Exhibit 10.1
ASSIGNMENT AGREEMENT
--------------------
AGREEMENT made as of the 15th day of August, 2005, by and between
▇▇▇▇▇▇ ▇▇▇▇▇▇▇ PRODUCTIONS, INC., and ▇▇▇▇▇▇ ▇▇▇▇▇▇▇, [ADDRESS] on the one
hand (collectively, "Assignor"), and ▇▇▇▇▇▇ ▇▇▇▇▇▇▇ VENTURES LLC, ▇▇▇ ▇.
▇▇▇▇▇▇-▇▇▇▇▇ ▇▇▇▇, ▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇-▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, on the other
hand ("Assignee"). Whereas, subject to certain limited exceptions described
herein, Assignor is the owner of all right, title and interest, in and to the
Indicia Rights and the Marks (as defined below), and whereas Assignee desires
to obtain all right, title and interest in and to the Indicia Rights and the
Marks (as defined below), all on the terms and conditions provided below, the
parties agree as follows, for good and valuable consideration, the receipt of
which is hereby acknowledged:
1. Definitions.
(a) The "▇▇▇▇▇▇▇ Indicia": The name, image, signature,
voice, likenesses, caricatures, sobriquets, and all other identifying
features and indicia of the boxing celebrity ▇▇▇▇▇▇ ▇▇▇▇▇▇▇, both now known
and hereafter found or developed.
(b) The "Marks":
▇▇▇▇▇▇ ▇▇▇▇▇▇▇
GF SPORT BY ▇▇▇▇▇▇ ▇▇▇▇▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇▇ SIGNATURE
SIGNATURE COLLECTION BY ▇▇▇▇▇▇ ▇▇▇▇▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇▇ SAUCES
▇▇▇▇▇▇ ▇▇▇▇▇▇▇ KNOCKOUT
▇▇▇▇▇▇ ▇▇▇▇▇▇▇ SIGNATURE COLLECTION
COMFORT ZONE BY ▇▇▇▇▇▇ ▇▇▇▇▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇▇ LEAN MEAN CONTACT ROASTING
MACHINE
▇▇▇▇▇▇ ▇▇▇▇▇▇▇'▇ FUSION GRILL
BIG ▇▇▇▇▇▇
and all colorable variations thereof; and all other words, phrases, symbols
and designs, and combinations of words, phrases, symbols and designs, that
incorporate or otherwise refer to the ▇▇▇▇▇▇▇ Indicia, in whole or in part,
and that have been used, are being used, or could be used, anywhere in the
universe, as trademarks or trade names or service marks or service names, in
any and all categories and classes of products and services, without
limitation.
(c) The "Indicia Rights": the sole and exclusive right,
throughout the universe in perpetuity, to use the ▇▇▇▇▇▇▇ Indicia, in whole
or in part in connection with the manufacture, distribution, sale,
advertising, promotion, and other exploitation of all products; and the
distribution, sale, advertising, promotion, and other exploitation of all
services; including without limitation, the following uses: (i) on products;
(ii) on product packaging; (iii) on labeling; (iv) on signage; and (v) on any
and all promotional and advertising messages and materials; by any and all
means and media, both known and unknown, throughout the universe.
Notwithstanding the foregoing, Assignee acknowledges that the grant of
Indicia Rights hereunder is subject to Assignor's reservation of rights
pursuant to Paragraph 6(b) of the Services Agreement (as defined below).
(d) The "Percentage Rate": Fifty percent (50%).
(e) A "Semi-Annual Period": Each six (6)-month period
ending each June 30 and December 31, provided that the first Semi-Annual
Period shall run from the date hereof until December 31, 2005.
(f) "Royalty Reporting Periods": The period from the date
hereof to December 31, 2005; and each Semi-Annual Period thereafter.
(g) "Products": Products sold under one or more Marks by
Assignee or under license from Assignee.
(h) "Services": Services sold under one or more Marks by
Assignee or under license from Assignee.
(i) "Traditional Licenses": Licenses by Assignee (directly
or through MM Companies, Inc. ("MM Companies") or any Controlled Entity (as
defined in the LLC Agreement)) granting the right to unaffiliated third
parties to sell one or more Products or Services under one or more Marks;
provided, however, that "Traditional Licenses" shall not include licenses
which provide for, or are entered into in connection with:
(A) a material investment of Assignee's
resources (or resources of MM Companies or any Controlled Entity) in such
licensee (whether in the form of an equity or debt investment) in a
transaction that would be reflected on the financial statements of the
Assignee (or the financial statements of MM Companies or any Controlled
Entity) as long-term debt or an equity investment, or
(B) a joint venture, strategic alliance or
other business partnership of comparable scope with such licensee requiring a
material commitment of the Assignee's financial resources (or financial
resources of MM Companies or any Controlled Entity) (it being understood that
financial commitments to licensees of the types contemplated by the
agreements described on Schedule A below (collectively, "Existing License
Agreements") shall not be deemed "material" for purposes of this clause (B)),
or
(C) any other transaction in which Assignee, MM
Companies or any Controlled Entity agrees to assume categories of costs and
expenses that are, or to commit internal resources in a manner that is, not
customary in commercial, arm's length licensing arrangements in the given
industry and product segment (or, in the case of the industries and product
segments currently covered by the Existing License Agreements, that are not
provided for in any of the Existing License Agreements) and which represent,
in the aggregate, an economic risk to the Assignee (or MM Companies or a
Controlled Entity, as appropriate) that is materially greater than the
economic risks to which licensors would be customarily subject under such
arrangements (or, as applicable, to which ▇▇▇▇▇▇ ▇▇▇▇▇▇▇ and/or ▇▇▇▇▇▇
▇▇▇▇▇▇▇ Productions, Inc., as applicable, was subject under the terms of the
Existing License Agreements).
For purposes of the foregoing determinations, materiality
shall be determined by the Assignee with due consideration given to (1)
materiality to the licensor (e.g.,
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amount of licensor's assets or net income committed), (2) materiality to the
licensee (e.g., percentage stake in licensee granted in respect of the
investment), and (3) materiality in light of a reasonable businessperson's
expectations as to the overall value of the given transaction (e.g., resources
committed as percentage of anticipated revenues over license term). The
Assignee shall provide written notice of such determinations to Assignor
within ten (10) business days of execution of the respective agreement(s),
with such determinations to be conclusively binding unless objected to in
writing by Assignor within ten (10) business days of such notice. In the event
of any such objection, unless resolved within five (5) business days by mutual
written agreement of the parties such dispute shall be referred for binding
expedited arbitration in accordance with Paragraph 10 of this Agreement, with
all costs and expenses of such arbitration (including reasonable legal fees
and costs of the prevailing party) to be borne by the losing party.
