WHOLESALE LICENSE AGREEMENT
by and between
ARBY'S, INC. d/b/a TRIARC RESTAURANT GROUP
Licensor
and
PARAMARK ENTERPRISES, INC.
Licensee
Dated as of __________, 1998
WHOLESALE LICENSE AGREEMENT
TABLE OF CONTENTS
PAGE
RECITALS OF FACT - 1 -
1. GRANT - 1 -
2. TERM - 2 -
3. WHOLESALE DISTRIBUTION - 2 -
4. ROYALTIES - 4 -
5. PREPARATION OF APPROVED TJC WHOLESALE PRODUCTS - 5 -
6. PROPRIETARY MARKS - 6 -
7. PROPRIETARY INFORMATION - 7 -
8. EXPIRATION; TERMINATION; POST-EXPIRATION ASSISTANCE - 8 -
9. ADVERTISING AND PROMOTION - 8 -
10. TECHNICAL ASSISTANCE - 9 -
11. CONFIDENTIALITY, NON-DISCLOSURE, AND NON-COMPETE - 9 -
12. ▇▇▇▇▇▇▇▇▇▇▇▇▇▇▇ - ▇▇ -
▇▇. ▇▇▇▇▇▇▇▇▇ - ▇▇ -
▇▇. ASSIGNMENT OF INTERESTS - 12 -
15. MISCELLANEOUS - 12 -
EXHIBIT A - INTELLECTUAL PROPERTY
EXHIBIT B - WHOLESALE CONTRACTS
EXHIBIT C - APPROVED TJC WHOLESALE PRODUCTS
EXHIBIT D - STANDARDS AND SPECIFICATIONS
EXHIBIT E - APPROVED ADVERTISING
EXHIBIT F - OFFICERS, DIRECTORS AND EXECUTIVES OF TJC
EXHIBIT G - INSURANCE REQUIREMENTS
WHOLESALE LICENSE AGREEMENT
This Wholesale License Agreement ("Agreement") is made this day of ,
1998, by and between Arby's, Inc., d/b/a Triarc Restaurant Group, a Delaware
corporation ("Licensor"), and Paramark Enterprises, Inc., a Delaware corporation
("Licensee").
RECITALS OF FACT
A. Licensor's affiliate, TJ Holding Company, Inc., is the owner of (i)
certain secret recipes and secret formulae (the "Secret Recipes") for baking
gourmet cinnamon rolls and other bakery products; (ii) secret and proprietary
plans ("Technical Information") relating to the preparation, baking, and
merchandising of the gourmet cinnamon rolls utilizing the Secret Recipes (the
Secret Recipes and Technical Information are referred to herein as the
"Proprietary Information"); and, (iii) certain trade names, trademarks, service
marks, logos, signs, and emblems, including, without limitation the ▇▇▇▇ "▇.▇.
CINNAMONS," relating to the products prepared using the Proprietary Information,
and other goods and services offered at retail stores, bakeries, and other
locations, that offer the products made utilizing the Proprietary Information
(the "Proprietary Marks"). The Proprietary Information and Proprietary Marks are
collectively referred to as "Intellectual Property" (and are more particularly
identified in Exhibit A hereto). All bakery products made with the Proprietary
Information are referred to as "TJC Products."
B. Licensor, pursuant to a license agreement with TJ Holding Company,
Inc., dated August 29, 1996, has the right to use, and license others to use,
the Intellectual Property.
C. Licensee has, pursuant to the License Agreement with Licensor dated
August 29, 1996, entered into agreements with independent food brokers
("Brokers") whereby the Brokers will arrange for the sale by Licensee of
Approved TJC Wholesale Products (defined below in Section 3.3) to certain retail
accounts (referred to as "Supermarket Chains").
D. Licensor and Licensee have agreed to terminate the August 29, 1996
License Agreement, but Licensor has agreed to permit Licensee to continue to
prepare, sell, and distribute Approved TJC Wholesale Products at wholesale
through Brokers on the terms and conditions set forth in this Agreement.
With reference to the above-stated Recitals of Fact, and in
consideration of the mutual covenants and conditions contained in this
Agreement, the parties hereby agree as follows:
1. GRANT
1.1 Until the termination or expiration of this Agreement, Licensee
shall have the right to use the Intellectual Property solely to prepare and sell
Approved TJC Wholesale Products through Brokers to Supermarket Chains.
1.2 The rights granted to Licensee are limited to the specific purposes
described in this Agreement. Licensee shall not manufacture, sell, or distribute
any product, other than the Approved TJC Wholesale Products, using the
Intellectual Property. Licensee has no right to license, sublicense, or
franchise others to use any of the Intellectual Property.
