Exhibit 10.11
CBYNO
September 30, 1997
FOREIGN BOSS RIGHTS ACQUISITION AGREEMENT
AGREEMENT dated as of September 30, 1997, by and between *, a corporation
organized and existing under the laws of Delaware ("Buyer") and I. C. Xxxxxx
& Company L.P., a limited partnership organized and existing under the laws
of Delaware ("Seller").
W I T N E S S E T H :
WHEREAS, Seller has entered into a Worldwide Rights Acquisition Agreement
dated as of September 30, 1997 with Brookhurst, Inc. ("Brookhurst") and
Xxxxxxx Xxx to acquire all of Brookhurst's right, title and interest in and
to all "BOSS" trademarks and other proprietary interests, if any, related
thereto owned by Brookhurst and used in connection with its business
throughout the world together with the goodwill symbolized thereby (the
"Worldwide Rights Acquisition Agreement").
WHEREAS, Buyer desires to purchase from Seller, and Seller desires to
sell to Buyer, all of Seller's right, title and interest outside of the
United States of America and its territories and possessions (hereinafter,
the "United States of America") in and to all "BOSS" trademarks and other
proprietary interests outside of the United States of America, if any,
related thereto acquired and owned by Seller and used in connection with its
business outside of the United States of America, together with the goodwill
symbolized by such trademarks, on the terms and conditions set forth herein;
NOW, THEREFORE, in consideration of the mutual promises contained herein
the parties hereby agree as follows:
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
ARTICLE I
PURCHASE AND SALE
1.1 Purchase and Sale of BOSS Assets. Upon the terms and conditions
herein set forth, Seller shall sell, convey, transfer, assign and deliver to
Buyer on the Closing Date (as hereinafter defined), and Buyer shall purchase
from Seller on the Closing Date, the following assets, properties and rights
of Seller (the "Trademark Assets"), all of which, taken together, represent
the business of Seller operating under the BOSS marks outside of the United
States of America acquired from Brookhurst:
(a) any and all right, title and interest of Seller in and to the
trademarks, service marks, trade names, logos, insignias, designs, copyrights
(if any), and other proprietary interests therein, containing the term "BOSS"
or constituting a stylized B, outside of the United States of America,
including, without limitation, all registrations and applications for
registration therefor throughout the world but not including the United
States of America (collectively, the "Trademarks"), and the goodwill
symbolized by the Trademarks relating to their use outside the United States
of America, together with all causes of action and the proceeds thereof in
favor of Seller heretofore accrued with respect to the Trademarks outside of
the United States of America;
(b) all rights of Seller under license agreements, concurrent use
agreements and other agreements listed on Schedule 1.1(b) insofar as they
relate to the Trademarks being acquired by Buyer from Seller hereunder,
including, without limitation, all rights of Seller under the Worldwide
Rights Acquisition Agreement and the Escrow Agreement referred to therein
relating to the Trademarks (the "Assumed Agreements") and all files relating
thereto, it being
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agreed that Seller shall retain all of Seller's rights under the Worldwide
Rights Acquisition Agreement and the Escrow Agreement insofar as they relate
to the trademark properties retained by Seller in the United States of
America. In clarification of the foregoing, the parties acknowledge and
agree that Buyer shall have recourse directly against Brookhurst and Xxx
under the Worldwide Rights Acquisition Agreement and the Escrow Fund as
defined and set forth in the Escrow Agreement for any matters involving the
breach of covenants, representations, warranties or conditions set forth in
the Worldwide Rights Acquisition Agreement insofar as they relate to the
Trademark Assets acquired by Buyer hereunder from Seller;
(c) all right, title and interest in and to all records and other
information the Selling Parties (as defined in the Worldwide Rights
Acquisition Agreement) or either of them have within their possession or
control applicable to the products they or either of them have previously
licensed under the Trademarks and all trademark files relating to the
Trademark Assets.
(d) any and all copyrights that Seller may own arising outside of the
United States of America as a result of designs and other works created by
Seller, Brookhurst, or any licensee, nominee or manufacturer of either of
them, in connection with the BOSS business.
1.2 Liabilities. Buyer shall assume the obligations of Seller arising
from and after Closing under the Assumed Agreements solely insofar as they
relate to the use of the Trademark Assets after Closing. Buyer shall assume
no liabilities or obligations, whether now existing or arising in the future,
fixed or contingent, known, or unknown, relating to the use by Seller
(including, without limitation, use by any of Seller's affiliates,
subsidiaries, predecessors or
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licensees) of the Trademarks and any other matter relating to the conduct of
any business relating thereto prior to the Closing ("Excluded Liabilities").
1.3 Encumbrances. The sale and transfer of the Trademark Assets shall
be free and clear of all pledges, security interests, mortgages and liens
made or created by Seller ("Encumbrances").
1.4 Exclusions. Notwithstanding any other provision of this Agreement,
Seller makes no representations or warranties of any kind, and shall have no
responsibility, liability or obligations whatsoever to Buyer or any affiliate
thereof (including, without limitation, for any claims for indemnity), with
respect to any matter relating to the Trademark Assets prior to the xxxx
Xxxxxx acquired the Trademark Assets, including, without limitation, the
quality of title, the condition or use of the Trademark Assets or the conduct
of the business thereunder prior to the xxxx Xxxxxx acquired the Trademark
Assets from Brookhurst except as expressly set forth in this Agreement.
ARTICLE II
CONSIDERATION
2.1 Consideration. In consideration of the sale and transfer of the
Trademark Assets to Buyer on the Closing Date, Buyer shall assume any and all
obligations of Seller under the Promissory Note in the principal amount of US
$11,000,000 of Seller referred to in the Worldwide Rights Acquisition Agreement
and payable to the order of Brookhurst (the "Note").
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ARTICLE III
THE CLOSING
3.1 Time and Place of Closing. The closing of the purchase and sale of
the Trademark Assets hereunder (the "Closing") shall take place at the
offices of Coudert Brothers located at 0000 Xxxxxx xx xxx Xxxxxxxx, Xxx Xxxx,
Xxx Xxxx 00000 at 10:00 a.m. local time on a date agreed to by the parties
(the "Closing Date"), which date shall not be later than eight (8) business
days following the date on which the applicable waiting period, including any
extension thereof, under the Xxxx-Xxxxx Xxxxxx Antitrust Improvements Act of
1976, as amended, relating to the transactions contemplated by the Worldwide
Rights Acquisition Agreement shall have expired.
3.2 Deliveries To Be Made by the Seller. On the Closing Date, Seller
shall have executed and delivered to Buyer the following:
(a) executed trademark assignments in the forms attached hereto as
Exhibit A;
(b) an agreement of assignment and assumption of Assumed Agreements
in the form annexed hereto as Exhibit B (the "Assumption Agreement");
(c) a concurrent use agreement between Seller and * in the form
annexed hereto as Exhibit C (the "Concurrent Use Agreement");
(d) a foreign manufacturing rights agreement between Seller and
Buyer in the form annexed as Exhibit D (the "Foreign Manufacturing Rights
Agreement");
(e) an option agreement between Seller and Buyer in the form
annexed as Exhibit F (the "Option Agreement");
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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(f) a secured limited recourse promissory note in the form annexed as
Exhibit F (the "ICI Note");
(g) an agreement of assumption of the Note and assignment of all rights
related thereto (the "Note Assumption Agreement") in the form annexed hereto
as Exhibit G; and
(h) such other instruments and documents as may be elsewhere herein
required.
3.3 Deliveries To Be Made by Buyer. On the Closing Date, Buyer shall
have executed or caused to be executed and delivered to Seller the following:
(a) the Note Assumption Agreement;
(b) the Assumption Agreement;
(c) the Concurrent Use Agreement, duly executed by *;
(d) the Foreign Manufacturing Rights Agreement;
(e) the Option Agreement;
(f) the ICI Note; and
(g) A Guaranty by * of the Note in the form annexed
hereto as Exhibit H (the "Guaranty");
(h) an Agreement regarding Consent to Release and Waiver of
Brookhurst Note Claims in the form annexed hereto as Exhibit I (the "Consent
Agreement"); and
(i) such other instruments and documents as may be elsewhere herein
required.
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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ARTICLE IV
REPRESENTATIONS AND WARRANTIES OF THE SELLER
Seller makes the following representations and warranties, each of which
is complete and correct on and as of the date hereof. As used in this
Agreement, including, without limitation, this Article IV, the term Seller
shall not be construed to include reference to Seller's
predecessor-in-interest to the Trademark Assets, namely Brookhurst.
4.1 Organization and Good Standing of the Seller. Seller is a limited
partnership duly organized, validly existing and in good standing under the
laws of the State of Delaware.
4.2 Authority; Execution. Seller has all the requisite power and
authority, corporate and otherwise, to execute, deliver and perform its
obligations under this Agreement. The execution and delivery of this
Agreement, and each of the other instruments of transfer, conveyance and
assignment delivered hereunder, have been duly and validly authorized by all
necessary corporate and other action on the part of Seller, and this
Agreement and each of such other instruments has been duly executed by
Seller. This Agreement constitutes the valid and binding agreement of Seller
enforceable against Seller in accordance with its respective terms.
4.3 Breach of Statute or Contract.
(a) The execution, delivery and performance of this Agreement by Seller
and the consummation of the transactions contemplated hereby will not: (i)
violate or conflict with any provision of the charter documents or by-laws of
Seller; (ii) violate or conflict with, result in the breach or termination of
or otherwise give any other contracting party the right to terminate, or
constitute a default (or an event which, with the lapse of time, or the
giving of notice, or both, will constitute a default) under, any contract or
other instrument to which Seller is a party
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and which relate to the Trademark Assets or by which Seller is bound, or
result in the creation of any Encumbrance upon any of the Trademark Assets
pursuant to the terms of any such contract or instrument, or (iii) violate or
conflict with any judgment, order, writ, injunction or decree of any court or
governmental body of any jurisdiction applicable to Seller (excluding any
judgments, orders, writs, injunctions or decrees in any actions or
proceedings involving * or its affiliates) or, to the knowledge of Seller,
any law or regulation materially adversely affecting Buyer's ability to
exploit the Trademark Assets.
(b) Except as set forth on Schedule 4.3(b), there are no notices,
licenses, consents, permissions or approvals of any nature whatsoever which
are required to be obtained by Seller from any Federal, state or local
governmental or regulatory body or other third party or, to Seller's
knowledge, from any foreign governmental or regulatory body for the
consummation of the transactions contemplated by this Agreement, or as a
condition to the sale, assignment and transfer of the Trademark Assets to be
effected hereunder.
4.4 No Claims or Litigation. Except as set forth on Schedule 4.4(a), no
litigation, judicial or arbitral action, claim asserted in writing and
received by Seller within the preceding two years or, to the knowledge of
Seller, administrative or regulatory proceeding or adversarial proceeding in
any trademark office, or governmental investigation involving the Trademark
Assets or the transactions contemplated by this Agreement, including, without
limitation, any claim of conflict with or violation of any proprietary or
other right (collectively, "Litigation") is pending or, to the knowledge of
Seller, threatened against Seller. For purposes of the foregoing,
"Litigation" shall not be deemed to include any actions, proceedings or
claims involving * or its affiliates. Except as set forth on Schedule
4.4(b), there is no
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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judgment, order, injunction, decree or award outstanding (whether rendered by
a court, tribunal, administrative agency or arbitral tribunal and excluding
any judgments, orders, injunctions, decrees or awards in any actions or
proceedings involving * or its affiliates), against Seller or referencing
Seller by name or, to Seller's knowledge, by which Seller is bound which
affects the Trademark Assets or the use of the Trademark Assets in any way.
4.5 Trademarks. Except as set forth in Schedule 4.5.A, Seller is not
currently licensing any person to use or operate under any of the Trademarks.
True and complete copies and, if not available, descriptions of all such
licenses, including all amendments or modifications, have heretofore been
delivered to Buyer. Except as set forth in Schedule 4.5.B, and except for
customary sell-off rights granted to alleged infringers, Seller has not
affirmatively agreed or consented to the non-use by Seller, or use by any
third party, of any xxxx containing the word BOSS. To Seller's knowledge
(such knowledge being based solely on Seller's actual knowledge), the
countries in which Seller currently manufactures products bearing the
Trademarks are: Hong Kong, Indonesia, Macao, Mexico, People's Republic of
China, Phillipines, Republic of South Korea, Taiwan and Thailand. Seller
has paid, or will pay within a reasonable period of time, in full (or
otherwise to the satisfaction of the invoicing party) all outstanding
invoices of domestic and foreign trademark counsel for work done and
disbursements incurred on behalf of Seller (whether or not billed on or by
the date hereof).
4.6 No Alienation of Rights By Seller. Except as set forth in the
Assumed Agreements or any other documents identified on Schedule 4.5.A or B
or Schedule 4.6, Seller has not transferred, assigned, licensed (which
license is currently outstanding) or otherwise encumbered with Encumbrances
any of its rights in any Trademark Asset.
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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4.7 Ownership Trademark Assets. As between Seller and all affiliates
and other persons or entities who have an ownership interest in Seller (or
any affiliate thereof) or who may have been expressly authorized by Seller to
use the Trademark Assets, Seller owns all rights in and to the Trademark
Assets (as defined in the Worldwide Rights Acquisition Agreement and as
acquired from Brookhurst under said agreement).
4.8 Knowledge. Whenever a statement regarding the existence or absence
of facts in this Agreement is qualified by a phrase such as to Seller's
knowledge or words to similar effect, it is intended by the parties that the
information attributed to Seller be actually known, or information which
should have been known based on reasonable inquiry by the Chairman and
Co-Chief Executive Officer, President and Co-Chief Executive Officer or Chief
Financial Officer of Seller.
4.9 Materiality. The phrase "materially adversely affecting Buyer's
ability to exploit the Trademark Assets" or words of similar effect, shall be
deemed to mean (i) the existence or occurrence at any time from and after the
date hereof of any actual harm, or the existence of any reasonably
anticipated actual harm, to Buyer's ability to exploit the Trademark Assets
or (ii) either (x) the failure of Seller to remedy the breach in question
assuming the breach is remediable or (y) the inability of Seller to remedy
the breach in question without prejudice to Buyer's ability to exploit the
Trademark Assets. For purposes of this Section 4.10, no "actual
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harm" shall be deemed to exist as to any of the first three claims of harm
unless any such claim of harm reasonably involves at least the following
amounts in damage or loss:
First Claim *
Second Claim *
Third Claim *
it being agreed that, without prejudice to, or limitation of, Seller's
ability to claim that any subsequent claim involves no "actual harm", no such
monetary threshold applies to any subsequent claims.
ARTICLE V
REPRESENTATIONS AND WARRNTIES OF BUYER
Buyer hereby makes the following representations and warranties each of
which is complete and correct on and as of the date hereof:
5.1 Organization and Good Standing of Buyer. Buyer is a corporation
duly organized and validly existing under the laws of Delaware. Buyer is a
wholly-owned direct subsidiary of *, a corporation organized and existing
under the laws of *.
5.2 Authority; Execution. Buyer has all requisite power and authority,
corporate and otherwise, to execute, deliver and perform its obligations
under this Agreement. The execution and delivery of this Agreement, and each
of the other instruments of transfer, conveyance and assignment delivered
hereunder, by Buyer have been duly and validly authorized by all necessary
corporate and other action on the part of Buyer, and this Agreement and each
of such other
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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instruments has been duly executed by Buyer, as applicable. This Agreement
constitutes the valid and binding agreement of Buyer, enforceable against
Buyer in accordance with its terms.
5.3 Breach of Statute or Contract.
(a) The execution, delivery and performance of this Agreement by Buyer
and the consummation of the transactions contemplated hereby will not: (i)
violate or conflict with any provision of the Certificate of Incorporation or
by-laws of Buyer; (ii) violate or conflict with, result in the breach or
termination of or otherwise give any other contracting party the right to
terminate, or constitute a default (or an event which, with the lapse of
time, or the giving of notice, or both, will constitute a default) under, any
contract or other instrument to which Buyer is a party; or (iii) violate or
conflict with any judgment, order, writ, injunction or decree of any court or
governmental body of any jurisdiction applicable to Buyer (excluding any
judgments, orders, injunctions, decrees or awards in any actions or
proceedings involving Seller or its affiliates) or, to the knowledge of
Buyer, any law or regulation materially adversely affecting Buyer's ability
to consummate the transaction contemplated by this Agreement.
(b) Except as provided in Schedule 5.3(b), there are no notices,
licenses, consents, permissions or approvals of any nature whatsoever which
are required to be obtained by Buyer from any Federal, state or local
governmental or regulatory body or other third party or, to Buyer's
knowledge, from any foreign governmental or regulatory body for the
consummation of the transactions contemplated by this Agreement, or as a
condition to the sale, assignment and transfer of the Trademark Assets to be
effected hereunder.
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ARTICLE VI
COVENANTS
6.1 Further Assurances.
(a) From time to time until the expiration of * from the Closing
Date, upon the request and at the expense of Buyer but without further
consideration, Seller shall:
(i) do, execute, acknowledge, deliver and file, or shall cause
to be done, executed, acknowledged, delivered and filed, all such further
acts, deeds, transfers, conveyances, assignments or assurances (including,
without limitation, for purposes of transferring record ownership of the
Trademark Assets to Buyer) as may be reasonably requested by Buyer for
transferring, conveying, assigning and reducing to Buyer's possession,
ownership and use of the Trademark Assets, including, without limitation,
executing on the Closing Date any assignments of Trademarks in recordable
form requested by Buyer; and
(ii) deliver to Buyer such other records, documentation and
information in Seller's possession or control as may be reasonably requested
by Buyer to assist Buyer in the use and protection of the Trademark Assets.
(b) Seller shall keep and preserve any and all invoices, letters of
credit, bills of lading, and purchase orders which relate to the Trademark
Assets for * from and after the Closing Date, except as otherwise provided
herein. Seller may dispose or destroy any such records, documentation and
information at any time, provided that Seller first shall notify Buyer so
that Buyer may, at its expense and within a reasonable time after receipt of
such notice, obtain from Seller any or all of said records, documentation and
information. Seller
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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shall not be responsible for (i) destruction of records caused by an Act of
God or other "Force Majeure" event, or (ii) any immaterial non-intentional
destruction of records.
6.2 Mail and Communications. From and after the Closing Date, Seller
shall promptly remit or refer to Buyer any mail or other communications,
including, without limitation, any written inquiries, relating solely to the
Trademark Assets, and copies of any such mail or communications which relate
to the Trademark Assets and other matters, which are received by Seller from
and after the Closing for a period of * from the date hereof.
ARTICLE VII
CONDITIONS PRECEDENT TO OBLIGATIONS OF BUYER AND SELLER
7.1 Conditions Precedent to Obligations of Buyer. The obligation of
Buyer to consummate the transactions contemplated under this Agreement is
subject to the fulfillment, as of the Closing Date, of each of the following
conditions (any or all of which may be waived by Buyer):
(a) the representations and warranties of Seller set forth in
Article IV hereof shall be true and correct in all material respects as of
the Closing Date;
(b) Seller shall have performed and complied in all material
respects with all covenants, obligations and undertakings required by this
Agreement to be performed or complied with on or prior to the Closing Date:
(c) Buyer shall have been furnished with a certificate, dated the
Closing Date and executed by an officer of Seller, certifying to the
fulfillment of the conditions specified in Sections 7.1(a) and (b);
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* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
*
(h) the closing under the Worldwide Rights Acquisition Agreement
shall have been completed;
(i) Seller and all other parties thereto shall have executed and
delivered the Foreign Manufacturing Rights Agreement;
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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(j) Seller shall have delivered to Buyer possession of (i) an
original of each of Seller's Trademark registrations currently in effect;
(ii) an original of any other registrations for the Trademarks to the extent
in Seller's possession, custody or control; and (iii) Seller's original
trademark application and registration files relating to the Trademarks
including, for example, letters or other materials from each of Seller's
domestic and foreign trademark counsel showing deadlines for trademark office
actions to the extent in Seller's possession, custody or control; provided,
however, if any of such items apply to both the Trademark Assets and the
trademark properties retained by Seller with respect to its BOSS business in
the United States of America, then such information may be provided to Buyer
by photocopy rather than original;
(k) Seller and all other parties thereto shall have executed and
delivered the Concurrent Use Agreement;
(l) Brookhurst and Xxxxxxx Xxx shall have consented to the
assignment and assumption by Buyer of all rights and obligations of Seller
under the Note and of all rights and obligations of Seller under the
Worldwide Rights Acquisition Agreement (except all "intent-to-use" trademark
applications) and Escrow Agreement relating to the Trademark Assets;
(m) Buyer and Seller shall have entered into a license agreement,
consistent with the terms of Exhibit C, providing for an exclusive
royalty-free license to Buyer of the right to use the Trademarks which are
the subject of intent-to-use applications in the U.S. Patent & Trademark
Office ("PTO") which were acquired by Seller from Brookhurst, on the products
referred to in said applications, together with the right to have such
trademarks transferred to Buyer upon such marks becoming registered with the
PTO, and on such other terms as shall be mutually agreed by the parties (the
"BOSS GOLF et al. License Agreement"); and
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(n) * and Xxxxxx shall have executed and delivered the
Indemnification Agreement in the form annexed hereto as Exhibit L.
