Exhibit 10.22
INTERNATIONAL
-------------
EXCLUSIVE LICENSE AGREEMENT
--------------------------- BHPC.12I
THIS AGREEMENT is made and entered into this 15th day of August, 1996 by
and between BHPC Marketing, Inc., a corporation duly organized and existing
under the laws of California, having its principal place of business at 000
Xxxx 000xx Xxxxxx, Xxxxxxx, Xxxxxxxxxx 00000 (hereinafter referred to as
"LICENSOR"), and Zacari 2000, S.L., a Spanish Limited Corporation, having its
principal place of business at x/XXXXX 00, X0, 00000, Xxxxxxxxx, Xxxxx
(hereinafter referred to as "LICENSEE").
WHEREAS, LICENSOR is the owner with the right to grant licenses of the
Trademarks illustrated in Exhibit "A" attached hereto (the "Trademarks"); and
WHEREAS, LICENSEE is desirous of obtaining the exclusive right to use
the aforesaid Trademarks in connection with the import or manufacture and
sale of certain licensed products defined herein.
NOW, THEREFORE, it is agreed by the parties as follows:
1. DEFINITIONS
-----------
The following terms shall have meanings as set forth below:
a. "Trademarks" shall mean the Trademarks set forth in Exhibit "A".
b. "Territory" shall mean that geographical area defined in item 1 of the
attached License Agreement Detail Schedule.
c. "Licensed Product" shall be defined as set forth in item 2 of the
attached License Agreement Detail Schedule.
d. *
2. RIGHTS GRANTED
--------------
LICENSOR hereby grants to LICENSEE, upon the terms and conditions set
forth herein, an exclusive, personal, non-transferable, non-assignable
license, without the right to grant sublicenses, to use the Trademarks
solely on or in conjunction with the design, manufacture, import,
distribution, advertising, promotion, shipment, and sale of the Licensed
Product in the Territory. This license is extended to and includes retail
sales only, and includes the right the grant franchise agreements in the
Territory.
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
BHPC.12I
3. *
4. GOOD WILL AND PROMOTIONAL VALUE
-------------------------------
a. LICENSEE recognizes the value of the good will associated with the
Trademarks and acknowledges that the Trademarks, and all rights therein
and the good will pertaining thereto, belong exclusively to LICENSOR.
LICENSEE further recognizes and acknowledges that the Trademarks have
acquired secondary meaning in the mind of the public.
b. LICENSEE agrees that its use of the Trademarks shall inure to the benefit
of LICENSOR and that LICENSEE shall not, at any time, acquire any rights
in the Trademarks by virtue of any use it may make of the Trademarks.
c. LICENSEE acknowledges that LICENSOR is entering into this Agreement not
only in consideration of the royalties paid hereunder but also for the
good will and promotional value to be secured by LICENSOR for the
Trademarks as a result of the manufacture, offering for sale, sale,
advertising, promotion, shipment and distribution of the Licensed Product
by LICENSEE.
5. *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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b. *
c. *
(i) *
(ii) *
(iii) *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
3
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*
d. LICENSEE agrees that the Licensed Product and all Promotional and
Packaging Material shall contain only those legends, markings
and/or notices as required from time to time by LICENSOR to give
appropriate notice to the consuming public of LICENSOR's right,
title and interest thereto.
e. LICENSOR may, periodically and from time to time during the
term of this Agreement, require that LICENSEE submit to LICENSOR,
at no cost to LICENSOR, or LICENSOR or its designees may randomly
select and retain during the inspection referred to in
Xxxxxxxxxxxx 0x, xxxxx, one (1) additional set of Production
Samples of the Licensed Product and/or the Promotional and
Packaging Material relating to the Licensed Product for subsequent
review and written approval of the quality of, trademark usage and
notice on same, and for any other purpose that LICENSOR deems
appropriate.
f. To assure that the provisions of this Paragraph 5 are being
observed, LICENSEE agrees that it will allow LICENSOR or its
designees, periodically and from time to time
during the term of this Agreement, to enter LICENSEE's premises
and/or the premises where the Licensed Product is being
manufactured or inventoried during regular business hours and upon
reasonable notice, for the purposes of inspecting and approving the
Licensed Product and the Promotional and Packaging Material
relating to the Licensed Product.
g. *
6. ADVERTISING/USE OF THE TRADEMARK
--------------------------------
a. LICENSEE will adopt and carry out its own marketing and advertising
program with respect to the Licensed Product. LICENSEE agrees
that LICENSEE's advertising, public relations and sales promotion
activities will be subject to prior consultation with, and written
approval by, LICENSOR as to the general form and content only with
respect to the use of the Trademarks and other notices.
b. LICENSEE shall, on the last day of each respective Contract Year,
submit to LICENSOR any documentation as shall be reasonably
requested by LICENSOR to evidence the expenditure of such
Advertising Expense. In the event that LICENSEE fails to spend the
entire Advertising Expense during the
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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respective Contract Year in which the Advertising Expense was to
be expended hereunder, LICENSEE will, on the day following the
last day of the respective Contract Year, pay to LICENSOR the
total sum of the Advertising Expense which was not expended
hereunder.
c. *
d. LICENSEE agrees that upon request of LICENSOR, it shall loan a
reasonable number of products to LICENSOR and its other licensees
for advertising and promotional purposes.
e. *
f. *
g. *
h. LICENSEE shall affix such legends, markings and notices on all
License Product as are required by LICENSOR and the law.
i. LICENSEE must submit for approval to LICENSOR a printer's proof of
each item before final printing.
