EXHIBIT 10.89
THIRTY FOURTH AMENDMENT TO
GENERAL MOTORS SERVICE PARTS OPERATIONS
LICENSE AGREEMENT
This THIRTY FOURTH AMENDMENT, effective as of the later date of the signatures
below, is to that certain Reproduction and Service Part Tooling License
Agreement effective December 1, 1993 by and between Service Parts Operations,
General Motors Corporation ("LICENSOR") and ▇▇▇▇▇▇ Industries, Inc. d/b/a
▇▇▇▇▇▇'▇ ("LICENSEE") as amended by the FIRST through THIRTY THIRD AMENDMENTS
(collectively the "AGREEMENT").
WHEREAS, the parties have entered into the AGREEMENT and mutually desire to
amend such AGREEMENT as specifically provided herein;
NOW THEREFORE for good and valuable consideration, the sufficiency of which is
hereby acknowledged, the parties agree as follows:
1. Exhibit I of the AGREEMENT is hereby amended to specifically include the
following additional LICENSED PARTS:
GM Part # Description Vehicle Line Model
--------- ----------- ------------ -----
3876569 ▇▇▇▇-▇▇ ▇▇▇▇▇▇, ▇▇▇ S/D Pull Chevrolet Corvette
3876570 1966-67 Handle, Frt S/D Pull Chevrolet Corvette
2. Article I of the AGREEMENT is hereby stricken in its entirety and is
replaced with the following new Article I:
1.1 Transfer of Technology. If appropriate, within a reasonable time after
execution of the AGREEMENT, LICENSOR shall furnish LICENSEE available
GM TECHNOLOGY in documented or recorded form developed by or for
LICENSOR and which LICENSOR had used or released to its suppliers for
the manufacture of LICENSED PARTS and which may be furnished by
LICENSOR without violation of the rights of third parties.
1.2 Use and Protection. The GM TECHNOLOGY furnished to LICENSEE shall be
used by LICENSEE for the sole purpose of enabling LICENSEE to utilize
the license granted under this AGREEMENT and such GM TECHNOLOGY shall
be treated by LICENSEE with the same degree of high care it applies to
its own technology and shall not be disclosed by LICENSEE to third
parties without LICENSOR'S consent for any purpose other than to
utilize this license.
1.3 To the best of LICENSOR'S knowledge, LICENSEE'S use of the GM
TECHNOLOGY will not infringe the patent rights of any third party.
LICENSOR, however, does not assume and expressly disclaims any and all
responsibility or liability of any kind whatsoever for infringement by
LICENSEE or its suppliers of any patents as a result of the
manufacture, use, or sale by LICENSEE of the LICENSED PARTS, and
LICENSEE shall indemnify and hold LICENSOR harmless against any and
all claims and liabilities of any kind whatsoever that may arise from
such infringement.
1.4 EXCEPT AS STATED IN THIS SECTION 1.4, THERE ARE NO WARRANTIES, EXPRESS
OR IMPLIED, WITH RESPECT TO GM TECHNOLOGY AND ASSISTANCE TO BE
FURNISHED TO LICENSEE HEREUNDER. LICENSOR SHALL NOT BE RESPONSIBLE OR
LIABLE IN ANY RESPECT FOR ANY DEFECTS OR INACCURACIES IN SUCH GM
TECHNOLOGY OR ANY INADEQUACIES IN SUCH ASSISTANCE OR FOR THE
PERFORMANCE OR FAILURE TO PERFORM OF ANY LICENSED PARTS ASSEMBLED BY
LICENSEE OR ANY PART THEREOF MANUFACTURED BY LICENSEE OR FOR LICENSEE
BY ANY PARTY OTHER THAN LICENSOR. LICENSEE SHALL INDEMNIFY AND HOLD
LICENSOR HARMLESS AGAINST ANY AND ALL CLAIMS AND LIABILITIES,
INCLUDING THOSE INVOLVING DEATH OR INJURY TO PERSON OR DAMAGE TO
PROPERTY, ARISING OUT OF SUCH ASSEMBLY OR MANUFACTURE, OR THE SALE,
LEASE OR OTHER DISPOSAL OF SUCH LICENSED PARTS OR COMPONENT PARTS
THEREOF.