7.2 Conditions Precedent to Obligations of Seller. The obligations of
Seller to consummate the transactions contemplated under this Agreement are
subject to the fulfillment, as of the Closing Date, of each of the following
conditions (any or all of which may be waived by Seller):
(a) the representations and warranties of Buyer set forth in
Article V shall be true and correct in all material respects as of the
Closing Date;
(b) Buyer shall have performed and complied in all material
respects with all obligations and undertakings required by this Agreement to
be performed or complied with by Buyer on or prior to the Closing Date;
(c) Seller shall have been furnished with a certificate, dated the
Closing Date and executed by an officer of Buyer certifying to the
fulfillment of the conditions specified in Sections 7.2(a) and (b);
*
(g) no judgment, order or decree shall have been rendered which has
the effect of enjoining the consummation of the transactions contemplated by
this Agreement;
(h) the closing under the Worldwide Rights Acquisition Agreement
shall have been completed;
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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(i) Buyer and all other parties thereto shall have executed and
delivered the Foreign Manufacturing Rights Agreement;
(j) * and all other parties thereto shall have executed and
delivered the Concurrent Use Agreement; and
(k) Brookhurst and Xxxxxxx Xxx shall have consented to the
assignment and assumption by Buyer of all rights and obligations of Seller
under the Note and of all rights and obligations of Seller under the
Worldwide Rights Acquisition Agreement (except all "intent-to-use" trademark
applications) and Escrow Agreement relating to the Trademark Assets and
Brookhurst and Xxxxxxx Xxx shall have fully and unconditionally released
Seller from such obligations in the form attached hereto as Exhibit K;
(l) the BOSS GOLF et al License Agreement shall have been entered
by all Parties thereto; and
(m) * and Xxxxxx shall have executed and delivered the
Indemnification Agreement in the form annexed hereto as Exhibit L.
ARTICLE VIII
SURVIVAL OF REPRESENTATIONS AND WARRANTIES
INDEMNIFICATION
8.1 All representations and warranties contained in or made pursuant to
this Agreement *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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*
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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8.3 *
8.4 Notification of Claims. In the event of the occurrence of any event
which any party asserts constitutes a Buyer Indemnity Claim or Seller
Indemnity Claim, as applicable, the
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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indemnified party shall provide the indemnifying party with prompt notice of
such event, including, without limitation, any facts and circumstances which
give rise to such claim, and shall otherwise make available to the
indemnifying party all relevant information which is material to the claim
and which is in the possession of the indemnified party. If such event
involves the claim of any third party (a "Third-Party Claim"), the
indemnifying party shall have the right to elect to join in the defense,
settlement, adjustment or compromise of any such Third-Party Claim, and to
employ counsel to assist such indemnifying party in connection with the
handling of such claim, at the sole expense of the indemnifying party, and no
such claim shall be settled, adjusted or compromised, or the defense thereof
terminated, without the prior consent of the indemnifying party unless and
until the indemnifying party shall have failed, after the lapse of a
reasonable period of time, but in no event more than 30 days after written
notice to it of the Third-Party Claim, to join in the defense, settlement,
adjustment or compromise of the same. An indemnified party's failure within a
reasonable time to give notice or to furnish the indemnifying party with any
relevant data and documents in its possession in connection with any
Third-Party Claim shall not constitute a defense (in part or in whole) to any
claim for indemnification by such party, except and only to the extent that
such failure shall result in any material prejudice to the indemnifying
party. If so desired by any indemnifying party, such party may elect, at
such party's sole expense, to assume control of the defense, settlement,
adjustment or compromise of any Third-Party Claim, insofar as the claim
relates to the liability of the indemnifying party, provided that such
indemnifying party shall obtain the consent of all indemnified parties before
entering into any settlement, adjustment and compromise of such claim, or
ceasing to defend against such claim, if as a result thereof, or pursuant
thereto, there
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would be imposed on an indemnified party any liability or obligation not
covered by the indemnification obligations of the indemnifying party under
this Agreement (including, without limitation, any injunctive relief or other
remedy).
8.5 *
ARTICLE IX
GENERAL
9.1 Waiver. Any failure of Buyer, on the one hand, or the Seller, on
the other, to comply with any of the obligations or agreements set forth in
this Agreement or to fulfill any condition set forth in this Agreement may be
waived only by written instrument signed by the other party. No failure by
any party to exercise, and no delay in exercising, any right hereunder shall
operate as a waiver of such right, nor shall any single or partial exercise
of any right hereunder by any party preclude any other or future exercise of
that right or any other right hereunder by that party.
9.2 Notices. All notices, requests or other communications required or
permitted hereunder (excluding, however, mail and/or communications covered
under paragraph 6.2 hereof) shall be given or made in writing and shall be
(i) delivered personally (including
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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commercial carrier), (ii) sent by registered or certified airmail, return
receipt requested, postage prepaid or (iii) sent by telecopier, addressed to
the party to whom they are directed at the following addresses, or at such
other address as may from time to time be designated by such party to the
others in accordance with this Section 9.2:
If to Seller, to:
I. C. Xxxxxx & Company L.P.
0000 Xxxx Xxxxxx
Xxxxxxxxx, Xxxxxxxx 00000
Attention: President and Co-Chief Executive Officer
Telecopier: 410/558-2096
I. C. Xxxxxx & Company L.P.
000 Xxxxx Xxxxxx
Xxxxx 0000
Xxx Xxxx, Xxx Xxxx 00000
Attention: Chairman and Co-Chief Executive Officer
Telecopier: 212/695-7579
With a copy to:
Piper & Marbury L.L.P.
Xxxxxxx Center South
00 Xxxxx Xxxxxxx Xxxxxx
Xxxxxxxxx, Xxxxxxxx 00000-0000
Attention: Xxxxxx X. Xxxxxxx, Esq.
Telecopier: 410/576-1604
If to Buyer, to:
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
-23-
With a copy to:
Coudert Brothers
0000 X Xxxxxx, X.X.
Xxxxxxxxxx, X.X. 00000
Attention: Xxxxx X. Xxxxxx, Esq.
Telecopier: 202/775-1168
and
Howrey & Simon
0000 Xxxxxxxxxxxx Xxxxxx, X.X.
Xxxxxxxxxx, X.X. 00000
Attention: Xxxxxx X. Xxxxxxx, Esq.
Telecopier: 202/383-6610
If to *, to:
*
With a copy to:
Coudert Brothers
(as specified above)
and
Howrey & Simon
(as specified above)
Any notice, request or other communications shall be deemed to have been
given and to be effective upon receipt or refusal by the addressee. Any
party may change its address for notices hereunder, effective upon giving of
notice of such change hereunder to the other parties.
9.3 No Third Party Beneficiaries. Neither this Agreement nor any
provision hereof, nor any document or instrument executed or delivered
pursuant hereto, shall be deemed to create
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
-24-
any right in favor of or impose any obligation upon any person or entity
other than Buyer and Seller and their respective successors and assigns.
9.4 *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
-25-
9.5 Captions and Paragraph Headings. Captions and paragraph headings
used in this Agreement are for convenience only and are not a part of this
Agreement and shall not be used in interpreting or construing it.
9.6 Entire Agreement. The making, execution and delivery of this
Agreement by the parties has been induced by no representations, statements,
warranties or agreements other than those herein expressed. This Agreement
embodies the entire understanding of the parties with respect to the subject
matter hereof. Notwithstanding the foregoing, the parties acknowledge that a
number of different agreements and instruments of which the parties are
signatory are all being executed simultaneously, as of the Closing Date, with
this Agreement. The parties acknowledge that this Agreement or instrument is
to be interpreted and enforced separately and independently of any other such
agreement or instrument, and the breach of any such agreement by a party
shall not affect the rights of such party under this Agreement. This
Agreement may be amended or modified only by an instrument of equal formality
signed by the parties or their duly authorized representatives. The parties
have made no representations or warranties not expressly set forth in this
Agreement. This Agreement supersedes and terminates all prior discussions,
negotiations, understandings, arrangements and agreements among the parties
relating to the subject matter hereof, except as expressly set forth herein.
9.7 Counterparts. This Agreement may be executed in any number of
duplicate counterparts, each of which shall be deemed an original and all of
which together shall constitute one and the same instrument.
9.8 Assignability. No party hereto may assign any of its interests,
rights or obligations under this Agreement without the prior written consent
of the other parties. Notwithstanding
-26-
the foregoing, Buyer may assign its rights, but not its obligations, under
this Agreement to any entity under common control with Buyer or to any
successor in interest to Trademark Assets without the consent of Seller. Any
impermissible attempted assignment of this Agreement without such prior
written consent shall be void as to the other parties to this Agreement.
Notwithstanding anything to the contrary set forth in this Agreement, Seller
shall be permitted to assign and transfer Seller's rights under this
Agreement to any parent, subsidiary or other affiliate of Seller if Seller or
its successor in interest remains fully liable for the performance of this
Agreement by such assignee or transferee and indemnifies Buyer with respect
to any costs and damages Buyer may incur because of such assignment or
transfer.
9.9 Expenses. The parties shall each bear their own expenses in
connection with the negotiation, execution and delivery of this Agreement and
the performance of their respective obligations hereunder.
9.10 Successors and Assigns. This Agreement and the provisions thereof
shall be binding upon and inure to the benefit of the respective successors
and permitted assigns of the parties hereto.
9.11 Governing Law. The validity, construction, operation and effect of
any and all of the terms and provisions of this Agreement shall be determined
and enforced in accordance with the laws of *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
-27-
*
9.12 *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
-28-
*
9.13 *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
-29-
IN WITNESS WHEREOF, the parties have duly signed this Agreement the day
and year first written above.
I. C. XXXXXX & COMPANY L.P., a Delaware
limited partnership
By: /s/ Xxxxxx X. Xxxxx
----------------------------------
Name: Xxxxxx X. Xxxxx
Title: Chairman and Co-Chief Executive
Officer
By: /s/ Xxxxxx X. Xxxx
-----------------------------------
Name: Xxxxxx X. Xxxx
Title: President and Co-Chief Executive
Officer
*
By: /s/ *
------------------------------------
Name:
Title:
* hereby irrevocably and unconditionally guarantees to Seller the full
and timely performance of Buyer's obligations to Seller under this Agreement.
* covenants and agrees to indemnify and save harmless Seller from and
against any damage, liability and expense resulting from Buyer's breach of
this Agreement.
*
By: /s/ *
---------------------------------------
Name:
Title:
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
-30-
FOREIGN BOSS RIGHTS ACQUISITION AGREEMENT
EXHIBITS
Exhibit A Trademark Assignments
Exhibit B Assumption Agreement
Exhibit C Concurrent Use Agreement
Exhibit D Foreign Manufacturing Rights Agreement
Exhibit E Option Agreement
Exhibit F The ICI Note
Exhibit G Note Assumption Agreement
Exhibit H * Guaranty
Exhibit I Consent Agreement
Exhibit J Certain Provisions in Settlement Agreement
Exhibit K Form of Release
Exhibit L *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
-31-
FOREIGN
SCHEDULE 1.1(b)
ASSUMED AGREEMENTS
For all of the following agreements to the extent they apply outside the U.S.:
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
FOREIGN
SCHEDULE 4.3(b)
THIRD PARTY CONSENTS AND WAIVERS
Xxxx-Xxxxx-Xxxxxx approval.
Approval from secured lender, Congress Financial Corporation.
FOREIGN
SCHEDULE 4.4(a)
LITIGATION
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
FOREIGN
SCHEDULE 4.4(a)
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
FOREIGN
SCHEDULE 4.4(b)
JUDGMENTS AND ORDERS
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
FOREIGN
SCHEDULE 4.5.A
CURRENT BOSS LICENSES
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
FOREIGN
SCHEDULE 4.5.B
AGREEMENTS RE USE OF TRADEMARK
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
FOREIGN
SCHEDULE 4.5.B
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
2
SCHEDULE 4.6
ALIENATION OF RIGHTS
NONE
FOREIGN
SCHEDULE 5.3(B)
THIRD PARTY CONSENTS
NONE
EXHIBIT A/FRA
TRADEMARK ASSIGNMENT
This Assignment is effective as of the ____ day of __________________,
1997, by and between I.C. Xxxxxx, X.X., a Delaware Limited Partnership with
its principal place of business at 0000 Xxxx Xxxxxx Xxxxxxxxx, Xxxxxxxx 00000
("Assignor") and *, a Delaware corporation with its principal place of
business at 0000 Xxxxxx Xxxxxx, Xxxxxxxxxx, Xxxxxxxx 00000 and ("Assignee").
W I T N E S S E T H:
WHEREAS, Assignor is the owner of certain trademarks outside of the United
States of America except Mexico constituting or containing the word BOSS and the
Stylized B, including common law rights and rights in trademark registrations
and applications for registration outside the United States of America except
Mexico listed on the "Schedule of Trademarks" attached hereto, together with the
good will of the business outside the United States of America except Mexico
associated therewith (the "Trademarks");
WHEREAS Assignee desires to acquire all right, title and interest of
Assignor in and to the Trademarks;
NOW, THEREFORE, to All Whom It May Concern, be it known that for good and
valuable consideration, the receipt and adequacy of which are hereby
acknowledged, Assignor does hereby sell, assign, transfer and set over, to
Assignee, its successors and assigns forever, its entire right, title and
interest in and to the Trademarks, the same to be held and enjoyed by Assignee
for its own use and enjoyment, and for the use and enjoyment of its successors,
assigns or other legal representatives forever, as fully and entirely as the
same would have been held and enjoyed by Assignor had the assignment and sale
set forth herein not been made.
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
IN TESTIMONY WHEREOF, Assignor has caused these presents to be signed by
its officer thereunto duly authorized, and its corporate seal to be hereto
affixed.
I.C. XXXXXX, X.X.
By:__________________________
Name:
Title:
COUNTY OF NEW YORK :
:ss:
STATE OF NEW YORK :
On this ____ day of _____________, 1997, before me personally appeared
________________, to me personally known, who, being duty sworn, did say that he
is _________________ of ____________________, a Delaware Limited Partnership,
and that the foregoing instrument was signed and sealed on behalf of the
corporation by authority of its _____________________________, and that he
acknowledges such instrument to be the free deed and act of said corporation for
the purposes therein set forth and intending that this instrument be recorded.
______________________
Notary Public
-2-
SCHEDULE OF TRADEMARKS
I.C. Xxxxxx & Co., L.P.'s BOSS
Non-U.S. Trademark Applications/Registrations*
*
* Prior to Closing, the Acquisition Agreement shall not be deemed to be
breached by inclusion of incorrect information relating to the
Classification and Status in this Schedule. Said information shall be
reviewed, corrected if necessary, updated and confirmed by Seller prior to
Closing.
** For ease of reference the description of goods in this chart is
generalized.
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
EXHIBIT B/FRA
ASSIGNMENT AND ASSUMPTION AGREEMENT
THIS ASSIGNMENT AND ASSUMPTION AGREEMENT is made and entered into this
____ day of September, 1997, by and between I.C. Xxxxxx & Company L.P., a
Delaware limited partnership ("Xxxxxx") and *, a Delaware corporation *.
W I T N E S S E T H:
WHEREAS, Xxxxxx has agreed to sell, transfer and assign to *, and *
has agreed to purchase and accept from Xxxxxx certain assets of Xxxxxx
pursuant to a Foreign Boss Rights Acquisition Agreement entered into on
September __,1997 between Xxxxxx and * (the "Acquisition Agreement");
WHEREAS. * has agreed to assume certain obligations of Xxxxxx related
to said acquired assets;
NOW, THEREFORE, in consideration of the mutual covenants contained herein,
and other good and valuable consideration, the receipt and sufficiency of which
is hereby acknowledged, it is agreed as follows:
1. Capitalized terms used herein and not defined herein shall have the
meanings given such terms in the Acquisition Agreement.
2. Xxxxxx hereby assigns to * all its rights under the agreements
identified on the schedule attached hereto constituting the Assumed
Agreements insofar as they relate to the Trademarks acquired by * from Xxxxxx
pursuant to the Acquisition Agreement, and all files relating thereto, free
and clear of all Encumbrances.
3. * hereby assumes all obligations of Xxxxxx arising from and after
the date hereof under the Assumed Agreements solely insofar as they relate to
the use of the Trademark Assets after Closing.
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
IN WITNESS WHEREOF, the parties have hereunto set their hands and seals
the day, month and year first above written.
I.C. XXXXXX & COMPANY L.P., a Delaware
limited partnership
By ____________________________
Name: Xxxxxx X. Xxxxx
Title: Chairman and Co-Chief Executive
Officer
By: ____________________________
Name: Xxxxxx X. Xxxx
Title: President and Co-Chief Executive
Officer
*
By: __________________________
Name: __________________
Title: ___________________
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
-2-
SCHEDULE
See Schedule 1.1(b)
Exhibit C to 10.11
CONCURRENT USE AGREEMENT
THIS CONCURRENT USE AGREEMENT ("Agreement") is effective as of the ___
day of ______________, 1997 ("Effective Date"), by and between *, a
corporation of *, and I. C. Xxxxxx & Company L.P. ("XXXXXX"), a Delaware
Limited Partnership.
R E C I T A L S
A. * is the owner of various trademarks including the word "BOSS"
throughout the world and in the United States (* Marks"). * and its
predecessors in interest have used for many years the xxxx BOSS and * Marks
and have developed certain intellectual property rights in connection
therewith.
X. XXXXXX, as the successor in interest of Brookhurst, Inc., is the
owner of certain United States trademark rights in and registrations of the
word BOSS. XXXXXX and its predecessors in interest have used for many years
the xxxx BOSS on certain products in the United States and have developed
certain intellectual property rights in connection therewith.
C. The parties intend that consistent with the terms of this Agreement,
XXXXXX will be able to market Xxxxxx' Trademark Products (as defined below)
contemplated by this Agreement without causing confusion in the marketplace
with the * and related brands marketed by * ("* Trademark Products"), and
that * will be able to continue to market * Trademark Products without
causing confusion in the marketplace with the BOSS and related brands
marketed by XXXXXX.
NOW, THEREFORE, in consideration of the mutual agreements set forth in
this Agreement, the parties agree as follows:
1. DEFINITIONS
For purposes of this Agreement, the following terms shall have the
meanings set forth below:
a. "Xxxxxx' Xxxx" or "Xxxxxx' Marks" shall mean the trademarks BOSS in
the Microgramma Typestyle and the stylized B (as set forth on Exhibit A
attached hereto) whether used alone or in combination with other words or
symbols, with the appearance and/or style of the said trademark in compliance
with the provisions of Exhibit A.
b. "Xxxxxx' Trademark Product" or "Xxxxxx' Trademark Products" shall
mean solely the products listed in Exhibit B, Section I, as modified by
Section II, bearing Xxxxxx' Marks in compliance with Exhibit A and sold
pursuant to the schedule in Exhibit C.
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
c. "United States" mean the United States of America, its territories,
possessions and commonwealths, except Saipan and American Samoa. "United
States" includes, without limitations, Puerto Rico.
2. CONCURRENT USE AGREEMENT
a. Unless otherwise agreed to by the parties in writing, XXXXXX
agrees to use Xxxxxx' Trademark Products solely in accordance with Exhibits
A, B and C. The parties recognize, however, that the marketplace is an
ever changing environment and that it is not possible to predict the future
trends. Accordingly, to ensure that there is no substantial likelihood of
confusion between the marks of the parties, the parties agree that * shall,
solely at its discretion, have the right commencing on January 1, 2008 to
evaluate whether the type style and appearance of Xxxxxx' Marks remains
unlikely to cause confusion with the * Marks and may, in its sole discretion,
cause Xxxxxx to alter, change, amend or revise the typestyle and appearance
of Xxxxxx' Marks.
b. Unless otherwise agreed to by the parties in writing, XXXXXX agrees
that it shall not use the Xxxxxx' Marks in connection with the advertisement,
promotion, distribution or sale of any products other than Xxxxxx' Trademark
Products.
c. Unless otherwise agreed to by the parties in writing, XXXXXX agrees
that it will not distribute or sell any Xxxxxx' Trademark Products bearing
the Xxxxxx' Marks to athletic stores whose primary product line is composed
of products intended to be used in connection with golf, tennis, skiing,
sailing, windsurfing, motor sports or any combination thereof or at golf,
tennis, skiing, sailing, windsurfing, or motor sports athletic events,
without the prior written consent of *. The foregoing shall not prevent
XXXXXX from selling Xxxxxx' Trademark Products to general sporting goods
stores selling multiple lines of products for a variety of sports (e.g., *).
d. With respect to the limitations on the use of the Xxxxxx' Marks on
Xxxxxx' Trademark Products described in Exhibit A, XXXXXX shall begin to
phase some of the limitations into its product line beginning with products
produced by or for XXXXXX after January 1, 1998. Thereafter, * percent * of
the products bearing Xxxxxx' Marks produced by or for XXXXXX during the
period August 1, 1998 through December 31, 1998 (as measured by the number of
styles) must comply therewith. XXXXXX agrees to use its reasonable efforts
to ensure that * percent * of its projected volume of such goods comply with
the limitations described in Exhibit X. XXXXXX shall be in full compliance
with Exhibit A for all products bearing a BOSS xxxx produced on or after
December 31, 1998 and for that season and thereafter may not manufacture or
produce any products bearing a BOSS xxxx which are not in full compliance
with Exhibit A.
e. On those products listed on Exhibit C, * agrees to use the word
BOSS, whether used alone or in combination with other words, phrases or
designs on such
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
2
products solely in accordance with the price points contained in Exhibit C;
provided, however, that such Exhibit C shall not apply to such products used
or distributed by * or its licensees for promotional purposes.
f. * agrees that without XXXXXX' written consent, which consent may be
withheld in XXXXXX' sole discretion, * shall not license any nonaffiliated
third party to use * Marks alone in connection with the sale of the
sportswear products listed in Exhibit C at or below XXXXXX' maximum wholesale
prices listed therein.
g. Nothing herein is intended to or shall prevent or otherwise restrict
* from designing, manufacturing, advertising, promoting, distributing
or selling or licensing others to design, manufacture, distribute, advertise,
promote or sell in the United States any product, whether or not bearing a
xxxx including the word BOSS, listed in and consistent with Exhibit C, or any
other product not listed in Exhibit C, provided that such products do not use
the Microgramma typestyle shown in Exhibit A.
h. Neither * nor XXXXXX shall use on or in connection with apparel
bearing the word "BOSS" sold in the United States, any apparel style, design,
pattern, art work or color which are or have been primarily associated with
products distributed by the other (or any licensee of the other) except those
which are traditional or standard in the industry.
i. Notwithstanding any other provision of this Agreement, Xxxxxx may,
during 1998, use the Xxxxxx' Marks on the following goods so long as such
goods are not intended to be sold to the public and are intended to be used
solely in connection with and for the promotion of Xxxxxx' Trademark
Products: compact discs, videos, stickers, stick-on-tattoos, photographs and
posters, whistles, notebooks, lanyards, non-leather I.D. tags, basketballs,
cassette tapes, sweatbands and visors; provided further that XXXXXX shall not
contest in any way the manufacturing, distributing or selling by * or its
licensees of any of the above items with * Marks. Each year thereafter
XXXXXX shall submit for approval a list of goods it intends to use (subject
to the terms and conditions of this Section 2.i.) for promotional purposes.
