the Product in its
manufacture without the prior written consent of Licensor, which approval shall
not be unreasonably withheld. In the event there is a material departure from
the approved sample of the Product, or in the event there is an occurrence
connected with the Product or Licensee which reflects unfavorably upon Licensor,
Licensor shall have the right in the reasonable exercise of its sole discretion
to withdraw its approval of the Product, and upon written notice to the
Licensee, Licensee shall immediately have no further right to sell, advertise,
market, distribute or use the Product in connection with the Marks and shall
immediately pay all Royalties due to Licensor that may be due and owing as of
the date of such termination.
8. TRADEMARK AND COPYRIGHT NOTICES
(a) Licensee warrants that it will, subject to Licensor's prior written
approval, provide the following legend on the Product and/or the packaging,
wrapping, advertising and promotional material bearing any reproductions of the
Marks: "Mr. Food, the Caricature Logo and Ooh It's So Good! ! are registered
marks and Mr. Food's AlloFresh is a xxxx owned by Xxxxxxxx Enterprises
Incorporated", or such other format as Licensor shall from time to time
reasonably direct.
(b) Subject to Section 2 of this Agreement, except for the Marks and as
otherwise required by law, no other name, trademark, inscription or designation
whatsoever shall be affixed to the Product or packaging for the Product or shall
appear in any advertising or promotional material placed or produced by the
Licensee in connection with the Product. Notwithstanding the foregoing,
Licensee's name, trademark, inscription or designation and the name "Workforce
Systems Corp. and ticker symbol WFSC may be affixed to the Product or packaging
of the Product and may appear in any advertising or promotional material placed
or produced by the Licensee in connection with the Product.
9. GOODWILL.
(a) Licensee acknowledges that the Marks are unique and original and
that Licensor is the owner of such Marks. Licensee shall not during the Term of
this Agreement or anytime thereafter dispute or contest directly or indirectly
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Licensor' ownership of the Marks, Licensor's exclusive right to use the Marks,
the validity of any of the registrations pertaining thereto or Licensor's
ownership thereof, nor shall Licensee assist or aid others in doing so.
(b) Licensee renounces any claim to any goodwill which may accrue in
connection with Licensee's use of any of the Marks, such that any and all
goodwill arising from Licensee's use shall inure solely to Licensor's benefit,
and neither during nor after the expiration or termination of this Agreement,
for any reason, except for the xxxx "AlloFresh" as set forth in Section 17 of
this Agreement shall Licensee assert any claim to such goodwill and Licensee
agrees not to take any action that could be detrimental to such goodwill
associated with any of the Marks or with Licensor.
10. REPRESENTATIONS AND WARRANTIES.
(a) Licensor represents and warrants that:
(1) it is a corporation, duly organized, validly existing and in
good standing under the laws of the State of Florida and is qualified to do
business in Florida;
(2) it owns or controls all rights, clearances and/or licenses with
respect to all materials and elements in or used in connection with the
performance of this Agreement and in particular, in and to the Marks required
for the exercise and enjoyment by Licensee of all rights and Licenses granted
pursuant to this Agreement;
(3) it is the exclusive owner of all Proprietary Rights or other
rights to the Marks, has the right to grant the exclusive license granted
herein, has executed no agreement in conflict herewith, and has not granted to
any other person, firm or corporation any right, license or privilege hereunder;
(4) that the Marks are free and clear from all claims, liens,
licenses, and encumbrances whatsoever and further that Licensor has the
exclusive right and authority to grant the rights and licenses set forth herein;
(5) there is no claim, action, litigation, proceeding or
investigation before any court or administrative agency pending or threatened
against or with respect to the Marks which would have an adverse affect on the
Licensee's interest therein as a result of the rights and licenses granted
hereby;
(6) the Marks, in whole or in part, does not infringe upon or
violate the rights of any person or entity, including but not limited to, any
copyrights, trademark rights, trade secrets or any other proprietary rights; and
(7) that it has the right, power and authority to enter into this
Agreement and to fully perform all of its obligations hereunder.