1.5 Use and Location of LICENSOR'S TOOLS. In using the available TOOLS,
LICENSEE shall give priority to the reasonably requested supply
requirements of LICENSOR (or its designees) (although it is understood
that LICENSOR is not obligated to purchase any LICENSED PARTS from
LICENSEE). Subject to filling the purchase orders of LICENSOR,
however, LICENSEE shall have the exclusive right to use the available
TOOLS to manufacture LICENSED PARTS which it will promote and sell to
third parties other than LICENSOR, upon such terms and conditions as
determined by LICENSEE. If LICENSEE does not use a particular TOOL (or
set of TOOLS) at least once during any twelve (12) month period of the
Term (or applicable renewal term) and LICENSEE has not sold any
LICENSED PARTS applicable to such TOOL(S) during such time period,
then LICENSOR has the right to demand that LICENSEE explain to
LICENSOR, in writing, the reasons or circumstances surrounding the
non-use or non-sale. If LICENSEE does not explain, to the sole
satisfaction of LICENSOR, that there are reasonable and verifiable
mitigating circumstances surrounding such non-use or non-sale, then
LICENSEE'S right to use the TOOL(S) shall become non-exclusive and
LICENSOR shall have the right to license a third party (or parties) to
use the TOOL(S). LICENSEE shall keep the TOOLS at the facilities
identified on Exhibit I or at other facilities which LICENSEE has
previously advised LICENSOR in writing of before moving them. LICENSEE
shall at all times keep LICENSOR advised in writing regarding the
physical location of the TOOLS and shall provide LICENSOR with a
written report for the quarter ending December 31 of each year stating
the condition and location of the TOOLS.
1.6 LICENSOR'S Inspection of the TOOLS. LICENSOR may from time to time
during normal business hours and with reasonable notice to LICENSEE
enter upon the premises of LICENSEE or LICENSEE'S supplier to inspect
the TOOLS and to examine and audit the records of LICENSEE pertaining
to the manufacture and sale of the LICENSED PARTS and the maintenance
and repair of the TOOLS.
1.7 Ownership of the TOOLS. LICENSOR is the owner of the TOOLS; any and
all parts and accessories for, and any replacements to, the TOOLS
shall be the property of LICENSOR. LICENSEE shall not make any
modification to the TOOLS without the prior express written approval
of LICENSOR. LICENSEE shall not assert any claims of ownership to the
TOOLS or sell, lend, rent, encumber, pledge, lease, transfer, or
otherwise dispose of the TOOLS. LICENSEE shall, upon the request of
LICENSOR, execute such documents as LICENSOR may reasonably require
for filing in public records to give notice that the TOOLS are the
property of LICENSOR.
1.8 LICENSEE'S Inspection of the TOOLS. LICENSEE acknowledges that the
TOOLS have been furnished on an "as is", when available basis.
LICENSEE shall from time to time inspect the TOOLS, make all repairs
that are necessary and appropriate, and supply and pay for any parts
and accessories necessary therefore.
1.9 Legal Compliance. LICENSEE shall use the TOOLS in a careful and proper
manner and shall comply with all federal, state, and local laws,
ordinances, rules, regulations, and guidelines relating to possession
or use of the TOOLS. LICENSEE shall not use the TOOLS for any purpose
other than as expressly authorized in this AGREEMENT.
1.10 Risk of Loss. LICENSEE shall assume all risks of damage, destruction,
or loss to the TOOLS in its possession or under its control caused by
fire, theft, or other casualties or by the negligent acts or omissions
of LICENSEE, its agents and employees. Such negligent acts are those
causing damage not occasioned by the deterioration of the TOOLS by
reason of normal wear and tear. LICENSEE shall replace or repair all
such TOOLS lost or damaged at its expense.
1.11 TOOL Repair or Movement. If, in accordance with this AGREEMENT,
LICENSEE makes any repairs, modifications, or improvements to the
TOOLS or moves the TOOLS to a different manufacturing location, then
LICENSEE shall resubmit samples of LICENSED PARTS for testing (when
requested by LICENSOR) in accordance with Article IX of the AGREEMENT.
1.12 TOOL Handling Upon Termination. Upon the termination of this
AGREEMENT, LICENSEE shall:
A. Advise LICENSOR in writing of the condition and location of the
TOOLS;
B. Promptly return the GM TECHNOLOGY to LICENSOR; and
C. At the request of LICENSOR, promptly prepare the TOOLS for
shipment to the location designated by LICENSOR.
The TOOLS will be delivered, at LICENSOR'S reasonable expense,
to such LICENSOR-designated location by carriers expressly
approved by LICENSOR. LICENSOR and LICENSEE shall jointly
inspect the TOOLS before they are shipped. If LICENSOR has any
claim against LICENSEE regarding the condition of any TOOL,
the parties shall mutually agree to a reasonable settlement
regarding any repair or replacements required. Except as
provided in the preceding sentence, LICENSOR shall waive its
claims and rights against LICENSEE regarding the condition of
the TOOLS by removing them from the possession of LICENSEE.
1.13 LICENSEE'S Tools. The parties agree that, to the extent LICENSEE uses
its own tools and not LICENSOR'S TOOLS in manufacturing the LICENSED
PARTS, Sections 1.5 through 1.13 of Article I shall not apply.