1.3 Except as set forth in Section 3.6, Licensor retains the right to
produce TJC Products or other products using the Proprietary Information, for
sale through any channels of distribution; and Licensor may produce, offer, or
sell, and authorize others to produce, offer, or sell, any such products under
the Proprietary Marks or any other ▇▇▇▇ or name.
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2. TERM
2.1 The term of this Agreement shall begin on the date first written
above, and, unless sooner terminated or renewed in accordance with the terms
herein, shall expire on December 31, 1998.
2.2 Licensee has no rights to, nor expects to, extend or renew this
Agreement. This Agreement may be renewed, at Licensor's sole discretion, for one
or more thirty (30) day periods, not to exceed a total of one hundred eighty
(180) days upon thirty (30) days prior written notice to Licensee. Licensee
shall have no rights under this Agreement after December 31, 1998, unless this
Agreement is renewed by Licensor.
3. WHOLESALE DISTRIBUTION
3.1 The agreements between Licensee and Brokers for the sale and
distribution of the Approved TJC Wholesale Products ("Wholesale Contracts"), the
description of the Wholesale Contracts, the identity of the Supermarket Chains
to which the Approved TJC Wholesale Products are sold, and the nature, type, and
amount of Approved TJC Wholesale Products sold under each Wholesale Contract,
are set forth in Exhibit B. To the extent that the Wholesale Contracts are in
writing, a copy of the current contract is attached to Exhibit B. The list of
Approved TJC Wholesale Products approved for sale by Licensee is set forth in
Exhibit C. Licensee represents and warrants that as of the date hereof, Licensee
does not manufacture, sell, or distribute, at retail or wholesale, any bakery
products that use any of the Proprietary Information to any person, broker,
wholesale account, retail store, or otherwise, except for sales of Approved TJC
Wholesale Products identified on Exhibit C made pursuant to the Wholesale
Contracts described in and/or attached to Exhibit B.
3.2 During the term of this Agreement, Licensee may prepare and sell,
for resale to retail customers, the Approved TJC Wholesale Products as specified
by Licensor, only to the Supermarket Chains identified in Exhibit B, and only in
accordance with the terms and conditions of this Section 3.
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3.3 Licensee shall sell only the Approved TJC Wholesale Products set
forth in Exhibit C. Approved TJC Wholesale Products are those pre-packaged, not
fresh-baked, TJC Products that Licensor has designated for sale through
wholesale distribution by Licensee. Licensee shall not request that other TJC
Products be approved by Licensor as Approved TJC Wholesale Products. Licensor
may modify the list of Approved TJC Wholesale Products in its reasonable
discretion, upon one hundred twenty (120) days prior written notice to Licensee.
Licensor shall not eliminate or disapprove a previously approved Approved TJC
Wholesale Product if such product represents a "significant percentage" of
Licensee's wholesale business. The parties hereto agree that "significant
percentage" shall mean that twenty percent (20%) or more of the gross revenues
received by Licensee in the twelve-month period prior to Licensor's notice of a
change is derived from the sale of such product.
3.4 Licensee shall not request that other retail accounts, Supermarket
Chains, or Brokers be included on the approved list in Exhibit B. Licensor has
no obligation to consider or approve any Supermarket Chain or Broker not
currently identified on Exhibit B. Licensor may, however, in its reasonable
discretion, disapprove of a previously approved Supermarket Chain, or may
require that Licensee or Broker cease supplying a Supermarket Chain.
3.5 Licensor shall have the right to review and approve all agreements
between Licensee and Brokers, and all agreements with manufacturers, suppliers,
co-packers, and others concerning the Approved TJC Wholesale Products. Licensee
shall comply with Licensor's procedures concerning approval of agreements with
third parties.
3.6 During the term of this Agreement, Licensor shall not sell any
Approved TJC Wholesale Products at wholesale to any Supermarket Chain approved
in Exhibit B; provided, however, that Licensor or any affiliate or licensee of
Licensor (i) may sell TJC Products at, from, to, or through any retail location,
store, restaurant, person, or entity, and (ii) may sell TJC Products (other than
Approved TJC Wholesale Products) at wholesale to any retail account or
Supermarket Chain, including Supermarket Chains that purchase Approved TJC
Wholesale Products from Licensee through Brokers. In addition to Licensor's
rights to sell TJC Products at wholesale or retail, Licensor shall have the
right to operate or license others to operate, kiosks, carts, limited service
counters, and similar areas or facilities (collectively "Kiosks") at any
Supermarket Chain, provided that such Kiosks shall not sell Approved TJC
Wholesale Products.