* shall consider the request in good faith and advise XXXXXX within ten (10)
business days of receipt of such list which of the goods *, in the exercise
of its sole discretion, approves; provided however, that notwithstanding the
provision of Section 12.d., XXXXXX may seek arbitration solely as to whether *
has acted in good faith in considering XXXXXX' request. Absent such approval,
XXXXXX shall not use Xxxxxx' Marks on such goods.
j. Each party acknowledges the other party's legal and beneficial
ownership interests in and to its respective trademarks referred to herein
and undertakes that it will not take any action which may in any way impair
the other party's rights in its marks, including, without limitation, by
challenging or opposing, or raising or allowing to be raised, on any grounds
whatsoever, any questions concerning or obligations to the validity of the
other party's trademarks.
3
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
3. GEOGRAPHIC SCOPE OF AGREEMENT
x. XXXXXX acknowledges that * owns extensive trademark rights relating
to the word BOSS both within and outside of the United States. XXXXXX does
not and shall not own, or purport to own, any trademark rights relating to
the word BOSS outside of the United States.
x. XXXXXX agrees that it will not sell or offer for sale or resale
Xxxxxx Trademark Products anywhere in the world other than in the United
States. XXXXXX shall not sell or cause to be sold, directly or indirectly,
any Xxxxxx' Trademark Products to any party which XXXXXX knows, or has reason
to know, has resold or distributed, is reselling or distributing, or is
likely to resell or distribute such Xxxxxx' Trademark Products (i) outside of
the United States; or (ii) as duty free merchandise. Within thirty (30) days
after the Effective Date of this Agreement and thereafter from time to time
as is reasonable, XXXXXX shall advise each of its customers (other than
consumers or other end users) in writing of the restrictions on such sales.
c. The parties agree that XXXXXX may sell Xxxxxx' Trademark Products to
the United States military solely for resale on United States military
installations in the United States. In making such sales, XXXXXX shall seek
to obtain agreement from XXXXXX' United States military customers that
Xxxxxx' Trademark Products will not be sold in United States military
installations outside the United States ("Military Agreement").
(i) If XXXXXX is unable to obtain a Military Agreement with any
military customer, or if the obtaining of any such Military Agreement
substantially adversely affects XXXXXX' ability to make military sales in
the United States, then XXXXXX shall promptly notify *. Any such notice
by XXXXXX shall include a written explanation and documentation of all
efforts by XXXXXX to obtain such agreement and shall include (1) data
disclosing XXXXXX' sales of Xxxxxx' Trademark Products to the military
customer(s) at issue during the immediate prior 12-month period, (2)
projected sales of Xxxxxx' Trademark Products over the next 12-month
period, (3) the basis for XXXXXX' belief that obtaining such an agreement
will substantially adversely affect XXXXXX' military sales, and (4) all
information known or reasonably available to XXXXXX about sales of
Xxxxxx' Trademark Products by the military customer(s) at U.S. military
installations outside the United States.
(ii) Upon receipt of such notice and at * request, the parties shall
meet and confer within five (5) business days, to agree upon any further
steps to be taken by XXXXXX to obtain the Military Agreement. Thereafter,
absent an agreement between the parties on this issue, or in the event
such steps as may be agreed upon do not result in a Military Agreement
and XXXXXX does not agree to discontinue sales of Xxxxxx' Trademark
Products to any such military customer, *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
4
*
4. ADVERTISING AND PROMOTION
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
5
*
5 PREVENTION OF CONFUSION
a. The parties agree that adherence by both parties to the terms of
this Agreement will avoid confusion between their respective products.
b. The parties agree that nothing in this Agreement shall require
either party to do business with any third party wholesaler or retailer. The
parties further agree that each
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
6
party shall have the right at its sole discretion to take all steps necessary
to prevent its products from being offered for sale to the public in
proximity to the products of the other party or one of its licensees.
c. Except as otherwise provided herein, the parties agree that each
shall have no right to require the other to make any change in the rights or
obligations set forth in this Agreement. The parties further agree that they
will institute no legal action against each other based solely upon conduct
which is expressly permitted by and in accordance with this Agreement.
6. USE AND DISPLAY OF THE MARKS
XXXXXX agrees to use, in connection with the Xxxxxx' Trademark Products
only, labels, tags, signs, banners, stationery, order forms, business cards
and other forms of identification for such products which are consistent with
the terms of Exhibit A and Exhibit X. XXXXXX agrees that it shall not use
the name BOSS in any corporate, partnership or other trade name or as a form
of entity identification. XXXXXX shall not use the word BOSS or authorize
any third party to use the word BOSS in connection with the name of any store
or retail establishment; provided that nothing in this Section 6 shall be
construed as prohibiting use of the Xxxxxx' Marks in shop-within-a-shop
situations. XXXXXX may continue its factory outlet operations in proximity
to its distribution facilities which are currently located in Milford,
Delaware; provided, however, that the word BOSS shall not be used in or as
part of the name of the store. XXXXXX agrees to provide * with written notice
of any change in the location of such factory outlet. To the extent XXXXXX
uses and/or provides design layouts and/or fixtures for use in stores or
retail establishments, it shall not use design layouts and/or fixtures which
are or have been primarily associated with products distributed by * or its
licensees, except those which are traditional or standard in the industry.
7. NONTRANSFERABILITY OF RIGHTS
x. XXXXXX shall not grant, assign or otherwise convey or transfer any
rights inuring to XXXXXX or any obligations or duties owed by XXXXXX to *
under this Agreement, without the prior written consent of * and any
attempted transfer or assignment shall be null and void. * shall consider in
good faith any request for such consent and promptly notify XXXXXX of *
decision, said decision to be in * sole discretion. Nothing in this Section
7 is intended to prevent XXXXXX from offering and selling stock to the
public.
b. Notwithstanding anything to the contrary set forth in this
Agreement, XXXXXX shall be permitted to assign and transfer XXXXXX' rights
under this Agreement to any parent, subsidiary or other affiliate of XXXXXX
if XXXXXX or its successor in interest remains fully liable for the
performance of this Agreement by such Assignee or Transferee and indemnifies
7
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
* with respect to any costs and damages * may incur because of such
assignment or transfer.
c. * shall provide XXXXXX with written notice if *
intends to assign or transfer to any third party any of its rights or
obligations under this Agreement.
8. NO AFFILIATION
The parties hereby agree that XXXXXX is and shall be wholly independent
of *, and vice-versa, and that no agency, license, joint venture,
partnership, franchise or affiliation is created by this Agreement. Neither
party shall incur any obligation in the name of the other party.
9.*
10. LEGAL ACTIONS
a. Unless otherwise agreed to by the parties, the parties shall be
responsible for the protection and enforcement of their respective marks (*
for * Marks and XXXXXX for Xxxxxx' Marks) in the United States.
b. The parties agree to reasonably cooperate with and assist each
other in protecting and defending the parties' trademark rights (* Marks and
Xxxxxx' Marks). Each party shall promptly notify the other in writing of any
infringements, counterfeiting, claims or actions by third parties that the
party reasonably believes may be a violation of the other party's trademark
rights.
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
8
c. The parties agree that they shall determine solely at their own
discretion and not subject to dispute by the other party or review in any
arbitration or litigation their respective conduct of such protection and
enforcement, and neither party shall have a claim for damages or other relief
against the other based thereon.
d. * and XXXXXX shall each have the right to record, or continue the
recordation of, their respective trademarks (* Marks and Xxxxxx' Marks) with
the Customs Service of the United States and neither party shall interfere
with the efforts of the other, and each party shall cooperate with the other
in such efforts.
11. NOTICES
All notices, requests or other communications required or permitted
hereunder shall be given or made in writing and shall be (i) delivered
personally (including commercial carrier), (ii) sent by registered or
certified airmail, return receipt requested, postage prepaid or (iii) sent by
telecopier, addressed to the party to whom they are directed at the following
addresses, or at such other address as may from time to time be designated by
such party to the others in accordance with this Section 11:
If to *, to:
*
With a copy to:
Coudert Brothers
0000 X Xxxxxx, X.X.
Xxxxxxxxxx, X.X. 00000
Attention: Xxxxx X. Xxxxxx, Esq.
Telecopier: 202/775-1168
and
Howrey & Simon
0000 Xxxxxxxxxxxx Xxxxxx, X.X.
Xxxxxxxxxx, X.X. 00000
Attention: Xxxxxx X. Xxxxxxx, Esq.
Telecopier: 202/383-6610
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
9
If to XXXXXX, to:
I. C. Xxxxxx & Company L.P.
0000 Xxxx Xxxxxx
Xxxxxxxxx, Xxxxxxxx 00000
Attention: Xxxxxx X. Xxxx, President and Co-Chief Executive Officer
Telecopier: 410/558-2096
I. C. Xxxxxx & Company L.P.
000 Xxxxx Xxxxxx
Xxxxx 0000
Xxx Xxxx, Xxx Xxxx 00000
Attn: Xxxxxx X. Xxxxx, Chairman and Co-Chief Executive Officer
Telecopier: 212/695-7579
With a copy to:
Piper & Marbury L.L.P.
Xxxxxxx Center South
00 Xxxxx Xxxxxxx Xxxxxx
Xxxxxxxxx, Xxxxxxxx 00000-0000
Attention: Xxxxxx X. Xxxxxxx, Esq.
Telecopier: 410/576-1604
Any notice, request or other communications shall be deemed to have been
given and to be effective upon receipt or refusal by the addressee. Any party
may change its address for notices hereunder, effective upon giving of notice of
such change hereunder to the other parties.
12. GOVERNING LAW AND RESOLUTION OF DISPUTES
a. The validity, construction and effect of any and all of the terms and
provisions of this Agreement shall be determined and enforced in accordance
with the laws of *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
10
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
11
13. BINDING EFFECT
This Agreement shall be binding on the parties, their subsidiaries,
successors, affiliates, permitted licensees and assigns (if any), and they each
warrant that the undersigned are authorized to execute this Agreement on behalf
of their respective parties.
14. GENERAL PROVISIONS
a. No waiver or modification of any of the terms or provisions of this
Agreement shall be valid unless contained in a written document signed by
both parties. No course of conduct of dealing between the parties shall act
as a waiver of any provision of this Agreement.
b. This Agreement, including the entirety of Exhibits A through F2,
attached hereto, contains the entire understanding of the parties as to the
subject matter herein, and there are no representations, warranties, promises
or undertakings other than those contained herein. This Agreement supersedes
and cancels all previous agreements between the parties hereto. This
Agreement shall be construed against both parties equally, regardless of the
party that drafted it. *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
12
d. If any provision of this Agreement should be held to be void or
unenforceable, such provision will be treated as severable, leaving valid
the remainder of this Agreement.
e. The parties agree to execute promptly any documents necessary to
effectuate the purpose and intent of this Agreement.
f. This Agreement may be executed in any number of duplicate
counterparts, each of which shall be deemed an original and all of which
together shall constitute one and the same instrument.
g. Captions and paragraph headings used in this Agreement are for
convenience only and are not a part of this Agreement and shall not be used
in interpreting or construing it.
13
IN WITNESS WHEREOF, the parties agree that this Agreement shall take effect
as of the Effective Date.
*
By:
_______________________________
Name:
Title:
By:
_______________________________
Name:
Title:
I. C. XXXXXX & COMPANY L.P.
By:
_______________________________
Name: Xxxxxx X. Xxxxx
Title: Chairman and Co-Chief
Executive Officer
By:
_______________________________
Name: Xxxxxx X. Xxxx
Title: President and Co-Chief
Executive Officer
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
14
LIST OF EXHIBITS
Exhibit A: Specifications and limitations on XXXXXX' use of Xxxxxx' Marks
Exhibit B: List of products on which XXXXXX is permitted and forbidden to
use Xxxxxx' Marks
Exhibit C: Price Points
Exhibit D: XXXXXX advertising rules
Exhibit E: * advertising rules
Exhibit F1: *
Exhibit F2: *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
EXHIBIT A
XXXXXX MARKS
[LOGO]
( The Microgramma Typestyle )
[LOGO]
In using these Xxxxxx' Marks on Xxxxxx' Trademark Products and in all
advertising and promotional uses, XXXXXX will comply with the following:
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
2
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
3
*
8. Unless otherwise agreed to by the parties, XXXXXX shall not use the
terms * or any other words that are similar in sound, sight or meaning, as
exemplified in Attachment 8 to this Exhibit A. * In addition, the parties
may, from time to time, submit to each other exemplars of logos, designs or
decorative motifs which they are using or plan to use in the next selling
season, provided that such logos, designs, or decorative motifs shall not
have been used by the other party. The party so notified shall not use any
such logos, designs or decorative motifs, or anything similar to them in the
following selling season, without the other party's written permission;
provided, however, that either party may use logos, designs or decorative
motifs that are standard in the industry. Notwithstanding the foregoing,
XXXXXX shall not use any design or decorative motif similar to the BOSS SPORT
patch shown in Attachment 9 to Exhibit A.
9. For purposes of this Agreement, "polo shirt" or "polo shirts"
shall mean a pullover shirt for sportswear that is made of knitted fabric and
has short or long sleeves and a turnover collar or a round banded collar and
placket. In addition to all other rules herein applicable to tops, XXXXXX
may use the word "BOSS" by itself on the exterior of polo shirts only in
accordance with the following:
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
4
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
5
10. Prior to use, XXXXXX may submit to * for approval typestyles other
than Microgramma for the word "BOSS", provided those typestyles are less
similar to the typestyles used by * than the Microgramma typestyle used by
XXXXXX. XXXXXX shall not use any such typestyle unless *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
ATTACHMENT 1
TO EXHIBIT A
o Exemplars of interior and exterior permanent/temporary labels, tags, etc.
with acceptable "BOSS by I G Design."
BMA-1368 -- info tag [Graphic Logo]
THESE EXAMPLARS DO NOT SUPERSEDE
THE RATIO REQUIREMENTS AS OTHERWISE
PROVIDED BY THIS EXHIBIT A
BMA-1241R -- [Graphic Logo]
THESE EXAMPLARS DO NOT SUPERSEDE
THE RATIO REQUIREMENTS AS OTHERWISE
PROVIDED BY THIS EXHIBIT A
Jr. Hang Tag/BJ-537W
FRONT
[Graphic Logo]
22 DEG. ANGLE
6 TO 1 RATIO
THESE EXAMPLARS DO NOT SUPERSEDE
THE RATIO REQUIREMENTS AS OTHERWISE
PROVIDED BY THIS EXHIBIT A
BMA-458 -- [Graphic Logo]
THESE EXAMPLARS DO NOT SUPERSEDE
THE RATIO REQUIREMENTS AS OTHERWISE
PROVIDED BY THIS EXHIBIT A
Jr. Hang Tag/BJ-537
BACK
[Graphic Logo]
22 DEG. ANGLE
6 TO 1 RATIO
THESE EXAMPLARS DO NOT SUPERSEDE
THE RATIO REQUIREMENTS AS OTHERWISE
PROVIDED BY THIS EXHIBIT A
[Graphic Logo]
BMA-1242
22 DEG. ANGLE
6 TO 1 RATIO
THESE EXAMPLARS DO NOT SUPERSEDE
THE RATIO REQUIREMENTS AS OTHERWISE
PROVIDED BY THIS EXHIBIT A
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo]
[Graphic Logo]
ATTACHMENT 2
TO EXHIBIT A
o Exemplars of acceptable graphic environments.
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo] -- Jeans
[Graphic Logo] -- Jeans
[Graphic Logo] -- Jeans
[Graphic Logo] *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
[Graphic Logo]
[Graphic Logo] -- Shirt
[Graphic Logo]
[Graphic Logo]
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo] -- Shirt
[Graphic Logo]
[Graphic Logo]
[Graphic Logo] -- Shirt
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
o Exemplars of unacceptable graphic environments
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo] -- Shirt
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo] -- Jeans
[Graphic Logo] -- Shirt
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
ATTACHMENT 3
TO EXHIBIT A
o Exemplars of acceptable distorted letters.
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo] -- Jeans
[Graphic Logo] -- Jeans
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
ATTACHMENT 4
TO EXHIBIT A
o Exemplars of 24(degree) slant.
[Graphic Logo]
ATTACHMENT 5
TO EXHIBIT A
o Exemplars of 22(degree) slant.
[Graphic Logo]
ATTACHMENT 6A
TO EXHIBIT A
o Exemplars of vertical alignment.
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo] -- Jeans
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo] -- Jeans
[Graphic Logo] -- Jeans
[Graphic Logo] -- Shirt
[Graphic Logo]
[Graphic Logo] -- Jeans
[Graphic Logo]
ATTACHMENT 6B
TO EXHIBIT A
o Exemplars of 19(degree) slant.
[Graphic Logo]
ATTACHMENT 7A
TO EXHIBIT A
o Exemplars of acceptable vertical BOSS logos.
[Graphic Logo] -- Shirt
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
ATTACHMENT 7B
TO EXHIBIT A
o Exemplars of unacceptable vertical BOSS logos.
[Graphic Logo]
ATTACHMENT 8
TO EXHIBIT A
o Exemplars of forbidden words.
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
ATTACHMENT 9
TO EXHIBIT A
o The BOSS Sport Patch
[Graphic Logo]--Shirt
[Graphic Logo]
ATTACHMENT 10
TO EXHIBIT A
o Exemplars of acceptable coloration for "BOSS by I G Design" on polo
shirts.
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
o Exemplar of unacceptable coloration for "BOSS by I G Design" on polo
shirts.
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
ATTACHMENT 11
TO EXHIBIT A
o Exemplar of acceptable shirts under Exhibit A, Section 9.a.
[Graphic shirts]
[Graphic Logo] -- Shirts
[Graphic Logo] -- Shirts
[Graphic shirts]
[Graphic Logo] -- Shirts
[Graphic Logo] -- Shirts
o Exemplar of acceptable shirts under Exhibit A, Section 9.b.
[Graphic Logo] -- Shirts
[Graphic shirts]
[Graphic Logo] -- Shirts
[Graphic Logo] -- Shirts
o Exemplar of acceptable shirts under Exhibit A, Section 9.c.
[Graphic shirts]
[Graphic Logo] -- Shirts
[Graphic Logo] -- Shirts
[Graphic shirts]
[Graphic Logo] -- Shirts
[Graphic Logo] -- Shirts
[Graphic Logo] -- Shirts
[Graphic Logo] -- Shirts
EXHIBIT B
I. PRODUCTS BEARING XXXXXX' MARKS THAT XXXXXX MAY SELL
A. Men's Apparel
1. Sportswear and Activewear. All sportswear and activewear clothing
other than the exclusions listed below. All fabrications may be
used.
2. Outerwear. All jackets, coats, vests, capes and ponchos other than
the exclusions listed below. Such outerwear garments may be
reversible, lined, unlined, filled and or fabric treated
(waterproofed, coated, etc.) and may have detachable sleeves, hoods
and/or interlinings. Lengths of such garments shall be 22" to 60".
All fabrications may be used except fur (except as trim) and leather
(except as trim).
3. Headwear. All sports hats, visors and caps.
4. Swimwear. All types of swimwear.
5. Jogging Suits. All types of warm-ups and jogging suits of any
fabrication
6. Belts. Belts bearing Xxxxxx' Marks provided that such belts shall be
sold only as part of a Bottom and shall not be made out of leather.
B. Women's Apparel
1. Sportswear and Activewear. All sportswear and activewear clothing
for juniors, contemporary, misses and large sizes other than the
exclusions listed below. All fabrications may be used.
2. Outerwear. All jackets coats, vests, capes and ponchos other than
the exclusions listed below. Such outerwear garments may be
reversible, lined, unlined, filled and/or fabric treated
(waterproofed coated, etc.) and may have detachable sleeves, hoods
and/or interlinings. Lengths of such garments shall be 22" to 60".
All fabrications may be used except fur (except as trim) and leather
(except as trim).
3. Headwear. All sports hats, visors and caps.
4. Swimwear. All types of swimwear.
5. Jogging Suits. All types of warm-ups and jogging suits of any
fabrication.
6. Belts. All belts bearing Xxxxxx' Marks provided that such belts
shall be sold only as part of a Bottom and shall not be made out of
leather.
7. Other. Women's knit garments to be worn on the upper torso that are
either snapped or fixed through the crotch and the top portion of
which may be a halter, shoulder strap, short sleeve or long sleeve.
C. Children's Apparel
l. Children's Sportswear and Activewear. All sportswear and activewear
clothing other than the exclusions listed below. All fabrications
may be used.
2. Outerwear. All jackets, coats, vests, capes and ponchos other than
the exclusions listed below. Such outerwear garments may be
reversible, lined, unlined, filled and/or fabric treated
(waterproofed, coated, etc.) and may have detachable sleeves, hoods
and/or interlinings. All fabrications may be used except fur (except
as trim) and leather (except as trim).
3. Headwear. All sports hats, visors and caps.
4. Swimwear. All types of swimwear.
5. Jogging Suits. All types of warm-ups and jogging suits of any
fabrication.
6. Belts. All belts bearing Xxxxxx' Marks provided that such belts
shall be sold only as part of a Bottom and shall not be made out of
leather.
D. Other
1. All apparel, including uniforms and work clothes, which is intended to be
worn solely and exclusively while persons are performing the normal duties
of their employment.
II. PRODUCTS BEARING XXXXXX' MARKS THAT XXXXXX SHALL NOT SELL
A. Notwithstanding the foregoing, the parties agree that Xxxxxx' Trademark
Products do not include any of the following men's, women's or children's
apparel:
1. All styles of tailored clothing, furnishings and accessories,
including but not limited to tuxedos, gowns and evening wear, sportcoats,
blazers, jackets, suits, dress pants, career apparel including blouses,
skirts and dresses, raincoats, top coats, dress shirts, ties, dress vests,
hosiery (including but not limited to socks, stockings and hose), and
leather belts.