3. Article VI of the AGREEMENT is hereby amended to strike Section 6.3 in its
entirety and replace it with the following new Sections 6.3 and 6.4, and to
include the following new Section 6.5:
6.3 Trademark License Notice. LICENSEE shall prominently display the
notice described below (or such other notice expressly approved or
directed by LICENSOR in writing such as in any separate written
guidelines or licensing program handbook provided by LICENSOR to
LICENSEE) in the Collateral Materials (as defined in Section 9.2) and
appropriately on or in direct connection with the LICENSED PARTS
and/or packaging in accordance with LICENSOR'S guidelines, rules,
and/or requests ("Trademark License Notice"). Moreover, LICENSEE shall
use the appropriate trademark notification symbol, either in the form
of "(R)" for a registered trademark in the pertinent class(es) of
goods or "(TM)" for an unregistered trademark (or alternative symbols
in compliance with the trademark laws of the country(ies) in which
LICENSEE uses the TRADEMARKS), in conjunction with the TRADEMARKS at
all times as directed by LICENSOR or as provided in such guidelines
given to LICENSEE.
"[particular Trademark(s), Emblem(s), and vehicle model body
design(s)] are General Motors Trademarks used under license to
▇▇▇▇▇▇ Industries, Inc."
6.4 Hang Tags/Merchandising Symbol. LICENSEE will also affix hang tags or
stickers to all LICENSED PARTS or packaging, that prominently display
a LICENSOR-supplied Emblem (as further described and defined in
Section 6.5 and Exhibit I) designating the LICENSED PARTS as (i) "GM
Restoration Parts" or (ii) "GM Official Licensed Product", as may be
appropriate. LICENSEE shall purchase the hang tags or stickers from
LICENSOR or LICENSOR'S designated vendor. However, if the LICENSED
PARTS and/or any appropriate Collateral Materials are not conducive to
use and/or display the LICENSOR required hang tags or stickers, then
LICENSEE may request LICENSOR to provide (at LICENSOR'S discretion)
the necessary artwork to incorporate the Emblem(s) directly into the
LICENSED PARTS and/or such appropriate Collateral Materials. In this
case, LICENSEE agrees to pay LICENSOR a non-refundable fee of $250 (or
other reasonable amount as LICENSOR may require) in consideration of
LICENSOR providing LICENSEE with the artwork for such Emblem(s). If
Emblem artwork is provided to LICENSEE, then an invoice will be sent
to LICENSEE regarding such additional fee (unless other reasonable
payment procedures are adopted by LICENSOR and LICENSEE is advised
thereof). LICENSEE will use the Emblem(s) and the TRADEMARKS only in
the manner specified in writing by LICENSOR.
6.5 Use of the GM Restoration Parts and GM Official Licensed Product
Emblems. In addition to use of the hang tags or stickers required in
Section 6.4, LICENSEE shall also display the GM Restoration Parts
Emblem and/or GM Official Licensed Product Emblem (whichever is
appropriate) (collectively, the "Emblem(s)") on all packaging and in
all promotional and advertising materials. To ensure control over and
proper use of the Emblem(s), LICENSEE may use the Emblem(s) only in a
manner which complies with the express written guidelines and
requirements of LICENSOR. All products, catalogs, sales materials, and
other items of LICENSEE using or displaying the Emblem(s) must be
submitted to LICENSOR'S exclusive licensing representative, Equity
Management Inc. ("EMI"), and expressly approved in writing by LICENSOR
in accordance with this AGREEMENT before their use or distribution.
Purchasers, redistributors, or resellers of LICENSEE'S products may
not use or display the Emblem(s) (other than on LICENSEE'S original
packaging) unless they have a separate trademark license agreement
with LICENSOR directly.
4. Article VII of the AGREEMENT is hereby to strike Section 7.2 in its
entirety and replace it with the following new Section 7.2, and to include
the following new Section 7.3:
7.2 Trademark Protection. LICENSEE agrees to provide LICENSOR with such
reasonable assistance as LICENSOR may require in procuring any
protection of LICENSOR'S rights to the TRADEMARKS, and LICENSOR (if it
so desires) may commence or prosecute any claims or suits in its own
name or in the name of LICENSEE or join LICENSEE as a party thereto.
LICENSOR shall reimburse LICENSEE for its reasonable expenses incurred
in providing such assistance to the extent that LICENSOR has
pre-approved such expenses. In addition, LICENSEE shall promptly
notify LICENSOR in writing of any infringement or imitation by others
of the TRADEMARKS on products the same as or similar to those covered
by this AGREEMENT which may come to LICENSEE'S attention, and LICENSOR
shall have the sole right to determine whether or not any action shall
be taken on account of any such infringement or imitation.