7. DURATION OF THE AGREEMENT
-------------------------
a. This Agreement shall continue for three (3) consecutive Contract
Years in respective durations as set forth in item 3 of the
attached License Agreement Detail Schedule (hereinafter
collectively the "Initial Term") and shall then expire unless
sooner terminated in accordance with the terms and conditions set
forth herein.
b. If LICENSEE fully performs according to all of the terms and
conditions hereof including, without limitation, the terms and
conditions specifically enumerated below, LICENSEE shall have
three (3) consecutive options to renew this Agreement for three
(3) consecutive contract periods, i.e. Contract Years,
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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of one (1) year each (hereinafter collectively the "Renewal
Term"). In order to exercise each individual option, LICENSEE must
provide LICENSOR with written notice of its intention to exercise each
respective option and such written notice must be received by LICENSOR
no later than * prior to the expiration of
the Initial Term or immediately preceding Contract Year of the Renewal
Term. * Except as specifically set forth herein to the
contrary, LICENSEE's performance in the Renewal Term shall be pursuant
to the same terms and conditions recited herein for the Initial Term.
8. ROYALTIES
---------
a. "Royalty", as used in this Agreement, shall consist of:
(i) "LICENSEE" paying to LICENSOR, during the term of this Agreement, a
Royalty in an amount equal to four percent (4%) of the Wholesale
Purchases by "LICENSEE" for Licensed Product under the Trademarks to
Xxxxxxx Hills Polo Club Retail Stores. *
(ii) LICENSEE paying to LICENSOR, during the term of this Agreement, a
Royalty in an amount equal to two percent (2%) of retail sales of
Licensed Product by Xxxxxxx Hills Polo Club Franchise Retail Stores.
b. *
c. *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
6
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*
9. PAYMENT
-------
a. *
b. *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
7
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c. LICENSEE's statements shall be submitted to:
BHPC Marketing, Inc.
000 Xxxx 000xx Xxxxxx
Xxxxxxx, Xxxxxxxxxx 00000
Attn: Royalty Receivables Department
All amounts payable to LICENSOR by LICENSEE shall be wire transferred to:
Bank Name: First Interstate Bank
Bank ABA#: 000000000
Bank Address: 000 Xxxxxxxx Xxxx.
Xxx Xxxxxxx, XX 00000
Account Name: BHPC Marketing, Inc.
Account Number: 000-0-00000
d. *
e. All payments made hereunder shall be in United States dollars in United
States currency; amounts shall be computed at the exchange rate existing at
noon on the last business day preceding the day payment is due to be made
hereunder. If payment is late, LICENSOR has the option to require that
payment be made at the exchange rate on the day preceding actual payment.
f. *
10. GUARANTEES
a. Guaranteed Annual Royalty Payments - LICENSEE shall pay, for each
Contract Year during the term of
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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BHPC.12I
this Agreement, beginning with the First Contract Year, the respective
Guaranteed Annual Royalty Payments set forth in item 7 of the attached
License Agreement Detail Schedule.
b. Guaranteed Target Net Shipments - If, in any Contract Year, LICENSEE does
not achieve the Guaranteed Target Net Shipment Volume figure set forth in
item 7 of the attached License Agreement Detail Schedule LICENSOR may, at
its option, immediately therefter terminate this Agreement in writing.
c. Guaranteed Net Shipments - If, in any Contract Year, LICENSEE does not
achieve the Guaranteed Net Shipments figure for a particular country set
forth in item 7 of the attached Licensed Agreement Detail Schedule
LICENSOR may, at its option, immediately therafter terminate this Agreement
in writing for that particular country only.
d. *
e. *
11. EXPLOITATION BY LICENSEE
a. LICENSEE agrees to commence, and diligently continue thereafter, the
distribution, shipment and sale of the Licensed Product in commercially
reasonable quantities in the Territory on or before the respective
distribution date set forth next to the Licensed Product described in
item 2 of the attached License Agreement Detail Schedule.
b. LICENSEE agrees that the Licensed Product will only be shipped to and
sold by authorized Xxxxxxx Hills
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
9
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Polo Club Retail stores. The manner and scope of the distribution of the
Licensed Product, availability, variety, fabrication, colors and sizes are
critical to the promotion, enhancement and protection of the Trademarks and
their associated goodwill. LICENSEE acknowledges that it has no right to
and shall not sell or distribute the Licensed Product to any diverter or to
anyone outside of the Territory or to any Distributor who is not a BHPC
Authorized Distributor.
c. *
12. *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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BHPC.12I
*
13. INSURANCE
LICENSEE shall obtain and maintain at its sole cost and expense
throughout the Term and the Disposal Period standard product liability
insurance, the form of which must be acceptable to LICENSOR, from a
qualified insurance company licensed to do business naming LICENSOR as
additional named insured, which policy shall provide protection against
any and all claims, demands and causes of action arising out of any
defects or failure to perform, alleged or otherwise, in the Licensed
Product or any material used in connection therewith or any use thereof.