2. All types of leather clothing (although leather trim may be used
on all products listed in Section I of this Exhibit B).
3. All styles of shoes and other footwear.
4. Clothing designed and sold for the primary purpose of engaging in
[to be deleted and dealt with in * Boss Golf License Agreement]
golf, tennis, skiing, motor sports, windsurfing, or sailing.
5. Except as described in Exhibit B Section I.B.7. above, bodywear,
including but not limited to underwear (including t-shirts intended to be
worn as underwear); loungewear and intimate apparel; and sleepwear and
robes.
B. Except as agreed upon in writing by the parties, the parties further
agree that Xxxxxx' Trademark Products shall not include any non-apparel products
of any kind.
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
EXHIBIT 10.11(c)(3)
EXHIBIT C
PRICE POINTS
1. XXXXXX shall sell products bearing Xxxxxx' Marks and permitted under
the schedule contained in Exhibit B that bear wholesale prices prior to any
bona fide trade, quantity and early payment discounts and any other credits,
no greater than those listed below. * shall sell or license others to sell
products bearing * Marks and permitted under the schedule contained in
Exhibit B that bear wholesale prices prior to any bona fide trade, quantity
and early payment discounts and any other credits, no less than those listed
below:
--------------------------------------------------------------------------------
*
XXXXXX' MAXIMUM MINIMUM
WHOLESALE WHOLESALE
--------------------------------------------------------------------------------
All long bottoms except jeans and warm-up
(or jogging) suits
--------------------------------------------------------------------------------
Cotton * *
--------------------------------------------------------------------------------
Synthetic Blend * *
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
All short bottoms except jeans and warm-up
(or jogging) suits
--------------------------------------------------------------------------------
Cotton * *
--------------------------------------------------------------------------------
Synthetic Blend * *
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
Jeans
--------------------------------------------------------------------------------
Basic * *
--------------------------------------------------------------------------------
Fashion * *
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
Xxxx Shorts
--------------------------------------------------------------------------------
Basic * *
--------------------------------------------------------------------------------
Fashion * *
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
Overalls
--------------------------------------------------------------------------------
Short * *
--------------------------------------------------------------------------------
Long * *
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
Outerwear
--------------------------------------------------------------------------------
Filled * *
--------------------------------------------------------------------------------
Lined * *
--------------------------------------------------------------------------------
Waterproof * *
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
Vest
--------------------------------------------------------------------------------
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
--------------------------------------------------------------------------------
*
XXXXXX' MAXIMUM MINIMUM
WHOLESALE WHOLESALE
--------------------------------------------------------------------------------
Filled * *
--------------------------------------------------------------------------------
Lined * *
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
Polo Shirts and Knit Tops
--------------------------------------------------------------------------------
Basic Short * *
--------------------------------------------------------------------------------
Basic Long * *
--------------------------------------------------------------------------------
Fashion Short * *
--------------------------------------------------------------------------------
Fashion Long * *
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
Sweatshirts
--------------------------------------------------------------------------------
Basic * *
--------------------------------------------------------------------------------
Fashion * *
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
Warm-up (or jogging) suits
--------------------------------------------------------------------------------
Cotton * *
--------------------------------------------------------------------------------
Synthetic * *
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
T-shirts
--------------------------------------------------------------------------------
Basic * *
--------------------------------------------------------------------------------
Fashion * *
--------------------------------------------------------------------------------
Embroidered * *
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
Sweaters
--------------------------------------------------------------------------------
Basic * *
--------------------------------------------------------------------------------
Fashion * *
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
Hats
--------------------------------------------------------------------------------
Basic * *
--------------------------------------------------------------------------------
Fashion * *
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
Woven Shirts
--------------------------------------------------------------------------------
Basic Short * *
--------------------------------------------------------------------------------
Basic Long * *
--------------------------------------------------------------------------------
Fashion Short * *
--------------------------------------------------------------------------------
Fashion Long * *
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
Swimwear
--------------------------------------------------------------------------------
Basic * *
--------------------------------------------------------------------------------
Fashion * *
--------------------------------------------------------------------------------
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
2. All price points are expressed in 1997 dollars. XXXXXX price points
shall adjust over the term of this Agreement with changes in the rate of
inflation applicable to clothing according to the Producer Price Index for
Apparel and Other Finished Products Made From Fabrics and Similar Materials.
* price points shall remain as stated herein.
3. To the extent XXXXXX desires to add additional products to its line, or
to the extent either party desires to use fabrics or constructions materially
different from those currently being used consistent with the limitations of
Exhibit B, the parties will in good faith negotiate reasonable price points
applicable to such products.
4. The parties agree that the price points included in this Exhibit C are
based upon existing market conditions and reasonably foreseeable changes in such
market conditions. In the event that market conditions relating to the
manufacture, distribution or sale of products contained in Exhibit B should
change substantially, to a degree not contemplated by the price points in this
Exhibit C, and such change would result in economic hardship to a party to this
Agreement, the parties agree to negotiate in good faith to agree upon reasonable
alternative price points.
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
EXHIBIT 10.11(c)(4)
EXHIBIT D
ADVERTISING AND PROMOTION
(XXXXXX)
1. On all advertising and promotional materials for Isaac's Trademark
Products, XXXXXX may use the word "BOSS", provided the phrase "BOSS by I G
Design" appears at least once in accordance with the rules listed in Sections 2.
3 and 4 below of this Exhibit D.
2. In all print or Internet advertising and promotions for Xxxxxx'
Trademark Products, whether by XXXXXX, or by retailers, or by any other entity
authorized by XXXXXX, each and every page shall prominently feature "BOSS by I G
Design" as illustrated by the acceptable exemplars shown in Attachment 1 to this
Exhibit D.
3. In all radio, television and motion picture advertising for Xxxxxx'
Trademark Products, the first and last time BOSS is shown or mentioned, it shall
be as part of the phrase "BOSS by I G Design".
4. In all visual presentations of the phrase "BOSS by I G Design" in
advertising and promotions for Xxxxxx' Trademark Products, including but not
limited to print, Internet, television, motion picture, billboards, posters,
flyers, in-store signage, point-of-sale displays, sports sponsorships,
promotional tie-ins and/or samples, whether by XXXXXX, or by retailers, or by
any other entity authorized by XXXXXX, the size ratio between the word "BOSS"
and the phrase "I G Design" shall be similar to, and in no event greater than,
that shown in Attachment 1 to this Exhibit D.
5. XXXXXX shall be entitled to display Xxxxxx' Trademark Products and
people wearing Xxxxxx' Trademark Products in all advertising and promotional
material, provided that such Xxxxxx' Trademark Products comply with Exhibit A
and Exhibit B.
6. Nothing in this Agreement is intended to give * any right to
approve or disapprove any aspect of the contents of any advertising other than
as expressly set forth above and in Exhibit A and Exhibit B; provided, however,
that XXXXXX shall not use any advertising style or format which is or has been
primarily associated with * advertising of its products other than
those which are traditional or standard in the industry.
7. XXXXXX agrees to take reasonable steps to achieve compliance with this
Exhibit D in advertising and promotions by retailers and other entities
authorized by XXXXXX including, but not limited to, providing such entities
periodically with appropriate guidelines for use of the Xxxxxx' Marks consistent
with this Agreement. However, acts of retailers and other entities which are
beyond the control of XXXXXX will not constitute a breach of this Agreement.
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
ATTACHMENT 1 TO
EXHIBIT D
o Exemplars of BOSS/I G Design.
For all uses where the word "BOSS" is less than one inch (1"):
(4:1)
1/2" 22(degrees) WIDE/CAPS 4-1
(graphic logo)
4/4/97
1/2" 22(degrees) NARROW/LOWER CASE 4-1
(graphic logo)
4/4/97
1/2" STRT.NARROW/LOWER CASE 4-1
(graphic logo)
4/4/97
1/2" STRAIGHT NARROW/CAPS 4-1
(graphic logo)
4/4/97
1/2" 22(degrees) NARROW/CAPS 4-1
(graphic logo)
4/4/97
1/2" STRT.WIDE/CAPS 4-1
(graphic logo)
4/4/97
1/2" 22(degrees) WIDE/LOWER CASE 4-1
(graphic logo)
4/4/97
1/2" STRT.WIDE/LOWER CASE 4-1
(graphic logo)
4/4/97
For all uses where the word "BOSS" is one inch (1") or larger:
(5:1)
1" 22(degrees) WIDE/LOWER 5:1
(graphic logo)
4/4/97
1" STRT.WIDE/CAPS 5:1
(graphic logo)
4/4/97
1" STRT.(degree)WIDE/LOWER CASE 5:1
(graphic logo)
4/4/97
1" 22(degrees)WIDE/CAPS 5:1
(graphic logo)
4/4/97
10.11(c)(5)
EXHIBIT E
ADVERTISING
( * )
1. In all print or Internet advertising for products listed in Exhibit
B, Section I as modified by Exhibit B, Section II, whether by *, or by
retailers, or by any other entity authorized by *, each and every page shall
prominently feature the words "*", regardless of whether these words appear
alone or in connection or combination with any other words.
2. In all radio, television and motion picture advertising for products
listed in Exhibit B, Section I as modified by Exhibit B, Section II, the
first and last time the word "BOSS" is shown or mentioned, it shall include
the phrase "*", regardless of whether these words appear alone or in
connection or combination with any other words.
3. Nothing in this Agreement is intended to give XXXXXX any right to
approve or disapprove any aspect of the contents of any advertising other
than as set forth above; provided, however, that * shall not use any
advertising style or format which is or has been primarily associated with
XXXXXX' advertising of Xxxxxx' Trademark Products, other than those which are
traditional or standard in the industry.
4. * agrees to take reasonable steps to achieve compliance with this
Exhibit E in advertising and promotions by retailers and other entities
authorized by * including, but not limited to, providing such entities
periodically with appropriate guidelines for use of the words "*" consistent
with this Agreement. However, acts of retailers and other entities which are
beyond the control of * will not constitute a breach of this Agreement.
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
10.11(c)(6)
EXHIBIT F1
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
10.11(c)(7)
EXHIBIT F2
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
Exhibit D to 10.11
FOREIGN MANUFACTURING RIGHTS AGREEMENT
THIS FOREIGN MANUFACTURING RIGHTS AGREEMENT ("Agreement") is entered
into and effective as of the ____ day of ____________, 1997 ("Effective
Date"), by and between * a Delaware corporation ("LICENSOR") and I. C. Xxxxxx
& Company L.P. ("LICENSEE"), a Delaware limited partnership.
R E C I T A L S
A. LICENSOR is the successor in interest of I. C. Xxxxxx & Company L.P.
which is in turn, the successor-in-interest of Brookhurst, Inc., to certain
trademark rights outside the United States (as defined below) including in
the Territory, as defined below, in the word BOSS.
B. LICENSEE desires to obtain a license to be able to cause others to
manufacture such products in the Territory and LICENSOR is willing to license
such trademarks to LICENSEE for such purpose in accordance with the terms
hereof.
C. In countries where necessary and appropriate, LICENSOR desires that
LICENSEE be recorded as a registered user of the Marks (as hereinafter
defined) in relation to the manufacture of the Licensed Products in the
Territory.
NOW, THEREFORE, in consideration of the mutual agreements set forth in
this Agreement, the parties agree as follows:
1. DEFINITIONS
For purposes of this Agreement, the following terms shall have the
meanings set forth below:
a. "Xxxx" or "Marks" shall mean the trademarks BOSS and the stylized
BOSS (as set forth on Exhibit A attached hereto) whether used alone or in
combination with other words, phrases or designs, with the appearance and/or
style of the said trademark in compliance with the provisions of Exhibit A.
b. *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
c. "Licensed Product" or "Licensed Products" shall mean solely the
products specified in Exhibit B attached hereto bearing Marks in compliance
with Exhibit A.
d. "Territory" or "Licensed Territory" shall mean any and all countries
listed on Exhibit C.
e. "United States" shall mean the United States of America, its
territories, possessions and commonwealths, except Saipan and American Samoa.
"United States" includes, without limitation, Puerto Rico.
f. *
g. *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
2
2. RIGHTS GRANTED
a. LICENSEE acknowledges that LICENSOR owns, pursuant to that certain
Foreign Boss Rights Acquisition Agreement between LICENSOR and LICENSEE dated
September 30, any and all trademark rights relating to the word BOSS within
the Licensed Territory that BROOKHURST transferred to LICENSEE pursuant to
that certain Worldwide Rights Acquisition Agreement between LICENSEE,
BROOKHURST and Xxxxxxx Xxx dated September 30, 1997. LICENSEE acknowledges
that it does not own, or purport to own, any trademark rights relating to the
word BOSS in the Licensed Territory. Unless specifically stated to the
contrary, the provisions of this Agreement relate solely to use of the Marks
within the Licensed Territory and are not intended to apply to LICENSEE'S
activities in the United States.
b. LICENSOR hereby grants to LICENSEE, and LICENSEE accepts, upon the
terms and conditions set forth herein, a limited, nonexclusive right and
license to use, and to cause and permit third-party manufacturers
("Designated Manufacturer(s)") to use, the Marks solely in connection with
the manufacture of Licensed Products, labels, displays, and other materials
used in connection with the Licensed Products within the Territory for sale
solely to LICENSEE. The license and rights granted to LICENSEE under this
Agreement are sometimes referred to herein as the "Licensed Rights."
c. LICENSEE shall require that the Designated Manufacturer(s) perform
all obligations ascribed to such Designated Manufacturer(s) under this
Agreement, including but not limited to those obligations listed in Section
2.c. (i-xxii), and shall, within sixty (60) days of the effective date of
this Agreement, require each Designated Manufacturer(s) to enter into a
binding written agreement (whether by purchase order or otherwise) with
LICENSEE, under which each such Designated Manufacturer(s) agrees to
undertake the following obligations:
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
3
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
4
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
5
*
f. Notwithstanding Section 2.b. above, LICENSEE may manufacture or
cause others to manufacture the Licensed Products within the Licensed
Territory subject to the terms and restrictions contained in this Section.
The parties agree that they will amend Exhibit C to include countries listed
in Exhibit C1 upon (or as soon thereafter as is practicable) the issuance to
*, or its designee, in each such country, of trademark registration(s) for
the word BOSS for use on products listed in Exhibit B, Section I, as modified
by Section II; provided, however, that any such amendment shall conform to
and be limited by the scope of any such trademark registration obtained. In
those countries listed in Exhibit C1 where * presently has no trademark
application(s) pending, LICENSOR agrees, upon the
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
6
written request of LICENSEE, to cause * to make such application, and to take
appropriate steps to prosecute such application and LICENSEE agrees to
reimburse * for * of the costs, including attorney's fees and filing fees, of
obtaining such registration. The parties agree that they will amend Exhibit
C to include Exhibit C2 when the later of the following two events occurs (or
as soon thereafter as is practicable): (1) the issuance to * or its
designee, of trademark registrations for the word BOSS for use on products
listed in Exhibit B, Section I, as modified by Section II, or (2) the
resolution to the satisfaction of * of pending disputes among third parties.
At any time after the execution of this Agreement, LICENSEE may notify
LICENSOR of countries other than those referenced in Exhibits C, C1 and C2 in
which LICENSEE desires to manufacture Licensed Products. LICENSOR shall
consider such a request in good faith, and consistent with the principles
incorporated above relating to the countries listed in Exhibit C. If
LICENSOR agrees to any such request, LICENSOR and LICENSEE will either amend
this Agreement, or execute a separate manufacturing rights agreement upon
mutually agreeable terms as set forth above. The parties agree to execute
individual Manufacturing Rights Agreements for any country on Exhibit C, if
required by the laws or regulations of that country or to protect the Xxxx.
LICENSEE shall only manufacture or cause others to manufacture Licensed
Products in those countries identified in Exhibit C or any other country as
may be later agreed upon pursuant to this section; provided, however, that
nothing in this subsection 2.f. shall prevent LICENSEE from manufacturing
goods in the United States pursuant to its own trademark rights.
g. Notwithstanding Section 2.b. hereof, neither LICENSEE nor the
Designated Manufacturer(s) shall have the right to use the Marks in the
Licensed Territory in any manner that conflicts with the rights of any third
party. For purposes of this Section 2.g., the term "third party" shall not
include any natural person under control of LICENSOR, any entity owned by,
controlled by, or affiliated with LICENSOR, any natural person or entity that
owns or controls LICENSOR, or any entity with whom LICENSOR enters into an
agreement relating to, or creating, the rights that conflict with LICENSEE'S
rights hereunder. If the use of the Marks on any or all of the Licensed
Products conflicts with the rights of any third party, or if a third party
makes a bona fide claim alleging such a conflict, LICENSEE agrees to
immediately terminate or modify such use in accordance with LICENSOR'S
reasonable instructions, and LICENSEE shall have no right of damage or offset
in connection with this Agreement. In the event LICENSEE fails to terminate
or modify such use, as reasonably directed by LICENSOR, LICENSOR may
terminate this Agreement under the provisions of Section 15 below as to such
country in which the rights of the third party exists or with respect to
which a bona fide claim has been made without limiting LICENSOR'S other
rights and remedies hereunder or at law or in equity. *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
7
h. *
i. LICENSOR shall obtain from * throughout the term of this Agreement a
license of such of its rights (if any) relating to the manufacture of the
Products under the Marks as it possesses in the Territory such that LICENSOR
may sublicense said rights (if any) to LICENSEE to the extent described in
the grant of rights set forth in Section 2.a. and .b. hereof, and LICENSOR
hereby acknowledges that it is sublicensing said rights to LICENSEE under
said Section 2.a. and .b.
*
*
3. TRANSFER AND OWNERSHIP OF PROPERTY
a. LICENSEE agrees that, during the term of this Agreement, it shall
not use the Marks in the Territory in any manner other than as expressly set
forth in this Agreement.
b. LICENSEE agrees that LICENSOR is and shall be the sole owner of all
items of Property. Subject to the express requirements of Exhibit A, Exhibit
B and Exhibit C of this Agreement, the parties agree that LICENSOR shall have
no right to prevent LICENSEE from using, during or after the term of this
Agreement, any fabrics, styles, designs and colors that are standard or
traditional in the industry or not primarily associated with the Licensed
Rights.
c. Following termination of this Agreement, LICENSEE agrees that it
will terminate any and all use of the Marks in the Territory, except as
otherwise expressly provided in this Agreement.
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
8
4. *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
9
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
10
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
11
*
5. TERM
a. This Agreement shall continue in full force and effect until
December 31, 2001, when it shall terminate, unless renewed in accordance with
the terms below, or unless terminated sooner in accordance with the terms and
conditions set forth in this Agreement.
b. LICENSEE may, at it sole option, renew this Agreement for a period
of three (3) additional years commencing on January 1, 2002, and ending
December 31, 2004, if LICENSEE provides written notice of its intention to
extend by no later than June 30, 2001. LICENSEE may, at its sole option,
extend the term of this Agreement for an additional three (3) year period
commencing on January 1, 2005, and ending on December 31, 2007, if LICENSEE
provides written notice of its intention to extend by no later than June 30,
2004.
c. With respect to the limitations on the use of the Xxxx described in
Exhibit A, LICENSEE shall begin to phase some of the limitations into its
product line beginning with products produced by or for LICENSEE after
January 1, 1998. Thereafter, * of the products bearing the Marks produced by
or for LICENSEE during the period August 1, 1998 through December 31, 1998
(as measured by the number of styles) must comply therewith. LICENSEE agrees
to use its reasonable efforts to ensure that * of its projected volume of
such goods comply with the limitations described in Exhibit A. LICENSEE shall
be in full compliance with Exhibit A for all products bearing the Marks
produced on or after December 31, 1998 and for that season and thereafter may
not manufacture or produce any products bearing the Marks which are not in
full compliance with Exhibit A.
6. LICENSE FEE AND ROYALTIES
a. LICENSEE agrees to pay to LICENSOR a royalty on Licensed Products
manufactured in the Territory by or on behalf of LICENSEE in accordance with
Exhibit F attached hereto. *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
12
b. *
c. *
7. *
b. All payments required under this Agreement shall be in U.S. Dollars
and made payable to the order of "*"
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
13
*
d. LICENSEE acknowledges and agrees that any manner of payment other
than that stated herein, or as required by law, including, without
limitation, offsets, payment into an escrow account or to any other third
party, shall constitute a material breach of this Agreement.
8. BOOKS AND RECORDS
a. LICENSEE shall keep complete and accurate records of all Licensed
Products manufactured and of LICENSEE'S activities under this Agreement, and
shall make the same readily available to LICENSOR and its agents and
representatives at such reasonable times as LICENSOR may from time to time
request for inspection, copying and extracting.
b. Such books and records shall be kept in accordance with generally
accepted accounting principles, consistently applied, and shall be retained
by LICENSEE and *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
14
*
d. No later than one hundred twenty (120) days after the close of
LICENSEE's fiscal year, LICENSEE shall provide LICENSOR with its annual
financial statements, audited or unaudited, prepared by an independent
certified accountant. If unaudited, an officer of LICENSEE shall certify
under penalty of perjury that the financial statements are true and correct,
and have been prepared in accordance with generally accepted accounting
principles, consistently applied.
e. LICENSOR agrees that it will maintain in confidence those records of
LICENSEE disclosed to LICENSOR pursuant to paragraphs 8.a., 8.c., and 8.d.
above and any other oral or written confidential information about LICENSEE's
business and product line disclosed to LICENSOR.
9. LABELING
LICENSEE agrees to use the proper trademark and copyright notices in
connection with the Marks in the Territory. Upon the execution of this
Agreement, LICENSEE shall no longer place orders in the Territory for
Licensed Products bearing any prior trademark and copyright notice in
connection with the Licensed Rights and will take reasonable steps to ensure
that such goods are no longer manufactured in the Territory; provided,
however, that LICENSEE shall not be required to remove prior trademark and
copyright notices already affixed to such garments or to unreasonably disrupt
work in progress; any other changes shall be subject to a reasonable phase-in
period. Where appropriate, such notices shall appear in the screen for any
screen-printed design, in the salvage of any fabric, in the neck label or
waist label of any Licensed Products, and on any label or tag affixed to the
Licensed Products or otherwise attached to the Licensed Products.