3.7 Licensee shall comply with Licensor's standards and specifications
for the manufacture, packaging, distribution, and sale of Approved TJC Wholesale
Products; the advertising and promotion of Approved TJC Wholesale Products; and
Licensor's guidelines regarding the Supermarket Chains that may purchase,
receive, and resell Approved TJC Wholesale Products. Without limiting the
requirements of Section 5 of this Agreement, Licensee may request modifications
to the standards and specifications for the Approved TJC Wholesale Products
and/or approval of Supermarket Chains. All requests for modifications or
consents under this Section 3 shall be in writing. Licensor may approve or
disapprove any request in Licensor's sole discretion, but Licensor is not
obligated to respond to a request from Licensee.
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4. ROYALTIES
4.1 In consideration of the rights granted to Licensee hereunder,
Licensee shall pay to Licensor a royalty fee equal to five percent (5%) of
Licensee's Net Sales (defined below) of Approved TJC Wholesale Products sold by
Licensee on a monthly basis. Net Sales shall mean the gross sales price charged
by Licensee, regardless of collection of revenue in the case of credit or
installment sales of the Approved TJC Wholesale Products, less returns.
4.2 Licensee shall pay to Licensor the monthly royalty on the fifteenth
(15th) day of each month for the Net Sales of the preceding month; provided,
however, that the royalty payments for the Net Sales made during the first three
(3) full or partial months under this Agreement (July, August, and September
1998) shall be paid on the fifteenth (15th) day of October 1998.
4.3 Licensee shall submit to Licensor on the fifteenth (15th) day of
each month a sales report detailing the sales of Approved TJC Wholesale Products
during the preceding month. The sales report shall be in the form specified by
Licensor, and shall include, at a minimum, the gross revenues, net sales, and
the unit counts of all sales during the prior month, and shall include such data
required by Licensor and organized by Broker, by account, and by product.
Licensee shall provide a final Net Sales report within thirty (30) days
following the last month that Licensee sells Approved TJC Wholesale Products
pursuant to this Agreement, and such final Net Sales report may be, but is not
required to be, audited.
4.4 Licensee shall preserve all books and records regarding the
business operations under this Agreement for three (3) years from the date of
their preparation. Licensor reserves the right to audit or inspect the books and
records of Licensee at any time. Licensee shall prepare, and furnish to Licensor
not later than ninety (90) days after the close of Licensee's fiscal year,
audited financial statements for the prior fiscal year. The audited financial
statements, or the audited final Net Sales report, shall segregate clearly Net
Sales as separate line items, and shall include data by SKUs (Stockkeeping
Units) and by vendor.
4.5 In the event that Licensee's Net Sales of Approved TJC Wholesale
Products during the period January 1, 1998 through December 31, 1998 (as
verified by Licensor) to the five (5) Supermarket Chains designated with an
asterisk in Exhibit B exceed Three Million Six Hundred Thousand Dollars
($3,600,000), the royalty rate specified in Section 4.1 shall be revised,
retroactively to the date of this Agreement, to two percent (2%) of the Net
Sales that exceed $3,600,000 from those five (5) Supermarket Chains. Any
adjustments or refunds in royalty payments shall be made fifteen (15) business
days following Licensor's receipt of (a) Licensee's audited financial statement
for fiscal year 1998, or (b) Licensee's audited final Net Sales report, if
furnished pursuant to Section 4.3 hereof, provided that such information is
acceptable to Arby's, based on Arby's reasonable discretion and reasonable
verification.
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5. PREPARATION OF APPROVED TJC WHOLESALE PRODUCTS
5.1 Licensee shall use the Proprietary Information in accordance with
the standards and specifications prescribed by Licensor. All Approved TJC
Wholesale Products prepared, distributed, or sold by Licensee, pursuant to this
Agreement, shall be identified, distributed, or sold only under the Proprietary
Marks in the form and manner specified and approved by Licensor. Licensee may
distribute and sell Approved TJC Wholesale Products only through the channels of
distribution specified in Section 3 hereof.
5.2 Licensee shall prepare the Approved TJC Wholesale Products in
accordance with the Proprietary Information, and shall conform the operation of
its business to the methods, standards, and specifications prescribed in the
Proprietary Information. Licensee shall not sell or otherwise dispose of
products under the Proprietary Marks unless such products are Approved TJC
Wholesale Products produced in accordance with the Proprietary Information.