*
14. USE, DISPLAY, AND SALE INVOLVING THE TRADEMARKS AND COPYRIGHT
*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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*
b. *
15. OWNERSHIP OF THE TRADEMARKS
---------------------------
a. LICENSEE agrees that nothing in this Agreement shall give LICENSEE any
right, title, or interest in the Trademarks, other than the license to use
the Trademarks on the Licensed Product; that such marks are the sole
property of LICENSOR; that all such uses by LICENSEE of such marks shall
inure only to the benefit of LICENSOR; and it being understood that all
right, title and interest relating thereto are expressly reserved by the
LICENSOR except for the rights being licensed hereunder.
b. LICENSEE agrees and acknowledges that if it has obtained or obtains
in the future, in any country, any right, title, or interest in any marks
which are confusingly similar to the Trademark, (including the filing of
any application for trademarks or service xxxx registration or the
obtaining of any issued registration), that LICENSEE has acted or will act
as an agent and for the benefit of LICENSOR. LICENSEE further agrees to
execute any and all instruments deemed by LICENSOR, its attorneys or
representatives, to be necessary to transfer such right, title, or
interest to LICENSOR to protect LICENSOR's right, title and interest in
such marks.
c. *
16. COMPLIANCE WITH LIMITATIONS ON USE OF TRADEMARKS
------------------------------------------------
LICENSEE agrees that the Licensed Product, and all labels, hang tags,
packaging and other trade dress, used in connection with such Licensed
Products, shall not violate any restrictions on use or display of the marks
as provided in that Settlement Agreement and Consent Judgement with Polo
Fashions, Inc., a copy of which is attached hereto as Exhibit "D". Nothing
contained in this Agreement makes Polo Fashions, Inc., or any
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
12
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related company, a third party beneficiary of this Agreement.
17. THIRD PARTY INFRINGEMENT
------------------------
LICENSEE agrees to notify LICENSOR in writing of any infringements or
imitations by third parties of the Trademarks, the Licensed Product and/or
the Promotional and Packaging Material which may come to LICENSEE's
attention. *
18. ASSIGNABILITY AND MANUFACTURING
-------------------------------
a. The license granted hereunder is, and shall remain, personal to LICENSEE
and shall not be granted, assigned, or otherwise conveyed by any act of
LICENSEE or by operation of law. For the purposes of this Paragraph 18,
any sale or transfer of any ownership interest in LICENSEE shall
constitute a prohibited assignment of the license granted hereunder.
LICENSEE shall have no right to grant any sublicenses without LICENSOR's
prior express written approval. Any attempt on the part of LICENSEE to
arrange to sublicense or assign to third parties its rights under this
Agreement, shall constitute a material breach of this Agreement.
b. LICENSOR shall have the right to assign its rights and obligations under
this Agreement without the approval of LICENSEE.
c. LICENSEE has the right to enter into franchise agreements using
franchise agreements previously approved by LICENSOR. Any material change
to said franchise agreement must be approved in writing by LICENSOR.
19. NO AGENCY, JOINT VENTURE, PARTNERSHIP
-------------------------------------
The parties hereby agree that no agency, joint venture, or partnership
is created by this Agreement, and that neither party shall incur any
obligation in the name of the other without the other's prior written
consent.
20. *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
13
BHPC.12I
*
21. TERMINATION
-----------
a. In addition to the termination rights provided elsewhere in this
Agreement, LICENSOR will have the right to terminate this Agreement in the
event that: *
b. *
22. EFFECT OF EXPIRATION OR TERMINATION
-----------------------------------
a. Upon expiration or termination of this Agreement, all rights and
licenses granted to LICENSEE hereunder
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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BHPC.12I
shall immediately expire, shall forthwith revert to LICENSOR, and LICENSEE
shall immediately cease and desist from using the Trademarks and any
technical information supplied by LICENSOR to LICENSEE hereunder. To this
end, LICENSEE will be deemed to have automatically assigned to LICENSOR,
upon such expiration or termination, the Trademarks, equities, good will,
titles, and other rights in or to the Licensed Product and all adaptions,
compilations, modifications, translations and versions thereof, and all
other trademarks used in connection therewith which have been or may be
obtained by LICENSEE or which may vest in LICENSEE and which have not
already been assigned to LICENSOR. LICENSOR may thereafter, in its sole
discretion enter into such arrangements as it deems desirable, with any
other party, for the manufacture, promotion and sale of the Licensed Product
in the Territory. LICENSEE shall, within thirty (30) days after expiration
or termination of this Agreement as the case may be, furnish LICENSOR with
a full and detailed written statement of the Licensed Product in its
inventory or the Licensed Product in progress. LICENSOR shall have the
option of conducting a physical inventory at the time of expiration or
termination and/or at a later date in order to ascertain or verify such
statement. In the event that the LICENSEE refuses to permit LICENSOR to
conduct such physical inventory, LICENSEE shall forfeit its right hereunder
to dispose of such inventory. In addition to such forfeiture, LICENSOR
shall have recourse to all other remedies available to it.
b. Upon the termination of this Agreement, *
c. *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
15
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*
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
16
BHPC.12I
signed by LICENSEE's Chief Executive Officer certifying under penalty of
perjury that such inventory, molds, patterns, transfers, and other property
have been destroyed.