7.3 Customs Documents and Costs. If LICENSED PARTS are imported into or
exported from the United States and/or other countries within the
LICENSED TERRITORY, then LICENSEE shall be required to:
A. Provide all appropriate documents to customs officials which are
necessary to prove that LICENSOR has authorized LICENSEE to
import and/or export the LICENSED PARTS within the LICENSED
TERRITORY ("Customs Documents"). Such Customs Documents shall
include, at a minimum, relevant pages of this AGREEMENT;
specifically, LICENSEE shall include a copy of the first page (to
verify the names of the parties), a copy of the fully-executed
signature page (to verify that the parties executed the
AGREEMENT), Exhibit I (to verify the TRADEMARKS and LICENSED
PARTS authorized by LICENSOR), Article IV (to verify the Term of
the AGREEMENT), and Exhibit II (to verify the LICENSED TERRITORY
authorized by LICENSOR). The Customs Documents should also
include such other documents as LICENSEE may regularly present to
customs officials in its importing and exporting activities;
B. Bear all costs and expenses which LICENSEE incurs, or which are
incurred on LICENSEE'S behalf, in dealing with customs officials.
Such costs and expenses would include, but are not limited to,
fines, penalties, storage fees, and other charges levied and
costs incurred as a result of threatened or actual product
seizure; and
C. Reimburse LICENSOR and/or its licensing representative for
administrative costs which they may incur or assess against
LICENSEE when LICENSEE'S failure to provide the required Customs
Documents necessitates LICENSOR'S and/or its exclusive licensing
representative's intervention to avoid the seizure of the
LICENSED PARTS or to procure their release.
In accordance with Article V of this AGREEMENT, none of the costs and
expenses contemplated in this Section 7.3 shall be deducted from Net
Sales or royalties payable by LICENSEE.
5. Article VIII of the AGREEMENT is hereby amended to strike Sections 8.2
through 8.5 and replace them with the following new Sections 8.2 through
8.5:
8.2 Indemnification of LICENSOR. LICENSEE agrees to hold harmless, defend,
and indemnify LICENSOR and LICENSOR'S exclusive licensing
representative, Equity Management Inc. ("EMI"), and their respective
officers, directors, employees, and agents against any and all
third-party claims of liability, demands, judgments or causes of
action, and damages, costs and expenses related thereto (including but
not limited to reasonable attorneys' fees and costs), arising out of
the manufacture, distribution, use, sale or marketing of the LICENSED
PARTS for which the TRADEMARKS are licensed hereunder, provided that
(a) prompt written notice is given to LICENSEE of any such suit or
claim, (b) LICENSEE shall have the option and right to undertake and
conduct the defense of any such suits or claims brought against
LICENSOR, and (c) no settlement of any suit or claim is made or
entered into without the prior express written consent of LICENSEE'S
authorized legal counsel. Such indemnification shall further extend to
third-party claims related to LICENSEE'S failure to comply with the
terms of this AGREEMENT, and to LICENSEE'S unauthorized use of any
patent, process, idea, method or device, or unfair trade practice,
false advertising, trademark infringement, or the like in connection
with the manufacture, distribution, use, sale, or marketing of the
LICENSED PARTS. The indemnification shall continue beyond the
termination or expiration of this AGREEMENT.
8.2 Indemnification of LICENSEE. LICENSOR agrees to hold harmless, defend
and indemnify, LICENSEE and their respective officers, directors,
employees, and agents against any and all third-party claims of
liability, demands, judgments, or causes of action of trademark or
copyright infringement or damages, costs, and expenses related thereto
(including but not limited to reasonable attorneys' fees and costs)
dealing with the use of the TRADEMARKS in the LICENSED TERRITORY on
the LICENSED PARTS as expressly authorized by this AGREEMENT, provided
that such claim(s) arises out of use of the TRADEMARKS on the LICENSED
PARTS in the United States of America or, if not in the United States
of America, the TRADEMARKS have been registered by LICENSOR for the
LICENSED PARTS in the LICENSED TERRITORY which is the subject of such
claim(s), and provided that: (a) prompt written notice is given to
LICENSOR of any such suit or claim; (b) LICENSOR shall have the option
and right to undertake and conduct the defense of any such suits or
claims brought against LICENSEE; and (c) no settlement of any suit or
claim is made or entered into without the prior express written
consent of LICENSOR'S authorized legal counsel. LICENSEE agrees and
understands that LICENSOR makes no representations or warranties
regarding the use of the TRADEMARKS in any LICENSED TERRITORY outside
the United States in connection with those LICENSED PARTS for which
the LICENSOR has not obtained and currently holds a valid trademark
registration in such LICENSED TERRITORY. Upon being advised that a
third party has claimed or alleged rights to any TRADEMARK in the
LICENSED TERRITORY for the LICENSED PARTS, or upon receiving a request
from a third party to cease manufacture, distribution, and/or sale of
the LICENSED PARTS based upon such third party's claimed or alleged
rights to the TRADEMARKS in the LICENSED TERRITORY, LICENSEE shall
immediately notify LICENSOR in writing. Upon the request of LICENSOR,
LICENSEE agrees to cease manufacture, distribution, and/or sale of the
LICENSED PARTS in such LICENSED TERRITORY which is the subject of such
claim or allegation until such time as LICENSOR can evaluate the
validity of the third party's claimed or alleged rights and provide
pertinent information and further direction to LICENSEE.