(j) "Net Traditional License Payments": The payments of
royalties actually received (including, without limitation, by way of advances
and guarantees) by Assignee, MM Companies and any and all Controlled Entities
in United States Dollars in the United States, derived from the sale of
Products and Services pursuant to any and all Traditional Licenses remaining
after the deduction of any and all out-of-pocket expenses incurred by
Assignee, MM Companies and any and all Controlled Entities in connection with
such Traditional Licenses, including agents' fees; provided, however, if
Assignee is ever required to return all or any portion of a royalty advance,
guarantee or other payment to a licensee, then Assignor will immediately, upon
notice from Assignee, return Assignor's share of such royalty advance,
guarantee or other payment. As an example, and for clarification purposes
only, in the event that (w) Assignee, MM Companies and the Controlled Entities
receive, in a fiscal year, Two Million Dollars ($2,000,000) from the sale of
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Products and Services pursuant to the Traditional Licenses and Eight Million
Dollars ($8,000,000) in income derived from the exploitation of the Indicia
Rights and Marks other than in connection with Traditional Licenses, (x) some
agents' fees were incurred in connection with some subset of the Traditional
Licenses, amounting to Fifty Thousand Dollars ($50,000), (y) salaries incurred
by Assignee, MM Companies and the Controlled Entities were Six Hundred
Thousand Dollars ($600,000) and (z) other out-of-pocket expenses incurred by
Assignee, MM Companies and the Controlled Entities in connection with the
Traditional Licenses were Thirty Thousand Dollars ($30,000), then Net
Traditional License Payments for such year would equal (i) Two Million Dollars
($2,000,000) minus (ii) Fifty Thousand Dollars ($50,000) minus (iii) the
product of (A) Six Hundred Thousand Dollars ($600,000) and (B) a fraction, the
numerator of which is Two Million Dollars ($2,000,000) and the denominator of
which is the sum of Two Million Dollars ($2,000,000) and Eight Million Dollars
($8,000,000), minus (iv) Thirty Thousand Dollars ($30,000), for total Net
Traditional License Payments of One Million Eight Hundred Thousand Dollars
($1,800,000).
(k) "Assignor Royalty": The product of Net Traditional
License Payments multiplied by the Percentage Rate, as such product may be
adjusted pursuant to Paragraph 4 hereof.
(l) "Royalty Report": A written statement setting forth
the computation of the Net Traditional License Payments and the Assignor
Royalty due to Assignor for each Semi-Annual Period.
2. Assignment. Subject to Paragraph 3 below:
(a) For the consideration described in Paragraph 4 below:
(i) Assignor does hereby sell, grant, assign and otherwise set
over to Assignee, solely and exclusively and forever, irrevocably and
unconditionally, all right, title and interest, of every nature and
description, whether or not such rights are now known, recognized or
contemplated, in and to:
(A) the Indicia Rights;
(B) the Marks, together with the good will of the business
symbolized by the Marks, and the portion of the business appurtenant to the
Marks, throughout the universe;
(C) any and all registrations of, and applications to
register, the Marks filed in the United States Patent and Trademark Office
and in any states within the United States (e.g., without limitation,
Louisiana), including without limitation, the registrations and/or
applications listed on Exhibit A below in the name of Assignor, ▇▇▇▇▇▇ ▇.
▇▇▇▇▇▇▇, ▇▇. or ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇, III; and
(D) any and all registrations of, and applications to
register, the Marks filed anywhere else in the world in the name of Assignor,
▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇, ▇▇. or ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇, III.
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(ii) With respect to each registration and/or application not
included in Paragraph 2(a)(i)(C) or 2(a)(i)(D) and obtained pursuant to or in
connection with any Existing Agreement or Salton Agreement (each as defined
below) (including, without limitation, all of the registrations and
applications listed on Exhibit D below): if any such Existing Agreement or
Salton Agreement expires or terminates and/or the applicable registration or
application is assigned to, transferred to and/or acquired by Assignor or any
person, corporation or other business entity related to Assignor ("Related
Entities"), Assignor shall promptly (A) sell, grant, assign and otherwise set
over to Assignee (collectively, "Grant"), solely and exclusively and forever,
irrevocably and unconditionally, all right, title and interest, of every
nature and description, whether or not such rights are now known, recognized
or contemplated, in and to such registration or application, as applicable,
or (B) cause the applicable Related Entity to make such Grant to Assignee.
(b) Without limiting the foregoing, Assignor acknowledges that
Assignee is hereby granted the sole and exclusive right, throughout the
universe, in perpetuity, to manufacture, to have manufactured for it, to use,
to distribute, to furnish and to sell Products and Services; to exercise the
Indicia Rights; and to license one or more of the foregoing rights to one or
more third parties; subject to Paragraph 3 below.
(c) Contemporaneously with its execution of this Assignment
Agreement, Assignor shall deliver to Assignee short-form assignments executed
before a notary of each and every existing trademark registration and
application to register, relating to the Marks, in the form annexed as
Exhibit C, including without limitation the registrations and applications to
register listed on Exhibits A and B, but excluding (i) the Marks registered
or applied for registration by Salton, Inc., Salton-Maxim Housewares, Inc.
and Designs Apparel, Inc. listed on Exhibit D and (ii) any abandoned Marks.
(d) Within thirty (30) days after full execution of this
Assignment Agreement, ▇▇▇▇▇▇ ▇▇▇▇▇▇▇ PRODUCTIONS, INC., shall formally change
its corporate name to one that does not incorporate the name ▇▇▇▇▇▇ ▇▇▇▇▇▇▇,
or any other ▇▇▇▇, or any other element of the ▇▇▇▇▇▇▇ Indicia. ▇▇▇▇▇▇
▇▇▇▇▇▇▇ PRODUCTIONS, INC., hereafter shall cease and desist from any and all
other uses of the ▇▇▇▇▇▇▇ Indicia, the Indicia Rights and/or the
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Marks, subject to Assignor's reservation of rights pursuant to Paragraph 6(b)
of the Services Agreement (as defined below); and ▇▇▇▇▇▇ ▇▇▇▇▇▇▇ hereafter
shall cease and desist from any and all uses of the Indicia Rights and/or the
Marks; and neither ▇▇▇▇▇▇ ▇▇▇▇▇▇▇ PRODUCTIONS, INC., nor ▇▇▇▇▇▇ ▇▇▇▇▇▇▇, nor
any person or entity related or affiliated with one or both of them, shall
authorize any other person, firm or entity, to make any use of the ▇▇▇▇▇▇▇
Indicia, the Indicia Rights and/or the Marks, on or in connection with any
product or service; subject only to the Existing Agreements and Salton
Agreements described in Paragraph 3 below and to Assignor's reservation of
rights pursuant to Paragraph 6(b) of the Services Agreement (as defined
below).
