EXIBIT 10.38
LIMITED LICENSE
This Limited License ("License") is made and effective as of December 8,
2000 by and between ELENA'S FOOD SPECIALTIES, INC., a California corporation
("Licensor") and MONTEREY PASTA COMPANY, a Delaware corporation ("Licensee").
RECITALS:
A. Licensor owns Federal Registration Number 2300122 for and uses the
trademark "Nate's" (the "Licensed ▇▇▇▇") in connection with the manufacture and
sale of certain food products.
B. In implementation of that certain Asset Purchase Agreement to which
Licensor and Licensee are parties, dated December 8, 2000, Licensee wishes to
use, and Licensor wishes to permit Licensee to use, the Licensed ▇▇▇▇ upon and
subject to the terms and conditions of this License.
NOW THEREFORE, in consideration of the foregoing and the mutual promises
and covenants set forth below, Licensor and Licensee agree as follows:
LICENSE:
1. OWNERSHIP OF LICENSED ▇▇▇▇. Licensee agrees that Licensor is and shall be
the exclusive owner of the Licensed ▇▇▇▇ and all good will associated therewith,
and that this License does not grant to Licensee and Licensee shall not assert
any interest or property rights in the Licensed ▇▇▇▇, except the right to use
the same expressly set forth herein.
2. GRANT OF LICENSE.
(a) Licensor hereby grants to Licensee, and Licensee hereby accepts,
an exclusive license subject to the terms and conditions of this License to use
the Licensed ▇▇▇▇ only upon and in connection with the preparation, processing,
manufacture, sale, advertising, packaging and distribution of polenta and
polenta line extensions (the "Licensed Products"). In no event will Licensee be
required to use the Licensed ▇▇▇▇ on any or all Licensed Products. The use of
the Licensed ▇▇▇▇ permitted to Licensee hereby is subject also to that certain
Co-Pack Agreement between Licensor and Licensee dated the same date as this
License. Compensation to the Licensor for this License shall be as provided in
the Asset Purchase Agreement.
(b) Licensee shall have the right to arrange with another person,
firm or corporation: (i) to process and/or package the Licensed Products to be
sold under this License by Licensee; and (ii) to serve as a distributor for
Licensed Products to be sold under this License which have been processed and/or
packaged by or for Licensee and sold to such distributor. Any and all such
arrangements with third parties shall contain provisions suitable to protect
Licensor's rights in the Licensed ▇▇▇▇.
3. THIRD PARTY INFRINGEMENTS. In the event that Licensor or Licensee become
aware of any infringement by a third party of the Licensed ▇▇▇▇, that party
shall inform the other in writing of all available evidence and details
available concerning said infringement. The parties shall then consult as to the
best manner in which to proceed. If both parties desire to litigate such
infringement they shall share the control, cost and any recovery thereof
equally. In the event that Licensee desires to litigate such infringement and
Licensor refuses or fails to do so (or refuses or fails to bear its share of the
cost thereof), Licensee may, in its sole discretion, and at its sole cost and
expense, bring and control suit to restrain such infringement. In that event,
Licensee shall be entitled to receive and retain, for its sole use and benefit,
any recovery awarded in such suit. Licensor shall, if requested by Licensee,
join as a party, at Licensee's expense, in such infringement action brought by
Licensee. In the event that Licensor desires to litigate such infringement and
Licensee refuses or fails to do so (or refuses or fails to bear its share of the
cost thereof), Licensor may in its sole discretion, and at its sole cost and
expense, bring and control suit to restrain such infringement. In that event,
Licensor shall be entitled to receive and retain, for its sole use and benefit,
any recovery awarded in such suit. Licensee shall, if requested by Licensor,
join as a party, at Licensor's expense, in such infringement action brought by
Licensor.
4. WARRANTIES AND INDEMNITIES.
(a) Licensee agrees that Licensor shall have no responsibility for
the sale, advertising, distribution or sale of the Licensed Products and agrees
to defend, indemnify and hold harmless Licensor for any claims, liabilities,
losses, actions, proceedings, judgements, penalties, demands, damages, and
expenses (including without limitation, costs and attorney's fees whether or not
litigation is instituted) (collectively, the "Claims") arising out of or related
to the sale, advertising, distribution or sale of the Licensed Products, but
excluding any such Claims made by third parties asserting rights in the Licensed
▇▇▇▇.