23. MODIFICATION: WAIVER
No modification of any of the terms or provisions of this Agreement shall
be valid unless contained in a writing signed by the parties. No waiver by
either party of a breach or a default hereunder shall be deemed a waiver
by such party of a subsequent breach or default of a like or similar
nature. Resort by LICENSOR to any remedies referred to in this Agreement
or arising by reason of a breach of this Agreement by LICENSEE shall not
be construed as a waiver by LICENSOR of its right to resort to any and all
other legal and equitable remedies available to LICENSOR.
24. FORCE MAJEURE
Neither LICENSOR nor LICENSEE shall be liable to each other or be deemed
in breach or default of any obligations contained in this Agreement, for
any delay or failure to perform due to causes beyond its reasonable
control, including but not limited to delay due to the elements, acts of
the United States Government, acts of foreign government, acts of God,
fires, floods, epidemics, embargoes, riots, strikes, any of the foregoing
events being referred to as a "Force Majeure" condition. In such event,
dates for performance shall be extended for the period of delay resulting
from the Force Majeure condition. The party affected by a Force Majeure
condition shall, as soon as practicable, notify the other party of the
nature and extend of such condition.
25. NOTICE
All notices, approvals, consents, requests, demands, or other
communications to be given to either party in writing may be effected by
personal delivery or by depositing the same in the mail, certified and
return receipt requested, postage prepaid. Such communication shall be
addressed to LICENSEE and LICENSOR at their respective addresses as set
forth in the preamble above.
26. CONSTRUCTION: VENUE
This agreement shall be construed in accordance with the laws of *
*, and the parties agree that it is executed and delivered in that
state, and any claims arising hereunder shall, at LICENSOR's election,
be prosecuted in *
17
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
BHPC.12I
*
27. ENTIRE AGREEMENT
This Agreement, contains the entire understanding of the parties and there
are not representations, warranties, promises, or undertakings other than
those contained herein. This Agreement supersedes and cancels all previous
agreements between the parties hereto.
28. *
29. *
30. *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
18
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31. BINDING EFFECT
This Agreement shall be binding on the parties, and their successor and
assigns.
32. *
33. SEVERABILITY
In the event that any term or provision of this Agreement shall for any
reason be held to be invalid, illegal or unenforceable in any respect, such
invalidity or unenforceability shall not affect any other term or provision
and this Agreement shall be interpreted and construed as if such term or
provision, to the extent the same shall have been held to be invalid,
illegal or unenforceable, had never been contained herein.
34. CAPTIONS
The captions used in connection with the paragraphs and subparagraphs of
this Agreement are inserted only for purpose of reference. Such captions
shall not be deemed to govern, limit, modify or in any other manner affect
the scope, meaning or intent of the provisions of this Agreement or any
part thereof nor shall such captions otherwise be given any legal effect.
35. INCORPORATION OF EXHIBITS
LICENSOR and LICENSEE acknowledge and agree that the provisions of
Exhibits "A" through "E" attached hereto (the Exhibits") are integral to
this Agreement and that the provisions of the Exhibits are all hereby
incorporated herein and made a part hereof as if set out in full in this
Agreement.
36. ENGLISH LANGUAGE
This Agreement is entered into the English language only. Any translation
thereof into any other language shall be for purposed of convenience only
and shall not be considered in connection with the interpretation of the
provision hereof.
37. REQUIRED FILING OF AGREEMENT
LICENSEE shall cause this Agreement to be filed with, and approved by, all
necessary governmental authorities, including the appropriate exchange
control authorities, whenever such filing and approval may
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
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BHPC.12I
be required for the purpose of authorizing the payments herein provided.
LICENSEE shall be solely responsible for the filing of this document with
the appropriate authorities and shall bear the cost thereof, is any. In
the event of LICENSEE failing to obtain the approvals or completing the
filing set forth above within four (4) months from the date of the first
franchise agreement being signed, LICENSOR may terminate this Agreement
forthwith.
38. REGISTRATION IN TERRITORY
LICENSOR will exert its best efforts to obtain trademark registration of
the Trademarks for the Licensed Product in the Territory. However, LICENSOR
has made no representation or warranty that the Trademarks will be
registered or are registerable in the Territory, and the failure to obtain
or maintain registrations thereon shall not be deemed a breach hereunder
by LICENSOR. A listing of the registrations in class 25 in the Territory
is shown in Exhibit "E", attached hereto.
39. LICENSEE agrees that any Licensed Product purchased for the Territory
will be purchased from other official Xxxxxxx Hills Polo Club licensees
within said Territory. If a licensee does not exist in the Territory for a
specific product category, then LICENSEE may purchase the Licensed Product
from any other official Xxxxxxx Hills Polo Club licensee, worldwide.
20
IN WITNESS WHEREOF, the parties hereto agree that this Agreement shall
take effect as of the date and year first above written.