Licensee shall submit samples of Approved TJC Wholesale Products to Licensor at
such times and such places as Licensor may reasonably specify for the purposes
of determining that the Approved TJC Wholesale Products conform to the
Proprietary Information. Licensee shall make appropriate periodic tests for
controlling the quality of the ingredients and baking procedures utilized in the
production of Approved TJC Wholesale Products by Licensee, in accordance with
Licensor's requests and instructions. Licensee shall permit representatives of
Licensor, upon reasonable notice, to inspect any and all of Licensee's
production and/or distribution facilities, and to examine and test the
ingredients, supplies, containers, and accessories used by Licensee. Licensor
shall pay for its own costs in conducting such inspections. Licensee shall make
available to such representatives all information necessary to render full and
effective assistance. If any such facility, or any sample of Approved TJC
Wholesale Products, does not comply substantially with the standards prescribed
by Licensor, Licensee shall, at its own expense, remedy the facilities,
manufacturing processes, ingredients, or subsequently produced Approved TJC
Wholesale Products so that they comply with the Technical Information and other
standards specified by Licensor.
5.3 All Approved TJC Wholesale Products produced or prepared pursuant
to this Agreement shall be made with only such materials and ingredients as are
of the quality that has been specified by Licensor and supplied by a source that
has been approved by Licensor. Licensee shall obtain and use ingredients made
with the Secret Recipes only from a manufacturer approved, and if required by
Licensor, licensed, by Licensor. All standards and specifications and sources of
supply currently approved by Licensor are set forth in Exhibit D; provided that
Licensor may modify or revoke such approvals in its sole discretion. If Licensee
desires to purchase any of the items specified in this Section 5, or items
otherwise required by Licensor for the operation of the business contemplated
under this Agreement (other than ingredients utilizing the Secret Recipes that
must be purchased from sources designated by Licensor), from a supplier who has
not been approved by Licensor, Licensee may request, in writing, approval by
Licensor of such supplier. Licensor may approve such proposed supplier if in
Licensor's sole judgement and discretion the proposed supplier can meet and
maintain Licensor's specifications, standards, and requirements. In making any
such request, Licensee, at its expense, shall furnish Licensor with adequate
samples of the items for which approval is being requested or, if that is not
feasible, with copies of descriptions, specifications, and pictures of such
items. Licensee shall not sell, dispense, or use any such items unless and until
Licensor has given written notice of approval to Licensee. Nothing contained
herein shall be construed to require Licensor to approve an unreasonable number
of suppliers for any particular item or service.
5.4 Licensee shall not use, nor permit any person or entity to use, the
Proprietary Information or any part of the Secret Recipes or Technical
Information. Upon termination of this Agreement for any reason or expiration of
this Agreement, Licensee shall immediately cease to manufacture and distribute
the Approved TJC Wholesale Products and shall deliver to Licensor all
Proprietary Information under its control.
5.5 Licensee may produce, prepare, and sell products other than the
Approved TJC Wholesale Products, provided that the production of such products
does not involve the use of any of the Proprietary Information, and that such
products are not identified, in any manner, with the Proprietary Marks.
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6. PROPRIETARY MARKS
6.1 Licensee shall use the Proprietary Marks only to the extent
permitted in this Agreement, and only in the manner specified by, and in
accordance with, the standards and specifications of Licensor, as set forth in
this Agreement or otherwise in writing.
6.2 Licensee agrees that it shall not manufacture, produce, bake, sell,
or distribute products that bear the Proprietary Marks or any derivation or
abbreviation thereof, except in accordance with this Agreement, or license or
permit anyone else to do so, and shall not use names and marks confusingly
similar to the Proprietary Marks in the sale or distribution of any products, or
in the operation, franchising, or licensing of wholesale or retail businesses.
6.3 Licensee shall not use the Proprietary Marks or any derivation or
abbreviation thereof as part of its/their corporate or other legal name.
6.4 Licensee shall not directly or indirectly contest the validity of
Licensor's ownership of the Proprietary Marks.
6.5 Licensee expressly understands and acknowledges that:
6.5.1 Licensee's use of the Proprietary Marks pursuant to this
Agreement does not give it any ownership interest or other interest in or to the
Proprietary Marks, except the license granted by this Agreement; and
6.5.2 Any and all goodwill arising out of Licensee's use of
the Proprietary Marks under this Agreement shall inure solely and exclusively to
Licensor's benefit.
6.6 Licensee shall not register or attempt to register any Proprietary
▇▇▇▇, or any ▇▇▇▇ or name which incorporates all or part of any Proprietary
▇▇▇▇, in any country in the world.