10. OWNERSHIP OF THE MARKS
a. LICENSEE agrees that it has no right to ownership in the Marks in
the Territory and, in furtherance thereof, hereby transfers and conveys all
rights, title and interest, if any, in the Marks to *, and will
not at any time represent or authorize a Designated Manufacturer(s) to
represent that such manufacturer has any title or right of ownership in the
Marks.
b. LICENSEE agrees that nothing contained in this Agreement shall give
to LICENSEE or the Designated Manufacturer(s) any right, title or interest in
the Marks except the limited license granted to LICENSEE herein, that such
Licensed Rights are the sole and exclusive property of LICENSOR and that all
such uses by LICENSEE or the Designated Manufacturer(s) of the Licensed
Rights shall inure only to the benefit of LICENSOR.
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
15
c. LICENSEE agrees that it will not seek or obtain any registration of
the Marks in any name or participate directly or indirectly in such
registration without LICENSOR'S prior written permission. Subject solely to
the rights and interest granted herein, LICENSEE further agrees and
acknowledges that if it has obtained or obtains in the future, in the
Territory, any right, title or interest in the Marks, or in any marks which
are confusingly similar to the Licensed Rights, or in any other trademark or
service xxxx owned by LICENSOR, that LICENSEE has acted or will act as an
agent and for the benefit of LICENSOR for the limited purpose of obtaining
such registrations in the name and on behalf of LICENSOR. LICENSEE further
agrees to execute any and all instruments deemed by LICENSOR and/or its
attorneys or representatives to be necessary to transfer such right, title or
interest to LICENSOR.
d. LICENSEE agrees not to take any action which may in any way impair
LICENSOR's rights in and to the Marks, including, without limitation,
challenging or opposing, or raising or allowing to be raised, either during
the term of this Agreement or after its termination, on any grounds
whatsoever, any questions concerning, or objections to, the validity of the
Marks or LICENSOR'S rights therein, or any other trademarks or service marks
owned by LICENSOR containing the word BOSS in any manner.
e. *
f. LICENSEE acknowledges that materials related to this Agreement and
uniquely and specifically associated with the Marks and/or the Licensed
Products (collectively "Works"), whether developed solely by LICENSEE or
jointly with others may qualify for copyright protection under applicable
local laws. LICENSEE agrees that such Works are to be deemed as Works "made
for hire" for the benefit of LICENSOR and that if such Works, by operation of
law or otherwise, are not Works "made for Hire," LICENSEE agrees (i) to
assign, and does hereby assign, to LICENSOR or its designee any and all of
LICENSEE'S right, title and interest in the copyright in such Works
throughout the world, and (ii) not to seek or obtain registration of such
copyright in its own name.
g. *
11. INSURANCE
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
16
*
b. LICENSEE shall provide to LICENSOR, within thirty (30) days of the
Effective Date of this Agreement, a certificate showing proof that such
policy of insurance is in effect. In no event shall LICENSEE manufacture,
offer for sale, sell, advertise, promote, ship and/or distribute the Licensed
Products prior to the receipt by LICENSOR of such certificate of insurance.
c. LICENSEE agrees to give LICENSOR, or cause the insurer to give
LICENSOR, as the case may be, thirty (30) days prior written notice of any
reduction in limits or termination of such policy of insurance, or of any
intention on the part of LICENSEE not to pay the premium thereof.
12. NON-TRANSFERABILITY OF RIGHTS
a. LICENSEE shall not grant, assign, sublicense or otherwise convey or
transfer any rights inuring to LICENSEE or any obligations or duties owed by
LICENSEE to LICENSOR under this Agreement, without the prior written consent
of LICENSOR, and any attempted transfer or assignment shall be null and void.
LICENSOR shall consider in good faith any request for such consent and
promptly notify LICENSEE of LICENSOR'S decision, said decision to be in
LICENSOR's sole discretion. LICENSEE shall have the right to transfer or
assign its rights under this Agreement to an affiliate of LICENSEE (i.e., an
entity in control of, controlled by or under common control with LICENSEE),
provided that any such transfer or assignment does not in any way diminish,
extinguish, or adversely affect LICENSEE'S obligations to LICENSOR under this
Agreement. Nothing in this Section 12 is intended to prevent LICENSEE, its
partners or affiliates from offering and selling stock to the public.
LICENSOR shall provide LICENSEE with written notice if LICENSOR intends to
assign or transfer to any third party any of its rights or obligations under
this Agreement.
b. *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
17
13. INDEPENDENT CONTRACTOR
The parties hereby agree that LICENSEE is and shall be an independent
contractor and that no agency (except as specified in Section 10.g.), joint
venture or partnership is created by this Agreement. The legal relationship
of any person or entity performing services for LICENSEE shall be one solely
between such parties. Neither party shall incur any obligation in the name
of the other party without the prior written consent of that party.
14. *
15. TERMINATION
a. In the event LICENSEE commits any of the accelerating acts (defined
at Section 15.f.) or fails to make payments required under Section 15.f.,
LICENSOR may terminate this Agreement in its entirety.
b. LICENSOR may terminate this Agreement as it pertains to any country
included in the Licensed Territory only upon any of the following events in
that country:
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
18
*
c. Termination shall be effective upon expiration of the applicable
cure period, if any, and receipt of written notice from LICENSOR of such
expiration. Upon any such termination, all of the rights and licenses granted
hereunder shall terminate. Any such termination by LICENSOR shall be without
prejudice to LICENSOR'S other rights and remedies for breach, including
damages.
d. If permitted under any applicable laws, including U.S. Bankruptcy
laws, LICENSOR may terminate this Agreement immediately upon: (i) the
insolvency of LICENSEE; (ii) the filing of a voluntary petition in bankruptcy
for liquidation by LICENSEE; (iii) the filing of an involuntary petition in
bankruptcy for liquidation against LICENSEE that is not vacated within one
hundred
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
19
twenty (120) days from the date of filing; (iv) the appointment of a receiver
or trustee for LICENSEE, provided that such appointment is not vacated within
one hundred twenty (120) days from the date of such appointment; or (v) the
execution by LICENSEE of an assignment for the benefit of all creditors
generally.
e. LICENSEE shall notify LICENSOR of any change in ownership of more
than *
LICENSOR agrees that LICENSEE, its partners and
affiliates, may offer and sell stock to the public and,
subject to the provisions of this Section 15.e., nothing in
this Agreement shall prevent or interfere with LICENSEE, or
its partners or affiliates offering and selling stock to the
public.
f. *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
20
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
21
*
g. Either party may, by written notice to the other, terminate this
Agreement upon sale by LICENSEE of its United States trademark rights to BOSS
to LICENSOR or any of its affiliates (including parents).
h. *
i. LICENSEE shall have the option to terminate this Agreement at any
time, upon providing LICENSOR with ninety (90) days written notice, if all of
the following occur:*
j. Notwithstanding any other provision of this Agreement, upon
termination of this Agreement, LICENSEE (and its secured inventory lender),
shall be entitled, subject to the terms and conditions of this Agreement, on
a non-exclusive basis, for a period of nine (9) months from the date of
termination, to complete manufacture of Licensed Products in progress on the
date of termination, and to export, such completed products and any products
in Licensee's inventory on the date of termination; provided, however, that
such rights as are granted herein apply only to orders placed and goods
manufactured in the ordinary course of LICENSEE's business. After
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
22
the expiration of such nine (9) month period, LICENSEE shall completely
remove the marks from any products not manufactured before the expiration of
such nine (9) month period.
16. RESULTS OF TERMINATION
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
23
17. *
18. *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
24
19. NOTICES
All notices, requests or other communications required or permitted
hereunder shall be given or made in writing and shall be (i) delivered
personally (including commercial carrier), (ii) sent by registered or
certified airmail, return receipt requested, postage prepaid or (iii) sent by
telecopier, addressed to the party to whom they are directed at the following
addresses, or at such other address as may from time to time be designated by
such party to the others in accordance with this Section 19:
If to LICENSOR, to:
*
*
With a copy to:
Coudert Brothers
0000 X Xxxxxx, X.X.
Xxxxxxxxxx, X.X. 00000
Attention: Xxxxx X. Xxxxxx, Esq.
Telecopier: 202/775-1168
and
Howrey & Simon
0000 Xxxxxxxxxxxx Xxxxxx, X.X.
Xxxxxxxxxx, X.X. 00000
Attention: Xxxxxx X. Xxxxxxx, Esq.
Telecopier: 202/383-6610
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
25
If to LICENSEE, to:
I. C. Xxxxxx & Company L.P.
0000 Xxxx Xxxxxx
Xxxxxxxxx, Xxxxxxxx 00000
Attention: President and Co-Chief Executive Officer
Telecopier: 410/558-2096
I. C. Xxxxxx & Company L.P.
000 Xxxxx Xxxxxx
Xxxxx 0000
Xxx Xxxx, Xxx Xxxx 00000
Attention: Chairman and Co-Chief Executive Officer
Telecopier: 212/695-7579
With a copy to:
Piper & Marbury L.L.P.
Xxxxxxx Center South
00 Xxxxx Xxxxxxx Xxxxxx
Xxxxxxxxx, Xxxxxxxx 00000-0000
Attention: Xxxxxx X. Xxxxxxx, Esq.
Telecopier: 410/576-1064
Any notice, request or other communications shall be deemed to have been
given and to be effective upon receipt or refusal by the addressee. Any
party may change its address for notices hereunder, effective upon giving of
notice of such change hereunder to the other parties.
20.*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
26
*
21. *
22. BINDING EFFECT
This Agreement shall be binding on the parties, their parents,
subsidiaries, successors and assigns (if any), and they each warrant that the
undersigned are authorized to execute this Agreement on behalf of the
respective parties.
23. *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
27
*
24. GENERAL PROVISIONS
a. No waiver or modification of any of the terms or provisions of this
Agreement shall be valid unless contained in a written document signed by
both parties. No course of conduct of dealing between the parties shall act
as a waiver of any provision of this Agreement.
b. This Agreement, including the entirety of Exhibits A through H1
attached hereto, contains the entire understanding of the parties as to the
subject matter herein, and there are no representations, warranties, promises
or undertakings other than those contained herein. This Agreement supersedes
and cancels all previous agreements between the parties hereto. This
Agreement shall be construed against both parties equally, regardless of the
party that drafted it. *
c. If any provision of this Agreement shall be held to be void or
unenforceable, such provision will be treated as severable, leaving valid the
remainder of this Agreement.
*
e. The parties agree to execute promptly any documents necessary to
effectuate the purpose and intent of this Agreement.
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
28
f. Captions and paragraph headings used in this Agreement are for
convenience only and are not a part of this Agreement and shall not be used
in interpreting or construing it.
g. This Agreement may be executed in any number of duplicate
counterparts, each of which shall be deemed an original and all of which
together shall constitute one and the same instrument.
25. *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
29
party to pay some or all of the costs and expenses, including legal fees,
incurred by the other party.
26. *
IN WITNESS WHEREOF, the parties agree that this Agreement shall take
effect as of the date first written above.
*
By: __________________________________
Name:
Title:
By: ___________________________________
Name:
Title:
*
By: ___________________________________
Name:
Title:
By: ____________________________________
Name:
Title:
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
30
I.C. XXXXXX & COMPANY L.P., a Delaware
limited partnership
By: I.G. DESIGN, INC., a Delaware
corporation, its general partner
By: ________________________________________
Name: Xxxxxx X. Xxxxx
Title: Chairman and Co-Chief
Executive Officer
By: ________________________________________
Name: Xxxxxx X. Xxxx
Title: President and Co-Chief
Executive Officer
31
FOREIGN MANUFACTURING RIGHTS AGREEMENT
LIST OF EXHIBITS
Exhibit A: Specifications and limitations on LICENSEE's use of the Marks
Exhibit B: List of products on which LICENSEE is permitted to use the Marks
Exhibit C: List of countries
Exhibit C1: List of pending/not filed countries
Exhibit C2: List of special circumstances
Exhibit D: List of LICENSOR Agreements
Exhibit E: Prohibited stitching designs
Exhibit F: Royalty payment schedule
Exhibit F1: Minimum Territory Net Sale schedule
Exhibit F2: Royalty calculation sheet
Exhibit G: Customs letter
Exhibit H: *
Exhibit H1: *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
EXHIBIT A
XXXXXX MARKS
BOSS
("The Microgramma Typestyle")
[LOGO]
In using these Marks on Licensed Products, LICENSEE will comply with the
following:
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
*
7. LICENSEE shall not use words which indicate that its product is the
only or first BOSS product, e.g., "authentic," "genuine" or "original,"
except that LICENSEE may use such words to directly modify the phrase "I G
Design" (or such other name as LICENSOR approves).
8. LICENSEE shall not use the terms * or any other words that are
similar in sound, sight or meaning, as exemplified in Attachment 8 to this
Exhibit A. The parties agree that LICENSEE may use the phrases "U.S.A." and
"United States" on Licensed Products, including in graphic depictions with or
near the Marks; provided, however, that such words are not incorporated into
a corporate identity, brand, or product extension logo with the word "BOSS."
In addition, LICENSOR, by itself or on behalf of * or LICENSEE
may, from time to time, submit to each other exemplars of logos, designs or
decorative motifs which they are using or plan to use in the next selling
season, provided that such logos, designs, or decorative motifs shall not
have been used by the other party. The party so notified shall not use any
such logos, designs or decorative motifs, or anything similar to them in the
following selling season, without the other party's written permission;
provided, however, that either party may use logos, designs or decorative
motifs that are standard in the industry. Notwithstanding the foregoing,
LICENSEE shall not use any design or decorative motif similar to the BOSS
SPORT patch shown in Attachment 9 to Exhibit A.
9. For purposes of this Agreement, "Polo shirt" shall mean a pullover
shirt for sportswear that is made of knitted fabric and has short or long
sleeves and a turnover collar or a round banded collar and placket. In
addition to all other rules herein applicable to tops, LICENSEE may use the
word "BOSS" by itself on the exterior of polo shirts only in accordance with
the following:
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
*
10. Prior to use, LICENSEE may submit to LICENSOR for approval
typestyles other than the Microgramma for the word "BOSS", provided those
typestyles are less similar to the typestyles used by the LICENSOR than the
Microgramma typestyle used by LICENSEE. LICENSEE shall not use any such
typestyle unless LICENSOR *.
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
ATTACHMENT 1
TO EXHIBIT A
o Exemplars of interior and exterior permanent/temporary labels, tags, etc.
with acceptable "BOSS by I G Design."
BMA-1368 -- info tag [Graphic Logo]
THESE EXAMPLARS DO NOT SUPERSEDE
THE RATIO REQUIREMENTS AS OTHERWISE
PROVIDED BY THIS EXHIBIT A
BMA-1241R -- [Graphic Logo]
THESE EXAMPLARS DO NOT SUPERSEDE
THE RATIO REQUIREMENTS AS OTHERWISE
PROVIDED BY THIS EXHIBIT A
Jr. Hang Tag/BJ-537W
FRONT
[Graphic Logo]
22 DEG. ANGLE
6 TO 1 RATIO
THESE EXAMPLARS DO NOT SUPERSEDE
THE RATIO REQUIREMENTS AS OTHERWISE
PROVIDED BY THIS EXHIBIT A
BMA-458 -- [Graphic Logo]
THESE EXAMPLARS DO NOT SUPERSEDE
THE RATIO REQUIREMENTS AS OTHERWISE
PROVIDED BY THIS EXHIBIT A
Jr. Hang Tag/BJ-537
BACK
[Graphic Logo]
22 DEG. ANGLE
6 TO 1 RATIO
THESE EXAMPLARS DO NOT SUPERSEDE
THE RATIO REQUIREMENTS AS OTHERWISE
PROVIDED BY THIS EXHIBIT A
[Graphic Logo]
BMA-1242
22 DEG. ANGLE
6 TO 1 RATIO
THESE EXAMPLARS DO NOT SUPERSEDE
THE RATIO REQUIREMENTS AS OTHERWISE
PROVIDED BY THIS EXHIBIT A
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo]
[Graphic Logo]
ATTACHMENT 2
TO EXHIBIT A
o Exemplars of acceptable graphic environments.
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo] -- Jeans
[Graphic Logo] -- Jeans
[Graphic Logo] -- Jeans
[Graphic Logo] -- Jeans
[Graphic Logo]
[Graphic Logo] -- Shirt
[Graphic Logo]
[Graphic Logo]
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo] -- Shirt
[Graphic Logo]
[Graphic Logo]
[Graphic Logo] -- Shirt
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
o Exemplars of unacceptable graphic environments
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo] -- Shirt
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo] -- Jeans
[Graphic Logo] -- Shirt
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
ATTACHMENT 3
TO EXHIBIT A
o Exemplars of acceptable distorted letters.
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo] -- Jeans
[Graphic Logo] -- Jeans
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
ATTACHMENT 4
TO EXHIBIT A
o Exemplars of 24(degree) slant.
[Graphic Logo]
ATTACHMENT 5
TO EXHIBIT A
o Exemplars of 22(degree) slant.
[Graphic Logo]
ATTACHMENT 6A
TO EXHIBIT A
o Exemplars of vertical alignment.
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo] -- Jeans
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo] -- Jeans
[Graphic Logo] -- Jeans
[Graphic Logo] -- Shirt
[Graphic Logo]
[Graphic Logo] -- Jeans
[Graphic Logo]
ATTACHMENT 6B
TO EXHIBIT A
o Exemplars of 19(degree) slant.
[Graphic Logo]
ATTACHMENT 7A
TO EXHIBIT A
o Exemplars of acceptable vertical BOSS logos.
[Graphic Logo] -- Shirt
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
ATTACHMENT 7B
TO EXHIBIT A
o Exemplars of unacceptable vertical BOSS logos.
[Graphic Logo]
ATTACHMENT 8
TO EXHIBIT A
o Exemplars of forbidden words.
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
ATTACHMENT 9
TO EXHIBIT A
o The BOSS Sport Patch
[Graphic Logo]--Shirt
[Graphic Logo]
ATTACHMENT 10
TO EXHIBIT A
o Exemplars of acceptable coloration for "BOSS by I G Design" on polo
shirts.
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
[Graphic Logo] -- Shirt
o Exemplar of unacceptable coloration for "BOSS by I G Design" on polo
shirts.
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
[Graphic Logo]
ATTACHMENT 11
TO EXHIBIT A
o Exemplar of acceptable shirts under Exhibit A, Section 9.a.
[Graphic shirts]
[Graphic Logo] -- Shirts
[Graphic Logo] -- Shirts
[Graphic shirts]
[Graphic Logo] -- Shirts
[Graphic Logo] -- Shirts
o Exemplar of acceptable shirts under Exhibit A, Section 9.b.
[Graphic Logo] -- Shirts
[Graphic shirts]
[Graphic Logo] -- Shirts
[Graphic Logo] -- Shirts
o Exemplar of acceptable shirts under Exhibit A, Section 9.c.
[Graphic shirts]
[Graphic Logo] -- Shirts
[Graphic Logo] -- Shirts
[Graphic shirts]
[Graphic Logo] -- Shirts
[Graphic Logo] -- Shirts
[Graphic Logo] -- Shirts
[Graphic Logo] -- Shirts
10.11(d)(2)
EXHIBIT B
I. LICENSED PRODUCTS
A. Men's Apparel
1. Sportswear and Activewear. All sportswear and activewear clothing
other than the exclusions listed below. All fabrications may be used.
2. Outerwear. All jackets, coats, vests, capes and ponchos other than the
exclusions listed below. Such outerwear garments may be reversible,
lined, unlined, filled and/or fabric treated (waterproofed, coated,
etc.) and may have detachable sleeves, hoods and/or interlinings.
Lengths of such garments shall be 22" to 60". All fabrications may be
used except fur (except as trim) and leather (except as trim).
3. Headwear. All sports hats, visors and caps.
4. Swimwear. All types of swimwear.
5. Jogging Suits. All types of warm-ups and jogging suits of any
fabrication.
6. Belts. Belts bearing the Xxxx provided that such belts shall be sold
only as part of a Bottom and shall not be made out of leather.
B. Women's Apparel
1. Sportswear and Activewear. All sportswear and activewear clothing for
juniors, contemporary, misses and large sizes other than the
exclusions listed below. All fabrications may be used.
2. Outerwear. All jackets, coats, vests, capes and ponchos other than the
exclusions listed below. Such outerwear garments may be reversible,
lined, unlined, filled and/or fabric treated (waterproofed, coated,
etc.) and may have detachable sleeves, hoods and/or interlinings.
Lengths of such garments shall be 22" to 60". All fabrications may be
used except fur (except as trim) and leather (except as trim).
3. Headwear. All sports hats, visors and caps.
4. Swimwear. All types of swimwear.
5. Jogging Suits. All types of warm-ups and jogging suits of any
fabrication.
6. Belts. All belts bearing the Xxxx provided that such belts shall be
sold only as part of a Bottom and shall not be made out of leather.
7. Other. Women's knit garments to be worn on the upper torso that are
either snapped or fixed through the crotch and the top portion of
which may be a halter, shoulder strap, short sleeve or long sleeve.
C. Children's Apparel
1. Children's Sportswear and Activewear. All sportswear and activewear
clothing other than the exclusions listed below. All fabrications may
be used.
2. Outerwear. All jackets, coats, vests, capes and ponchos other than the
exclusions listed below. Such outerwear garments may be reversible,
lined, unlined, filled and/or fabric treated (waterproofed, coated,
etc.) and may have detachable sleeves, hoods and/or interlinings. All
fabrications may be used except fur (except as trim) and leather
(except as trim).
3. Headwear. All sports hats, visors and caps.
4. Swimwear. All types of swimwear.
5 Jogging Suits. All types of warm-ups and jogging suits of any
fabrication.
6. Belts. All belts bearing the Xxxx provided that such belts shall be
sold only as part of a Bottom and shall not be made out of leather.
D. Other
All apparel, including uniforms and work clothes, which is intended to
be worn solely and exclusively while persons are performing the normal
duties of their employment.