LICENSOR: LICENSEE:
BHPC MARKETING, INC., XXXXXX, X.X.
a California Corporation a Spanish Limited Corporation
BY: /s/ Xxx Xxxxxxxx BY: /s/ Xxxxxx Xxxxx
------------------------------ ---------------------------------
Xxx Xxxxxxxx Xxxxxx Xxxxx
Licensing Director Chairman/Managing Director
Date: 8/19/96 Date: 8/15/96
---------- -----------
21
LICENSE AGREEMENT DETAIL SCHEDULE
---------------------------------
1. Definition of Territory: Retail Stores in Europe and Eastern Europe:
------------------------
Portugal Andorra Italy France Belgium
Holland Greece Switzerland Austria Germany
Luxembourg Liechtenstein Latvia Norway Denmark
Sweden Poland Hungary Czech Republic Slovakia
Estonia Ukraine Belarus San Marino Cypress
Chechnia Moldavia Russia N. Ireland Ireland
Lithuania Romania Bulgaria Monaco Iceland
Finland Spain United Kingdom
2. Definition of Licensed Product (by category): DISTRIBUTION DATE:
-------------------------------------------- -----------------
A. Men's apparel: pants, woven shirts, knit shirts, January 1, 1997
jeans, shorts, sweaters, outerwear (excluding
dress shirts & suits)
B. Women's apparel: slacks, skirts, dresses,
sweaters, outerwear, blouses and jeans
C. All other BHPC Licensed Product produced by other Licensees.
3. Initial Term: FROM TO
------------ ---- --
First Contract Year: July 1, 1996 December 31, 1997
Second Contract Year: January 1, 1998 December 31, 1998
Third Contract Year: January 1, 1999 December 31, 1999
4. Renewal Term:
------------
Fourth Contract Year (if any): January 1, 2000 December 31, 2000
Fifth Contract Year (if any): January 1, 2001 December 31, 2001
Sixth Contract Year (if any): January 1, 2002 December 31, 2002
5. *
6. Royalty Rate:
------------
Four percent (4%) of Wholesale Purchases by Xxxxxxx Hills Polo Club
Retail Stores, and two percent (2%) of Retail Sales by Xxxxxxx Hills Polo
Club Franchise Retail Stores.
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
7. Guarantees:
----------
(A) (B) (C) (D)
Guaranteed Guaranteed Guaranteed
Target Guaranteed Annual Monthly
Net Net Royalty Royalty
Shipments Shipments Payments Payments
(in United States Dollars)
--------------------------------
First Contract Year * $00 $00 *
Second Contract Year * $1,000,000 $ 60,000 *
Third Contract Year * $2,000,000 $120,000 *
INITIALS
--------
LICENSOR: /s/ DG
---------
LICENSEE: /s/ RJA
---------
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
Int. Cmt. 25
Prior U.S. Cht 39
Reg. No. 1,429,311
United States Patent and Trademark Office Registered Feb. 17, 1987
-------------------------------------------------------------------
TRADEMARK
PRINCIPAL REGISTER
[LOGO]
EXHIBIT A
PAGE OF
--- ---
DATE
----------
FORM MUST BE SUBMITTED COMPLETE SUBMIT TO THE ATTENTION OF:
BHPC MARKETING, INC.
000 X. 000xx Xxxxxx
Xxxxxxx, XX 00000
SAMPLE APPROVAL FORM
(FOR STYLE ONLY! SEE SWATCH APPROVAL FORM FOR FABRIC)
NAME OF LICENSEE
-----------------------------------------------------
LICENSED PRODUCT
-----------------------------------------------------
LICENSEE'S ADDRESS
---------------------------------------------------
PLEASE PICTURE BELOW
SEASON
--------------------
STYLE #
-------------------
FABRICATION
-----------------
WHOLESALE PRICE
-------------
COLORS
----------------------
SIZES
-----------------------
START TAKING ORDERS
---------
END TAKING ORDERS
-----------
START SHIP
------------------
END SHIP
--------------------
----------------------------------- -----------------------------
SIGNATURE OF LICENSEE SIGNATURE OF LICENSOR
APPROVED DISAPPROVED
----------- ----------
COMMENTS
-------------------------------------------------------------
---------------------------------------------------------------------
DATE RETURNED TO LICENSEE
-----------------------
BHPC MARKETING, INC., 000 Xxxx 000xx Xxxxxx, Xxxxxxx, XX 00000
EXHIBIT "B-1"
PAGE OF
------- ------
DATE
----------------
FORM MUST BE SUBMITTED COMPLETE SUBMIT TO THE ATTENTION OF:
BHPC MARKETING, INC.
000 X. 000xx Xxxxxx
Xxxxxxx, XX 00000
SWATCH AND/OR COLOR APPROVAL FORM
(FABRIC AND COLOR ONLY! SEE SAMPLE APPROVAL FORM FOR STYLE)
NAME OF LICENSEE
--------------------------------------------------------------
LICENSED PRODUCT
--------------------------------------------------------------
LICENSEE'S ADDRESS
--------------------------------------------------------------
SEASON
------------------------------------------------------------------------
LIST STYLE NUMBERS OF GARMENTS TO BE MANUFACTURED IN THIS FABRIC
--------------
------------------------------------------------------------------------------
FABRIC # AND NAME OF SUPPLIER
------------------------------------------------
------------------------------------------------------------------------------
FABRIC CONTENT AND WEIGHT
-----------------------------------------------------
PLEASE ATTACH 1 SET OF SWATCHES BELOW
APPROVED DISAPPROVED
---------------- --------------
COMMENTS----------------------------------------------------------------------
------------------------------------------------------------------------------
-------------------------------- -------------------------------
SIGNATURE OF LICENSEE SIGNATURE OF LICENSOR
DATE RETURNED OF LICENSEE
-------------------------
BHPC MARKETING, INC., 000 Xxxx 000xx Xxxxxx, Xxxxxxx, XX 00000
EXHIBIT "B-2"
Page of
----- -----
Date
------------
FORM MUST BE SUBMITTED COMPLETE SUBMIT TO THE ATTENTION OF:
BHPC MARKETING, INC.