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(b) Licensee represents and warrants that:
(1) it is a corporation, duly organized, validly existing and in
good standing under the laws of the State of Florida and is qualified to do
business in Florida;
(2) that it has the right, power and authority to enter into this
Agreement and to fully perform all of its obligations hereunder;
(3) that the Product consists of the identical material submitted on
April 11, 1996 and May 2, 1996 for analysis by EFEH & Associates, 0000
Xxxxxxxxxx Xxxxx, Xxxxxxxx, Xxxxx 00000, lab number J-7979-1 and J-8147-1 (a
copy of testing results are attached hereto as Schedule 10); and
(4) that the sale of the Product does not infringe upon or violate
the rights of any person or entity, including, but not limited to, any patents,
trade secrets or other proprietary rights.
(5) that the Product is one hundred percent (100%) allophane and
contains no other mineral, vegetable, liquid or chemical properties.
11. PROTECTION OF THE MARKS.
(a) Based upon the representations and warrants of the Licensor,
Licensee admits the validity of and agrees not to challenge the Marks. Licensee
further agrees that any and all rights that may be acquired by the use of the
Marks by Licensee shall inure to the sole benefit of Licensor. Licensee agrees
to execute all papers and provide copies of all promotional, advertising and
packaging materials reasonably requested by Licensor to effect further
registration of and maintenance and renewal of any of the Marks and, where
applicable, to reflect, Licensee as an authorized user of the Marks. Licensee
shall not use the Marks or any part thereof as part of its corporate trade, or
brand name nor use any name or xxxx confusingly similar to any of the Marks.
(b) Licensee further agrees not to register in any country any name or
xxxx resembling or confusingly similar to the Marks. If any application for
registration is, or has been filed in any country by Licensee related to any
name or xxxx which, in the reasonable opinion of Licensor, is confusingly
similar, deceptive or misleading with respect to the Marks, Licensee shall
immediately abandon any such application or registration or, at Licensor's sole
discretion, assign it to Licensor. Licensee shall reimburse Licensor for all the
costs and expenses of any opposition, cancellation or related legal proceedings,
including attorney's fees, instigated by Licensor or its authorized
representative, in connection with any such registration or application.
(c) In connection with the performance of this Agreement, the parties
shall comply with all applicable laws and regulations, and those laws and
regulations particularly pertaining to the proper use and designation of
trademarks or service marks within the Territory or the Expanded Territory.
Should Licensee be or become aware of any applicable laws or regulations which
are inconsistent with the provisions of this Agreement, Licensee shall promptly
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notify Licensor of such inconsistency. Licensor may, at its option, either waive
the performance of such inconsistent provisions or terminate the License and
rights granted hereunder only with respect to the country to which such laws or
regulations apply.
12. PROMOTION AND ADVERTISING/STYLE GUIDELINES.
(a) Licensee agrees that it will use its reasonable best efforts to
promote, distribute and sell the Product within the Territory and the Expanded
Territory. It is further agreed that Licensee will use its best efforts to
fulfill orders for the Product in a timely and reasonable manner and shall
provide professional and responsive customer and consumer support. Should there
be an unforeseen delay in fulfilling customers, orders for the Product, Licensee
will exercise its due diligence in informing those customers of the delay. In
the event of an unforeseen material delay in fulfilling orders to customers,
Licensee also agrees that it will refrain from advertising or promoting the
Product, or soliciting orders from consumers until such problems are cured.
(b) Licensor agrees to provide, at its expense, one graphic presentation
of all approved uses of each of the Marks ("Graphic Presentation") In the event
that Licensee elects to use Licensor's Ft. Lauderdale, Florida studio
("Studio,,) to create promotional and advertising materials, Licensee shall
execute a lease agreement with Licensor in a form to be mutually agreed upon.