(b) Licensee represents and warrants that the entering into and
carrying out of the terms of this License will not violate or constitute a
breach of any License binding on Licensee.
(c) Licensor represents and warrants:
(i) That Licensor has not previously assigned, pledged or
otherwise encumbered any rights granted to Licensee under this License, and such
rights are and shall remain free of any lien, claim or charge of any kind during
the term of this License;
(ii) That Licensor owns all right, title and interest in the
Federal Registration Number 2300122, and that Licensor shall take any and all
steps necessary to ensure that such registration remains in effect during the
term of this License;
(iii) That the uses by Licensee of the Licensed ▇▇▇▇ in
connection with this License will not infringe on the rights of any third party;
and
(iv) That the entering into and carrying out of the terms of
this License will not violate or constitute a breach of any License binding
on Licensor.
(d) Licensee agrees to indemnify, defend and hold Licensor, its
agents, directors, officers and employees harmless from and against any Claims
made against Licensor and arising out of or related to, any claim or suit by a
third party which is based upon breach of any of the representations or
warranties made by Licensee under Section 4(b) hereof.
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(e) Licensor agrees to indemnify, defend and hold Licensee, its
agents, directors, officers and employees harmless from and against any Claims
made against Licensee and arising out of or related to, any claim or suit by a
third party which is based upon breach of any of the representations or
warranties made by Licensor under Section 4(c) hereof.
(f) The obligations of each of the indemnifying parties
("Indemnifying Party") under this Section 4 shall arise provided that each
person the Indemnifying Party has agreed to indemnify ("Indemnified Person")
gives the Indemnifying Party prompt written notice of any Claims and the
Indemnifying Party has control of the defense, litigation and, subject to the
conditions set forth below, settlement of any Claim. Each Indemnified Person
will have the right (subject to the conditions set forth below), but not the
obligation, to select counsel of its own choice, at its expense, to participate
in the defense. In no event shall the Indemnifying Party enter into any
settlement agreement with respect to any Claims without the prior written
approval of the Indemnified Person, which consent shall not be unreasonably
withheld. If such person withholds its consent to any settlement offer, such
person shall thereafter be obligated to participate in the defense. The
foregoing states the Indemnifying Party's entire obligation with respect to any
Claim.
(g) THE FOREGOING WARRANTIES ARE IN LIEU OF ALL OTHER WARRANTIES,
EXPRESS OR IMPLIED, INCLUDING, BUT NOT LIMITED TO, IMPLIED WARRANTIES OF
MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE.
5. TERM AND TERMINATION.
(a) Subject to Section 5(b) hereof, the initial term of this License
shall commence upon the effective date hereof and continue for two years.
Thereafter, and subject to termination under Section 5(b) hereof, this License
shall automatically renew for one additional term of one year.
(b) This License may be terminated as follows:
(i) By mutual agreement by the parties at any time.
(ii) By either party upon forty-five (45) days prior written
notice for material breach of a material term or condition of this License by
the other party unless (1) the breaching party has cured the breach within the
forty-five (45) days notice period, or (2) the breach is not curable within that
forty-five (45) day period in a commercially practical manner, and the breaching
party has taken steps reasonably calculated to effect such a cure to prevent
recurrence. Any notice under this paragraph shall specify the breach upon which
it is based.
(iii) By Licensee, with or without cause, upon thirty (30) days
prior written notice.
(c) Subject to Section 5(e) hereof, upon any termination of this
License each party shall have no further obligations to the other.
(d) Any termination hereunder shall be in addition to any other
remedy either party may have at law or in equity which is not expressly waived
or limited by such party.
(e) This Section 5 and Section 4 shall survive termination of this
License.
