LICENSE AGREEMENT
THIS AGREEMENT is made and entered into as of November 12, 1999, by and
among Farm Stores Grocery, Inc., a Delaware corporation ("Licensor"), having its
principal office at 5800 N.W. 74th Avenue, Miami, Florida 33166, and United
Petroleum Corporation, and United Petroleum Group, Inc., both Delaware
corporations (collectively, "UPET" or "Licensee"), and having their principal
office at 2620 Mineral Springs Road, Suite A, Knoxville, TN 37917.
Preliminary Statements
Licensor and its affiliates have been engaged in the convenience store
business in the United States, operating both conventional walk-in convenience
stores ("Walk-In Stores") and specialty retail grocery stores incorporating a
double drive-through operating concept ("Drive-Thru Stores"). Licensor
historically has identified the Walk-In Stores and Drive-Thru Stores and certain
products sold in the Walk-In Stores and Drive-Thru Stores and identified on
Exhibit A hereto (the "Branded Products") in the State of Florida by means of
certain trade names, trademarks, service marks, trade dress, logos, emblems, and
indicia of origin, including, but not limited to, the mark "FARM STORES" and
such other trademarks and service marks, all as listed on Exhibit B attached
hereto and incorporated herein (collectively, the "Marks"). Licensee is
acquiring the Walk-In Stores from an affiliate of Licensor (the "Acquired
Stores"), and in connection with this acquisition, Licensor is willing to grant
a nonexclusive license in the Marks to Licensee for use in identifying the
Walk-In Stores and the Branded Products that are sold in the Walk-In Stores, as
well as any other walk-in convenience stores that the Licensee opens in
accordance with the terms of this Agreement in the State of Florida and other
parts of the United States of America (collectively, the "Additional UPET
Stores;), and for the sale of Branded Products within the Licensed Stores, all
subject to the terms and conditions in this Agreement.
NOW, THEREFORE, in consideration of the agreements set forth herein and
other good and valuable consideration, the receipt and sufficiency of which are
hereby conclusively acknowledged, the parties hereto, intending to be legally
bound, agree as follows:
I. GRANT AND TERM OF LICENSE
1.1 Grant; Definitions. The foregoing Preliminary Statement is hereby
incorporated into and made a part of this Agreement. As used herein, (a)
"Licensed Stores" means, collectively, the Additional UPET Stores and the
Acquired Stores; (b) "affiliate" means, when used in reference to a specified
Person, any other Person that directly or indirectly controls, is controlled by,
or is under common control with the specified Person; (c) "control" means the
power to direct or cause the direction of the management and policies of a
Person; (d) "Person" means any firm, association, partnership (whether general
or limited), trust, corporation, limited liability company or other legal
entities, including public or administrative bodies, or natural persons, (e)
"Termination Event" means the termination of Jose P. Bared's ("Bared")
employment by UPET for any reason or no reason, and (f) "Involuntary Termination
Event" means the termination of Bared's employment with UPET by Bared without
Good Reason (as defined in his employment agreement with UPET), or UPET's
termination of, or failure to renew at the expiration of its term, Bared's
employment by UPET without "cause" (as defined in Bared's employment agreement
with UPET). During the Term, as defined in section 1.2, below, Licensee shall
have the non-exclusive right, subject and pursuant to all of the terms and
conditions of this Agreement, to use the Marks (a) to identify the name of the
Licensed Stores on signs located at the premises of the Licensed Stores, (b) on
promotional materials relating to the Licensed Stores, and (c) for display and
sale in the Licensed Stores of the Branded Products. Except as set forth in the
preceding sentence, Licensee shall not have the right, without obtaining the
prior written consent of Licensor, which Licensor may withhold in its sole
discretion, to use any of the Marks for any purpose whatsoever.
1.2 Term. The term of this Agreement shall commence on the date of this
Agreement ("Effective Date"), and except as otherwise provided herein, shall
expire one (1) year after the Effective Date (this initial one-year period is
sometimes referred to in this Agreement as the "Initial Term"). The term of this
Agreement shall automatically, and without any action being required of either
party, renew for successive one-year terms (each, a "Renewal Term"; and as used
herein, "Term" means the Initial Term and all Renewal Terms); provided, however,
that the Term shall be subject to termination as provided in this Agreement.
Upon renewal of the Term, all of the terms and conditions set forth herein shall
remain in force and effect.