6.7 Licensor has the right to modify and/or to discontinue the use of
any or all of the Proprietary Marks, or to use other names or marks to identify
the TJC Products; provided, however, that if Licensor discontinues a Proprietary
▇▇▇▇ that is used with or on an Approved TJC Wholesale Product that represents a
"significant percentage" of Licensee's wholesale business, Licensor will provide
a substitute Proprietary ▇▇▇▇ for that product or products. The parties hereto
agree that "significant percentage" shall mean twenty percent (20%) of gross
revenues received by Licensee from the sale of such product in the twelve-month
period prior to Licensor's notice of discontinuance of a ▇▇▇▇. Upon one hundred
twenty (120) days prior written notice from Licensor, Licensee shall comply with
Licensor's standards and specifications with respect to the use any modified
Proprietary Marks or the new names and marks; provided that Licensee may
continue to utilize existing inventory or supplies that bear the old or
discontinued Proprietary Marks after the 120-day period, if such inventory or
supplies were purchased prior to Licensor's notice of such modification or
discontinuance. Licensee shall be responsible for all costs associated with any
such change, and Licensor shall have no liability to Licensee therefor.
6.8 Licensor is the owner of all rights, title and interest in the
Proprietary Marks, and Licensor agrees to use best efforts to maintain the
validity of, and the registrations for, Proprietary Marks licensed hereunder.
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7. PROPRIETARY INFORMATION
7.1 Licensee acknowledges that the Proprietary Information, including
the Secret Recipes, the Technical Information, the techniques, know-how, trade
secrets, formulas, specifications, and all other information relating to the TJC
Products are trade secrets of Licensor. Licensee acknowledges that Licensee does
not and shall not acquire any right or interest therein beyond the rights
expressly granted to it under this Agreement. Licensee shall maintain adequate
security in the control, use, and handling of the Proprietary Information in
accordance with the guidelines and instructions prescribed by Licensor from time
to time.
7.2 Licensor has the right to modify any aspect of the Proprietary
Information, and upon one hundred twenty (120) days prior written notice from
Licensor, Licensee shall comply with Licensor's standards and specifications
with respect to the use of the modified Proprietary Information.
7.3 Licensee shall not engage, or assist others to engage, in any
activity which constitutes an infringement, appropriation, copying, unauthorized
use, or imitation of any of the Proprietary Information or other features of the
Intellectual Property, or which otherwise threaten any interest of Licensor
therein.
7.4 Except as specifically provided in this Agreement, Licensee shall
not at anytime, during the term of this Agreement or thereafter, use or permit
others to use any of the Intellectual Property to manufacture or identify
cinnamon rolls or other bakery products.
7.5 Licensee shall promptly notify Licensor in writing of any
unauthorized use of the Proprietary Information. Licensor shall have the sole
right to direct and control any administrative proceeding or litigation
involving the Proprietary Information, including any settlement thereof.
Licensee shall cooperate with Licensor in all matters concerning the Proprietary
Information.
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8. EXPIRATION; TERMINATION; POST-EXPIRATION ASSISTANCE
8.1 Upon expiration or termination of this Agreement, Licensee shall
forthwith cease to use, for any purpose, any and all of the Intellectual
Property. Licensee shall promptly return to Licensor all signs, packaging,
supplies, lists, forms, and other materials containing any of the Proprietary
Marks, and any and all copies of the Proprietary Information.
8.2 Licensor and Licensee understand and acknowledge that one of the
purposes of this Agreement is to provide for a smooth transition from Licensee
to Licensor of Licensee's business related to the wholesale sale and
distribution of Approved TJC Wholesale Products. Licensee shall, therefore, upon
request of Licensor, provide assistance to Licensor with respect to an orderly
transition of accounts and contracts from Brokers to food brokers selected by
Licensor and such other transition assistance as may be reasonable. Such desired
assistance shall be specified by Licensor, and shall be provided for a period
beginning thirty (30) days prior to expiration of this Agreement, and continuing
for a period not to exceed one hundred eighty (180) days following the date of
expiration.
9. ADVERTISING AND PROMOTION
9.1 All advertising and promotional material prepared by or to be used
by Licensee in connection with the manufacture, sale, or distribution of the
Approved TJC Wholesale Products, including product packaging and wrappings,
shall be subject to the prior written approval of Licensor. Any advertising,
promotional material, and packaging that is identified on Exhibit E as having
received the prior written approval of Licensor shall not require any further
approval by Licensor prior to its use. For all advertising, promotional plans,
packaging, containers, and/or labels for the Approved TJC Wholesale Products not
prescribed or previously approved by Licensor, Licensee shall submit samples of
such materials to Licensor for Licensor's prior written approval (except with
respect to advertised or suggested retail prices), and shall comply with the
procedures set forth in writing by Licensor. Licensee shall not use such
proposed advertising, promotional plans, packaging, containers, and/or labels
without Licensor's prior written approval. All rights in and to advertising,
promotional plans, packaging, containers, and/or labels, including without
limitation copyrights, shall become the exclusive property of Licensor (without
separate charge to Licensor); and this Agreement constitutes a license from
Licensor to Licensee to use such rights for the term of this Agreement. Licensee
agrees that it shall sign such documents (and cause any contractors, agencies,
and persons other than its employees who work on such advertising, promotional
plans, packaging, containers, and/or labels to sign such documents) as Licensor
may reasonably require in order to implement the terms of this provision.