3. Existing Agreements, Salton Agreements and Limitations on
Assignment.
(a) Assignee acknowledges that ▇▇▇▇▇▇ ▇▇▇▇▇▇▇ PRODUCTIONS,
INC., and/or ▇▇▇▇▇▇ ▇▇▇▇▇▇▇ have entered into certain license agreements and
endorsement agreements described on Exhibit E attached hereto (the "Existing
Agreements") and that, accordingly, the grant of rights to Assignee does not
include the rights previously conveyed under the Existing Agreements and
remaining thereunder with the applicable third party as of the date hereof.
As a material inducement to Assignee to enter into this Agreement, Assignor
warrants and represents that (i) there are no existing agreements or
understandings in effect pertaining to the Marks or Indicia Rights other than
the Existing Agreements and the Salton Agreements (as defined below) and (ii)
the prior licenses and endorsements under the Existing Agreements grant
rights that remain in effect as of the date hereof, solely in connection with
the specific products and services described on Exhibit F-1 attached hereto
(the "Encumbered Categories"), and to no others. Assignee represents and
warrants that it will not violate the exclusivity restrictions contained in
the Existing Agreements that are described on Exhibit F-2 attached hereto as
long as the applicable Existing Agreement remains in effect and the
applicable licensee has not waived the applicable restriction. At no time
shall Assignor purport to enlarge any right granted under any Existing
Agreement. If any rights to any Marks or Indicia Rights granted by Assignor
under any such Existing Agreement revert to, are assigned to, are transferred
to and/or are acquired by Assignor or any Related Entity (the "Reverted
Existing Agreement Rights"), such Reverted Existing Agreement Rights shall
immediately be transferred and assigned to Assignee, together with the good
will of the business symbolized by such Reverted Existing Agreement Rights,
throughout the universe, and all registrations and
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applications to register any and all Marks made by, under the authority of, or
on behalf of, any such licensees and/or any assignee, licensee, or successor
of any such licensees, at any time; provided, however, that following any such
assignment, Assignee shall, upon Assignor's request, license to Assignor or
Assignor's designee, on a royalty-free basis on customary industry terms to be
negotiated in good faith, including, without limitation, quality control
provisions, the right to exploit the applicable Reverted Existing Agreement
Rights in connection with the Encumbered Categories (excluding the product
categories licensed pursuant to the agreement dated as of March 3, 2004, among
Salton, Inc., ▇▇▇▇▇▇ ▇▇▇▇▇▇▇ and Cambridge Foods LLC (the "Sauces Agreement"),
which rights shall belong entirely to Assignee) with respect to which the
applicable licensee holds rights as of the date of this Agreement and if the
parties are unable to agree upon such terms, the parties shall submit the
matter on an expedited basis for arbitration in accordance with the procedures
described in Paragraph 10(b) below.
(b) Assignee further acknowledges that Assignor has entered
into a certain purchase agreement (together with certain agreements included
as exhibits thereto and a related trademark assignment), as amended, and
perpetual license agreement with Salton, Inc., all as described on Exhibit G
attached hereto (collectively, the "Existing Salton Assignment") and Salton,
Inc. entered into a license agreement with Franco Manufacturing Co., Inc.
described on Exhibit H attached hereto (the "Franco License" and,
collectively with the Existing Salton Assignment, the "Salton Agreements"),
and that accordingly the grant of rights to Assignee does not include the
rights previously conveyed under the Existing Salton Assignment and the
Franco License (solely in connection with the product categories described on
Exhibit I attached hereto (the "Encumbered Salton Categories")) and remaining
with Salton, Inc. and Franco Manufacturing Co., Inc., respectively, as of the
date hereof. Assignor warrants and represents that the Salton Agreements
grant rights that remain in effect as of the date hereof solely in connection
with the product categories described on Exhibit I attached hereto, and to no
others. If any rights to any Marks granted by Assignor under any Salton
Agreements revert to, are assigned to, are transferred to and/or are acquired
by Assignor or any Related Entity (the "Reverted Salton Marks"), such Marks
shall immediately be transferred and assigned to Assignee, together with the
good will of the business symbolized by such Marks, throughout the universe,
and all registrations and applications to register any and all Marks made by,
under the authority of, or on behalf of, Salton, Inc. and/or any assignee,
licensee, or successor of Salton,
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Inc., at any time; provided, however, that following any such assignment,
Assignee shall, upon Assignor's request, license to Assignor or Assignor's
designee, on a royalty-free basis on customary industry terms to be negotiated
in good faith, including, without limitation, quality control provisions, the
right to exploit the applicable Reverted Salton Marks in connection with the
Encumbered Salton Categories with respect to which Salton, Inc. holds rights
as of the date of this Agreement and if the parties are unable to agree upon
such terms, the parties shall submit the matter on an expedited basis for
arbitration in accordance with the procedures described in Paragraph 10(b)
below. At no time shall Assignor purport to enlarge any right granted under
the Salton Agreements.
(c) Assignor warrants and represents that neither Assignor nor
any other person, firm or entity, has licensed, assigned, delegated,
mortgaged, hypothecated, transferred or encumbered any right granted to
Assignee hereunder, except to the extent found in the Existing Agreements and
the Salton Agreements.
(d) Intentionally omitted.
(e) Assignor agrees to use its commercially reasonable efforts
to (i) terminate the Sauces Agreement and (ii) cause a reversion of the
rights granted thereunder entirely to ▇▇▇▇▇▇ ▇▇▇▇▇▇▇; provided, however, that
in order to accomplish the foregoing, (x) Assignor shall not be required to
approach Salton Inc. and (y) Assignor shall not be required to pay any fee to
Cambridge Foods LLC or Salton Inc., although if Assignor becomes aware that
Cambridge Foods LLC and/or Salton Inc. may be willing to terminate the Sauces
Agreement for a fee, Assignor shall promptly notify Assignee in writing of
such fact and give Assignee the opportunity to pay such fee. Upon such
termination, the rights previously granted to the licensee thereunder shall
automatically be transferred and assigned to Assignee.
4. Royalties and Other Consideration.
(a) In consideration of the assignment to Assignee in Paragraph
2 above and the other grants to Assignee hereunder, Assignor shall be
entitled to (i) the membership interests in Assignee pursuant to the
Subscription Agreement of even date (the "Subscription Agreement") and
executed contemporaneously herewith; and (ii) the Assignor Royalty as
described in
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Paragraph 5 hereof; provided that Assignor does not materially breach any of
its representations, warranties or agreements hereunder (but subject to the
limitations on Assignor's liability described in Paragraph 8(c) below).