1.3 Fees. This license is royalty free, except as may be agreed by the
parties after any Involuntary Termination Event.
II. MARKS
2.1 Representations. Licensor represents with respect to the Marks
that:
(a) Licensor has registered the Mark "FARM STORES" with the
United States Patent and Trademark Office and is the owner of
United States Registration Nos. _______ for said Mark for use
in connection with ________; and
(b) Licensor will take all steps reasonably necessary at
Licensor's sole cost and expense to preserve and protect the
ownership and validity of the Marks.
2.2 Licensee Acknowledgments and Agreements. Licensee expressly
understands, acknowledges and agrees that:
(a) Licensor is the owner of all right, title and interest in
and to the Marks and all the goodwill associated with and
symbolized by the Marks, and Licensor has the right to use the
Marks and to authorize others to use the Marks.
(b) Neither Licensee's use of the Marks nor Licensee's
acquisition of the Acquired Stores nor use of the Marks in
connection with other Licensed Stores gives Licensee any
ownership interest or other interest in or to the Marks,
except the license granted by this Agreement;
(c) Any and all goodwill arising from Licensee's use of the
Marks shall inure solely and exclusively to Licensor's
benefit, and upon expiration or termination of the Term and
the license granted herein, no monetary amount shall be
assigned or paid to Licensee for any goodwill associated with
Licensee's use of the Marks or otherwise;
(d) The right and license to use the Marks granted hereunder
to Licensee is non-exclusive; and Licensor and its affiliates
shall have and retain the rights, among others, on any terms
and conditions as they deem advisable and without providing
any rights therein to Licensee:
(i) to use the Marks themselves;
(ii) to grant other licenses for the Marks, in
addition to those licenses which may already be
granted; provided, however, that notwithstanding any
inconsistent provisions hereof, during the Term and
after the occurrence of a Termination Event or
(except as otherwise provided in this Agreement) an
Involuntary Termination Event, the Licensor shall not
grant any license to use the Marks in connection with
the operation of a walk-in convenience store (as
distinct from a drive-through store, or for uses for
any purpose other than operation of a walk-in
convenience store, for all of which Licensor may
license the Marks without restriction hereunder); and
(iii) to develop and establish other stores using the
same or similar Marks, or any other marks, and to
grant licenses or other rights with respect thereto.
2.3 Integrity of Marks. Licensee acknowledges that the Marks have
become established in the trade and among the consuming public as representing
not only high quality goods, but also indicating that the stores selling such
goods are of good repute and integrity, and further acknowledges that it is in
the mutual interest of the parties hereto to protect and foster the value and
trade and consumer acceptance of the Marks; accordingly:
(a) Licensee shall use the Marks only in the manner authorized
and permitted by Licensor pursuant to this Agreement;
(b) Licensee shall use the Marks only for the operation and
promotion of the Licensed Stores and the sale of the Branded
Products therein;
(c) Unless otherwise authorized or required by Licensor,
Licensee shall not use the name "Farm Stores" or any of the
other Marks with any prefix or suffix;
(d) Licensee's right to use the Marks is limited to the right
to reproduce such Marks without change, modification or
alteration in their design and appearance from that furnished
by Licensor, and to such uses as are authorized under this
Agreement, and any unauthorized use of the Marks shall
constitute a material breach of this Agreement;
(e) Licensee shall not use the Marks as part of its corporate
or other legal names; nor shall it use the Marks to incur any
obligation or indebtedness on behalf of Licensor or Licensor's
affiliates;
(f) Licensee shall identify itself as the owner (or lessee) of
the Licensed Stores in conjunction with any of the Marks,
including, without limitation, on promotional materials;
(g) Licensee shall not directly or indirectly contest the
validity of Licensor's ownership of the Marks;
(h) Licensee shall clearly designate the Licensed Stores with
the Marks in such manner as shall be approved by Licensor, or
with a similar designation or designations as shall be
approved by Licensor; and the decoration, layout, color
scheme, furnishing and general physical presence of the
Licensed Stores shall be at the expense of Licensee, but shall
be subject to the approval of Licensor which approval shall
not be unreasonably withheld;
(i) Licensee shall operate the Licensed Stores in compliance
with this Agreement and in accordance with Licensor's
standards for quality, appearance, cleanliness and service, as
prescribed by Licensor from time to time in any and all
manuals and training materials or as otherwise reasonably
designated by Licensor to Licensee and in accordance with all
applicable laws and regulations;
(j) Licensor shall have the right to require that one or more
of its representatives be permitted to inspect all stores that
are utilizing Marks from time to time at any time;
(k) Licensee shall not, without the approval of Licensor,
occupy or use any Licensed Store displaying any Marks for any
business other than a walk in convenience store business
substantially similar to that historically operated at the
Licensed Stores;
(l) Licensee shall purchase all Branded Products and all other
products for sale in the Licensed Stores utilizing the Marks
solely from suppliers who demonstrate, to the continuing
satisfaction of Licensor, the ability to meet Licensor's
standards of quality (including, as to dairy products,
freshness) for Branded Products and such other items. Licensee
shall perform such testing and other quality assurance
procedures as Licensor may reasonably require to assure
compliance with the foregoing, and shall permit Licensor to do
so as well.