(c) All advertisements and promotional materials which Licensee intends
to use to promote the Product shall be of high quality, shall carry the legend
set forth in Section 8 of this Agreement and shall be submitted to Licensor for
its written approval prior to publication by Licensee, which approval shall not
be unreasonably withheld. Licensor shall have five (5) business days from the
time of receipt of any such materials in which to approve or reject such
advertisements and promotional materials. Once such approval is granted, it
shall be deemed granted for all continuing use of such advertising and
promotional materials for substantially the same future use by Licensee, unless
such approval is specifically withdrawn by the Licensor in writing. The style
guidelines specified by Licensor will be followed in advertising, labeling and
promotion.
(d) With the exception of the Graphic Presentation provided by Licensor
pursuant to this Section 12, Licensee shall pay all costs incurred in the
development of all advertisements and promotional materials and for advertising
and promotion (collectively, "Promotional Costs") . The parties acknowledge
that, from time to time, Licensor may incur Promotional Costs at the request of
Licensee. Licensee shall reimburse to Licensor any documented Promotional Costs
incurred by Licensor at the request of Licensee within sixty (60) days of the
accrual of said Promotional Costs. Licensee shall provide Licensor with
Licensee's Federal Express or similar account number for purposes of fulfilling
any such requests by Licensee.
(e) (1) Talent's availability for marketing purposes at trade shows
during each twelve (12) month period following the Effective Date of this
Agreement shall not exceed two days per year, subject to (i) Licensee's
providing six months prior notice for national trade shows; (ii) Licensee's
providing two months prior notice for appearances other than at national trade
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shows; and (iii) Talent's existing schedule. Specifically, Talent shall be
available for two, one and one-half hour appearances on each day on which the
Talent is available ("Appearances").
(2) Licensee shall create, develop and pay for all promotional and
advertising materials to promote and advertise Talent's Appearances pursuant to
this Section. During Talent's Appearance, Talent will actively and favorably
promote the Product.
(3) In the event that Talent is required to travel for purposes of
the Appearances and/or for purposes of promoting the Product on the QVC or any
other television shopping network, Licensee shall pay for all of Talent's first
class travel and first class accommodation expenses. Licensee shall reimburse to
Licensor any reasonable documented costs incurred by Licensor in connection with
the Appearances within sixty (60) days of the accrual of said costs. Talent
shall not receive any additional expenses in connection with such Appearances
except as specifically described in this Agreement.
(f) Talent agrees to consider being available for no more than two days
per year for additional appearances if, in the sole discretion of Licensor, such
additional appearances are deemed to benefit Licensor. If Talent agrees to be
available for such additional appearances, Licensee agrees to pay Licensor two
thousand ($2,000) dollars per diem as well as Talent's first class travel and
accommodation expenses in consideration for the additional appearances.
(g) Licensee acknowledges and agrees that Talent cannot and will not
identify the Product as being that of Licensee in the event Talent elects (in
his sole and absolute discretion) to use
the Product in Licensor's Mr. Food television news insert.
13. REIMBURSEMENT OF LICENSOR' S EXPENSES. Licensee agrees to reimburse
Licensor for all documented expenses incurred by Licensor at the direct request
of Licensee within sixty (60) days of the accrual of expenses. Licensee further
agrees to reimburse Licensor for the cost of any royalties audit deemed
necessary and proper and for which such audit finds a discrepancy of five
percent (S%) or more in favor of the Licensee.
14. COVENANT NOT TO COMPETE.
(a) The parties acknowledge and recognize the highly competitive nature
of their respective businesses and that the goodwill, continued patronage and
specifically the names and address of their respective Clients (as hereinafter
defined) constitute substantial assets having been acquired through considerable
time, money and effort. Accordingly:
(1) During the Restricted Period and within the Restricted Area (as
defined herein) , neither party will directly or indirectly, attempt to induce
or influence any of the other party's(the "Protected Party") Clients to
discontinue or reduce the extent of their relationship with the Protected Party.