(b) As of even date herewith, the Assignor and MM Companies
have entered into a Limited Liability Company Agreement (the "LLC Agreement")
with respect to, among other things, the operations and the sharing of the
resultant profits, losses and cash flow of the Assignee. The Assignor and MM
Companies contemplate not only that any and all business relating to the
exploitation and use of the Traditional Licenses, as described more fully
herein (the "Traditional Licensing Business"), shall be conducted exclusively
through the Assignee, but that the Assignee shall also conduct such other
business activities and operations as the Board of Managers of the Assignee
shall determine from time to time to be appropriate and suitable to be
carried on by the Assignee (the "Non-Traditional Businesses"). Under the LLC
Agreement, (i) income equal to the Assignor Royalty payable hereunder in
respect of any fiscal year of the Assignee shall be treated as a specially
allocated item of income solely allocable to the Assignor, and (ii) in
respect of any fiscal year of the Assignee, income equal to the amount of the
Net Traditional License Payments (after deduction of the Assignor Royalty
payable to the Assignor in respect of such year in accordance with the terms
of this Agreement) to be retained by the Assignee shall be treated as
specially allocated items of income solely allocable to MM Companies.
(c) Notwithstanding anything to the contrary contained herein
and in that certain Services Agreement (the "Services Agreement") entered
into as of even date herewith by and between ▇▇▇▇▇▇ ▇▇▇▇▇▇▇ Productions, Inc.
("GFPI") and Assignee, in the event that (i) the Assignee shall enter into
and conduct Non-Traditional Businesses, (ii) a tax distribution (the "Tax
Distribution") is distributed in accordance with the terms of the LLC
Agreement by the Assignee to the Assignor in respect of the Assignor's share
of the taxable income of such Non-Traditional Businesses for a given fiscal
year of the Assignee and (iii) in accordance with the terms of the LLC
Agreement, MM Companies elects not to receive a Tax Distribution with respect
to its share of the taxable income of such Non-Traditional Businesses for a
given fiscal year of the Assignee, then the following shall occur: (x) first,
the amount of the Assignor Royalty otherwise payable by the Assignee to the
Assignor in respect of such year shall be reduced by the amount of such Tax
Distribution to the Assignor (hereinafter the amount by which the Assignor
Royalty is to be reduced is referred to as the "Reduction Amount"), and (y)
second, income in an
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amount equal to the Reduction Amount shall be allocated in accordance with the
provisions of the LLC Agreement.
(d) In addition, notwithstanding anything to the contrary
contained in this Assignment Agreement and the Services Agreement, if the
Reduction Amount for any fiscal year of the Assignee shall exceed the amount
of the Assignor Royalty payable hereunder to the Assignee in respect of such
year, such excess (the "Excess Reduction Amount") shall next be applied to
reduce up to (but not in excess of) the amount of the Bonus (as such term is
defined in the Services Agreement) that would otherwise be payable to GFPI
for such year under the Services Agreement, and any resultant increase in the
income of the Assignee from the reduction of such Bonus shall be allocated in
accordance with the provisions of the LLC Agreement.
5. Accountings and Reports.
(a) Assignee agrees to keep full and accurate books of account
respecting the sale of all Products and Services by Assignee pursuant to this
Agreement, and the receipt by Assignee of all Net Traditional License
Payments. Assignor shall have the right at Assignor's own expense, and not
more often than once in any calendar year, to examine said books and records
on prior written notice to Assignee of at least thirty (30) days, insofar as
said books and records concern the sale of Products and Services by Assignee
pursuant to this Agreement and the receipt by Assignee of all Net Traditional
License Payments, for the sole purpose of verifying the accounting statements
sent by Assignee to Assignor during the two (2) years prior to the
commencement of such audit. Assignor may make such examination for a
particular Royalty Report only once, and only within two (2) years after the
date when Assignee sends Assignor the Royalty Report. In the event that
Assignor shall examine such records, such examination shall be conducted by
an independent auditor selected by Assignor and reasonably approved by
Assignee, such examination being conducted in such manner as to not unduly
interfere with the business of Assignee. Assignor's representatives shall
not disclose to any other person, firm or corporation any information
acquired as a result of any such examination; provided, however, that nothing
herein contained shall be construed to prevent Assignor and/or its duly
authorized representatives from testifying in any court of competent
jurisdiction with respect to the information obtained as a result of such
examination, in any action instituted to enforce the rights of Assignor under
the terms of this Agreement.
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(b) Royalty Reports shall be made within ninety (90) days after
the close of each Royalty Reporting Period, together with payment of the
royalties payable to Assignor that are reflected in the accompanying
statement. All statements rendered by Assignee to Assignor shall be binding
upon Assignor and not subject to any objection by Assignor for any reason
unless specific objection in writing, stating the basis thereof, is given to
Assignee within two (2) years from the date rendered. Failure to make
specific objection within said time period shall be deemed approval of such
statement. Assignor will not have the right to bring an action against
Assignee in connection with any statement or payment hereunder unless
Assignor commences the suit within six (6) months from the date such written
objection, if any, is so given.
6. Maintenance and Protection of the Marks and Indicia Rights.
Assignor agrees to inform Assignee of any encroachment or infringement of the
Marks and Indicia Rights which comes to the attention of Assignor. Any
litigation or other action to protect the Marks and Indicia Rights granted
hereunder and to ▇▇▇▇▇ infringement shall be under the complete control of
Assignee and at Assignee's expense; provided, however, that if any such
litigation or other action arises in whole or in part out of Assignor's breach
of any of its representations or warranties hereunder, it shall be at
Assignor's expense (but still under the complete control of Assignee), subject
to the limitations on Assignor's liability described in Paragraph 8(c) below.
Assignee may retain any money judgment or settlement in such action, without
obligation to Assignor. Assignor agrees to cooperate reasonably in any such
litigation or action, at Assignee's expense; provided, however, that if any
such litigation or other action arises in whole or in part out of Assignor's
breach of any of its representations or warranties hereunder, it shall be at
Assignor's expense, subject to the limitations on Assignor's liability
described in Paragraph 8(c) below. Assignee agrees to use its commercially
reasonable efforts (in Assignee's judgment) to protect the Marks and Indicia
Rights granted hereunder. Notwithstanding the foregoing, to the extent that
any action that is the subject of this Paragraph 6 is brought by Assignor, or
by any third party (including, without limitation, Casual Male Retail Group,
Inc.) against Assignor, to enforce or to protect or otherwise in connection
with Assignor's or Assignor's licensee's or assignee's rights in any ▇▇▇▇ or
Indicia Right to the extent the same is the subject of any Existing Agreement
or any Salton Agreement, the expenses and control thereof shall to such extent
be Assignor's sole responsibility; provided, however, that it is acknowledged
and agreed that no costs or expenses incurred by Assignor pursuant to this
sentence shall be applied against
11
the Cap (as defined in Paragraph 8(c) below) or otherwise included in
determining whether the Cap has been achieved; and provided, further, that
Assignor shall not agree to any settlement that impacts Assignee's rights in
the Marks and/or Indicia Rights hereunder without Assignee's prior written
consent.