II. PRODUCTS BEARING A BOSS XXXX THAT XXXXXX SHALL NOT MANUFACTURE
A. Notwithstanding the foregoing, the parties agree that Licensed Products
do not include any of the following men's, women's or children's apparel:
1. All styles of tailored clothing, furnishings and accessories,
including but not limited to tuxedos, gowns and evening wear, sportcoats,
blazers, jackets, suits, dress pants, career apparel including blouses,
skirts and dresses, raincoats, top coats, dress shirts, ties, dress vests,
hosiery (including but not limited to socks, stockings and hose), and
leather belts.
2. All types of leather clothing (although leather trim may be used on
all products listed in Section 1);
3. All styles of shoes and other footwear.
4. Clothing designed and sold for the primary purpose of engaging in
golf, tennis, skiing, motor sports, windsurfing or sailing.
5. Except as described in Exhibit B Section I.B.7. above, bodywear,
including but not limited to underwear (including tee shirts intended to be
worn as underwear); loungewear and intimate apparel; and sleepwear and
robes.
B. Unless otherwise agreed to by the parties, Licensed Products shall not
include any non-apparel products of any kind.
10.11(d)(3)(a)
EXHIBIT C
OVERSEAS MANUFACTURING RIGHTS GRANTED
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
10.11(d)(3)(b)
EXHIBIT C1
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
10.11(d)(3)(c)
EXHIBIT C2
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
10.11(d)(4)
EXHIBIT D
List of LICENSOR Agreements pursuant to Paragraph 2.h.
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
10.11(d)(5)
EXHIBIT E
o Prohibited stitching designs.
[PHOTOGRAPH OF JEANS]
[GRAPHIC OMITTED]
EXHIBIT A
Int. Cl.: 25
Prior U.S. Cl.: 39
Reg. No. 1,139,254
United States Patent and Trademark Office Registered Sep. 2, 1980
--------------------------------------------------------------------------------
TRADEMARK
Principal Register
[GRAPHIC OMITTED]
Levi Xxxxxxx & Co. (Delaware corporation) For: PANTS, JACKETS, DRESSES AND
Two Embarcadero Cir. SHORTS, in CLASS 25 (U.S. CL. 39).
Xxx Xxxxxxxxx, Xxxxx. 00000 First use 1873: in commerce 1873
Owner of U.S. Reg. No. 404 248
Reg. No. 169,399
Filed May 8, 1972
M.I. XXXXX, Primary Examiner
10.11(d)(6)(a)
EXHIBIT F
ROYALTY PAYMENTS
LICENSEE shall pay to LICENSOR a royalty as follows:
A. For years 1-4:
1. Base Royalty: For years 1-4 of this Agreement on the first $32,000,000
of Territory Net Sales: Twelve and One Half Percent (12.5%), provided, however,
that should LICENSEE prepay the Secured Limited Recourse Promissory Note between
the parties, base royalties on the remaining portion of the first $32,000,000
Territory Net Sales made after such prepayment shall be at sixteen percent
(16%).(1)
2. Additional Royalty: For all Territory Net Sales above $83,999,999, a
royalty based on the following percentages:
Territory Net Sales Level achieved by LICENSEE Additional Royalty Percentage
---------------------------------------------- -----------------------------
YEARS 1-2(2)
------------
$84,000,000-105,249,999 5%
105,250,000-157,999,999 0%
158,000,000 and up 4%
----------
(1) If the Effective Date of this Agreement is prior to January 1, 1998,
LICENSEE shall also pay a base royalty in accordance with this Exhibit prorated
by the number of days in 1997 this Agreement is in effect, such royalty payment
due on January 31, 1998.
(2) The additional royalty payment to LICENSOR for 1998 shall be
calculated by applying the royalty payment schedule to the sum of LICENSEE's
Territory Net Sales for the last quarter of calendar year 1997 and the full
calendar year 1998.
B.
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
10.11(d)(6)(b)
EXHIBIT F1
Minimum Territory Net Sales
Contract Year Minimum Territory Net Sales
1998 $ 32,000,000
1999 $ 32,000,000
2000 $ 32,000,000
2001 $ 32,000,000
Optional Term (1st Extension)
2002
$ 20,000,000
2003 $ 16,000,000
2004 $ 16,000,000
Optional Term (2nd Extension)
2005
$ 16,000,000
2006 $ 16,000,000
2007 $ 16,000,000
10.11(d)(6)(c)
EXHIBIT F2
CALCULATION OF ANNUAL ROYALTY PAYMENT
CONTRACT YEAR
*
Remittance Enclosed:
Check No. ___________________
THE UNDERSIGNED, being the ____________________ of I.C. Xxxxxx & Company
L.P., hereby certifies pursuant to Section _____ of the Agreement dated
__________, 1997, by and between ___________ and I.C. Xxxxxx & Company L.P.,
that the information continued in the attached Verification of Licensed Products
Sold is true and correct in all material respects as of the date hereof.
SIGNED:
-------------------------
NAME:
-------------------------
Title:
-------------------------
Date:
-------------------------
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
For the period: January 1 to December 31.
--------------------------------------------------------------------------------
ANNUAL
ITEM QUANTITY SOLD SALES FIGURE (#)
--------------------------------------------------------------------------------
Pants, including Men _____________________ _____________________
slacks & trousers Women _____________________ _____________________
Children _____________________ _____________________
--------------------------------------------------------------------------------
Jeans without belts Men _____________________ _____________________
Women _____________________ _____________________
Children _____________________ _____________________
--------------------------------------------------------------------------------
Jeans with belts Men _____________________ _____________________
Women _____________________ _____________________
Children _____________________ _____________________
--------------------------------------------------------------------------------
Shorts, including Men _____________________ _____________________
shortalls Women _____________________ _____________________
Children _____________________ _____________________
--------------------------------------------------------------------------------
Xxxx Shorts Men _____________________ _____________________
Women _____________________ _____________________
Children _____________________ _____________________
--------------------------------------------------------------------------------
Sweatpants Men _____________________ _____________________
Women _____________________ _____________________
Children _____________________ _____________________
--------------------------------------------------------------------------------
Overalls Men _____________________ _____________________
Women _____________________ _____________________
Children _____________________ _____________________
--------------------------------------------------------------------------------
T-Shirts Men _____________________ _____________________
Women _____________________ _____________________
Children _____________________ _____________________
--------------------------------------------------------------------------------
Polo Shirts Men _____________________ _____________________
Women _____________________ _____________________
Children _____________________ _____________________
--------------------------------------------------------------------------------
Tanktops Men _____________________ _____________________
Women _____________________ _____________________
Children _____________________ _____________________
--------------------------------------------------------------------------------
Sweatshirts Men _____________________ _____________________
Women _____________________ _____________________
Children _____________________ _____________________
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
All other shirts, Men _____________________ _____________________
including knit and Women _____________________ _____________________
woven sportshirts, Children _____________________ _____________________
tunics, smocks,
beach cover-ups and
pullover style shirts
--------------------------------------------------------------------------------
Sweaters, including Men _____________________ _____________________
pullover style Women _____________________ _____________________
Children _____________________ _____________________
--------------------------------------------------------------------------------
Warm-up sets and Men _____________________ _____________________
Jogging Suits Women _____________________ _____________________
Children _____________________ _____________________
--------------------------------------------------------------------------------
Jumpsuits Men _____________________ _____________________
Women _____________________ _____________________
Children _____________________ _____________________
--------------------------------------------------------------------------------
Jackets, including Men _____________________ _____________________
blousons and parkas Women _____________________ _____________________
Children _____________________ _____________________
--------------------------------------------------------------------------------
Denim Jackets Men _____________________ _____________________
Women _____________________ _____________________
Children _____________________ _____________________
--------------------------------------------------------------------------------
Vests Men _____________________ _____________________
Women _____________________ _____________________
Children _____________________ _____________________
--------------------------------------------------------------------------------
Coats, including Men _____________________ _____________________
short coats Women _____________________ _____________________
Children _____________________ _____________________
--------------------------------------------------------------------------------
Rainwear Men _____________________ _____________________
Women _____________________ _____________________
Children _____________________ _____________________
--------------------------------------------------------------------------------
Swimwear, Men _____________________ _____________________
including swimtanks Women _____________________ _____________________
and bathing suits Children _____________________ _____________________
--------------------------------------------------------------------------------
Sports xxxx, Xxx _____________________ _____________________
including caps Women _____________________ _____________________
Children _____________________ _____________________
--------------------------------------------------------------------------------
Sports visors, Men _____________________ _____________________
including sports Women _____________________ _____________________
headbands Children _____________________ _____________________
--------------------------------------------------------------------------------
10.11(d)(7)
EXHIBIT G
Customs Letter
TO WHOM IT MAY CONCERN:
I.C. Xxxxxx & Company L.P. trading as "Boss by I G Design," markets and
distributes "BOSS" branded clothing in the United States of America pursuant
to its trademark rights in the USA. *, a wholly-owned subsidiary of *, has
authorized I.C. Xxxxxx & Company L.P. pursuant to a Manufacturing Rights
Agreement dated as of ____________ to manufacture "BOSS" branded sportswear
in ________________ for export to the USA only. Therefore, shipments of such
"BOSS" branded clothing from ________________ co-signed to I.C. Xxxxxx &
Company L.P. for ultimate shipment to the USA are under authority from *
and *.
*
By:
-----------------------------
-----------------------------
Officer of General Partner
ATTENTION: ONLY THE ORIGINAL; EXECUTED VERSION OF THIS LETTER IS VALID, NO
COPIES ARE ACCEPTABLE, AND THE ORIGINAL IS VALID FOR ONLY ONE YEAR FROM THE DATE
OF THIS LETTER.
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
EXHIBIT 10.11(d)(8)(a)
EXHIBIT H
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
EXHIBIT 10.11(d)(8)(b)
EXHIBIT H1
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
Exhibit E to 10.11
EXHIBIT E/FRA
OPTION AGREEMENT
THIS OPTION AGREEMENT is entered into as of this ___ day of September,
l997 by and between *, a corporation organized and existing under the laws of
Delaware ("Buyer") and I.C. XXXXXX & COMPANY L.P., a limited partnership
organized and existing under the laws of the State of Delaware ("Seller").
WHEREAS, simultaneously with the execution of this Option Agreement,
Buyer is lending to Seller funds in the amount of *, which indebtedness of
Seller to Buyer is evidenced in a Secured Limited Recourse Promissory Note of
Seller of even date herewith (the "Note"), which funds are to be used by
Seller to purchase certain trademark rights and related assets from
Brookhurst, Inc. ("Brookhurst") referred to as the "Trademark Assets" in that
certain Worldwide Rights Acquisition Agreement dated September __, l997 by
and among Seller, Brookhurst and Xxxxxxx Xxx (the "Acquisition Agreement");
WHEREAS, simultaneously herewith, Buyer has purchased from Seller all of
Seller's right, title and interest outside of the United States of America and
its territories and possessions in and to all "BOSS" trademarks and other
proprietary interests, if any, related thereto, together with the good will
related thereto;
WHEREAS, Buyer wishes to acquire an option to purchase from Seller all of
the remaining Trademark Assets of Seller and all rights of Seller under the
Acquisition Agreement and the Escrow Agreement referred to therein, subject to
all obligations of Seller thereunder,
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
and Seller is willing to grant such option on the terms and subject to the
conditions hereinafter set forth;
NOW, THEREFORE, in consideration of the mutual promises herein contained,
the parties hereto agree as follows:
ARTICLE I
GRANT OF OPTION
1.1 Grant of Option. Upon the terms and subject to the conditions
hereinafter set forth, Seller hereby grants to Buyer the right and option (the
"Option") to purchase (i) all of the Trademark Assets and all rights relating
to, or derived from, the Trademark Assets not already acquired by Buyer, and
(ii) all rights of Seller under the Acquisition Agreement, including, without
limitation, all rights of Seller under the Escrow Agreement referred to therein,
(the "Option Assets"). In the event the Option is exercised, the Option Assets
shall be sold free and clear of all pledges, security interests, mortgages and
liens (other than the lien of Buyer established pursuant to the Note and any
liens on the Option Assets which existed prior to the acquisition of the
Trademark Assets by Seller from Brookhurst) (collectively, "Encumbrances")
subject to the obligations of Seller arising from and after the Closing (as
hereinafter defined) under the Assumed Agreements (as defined in the Acquisition
Agreement) solely insofar as they relate to the use of the Option Assets after
Closing.
1.2 Timing and Exercise Procedure. (a) The Option may be exercised:
(i) At any time during the period commencing on the ninth anniversary
of the date hereof and ending on December 31, 2007; or
-2-
(ii) Prior to the ninth anniversary of the date hereof on or
after such date as (x) Seller shall have been in substantial material
breach of any of Section 2.a, 2.b, 3.b., or 7.a. of the Concurrent Use
Agreement by and between Seller and *, which breach has not
been is not cured within thirty (30) days after the date of written
notice by Buyer to Seller of such breach; (y) an "Event of Default"
shall have occurred under the Note, or (z) the Foreign Manufacturing
Rights Agreement of even date herewith by and between Buyer and Seller
(the "Manufacturing Rights Agreement") shall terminate for any reason;
(in either case, the "Exercise Period"). The Option may be exercised by written
notice given by Buyer to Seller (an "Option Notice") at any time during the
Exercise Period, which written notice shall be given in accordance with the
notice provision of this Option Agreement.
*
1.3 Exercise Price. In consideration for the sale of the Option Assets,
Buyer agrees to pay to Seller the amount of *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
-3-
*
1.4 Closing. The closing of the purchase of the Option Assets (the
"Closing") shall take place, in the event the Option is exercised pursuant to
Section 1.2(a)(i), on December 31, 2007 or, in the event of exercise pursuant to
Section 1.2(ii) or the exercise of the Put Option pursuant to Section 1.2 (b) on
the date thirty (30) days after the Exercise Date (the "Closing Date") at the
offices of Coudert Brothers, 0000 Xxxxxx xx xxx Xxxxxxxx, Xxx Xxxx, Xxx Xxxx at
10:00 a.m. local time or at such other time and place mutually agreed to by the
parties. At the Closing the parties shall exchange the various closing
documents referred to in Article II of this Option Agreement.
ARTICLE II
CLOSING DELIVERIES
2.1 Deliveries to be Made by Seller. On the Closing Date, Seller shall
have executed and delivered to Buyer the following:
(a) executed trademark assignments in forms reasonably acceptable to
Buyer and Seller transferring all trademarks (and other proprietary interests
related thereto, if any,) including the good will related thereto, constituting
or relating to Option Assets (the "Trademarks") to Buyer;
(b) possession of (i) an original of each of Seller's trademark
registrations then currently in effect and constituting Option Assets (except
that a copy of Seller's California state
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
-4-
registration may be delivered) and (ii) Seller's original trademark application
and registration files relating to the Option Assets including, for example,
letters or other materials from each of Seller's domestic trademark counsel
showing deadlines for trademark office actions to the extent in Seller's
possession, custody or control;
(c) appropriate original instruments of consent or waiver executed by
third parties whose consent or waiver is required to consummate the transactions
contemplated hereby;
(d) an executed agreement of assignment and assumption of Assumed
Agreements (the "Assumption Agreement") in a form reasonably acceptable to Buyer
and Seller; and
(e) such other instruments and documents as may be elsewhere herein
required.
2.2 Deliveries To Be Made by Buyer. On the Closing Date, Buyer shall have
executed and delivered to Seller the following:
(a) the payment provided for in Section 1.3(a), which payment may be
satisfied by offset against principal amounts owing to Buyer under the Note; and
(b) the Assumption Agreement.
ARTICLE III
REPRESENTATIONS AND WARRANTIES OF SELLER
Seller hereby represents and warrants to Buyer as follows:
3.1 Organization and Good Standing of the Seller. Seller is a limited
partnership duly organized, validly existing and in good standing under the laws
of the State of Delaware.
-5-
3.2 Authority; Execution. Seller has all the requisite power and
authority, corporate and otherwise, to execute, deliver and perform its
obligations under this Option Agreement. The execution and delivery of this
Option Agreement, and each of the other instruments of transfer, conveyance and
assignment to be delivered hereunder, have been duly and validly authorized by
all necessary corporate and other action on the part of Seller, and this Option
Agreement has been and each of such other instruments to be delivered hereunder
will be duly executed by Seller. This Option Agreement constitutes the valid
and binding agreement of Seller, enforceable against Seller in accordance with
its respective terms.
3.3 Breach of Statute or Contract.
(a) The execution, delivery and performance of this Option Agreement
by Seller and the consummation of the transactions contemplated hereby will
not: (i) violate or conflict with any provision of the charter documents
or by-laws of Seller; (ii) violate or conflict with, result in the breach
or termination of or otherwise give any other contracting party the right
to terminate, or constitute a default (or an event which, with the lapse of
time, or the giving of notice, or both, will constitute a default) under,
any contract or other instrument to which Seller is a party and which
relate to the Option Assets or by which Seller is bound, or result in the
creation of any Encumbrance upon any of the Option Assets pursuant to the
terms of any such contract or instrument, or (iii) violate or conflict with
any judgment, order, writ, injunction or decree of any court or
governmental body of any jurisdiction applicable to Seller (excluding any
judgments, orders, writs, injunctions or decrees in any actions or
proceedings involving * or its affiliates) or, to the
knowledge of Seller, any law or regulation materially adversely affecting
Buyer's ability to exploit the Option Assets.
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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(b) There are no notices, licenses, consents, permissions or approvals
of any nature whatsoever which are required to be obtained by Seller from any
Federal, state or local governmental or regulatory body or other third party or,
to Seller's knowledge, from any foreign governmental or regulatory body for the
consummation of the transactions contemplated by this Option Agreement, or as a
condition to the sale, assignment and transfer of the Option Assets to be
effected hereunder.
3.4 No Alienation of Rights. Seller has not transferred, assigned,
licensed or otherwise encumbered with Encumbrances any of its rights in any
Option Asset.
3.5 Ownership of Option Assets. As between Seller and all
affiliates and other persons or entities who have an ownership interest in
Seller (or any affiliate thereof) or who may have been expressly authorized by
Seller to use the Option Assets, Seller owns all rights in and to the Option
Assets.
3.6 Knowledge. Whenever a statement regarding the existence or
absence of facts in this Option Agreement is qualified by a phrase such as to
Seller's knowledge or words to similar effect, it is intended by the parties
that the information attributed to Seller be actually known, or information
which should have been known based on reasonable inquiry by the President, the
Chairman, any Chief Executive Officer or the Chief Financial Officer of Seller.
3.7 Materiality. The phrase "materially adversely affecting Buyer's
ability to exploit the Option Assets" shall be deemed to mean (i) the existence
or occurrence at any time from and after the date hereof of any actual harm, or
the existence of any reasonably anticipated actual harm, to Buyer's ability to
exploit the Option Assets or (ii) either (x) the failure of Seller to remedy the
breach in question assuming the breach is remediable or (y) the inability of
Seller
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to remedy the breach in question without prejudice to Buyer's ability to exploit
the Option Assets. For purposes of this Section 3.7, no "actual harm" shall be
deemed to exist as to any of the first three claims of harm unless any such
claim of harm reasonably involves at least the following amounts in damage or
loss:
First Claim *
Second Claim *
Third Claim *
it being agreed that, without prejudice to, or limitation of, Seller's ability
to claim that any subsequent claim involves no "actual harm", no such monetary
threshold applies to any subsequent claims.
3.8 No Representations and Warranties as to Trademark Assets. Seller
makes no representations and warranties of any kind, and shall have no
responsibility, liability or obligations whatsoever to Buyer or any affiliate
thereof (including, without limitation, for any claims for indemnity) with
respect to any matter relating to the Trademark Assets prior to the xxxx Xxxxxx
acquired them, including, without limitation, the quality of title, the
condition or use of the Trademark Assets or the conduct of the business
thereunder prior to the xxxx Xxxxxx acquired the Trademark Assets or with
respect to any actions taken at the direction of Buyer.
ARTICLE IV
REPRESENTATIONS AND WARRANTIES OF BUYER
4.1 Organization and Good Standing of Buyer. Buyer is a corporation
duly organized and validly existing under the laws of Delaware.
4.2 Authority; Execution. Buyer has all requisite power and
authority, corporate and otherwise, to execute, deliver and perform its
obligations under this Option Agreement. The
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
-8-
execution and delivery of this Option Agreement, and each of the other
instruments of transfer, conveyance and assignment delivered hereunder, by Buyer
have been duly and validly authorized by all necessary corporate and other
action on the part of Buyer, and this Option Agreement and each of such other
instruments has been duly executed by Buyer, as applicable. This Option
Agreement constitutes the valid and binding agreement of Buyer, enforceable
against Buyer in accordance with its terms.
4.3 Breach of Statute or Contract.
(a) The execution, delivery and performance of this Option Agreement
by Buyer and the consummation of the transactions contemplated hereby will not:
(i) violate or conflict with any provision of the Certificate of Incorporation
or by-laws of Buyer; (ii) violate or conflict with, result in the breach or
termination of or otherwise give any other contracting party the right to
terminate, or constitute a default (or an event which, with the lapse of time,
or the giving of notice, or both, will constitute a default) under, any contract
or other instrument to which Buyer is a party; or (iii) violate or conflict with
any judgment, order, writ, injunction or decree of any court or governmental
body of any jurisdiction applicable to Buyer (excluding any judgments, orders,
injunctions, decrees or awards in any actions or proceedings involving Seller or
its affiliates) or, to the knowledge of Buyer, any law or regulation materially
adversely affecting Buyer's ability to consummate the transactions contemplated
by this Option Agreement.
(b) There are no notices, licenses, consents, permissions or
approvals of any nature whatsoever which are required to be obtained by Buyer
from any Federal, state or local governmental or regulatory body or other third
party or, to Buyer's knowledge, from any
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foreign governmental or regulatory body for the consummation of the transactions
contemplated by this Option Agreement, or as a condition to the sale, assignment
and transfer of the Trademark Assets to be effected hereunder.