000 X. 000xx Xxxxxx
Xxxxxxx, XX 00000
ADVERTISING APPROVAL FORM
NAME OF LICENSEE
----------------------------
LICENSED PRODUCT
----------------------------
LICENSEE'S ADDRESS
--------------------------------------------------------
CIRCLE THE FORM OF ADVERTISING WHICH IS BEING SUBMITTED: LABEL, HANG TAG,
BUSINESS CARDS, BUSINESS FORMS, RADIO SPOT, TV, FULL PAGE AD, 1/2 PAGE AD,
PACKAGING, DISPLAY, OTHER.
PLACE ADVERTISING TO BE SUBMITTED HERE, OR AFFIX TO THIS PAGE
USE PERIOD From to
--------- ---------
IF SUBMISSION IS LABELS OR HANG TAGS, PLEASE GIVE NAME & ADDRESS OF SUPPLIER
------------------------------------------------------------------------------
IF AD IS TO RUN IN A PUBLICATION, NAME OF PUBLICATION
-------------------------
APPROVED DISAPPROVED
------------ -----------
COMMENTS
----------------------------------------------------------------------
------------------------------------------------------------------------------
----------------------------- ---------------------------
Signature of Licensee Signature of Licensor
DATE RETURNED TO LICENSEE
---------------
BHPC Marketing, Inc. - 000 X. 000xx Xxxxxx - Xxxxxxx, XX 00000
(000) 000-0000 - FAX (000) 000-0000
STATEMENT OF ROYALTIES (FOREIGN)
FOR SALES TO RETAIL STORES
FOR --------------- TO --------------- 19 -----
(MONTH)
LICENSEE NAME -------------------------------- ROYALTY % -----
LICENSEE ADDRESS ----------------------------- CONVERSION RATE ------------ TO ------------ US DOLLARS
---------------------------------------------- DATE OF CONVERSION RATE ------------------------------
---------------------------------------------- LICENSED PRODUCT -------------------------------------
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CUSTOMER GROSS LESS NET SALES NET SALES GROSS ROYALTIES TAXES PAID NET ROYALTY AMT.
NAME SALES RETURNS* LOCAL CUR. US$ US$ US$ US$
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TOTALS -------------------------------------------------------------------------------------------------------------------------
Send Statement to: BHPC Marketing, Inc.
000 Xxxx 000xx Xxxxxx I CERTIFY THAT THE ABOVE IS ACCURATE
Gardena, CA 90248
U.S.A. ----------------------------------------------------- -------------
Signature and Title Date
Please see License Agreement for the amount of permissible deductions.
Exhibit "B-4"
[logo] STATEMENT OF ROYALTIES (FOREIGN)
FOR TO 19
---------------- ------------- -----
(Quarter)
LICENSEE NAME
--------------------------------
LICENSEE ADDRESS CONVERSION RATE TO U.S. DOLLARS ROYALTY %
------------------------------ ----------- --------- ---------------
--------------------------------------------- DATE OF CONVERSION RATE
----------------------------
LICENSEE PRODUCT(S)
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ITEM/ NUMBER OF NUMBER OF UNIT WHOLESALE GROSS LESS LESS LESS TRADE LESS NET SALES LOCAL
STYLE NO. UNITS SOLD UNITS RETURNED PRICE SALES ALLOWANCES* MARKDOWNS* DISCOUNTS* RETURNS* CURRENCY
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TOTALS
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NET SALES GROSS ROYALTIES TAXES PAID NET ROYALTY AMT.
U.S. DOLLARS U.S. DOLLARS U.S. DOLLARS U.S. DOLLARS
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TOTALS
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SEND STATEMENT TO: BHPC MARKETING, INC. I CERTIFY THAT THE ABOVE IS ACCURATE
000 X. 000xx Xxxxxx
Xxxxxxx, XX 00000 ------------------------------------ -------------------------------------
SIGNATURE TITLE
------------------------------------ -------------------------------------
NAME DATE
*PLEASE SEE THE LICENSE AGREEMENT FOR
THE AMOUNT OF PERMISSIBLE DEDUCTIONS.
SECTION (I)
NET SHIPMENT STATEMENT
The written statement of Net Shipments of Licensed Product (a copy of which
is attached hereto as Exhibit "B-4") referred to in Paragraph 9a must be
certified as accurate by LICENSEE and will include, but will not be
limited to, information as to: *
SECTION (II)
*
EXHIBIT "C"
Page 1 of 3
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
SECTION (III)
INSURANCE REQUIREMENTS
*
The policies shall provide for ten (10) days notice to LICENSOR from the
insurer by Registered or Certified Mail, return receipt requested, in the
event of any modification, cancellation or termination. LICENSEE agrees to
furnish LICENSOR a certificate of insurance or copy of the policies
evidencing same within thirty (30) days after execution of this Agreement
and from time to time as requested by LICENSOR within ten (10) days of
LICENSOR's request; in no event, shall LICENSEE manufacture, offer for sale,
sell, advertise, promote, ship and/or distribute the Licensed Product prior
to receipt by LICENSOR of such evidence of insurance.