8.3 Insurance. LICENSEE shall acquire and maintain at its sole cost and
expense throughout the Term (and any renewal term) of this AGREEMENT
and for five years after termination or expiration, Comprehensive
General Liability Insurance including coverages of or for products,
completed operations, and contractual liability (which specifically
insures the hold harmless and indemnification provisions under this
AGREEMENT) at a limit of not less than $5,000,000 on a per occurrence
combined single limit basis for personal injury and property damage.
All coverages must be underwritten by an insurance company acceptable
to LICENSOR and qualified to do business in the LICENSED TERRITORY.
The insurance policies shall name LICENSOR and EMI as additional
insureds and not as mere certificate holders, and provide adequate
protection for LICENSEE, LICENSOR and EMI against any and all claims,
demands, causes of action or damages, including attorneys fees,
arising out of this AGREEMENT, including but not limited to any
alleged defects in the LICENSED PARTS or any use thereof.
8.4 Certificate of Insurance. LICENSEE shall furnish to LICENSOR
certificate(s) issued by the insurance company(ies) that: (a) sets
forth the amount of insurance, the policy number, and the date of
expiration; (b) names LICENSOR and EMI as additional insureds and not
as mere certificate holders; and (c) provides that the LICENSOR shall
receive thirty (30) days written notice prior to termination,
reduction, or modification of the coverages. LICENSEE'S purchase of
insurance or furnishing of the certificate(s) of insurance shall not
relieve LICENSEE of any other of its obligations or liabilities under
this AGREEMENT.
6. Article IX of the AGREEMENT is hereby stricken in its entirety and is
replaced with the following new Article IX:
IX.
QUALITY CONTROL/RECALL
9.1 Quality Standards. LICENSEE agrees that the LICENSED PARTS on which it
will use the TRADEMARKS shall be of a standard of quality equally as
high as that of the samples provided to LICENSOR for review and
expressly approved in writing by LICENSOR in accordance with Section
9.2 of this AGREEMENT. Moreover, the LICENSED PARTS shall be
manufactured according to LICENSEE'S standard quality control and
manufacturing procedures, and shall meet or exceed all government
standards, regulations, guidelines, rules, laws, or the like regarding
such product(s) including (without limitation), as applicable, the
Consumer Products Safety Act and Federal Motor Vehicle Safety
Standards. LICENSOR may inspect LICENSEE'S facilities at any time with
or without prior notice. LICENSOR shall, however, use its best efforts
not to interfere with LICENSEE'S regular business activities in
conducting such inspections.
9.2 Submission of LICENSED PRODUCT Samples and Collateral Materials.
LICENSEE shall not market, promote, sell, and/or distribute any
LICENSED PARTS (or Collateral Materials, defined in this Section
below) unless and until such have been submitted to and expressly
approved in writing by LICENSOR. LICENSEE shall make available, free
of cost, a reasonable number of samples (generally not to exceed two)
of the LICENSED PARTS (including each variation thereof) for
LICENSOR'S inspection, testing, and approval prior to production,
marketing, promotion, and/or sale of LICENSED PRODUCT(S). At
LICENSOR'S request, LICENSEE shall also provide a reasonable number of
samples (generally not to exceed two) of LICENSED PARTS (and each
variation thereof) at reasonable intervals during the Term for
purposes of product review and quality control verification. At
LICENSOR'S request, samples of the LICENSED PARTS shall be sent by
LICENSEE to an independent laboratory or other test facility selected
by LICENSOR. All costs associated with inspection and testing shall be
borne by LICENSEE. Prior to use, LICENSEE also agrees to provide
LICENSOR samples of all printed or electronic medium related
collateral materials such as packaging, promotional materials, sales
brochures, catalogs, advertisements, and any other materials
(including, without limitation, in the form of television, cable
television, and/or the Internet) containing the TRADEMARKS
(hereinafter "Collateral Materials") for LICENSOR'S inspection and
approval, including but not limited to all materials of any kind which
LICENSEE desires to distribute to LICENSOR'S vehicle dealers. Until
such time as LICENSOR expressly approves LICENSED PRODUCT or
Collateral Materials samples in writing, such samples shall be deemed
disapproved.
