EXHIBIT 4.4
LICENSE
THIS AGREEMENT, is made at North Miami, Florida, as of the 1ST day of
December, 1996, by and between CIGARETTE RACING TEAM, INC., a corporation
organized under the laws of the State of Florida, with offices at ▇▇▇▇ ▇.▇.
▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇ ("OWNER"), and OFFSHORE RACING, INC., a
foreign corporation ("USER"), (hereinafter collectively referred to as "The
Parties").
RECITALS
USER and OWNER (hereinafter collectively called "The Parties"), have
read this Agreement (hereinafter called "Agreement") and understand and accept
the terms, conditions, and covenants contained in this Agreement as being
reasonably necessary to maintain OWNER's standards and business practices as it
relates to the retaining of entities utilizing the OWNER's Marks (hereinafter
called "Marks").
WHEREAS, OWNER is the OWNER of to the best of its knowledge and belief,
of the United States, trademarks, service marks, and business names, and
registrations for such trademarks, service marks and business names ("Marks"),
including those Marks listed on Schedule A;
WHEREAS, OWNER is in the business of manufacturing, selling and/or
distributing water craft bearing such Marks, but is not regularly in the
business of licensing or sublicensing its intellectual property or merchandising
outside of the business of water craft; and
WHEREAS, USER is desirous of entering into the business of obtaining
rights in intellectual property for use in connection with products and
services, and sublicensing such intellectual property rights to others,
including merchandising such products and services, and desires to obtain rights
in OWNER's Marks for these and other purposes;
USER has investigated and become familiar with OWNER and desires upon
the terms and conditions set forth herein to enter into this Agreement. USER
acknowledges that it is essential to the maintenance of the high standards of
OWNER, that USER maintain and adhere to the standards, procedures and policies
described herein.
THEREFORE, The Parties, intending to be legally bound, for and in
consideration of the mutual covenants hereinafter following, do mutually
covenant and agree:
NOW THEREFORE, the parties agree as follows:
1. GRANT OF LICENSE
OWNER grants to USER an exclusive, world-wide right and
license to use the OWNER's current and after acquired Marks in
connection with all goods and services other than the use of said Marks
on any form of water craft. It is understood and agreed that USER shall
have no right of sublicense hereunder except as provided in this
Section 1 hereto. USER may sublicense its rights hereunder, provided
such sublicensee will restrict it to the
uses permitted under this Agreement, and further provided that said
sublicense shall terminate at any time that this License Agreement
hereunder shall terminate, and that said sublicensee agrees to conform
with the terms and obligations of the licensee as provided in this
Agreement.
Any assignment, license or sublicense hereunder will, by its terms,
bind such assignee to the obligations of the USER hereunder, and refer
to or incorporate by reference this Agreement, and will provide that
the OWNER will be deemed a third party beneficiary of such assignment.
2. QUALITY MAINTENANCE
USER agrees to notify OWNER by facsimile, first class mail or
overnight mail of each product or service for which USER, or a
sublicensee of USER, intends to use OWNER's Marks. Upon reasonable
written request of OWNER, which written request shall be made no more
than three days after receipt of such notification in OWNER's offices,
USER agrees to submit to OWNER, specifications or samples of products
or services for which USER, or a sublicensee of USER, intends to use
OWNER's Marks. If OWNER disapproves of any product or service submitted
for review under this Section 2, OWNER shall notify USER of OWNER's
disapproval in writing within ten (10) days of receipt, in OWNER's
offices, of such specifications or samples. Such written disapproval
shall set forth in detail:
(1) Each disapproved product or service,
(2) Each defect of each disapproved product or service,
and
(3) Non-binding, commercially reasonable suggestions for
correcting each such defect.
OWNER shall use good faith and fair dealing in approving or
disapproving of any product or service submitted for review. USER
acknowledges that it is essential to the maintenance of the high
standards of OWNER that USER shall maintain and adhere to the
standards, procedures and policies described herein. If the OWNER feels
that the proposed use of the product is inconsistent with the standards
which the OWNER has established for the use of these products, then the
OWNER shall have the right to reject USER's right to use said product.
OWNER agrees that approval of all products submitted shall not be
unreasonably withheld. Once OWNER is given approval of specific
products and services and has notified USER of such approval, no
further notice need to be given to OWNER from USER, provided the
products or services are not substantially changed.
In addition to providing the information hereunder, the USER
shall also provide copies of all license agreements executed between
the USER and any sublicensee, so that the OWNER can confirm said
license agreements conform with the terms of this Agreement.
Once USER has given approval of specific products and
services, and notified OWNER of such approval, no further notice need
not be given to OWNER from USER provided the products or services are
not substantially changed.
3. INFRINGEMENT PROCEEDINGS
Upon notice by USER of a third party infringement of OWNER's
Marks, OWNER shall take reasonable efforts to protect the Marks against
any third party infringer at the expense of OWNER. USER may if it
elects to seek injunctive relief against the alleged third party in the
name of OWNER. OWNER shall notify USER of any enforcement of OWNER's
Marks and USER shall have the right to participate, and consult with
OWNER, in any enforcement action. Notwithstanding this Section 3, USER
retains all rights available to USER under law to ▇▇▇ for infringement
and unfair competition. Not withstanding the foregoing, USER shall take
reasonable efforts during the term of this Agreement to protect the
Marks for any other use other than for boats.
4. TERM
A. Initial Term
The initial term of this Agreement shall be for a period of
120 months, commencing on the date first mentioned above,
subject to the terms and conditions set forth herein.
B. Renewal Option
USER shall have the option to renew this Agreement for two (2)
additional periods of sixty (60) months each. In all cases,
renewal shall require that: (1) USER not be in violation of
this Agreement or any other Agreement between OWNER and USER;
and (2) USER give written notice of their election to renew
not less than six (6) months prior to the end of the term then
in effect. If any rules or laws modifies, alters or amends all
or part of the renewal provisions, then such provisions shall
be modified, altered or amended accordingly, so as to be in
full compliance with such rules and laws.
C. Subsequent Renewal Options
Subsequent to the periods as mentioned in Paragraph 4B hereto,
USER shall have the option to renew this Agreement for two (2)
additional periods of sixty (60) months each, if (1) USER not
be in violation of this Agreement or any other Agreement
between OWNER and USER; (2) USER give written notice of their
election to renew not less than six (6) months prior to the
end of the term then in effect; and (3) during the last term
then in effect USER shall have paid to OWNER pursuant to
Paragraph 5(A) and (B) a minimum of one hundred thousand
($100,000) dollars.
This Agreement shall continue in force and effect for as
provided for in Section 4 herein and subject to all other terms and
conditions set forth in this Agreement.
5. ROYALTY
A. In the event USER sublicenses rights to the ▇▇▇▇, USER shall
pay to OWNER on a quarterly basis (the "Period"), ten (10%)
percent of the gross royalties or other revenues collected by
USER during such Period. Said payment shall be made no later
than 30 days after the end of Period, at the offices of OWNER.
B. In the event, USER on its own behalf, manufactures, sells or
distributes products or services using the OWNER's ▇▇▇▇, USER
shall pay to OWNER on a quarterly basis (the "Period"), two
and one-half (2- 1/2%) percent of the gross revenues collected
by USER for each product or service for which USER, uses
OWNER's ▇▇▇▇. Said payment shall be made no later than 30 days
after the end of the then applicable Period, at the offices of
OWNER. Section 5(B) hereof when applied, shall be in place of
and not in addition to section 5(A) hereof.
C. During the term hereof, USER shall deliver to OWNER a Report
(the "Report") of all monies received by USER during each
Period, no later than 30 days of the end of the then
applicable Period. The Report shall fully disclose the amount
of income, sales, royalties, revenues or other income
collected by use of the OWNER's ▇▇▇▇ for the then applicable
Period.
D. As further inducement and a condition hereof, to induce OWNER
into entering into this Agreement, USER shall pay to OWNER a
one time fee of two hundred thousand ($200,000) dollars on or
before the signing of this Agreement.
E. OWNER unconditionally acknowledges by signing this Agreement
and initialing immediately hereunder that USER has complied
with the terms of Section 5(D) hereof and that OWNER has
received the one time fee as described therein.
---------------------------------------
Initials
USER shall not be obliged to pay any further minimum royalties
or monies to OWNER except as explicitly required in this Section 5.
6. DEFAULT
In the event either user is in default in the performance of
any of the terms of this Agreement, including, but not limited to, the
acts set forth hereinafter, defaultee, in addition to all remedies that
defaultee has available to it at law or in equity, may declare this
Agreement automatically terminated, unless such default is cured within
fifteen (15) days after written notice thereof (as provided for herein)
from defaultee to defaulter, unless the default is of such a nature
that more than fifteen (15) days are reasonably required to effect a
cure.
In such event, defaulter shall commence to cure the default within said
fifteen (15) day period, if any, designated by defaultee as the
allowable additional time within which the cure must be accomplished.
7. NO JOINT VENTURE
Performance by the parties under this Agreement shall be as
licensor-licensee. No product or service developed pursuant to the
terms of this Agreement, and no provision contained herein, shall be
construed to constitute a joint venture or partnership between the
parties, nor shall either party act as the agent for each other for any
purpose.
8. NOTICES
All notices, requests, demands, payments, consents and other
communications hereunder shall be transmitted in writing and shall be
deemed to have been duly given when sent by registered certified United
States mail, postage prepaid, or other form of delivery which provides
for a receipt, and sender is in receipt of a delivery notice, signed by
recipient, if addressed as follows:
OWNER: CIGARETTE RACING TEAM, INC.