2.4 Execution of Documents. Licensee shall cooperate with the Licensor
in Licensor's maintenance of the Marks, and at the request of Licensor, shall
execute any documents and provide Licensor with any specimens or materials
required for the registration renewal and/or such similar maintenance of the
Marks.
2.5 Protection of Rights in Marks. Licensee shall promptly notify
Licensor of any unauthorized use of the Marks, any challenge to the validity of
the Marks, any passing-off or attempts to pass-off the goodwill associated with
the Marks, or any challenge to Licensor's ownership of, or Licensee's right to
use, the Marks, in each case of which Licensee becomes aware. Licensee
acknowledges and agrees that (i) Licensor has the sole right to direct and
control any dispute, administrative proceeding or litigation involving the
Marks, including any settlement thereof, and (ii) Licensor has the right, but
not the obligation, to take action against uses by others that may constitute
infringement of the Marks, each at Licensor's expense. Licensor shall be
entitled to any and all damages collected in any such action. If Licensor elects
not to take action against any infringement of the Marks by third parties
outside the State of Florida, Licensee shall have the right (at its expense) to
commence any action to enjoin or recover damages by reason of any such
infringement of the Marks, provided that it receives an opinion of experienced
intellectual property counsel that such action is advisable in order to protect
the Marks in such jurisdiction. If Licensee prosecutes such an action in
accordance therewith, it shall be entitled to retain any damages awarded.
(a) Provided that Licensee has used the Marks only in
accordance with this Agreement, and that Licensee provides
Licensor with prompt notice of any claim, suit, demand or
penalty, Licensor will defend, indemnify and hold harmless
Licensee, at Licensor's expense, against any and all judgments
settlements, penalties, losses, liabilities, claims, suits,
damages, costs and expenses (including attorney's fees)
involving the ownership, validity or right to use the Marks
arising out of Licensee's permitted use thereof within the
State of Florida, and Licensor shall have the right to control
the defense of and settle any such matter. Outside of the
State of Florida, Licensor shall have the option to defend
such infringement actions as set forth above, or make any
other arrangements it deems to be appropriate (including
without limitation, requiring Licensee to cease or restrict
use of the Marks in a certain territory) in connection
therewith. In the event that Licensee has not used the Marks
in accordance with this Agreement, Licensor may, at Licensor's
option, defend Licensee, at Licensor's expense, against such
third party claims, suits or demands, but Licensor shall not
be obligated to do so.
(b) In the event of any litigation relating to the ownership,
validity or right to use the Marks, Licensee agrees to execute
any and all documents and to do such acts as may, in
Licensor's reasonable opinion, be necessary to carry out such
defense or prosecution, including, but not limited to,
becoming a nominal party to any legal action. Licensor shall
not be required to consult with Licensee or Licensee's counsel
in connection with any such litigation, unless Licensor names
Licensee a nominal party to such action.
III. PROMOTION
3.1 Promotional Materials. Recognizing the value of promotion and the
importance of the goodwill and public image of the Marks, Licensor may from time
to time provide to Licensee, as Licensor deems appropriate, promotional plans
and materials which Licensor has developed.