9.3 Non-conforming LICENSED PARTS. If at any time the LICENSED PARTS fall
below the Quality Standards of Section 9.1 and this AGREEMENT,
LICENSEE shall immediately: (a) take all necessary and appropriate
action to correct and/or address such deficiency(ies) or
non-conformance(s) in accordance with this Section 9.3 and Article IX;
and (b) advise LICENSOR in writing of such deficiency(ies) or
non-conformance(s). If LICENSOR first learns of such deficiency(ies)
or non-conformance(s), it shall give LICENSEE immediate written notice
of the deficiency(ies) or non-conformance(s). In all such instances,
LICENSEE shall promptly take the necessary steps to cause the LICENSED
PARTS to conform to the Quality Standards within thirty (30) days from
notice of the deficiency(ies) or non-conformance(s). If the LICENSED
PARTS do not conform to the Quality Standards after the thirty (30)
day period, LICENSOR may immediately terminate this AGREEMENT without
any further notice being required. If LICENSEE is working in good
faith and needs additional time in which to make such corrections or
modifications, then LICENSEE may request in writing to LICENSOR (at
LICENSOR'S sole discretion) an additional period of time not to exceed
thirty (30) days in which to effect the corrections or modifications.
In addition, if LICENSOR discovers a defect or inaccuracy in any GM
TECHNOLOGY furnished to LICENSEE under this AGREEMENT, and if any
LICENSED PARTS manufactured pursuant to such GM TECHNOLOGY are
subsequently determined to be defective or inaccurate, then LICENSEE
shall, upon written notification from LICENSOR, modify such LICENSED
PARTS to correct the defect or inaccuracy before LICENSEE'S next
regularly scheduled manufacturing run of such LICENSED PARTS. In any
event and in both instances, LICENSOR can require LICENSEE to
immediately discontinue the use of the TRADEMARKS in connection with
the sale of the non-conforming LICENSED PARTS.
9.4 Product Recall. LICENSEE shall bear any and all costs related to any
product recall of LICENSED PRODUCT(S), whether voluntary or required
by government or LICENSOR. LICENSOR shall have the ability to declare
such a recall if it determines in good faith that any product recall
is necessary for any reason of public health, safety, or welfare or to
ensure compliance with the terms of this AGREEMENT. In the event of
such a recall, LICENSEE will consult with LICENSOR and get LICENSOR'S
approval regarding all aspects of handling such recall.
9.5 Consumer Inquiries. LICENSEE will at its sole cost handle all product
warranty and/or guarantee/satisfaction issues, response and compliance
requirements, and consumer inquiries or complaints (collectively
"Consumer Inquiries") relative to any of the LICENSED PARTS. LICENSOR
shall promptly forward to LICENSEE for handling any and all such
Consumer Inquiries. Upon request by LICENSOR, LICENSEE shall advise
LICENSOR in writing of the manner in which it handled a particular
Consumer Inquiry and provide LICENSOR with aggregate consumer
complaint information.
7. Article X of the AGREEMENT is hereby stricken in its entirety and is
replaced with the following new Article X:
X.
TERMINATION
10.1 Notice of Termination and Cure Periods. If LICENSEE breaches any
material term or condition of this AGREEMENT, LICENSOR shall have the
right to terminate this AGREEMENT upon thirty (30) days written
notice, provided that LICENSEE fails to cure such breach during the
thirty (30) day period. If LICENSEE is working in good faith to cure
such breach and needs additional time in which to do so, then LICENSEE
may request in writing to LICENSOR (at LICENSOR'S sole discretion) an
additional period of time not to exceed thirty (30) days in which to
effect the cure. Such termination shall be effective upon the
expiration of such thirty day period without further notice to
LICENSEE being required. LICENSOR'S failure to terminate this
AGREEMENT for any such breach shall not be construed as a waiver or
acquiescence, and LICENSOR expressly reserves the right to
subsequently terminate this AGREEMENT for the same or any other
breach, whether of the same or different character.
10.2 Automatic Termination. If (a) any LICENSED PRODUCT is recalled for any
reason and LICENSEE fails or refuses to correct the problem or defect
which caused the recall, (b) LICENSEE violates the non-assignment
provisions of Section 11.1, (c) LICENSEE files a petition in
bankruptcy or is adjudicated a bankrupt or if a petition in bankruptcy
is filed against LICENSEE or if it becomes insolvent, or makes an
assignment for the benefit of its creditor(s) or an arrangement
pursuant to any bankruptcy law, or (d) LICENSEE discontinues all or a
significant portion of its business or if a receiver is appointed for
it or its business, or (e) LICENSEE commits multiple material breaches
or repeats a material breach or default previously cured under Section
10.1, then LICENSOR in its discretion shall have the right to
automatically terminate this AGREEMENT upon written notice to LICENSEE
without any opportunity to cure. If the AGREEMENT is so terminated,
LICENSEE, its receivers, representatives, trustees, agents,
administrators, successors, or assigns shall have no right to sell,
exploit, or in any way deal with any LICENSED PARTS or any carton,
container, packing or wrapping material, advertising, promotional or
display material pertaining thereto.