SECTION (IV)
*
EXHIBIT "C"
Page 2 of 3
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
*
EXHIBIT "C"
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
Page 3 of 3
XXXXXXX XXXX POLO CLUB REGISTRATIONS
IN CLASS 25 IN TERRITORY
XXXX COUNTRY STATUS
*
EXHIBIT "E"
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
SETTLEMENT AGREEMENT
--------------------
This Settlement Agreement is made, in multiple originals, by and
among * will hereinafter be
collectively referred to as the "Xxxxxxx Hills Polo Club Parties."
WITNESSETH:
WHEREAS, there are presently pending before the United States
District Court for the Central District of California two civil actions
entitled *
EXHIBIT D
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
*
WHEREAS, the parties hereto have vigorously contested the BHPC
Action and the * Action (collectively the "Civil Actions"), and have
expended considerable time and effort, and have incurred considerable
expense, in doing so; and
WHEREAS, in order to avoid the additional expense which would be
necessary for the continued prosecution of the Civil Actions, the parties are
willing to resolve the controversy among them and to settle the Civil Actions
under the terms and conditions set forth herein;
NOW, THEREFORE, in mutual consideration of the covenants and
premises contained herein, the parties agree as follows:
1. Except as provided in paragraph 3 hereunder, as of February
15, 1985, the Xxxxxxx Hills Polo Club Parties, their affiliates, officers,
agents and employees and any other person or entity under their direction or
control, or in active concert or participation with them, shall cease and
desist from anywhere in the world:
*
2
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
*
(c) Using as a design or decoration on or in connection with
the Subject Products and Services, including but not limited to
related packaging, labels, tags and other trade dress, or as a
trademark or service xxxx, the design of *
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
3
which is shown in Exhibit A (the *), or any design
which is a colorable imitation or simulation thereof;
(d) Using as a design or decoration on or in connection with
the Subject Products and Services, including but not limited to
related packaging, labels, tags and other trade dress, or as a
trademark, service xxxx or trade name the design of * which is
shown in Exhibit B (the "BHPC Symbol"), or any design which is a
colorable imitation or simulation thereof or is substantially
similar thereto, in an overall size smaller than five and a half
inches by five and a half inches (5 1/2" x 5 1/2") (measured from
mallet head to hoof and from nose to tail), except as may be
permitted by paragraph 2 hereof;
(e) Using either of the typefaces shown in Exhibit C
(identified hereinafter as the "Subject Typefaces") for the name
"Xxxxxxx Hills Polo Club";
(f) Placing or causing to be placed any advertisements or
using any materials of any type making reference, either directly or
indirectly to * or to * or their licensees and affiliates; and
(g) Using dark blue as the background color of any
packaging, label, tag or trade dress containing the words "Xxxxxxx
Hills Polo Club", and/or the BHPC Symbol.
4
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
2. Notwithstanding the size limitations imposed by paragraph 1(d)
hereof, the Xxxxxxx Hills Polo Club Parties may use the BHPC Symbol in an
overall size smaller than the five and a half inches by five and a half
inches (5 1/2 x 5 1/2) set forth in paragraph 1(d) hereof but only if
(a) the same is used in combination with and in close proximity
to the words "Xxxxxxx Hills Polo Club" in the configuration shown in
Exhibit D annexed hereto (the "Composite BHPC Logo") or the label shown
in Exhibit E annexed hereto (the "BHPC Label"); or
(b) the BHPC Symbol is used in a repetitive pattern covering
substantially all of the front or back of any of the Subject Products,
provided that the initials "BHPC" shall appear in close proximity to the
BHPC Symbol, and that somewhere on each of the Subject Products the words
"Xxxxxxx Hills Polo Club" shall be prominently displayed.
3. The Xxxxxxx Hills Polo Club Parties may sell or otherwise dispose
of any and all articles of clothing and accessories which are represented by
them to be in their possession or under their control as of February 15,
1985, as set forth in Exhibit F, to be added hereto not later than March 1,
1985, which would otherwise come within the prohibitions of paragraph 1 of
this Agreement, and may fill orders accepted on or before such date for any
clothing or accessories coming within such prohibitions so long as such
orders are filled within ninety (90) days of such date. Notwithstanding the
foregoing,
5
BHPC may have until June 15, 1985 to dispose of garments in
the process of manufacture in the Orient as of February 15, 1985. * or
its attorneys or such attorneys' agents, on reasonable notice, which notice
shall not be required to exceed ten (10) days, may review purchase orders,
bills of lading, or inventory records at the place of business of any Xxxxxxx
Hills Polo Club Parties sufficient to verify compliance with the paragraph.
Such information is to be used solely to verify and enforce compliance, and
shall be held in confidence by *'s attorneys or their agents.
4. Simultaneously with its execution of this settlement agreement,
*
6
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
5. Neither * nor any person or entity under its direction or
control, may oppose the registration by the Xxxxxxx Hills Polo Club Parties
of any trademark which the Xxxxxxx Hills Polo Club Parties are entitled to
register under this Agreement, nor shall they petition to cancel, either
directly or through court action the registration of any such trademark
unless said xxxx or registration is the basis for legal action by BHPC, Lang
or any affiliated entity against * or its licensees. If * learns that
any of its licencees objects to the registration by any of the Xxxxxxx Hills
Polo Club Parties of the words "Xxxxxxx Hills Polo Club," and/or the
Composite BHPC Logo and/or the BHPC Label, then * will inform such
objecting licensee in writing of the terms of this Agreement, and provide
written confirmation thereof to BHPC.