7. Uses and Licenses by Assignee. Assignee shall not use,
and shall not authorize licensees to use, the Marks and/or ▇▇▇▇▇▇▇ Indicia in
connection with any religious products (e.g., crucifixes, Stars of ▇▇▇▇▇) or
any product containing alcohol, tobacco, firearms, political statements or
sexual content.
8. Representations and Warranties.
(a) ▇▇▇▇▇▇ ▇▇▇▇▇▇▇ PRODUCTIONS, INC., and ▇▇▇▇▇▇ ▇▇▇▇▇▇▇,
hereby expressly represent and warrant that: (i) collectively, they are the
sole owner of the Marks and the Indicia Rights and all rights pertaining
thereto (subject to the rights previously conveyed under the Existing
Agreements and the Salton Agreements and remaining thereunder with the
applicable third parties as of the date hereof, as described in Paragraph 3
above); (ii) collectively, they have the sole and exclusive right to assign
the Marks and the Indicia Rights to Assignee (subject to the rights
previously conveyed under the Existing Agreements and the Salton Agreements
and remaining thereunder with the applicable third parties as of the date
hereof, as described in Paragraph 3 above); (iii) collectively, they own
outright and have good and marketable title to, all right, title and interest
in and to the Marks, together with the good will of the business symbolized
by the Marks, in all trademark classes and product and service categories,
and to the Indicia Rights, subject to the rights previously conveyed under
the Existing Agreements and the Salton Agreements (i.e., the use of certain
Marks in product categories described on Exhibit I attached hereto); in each
case free and clear of any lien, security interest, pledge, charge, option,
right of first refusal, claim, mortgage, lease, easement or any other
encumbrance whatsoever; and, without limiting the foregoing, there is no
other assignee, licensee, other claimant or senior user, with superior rights
thereto; (iv) they are fully authorized to enter into and fully perform this
Agreement; (v) Assignee shall not be under any obligation for the payments of
any commissions or fees to any agent or other representative of Assignor on
account of this Agreement; (vi) this Agreement has been duly and validly
executed by them and constitutes a valid and binding obligation upon them
enforceable against
12
them in accordance with its terms; (vii) there are no existing agreements or
understandings in effect pertaining to the Marks or Indicia Rights other than
the Existing Agreements and Salton Agreements; (viii) none of the rights
granted under the Existing Agreements or the Salton Agreements will be
enlarged; (ix) they will not hereafter enter into any agreements or
understandings pertaining to the Marks, the ▇▇▇▇▇▇▇ Indicia or the Indicia
Rights, in whole or in part, except as specifically permitted by Paragraph 3
above; (x) there are no pending or threatened litigations or conflicts of any
nature whatsoever involving the Marks, the ▇▇▇▇▇▇▇ Indicia, or the Indicia
Rights; and (xi) they will not grant, or purport to grant, any rights that
would be inconsistent with or otherwise reduce the value of the rights granted
hereunder, including, without limitation, granting or permitting any party the
right to use the Marks or the ▇▇▇▇▇▇▇ Indicia, in whole or in part, for the
purposes of trade or advertising, or any other commercial use, in any manner.
Notwithstanding anything in clause (x) of the preceding sentence to the
contrary, Assignor has advised Assignee of certain office actions of the
United States Patent and Trademark Office (the "PTO") relating to trademark
application numbers 78383404, 78273528, 78370744, 78422440, 78422472,
78422487, 78370741, 78371185, 78273529, 78349916 and 78381729, which contain
objections to registration by the PTO; the foregoing objections by the PTO
will not be deemed to constitute a breach by Assignor of said clause (x).
(b) Assignee represents and warrants that it is fully
authorized to enter into and perform this Agreement and that this Agreement
has been duly and validly executed by Assignee and constitutes a valid and
binding obligation upon Assignee enforceable against Assignee in accordance
with its terms.
(c) ▇▇▇▇▇▇ ▇▇▇▇▇▇▇ PRODUCTIONS, INC., and ▇▇▇▇▇▇ ▇▇▇▇▇▇▇,
shall be jointly and severally liable, to indemnify and hold Assignee
harmless against any and all loss, damage and expense, including attorneys'
fees and costs, arising out of any claims, demands, actions, suits or
prosecutions that may be instituted against Assignee by reason of either (i)
an infringement of any third party's copyright, trademark or other rights by
the Marks and/or the exercise of the Indicia Rights or (ii) any material
breach by one or both of ▇▇▇▇▇▇ ▇▇▇▇▇▇▇ PRODUCTIONS, INC., and ▇▇▇▇▇▇ ▇▇▇▇▇▇▇
of any of their warranties, representations or agreements set forth in this
Agreement and/or in the Services
13
Agreement (collectively, "Indemnifiable Losses"). Pending the determination of
any claim, Assignee may withhold sums due to Assignor hereunder, or pursuant
to the Services Agreement, in reasonable proportion to the potential liability
of Assignee with respect to such claim. Assignee shall have the absolute right
to control the defense of any such claim. Assignee agrees that Assignor's
aggregate liability to Assignee under this Agreement and the Services
Agreement for all Indemnifiable Losses will not exceed the lesser of (x) the
total maximum value of the Fee (as defined in the Services Agreement) and the
Assignor Royalty payable pursuant to this Agreement, in each case solely to
the extent such amounts are to be payable to Assignor following the earlier of
(A) the date that a third party provides Assignee and/or Assignor with a claim
or demand for which Assignor's indemnity hereunder applies, (B) the filing of
a suit against Assignee and/or Assignor with a claim or demand for which
Assignor's indemnity hereunder applies, and (C) the date Assignee makes a
written claim or demand against Assignor for which Assignor's indemnity
hereunder applies, and (y) Six Million Dollars ($6,000,000) (the lesser of (x)
and (y), the "Cap"). For purposes of clarification and by way of example only,
if a claim or demand is made on January 1, 2007 for which Assignor's indemnity
hereunder applies, then Assignor's total liability in connection therewith,
together with Assignor's liability for any other Indemnifiable Losses, will
not exceed the total maximum value of, and shall be recovered solely by offset
against, payments of the Assignor Royalty and of the Fee (as defined in the
Services Agreement), in each case to the extent to be paid following January
1, 2007, but in all events limited by the maximum $6 million amount set forth
in clause (y) of the definition of the Cap. Assignee hereby acknowledges that
Assignor does not make any representations or warranties relating to
Assignor's intellectual property rights except as specifically provided for
under this Agreement or the Services Agreement. Except for the remedies
specified in Paragraph 9 of the Services Agreement, the indemnification
provided for in this Paragraph 8(c) shall be the sole and exclusive remedy of
Assignee for any Indemnifiable Loss. In the event of any conflict between this
Paragraph 8(c) and any provision of any other agreement or instrument entered
into or delivered in connection with the transactions contemplated by this
Agreement, this Paragraph 8(c) shall govern.