ARTICLE V
CONDITIONS PRECEDENT TO OBLIGATIONS OF BUYER AND SELLER
5.1 Conditions Precedent to Obligations of Buyer. The obligations of Buyer
to consummate the transactions contemplated under this Option Agreement are
subject to the fulfillment, as of the Closing Date, of each of the following
conditions (any or all of which may be waived by Buyer):
(a) the representations and warranties of Seller contained in Article
III of this Option Agreement shall be true and correct in all material respects
as of the Closing Date;
(b) Seller shall have performed and complied in all material
respects with all obligations, covenants and undertakings required by this
Option Agreement to be performed or complied with by Seller on or prior to the
Closing Date;
(c) there has been no material adverse change within the control of
Seller in the Option Assets; provided that in no event shall a decrease in sales
of products sold under the Option Assets or a change in the market for such
products be deemed such a material adverse change;
(d) Buyer shall have been furnished with a certificate, dated the
Closing Date and executed by an officer of Seller, certifying to the fulfillment
of the conditions specified in Sections 5.1(a), (b) and (c); and
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(e) no judgment, order or decree shall have been rendered which has
the effect of enjoining the consummation of the transactions contemplated by
this Option Agreement.
5.2 Conditions Precedent to Obligations of Seller. The obligations of
Seller to consummate the transactions contemplated under this Option Agreement
are subject to the fulfillment, as of the Closing Date, of each of the following
conditions (any or all of which may be waived by Seller):
(a) the representations and warranties of Buyer set forth in Article
IV of this Option Agreement shall be true and correct in all material respects
as of the Closing Date;
(b) Buyer shall have performed and complied in all material respects
with all obligations, covenants and undertakings required by this Option
Agreement to be performed or complied with by Buyer on or prior to the Closing
Date;
(c) Seller shall have been furnished with a certificate, dated the
Closing Date and executed by an officer of Buyer, to certifying the fulfillment
of the conditions specified in Sections 5.2(a) and (b); and
(d) no judgment, order or decree shall have been rendered which has
the effect of enjoining the consummation of the transactions contemplated by
this Option Agreement.
5.3 Effect of Closing. The parties acknowledge and agree that proceeding
with the Closing shall not prejudice any rights or remedies of either party for
breach of any covenant, representation or warranty of the other party existing
at or prior to Closing.
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ARTICLE VI
SURVIVAL OF REPRESENTATIONS AND WARRANTIES;
INDEMNIFICATION
6.1 All representations and warranties contained in or made pursuant to
this Option Agreement shall *
6.2*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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*
6.3 *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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*
6.4 Notification of Claims. In the event of the occurrence of any event
which any party asserts constitutes a Buyer Indemnity Claim or Seller Indemnity
Claim, as applicable, the indemnified party shall provide the indemnifying party
with prompt notice of such event, including, without limitation, any facts and
circumstances which give rise to such claim, and shall otherwise make available
to the indemnifying party all relevant information which is material to the
claim and which is in the possession of the indemnified party. If such event
involves the claim of any third party (a "Third-Party Claim"), the indemnifying
party shall have the right to elect to join in the defense, settlement,
adjustment or compromise of any such Third-Party Claim, and to employ counsel to
assist such indemnifying party in connection with the handling of such claim, at
the sole expense of the indemnifying party, and no such claim shall be settled,
adjusted or compromised, or the defense thereof terminated, without the prior
consent of the indemnifying party unless and until the indemnifying party shall
have failed, after the lapse of a reasonable period of time, but in no event
more than 30 days after written notice to it of the Third-Party Claim, to join
in the defense, settlement, adjustment or compromise of the same. An
indemnified party's failure within a reasonable time to give notice or to
furnish the indemnifying party with any relevant data and documents in its
possession in connection with any Third-Party Claim shall not constitute a
defense (in part or in whole) to any claim for indemnification by such party,
except and only to the extent that such failure shall result in any material
prejudice to the indemnifying party. If so desired by any indemnifying party,
such party may elect, at such party's sole expense, to assume control of the
defense, settlement,
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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adjustment or compromise of any Third-Party Claim, insofar as the claim relates
to the liability of the indemnifying party, provided that such indemnifying
party shall obtain the consent of all indemnified parties before entering into
any settlement, adjustment and compromise of such claim, or ceasing to defend
against such claim, if as a result thereof, or pursuant thereto, there would be
imposed on an indemnified party any liability or obligation not covered by the
indemnification obligations of the indemnifying party under this Option
Agreement (including, without limitation, any injunctive relief or other
remedy).
ARTICLE VII
COVENANTS
7.1 *
7.2 *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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7.3 Further Assurances.
(a) From time to time until the expiration of * from the Closing
Date, upon the request and at the expense of Buyer but without further
consideration, Seller shall:
(i) do, execute, acknowledge, deliver and file, or shall cause
to be done, executed, acknowledged, delivered and filed, all such further
acts, deeds, transfers, conveyances, assignments or assurances (including,
without limitation, for purposes of transferring record ownership of the
Option Assets to Buyer) as may be reasonably requested by Buyer for
transferring, conveying, assigning and reducing to Buyer's possession,
ownership and use of the Option Assets from and after Closing, including,
without limitation, executing on the Closing Date any assignments of
Trademarks in recordable form requested by Buyer; and
(ii) deliver to Buyer such other records, documentation and
information in Seller's possession or control as may be reasonably
requested by Buyer to assist Buyer in the use and protection of the Option
Assets from and after Closing.
(b) *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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*
ARTICLE VIII
GENERAL
8.1 Waiver. Any failure of Buyer, on the one hand, or Seller, on the
other, to comply with any of the obligations or agreements set forth in this
Option Agreement or to fulfill any condition set forth in this Option Agreement
may be waived only by written instrument signed by the other party. No failure
by any party to exercise, and no delay in exercising, any right hereunder shall
operate as a waiver of such right, nor shall any single or partial exercise of
any right hereunder by any party preclude any other or future exercise of that
right or any other right hereunder by that party.
8.2 Notices. All notices, requests or other communications required or
permitted hereunder (excluding, however, mail and/or communications covered
under paragraph 7.3(c) hereof) shall be given or made in writing and shall be
(i) delivered personally (including commercial carrier), (ii) sent by registered
or certified airmail, return receipt requested, postage prepaid or (iii) sent by
telecopier, addressed to the party to whom they are directed at the following
addresses, or at such other address as may from time to time be designated by
such party to the others in accordance with this Section 8.2:
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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If to Seller, to:
I. C. Xxxxxx & Company L.P.
0000 Xxxx Xxxxxx
Xxxxxxxxx, Xxxxxxxx 00000
Attention: President and Co-Chief Executive Officer
Telecopier: 410/558-2096
I. C. Xxxxxx & Company L.P.
000 Xxxxx Xxxxxx
Xxxxx 0000
Xxx Xxxx, Xxx Xxxx 00000
Attention: Chairman and Co-Chief Executive Officer
Telecopier: 212/695-7579
With a copy to:
Piper & Marbury L.L.P.
Xxxxxxx Center South
00 Xxxxx Xxxxxxx Xxxxxx
Xxxxxxxxx, Xxxxxxxx 00000-0000
Attention: Xxxxxx X. Xxxxxxx, Esq.
Telecopier: 410/576-1604
If to Buyer, to:
*
With a copy to:
Coudert Brothers
0000 X Xxxxxx, X.X.
Xxxxxxxxxx, X.X. 00000
Attention: Xxxxx X. Xxxxxx, Esq.
Telecopier: 202/775-1168
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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and
Howrey & Simon
0000 Xxxxxxxxxxxx Xxxxxx, X.X.
Xxxxxxxxxx, X.X. 00000
Attention: Xxxxxx X. Xxxxxxx, Esq.
Telecopier: 202/383-6610
Any notice, request or other communications shall be deemed to have been
given and to be effective upon receipt or refusal by the addressee. Any party
may change its address for notices hereunder, effective upon giving of notice of
such change hereunder to the other parties.
8.3 No Third Party Beneficiaries. Neither this Option Agreement nor any
provision hereof, nor any document or instrument executed or delivered pursuant
hereto, shall be deemed to create any right in favor of or impose any obligation
upon any person or entity other than Buyer and Seller and their respective
successors and assigns.
8.4 *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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*
8.5 Captions and Paragraph Headings. Captions and paragraph headings used
in this Option Agreement are for convenience only and are not a part of this
Option Agreement and shall not be used in interpreting or construing it.
8.6 Entire Agreement. The making, execution and delivery of this Option
Agreement by the parties has been induced by no representations, statements,
warranties or agreements other than those herein expressed. This Option
Agreement embodies the entire understanding of the parties with respect to the
subject matter hereof. Notwithstanding the foregoing, the parties acknowledge
that a number of different agreements and instruments of which the parties are
signatory are all being executed simultaneously with this Option Agreement.
This Option Agreement may be amended or modified only by an instrument of equal
formality signed by the parties or their duly authorized representatives. The
parties have made no representations or warranties not expressly set forth in
this Option Agreement. This Option Agreement supersedes and terminates all
prior discussions, negotiations, understandings, arrangements and agreements
among the parties relating to the subject matter hereof, except as expressly set
forth herein.
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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8.7 Counterparts. This Option Agreement may be executed in any number of
duplicate counterparts, each of which shall be deemed an original and all of
which together shall constitute one and the same instrument.
8.8 Assignability. Neither party hereto may assign any of its interests,
rights or obligations under this Option Agreement without the prior written
consent of the other party. Notwithstanding the foregoing, Buyer may assign its
rights, but not its obligations, under this Option Agreement to any entity under
common ownership and control with Buyer or to any successor-in-interest of Buyer
to the Option Assets without the consent of Seller. Any impermissible attempted
assignment of this Option Agreement without such prior written consent shall be
void as to the other parties to this Option Agreement. Notwithstanding anything
to the contrary set forth in this Agreement, Seller shall be permitted to assign
and transfer Seller's rights under this Agreement to any parent, subsidiary or
other affiliate of Seller if Seller or its successor in interest remains fully
liable for the performance of this Agreement by such assignee or transferee and
indemnifies Buyer with respect to any costs and damages Buyer may incur because
of such assignment or transfer.
8.9 Expenses. The parties shall each bear their own expenses in
connection with the negotiation, execution and delivery of this Option Agreement
and the performance of their respective obligations hereunder.
8.10 Successors and Assigns. This Option Agreement and the provisions
thereof shall be binding upon and inure to the benefit of the respective
successors and permitted assigns of the parties hereto.
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8.11 Governing Law. The validity, construction, operation and effect of
any and all of the terms and provisions of this Option Agreement shall be
determined and enforced in accordance with *
8.12 *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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*
8.13 *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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IN WITNESS WHEREOF, the parties have duly signed this Option Agreement the
day and year first written above.
I.C. XXXXXX & COMPANY L.P., a Delaware limited
partnership
By:_______________________________________
Name: Xxxxxx X. Xxxxx
Title: Chairman and Co-Chief Executive
Officer
By:_______________________________________
Name: Xxxxxx X. Xxxx
Title: President and Co-Chief Executive
Officer
*
By:_______________________________________
Name:
Title:
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
-26-
Exhibit F to 10.11
EXHIBIT F/FRA
SECURED LIMITED RECOURSE PROMISSORY NOTE
September __, 1997
FOR VALUE RECEIVED I.C. XXXXXX & COMPANY L.P., a limited partnership
organized and existing under the laws of the State of Delaware with its
principal place of business located at 0000 Xxxx Xxxxxx, Xxxxxxxxx, XX 00000
("Maker"), hereby promises to pay to *, a corporation organized and
existing under the laws of Delaware with its principal place of business
located at c/o The Corporation Trust Company, 0000 Xxxxxx Xxxxxx, Xxxxxxxxxx,
Xxx Xxxxxx Xxxxxx, Xxxxxxxx 00000 ("Lender"), the principal sum of U.S. $*,
on December 31, 2007. This Promissory Note is hereinafter referred to as the
"Note".
1. Interest. The outstanding principal sum of this Note shall bear
simple interest at the per annum rate of * (computed on the basis of a
365-day year and the number of actual days elapsed). Interest shall accrue
as of the date of this Note, and shall be payable quarterly on each January
31, April 30, July 31 and October 31 following the date hereof commencing on
January 31, 1998.
2. Prepayment. This Note may be prepaid at any time by Maker upon
payment of the total amount of principal (or, at the option of Maker, upon
termination of the Manufacturing Rights Agreement (as hereinafter defined)
for any reason, by the tender to Lender of the Option Assets pursuant to the
exercise by Maker of the "*" pursuant to the Option Agreement between Maker
and Lender of even date herewith (the "Option Agreement") and all interest
and late fees accrued but unpaid as of the date of prepayment (or the closing
date of the transfer of the Option Assets pursuant to the exercise of the *,
as the case may be), or upon such other terms as the parties may agree.
3. General Payment Provisions. (a) All payments of principal and
interest and other sums due pursuant to this Note shall be made by wire
transfer of immediately available funds to
_______________________________________ or to such other account as Lender
shall have previously designated to Maker in writing not later than fifteen
(15) Business Days (as defined below) prior to the date on which such payment
becomes due.
(b) If the due date of any payment under this Note would otherwise
fall on a day which is not a Business Day, such date will be extended to the
immediately succeeding Business Day. The term "Business Day" or " Business
Days" shall mean any day other than Saturday, Sunday, or a banking holiday of
the United States, State of New York, or *.
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
(c) A late payment fee of * per month of any principal or interest
payment made after the due date hereunder shall be due with any such late
payment, notwithstanding any right of cure by Maker.
(d) Payment of principal under this Note will constitute a
nonrecourse obligation of Maker payable solely from the Collateral (as
hereinafter defined). It is understood that the preceding sentence shall not
(A) prevent recourse to the Collateral for any sums due or to become due or
(B) constitute a waiver, release or discharge of any indebtedness or
obligation evidenced by or secured by this Note, but the same shall continue
until paid or discharged; provided, that the foregoing provisions of this
paragraph 3(d) shall not limit the right of Lender to name Maker as a party
defendant in any action, suit or in the exercise of any other remedy under
this Note, so long as no judgment in the nature of a deficiency judgment or
seeking personal liability of Maker with regard to the principal amount shall
be asked for or (if obtained) enforced against Maker.
4. Events of Default. An "Event of Default" shall occur upon one or
more of the following events:
(a) Maker shall default in the payment when due of any principal or
interest under this Note and such default shall continue unremedied for a
period of thirty (30) days after written notice from Lender; or
(b) Maker shall default in any material respect in the observance
or performance of its Obligations (as hereinafter defined) other than the
obligation to pay principal or interest hereunder, which default is not cured
within thirty (30) days after written notice from Lender; provided, that with
respect to the Foreign Manufacturing Rights Agreement between Lender and
Maker of even date herewith ("Manufacturing Rights Agreement"), an Event of
Default under this Note shall be deemed to have occurred only in the event of
an "Accelerating Act" as defined in the Manufacturing Rights Agreement and
with respect to the Concurrent Use Agreement between * and Maker of even date
herewith (the "Concurrent Use Agreement"), an Event of Default under the Note
shall be deemed to have occurred only in the event of a substantial material
breach of Sections 2.a., 2.b., 3.b. or 7.a. of the Concurrent Use Agreement; or
(c) Maker shall admit in writing its inability to, or be generally
unable to, pay its debts as such debts generally become due; or
(d) Maker shall (i) apply for or consent in writing to the
appointment of, or the taking of possession by, a receiver, custodian,
trustee or liquidation of itself or of all or a substantial part of its
property, (ii) make a general assignment for the benefit of its creditors,
(iii) commence a voluntary case under Title II of the United States Code (as
now or hereafter in effect) (the "Bankruptcy Code"), or such other such
similar law in any jurisdiction, (iv) file a petition seeking to take
advantage of any other law relating to bankruptcy, insolvency,
reorganization, winding-up, or composition or readjustment of debts, (v)
acquiesce in writing
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
-2-
to any petition filed against it in an involuntary case under the Bankruptcy
Code, or (vi) take any corporate action for the purpose of effecting any of
the foregoing; or
(e) a proceeding or case shall be commenced, without the
application or consent of Maker in any court of competent jurisdiction,
seeking (i) its liquidation, reorganization, dissolution or winding-up, or
the composition or readjustment of its debts, (ii) the appointment of a
trustee, receiver, custodian, liquidator or the like of such entity or of all
or any substantial part of its assets, or (iii) similar relief in respect of
such entity, under any law relating to bankruptcy, insolvency,
reorganization, winding-up, or composition or adjustment of debts, and such
proceeding or case shall continue undismissed, or an order, judgment or
decree approving or ordering any of the foregoing shall be entered and
continue unstayed and in effect in any such event, for a period of 120 days;
or an order for relief against any such entity shall be entered in an
involuntary case under the Bankruptcy Code or such other similar law in any
jurisdiction.
Upon and during the continuance of an Event of Default: (i) Lender may,
by written notice to Maker, declare the principal amount then outstanding of,
and the total interest on, this Note to be forthwith due and payable,
whereupon such amount shall be immediately due and payable without
presentment, demand, protest or other formalities of any kind, all of which
are hereby expressly waived by maker; (ii) Maker shall pay all of the
expenses of Lender incurred for the collection of this Note, including
reasonable attorneys' fees and legal expenses; and (iii) Lender may exercise
from time to time any other rights and remedies available to it by law,
including, without limitation, those available under any agreement or other
instrument relating to the amounts owed under this Note. No delay on the
part of Lender in the exercise of any right or remedy shall operate as a
waiver thereof, and no single or partial exercise by Lender of any right or
remedy shall preclude other or further exercise thereof or the exercise of
any other right or remedy.
5. Security.
(a) Definitions. For purposes of this Note, the following terms
have the meanings set forth below:
"Collateral" means all right, title and interest of Maker in and to the
Trademark Assets as defined in that certain Worldwide Rights Acquisition
Agreement dated September __, l997 (the "Acquisition Agreement"), except to
the extent such interests have been transferred to Lender pursuant to the
Foreign Acquisition Agreement (as hereinafter defined), together with the
goodwill related thereto, all rights of Maker under the Acquisition Agreement
and the Escrow Agreement referred to therein and all proceeds therefrom, and
all intellectual property rights uniquely associated with the Trademark
Assets including, but not limited to, titles, trademarks, names, as well as
any of the following used in connection with or as identifiers of the
trademarks constituting Trademark Assets: fabrics, styles, designs, and
colors other than those which are standard or traditional in the industry,
logos, symbols, copyrights, art work, inventions, (patented or unpatentable),
confidential information, trade secrets, patents and
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pending patent applications. Notwithstanding the foregoing, "Collateral"
shall not include any intent-to-use trademark applications.
"Lien" means a pledge, assignment, lien, charge, mortgage, encumbrance or
other security interest in the Collateral securing the payment of
indebtedness and any other obligations of Maker to Lender or * as provided
under this Note.
"Obligations" means the obligations of Maker (i) to make all payments of
principal, interest and other amounts due under this Note (ii) under the
Option Agreement and the Concurrent Use Agreement, and (iii) under the
Manufacturing Rights Agreement.
"Trademarks" means the trademarks constituting Trademark Assets.
(b) Grant of Security Interest. Maker hereby pledges, assigns and
grants to Lender a Lien in all of its respective right, title and interest in
and to the Collateral as security for the Obligations. All property and
rights constituting Collateral are assigned hereunder by Maker to Lender as
security for the payment or other satisfaction, as applicable, of the
Obligations. Upon the occurrence and during the continuance of an Event of
Default, Lender shall have all rights and remedies of a secured party under
the Uniform Commercial Code. All rights of Lender and all Liens hereunder
and all obligations of Maker hereunder shall be absolute and unconditional
irrespective of any lack of validity or enforceability of this Note, any
release or nonperfection of any portion of the Collateral, or any other
circumstance which might otherwise constitute a defense available to, or a
discharge of Maker in respect of the Obligations or this Agreement.
(c) Performance under Contract. Maker shall remain liable to
perform all of its duties and obligations under any contracts which have been
pledged or assigned hereunder to Lender (including, without limitation, the
Acquisition Agreement and the Escrow Agreement), except to the extent said
obligations have been assumed by Lender pursuant to the Foreign Boss Rights
Acquisition Agreement between Lender and Maker dated September __, 1997 (the
"Foreign Acquisition Agreement"), to the same extent as if this Note had not
been executed, and the exercise by Lender of any of its rights hereunder
shall not release Maker from any of its respective duties or obligations
under such agreements.
(d) Delivery and Perfection. Maker shall, promptly upon Lender's
written request, execute and file financing or continuation statements and
amendments thereto and collateral assignments of trademarks with the
appropriate state and local authorities and the U.S. Patent & Trademark
Office ("USPTO") relating to all or any part of the Collateral where
permitted by applicable law and take all such other actions and to execute,
deliver and file, or cause to be filed, financing and continuation statements
or such other instruments or documents or amendments thereto, and perform
such acts as Lender may reasonably require in order to create, perfect,
establish, preserve and maintain a perfected, valid and continuing security
interest of Lender in the Collateral. To the extent permitted by law, Maker
hereby grants to Lender a Power of Attorney to execute and file any and all
of the foregoing documents and
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
-4-
instruments and to take all such actions and perform all such acts in the
name of Maker as Lender shall deem appropriate or necessary in its sole
discretion in order to create, perfect, establish, preserve and maintain a
perfected, valid and continuing security interest of Lender in the Collateral
Copies of all documents executed by Lender on Maker's behalf under such
power of attorney shall be delivered by Lender to Maker.
(e) Use of Collateral. Except upon the occurrence and during the
continuation of any Event of Default, Maker may in the ordinary course of
its business use the Collateral in accordance with the Concurrent Use
Agreement.
(f) Covenants. During the term of this Agreement, Maker shall:
(i) perform or observe any contract constituting the Collateral
(including, without limitation, the Acquisition Agreement and Escrow
Agreement), except to the extent the obligations thereunder have been assumed
by Lender pursuant to the Foreign Acquisition Agreement, and enforce all such
contracts. Without limiting the generality of the foregoing, Lender shall
have the right to direct Maker to enforce the rights of Maker against
Brookhurst and the "Escrow Agent" under the terms of the Acquisition
Agreement and Escrow Agreement, as applicable, provided that Lender pays all
costs incurred by Maker thereby. In that connection, Maker shall promptly
provide to Lender copies of all notices received under such contracts. Maker
shall not give any notice under any such contract without the prior written
consent of Lender, which shall not be unreasonably withheld or delayed.