6. The parties agree to entry in the Civil Actions of Final Judgment
Upon Consent in the form annexed hereto as Exhibit H, or in such other form
as the Court may require consistent with the terms and conditions of this
Settlement Agreement.
7. *
7
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
*
8. The parties will not initiate any any publicity concerning the
terms and conditions of this Agreement and such terms and conditions shall be
held in confidence except as otherwise provided herein. The Xxxxxxx Hills
Polo Club Parties may provide a copy of this Settlement Agreement or portions
or summaries thereof to any person or entity licensed or otherwise permitted
to use the name "Xxxxxxx Hills Polo Club," the BHPC Symbol or the Composite
BHPC Logo, to potential licensees, to sales representatives or, upon inquiry
being made, to customers. Either party may refer to the terms and conditions
of this Agreement in conjunction with its registration, or judicial or
administrative protection or enforcement of its trademarks, trade names and
service marks.
9. This Settlement Agreement represents no concession by any party as
to the validity or merit of any of the claims raised in the Civil Actions by
any other party, except as may be set forth in the Final Judgment of Exhibit H.
10. * and its officers, agents, employees and sales representatives
shall not make, directly or indirectly, any claim that the purchase of
products complying with the terms of this Agreement from BHPC or Lang or
their distributors or sublicensees constitutes trademark infringement, unfair
competition or trademark dilution, nor threaten sanctions with respect
thereto. This undertaking does not in any way admit or imply
8
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
that *, or anyone acting on its behalf, has in the past made any such
claims or threatened any such sanctions.
11. *
12. *
13. This Settlement Agreement represents the entire understanding
between the parties with respect to the subject matter hereof; shall not be
varied or amended except by a
9
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
writing signed by all parties; shall be binding upon the parties, their
successors and assigns; and shall, as respects contractual construction, be
governed by and construed in accordance with the laws of *.
Neither party hereby waives any claim as to the propriety of venue or
as to the existence of personal jurisdiction, in any lawsuit or other
proceeding that may arise concerning the subject matter of this Settlement
Agreement.
14. * warrants and represents that it has full right and power
to enter into this Settlement Agreement.
15. Lang warrants and represents that it has full right and power
to enter into this Settlement Agreement.
16. BHPC warrants and represents that it has full right and power
to enter into this Settlement Agreement.
17. Xxxxxxx warrants and represents as follows:
(a) He is the president and sole shareholder of BHPC and
Lang; and
(b) He has the full right, power and authority to enter into
this Settlement Agreement.
18. *
10
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
"polo clubs") or items of wearing apparel which have come to be described by
the word polo (e.g. "polo shirts" or "polo coats"), provided, however, that
any such use will not violate any of the terms and conditions of this
Agreement.
19. The Xxxxxxx Hills Polo Club Parties shall take all steps
reasonably necessary to ensure that any person or entity which is licensed or
otherwise permitted to use the term "Xxxxxxx Hills Polo Club", the BHPC
Symbol or the Composite BHPC Logo, complies fully with the restrictions set
forth in paragraph 1 hereof.
20. * acknowledges that the rights of any person or entity which
it licenses or otherwise permits to use the * Marks are subject to the
terms and conditions of this Agreement and that such rights cannot be used in
contravention of the provisions of paragraphs 5 and 10 hereof. * agrees to
inform any of its licensees whom it learns object to the use by the Xxxxxxx
Hills Polo Club Parties of any of the names or marks which they are permitted
to use hereunder of the foregoing acknowledgements.
21. In the event that a dispute arises between the parties as to
the subject matter of this Agreement, then the parties shall attempt to
amicably resolve the same prior to seeking judicial intervention. If the
parties are unable to resolve such dispute within thirty (30) days after it
arises,
11
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
then either party may take such action as it deems appropriate to protect its
rights.
IN WITNESS WHEREOF, the parties have executed this Settlement on
the days indicated adjacent to their respective signatures below.
*
Dated: 2/15/85 By: /s/ *
--------------------------- ---------------------------------
*
XXXXXXX HILLS POLO CLUB, INC.
Dated: 2/20/85 By: /s/ Xxxxxxx Xxxxxxx, President
--------------------------- ---------------------------------
Xxxxxxx Xxxxxxx, President
XXXXXXX XXXXXXX
Dated: 2/20/85 /s/ Xxxxxxx Xxxxxxx
--------------------------- ------------------------------------
XXXXXXX XXXX, INC.
Dated: 2/20/85 By: /s/ Xxxxxxx Xxxxxxx, President
0028m --------------------------- ---------------------------------
Xxxxxxx Xxxxxxx, President
12
* Text omitted pursuant to a request for confidential treatment and filed
separately with the Securities and Exchange Commission.
[LOGO]
EXHIBIT A
[LOGO]
EXHIBIT B
XXXXXXX HILLS
POLO CLUB
[LOGO]
EXHIBIT C
XXXXXXX HILLS
POLO CLUB
[LOGO]
Note: Typeface to be changed per Paragraph 1(e).
EXHIBIT D
XXXXXXX HILLS
POLO CLUB
[LOGO]
Note: Typeface to be changed per Paragraph 1(e).
EXHIBIT E