9.2 Licensor shall have the right to disapprove the subsequent use of
any previously approved advertising; and Licensee shall promptly discontinue use
of advertising or promotional programs or materials upon notice from Licensor.
9.3 Licensor shall not be liable to Licensee as a result of any review,
approval, or disapproval of any advertising; and Licensee acknowledges that
Licensor's review of advertising is to enforce the proper use of the Proprietary
Marks in advertising. Licensee shall indemnify and hold harmless Licensor and
its affiliates against and from any and all claims, demands, suits, costs, or
expenses resulting from Licensee's use of advertising.
9.4 In the event Licensee further develops its business to include
business activities not subject to this Agreement, and if Licensee develops
advertising or promotional material that does not relate to, in any way or
mention, nor depict, any TJC Product, any Proprietary ▇▇▇▇, or Licensee's rights
under this Agreement, such advertising or promotional material shall be owned by
Licensee and not by Licensor.
-8-
10. TECHNICAL ASSISTANCE
Licensor will disclose or make available to Licensee the Secret Recipes
and Technical Information in such detail as to enable Licensee to produce the
Approved TJC Wholesale Products in the Territory in accordance with Licensor's
standards and specifications. From time-to-time during the term of this
Agreement, Licensor shall disclose and make available to Licensee additional
Technical Information concerning modifications, alterations, additions, or
amendments to the Proprietary Information to permit Licensee to produce the
Approved TJC Wholesale Products at all times in accordance with Licensor's
then-current procedures, specifications, and standards.
11. CONFIDENTIALITY, NON-DISCLOSURE, AND NON-COMPETE
11.1 Licensee acknowledges and agrees that Licensor owns all of the
Intellectual Property. Licensee further acknowledges and agrees that the
Intellectual Property includes trade secrets and confidential and proprietary
information and know-how that gives Licensor a competitive advantage; that all
measures necessary to protect the trade secrets, the confidentiality of the
Proprietary Information, and know-how comprising the Intellectual Property have
been taken; that all material or other information now or hereafter provided or
disclosed to Licensee regarding the Intellectual Property is and will be
disclosed in confidence; that Licensee has no right to disclose any part of it
to anyone who is not an employee or professional representative of Licensee; and
that Licensee will disclose to its employees only those parts of the
Intellectual Property that an employee needs to know. Licensor and Licensee
agree that confidential information shall exclude information that (a) has been
or is obtained by a third party from a source independent of Licensor, Licensee,
their affiliates, or their respective officers, directors, employees or agents,
and such third party is not desiring such information; (b) is or becomes
generally available to the public other than as a result of an unauthorized
disclosure by Licensee or its affiliates or their personnel; or (c) is
independently developed by Licensee without reliance in any way on the
Intellectual Property.
-9-
11.2 Licensee will protect as confidential and proprietary the
Proprietary Information, including the Secret Recipes, Technical Information,
the techniques, know-how, trade secrets, formulas, specifications, and all other
information relating to the Approved TJC Wholesale Products, whether or not
patentable. Licensee will not disclose, in whole or in part, any Proprietary
Information to any person, firm, or corporation, except to those employees of
Licensee whose knowledge of such information is required for the performance of
Licensee's obligations under this Agreement.
11.3 Licensee shall have no rights in the Proprietary Information and
shall use the Proprietary Information solely for the purpose contemplated by
this Agreement. Any and all goodwill arising from the use of the Proprietary
Information by Licensee shall inure exclusively to the benefit of Licensor. The
provisions of this Section 11.3 shall survive the termination or expiration of
this Agreement.