Unless otherwise agreed by the parties hereto, with respect to any amounts
which Maker is entitled to receive pursuant to a Buyer Indemnity Claim under
the Acquisition Agreement, whether pursuant to the Escrow Agreement as a
result of a Settled Claim as defined therein, or otherwise, the parties agree
that Maker shall have the right to receive payments of all Actual Costs, as
defined below, from the proceeds of such claim. For purposes of this Section
5, Actual Costs means (a) Maker's actual incurred costs with respect to the
prosecution, litigation and settlement of a Buyer Indemnity Claim of Maker,
and any proceedings brought in connection therewith (including reasonable
attorneys' fees), and (b) any damages awarded Maker or settlement amounts
paid or payable to Maker in connection with the matters described in clause
(a) to the extent they represent recovery of out-of-pocket costs or expenses
of Maker. Any proceeds of any Buyer Indemnity Claim of Maker in excess of
Actual Costs shall be remitted directly to Lender, and Maker shall direct to
the Escow Agent that they be remitted directly to Lender and, to the extent
any such funds come into the possession of Maker, they shall be held in trust
by Maker for the benefit of Lender until remitted to Lender.
(ii) maintain all Collateral in full force and effect to the extent
so directed by Lender under paragraph (g)(i) and at Lender's cost, including,
without limitation, by using all reasonable efforts to prosecute all
applications for registration of trademarks constituting the Trademark
Assets, using all Trademarks in accordance with the Concurrent Use Agreement
and otherwise as Lender shall direct in such manner as to preserve the
continued existence and registration of such Trademarks on all products for
which they are registered or applied for in the USPTO and policing the U.S.
markets for infringers and counterfeiters.
-5-
(iii) not without the prior written consent or direction of
Lender sell, assign or otherwise dispose of or cause to be disposed of, any
Collateral either directly or indirectly or by operation of law, or create or
suffer to exist any lien, other than the Lien in favor of Lender, or take any
action that might reasonably be expected to materially impair the value of
the Collateral or the security interest granted herein.
(g) *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
-6-
*
(h) Duties of Lender. The powers conferred on Lender hereunder are
to protect Lender's interest in the Collateral and, except as otherwise
provided herein, shall not impose any duty upon it to exercise any such
powers. Except for the safe custody of any Collateral or any portion thereof
in its possession, Lender shall have no duty as to the Collateral or as to
the taking of any necessary steps to preserve rights against other parties.
(i) *
(j) Excluded Property. Promptly upon Maker's written request from
time to time, Lender shall execute and deliver to Maker (or such other
persons as Maker may designate)
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
-7-
such documents as Maker may reasonably request to confirm to Maker (and any
such designee) that under this Note Lender holds no lien or security interest
in or upon any Excluded Property. As used in this Note, the term "Excluded
Property" means any property or assets of Maker other than the Collateral and
includes specifically Maker's inventory and products in progress bearing the
Trademarks, which inventory and products in progress are subject to the
sell-off and related rights contained in Section 7.2(c) of the Option
Agreement and in Section 15.j. of the Manufacturing Rights Agreement.
6. No Assignment. The rights and obligations under this Note may not
be assigned by Maker without the prior written consent of Lender. Lender may
assign this Note to any third party. Notwithstanding anything to the
contrary set forth in this Note, Maker shall be permitted to assign and
transfer Maker's rights under this Note to any parent, subsidiary or other
affiliate of Maker if Maker or its successor in interest remains fully liable
for the performance of this Note by such assignee or transferee and
indemnifies Lender with respect to any costs and damages Lender may incur
because of such assignment or transfer.
7. Entire Agreement. The terms of this Note evidence the entire
agreement between Maker and Lender regarding the indebtedness evidenced by
this Note.
8. Governing Law. This Note shall be governed by, and construed in
accordance with, the laws of *
9. Notices. All notices, requests or other communications required or
permitted hereunder shall be given or made in writing and shall be (i)
delivered personally (including commercial carrier), (ii) sent by registered
or certified airmail, return receipt requested, postage prepaid or (iii) sent
by telecopier, addressed to the party to whom they are directed at the
following addresses, or at such other address as may from time to time be
designated by such party in accordance with this Section 9:
If to Maker, to:
I. C. Xxxxxx & Company L.P.
0000 Xxxx Xxxxxx
Xxxxxxxxx, Xxxxxxxx 00000
Attention: President and Co-Chief Executive Officer
Telecopier: 410/558-2096
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
-8-
I. C. Xxxxxx & Company L.P.
000 Xxxxx Xxxxxx
Xxxxx 0000
Xxx Xxxx, Xxx Xxxx 00000
Attention: Chairman and Co-Chief Executive Officer
Telecopier: 212/695-7579
With a copy to:
Piper & Marbury L.L.P.
Xxxxxxx Center South
00 Xxxxx Xxxxxxx Xxxxxx
Xxxxxxxxx, Xxxxxxxx 00000-0000
Attention: Xxxxxx X. Xxxxxxx, Esq.
Telecopier: 410/576-1064
If to Lender, to:
*
*
With a copy to:
Coudert Brothers
0000 X Xxxxxx, X.X.
Xxxxxxxxxx, X.X. 00000
Attn.: Xxxxx X. Xxxxxx, Esq.
Telecopier: 202/775-1168
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
-9-
and
Howrey & Simon
0000 Xxxxxxxxxxxx Xxxxxx, X.X.
Xxxxxxxxxx, X.X. 00000
Attention: Xxxxxx X. Xxxxxxx, Esq.
Telecopier: 202/383-6610
Any notice, request, demand or other communications shall be deemed to
have been given and to be effective upon receipt or refusal by the addressee.
Any party may change its address for notices hereunder, effective upon
giving notice of such change hereunder to the other parties.
10. Adjustment of Interest Rate or Fees. No provision of this Note
shall require the payment of interest to the extent that receipt of any such
payment by Lender would be contrary to the provisions of United States law,
if any, limiting the maximum amount of interest or fees that may be charged
to or collected from Maker, and if any sum in excess of such maximum rate of
interest or fees is paid or charged, the excess will be returned to Maker,
without premium or penalty, and all payments made thereafter will be
appropriately applied to interest and principal to give effect to such
maximum rate, and after such application any amount paid in excess of
principal due Lender shall be immediately refunded to Maker.
If the maximum rate of interest, if any, now permitted by law to be
charged for this transaction is increased, then for so long as the increase
is in effect, the applicable maximum rate permitted to be charged as referred
to in the paragraph immediately preceding will be deemed to be such increased
rate. If the maximum rate of interest, if any, now permitted by law to be
charged for this transaction should be eliminated so that there would be no
maximum rate, then interest on this Note shall thereafter be paid at the rate
provided in this Note.
11. Waiver. Maker hereby waives diligence, presentment, protest, demand
for payment and notice of default, dishonor or nonpayment to or upon Maker
with respect to this Note, except as otherwise provided herein. No delay on
the part of Lender in exercising any right hereunder shall operate as a
waiver of such right under this Note.
12. Modifications in Writing. This Note may not be changed orally, but
only by an agreement in writing, signed by the party against whom enforcement
of any waiver, change, modification or discharge is sought.
13. Execution by Lender. Notwithstanding anything in this Note to the
contrary, this Note shall not be effective and enforceable against Maker
unless and until it has been signed below by Lender. Lender signs below to
further evidence Lender's agreement to be bound by the terms of this Note.
-10-
14. *
15. Release of Collateral; Return of Note. Upon payment to Lender of
all principal and accrued and unpaid interest thereon, and any late charge
due under this Note, and subject to the rights of Lender under the Option
Agreement, Lender's Lien on the Collateral shall immediately cease, terminate
and be released and Lender shall execute and deliver to Maker such releases,
re-assignments and termination statements as may be legally necessary or
customary to further effect such release and termination, and Lender shall
promptly return the original of this Note to Lender marked "Satisfied and
Cancelled."
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
-11-
16. *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
-12-
I.C. XXXXXX & COMPANY L.P., a Delaware
limited partnership
By:_____________________________
Name: Xxxxxx X. Xxxxx
Title: Chairman and Co-Chief
Executive Officer
By:_____________________________
Name: Xxxxxx X. Xxxx
Title: President and Co-Chief
Executive Officer
*
By:_____________________________
Name:
Title:
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
-13-
EXHIBIT 10.11(G)
EXHIBIT G/FRA
NOTE ASSUMPTION AGREEMENT
THIS NOTE ASSUMPTION AGREEMENT is made and entered into this ___ day of
September 1997, by and between I.C. Xxxxxx & Company L.P., a Delaware limited
partnership ("Xxxxxx") and *, a Delaware corporation ("*").
W I T N E S S E T H:
WHEREAS, Xxxxxx has agreed to sell, transfer and assign to *, and
* has agreed to purchase and accept from Xxxxxx certain assets of Xxxxxx
pursuant to a Foreign Boss Rights Acquisition Agreement entered into on
September __, 1997 between Xxxxxx and * (the "Acquisition Agreement");
WHEREAS, * has agreed to assume, pay and fully discharge all
obligations of Xxxxxx under that certain Promissory Note of even date hereof
of Xxxxxx issued to Brookhurst, Inc. (the "Note");
NOW, THEREFORE, in consideration of the mutual covenants contained herein,
and other good and valuable consideration, the receipt and sufficiency of which
is hereby acknowledged, it is agreed as follows:
1. Capitalized terms used herein and not defined herein shall have the
meanings given such terms in the Acquisition Agreement.
2. * hereby fully, unconditionally and irrevocably assumes and
covenants to fully pay and fully discharge all obligations of Xxxxxx under
the Note.
3. Xxxxxx hereby assigns to * all its rights under the Note free and
clear of all Encumbrances made, created or caused by Xxxxxx.
4. *
5. * hereby covenants to execute and deliver to Xxxxxx such further
assurances of this Assumption Agreement as Xxxxxx may require from time to
time.
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
IN WITNESS WHEREOF, the parties have hereunto set their hands and seals
the day, month and year first above written.
I.C. XXXXXX & COMPANY L.P., a Delaware
limited partnership
By:
--------------------------------------
Name: Xxxxxx X. Xxxxx
Title: Chairman and Chief
Co-Executive Officer
By:
--------------------------------------
Name: Xxxxxx X. Xxxx
Title: President and Co-Chief
Executive Officer
*
By:
--------------------------------------
Name:________________________
Title:_______________________
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
EXHIBIT H/FRA
EXHIBIT 10.11(H)
GUARANTY OF PROMISSORY NOTE
For valuable consideration, the undersigned, *, a *
corporation ("Guarantor"), hereby unconditionally guarantees the due, prompt
and complete performance (including payment) at stated maturity, by
acceleration or otherwise by I.C. Xxxxxx & Company L.P., a Delaware limited
partnership ("Buyer"), of each and every obligation and liability now or
hereafter existing of Buyer under that certain Promissory Note, dated
September __ 1, 1997 ("Note") to Brookhurst, Inc. ("Seller") whether for
principal, interest, fees, expenses, attorneys' fees, court costs and
collection charges incurred by Seller in enforcing this Guaranty ("the
"Obligations") or otherwise.
The obligations of Guarantor under this Guaranty are independent of
the obligations of Buyer, and a separate action or actions may be brought
against Guarantor, whether action is brought against Buyer or whether Buyer is
joined in any such action or actions; provided, however, Seller shall be
required to first comply with any procedures specified in the Note or any
agreement ancillary thereto with respect to demands to be made against Buyer or
actions to be taken in order to quantify an amount due or identify an issue in
dispute.
If any provision of this Guaranty is held invalid or unenforceable,
the remainder of this Guaranty shall not be affected thereby, the provisions of
this Guaranty being severable in any such instance.
Guarantor guarantees that the Obligations will he paid strictly in
accordance with the terms of the Note, regardless of any law, regulation or
order, except an order with respect to the liability of Buyer or Guarantor under
this Note now or hereafter in effect in any jurisdiction affecting any of such
terms or the rights of Seller with respect thereto. The liability of Guarantor
under this Guaranty shall be absolute and unconditional irrespective of:
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
*
Any action, inaction, change, extension, waiver, or consent referred to above
may be in such manner and upon such terms Seller and Buyer may deem proper, and
without notice to or further assent from the Guarantor, and all without
affecting this Guaranty or the obligations of the Guarantor hereunder, which
shall continue in full force and effect until all of the Obligations and all
obligations of the Guarantor hereunder shall be fully paid and performed.
Guarantor hereby waives promptness, diligence, presentment, demand,
protest, notice of acceptance or of the occurrence of an Event of Default and
any other notice with respect to any of the Obligations and this Guaranty and
any requirement that Seller exhaust any right or take any action against Buyer
or other person or entity.
Guarantor hereby represents and warrants as follows:
(i) The execution, delivery and performance by Guarantor of this
Guaranty do not contravene any law or contractual restriction
binding on or affecting Guarantor.
(ii) No authorization or approval or other action by, and no notice
to or filing with, any governmental authority or regulatory
body is required for the due execution, delivery and
performance by Guarantor of this Guaranty.
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
2
(iii) This Guaranty is a legal, valid and binding obligation of
Guarantor, enforceable in accordance with its terms.
No amendment or waiver of any provision of this Guaranty nor consent
to any departure by Guarantor therefrom shall in any event be effective unless
the same shall be in writing and signed by Seller.
No failure on the part of Seller to exercise, and no delay in
exercising, any right hereunder shall operate as a waiver thereof; nor shall any
single or partial exercise of any right hereunder preclude any other or further
exercise thereof or the exercise of any other right. The remedies herein
provided are cumulative and not exclusive of any remedies provided by law.
This Guaranty is *
Seller *, may proceed to exercise any right or remedy which it
may have under this Guaranty without pursuing or exhausting any right or
remedy which it may have against Buyer or any other person or entity, for any
or all of the Obligations; and Seller may proceed to exercise any right or
remedy which it may have under this Guaranty without regard to any actions or
omissions of Buyer or any other person or entity subject to the right of
set-off set forth in Section 6 of the Note and Section 9.12 of the
Acquisition Agreement.
This Guaranty shall be governed by, and construed in accordance
with, the laws of * without reference to its choice of law rules. *
IN WITNESS WHEREOF, Guarantor has caused this Guaranty to be duly
executed and delivered by its officer thereunto duly authorized as of the date
first above written. This Guaranty shall terminate immediately upon satisfaction
of the Note.
Dated: September __, 1997 *
By:
------------------------------
Name:
----------------------------
Title:
---------------------------
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
3
WITNESSES:
---------------------------------
---------------------------------
EXHIBIT I/FRA
10.11(I)
AGREEMENT REGARDING CONSENT TO RELEASE
AND WAIVER OF BROOKHURST NOTE CLAIMS
THIS AGREEMENT made as of the _____ day of __________, 1997, by and
among *, a corporation organized and existing under the laws of * and I.C.
XXXXXX & COMPANY L.P., a limited partnership organized and existing under the
laws of the State of Delaware ("Xxxxxx").
Recitals; Certain Defined Terms
X. Xxxxxx has agreed to execute and deliver to Brookhurst, Inc., a
corporation organized and existing under the laws of the State of California
("Brookhurst") a Promissory Note in the principal amount of $11,000,000
("Brookhurst Note"), as part of the purchase price under that certain Worldwide
Rights Acquisition Agreement between Xxxxxx and Brookhurst ("Worldwide
Acquisition Agreement") dated September ___, 1997.
B. *, a corporation organized and existing under the laws of the State
of Delaware ("*") has agreed to assume all of Xxxxxx obligations under the
Brookhurst Note pursuant to the terms of a Note Assumption Agreement dated on
or about the same date as this Agreement.
C. * has agreed to execute and deliver to Brookhurst a Guaranty of the
Brookhurst Note ("* Guaranty").
D. Brookhurst has agreed to release Xxxxxx from all obligations under
the Brookhurst Note at such time as * assumes the obligations of Xxxxxx under
the Brookhurst Note, and * provides the * Guaranty to Brookhurst.
NOW, THEREFORE, in consideration of the foregoing, and the receipt of *
and other good and valuable consideration, the receipt of which is hereby
acknowledged, * hereby agrees as follows for the benefit of Xxxxxx.
1. * hereby irrevocably consents to the full release of Xxxxxx from all
liability under the Brookhurst Note and agrees to be bound by that release in
accordance with the provisions of the Brookhurst Note.
2. * shall not have any recourse whatsoever to Xxxxxx or Xxxxxx' assets
at any time for any obligations under the Brookhurst Note, and hereby
irrevocably waives any claims that * may have against Xxxxxx and Xxxxxx'
assets in respect of the Brookhurst Note. Without limiting the generality of
the foregoing, if * shall pay or perform its obligations under the * Guaranty
or under the Brookhurst Note, * shall not have, and hereby irrevocably
waives, any claim, including without limitation any claim for reimbursement,
contribution or indemnity from Xxxxxx or its partners to which * may be
entitled at any time under applicable law relating to the * Guaranty or the
Brookhurst Note, whether in * capacity as a guarantor, endorser,
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
-1-
surety, or co-obligor or in any other capacity. Nothing set forth herein shall
be deemed to affect the indemnification obligations of Xxxxxx to * under the
Foreign Boss Rights Acquisition Agreement between * and Xxxxxx.
3. This Agreement shall be binding upon * and its successors and
assigns.
In Witness Whereof, and intending to be legally bound hereby, * and
Xxxxxx execute this Agreement as of the date first above written.
*
By:
------------------------------
Name:
Title:
I.C. XXXXXX & COMPANY L.P.
By: I.G. Design, Inc.
By:
---------------------------
Name:
Title:
By:
---------------------------
Name:
Title:
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
-2-
10.11(J)
EXHIBIT J/FRA
1. Brookhurst may retain copies of records and documents containing the
name and xxxx "BOSS" for archival purposes and may make (i) oral references,
(ii) the written references set forth in the Attachment hereto, and (iii)
with the prior written approval of *, which shall not be unreasonably
withheld, other written references to the name and xxxx "BOSS", in each such
case in connection with its uniform business solely for purposes of
describing the history of Brookhurst but shall not be used for sales or
promotional purposes. In addition, Brookhurst may make reference to its past
use of the name and xxxx BOSS in its financial statements and, to the extent
required, in any public filing. In addition, posters bearing the Trademarks
may be retained and displayed in the private offices of Brookhurst's
executives but may not, under any circumstances, be displayed in any public
areas of Brookhurst's business premises such as reception areas and showrooms.
2. Xxxxxx Samples. Brookhurst owns approximately 4000 finished
sportswear garments manufactured by Xxxxxx with a label that bears a BOSS
logo in its possession, including but not limited to denim jeans, shorts,
jackets, coats, skirts, crew neck shirts, sweat shirts, collar and placket
shirts, blouses and hats (such garments referred to in this paragraph 2 being
hereinafter referred to as the "Xxxxxx Samples"). Brookhurst shall permit *
and/or its attorneys to (i) review; (ii) obtain two dozen Xxxxxx Samples at
no cost to *; and (iii) purchase, at wholesale cost, any additional Xxxxxx
Samples. Thereafter, Brookhurst may, only for a period of six months after
the Closing Date, sell and distribute the Xxxxxx Samples in its possession;
provided, however, that Brookhurst shall not sell or offer any Xxxxxx Samples
for sale or resale (i) outside of the United States, its territories,
possessions or commonwealths or (ii) to athletic stores whose primary product
line is composed of products intended to be used in connection with golf,
tennis, skiing, sailing, windsurfing, motor sports or any combination
thereof, or at golf, tennis, skiing, sailing, windsurfing, or motor sports
athletic events.
3. Old Logo Samples. Brookhurst owns approximately 119 finished
sportswear garments manufactured by or on behalf of * including but not
limited to crew neck shirts, sweat shirts, collar and placket shirts, hats,
and jackets (such garments referred to in this paragraph 3 being hereinafter
referred to as the "Old Logo Samples"). Brookhurst shall not sell or
otherwise distribute the Old Logo Samples in its possession except in
accordance with this paragraph 3. Brookhurst may retain and distribute to its
executives and attorneys no more than twenty-four (24) Old Logo Samples.
Brookhurst shall tender, at no cost to *, the remaining Old Logo Samples, and
* within 60 days shall either donate the Old Logo Samples to charity, or
otherwise dispose of the Old Logo Samples, in * sole discretion. If * donates
the Old Logo Samples to charity, * shall make reasonable efforts to obtain a
receipt on behalf of Brookhurst evidencing
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
3
such donation. If * fails to donate the Old Logo Samples to charity or
dispose of them within 60 days, Brookhurst may donate such samples to the
charity or charities of its choice.
4. New Logo Samples. Brookhurst owns approximately _____ finished
sportswear garments manufactured by or on behalf *, including but not limited
to crew neck shirts, sweat shirts, collar and placket shirts, hats, and
jackets (such garments referred to in this paragraph 4 being hereinafter
referred to as the "New Logo Samples"). Brookhurst shall permit * and/or its
attorneys to (i) review; (ii) obtain two dozen New Logo Samples at no cost to
* and (iii) purchase, at wholesale cost, any additional New Logo Samples.
Thereafter, Brookhurst may, only for a period of six (6) months after the
Closing Date, sell and distribute the New Logo Samples in its possession,
provided; however, that neither Brookhurst nor any affiliate thereof shall
sell, or offer any New Logo Samples for sale or resale (i) outside of the
United States, its territories, possessions or commonwealths or (ii) to
athletic stores whose primary product line is composed of products intended
to be used in connection with golf, tennis, skiing, sailing, windsurfing,
motor sports or any combination thereof or at golf, tennis, skiing, sailing,
windsurfing, or motor sports athletic events.
4
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
ATTACHMENT TO EXHIBIT J
From 1889 to 1997, Brookhurst and its predecessor companies manufactured and
sold clothing under the Brookhurst BOSS label.
10.11(K)
10.11(L)
EXHIBIT L/FRA
*
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
-2-
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
-3-
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
-4-
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
-5-
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
-6-