10.3 Other Rights Not Prejudiced. Termination of the AGREEMENT under the
provisions of Article X shall be without prejudice to any rights which
LICENSOR may otherwise have against LICENSEE. Upon such termination or
expiration, all royalties theretofore earned and minimum royalties or
advances required under Article V shall become immediately due and
payable.
10.4 Inventory Statement. Sixty (60) days before the expiration of this
AGREEMENT or, in the event of its termination, ten (10) days after the
effective date of the termination or the happening of the event which
terminates this AGREEMENT where there is no opportunity to cure,
LICENSEE shall provide LICENSOR with a statement showing the number
and description of LICENSED PARTS on hand or in process. LICENSOR
shall have the right to take physical inventory to ascertain or verify
such inventory and statement. LICENSEE'S failure or refusal to provide
such statement or to submit to such physical inventory may result in
LICENSEE'S forfeiture of the inventory sell-off rights granted in
Section 10.5.
10.5 Inventory Sell-Off Period. Except as otherwise provided in Section
10.6, upon termination or expiration of this AGREEMENT, LICENSEE shall
have six (6) months within which to dispose of any existing inventory
of the LICENSED PARTS (if the LICENSED PARTS comply with the Quality
Standards), and thereafter LICENSEE shall promptly discontinue the use
of the TRADEMARKS on and in connection with such LICENSED PARTS. Sales
under this Section 10.5 shall require the payment of royalties as
provided in Section 5.2, but such royalties shall not be applied
against any other royalties (i.e., Earned Royalties, Advance and/or
Minimum Guaranteed Royalties) otherwise required in Section 5.3. In
the event LICENSEE elects to sell LICENSED PRODUCT under this Section
10.5 at a price lower than LICENSEE'S "normal selling price" of the
LICENSED PRODUCT (as determined by LICENSEE'S prior course of
business) the gross sales for calculating Net Sales shall be the
higher of actual gross invoice price or sixty percent (60%) of the
value of the LICENSED PARTS as if sold at their "normal selling
price". All other duties and obligations of LICENSEE shall remain in
force during the sell-off period.
10.6 Forfeiture of Inventory Sell-Off Period. LICENSEE shall automatically
forfeit all of its rights to sell off inventory under Section 10.5 if:
A. This AGREEMENT is terminated for material breach under Section
10.1, or because of product recall under Section 10.2(a), or for
multiple or repeated material breach(es) under Section 10.2(e);
or,
B. LICENSEE is in breach under Section 10.1 or 10.2(e) or the
LICENSED PARTS are the subject of a recall under Section 10.2(a)
when the Term (or renewal term) of this AGREEMENT expires in its
normal course.
In such event(s), LICENSEE shall not be permitted to sell off or
otherwise dispose of any existing inventory of the LICENSED
PARTS, but shall be required to destroy such inventory and
certify to LICENSOR in writing, signed by an officer of LICENSEE,
that the inventory has been so destroyed.
8. Section 11.1 of the AGREEMENT is hereby stricken in its entirety and is
replaced with the following new Section 11.1:
11.1 Non-Assignment. This AGREEMENT and all of the benefits, rights, and
duties hereunder are personal to LICENSEE. If there is a change (or
proposed change) in the ownership, control, or direction of LICENSEE'S
business such as (without limitation): through a merger with another
entity, a sale of LICENSEE'S business, and/or any of its assets to
another entity; through consolidation, reorganization, formation of a
partnership, or sale of a controlling interest in LICENSEE'S common or
preferred stock; a change in LICENSEE'S senior or executive management
that relates directly to the business of this AGREEMENT; or any other
transaction which alters LICENSEE'S business and/or structure; then in
such event, LICENSEE must obtain LICENSOR'S prior express written
consent (which consent will not be unreasonably withheld) before such
instances are deemed accepted and before this AGREEMENT may be
assigned, sold, transferred, or otherwise affected or encumbered by
LICENSEE or by operation of law in connection with such transaction or
instance(s).
9. Section 11.4 of the AGREEMENT is hereby stricken in its entirety and is
replaced with the following new Section 11.4:
11.4 Notices and Payments. Any notices, payment of fees, or other
communication required or permitted under this AGREEMENT shall be in
writing and mailed by first-class mail (or, in the case of a
termination notice pursuant to Article X or other similar legal
notices or communications, by certified mail and/or by facsimile
transmission with confirmation receipt as evidence of delivery or
together with a copy mailed by first-class mail) to the respective
parties as identified below.