11.4 Licensee specifically acknowledges that, pursuant to this
Agreement, the August 29, 1996 License Agreement, and as a result of Licensee's
relationship with Licensor, Licensee will receive valuable and confidential
information, including, without limitation, information regarding operational,
sales, promotional, and marketing methods, related to the sale of Approved TJC
Wholesale Products, and other TJC Products through other retail channels, at
wholesale, and at dual- or multi-brand restaurants owned, operated or franchised
by Licensor. Licensee covenants that, except for the limited activities
specifically authorized under this Agreement during the term hereof, for a
period of thirty (30) months from the date of this Agreement, except as
otherwise approved in writing by Licensor in its sole discretion, neither
Licensee nor any affiliate of Licensee, including without limitation, Interbake
Brands, Inc., shall, either directly or indirectly, for itself, or through, or
on behalf of, or in conjunction with any person, persons, or legal entities,
own, maintain, operate, be employed by, or have an interest in, or directly
engage in, any business which involves or is engaged in the manufacturing,
baking, distribution, or sale of:
a. bakery products whose predominant flavor is cinnamon,
which use cinnamon as a principal or significant flavor
ingredient, are advertised or promoted as cinnamon- or
cinnamon-flavored products, or are otherwise recognized
generally as cinnamon products; or
b. bakery products that are similar to those bakery
products that utilize or incorporate one or more aspects of
the Intellectual Property and are sold, as of the date of this
Agreement, at T.J. Cinnamons Bakeries, or T.J. Cinnamons
Classic Bakeries; or
c. bakery products that use, bear, or are displayed in
close association with, (i) the Proprietary Marks, or (ii)
marks confusingly similar to the Proprietary Marks, or any
derivation or abbreviation thereof.
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11.5 Licensor may require that the individual officers, directors, and
executives of Licensee designated in Exhibit F, and all successors or other
individuals reasonably designated by Licensor at a later date, execute covenants
agreeing to be personally bound by the provisions of this Section 11; provided,
however, that the non-competition covenant of Section 11.4 shall apply for a
period of thirty (30) months from the date of this Agreement.
12. INDEMNIFICATION
In addition to any other rights or remedies under law or otherwise
available to Licensor, Licensee shall indemnify and hold harmless Licensor, its
affiliates, and their respective officers, directors, shareholders, agents, and
employees against and from any and all out-of-pocket loss, cost, damage and
expense (including reasonable attorneys' fees) resulting from: (i) any material
breach of any covenant, representation, or warranty of Licensee contained in
this Agreement; and/or (ii) any claim by a third party, including any
governmental authority, arising out of or relating to the manufacture,
production, marketing, sale, purchase, distribution, use or consumption of
Approved TJC Wholesale Products produced, distributed, or sold by Licensee.
13. INSURANCE
During the term of this Agreement, Licensee shall maintain
comprehensive general liability insurance and products liability insurance, in
such amounts as may be specified by Licensor, and such other insurance as
Licensor reasonably may specify, consistent with industry standards. The
currently approved type and amounts of insurance coverage are specified in
Exhibit G. Licensee shall provide Licensor, upon written request of Licensor,
with certificates evidencing such insurance and certificates of renewal of such
insurance, when applicable. Licensor shall be named an additional insured under
such coverage, at no cost to Licensor.
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14. ASSIGNMENT OF INTERESTS
14.1 Licensee shall not transfer, assign, convey, give away, pledge, or
encumber (collectively, "Transfer") any rights in this Agreement or the license
granted herein, in all or substantially all of the assets of Licensee, or in any
agreement related to any aspect of Licensee's business operated pursuant to this
Agreement, without Licensor's prior written consent, which consent may be
withheld in Licensor's sole discretion.
14.2 Licensor may Transfer any or all rights in this Agreement, in the
Intellectual Property, or in any assets of Licensor to any person or entity, on
any terms or conditions, and at any time, in its sole discretion.
15. MISCELLANEOUS
15.1 If any of the provisions of this Agreement may be construed in
more than one way, one of which would render the provision illegal or otherwise
voidable or unenforceable, such provision shall have the meaning which renders
it valid and enforceable. The language of all provisions of this Agreement shall
be construed according to its fair meaning and not strictly against any party.
In the event any court or other government authority shall determine any
provision in this Agreement is not enforceable as written, the parties agree
that the provision shall be amended so that it is enforceable to the fullest
extent permissible under the laws and public policies of the jurisdiction in
which enforcement is sought and affords the parties the same basic rights and
obligations and has the same economic effect. If any provision in this Agreement
is held invalid or otherwise unenforceable by any court or other government
authority or in any arbitration proceeding, such findings shall not invalidate
the remainder of the agreement unless in the reasonable opinion of Licensor the
effect of such determination has the effect of frustrating the purpose of this
Agreement, whereupon Licensor shall have the right by notice in writing to the
other party to immediately terminate this Agreement.
15.2 The entering into, performance, and interpretation of this
Agreement shall be governed, construed, and interpreted by the laws of the state
of Florida without regard to the law of conflicts (and without giving effect to
the application of Florida choice-of-law rules). Licensor and Licensee hereby
agree that to the extent that any disputes arise that cannot be resolved
directly between the parties, the parties shall file any necessary suit only in
the federal or state court having jurisdiction where Licensor's principal office
is then located. The parties irrevocably submit to the jurisdiction of any such
court and waive any objection they may have to either the jurisdiction or venue
of any such court. This Section 15.2 shall not be interpreted to apply any
franchise law or business opportunity law to the relationship between Licensor
and Licensee or the subject matter of this Agreement, which would not otherwise
be applicable. The parties acknowledge and agree that this Section 15.2 was
specifically negotiated by the parties, and that the selection of Florida law as
the governing law was included in this Agreement in exchange for other changes
in the Agreement requested by, and concessions provided to, Licensee.
