SUNGLASSES AGREEMENT
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THIS AGREEMENT is made and entered into as of the 1st day of December, 2000 by
and between MOSSIMO, INC., a Delaware corporation, with its principal place of
business located at 0000 Xxxxxxxx, Xxxxx Xxxxxx, XX 00000 X.X.X. ("Mossimo"),
MARCOLIN S.P.A.. a corporation organized under the laws of Italy with its
principal place of business located at Xxx Xxxx 00, 00000 Xxxxxxxx Vallesella
Domegge xx Xxxxxx (BL) ("Marcolin") and TARGET STORES, a division of Target
Corporation, a Minnesota corporation with its principal place of business
located at 00 Xxxxx Xxxxx Xxxxxx, Xxxxxxxxxxx, XX 00000 X.X.X. ("Target").
A. Mossimo and Marcolin entered into that certain Licensing Agreement
dated June 9, 1999, as amended on July 31, 2000 (as amended, the "Marcolin
Agreement") for the license of the MOSSIMO trademark to Marcolin for, among
other things, sunglasses, all as more specifically set forth therein.
B. Mossimo and Target entered into that certain License Agreement on
March 28, 2000 (the "Target Agreement") for, among other things, the license of
the MOSSIMO trademark to Target for use on a variety of merchandise, all as more
specifically set forth therein.
C. The parties wish to exclude from the Marcolin Agreement and add to
the Target Agreement Non-Optical Sunglass Products (as defined below)
distributed in the Territory (as defined below) on the terms and subject to the
conditions set forth herein.
NOW, THEREFORE, in consideration of the foregoing premises and the
mutual covenants and agreements contained herein, the parties hereto agree as
follows:
1. DEFINITIONS. For purposes of this Agreement, the Marcolin Agreement and the
Target Agreement, the following terms shall have the following meanings and
shall include the plural as well as the singular:
"Optical Channel" shall mean the channel of trade through which
consumers purchase or otherwise obtain certain products which includes
opticians, optometrists, ophthalmologists, optical chains (i.e., Pearle and
Lenscrafters) and specialty eyeglass and sunglass stores (i.e.. InVision and
Sunglass Hut).
"Non-Optical Sunglass Products" shall mean sunglasses, sunglass cases
and related accessories that are sold through channels of trade other than the
Optical Channel, including, by way of example and not limitation, mass
merchandise discount stores, super centers, mid-tier stores and department
stores.
"Territory" shall mean the United States, its territories and
possessions.
"Net Sales" shall mean the sales price to customers on all sales of
Non-Optical Sunglass Products by Target (whether regular, markdown, clearance or
otherwise), excluding sales tax and finance charges and, less any refunds and
credits for returns actually given by Target to its customers.
2. MARCOLIN AGREEMENT. Marcolin and Mossimo hereby amend the Marcolin Agreement
effective as of the date hereof by excluding sunglasses and sunglass cases
distributed in the Territory outside of the optical channel from the definition
of PRODUCTS in said agreement and from the grant of rights to Marcolin
thereunder, and releasing Marcolin from any reporting or payment obligations
with respect thereto.
3. TARGET AGREEMENT. Mossimo and Target hereby amend the Target Agreement
effective as of the date hereof by adding Non-Optical Sunglass Products
distributed in the Territory to the definition of "Exclusive Merchandise" in
said agreement and to the list of "Exclusive Merchandise Categories" set forth
in Exhibit B thereto. The parties agree that all sales of Non-Optical Sunglass
Products by Target shall be subject to the royalty and reporting requirements of
the Target Agreement, and further, that Marcolin shall not have any reporting or
royalty obligations to Mossimo with respect to any such sales.
4. PAYMENTS. In consideration of the transfer of rights described herein, Target
shall pay to Marcolin a minimum of US$800,000 and a maximum of US$1,600,000 in
accordance with the following schedule:
(a) US$400,000 on or before December 31, 2000; and
(b) US$400,000 on or before December 31, 2001; and
(c) In the event that Target's Net Sales of Non-Optical Sunglass
Products are greater than Us$35,000,000 and less than US$50,000,000 from the
date hereof through December 31, 2002 (the "Term"), an additional US$400,000
within thirty (30) days of the end of the Term; or
(d) In the event that Target's Net Sales of Non-Optical Sunglass
Products are greater than US$50,000,000 during the Term, an additional
US$800,000 within thirty (30) days of the end of the Term.