3.2 License Promotions.
(a) All promotion by Licensee in any medium which contain or
refer to the Marks shall be conducted in a dignified manner
and shall conform to the standards and requirements of
Licensor as set forth in any manuals and other materials
provided by Licensor to Licensee. Licensee shall submit to
Licensor its promotional and public relations plans and
materials which contain or refer to the Marks for a twelve
month period, on an annual basis. Licensee shall obtain
Licensor's prior approval of all promotional and public
relations plans and materials which contain or refer to the
Marks that Licensee desires to use. Licensor shall provide the
approval or disapproval of such plans and materials within 30
days of receipt of all related documents, and if disapproved,
shall state with specificity the reasons therefor. Licensee
shall use no such plans or materials until they have been
approved by Licensor, and shall promptly discontinue use of
any promotional plans or materials upon reasonable notice from
Licensor.
(b) In all promotion, Licensee shall use the Marks only in
accordance with the terms and conditions of this Agreement.
Licensee shall display the Marks in the manner prescribed by
Licensor on all signs and other promotional materials.
IV. SUBLICENSING
4.1 Licensor Consent Required. Licensee shall not grant any sublicense
to use any of the Marks, or otherwise grant any other right in the Marks,
without the prior written consent of Licensor, which Licensor may withhold in
its sole and absolute discretion.
4.2 Conditions. If Licensee shall sublicense any Marks, then
(a) Licensee shall ensure that the sublicense provides that
the sublicensee is bound by all of Licensee's representations,
warranties and covenants in this Agreement;
(b) The terms and conditions of the Sublicense Agreement shall
be subject to the approval of Licensor;
(c) Licensee shall enforce all of the terms and conditions of
the sublicense agreement in a timely and proper manner,
including, but not limited to, enforcing the proper usage and
presentation of the Marks, compliance with Licensor's
standards of quality and service, and adherence to the manuals
and other materials designed to promote quality and good
service provided Licensee by Licensor.
V. CONFIDENTIALITY AND NON-DISCLOSURE OBLIGATIONS
5.1 Definitions.
(a) "Confidential Information" shall mean all information
concerning Licensor, the Marks (but excluding the Marks,
themselves), Licensor's business and manuals, and all other
information provided by or on behalf of Licensor to Licensee,
except for the information excluded in subsection 5.1(c).
(b) Confidential Information shall include, without
limitation, (i) the terms and provisions of this Agreement;
(ii) Licensor's methods and systems of operation and
otherwise, including but not limited to operating manuals, to
the extent Licensee may become familiar with or have
possession, custody or control of such; (iii) technical
memoranda and data; (iv) research; (v) manuals; (vi) reports
and memoranda; (vii) new product and service development;
(viii) other intellectual property and all draft or proposed
applications for registrations thereof; (ix) comparative
analyses of competitive products; (x) services and operating
procedures; (xi) prices charged and paid by Licensor; (xii)
emails and other electronic data transmitted by or on behalf
of Licensor; and (xiii) information, data or documents that
Licensor designates as trade secrets or as confidential,
whether or not any of the foregoing qualify as "trade secrets"
under applicable law.
(c) Confidential Information shall not include (i) information
that is or becomes generally known to the public other than
through disclosure (whether deliberate or inadvertent) by
Licensee, and (ii) information disclosed in judicial or
administrative proceedings to the extent that Licensee is
legally compelled to disclose such information, provided that
Licensee shall have given Licensor prior written notice of
such required disclosure and shall have used its best efforts,
and afforded Licensor the opportunity, to obtain an
appropriate protective order or other assurance satisfactory
to Licensor of confidential treatment for the information
required to be disclosed.
5.2 Non-Disclosure.
(a) During the Term of this Agreement and for 10 years
thereafter, Licensee shall treat all Confidential Information
confidentially, and shall not communicate, divulge, disclose,
reveal, or use to or for the benefit of any person or entity,
other than Licensor, any Confidential Information; provided
that Licensee may disclose Confidential Information to
Licensee's employees, directors, officers, representatives and
advisors who need to know such information as an incident to
performing Licensee's obligations hereunder.
(b) Licensee shall at all times treat all manuals and other
written materials provided by Licensor, and the information
contained therein, as Confidential Information, and shall use
all reasonable efforts to maintain such information secret and
confidential. Licensee shall not, at any time, without
Licensor's prior written approval, copy, duplicate, record, or
otherwise make any such manuals or other Confidential
Information available to any person not authorized by this
Agreement. All Confidential Information shall at all times
remain the sole property of Licensor, and shall at all times
be kept in a secure place.