(d) Assignee agrees to indemnify and hold Assignor
harmless as to all damages and costs, including attorneys' fees and costs
resulting from all claims by a third party (i) of material breach or alleged
breach by Assignee of Assignee's warranties, representations or
14
agreements hereunder, or (ii) for injury or property damage based on the use
of the Products and Services as produced, sold and furnished by Assignee or
Assignee's licensees.
(e) Assignee shall have the absolute right to take over in
any proceeding brought against ▇▇▇▇▇▇ ▇▇▇▇▇▇▇ PRODUCTIONS, INC. and/or ▇▇▇▇▇▇
▇▇▇▇▇▇▇ pursuant to this paragraph relating to the Marks and no settlement
will be entered into by ▇▇▇▇▇▇ ▇▇▇▇▇▇▇ PRODUCTIONS, INC. and/or ▇▇▇▇▇▇
▇▇▇▇▇▇▇ relating to the Marks without prior written approval of Assignee.
9. Services Agreement. Any material breach or default by
Assignor under the Services Agreement shall constitute a material breach or
default by Assignor under this Agreement and any event that would give
Assignee the right to suspend, extend, terminate or withhold any payments
under the Services Agreement shall similarly give Assignee the right to
suspend, extend, terminate or withhold any payments under this Agreement, as
the case may be.
10. Assignor License Proposals. If Assignor requests in
writing that Assignee license to a third party a ▇▇▇▇ or Marks for use in
connection with a particular product or service in an arrangement described
by Assignor in reasonable detail (including, without limitation, as to
proposed licensees, financial terms, products/services and distribution
channels), and Assignee fails to make a good faith effort to (x) exploit such
product or service itself or (y) grant a license to a third party for such
product or service, within eighteen (18) months following Assignee's receipt
of Assignor's written request therefor, then upon Assignor's written request
following such eighteen (18) month period, Assignee will license the rights
to such product or service to Assignor on a royalty-free basis on customary
industry terms to be negotiated in good faith, including, without limitation,
quality control provisions, for the sole purpose of enabling Assignor to
sublicense such rights to a third party and if the parties are unable to
agree upon such terms, the parties shall submit the matter on an expedited
basis for arbitration in accordance with the procedures described in
Paragraph 10(b) below; provided, however, that with respect to a requested
license to use the ▇▇▇▇ or Marks in connection with the operation of
restaurants, the foregoing period shall be nine (9) months in lieu of
eighteen (18) months, Paragraph 10(b) below will not apply and in no event
will any Marks be used in connection with the sale of alcohol. The terms and
conditions of any such sublicense by Assignor, other than the advance,
royalty
15
amount, and guarantee, if any, shall be consistent with customary industry
terms, and subject to Assignee's prior written approval, not to be
unreasonably withheld or delayed and Assignor shall be required to disclose to
Assignee all of the terms and conditions of any such proposed sublicense
(including, without limitation, the amounts of the advance, royalty and
guarantee, if any). Notwithstanding the foregoing, Assignee shall not be
required to comply with the foregoing procedures and/or grant Assignor a
license if:
(a) the requested license would conflict with an existing
or contemplated license at or about the time the request is made by Assignor;
(b) Assignee determines that the requested license (i)
would diminish the good will attaching to one or more of the Marks and/or
▇▇▇▇▇▇▇ Indicia, in whole or in part, (ii) is contrary to the best interests
of Assignee and/or (iii) is inconsistent with Assignee's business plan for
the exploitation of the Indicia Rights and/or the Marks; provided, however,
that if Assignor disagrees with Assignee's determination pursuant the
foregoing (i), (ii) or (iii), the parties shall submit the matter on an
expedited basis to the American Arbitration Association in New York, New York
in accordance with the rules promulgated by said association before a single
arbitrator that is an expert in trademark licensing, and judgment upon the
award rendered by the arbitrator may be entered in any court having
jurisdiction over this Agreement, in which event, the prevailing party shall
be entitled to recover any and all reasonable attorney's fees and other costs
incurred in connection with the arbitration; or
(c) if Assignee is willing to itself enter into the license
agreement with the requested licensee under the proposed terms.
11. Events of Reassignment. Upon any Reversion Trigger, the
Indicia Rights and Marks shall be automatically and without requirement of
any action by Assignor assigned to Assignor, subject to any then existing
licenses or other agreements made by Assignee with unaffiliated third
parties. Assignee shall execute any agreements or other instruments
reasonably requested by Assignor for the purpose of giving effect to such
assignment. The consideration recited in Paragraph 4 of this Agreement is
and shall be deemed to constitute adequate consideration for the covenants of
Assignee in this Paragraph 11. The occurrence of any of the following events
shall constitute a "Reversion Trigger" for purposes of this Agreement:
(a) Assignee makes any written admission of insolvency;
(b) Assignee files a voluntary petition in bankruptcy or a
voluntary petition seeking reorganization or to effect a plan or an
arrangement with or for the benefit of
16
Assignee's creditors, or an involuntary petition to such effect is filed and
not dismissed within ninety (90) days;
(c) Assignee applies for or consents to the appointment of a
receiver, trustee or conservator for any portion of Assignee's property, or
such appointment is made without Assignee's consent and not removed within
ninety (90) days;
(d) Occurrence of any event of any of the foregoing types
with respect to MM Companies.
12. Miscellaneous.
(a) Successors and Assigns; Assignment. The terms and
conditions of this Agreement will inure to the benefit of and be binding upon
the respective successors and permitted assigns of the parties. Neither this
Agreement nor any of the rights, interests or obligations hereunder shall be
assigned by either party hereto without the prior written consent of the other
party; provided, however, that (i) Assignee may assign this Agreement (A) in
connection with a merger or sale of all or a substantial portion of Assignee's
stock or assets, (B) to any entity (x) of which ▇▇▇▇▇▇ ▇▇▇▇▇▇▇ Ventures LLC or
MM Companies is the managing member, sole general partner or sole director, or
(y) which provides Assignor with the same management rights provided to
Assignor pursuant to Section 3 of the LLC Agreement, or (C) with the prior
written consent of ▇▇▇▇▇▇ ▇▇▇▇▇▇▇ PRODUCTIONS, INC., or ▇▇▇▇▇▇ ▇▇▇▇▇▇▇, or
their successors in interest; and (ii) Assignee may license any of its rights
hereunder and Assignee and its licensees may subcontract any portion of the
design, development, manufacture or marketing of Products and/or Services
hereunder without restriction. Any purported assignment by either party
contrary to the terms of this paragraph shall be null and void.