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6. GENERAL PROVISIONS
(a) NOTIFICATION. All notices required or permitted under this
License shall be in writing and shall be given either by personal service,
overnight courier, registered mail or certified mail, return receipt requested,
or confirmed facsimile transmission (a facsimile transmission for which
confirmation of receipt has been received) sent during normal business hours of
the receiving party, with a confirming copy sent to the addressee by express
courier within two days of the facsimile transmission, at the respective
addresses set forth below or such other address as a party may designate by
notice to the other. Mailed notices shall be deemed received five (5) days from
the date of mailing.
To Licensor: Elena's Food Specialties, Inc.
▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇ ▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attn: ▇▇▇▇▇ ▇▇▇▇▇▇▇▇
TELEPHONE:(▇▇▇) ▇▇▇-▇▇▇▇
FAX:(▇▇▇) ▇▇▇-▇▇▇▇
Copy to: ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇, Esq.
Law Offices of ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇▇
▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
TELEPHONE:(415) 362-1717 ext. 214 or
(▇▇▇) ▇▇▇-▇▇▇▇
FAX:(▇▇▇) ▇▇▇-▇▇▇▇ or (▇▇▇) ▇▇▇-▇▇▇▇
To Licensee: Monterey Pasta Company
▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇.
▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
TELEPHONE:(▇▇▇) ▇▇▇-▇▇▇▇ ▇▇▇▇
FAX:(▇▇▇) ▇▇▇-▇▇▇▇
Copy to: ▇▇▇▇ ▇. ▇▇▇▇, Esq.
▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ & ▇▇▇▇▇▇, LLP
▇▇▇▇ ▇▇. ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇., ▇▇▇▇▇ ▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇
TELEPHONE:(▇▇▇) ▇▇▇-▇▇▇▇ ▇▇▇▇
FAX:(▇▇▇) ▇▇▇-▇▇▇▇
(b) ASSIGNMENT. Neither party shall assign or transfer any rights or
obligations under this License without the prior written consent of the other
party, except in connection with any merger, sale or other transaction in which
the business of the assigning party is transferred as a whole. Subject to the
foregoing, this License shall inure to the benefit of and shall be binding upon
the parties and their successors and assigns.
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(c) NO AGENCY. No party has the authority to make any statement,
representation, warranty or other commitment on behalf of the other, and this
License does not create any agency, employment, partnership, joint venture or
similar relationship between the parties.
(d) NON-WAIVER. The failure of a party to require performance by the
other party of any provision of this License shall not affect the full right to
require such performance at any subsequent time; nor shall the waiver by a party
of a breach of any provision of this License be taken or held to be a waiver of
the provision itself.
(e) SEVERABILITY. If any provision of this License is held invalid or
unenforceable for any reason, such invalidity shall not affect the validity of
the remaining provisions of this License.
(f) CONTROLLING LAW. This License shall be governed by the laws of
the State of California.
(g) FORCE-MAJEURE. Neither party shall be liable for any delay or
failure to meet its obligations pursuant to this License due to circumstances
beyond its reasonable control, including, but not limited to war, riots,
insurrection, civil commotion, labor strikes, lockouts, shortages, government
action (including export restrictions), factory or other labor conditions, fire,
flood or storm.
(h) ENTIRE AGREEMENT. This License, the Asset Purchase Agreement, the
Co-Pack Agreement and that certain Approved Supplier Insurance and
Indemnification Warranty and Agreement (the "Indemnification Agreement") contain
the entire understanding of the parties with respect to the matters contained
herein and therein and supersede all prior or contemporaneous proposals, oral or
written, understandings, representations, conditions and all other
communications between the parties relating to the subject matter hereof and
thereof. This License may not be modified except by a writing signed by
authorized representatives of both parties. There are no promises, covenants or
undertakings other than those expressly set forth in this License, the Asset
Purchase Agreement, the Co-Pack Agreement and the Indemnification Agreement.
IN WITNESS WHEREOF, the parties have executed this License as of the date
first written above.
ELENA'S FOOD SPECIALTIES, INC. ("LICENSOR)
By: /s/ ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
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▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
Its: PRESIDENT
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MONTEREY PASTA COMPANY ("LICENSEE")
By: /s/ R. ▇▇▇▇▇ ▇▇▇▇▇▇
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R. ▇▇▇▇▇ ▇▇▇▇▇▇
Its: PRESIDENT
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