5. INDEMNIFICATION.
(a) INDEMNIFICATION OF TARGET. Marcolin shall indemnify and hold Target
and its affiliates, directors, officers, employees and agents harmless from and
against any and all liabilities, losses, claims, suits, damages, costs and
expenses (including, without limitation, reasonable attorneys' fees and
expenses) arising out of or otherwise relating to any claims arising out of the
manufacture, packaging, distribution, promotion, sale, marketing or advertising
of Non-Optical Sunglass Products by Marcolin, provided that (i) prompt written
notice is given to Marcolin upon Target becoming aware of any such actual or
threatened claims or suits; (ii) Marcolin shall have the option to exclusively
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undertake and conduct the defense and/or settlement of any such claims or suits;
and (iii) no settlement or attempt at settlement of any such claims or suits is
made without the prior written consent of Marcolin.
(b) INDEMNIFICATION OF MARCOLIN. Target shall indemnify and hold
Marcolin and its affiliates, directors, officers, employees and agents harmless
from and against any and all liabilities, losses, claims, suits, damages, costs
and expenses (including, without limitation, reasonable attorneys' fees and
expenses) arising out of or otherwise relating to any claims arising out of the
manufacture, packaging, distribution, promotion, sale, marketing or advertising
of Non-Optical Sunglass Products by or on behalf of Target, provided that (i)
prompt written notice is given to Target upon Marcolin becoming aware of any
such actual or threatened claims or suits; (ii) Target shall have the option to
exclusively undertake and conduct the defense and/or settlement of any such
claims or suits; and (iii) no settlement or attempt at settlement of any such
claims or suits is made without the prior written consent of Target.
6. CONFIDENTIALITY. The parties acknowledge and agree that any and all reports
and financial information disclosed by a party pursuant to this Agreement are
confidential information commercially valuable to such party (the "Confidential
Information"). The parties acknowledge that Confidential Information is
disclosed hereunder on a confidential basis to be used only as expressly
permitted by the disclosing party. Each receiving party, its officers,
directors, employees, and agents, shall protect the Confidential Information
belonging to the other party and shall not disclose it to any other person,
firm, organization, or employee unless authorized, in writing, by the disclosing
party. If required by governmental or judicial law regulation or ruling,
pursuant to subpoena or other court or administrative process, the receiving
party shall give prompt notice to the disclosing party of such pending
disclosure and shall, if requested, assist the disclosing party in seeking a
protective order or other measures to preserve the confidentiality of such
Confidential Information. Except as expressly permitted hereunder, the
Confidential Information may not be copied, reprinted, duplicated, or recreated
in whole or in part without the express written consent of the disclosing party.
Each receiving party shall take responsibility for action by instruction,
agreement or otherwise with respect to its employees or other persons permitted
access to the Confidential Information to comply fully with the obligations
hereunder with respect thereto. The parties each agree to return the
Confidential Information belonging to the other party, and all copies thereof,
to the disclosing party, upon request. Each party hereby consents to the
disclosure of its Confidential Information to any of the other party's
attorneys, accountants and similar third parties who have a business "need to
know" such information.
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7. GENERAL PROVISIONS.
(a) All notices and other communications required or permitted to be
given under this Agreement shall be in writing and shall be delivered either by
personal service. facsimile or prepaid overnight courier service and addressed
as follows:
If to Mossimo: Mossimo, Inc.
0000 Xxxxxxxx
Xxxxx Xxxxxx, XX 00000
Attn.: Chief Executive Officer
If to Target: Target Stores
00 Xxxxx Xxxxx Xxxxxx
Xxxxxxxxxxx, XX 00000
Attn: Senior Vice President,
Merchandising Softlines
With a copy to: Target Brands, Inc.