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(2) During the Restricted Period and within the Restricted Area,
neither party will(i) directly or indirectly recruit, solicit or otherwise
influence any employee or agent of the Protected Party to discontinue such
employment or agency relationship with the Protected Party, or (ii) employ or
seek to employ, or cause or assist any business which competes directly with the
Business Activities of the Protected Party (the "Competitive Business") or to
employ or seek to employ for any Competitive Business any person who is then
employed by the Protected Party or (iii) serve as an officer, director, partner,
consultant, investor or stockholder (other than as a holder of less than 10-6 of
the outstanding capital stock of a publicly traded corporation) of any
Competitive Business.
(3) During the Restricted Period, neither party will interfere with,
disrupt or attempt to disrupt any of the Protected Party's relationships,
contractual or otherwise, with such Protected Party's Clients, employees,
agents, vendors, suppliers or customers.
(b) For the purposes of this Section 15, the Protected Party's "Clients"
shall be deemed to be any persons, partnerships, corporations, professional
associations or other organization with whom the particular Protected Party is
actively doing business.
(c) For the purposes of this Section 15, the "Restricted Period" shall
be deemed to be during the Term of this Agreement and for a period of one (1)
year from the termination of this Agreement.
(d) For the purposes of this Section 15, the "Restricted Area,, shall be
deemed to mean within the Territory and the Expanded Territory.
15. NON-DISCLOSURE OF CONFIDENTIAL INFORMATION.
(a) It is acknowledged that each of the parties has proprietary
information ("Confidential Information") including without limitation, private
or secret processes, methods and ideas, as they exist from time to time,
customer lists and information concerning the particular party's products,
services, business records and plans, inventions, product design information,
price structure, discounts, costs, computer programs and listings, source code
and/or object code, copyright, trademark, proprietary information, technical
information, development, marketing activities and procedures, method for
operating of a particular party's business, credit and financial data, client
lists (which client lists shall not only mean one or more of the names and
addresses of the clients but it shall also encompass any and all tangible and
intangible information whatsoever regarding them, including their needs, and
marketing and advertising practices and plans and information) and that such
Confidential Information is valuable, special and constitutes unique assets.
Accordingly, each of the parties agrees that all Confidential Information of the
other party, heretofore or in the future obtained by their association, shall be
considered confidential.
(b) Excluded from the Confidential Information, and therefore not
subject to the provisions of this Agreement, shall be any information which:
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(1) At the time of disclosure, is in the public domain as evidenced
by printed publications;
(2) After the disclosure, enters the public domain by way of printed
publication through no fault of the other party or those in privity with it;
(3) Any party can show by written documentation that it was in its
possession at the time of disclosure and which was not acquired directly or
indirectly from the other party; or
(4) A party can show by written documentation was acquired, after
disclosure, from a third party who did not receive it f rom the other party, and
who had the right to disclose the information without any obligation to hold
such information confidential.
(c) Each of the parties agrees that it shall:
(1) Hold in confidence and not disclose or make available to any
third party any such Confidential Information unless so authorized in writing by
the other party;
(2) Exercise the same care with respect to the other party's Confi-
dential Information as it does for its own
(3) Not use, directly or indirectly, the other's Confidential
Information in any respect of its business, except as necessary to evaluate the
information;
(4) Restrict the disclosure or availability of the Confidential
Information to those of other's agents who have agreed to adhere to the
confidentiality provisions of this Agreement;
(5) Not copy or modify any Confidential Information without prior
written consent of the other party; and
(6) Take such other protective measures as may be reasonably
necessary to preserve the confidentiality of the Confidential Information.
(d) Upon written request of a party, the other shall return all of such
party's written materials containing the Confidential Information.
(e) Each of the parties acknowledges and agrees that remedies at law for
a breach or threatened breach of any of the Confidential Information provisions
of Section 15 or 16 herein would be inadequate and that any such breach shall be
per se deemed as causing irreparable harm to the other party. In recognition of
this fact, the parties agree that, in addition to any remedy at law available,
including, but not limited to monetary damages, the party harmed, shall be
entitled to obtain equitable relief in the form of specific performance,
temporary restraining order, temporary or permanent injunction or any other
equitable relief which may then be available under applicable law.