(b) Governing Law. This Agreement will be governed by and
construed and enforced under the internal laws of the State of New York,
without reference to principles of conflict of laws or choice of laws. Subject
to the limited instances in which the expedited arbitration provision of
Paragraph 10 hereof shall apply, any controversy or claim arising under, out
of, or in relation to this Agreement or any breach or alleged breach hereof,
shall be determined and settled by arbitration, pursuant to the rules then
obtaining of the American Arbitration Association ("AAA"), and the procedures
set forth herein. In the event of an inconsistency between the rules of the
AAA and the procedures set forth herein, the procedures set forth herein shall
control. The location of the arbitration shall be in New York, New York.
17
The arbitration shall be conducted by a panel of three (3) neutral arbitrators
who are independent and disinterested with respect to the parties, the
Agreement, and the outcome of the arbitration. The parties shall first attempt
to select mutually the three (3) arbitrators. If no agreement can be reached
by the parties within thirty (30) days of the filing of the demand for
arbitration, then each party shall select one (1) arbitrator and the two (2)
arbitrators thus selected shall then select the third arbitrator. If any
vacancy occurs in the board of arbitrators appointed hereunder by reason of
death, resignation, refusal to act, physical incapacity or otherwise, a new
arbitrator shall be appointed in the same manner and by the same party or
arbitrators, as applicable, by whom the previous incumbent was appointed. The
arbitrators shall be instructed and directed to assume case management
initiative and control over the arbitration process (including, without
limitation, scheduling of events, prehearing discovery and activities, and the
conduct of the hearing), in order to complete the arbitration as expeditiously
as is reasonably practical for obtaining a just resolution of the dispute.
Each party shall bear its own expenses in connection with the arbitration, and
shall share equally in the payment of the arbitrators' fees as and when billed
by the arbitrators, unless the arbitrators rule otherwise. Such determination
by the two (2) of the three (3) arbitrators shall be final, binding and
conclusive upon the parties hereto and shall be rendered in such form that it
may be judicially confirmed under the laws of the State of New York. The
parties hereto expressly consent to the exclusive jurisdiction of the courts
in New York County to enforce any award of the arbitrators.
(c) Survival. The representations, warranties and
indemnifications of Assignor and Assignee contained in this Agreement shall
survive.
(d) Counterparts. This Agreement may be executed in any
number of counterparts, each of which will be deemed an original, but all of
which together will constitute one and the same instrument. Signed facsimile
copies of this Agreement will legally bind the parties to the same extent as
original documents.
(e) Headings. The headings and captions used in this
Agreement are used for convenience only and are not to be considered in
construing or interpreting this Agreement. All references in this Agreement to
sections, paragraphs, exhibits and schedules will, unless otherwise provided,
refer to sections and paragraphs hereof and exhibits and schedules attached
hereto, all of which exhibits and schedules are incorporated herein by
reference.
(f) Notices. Any notices and other communications required
or permitted under this Agreement shall be in writing and shall be delivered
(a) personally by hand or by
18
courier, (b) mailed by United States first-class mail, postage prepaid or (c)
sent by facsimile directed (i) if to Assignor, at Assignor's address or
facsimile number set forth below, or at such address or facsimile number as
Assignor may designate by giving at least ten (10) days' advance written
notice to Assignee or (ii) if to Assignee, to its address or facsimile number
set forth below, or at such other address or facsimile number as Assignee may
designate by giving at least ten (10) days' advance written notice to
Assignor. All such notices and other communications shall be deemed given upon
(x) receipt or refusal of receipt, if delivered personally, (y) three (3) days
after being placed in the mail, if mailed, or (z) confirmation of facsimile
transfer, if faxed.
The address of Assignor for the purpose of this
Paragraph 12(f) is as follows:
▇▇▇▇▇▇ ▇▇▇▇▇▇▇ Productions, Inc./▇▇▇▇▇▇ ▇▇▇▇▇▇▇
[**ADDRESS**]
[**FAX**]
with a copy to:
▇▇▇▇▇▇▇▇▇▇▇ & ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇ LLP
▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇
Attention: ▇▇▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇, Esq.
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
The address of Assignee for the purpose of this
Paragraph 12(f) is as follows:
▇▇▇▇▇▇ ▇▇▇▇▇▇▇ Ventures LLC
▇▇▇ ▇. ▇▇▇▇▇▇-▇▇▇▇▇ ▇▇▇▇, ▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇-▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
with copies to:
▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇▇ & ▇▇▇▇▇▇▇ LLP
▇▇▇▇ ▇▇▇▇▇▇ ▇▇ ▇▇▇ ▇▇▇▇▇▇▇▇
▇▇▇ ▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇ ▇. ▇▇▇▇▇, Esq.
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
and
19
Franklin, ▇▇▇▇▇▇▇, ▇▇▇▇▇▇ & ▇▇▇▇▇▇▇▇, P.C.
▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇ ▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇, Esq.
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
(g) Force Majeure. It is understood and agreed that in
the event an act of government, war, fire, flood, an Act of God or labor
trouble, or any other similar or dissimilar reasons beyond the control of
Assignee prevents the performance by Assignee of the provisions of this
Agreement, then such nonperformance by Assignee shall not be considered a
breach of this Agreement and such nonperformance shall be excused while the
conditions described herein prevail.
(h) Amendments and Waivers. This Agreement may be amended
and the observance of any term of this Agreement may be waived only with the
written consent of Assignor and Assignee. Any amendment effected in
accordance with this Paragraph 12(h) will be binding upon Assignor, Assignee
and their respective successors and assigns.
(i) Severability. If any provision of this Agreement is
held to be unenforceable under applicable law, such provision will be
excluded from this Agreement and the balance of the Agreement will be
interpreted as if such provision were so excluded and will be enforceable in
accordance with its terms.
(j) Entire Agreement. This Agreement, together with the
Subscription Agreement and the Services Agreement, and all exhibits and
schedules hereto and thereto, constitutes the entire agreement and
understanding of the parties with respect to the subject matter hereof and
supersedes any and all prior negotiations, correspondence, agreements,
understandings, duties or obligations between the parties with respect to the
subject matter hereof.