15.3 Recognizing that remedies at law may be inadequate for the
enforcement of certain breaches of this Agreement, in the event Licensee
breaches any provision of this Agreement by reason of which the validity or
ownership of, or goodwill in, the Proprietary Marks or the Proprietary
Information may be impaired, or breaches the covenants to protect the
confidentiality of the Proprietary Information, Licensor may be entitled to
injunctive relief to enforce the provision of this Agreement, in addition to its
other rights hereunder. Notwithstanding the foregoing, Licensor and Licensee
agree that injunctive relief is not Licensor's sole remedy for a breach by
Licensee, and Licensor is entitled to pursue all remedies at law or in equity to
enforce the provisions of this Agreement and/or to obtain compensation for
damages caused by any breach of this Agreement.
15.4 Neither party shall be responsible to the other for
non-performance or delay in performance occasioned by any causes beyond its
control and for causes other than its own fault (other than lack of funds)
including, without limitation, acts of civil or military authority, failure of
civil or military authorities to act, strikes, lockouts, embargoes,
insurrections, or Acts of God. If any such delay occurs, any applicable time
period hereunder shall be automatically extended for a period equal to the time
lost; provided that the party affected shall make reasonable efforts to correct
the reason for such delay and give the other party prompt written notice of any
such delay.
15.5 Licensee is an independent contractor and shall not assume any
obligation or liability, express or implied, on behalf of Licensor. Nothing
contained herein or done hereunder shall be construed as creating a joint
venture or partnership, or as creating a franchise; and, except for Licensee's
obligations to monitor, report on, and enforce the quality control standards of
the Approved TJC Wholesale Products as required under Section 5, this Agreement
should not be construed as constituting either party hereto as the agent of the
other.
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15.6 Except as expressly provided to the contrary herein, nothing in
this Agreement is intended, nor shall be deemed, to confer upon any person or
legal entity other than Licensee, Licensor, and Licensor's affiliates and their
respective officers, directors, and employees, and such of Licensee's and
Licensor's respective successors and assigns (as may be permitted under this
Agreement) any rights or remedies under or by reason of this Agreement.
15.7 Except for such actions, approvals, or withholding of approvals
that Licensor may exercise in its sole discretion, or in accordance with
standards specified in this Agreement, Licensor and Licensee agree that both
parties shall act in a reasonable manner when exercising their respective rights
under this Agreement.
15.8 Any and all notices required or permitted under this Agreement
shall be in writing, and shall be personally delivered, sent by registered mail,
reputable overnight delivery service, or by other means which affords the sender
evidence of delivery or rejected delivery, to the respective parties at the
addresses designated below, unless and until a different address has been
designated by written notice to the other party.
If to Licensor: Arby's, Inc., d/b/a Triarc Restaurant Group
▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇. ▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇
Attn: ▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇, ▇▇., Vice President
with a copy to: Rudnick, Wolfe, ▇▇▇▇▇▇▇ & ▇▇▇▇▇▇▇
▇▇▇▇ ▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇, ▇.▇.
▇▇▇▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇.▇. ▇▇▇▇▇-▇▇▇▇
Attn: ▇▇▇▇ ▇. ▇▇▇▇▇▇, Esq.
If to Licensee: Paramark Enterprises, Inc.
▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇
Attn: ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇, President
with a copy to: ▇▇▇▇ ▇▇▇▇▇▇, Esq.
▇▇▇-▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇▇
▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇
Any notice by a means which affords the sender evidence of delivery, or rejected
delivery, shall be deemed to have been given at the date and time of receipt or
rejected delivery.
15.9 This Agreement constitutes the entire, full, and complete
agreement between Licensor and Licensee concerning the subject matter hereof,
and supersedes all prior agreements, no other representations having induced
Licensee to execute this Agreement. Except for those permitted to be made
unilaterally by Licensor hereunder, no amendment, change, or variance from this
Agreement shall be binding on either party unless mutually agreed to by the
parties and executed by their authorized officers or agents in writing.
IN WITNESS WHEREOF, the parties hereto, intending to be legally bound
hereby, having duly executed, sealed, and delivered this Agreement the day and
year first written above.
PARAMARK ENTERPRISES, INC. ARBY'S, INC., d/b/a TRIARC
RESTAURANT GROUP
Licensee Licensor
By: By:
Name: Name:
Title: Title:
