LICENSE AGREEMENT
This Agreement is made and effective on February 7, 1997, by and
between Success Holdings Co., LLC, a limited liability company of the State of
Illinois, having a place of business at 733 Third Avenue, New York, New York
10017 (hereinafter "Success"), and Fortune 21, Inc., a corporation of the State
of Florida, having a place of business at 1200 W.S.R. 434, Ste. 112. 112,
Longwood, Florida 32750 (hereinafter "Fortune 21").
A. Success is the owner of the registered trademark SUCCESS for
magazines, Reg. Nos. 1,221,662 and 1,334,275, and Success is
the owner of the trademark SUCCESS for conducting seminars,
conferences and training courses, relating to entrepreneurship
and associated logos, trade dress and other related rights
(hereinafter "Licensed Trademark").
B. Fortune 21 desires to obtain, and Success is willing to grant,
the sole and exclusive right to use the mark SUCCESS in
connection with providing educational, training, coaching and
consulting services to individuals and small businesses who
want to start or expand a small business, buy, sell or invest
in real estate, or create or build wealth, and in connection
therewith, conduct seminars, conferences and workshops, sell
business opportunities and sell collateral materials such as
audio and videotapes and software (hereinafter "Licensed
Products:) in the United States (hereinafter "Territory").
NOW, THEREFORE, in consideration of the receipt of shares of common
stock of the parent of Fortune 21 and other mutual promises and undertakings set
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forth herein, and intending to be legally bound hereby, the parties agree as
follows:
1. LICENSE
-------
A. Subject to the terms and conditions of this
Agreement, Success hereby grants to Fortune
21 the sole and exclusive right to use the
Licensed Trademark on and in connection with
the Licensed Products in the Territory. All
use of the Licensed Trademark by Fortune 21
shall inure to the benefit of Success.
B. It is expressly understood that Fortune 21
is not permitted hereunder (i) to use the
designation FORTUNE alone, that is, without
the numeral 21, in association with the
Licensed Trademark, or (ii) to use the
Licensed Trademark without also using
another mark of Fortune 21, or (iii) to use
the Licensed Trademark in combination with
any trademark or designation of Fortune 21
so that in combination they appear to be a
unitary trademark or designation. Such
restriction, however, does not preclude
Fortune 21, subject to the prior approval of
Success, from using the Licensed Trademark
in juxtaposition with such trademark or
designation of Fortune 21. By way of example
but not by way of limitation, the use of
FORTUNE 21(sm) SUCCESS(sm) is not permitted
whereas the use of
FORTUNE 21(sm) ------------------------
FORTUNE 21 SUCCESS(sm)
------------------------
____________ or
SUCCESS(sm)
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would be permitted hereunder.
C. All rights not expressly granted to Fortune
21 herein shall be reserved to Success,
except as otherwise provided in other
written agreements between the parties.
D. Success also hereby grants to Fortune 21 a
non-exclusive right to use the Licensed
Trademark on and in connection with the
Licensed Products in other countries,
subject to any other rights granted to
others previously or in the future.
2. APPROVAL/QUALITY CONTROL
------------------------
Fortune 21 agrees that the nature, quality, style, appearance and
performance of the Licensed Products and the promotional, advertising and
instructional materials therefor, as well as any and all trademarks, trade
names, designs and logos (whether included in the Licensed Trademark or not)
used in connection with the Licensed Products, shall be subject to Success'
approval. Such approval shall be in Success' sole discretion. It shall be deemed
that all presently used materials and programs are approved. Fortune 21 shall
not render new services or provide or sell any materially different materials
which have not been approved by Success or which are, at any time, disapproved
by Success in accordance with provisions hereinbelow. Before rendering any
materially new services or providing or selling any materially different
materials hereunder, Fortune 21 shall submit to Success, for its examination and
approval, the curriculum or curricula for the services and samples of any
instructional materials or tapes relating thereto together with any and all
written materials to be used in connection with promoting or advertising of the
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services and related materials. Success shall notify Fortune 21 of its approval
or disapproval within fifteen (15) business days of its receipt of such written
materials. If Fortune 21 is not notified within that time, approval by Success
of the samples will be assumed. At the reasonable request of Success, Fortune 21
shall from time to time submit current written materials and tapes in order that
Success may assure itself of the maintenance of quality standards hereunder.
Approval by Success of any written materials and tapes shall not be construed to
mean that Success has determined that such written materials and tapes comply
with applicable laws or regulations, such determinations being the
responsibility of Fortune 21. Fortune 21 agrees the services rendered hereunder
shall not differ materially from curriculum or curricula approved by Success.
3. TERM
----
The term of this License Agreement will commence on the date of the
signing of this Agreement and shall continue for ten (10) years. The License
Agreement may be renewed for a second ten (10) year term, provided that Fortune
21 is in good standing, has substantially complied with its business plan and
its revenues are substantially consistent with its current business plan, and
the Licensed Products are of good and acceptable quality.
4. TRADEMARKS
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A. Fortune 21 shall cause to be affixed to or printed
upon each printed material or tape for use in
connection with the services, the appropriate
trademark notice, legibly printed which shall be
designated in advance by Success. Fortune 21 agrees
to deliver to Success free of cost samples of such
printed materials or tapes for approval hereunder,
which will not be unreasonably withheld. Success
shall notify Fortune 21 of its approval or
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disapproval within fifteen (15) business days of its
receipt of such material or tape. If Fortune 21 is
not notified within that time, approval by Success of
the material or tape will be assumed.
B. Fortune 21 agrees that it will not, during the terms
of this Agreement or thereafter, file any application
for trademark registration or otherwise obtain or
attempt to obtain ownership of any name, design,
logo, or trademark or trade name within the Territory
or in any other country of the world which includes
or is confusingly similar to the Licensed Trademark,
or which is intended to make reference to the
Licensed Trademark.
C. Fortune 21 agrees that it will not, directly or
indirectly challenge or contest Success' ownership of
and rights in the Licensed Trademark, whether for the
Licensed Products or otherwise, or the validity of
this Agreement.
D. All use of the Licensed Trademark by Fortune 21 shall
inure to the benefit of Success, and Fortune 21 shall
acquire no rights therein adverse to Success. Fortune
21 shall, at any time when requested by Success to do
so, whether during the term of this Agreement or
thereafter, at its own expense, execute such
documents or applications as requested by Success in
order to confirm Success' ownership of all such
rights or to maintain the validity of the Licensed
Trademark or obtain or maintain registrations thereof
for the class or classes applicable to the Licensed
Products herein.
E. Fortune 21 shall notify Success in writing of any
infringement or limitations by others of the Licensed
Trademarks on services or articles similar to the
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Licensed Products if and when such become known to
Fortune 21. Success shall have the sole right to
determine whether or not any action shall be taken on
account of such infringements or limitations without
the prior written consent of Success to do so.
F. If, at the request of Fortune 21, Success brings any
legal action(s) against third parties for
infringement or imitation of the Licensed Trademark
relating to the Licensed Products, then Fortune 21
shall bear the cost of such litigation and such legal
action(s) shall be jointly controlled.
G. Fortune 21, at its own expense, will fully cooperate
with Success, or its designee or representative in
the prosecution of any trademark application that
success may determine to file, in connection with
implementing the objectives of this Agreement.
H. Success will take necessary and appropriate actions
to protect the Licensed Trademark and to maintain any
registrations at its expense.
5. DEFAULT
-------
A. Either party may terminate this Agreement on thirty
(30) days written notice to the other in the event of
any material breach, if the defaulting party has not
cured such breach or complied with such obligations
within such notice period. Termination of this
Agreement under the provisions of this paragraph
shall be without prejudice to any rights either party
may have against the other. A material breach shall
include, but is not limited to the following:
(i) If Fortune 21 uses the Licensed Trademark in
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a manner materially inconsistent with this
License Agreement or its approved business
plan;
(ii) If the activities of Fortune 21 bring
Success or its Licensed Trademark into
disrepute or otherwise adversely affect the
distinctive nature of the Licensed Trademark
or cause confusion in the marketplace or
cause dilution or destructive competition;
or
(iii) If Fortune 21 consistently fails to maintain
quality services and products and quality
customer treatment.
In the event that such breach cannot be cured, Fortune 21 will use its
best efforts to mitigate the breach and will cease from any repetition in the
future.
B. Success shall have the right to terminate this
Agreement upon ten (10) days prior notice without the
right to cure upon the occurrence of any of the
following events:
(i) If Fortune 21 shall be adjudged to be
insolvent or shall make an assignment for
the benefit of creditors or become involved
in receivership, bankruptcy or other
insolvency or debtor relief proceedings, or
any similar proceedings, or in proceedings,
voluntary or force whereby it is limited in
the free and unrestrained exercise of its
own judgment as to the carrying out of the
terms of this Agreement;
(ii) If Fortune 21 shall cease to do business; or
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(iii) If Fortune 21 shall attempt to assign any of
its rights under this License Agreement
without prior approval.
C. Failure to terminate this Agreement pursuant to this
paragraph 6 shall not affect or constitute a waiver
of any remedies the non-defaulting party would have
been entitled to demand in the absence of this
section, whether by way of damages, termination or
otherwise. Termination of this Agreement shall be
without prejudice to the rights and liabilities of
either party to the other in respect to any matter
arising under this Agreement.
6. TERMINATION
-----------
From and after the termination of this Agreement all of the
rights of Fortune 21 to the use of the Licensed Trademark
shall cease absolutely, and Fortune 21 shall not thereafter
advertise, promote or render any service or sell any product
whatsoever in connection with the Licensed Trademark. It is
further agreed that following expiration of the Agreement,
Fortune 21 shall not advertise, promote or render any service
or sell any product whatsoever in connection with the use of
any name, figure, design, logo, trademark or trade name
similar to or suggestive of the Licensed Trademark except as
otherwise licensed by Success to Fortune 21.
7. WAIVER
------
The failure of either party at any time or times to demand strict
performance by the other of any of the terms, covenants or conditions set forth
herein shall not be construed as a continuing waiver or relinquishment thereof
and each may at any time demand strict and complete performance by the other of
said terms, covenants and conditions.
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8. ASSIGNMENT
----------
This Agreement shall bind and inure to the benefit of Success,
and the successors and assigns of Success. The rights granted Fortune 21
hereunder shall be exclusive to it and shall not, without the prior written
consent of Success, be transferred or assigned to any other, except that the
rights may be transferred or assigned to another subsidiary of Fortune Financial
Systems, Inc. In the event of the merger or consolidation of Fortune 21 with any
other entity which materially adversely affects the rights granted or reserved
by this Agreement, Success shall have the right to terminate this Agreement by
notifying Fortune 21 in writing on or before sixty (60) days after Success has
received notice of such merger or consolidation.
9. SIGNIFICANCE OF HEADINGS
------------------------
Section headings contained herein are solely for the purpose of aiding
in speedy location of subject matter and are not in any sense to be given weight
in the construction of this Agreement. Accordingly, in case of any question with
respect to the construction of this Agreement, it is to be construed as though
such section headings had been omitted.
10. ENTIRE AGREEMENT
----------------
This writing constitutes the entire Agreement between the parties
relating to the subject matter and may not be changed or modified except by a
writing signed by the party or parties to be charge thereby.
11. GOVERNING LAW
-------------
This Agreement shall be governed by and construed according to the law
of the State of New York. If and to the extent that any provisions of this
Agreement are prohibited or unenforceable under any applicable law, such
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provisions shall be ineffective to the extent of such prohibition or
unenforceability without invalidating the remaining provisions hereof or
affecting the validity or enforceability of any other provision hereof.
12. NOTICE
------
All written notices required or provided for in this Agreement shall be
in writing and shall be given by Certified Mail, prepaid and properly addressed
to the last know address of the party to be served herewith, with a copy by
facsimile, and shall be deemed to have been given on the date upon which said
notice was received. Any notices sent to Success shall be addressed to:
Success Holdings Co., LLC
733 Third Avenue
New York, New York 10017
Attn: Mr. Peter Morris
Any notices sent to Fortune 21 shall be addressed to:
Fortune 2, Inc.
1200 W.S.R. 434, Ste. 112
Longwood, Florida 32750
Attn: Mr. James Byrd
13. ARBITRATION
-----------
Any dispute or controversy arising under on in connection with
this Agreement and related to the license or the license agreement shall be
settled by arbitration to be held in the City of New York except that either
party may seek preliminary injunctive relief from the United States District
Court or state court in that City. Upon the occurrence of any such dispute or
controversy, (i) Success shall select one Arbitrator; (ii) Fortune 21 shall
select one Arbitrator; and (iii) the third Arbitrator shall be selected by the
other two Arbitrators. Each Arbitrator shall be an individual who has no prior
professional or personal relationship with any party and each party shall
furnish to the Arbitrators written notice (each, a "Party Determination") of
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such party's desired outcome or resolution for such dispute or controversy. Upon
receipt of a Party Determination, the Arbitrators shall notify the other parties
in writing (a "Determination Notice") that it has received such Party
Determination and the Arbitrators shall not disclose the contents thereof until
the earlier of the Arbitrators receipt of Party Determinations from all parties
and twenty (20) days after delivery of the Determination Notice. If the other
parties fail to deliver their Party Determinations within twenty (20) days after
delivery of the Determination Notice, the first Party Determinations shall be
the resolution of the dispute or controversy. If more than one Party
Determination is delivered to the Arbitrators within twenty (20) days after the
delivery of the Determination Notice, the Arbitrators shall determine the
resolution of the dispute or controversy, provided, however, that in determining
the resolution of the dispute or controversy, the Arbitrators discretion shall
be limited to selecting one of the proposed resolutions set forth in the Party
Determination delivered to the Arbitrators within twenty (20) days after the
delivery of the Determination Notice. All fees and expenses of the Arbitrators
incurred in connection with their determination of such dispute or controversy
shall be borne by the parties that submitted Party Determinations not chosen by
the Arbitrators. All decisions of the Arbitrators shall be final and binding on
each of the parties and enforceable in law or at equity.
14. NO AGENCY OR LIABILITY
----------------------
Neither party shall be liable for the acts or omissions of the other
party, and neither party shall be deemed an agent of the other party.
15. CONFIDENTIALITY
---------------
Both parties agree to hold all information received from the other
party hereto including the terms of this License Agreement in confidence.
Notwithstanding the foregoing, this confidentiality shall not apply to
information received from other sources or in the public domain.
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IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
executed as of the date first set forth above.
SUCCESS HOLDINGS CO., LLC FORTUNE 21, INC.
By: /s/ Peter R. Morris By: /s/ James S. Byrd
----------------------- ---------------------
Peter Morris James S. Byrd, Jr.
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