(k) Further Assurances. Assignor further agrees, upon
Assignee's request, to do all acts necessary to carry out the terms of this
Agreement and to execute, and, where necessary, to cause the family members
of ▇▇▇▇▇▇ ▇▇▇▇▇▇▇ to execute, any and all documents in connection therewith.
Without limitation of the foregoing, Assignee agrees that simultaneously with
the execution hereof and at such time(s) in the future as may be requested by
Assignee, ▇▇▇▇▇▇ ▇▇▇▇▇▇▇ will execute a trademark registration authorization
confirmation letter, a form of which is attached hereto as Exhibit J. In the
event that Assignor fails to execute any document or instrument within
fifteen (15) days of Assignee's request therefor, Assignor hereby irrevocably
appoints Assignee his and its attorney in fact with the
20
right, but not the obligation, to execute such documents or instruments in the
names of and on behalf of such parties, but for Assignee's benefit, which
appointment shall be coupled with an interest and irrevocable.
(l) Meaning of Include and Including. Whenever in this
Agreement the word "include" or "including" is used, it shall be deemed to
mean "include, without limitation" or "including, without limitation," as the
case may be, and the language following "include" or "including" shall not be
deemed to set forth an exhaustive list.
(m) Fees, Costs and Expenses. Except as otherwise
provided for in this Agreement and in Section 4(l) of the Subscription
Agreement, all fees, costs and expenses (including attorneys' fees and
expenses) incurred by any party hereto in connection with the preparation,
negotiation and execution of this Agreement and the exhibits and schedules
hereto and the consummation of the transactions contemplated hereby and
thereby (including the costs associated with any filings with, or compliance
with any of the requirements of any governmental authorities), shall be the
sole and exclusive responsibility of such party.
(n) Confidentiality. Assignor agrees that Assignor will
not authorize or release advertising or publicity materials, nor will
Assignor give interviews which make reference to the details of this
Agreement without Assignee's prior written approval, although ▇▇▇▇▇▇ ▇▇▇▇▇▇▇
may, during interviews, respond, discuss and comment in a favorable and
positive manner that Assignor is associated with Assignee and the licensees
hereunder and endorses and uses their products and services. Without
limitation of the foregoing, Assignor agrees to treat confidentially the
financial terms of the Agreement and not to divulge the business terms and
conditions of the Agreement without the prior written consent of Assignee.
(o) Remedies. It is expressly understood and agreed that
the rights and privileges granted to Assignee hereunder are special, unique,
extraordinary and impossible of replacement, which gives them a peculiar
value, the loss of which could not be reasonably or adequately compensated in
damages in an action of law, and that Assignor's failure or refusal to
perform any obligations hereunder or to comply with the provisions hereof
might cause Assignee to suffer irreparable loss and damage. Accordingly,
Assignor agrees that should Assignor fail or refuse to perform such
obligations or comply with such restrictions, Assignee shall be entitled as a
matter of right to ex-parte injunctive or other equitable relief against
Assignor to prevent the continuance of such failure or refusal or to prevent
Assignor from performing services for, or granting rights to others, or
taking actions described in violation of this Agreement. Neither the
21
right to resort to injunctive or other equitable relief, nor the exercise of
such right, shall constitute a waiver of any other or additional rights or
remedies or pursuant to the terms of this Agreement which Assignee may have
against Assignor as a result of such failure or refusal. All rights, licenses,
privileges and property herein conveyed to Assignee are irrevocable and not
subject to rescission, restraint or injunction under any and all
circumstances, except if Assignee violates the provision in Paragraph 7 above
which provides that Assignee shall not use, and shall not authorize licensees
to use, the Marks and/or ▇▇▇▇▇▇▇ Indicia in connection with any religious
products (e.g., crucifixes, Stars of ▇▇▇▇▇) or any product containing alcohol,
tobacco, firearms, political statements or sexual content. Except as
specifically provided to the contrary in the preceding sentence, Assignor's
rights and remedies shall be limited to the right, if any, to obtain damages
at law. Assignee may exploit, or forbear from exploiting, the rights granted
herein in whole or in part, in Assignee's reasonable commercial judgment. If
Assignee shall at any time breach any of its material obligations hereunder
including by failing to make any payment or render any statement required
under this Agreement when due, Assignor shall not commence any action or
proceeding until Assignee has failed to remedy such default within thirty (30)
days after notice thereof by Assignor.
(p) Drafting History. In resolving any dispute or
construing any provision in this Agreement, there shall be no presumption
made or inference drawn (i) because the attorneys for one of the parties
drafted this Agreement, (ii) because of the drafting history of this
Agreement, or (iii) because of the inclusion of a provision not contained in
a prior draft or the deletion of a provision contained in a prior draft.
(q) No Joint Venture. Nothing herein shall create or be
deemed to create any agency, partnership or joint venture relation between
the parties and neither party has the power to obligate or bind the other in
any manner whatsoever.
22
IN WITNESS WHEREOF, the parties have caused this Agreement to be
signed as of the day and year first written above.
▇▇▇▇▇▇ ▇▇▇▇▇▇▇ VENTURES LLC
By:__________________________
Name:
Title:
▇▇▇▇▇▇ ▇▇▇▇▇▇▇ PRODUCTIONS, INC.
By:__________________________
Name:
Title:
____________________________
▇▇▇▇▇▇ ▇▇▇▇▇▇▇
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Exhibit C
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[Form of Short Form Assignment]
TRADEMARK ASSIGNMENT
--------------------
WHEREAS [Name of assignor],of [address], has adopted, used and is using
one or more marks [which are registered] [for which registration applications
are pending] [in the United States Patent and Trademark Office], as described
on Schedule A attached hereto; and
WHEREAS ▇▇▇▇▇▇ ▇▇▇▇▇▇▇ Ventures LLC, of ▇▇▇ ▇. ▇▇▇▇▇▇-▇▇▇▇▇ ▇▇▇▇, ▇▇▇
▇▇▇▇▇, ▇▇▇▇▇▇-▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, is desirous of acquiring said marks
and the [registrations thereof] [applications therefor];
NOW, THEREFORE, for good and valuable consideration, receipt of which
is hereby acknowledged, said [Name of assignor] does hereby assign unto the
said ▇▇▇▇▇▇ ▇▇▇▇▇▇▇ Ventures LLC all right, title and interest in and to the
said marks, together with the good will of the business symbolized by the
marks, and the above identified [registrations thereof] [applications
therefor].
_____________________________
▇▇▇▇▇▇ ▇▇▇▇▇▇▇
STATE OF )
) s.s.:
COUNTY OF )
On this ____________ day of ______________, 2005, before me appeared
[Name of Assignor], the person who signed this instrument, who acknowledged
that he signed it as a free act on his own behalf.
____________________________
Notary Public
24