00 Xxxxx Xxxxx Xxxxxx
Xxxxxxxxxxx, XX 00000
Attn: President
If to Marcolin: Marcolin S.P.A.
c/o Marcolin USA, Inc.
000 Xxxxx Xxx
Xxxxxxxx, XX 00000
Attn: Xxxxxxx X. Xxxxxxxx
If delivered personally, such notices or other communications shall be deemed
delivered upon delivery. If sent by fax, such notice or other communications
shall be deemed delivered when received provided that the sender has
confirmation of receipt. If sent by prepaid overnight courier service, such
notices or other communications shall be deemed delivered upon delivery or
refusal to accept delivery as indicated on the return receipt. Any party may
change its address at any time by written notice to the other party as set forth
above.
(b) Nothing in this Agreement shall create a partnership or joint
venture or establish the relationship of principal and agent or any other
relationship of a similar nature between the parties hereto, and neither
Mossimo, Marcolin nor Target shall have the power to obligate or bind the other
in any manner whatsoever.
(c) This Agreement shall be governed by and construed in accordance
with the laws of the State of Minnesota, without reference to its provisions
governing conflicts of laws. This Agreement constitutes the complete agreement
of the parties on the subject matter covered herein and supersedes all prior or
contemporaneous understandings, agreements or representations, written or oral,
of the parties hereto. Except as expressly
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modified herein, the Marcolin Agreement and the Target Agreement shall remain in
full force and effect. This Agreement shall be binding upon the successors and
assigns of each party. This Agreement may not be amended except by a writing
signed by the parties hereto and expressly declared to be an amendment or
modification thereof. In the event that any one or more of the provisions of
this Agreement is unenforceable, the enforceability of the remaining provisions
shall be unimpaired.
(d) This Agreement may be executed in any number of counterparts, each
of which shall be deemed an original, but all of which together shall constitute
one and the same instrument.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement, in
the manner appropriate to each, as of the day and year first above written.
MOSSIMO, INC.
By: /s/ Xxxxxxx Xxxxxxxxx
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Title:
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TARGET STORES, a division of Target Corporation
By: /s/ Xxxxxx Xxxxx
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Title: VPMM
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MARCOLIN S.P.A.
By: /s/ signature
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Title: Executive VP & Licensing Director
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EXHIBIT A
Trademarks
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Registrations
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Trademark Class Registration Number Registration Date
M IN A BOX DESIGN 25 1611314 28 Aug 1990
XXXX 9 2155830 05 May 1998
XXXX 25 2157797 12 May 1998
MOSSIMO (Block) 9 1746343 12 Jan 1993
MOSSIMO (Block) 14 2051272 08 Apr 1997
MOSSIMO (Block) 25 1551068 08 Aug 1989
MOSSIMO (Stylized) 14 2053214 15 Apr 1997
MOSSIMO (Stylized) 25 2201308 03 Nov 1998
MOSSIMO (Stylized) 42 1970116 23 Apr 1996
MOSSIMO (Stylized) 42 1984437 02 Jul 1996
MOSS1MO AND BADGE 25 1813793 28 Dec 1993
DESIGN
MOSSIMO AND M DESIGN 9 1775768 08 Jun 1993
MOSSIMO AND M DESIGN 25 1620035 30 Oct 1990
XXXXXXX XXXXXXXXX 9 2157796 12 May 1998
XXXXXXX XXXXXXXXX 25 2155829 05 May 1998
Applications
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Trademark Class Application Number Filing Date
BABY XXXX 25 75/100784 8 May 1996
XXXX 3, 14, 18 74/735725 29 Sep 1995
MOSSIMO (BLOCK) 3 75/633095 02 Feb 1999
MOSSIMO (Stylized) 3 75/248668 27 Feb 1997
MOSSIMO (Stylized) 9 75/689070 21 Apr 1999
MOSSIMO (Stylized) 18 75/759670 26 Jul 1999
MOSSIMO FOOTWEAR 25 75/768844 4 Aug 1999
MOSSIMO FOOTWEAR 35 75/767903 4 Aug 1999