Notices to LICENSEE:
▇▇▇▇▇▇'▇ Industries, Inc.
▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attn: Mr. ▇▇▇ ▇▇▇▇▇▇▇▇, Chief Operating Officer
Fax number: (▇▇▇) ▇▇▇-▇▇▇▇
Notices to LICENSOR (in care of its exclusive licensing
representative):
Equity Management Inc.
▇▇▇ ▇. ▇▇▇ ▇▇▇▇▇▇ ▇▇., ▇▇▇▇▇ ▇▇▇▇
▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇
Attn: Business Manager, GMSPO Licensing
Fax number: (▇▇▇) ▇▇▇-▇▇▇▇
Payments to LICENSOR (in care of its exclusive licensing
representative):
Equity Management Inc.
▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇
▇▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇
Attn: Contract Administration
Fax number: (▇▇▇) ▇▇▇-▇▇▇▇
10. Article XI of the AGREEMENT is hereby amended to include the following new
Sections 11.7 and 11.8:
11.7 Standards of Distribution. LICENSEE shall be allowed to market,
distribute, and sell LICENSED PARTS only in the DISTRIBUTION CHANNEL
defined in Exhibit II. LICENSEE agrees that during the Term of this
AGREEMENT it will diligently and continuously, in accordance with its
regular business practices and applicable industry standards,
manufacture or have manufactured, distribute, promote, and sell the
LICENSED PARTS and that it will make and maintain adequate
arrangements for the distribution of the LICENSED PARTS in the
DISTRIBUTION CHANNEL. Such arrangements shall include, but are not
limited to, participating in LICENSOR'S "Licensed Parts Reference
Guide" and other promotional and/or marketing programs which LICENSOR
shall implement from time to time.
11.8 Sales to LICENSOR. If LICENSOR or LICENSOR'S vehicle dealers desire to
purchase LICENSED PARTS from LICENSEE, then LICENSEE agrees to sell
the LICENSED PARTS (if available) to LICENSOR and such vehicle dealers
at a price at least as low as its lowest wholesale price to any of
LICENSEE'S other customers.
11. The AGREEMENT is hereby amended to include the following new Article XII:
XII.
RECORDS/AUDITS
12.1 Record Keeping. LICENSEE shall keep accurate books of account and
records covering all transactions relating to this AGREEMENT, and
shall keep the same available for at least two (2) years after
termination or expiration of the AGREEMENT.
12.2 Audits. LICENSOR or its nominee (which nominee shall be bound by the
confidentiality provisions of Section 11.5 herein) shall have the
right at all reasonable business hours upon five business days advance
notice to LICENSEE to examine said books of account and records and
all other documents and material in the possession or under the
control of LICENSEE regarding this AGREEMENT, and shall have free and
full access thereto for said purposes and for the purpose of making
extracts therefrom. LICENSEE must segregate its records in such a
manner as to facilitate a complete audit and agrees that such audit
may be used as a basis for settlement of charges in accordance with
this AGREEMENT. If, as a result of such verification, examination, or
audit of LICENSEE'S books, records, and/or statements, it is
determined that there is a deficiency or discrepancy in the payment of
any amounts owed (including but not limited to) royalties, to
LICENSOR, then LICENSEE must immediately pay such amount owed to
LICENSOR. If it is determined that such deficiency or discrepancy is
five percent (5%) or more of the amounts owed to LICENSOR, then
LICENSEE shall bear all reasonable expenses related to such
examination or audit by LICENSOR or its nominee.
12.3 LICENSEE'S Separate Statement. Upon LICENSOR'S reasonable request,
LICENSEE shall at its own expense furnish a detailed written statement
certified by an officer of LICENSEE to be true and accurate, showing
the number, description, gross sales price, itemized deductions from
gross sales price, and net sales price of the LICENSED PARTS.
12. Other than as specifically set forth in this THIRTY FOURTH AMENDMENT, the
AGREEMENT remains unchanged and of full force and effect; any conflict
between the AGREEMENT and this THIRTY FOURTH AMENDMENT shall be controlled
by this THIRTY FOURTH AMENDMENT.
GENERAL MOTORS CORPORATION ▇▇▇▇▇▇ INDUSTRIES, INC.
SERVICE PARTS OPERATIONS d/b/a ▇▇▇▇▇▇'▇
Name: /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇ Name: /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
-------------------------- -----------------------------
By: ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇ By: ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
Title: Manager, Trademark Licensing Title: Executive Vice President
Date: March 11, 1998 Date: March 5, 1998