▇▇▇▇ ▇.▇. ▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇
USER: OFFSHORE RACING, INC.
▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇▇
▇▇. ▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇
▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇
A. Address Change
Either of The Parties may change his address by giving notice
of such change of address to the other, but must comply with
all other terms of this Agreement.
B. Notice by Telegram or Facsimile.
In the case of any notice required to be given by The Parties
to each other, telegraphic notice or facsimile transmission,
shall not be sufficient notice hereunder.
9. ADDITIONAL ACTIONS
The Parties agree to execute such other documents and perform
such further acts as may be necessary or desirable to carry out the
purposes of this Agreement.
10. HEIRS, SUCCESSORS, AND ASSIGNS
This Agreement shall be binding and inure to the benefit of
the parties, their heirs, successors, and assigns.
11. ENTIRE AGREEMENT
The undersigned acknowledges that they, and each of them, have
read this agreement in full; are cognizant of each and every one of the
terms and provisions hereof and are agreeable thereto; that no
representations or agreements, whether oral or written, except as
hereinafter set forth, have been made or relied upon; that any and all
prior agreements or understandings between the parties, relating to the
subject matter of this Agreement, whether oral or written are
automatically canceled by the execution of this agreement; that the
signatures affixed hereto were affixed as the wholly voluntary act of
the persons who signed this agreement; and that the terms and
provisions of this agreement cannot be changed or modified unless in
writing signed by an authorized corporate officer, director or agent of
USER and OWNER. No modification or amendment of any provision of this
Agreement shall be construed as a waiver, breach or cancellation of any
other provision.
This Agreement constitutes the sole agreement between the
OWNER and USER hereto pertaining to the subject matter described
herein, and effective as of the date of this Agreement.
12. WAIVER OF RIGHTS
Failure by either of The Parties to enforce any rights under
this Agreement shall not be construed as the waiver of such rights. Any
waiver, including waiver of default, in any one instance, shall not
constitute a continuing waiver or a waiver in any other instance. Any
acceptance of money or other performance by either of The Parties,
shall not constitute a waiver of any default, except as to the payment
of the particular payment or performance so received.
13. VALIDITY OF PARTS
Any invalidity of any portion of this Agreement shall not
affect the validity of the remaining portion, and unless substantial
performance of this Agreement is frustrated by any such invalidity,
this Agreement shall continue in effect.
14. HEADINGS
The headings used herein are for purposes of convenience only
and shall not be used in interpreting the provisions hereof. As used
herein, the male gender shall include the female and neuter genders;
the singular shall include the plural, the plural, the singular and
termination shall include expiration.
15. EXECUTION BY THE PARTIES
This Agreement shall not be binding on either of The Parties,
unless and until it shall have been accepted and signed by authorized
officers or directors of USER and OWNER.
16. ATTORNEY'S FEES
If either of The Parties hereto commences an action against
the other, arising out of or in connection with this Agreement, the
prevailing of The Parties shall be entitled to have and recover from
the other Party its reasonable attorneys' fees and costs at all trial
and appellate levels.
17. ASSIGNMENT
Either party may delegate any obligation under this Agreement
or assign this Agreement or any interest or right hereunder without the
prior written consent of the other and any such assignment or transfer
may not be null and voided.
18. GOVERNING LAW
This Agreement shall be governed by and construed in
accordance with the laws of the State of Florida. Any provision of this
Agreement which may be determined by a court of competent jurisdiction
to be prohibited or nonenforceable in any jurisdiction shall, as to
that jurisdiction, be effective to the extent of the prohibition or
nonenforceability, without invalidating the remaining provisions of
this Agreement.
19. NO PROJECTIONS OR REPRESENTATIONS
The Parties acknowledge and represent that no projections or
representations regarding the amount of income, sale, or profits they
can expect to earn or receive by virtue of this Agreement, has been
received from either of The Parties. The Parties acknowledge that no
representations or warranties inconsistent with this Agreement were
made to induce each other to execute this Agreement.
The Parties acknowledge that neither of the Parties nor any
other person can guarantee the success of the business. The
undersigned, by signing this Agreement, acknowledge that they have read
same and that it has been requested to state in writing hereafter any
terms, claims, covenants, promises, or representations, including
representations as to any income, sales, or profit projections, that
were made by either of the parties or its representatives contrary to
the provisions of this Agreement, including the persons making same,
the location, and date thereof.
20. ACKNOWLEDGMENTS
USER and OWNER have all requisite authority to enter into this
Agreement, whether arising under applicable Federal or State laws,
rules or regulations, to which either of The Parties may be subject to.
IN WITNESS WHEREOF, The Parties hereto have caused this Agreement to be
duly executed as of the day and year first above written.
CIGARETTE RACING TEAM, INC. OFFSHORE RACING, INC.
By: ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇ By: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇
Its: Chairman of the Board Its: Director