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16. TERMINATION.
(a) Without prejudice and in addition to any other rights, Licensor
shall have the right to terminate this Agreement upon written notice to Licensee
pursuant to this Agreement, at any time upon the occurrence of the following:
(1) If Licensee shall not have begun the distribution and sale of
the Product within sixty (60) days of the Effective Date of this Agreement.
(2) If Licensee shall be unable to fulfill valid purchase orders for
the Product throughout the Territory and Expanded Territory for any reason
within Licensee's control for a period of at least ninety consecutive (90) days,
excluding any such delays resulting from ship collision, weather, government
interference of other similar occurrences outside of Licensee's control.
(3) If Licensee shall fail to make any payment due hereunder or to
deliver any statement required to be delivered by Licensee pursuant to the terms
of this Agreement, and if such default shall continue for a period of ten
business (10) days after written notice from Licensor to Licensee.
(4) If Licensee shall be unable to pay its debts when due, or shall
take any action to compromise its debts, or shall make any assignment for the
benefit of creditors, or file a voluntary petition in bankruptcy or
reorganization, or have an involuntary bankruptcy petition filed against it, or
be adjudicated as bankrupt or insolvent, or if any receiver is appointed for its
business or property, or if any trustee in bankruptcy or insolvency shall be
appointed under the laws of the United States government or of the several
states.
(5) Licensee (or the bulk of its operating assets) is sold,
acquired, dissolved or merged or ownership of more than fifty percent (50%) of
its stock is acquired by individuals or entities which are not stockholders on
the Effective Date, unless the surviving business or surviving entity, as the
case may be, acknowledges in writing to Licensor that it will comply with and be
bound by all of the provision of this Agreement.
(6) Licensee's using any name, trademark, service xxxx, or other
designation Xxxx contrary to the provisions hereof;
(7) Licensee's offering for sale products bearing the Marks which
products fail to meet the quality standards required by this Agreement;
(8) Licensee's use of the Marks on or in connection with any
products or marketing material or services other than the Product; and
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(9) Except as set forth in Section 28 of this Agreement assignment
of this Agreement without the prior written approval of Licensor;
(10) If at any time this Agreement is in effect, Licensee conducts
its business or operations in a manner resulting in public scandal or which may
reasonably result in charges or fraud by third-parties against Licensee or
should Licensee do anything to disparage Licensor or its business.
(11) Licensee' s breach of any material provision of this Agreement,
each of which is considered to be of the essence of this Agreement.
(b) Without prejudice and in addition to any other rights, Licensee
shall have the right to terminate this Agreement upon written notice to Licensor
pursuant to this Agreement, at any time upon the occurrence of the following:
(1) If Licensor shall be unable to pay its debts when due, or shall
take any action to compromise its debts, or shall make any assignment for the
benefit of creditors, or file a voluntary petition in bankruptcy or
reorganization, or have an involuntary bankruptcy petition filed against it, or
be adjudicated as bankrupt or insolvent, or if any receiver is appointed for its
business or property, or if any trustee in bankruptcy or insolvency shall be
appointed under the laws of the United States government or of the several
states;
(2) Licensor (or the bulk of its operating assets) is sold,
acquired, dissolved, consolidated or merged or ownership of more than fifty
percent (50%) of its stock is acquired by individuals or entities which are not
stockholders on the Effective Date, unless the surviving business or surviving
entity, as the case may be, acknowledges in writing that it will comply with and
be bound by all of the provisions of this Agreement and;
(3) Except as set forth in Section 28, the sale, transfer, or
assignment of any rights, title or interest in and to the Marks to any third
party without the prior written approval of the Licensee;
(4) Except as set forth in Section 28 of this Agreement, any
assignment of this Agreement without the prior written approval of Licensee;
(5) If at any time this Agreement is in effect, Talent conducts
himself in any manner offensive to reasonable standards of decency or morality
or resulting in public scandal, including, without limitation, an arrest or
conviction of a misdemeanor or a felony, or should Talent do anything to
disparage Licensee or its business;
(6) The Talent is no longer affiliated with the Licensor; or
(7) Licensor's breach of any material provision of this Agreement,
each of which is considered to be the essence of this Agreement.
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(c) The license and rights granted under this Agreement shall terminate
thirty (30) days after mailing of such written notice unless such breach is
cured within such time period. Immediately upon the expiration or termination of
the License subject to Section 18 of this Agreement, Licensee shall have no
further obligations to pay any Royalties to the Licensor (other than those that
have occurred through the date of termination) and except as specifically set
forth herein, Licensee shall have no further rights to use the Marks.
(d) Notwithstanding the foregoing, if either (1) Licensee admits its
inability to fulfill its material obligations hereunder or if such inability is
self-evident or (2) the Licensor admits its inability to fulfill its material
obligations hereunder or if such inability is self -evident, the party that has
the ability to continue to fulfill its material obligations under this Agreement
shall have the right to immediately terminate this Agreement, and no party shall
have any further obligations to any other party after such date of termination
except as specifically set forth herein.
(e) The termination remedy is in addition to any other remedy available
to a party in law or at equity.
17. ASSIGNMENT OF "ALLOFRESH". The parties agree that during the Term of
this Agreement all goodwill arising from Licensee I s use of the xxxx "Mr. Food'
s AlloFresh" shall inure solely to Licensor' s benefit. Accordingly, Licensee
renounces any claim to any goodwill which may accrue in connection with
Licensee's use of "Mr. Food's AlloFresh". Upon termination of this Agreement for
whatever reason, Licensor shall irrevocably assign its common law rights to the
xxxx "AlloFresh" to Licensee. Upon such assignment, neither Licensee nor
Licensor shall use "AlloFresh" in connection with the Mr. Food xxxx. Any
goodwill which may arise from Licensee's use of "AlloFresh" subsequent to the
termination of this Agreement and Licensor' s irrevocable assignment of
"AlloFresh" to Licensee, shall inure solely to Licensee's benefit.
18. SALES AFTER TERMINATION OR EXPIRATION. In the event of the expir-
ation, cancellation or termination of this Agreement, Licensee shall be entitled
to fulfill its existing orders for the Product incorporating the Marks and to
sell its stock-on-hand of such Product in accordance with the provisions of this
Agreement, subject to payment to the Licensor by Licensee of the Royalties in
accordance with the provisions of this Agreement. Licensee shall not, however,
without the prior written consent of Licensor, which such consent shall not be
unreasonably withheld, sell any remaining Product as distress merchandise or
otherwise than in the ordinary course of business. For the purposes of this
Agreement, a distress sale shall be defined as one in which the Product are sold
for less than seventy-five (75%) of Licensee's standard wholesale selling price.
19. LICENSOR'S PURCHASE RIGHTS. Licensor shall have the right to bu
from time to time, the Product directly from Licensee at a mutually agreed
price, net of any Royalties otherwise payable on sales pursuant to this
Agreement, subject to availability of the Product. Notwithstanding the
foregoing, the Licensor shall not resell the Product provided to it pursuant to
this Section without Licensee's prior consent.
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20. INSURANCE.
(a) Licensee shall maintain at its own expense in full force and effect
at all times during which the Product bearing the Marks is being sold, with a
responsible insurance carrier reasonably acceptable to Licensor, not less than
three million ($3,000,000) dollars general liability insurance including, but
not limited to, operations, products liability insurance and advertising
liability insurance. This insurance shall be for the benefit of Licensor, and
Licensor's officers, agents and employees, and shall provide the same with full
defense and indemnity against any claims, demands, causes of action or damages,
including reasonable attorneys' fees, arising out of the manufacture, sale,
distribution, use or consumption of the Product or any defects in the Product
during the Term or any renewal thereof. Licensor shall be named as an additional
insured. The insurance shall not be substantially modified unless the insurer
provides Licensor and Licensee with written notice at least thirty (30) days
prior to said cancellation or substantial modification, and the insurance shall
contain a provision expressly so stating. This insurance may be obtained for
Licensor by Licensee in conjunction with a policy which covers products other
than the Product bearing the Marks.
(b) It shall be a condition precedent to Licensor's execution of this
Agreement that Licensee furnish to Licensor a true and complete copy of each and
every policy of insurance referred to in this Section 20 naming Licensor as an
additional insured.
(c) 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 this Section 20 including, but not limited to, originals or copies
of policies, certificates of insurance (with applicable riders and endorsements)
and proof of premium payments.
21. RIGHTS RESERVED BY LICENSOR. Any and all rights in and to the Marks
which are not expressly granted to Licensee are hereby reserved by Licensor. Any
one or more of such reserved rights may be exercised or enjoyed by Licensor,
directly or indirectly, at any and all times.
22. EXPORT CONTROL. With respect to the Territory and the Expanded Terr-
itory Licensee agrees that it will not distribute, sell or promote the Product
bearing any of the Marks except in compliance with applicable United States
export regulations.
23. INDEMNIFICATION.
(a) The Licensor hereby agrees to indemnify and defend the Licensee, its
officers, agents, representatives and employees and to hold them harmless from
and against any and all claims, actions, liability, loss, damages, demands,
causes-of-action, costs, expenses or damages, including reasonable attorneys'
fees, in connection with the breach of any of the representations, warranties or
provisions of this Agreement by the Licensor or the Talent and specifically
16
including, without limitation, any trademark, trade secret, or copyright
infringement arising out of the use of the Marks on the Product, as authorized
by this Agreement, provided that the Licensee is given prompt notice of and
shall have the option to undertake and conduct the defense of any such claim,
demand or cause of action.
(b) The Licensee hereby agrees to indemnify and defend the Licensor, its
officers, agents, representatives and employees and to hold them harmless from
and against any and all claims, actions, liability, loss, damages, demands,
causes-of -action costs, expenses or damages, including reasonable attorneys'
fees, arising out of the distribution, sale, use or consumption of the Product,
whether brought by a third party or otherwise, provided that the Licensor is
given prompt notice of and shall have the option to undertake and conduct the
defense of any such claim, demand or cause of action.
24. SUITS FOR THIRD-PARTY INFRINGEMENTS. In the event that Licensee
learns of any infringement or threatened infringement of any of the Marks or any
passing of f or that any third party alleges or claims that any of the Marks is
liable to cause deception or confusion to the public, or is liable to dilute or
infringe any of Licensor, s rights therein, Licensee shall forthwith notify
Licensor or its authorized representatives giving particulars thereof and
Licensee shall provide necessary information and assistance to Licensor and/or
its authorized representatives in the event that Licensor decides that
proceedings should be commenced or defended. Any such proceedings shall be at
the expense of the Licensor and Licensor shall be entitled to any recoveries.
Licensor shall only be required to enforce the Marks against others to the
extent that such infringement affects the Licensee.
25. CLAIMS AGAINST THE LICENSEE. If a claim resented against the
Licensee alleging that such any Xxxx is an infringement of the rights of third
parties, Licensor, on behalf of the Licensee, shall jointly negotiate,
compromise, or settle such claim, or defend the institution of any action
thereunder. All expenses of defense in such action, including compromise or
settlement of the claim or action, shall be borne by the Licensor.
26. NO PARTNERSHIP OR JOINT VENTURE. This Agreement does not constitute
and shall not be construed as constituting a partnership or joint venture
between Licensor and Licensee. Neither party shall have the right to obligate or
bind the other in any manner whatsoever and nothing herein contained shall give
or is intended to give any rights of any kind to any third party.
27. REMEDIES. All specific remedies provided for in this Agreement shall
be cumulative and shall not be exclusive of one another or any other remedies
available in law or equity. The failure of a party to insist upon the strict
performance of any of the covenants or terms hereof to be performed by the other
party shall not be construed as a waiver of such covenants or terms. if any
portion of this Agreement shall be ruled as invalid or unenforceable, the
remainder of the Agreement shall survive and be enforced as if such invalid
portion was not originally a part hereof.
28. NO ASSIGNMENT OR SUBLICENSE. This Agreement is binding upon and
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shall inure to the benefit of the parties and their respective representative
and permitted successors. Except as specifically provided in this Agreement,
this Agreement or any portion thereof is not assignable by any action or by
operation of law without the express prior written approval of the non-assigning
party and any attempt at such assignment shall be null and void; provided,
however, that Licensor shall be permitted to assign this Agreement to a
corporation of which Licensor is the sole shareholder. In the event of such
assignment, Licensor shall provide Licensee with prior written notice thereof as
well as a copy of such assignment in which the assignee specifically agrees to
be bound to all terms and conditions of this Agreement. Licensee shall have no
right to grant any sub- licenses with respect to the provisions of this
Agreement, without the express written approval of the Licensor.
29. WAIVER AND MODIFICATION. No waiver or modification of any of the terms
of this Agreement shall be valid unless in writing and signed by the parties. No
waiver by one party of a breach hereof or a default hereunder shall be deemed a
waiver by any party of a subsequent breach or default of like or similar nature.
No delay by one party in exercising its rights hereunder shall be deemed a
waiver of such rights.
30. NOTICES. Whenever notice is required to be given under this Agreement,
it shall be deemed to be good and sufficient notice if in writing, signed by an
officer or an authorized agent of the party serving such notice and sent by
registered or certified mail, postage prepaid, return receipt requested, to the
other party at the address stated above, unless notification of a change of
address has been given in writing pursuant to this Section 30. Notice shall be
deemed given five (5) business days after mailing.
31. CONSTRUCTION. The parties affirm that this Agreement has been entered
into in the state of Florida and will be governed by and construed in accordance
with the laws of the State of Florida, notwithstanding any state's conflict of
laws or choice of law rules to the contrary. The parties expressly agree that
any dispute concerning solely the payment of Royalties arising under this
Agreement shall be determined by binding arbitration in Ft. Lauderdale, Florida,
in accordance with the commercial arbitration rules of the American Arbitration
Association then in effect and any judgment, decision or award made pursuant
thereto shall be entered in any court of competent jurisdiction with the full
effect as if such determination had been made by such court; provided however,
that the parties may also apply to a court of competent jurisdiction for
injunctive relief if appropriate. The loser in any such contest shall pay all
attorneys, fees and disbursements and court costs.
32. VENUE. The parties to this Agreement acknowledge and agree that the
U.S. District for the Southern District of Florida, or if such court lacks
jurisdiction, the 17th Judicial Circuit (or its successors) in and for Broward
County, Florida, shall be the venue and exclusive proper forum in which to
adjudicate any case or controversy arising either, directly or indirectly, under
or in connection with this Agreement for any and all matters except those
related solely to the payment of Royalties by Licensor to Licensee as provided
hereunder and the parties further agree that, in the event of litigation arising
out of or in connection with this Agreement in these courts, they will not
contest or challenge the jurisdiction or venue of these courts.
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33. ENTIRE AGREEMENT. This Agreement contains the entire understanding of
the parties with respect to the subject matter hereof and supersedes and
replaces any prior agreements, if any, between the parties. There are no
representations, warranties, promises, covenants or understandings other than
those contained herein.
34. HEADINGS. Any paragraph or section headings used in this Agreement are
for reference purposes only, are not a substantive part of this Agreement and
are not to be considered in its interpretation or construction.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the
date first above written.
XXXXXXXX ENTERPRISES INCORPORATED
By: /s/ Xxxxxx Xxxxxxxx, Secretary
PRODUCTS THAT PRODUCE, INC.
By: /s/ Xxxx Xxxxxxxx, Chairman
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