(c) Upon any termination of this Agreement, Licensee shall
immediately return to Licensor, or, at Licensor's written
request, destroy, all Confidential Information in its
possession, copies of all materials relating to the Mark and
operations of the Licensed Stores provided by or on behalf of
Licensor, including, without limitation, all manuals and
employee training information. Confidential Information in
computer code or other electronic form shall be deleted from
all computers, lap tops and similar devices, disks and other
electronic media to which Licensee has access; provided that,
at Licensor's written request, Licensee shall print and return
to Licensor hard copies of any such information prior to its
destruction.
5.3 Scope of Responsibility. Licensee shall be responsible for any
breach of this Article V by any of its employees, directors, officers,
representatives or advisors and other parties to whom Licensee discloses
Confidential Information as permitted hereby or otherwise, and agrees, at
Licensee's sole expense, to take all reasonable measures (including but not
limited to court proceedings) to restrain its employees, directors, officers,
representatives, advisors and such parties from prohibited or unauthorized
disclosure or use of any Confidential Information.
VI. TRANSFERS OF INTEREST; TERMINATION EVENTS
6.1 Licensor Transfers Permitted. Licensor shall have the right to
transfer or assign this Agreement and all or any part of its rights or
obligations herein to any person or entity, and agrees to advise Licensee
immediately of the effective date of such transfer or assignment and of the name
and address of such transferee or assignee.
6.2 Licensee Transfers Restricted. Licensee understands and
acknowledges that the rights and duties set forth in this agreement are personal
to Licensee, and that Licensor has granted the rights hereunder in reliance on
Licensee's business skill and reputation. Accordingly, neither Licensee, nor any
immediate or remote successor to any part of Licensee, nor any individual,
partnership, corporation or other legal entity which directly or indirectly owns
any interest in Licensee, shall sell, assign, transfer, convey, give away,
pledge, mortgage or otherwise encumber, without the prior written consent of
Licensor (which consent may be withheld in Licensor's sole discretion), any
direct or indirect interest in this Agreement, or the rights and obligations
hereunder. Any purported assignment or transfer not having the prior written
approval of Licensor shall be a material breach of this Agreement by Licensee
and shall otherwise be null and void.
6.3 Effect of Involuntary Termination Event. If an Involuntary
Termination Event shall have occurred, then
(a) the license rights provided to Licensee hereunder shall
become applicable only as to use of the Marks for Licensed
Stores within the Metropolitan Statistical Areas ("MSAs") in
which the Marks are then being actively used by Licensee as
previously permitted hereunder (the "Active MSAs");
(b) the Licensee shall be permitted to use the Marks in
connection with Additional UPET Stores without payment of a
fee only if the Additional UPET Stores are located within
Active MSAs.
(c) the Licensor shall not license other parties to use the
Marks for the operation of walk-in convenience stores (other
than the Licensee) for a period of 2 years after the
Involuntary Termination Event;
(d) the Licensor shall not, after the expiration of the 2 year
period set forth in (c), above, grant a license to any
operator of walk-in convenience stores to use the Marks in any
area other than the Active MSAs (the "Non-UPET MSAs"), unless
Licensor first gives Licensee a notice to offer such a license
to Licensee. Such notice shall specify the terms (including
the license fee) to govern such proposed license and the
Non-UPET MSAs in which such license will be valid. If Licensee
does not accept such terms within 15 days after Licensor's
notice as aforesaid, then the Licensor shall be free to grant
such license to any third party, provided that the license is
limited to the Non-UPET MSAs identified in Licensor's notice
and governed by terms not less favorable to Licensor than
those set forth in Licensor's notice.
VII. DEFAULT AND TERMINATION
7.1 Default and Automatic Termination. Licensee shall be deemed to be
in default under this Agreement, and the Term of this Agreement and all rights
granted hereunder shall terminate automatically, without notice to Licensee and
without affording Licensee any opportunity to cure the default, effective
immediately upon the occurrence of any of the following events:
(a) Licensee shall commence a voluntary case or other
proceeding seeking liquidation, reorganization or other relief
with respect to itself or its debts under any bankruptcy,
insolvency or other similar law now or hereafter in effect, or
seeking the appointment of a trustee, receiver, liquidation,
custodian or other similar official of it or any substantial
part of its property, or shall consent to any such relief or
to the appointment of or taking possession by any such
official in an involuntary case or other proceeding commenced
against it, or shall make a general assignment for the benefit
of creditors, or shall fail generally to pay its debts as they
become due, or shall take any corporate action to authorize
any of the foregoing; or
(b) An involuntary case or other proceeding shall be commenced
against Licensee seeking liquidation, reorganization or other
relief with respect to it or its debts under any bankruptcy,
insolvency or other similar law now or hereafter in effect or
seeking the appointment of a trustee, receiver, liquidation,
custodian or other similar official of it or any substantial
part of its property, and such involuntary case or other
proceeding shall remain undismissed and unstayed for a period
of 60 days; or an order for relief shall be entered against
Licensee under the federal bankruptcy laws as now or hereafter
in effect.
7.2 Default and Optional Termination. After the occurrence of a
Termination Event and upon the occurrence of any of the events described in
subsection (a)-(c) below, Licensor, at its option, may terminate the Term of
this Agreement and all rights granted hereunder effective immediately upon
Licensor's notice of termination to Licensee (and without affording Licensee any
opportunity to cure the default); and
(a) If Licensee makes or attempts to make a transfer or
assignment in violation of Section 6.2 hereof or grants or
attempts to grant a sublicense without Licensor's prior
written consent;
(b) If Licensee fails to comply with the covenants and
agreements set forth in Section IV;
(c) If Licensee makes any unauthorized use of the Marks;
7.3 Defaults Capable of Cure. After the occurrence of a Termination
Event and upon the occurrence of any material breach of any provision of this
Agreement, not otherwise set forth in sections 7.1 or 7.2, Licensor, at its
option, may terminate this Agreement and all rights granted hereunder, effective
30 days from the date the Licensor delivers to Licensee a written notice of
termination describing such material breach. Notwithstanding the preceding
sentence, this Agreement shall not terminate so long as Licensee cures such
material breach within 30 days from the date the notice of termination was
delivered; provided, however, if the breach or default is not capable of being
cured, then the termination of this Agreement shall be effective upon the
delivery of the notice of default.
VIII. OBLIGATIONS UPON TERMINATION OR EXPIRATION
8.1 Obligations. Upon termination or expiration of the Term of this
Agreement, all rights granted herein to Licensee shall forthwith terminate, and
(a) Licensee shall not thereafter, directly or indirectly,
represent to the public that it is, or hold itself out as, a
present or former licensee of Licensor;
(b) Licensee shall immediately deliver to Licensor or destroy
all Confidential Information in its possession, in accordance
with section 5.2(c) hereof;
(c) Licensee shall, at Licensor's option and request, transfer
and assign to Licensor all of Licensee's rights and
prospective obligations in all sublicense agreements executed
by Licensee hereunder and shall execute all documents
reasonably required by Licensor in connection with such
transfer;
(d) Licensee shall immediately and permanently cease to use
the Marks, and all other distinctive forms, slogans, signs,
symbols, and devices associated with the Licensed Stores and
the Branded Products. Without limiting the generality of the
foregoing, the Licensee shall remove the Marks from all of the
Licensed Stores' signage (within 45 days from such
termination) and promptly (within 5 days from such
termination) cease any sale of the Branded Products. Licensee
shall take such action as may be necessary to cancel any
business name registration of Licensee which contains the mark
"FARM STORES" or any other Mark of Licensor or its affiliates,
and Licensee shall furnish Licensor with evidence satisfactory
to Licensor of compliance with this obligation within fourteen
(14) days after termination or expiration of this Agreement;
(e) Licensee shall immediately deliver to Licensor all manuals
provided to it by Licensor, all of which are acknowledged to
be the property of Licensor;
(f) Licensee shall comply with the covenants and agreements
set forth in Section V of this Agreement.
8.2 Survival. The following provisions of this Agreement shall survive
its termination or expiration for any reason whatsoever: Article V "Confidential
Information"; Article VIII "Obligations upon Termination or Expiration"; Section
9.1 "Taxes"; Section 10.3 "Indemnity"; Article XI "Notices"; and Article XIII
"Governing Law." Termination or expiration of this Agreement shall in no way
affect the survival of any right, duty, or obligation of the parties which is
intended, expressly or impliedly, under the provisions of this Agreement, to
survive its termination or expiration.
IX. TAXES AND PERMITS
9.1 Taxes. Licensee shall pay all taxes or other levies payable as a
result of this Agreement, or any of the documents contemplated by this
Agreement, and Licensor shall have no liability for any sales, use, service,
occupation, excise, gross receipts, value-added, income, property or other
taxes, whether levied upon the Licensed Stores, Licensee's property, or
Licensor, in connection with the rights granted hereunder. Provided, however,
that Licensee shall not be liable for Licensor's income taxes on any royalties
payable hereunder, or for Licensor's own use of the Marks. Licensee agrees to
indemnify Licensor for any assessments or taxes that might be made against
Licensor under the terms of this Agreement.
9.2 Compliance with Laws. Licensee shall comply with all applicable
laws and regulations, and shall timely obtain, and shall maintain in full force
and effect at all times during the term of this Agreement, at its sole cost and
expense, any and all approvals, permits, certificates, and licenses necessary
for the full and proper performance of this Agreement.
9.3 Notification Requirement. Licensee shall notify Licensor in writing
within five (5) business days of learning of the commencement of any action,
suit, or proceeding, and of the issuance of any order, writ, injunction, award,
or decree of any court, agency or other governmental authority, which arises out
of or in connection with the Licensee's use of the Marks, and may adversely
affect the Marks or the use thereof, or the operations or financial condition of
Licensee.
X. INDEPENDENT CONTRACTOR; INDEMNIFICATION
10.1 Parties Independent. This Agreement does not create a fiduciary
relationship between the parties hereto. Licensee is an independent contractor,
and nothing in this Agreement is intended to constitute either party an agent,
legal representative, subsidiary, joint venturer, partner, employee, or servant
of the other for any purpose whatsoever. Licensee shall hold itself out to the
public as an independent contractor holding the rights to license the Marks from
their owner.
10.2 No Agency Relationship. Nothing in this Agreement authorizes
Licensee to make any contract, agreement, warranty, or representation on
Licensor's behalf, or to incur any debt or any other obligation in Licensor's
name, and Licensor shall in no event assume liability for, or be deemed liable
hereunder as a result of, any such action or by reason of any act or omission of
Licensee, or any claim or judgment arising therefrom.
10.3 Indemnity. If Licensor shall be subject to any claim, demand or
penalty or become a party to any suit or other judicial or administrative
proceeding by reason of any claimed act or omission of Licensee, its officers,
directors, representatives, employees or agents, or by reason of any act
occurring at or in respect of a Licensed Store, provided Licensor provides
Licensee with prompt written notice after Licensor becomes aware of a claim,
Licensee shall defend, indemnify and hold Licensor harmless from and against all
judgments, settlements, penalties, losses, liabilities, claims, suits, damages,
costs and expenses (including attorneys' fees and costs) incurred by or imposed
on Licensor in connection therewith. Notwithstanding the foregoing, this
indemnity shall not apply to infringement actions against Licensor brought
solely in connection with the Licensee's use of the Marks as permitted hereby in
the State of Florida.
XI. NOTICES
All notices required hereunder shall be in writing and shall be given
(a) by personal service, (b) by certified or registered mail, with postage
prepaid, return receipt requested, (c) by international commercial courier,
express delivery, with delivery acknowledgment required, or (d) by cable, telex,
or telecopy (each of which must be evidenced by a machine generated receipt), if
immediately confirmed in writing by one of the aforedescribed means. All notices
shall be addressed to the recipient at the address set forth in the first
paragraph of this Agreement, or such other address as such party may from time
to time designate in a notice given in the aforesaid manner. Notices shall be
deemed effective when received or when delivery thereof is refused.
XII. MISCELLANEOUS
12.1 Entire Agreement. This Agreement, and the exhibits and schedules
hereto, constitute the entire, full, and complete agreement between Licensor and
Licensee with respect to the subject matter hereof and supersede any and all
prior agreements with respect thereto. This Agreement incorporates by reference
the recitals, and all exhibits and schedules hereto.
12.2 Gender and Number. All references in this Agreement to the
singular shall include the plural where applicable, and all references to the
masculine, feminine or neuter shall be deemed interchangeably to refer to all
genders and vice-versa.
12.3 Severability. Every part of this Agreement shall be considered
severable. If any part of this Agreement for any reason shall be declared
invalid, such invalidity shall not affect the validity of any remaining portion,
which shall remain in full force and effect. In the event that any material
provision of this Agreement shall be stricken or declared invalid the parties
shall use their best efforts to negotiate a mutually satisfactory amendment to
this Agreement. If any covenant herein which restricts a competitive act is
deemed unenforceable by virtue of its scope in terms of geographical area, type
of business activity prohibited and/or length of time, but could be enforceable
by reducing any part or all thereof, Licensor and Licensee agree that the same
shall be deemed amended to conform with applicable law and shall be enforced to
the fullest extent permissible under applicable laws and public policies.
12.4 Conflict with Law. If any applicable law or rule of any
jurisdiction requires a greater prior notice of the termination hereof than is
required hereunder, or the taking of some other action not required hereunder,
the prior notice and/or other action required by such law or rule shall be
substituted for the comparable provisions hereof.
12.5 No Third Party Beneficiaries. This Agreement is entered into
solely for the benefit of the parties hereto, and no third party is an intended
beneficiary hereof. No third party is entitled to rely upon this Agreement or
have any rights hereunder.
12.6 Headings. The headings of the sections and subsections of this
Agreement are for convenience only and do not limit or affect the construction
of the contents of such sections or subsections.
12.7 Counterparts. This Agreement may be executed in multiple copies,
each of which shall be deemed an original. Time is of the essence in this
Agreement.
12.8 Amendment. No interpretation, change, termination or waiver of any
of the provisions hereof shall be binding upon either party unless in writing
and duly executed by both parties. No modification, waiver, termination,
rescission, discharge or cancellation of this Agreement shall affect the right
of any party hereto to enforce any claim hereunder, whether or not liquidated,
which occurred prior to the date of such modification, waiver, termination,
rescission, discharge or cancellation.
XIII. GOVERNING LAW; ENFORCEMENT OF REMEDIES
13.1 Choice of Law. This Agreement shall be governed by and construed
in accordance with the laws of the State of Florida, applicable to contracts
made and wholly enforceable in such State.
13.2 Specific Performance. Notwithstanding anything to the contrary
contained in this Agreement, if, due to a breach or threatened breach or default
or threatened default (including without limitation, under the confidentiality
provisions hereof), a party is suffering or is threatened with suffering
irreparable harm for which monetary damages are inadequate, such party shall be
entitled to such injunctive relief, specific performance, restraining orders, or
other equitable relief, in addition to all other legal and equitable remedies
available to such party. For purposes hereof, the parties hereby irrevocably
submit in any such suit, action or proceeding to the jurisdiction of the United
States District Court for the Southern District of Florida and waive any and all
objections that such jurisdiction, situs and/or venue is inconvenient or
otherwise improper. Each party further agrees that process may be served upon
such party in any manner authorized under the laws of Florida, and waives any
objections that such party may otherwise have to such process.
13.3 Attorneys' Fees. If either Licensor or Licensee institutes legal
action against the other to secure or protect its rights under or to enforce the
terms of this Agreement, in addition to any judgment entered in its favor
whether as plaintiff or defendant, any and all costs incurred by the prevailing
party, including, without limitation reasonable attorneys' fees, shall be paid
by the non-prevailing party. All references to attorneys' fees (or similar
phrases) herein shall include attorneys' and paralegals' fees and expenses in
all administrative, regulatory, investigation, bankruptcy or appellate
proceedings.
13.4 Rights Cumulative. The rights of the Licensor and Licensee
hereunder are cumulative and no exercise or enforcement by either the Licensor
or the Licensee of any right or remedy hereunder shall preclude the exercise or
enforcement by the Licensor or the Licensee of any other right or remedy
hereunder which the Licensor or the Licenses is entitled to enforce by law.
13.5 Waivers. No delay, waiver, omission, or forbearance on the part of
the Licensor or the Licensee to exercise any right, option, duty or power
arising out of any breach or default by the Licensor or the Licensee under any
of the terms or provisions of this Agreement shall constitute a waiver by the
Licensor or the Licensee of any ability to enforce any such right, option, duty
or power as against the Licensor or the Licensee, or as to any subsequent breach
or default by the Licensor or the Licensee.
XIV. REPRESENTATIONS
14.1 Mutual Representations. Licensor and Licensee represent and
warrant to the other as follows:
(a) The execution, delivery and performance of this Agreement
(a) has been duly authorized by all necessary or appropriate
acts or proceedings; (b) does not violate or conflict with any
provision of its organizational documents or corporate
authority; and (c) does not violate or result in a breach or
default (with the giving of notice, the passage of time, or
otherwise) under any contract, understanding, judgment, order,
writ, law or regulation that is applicable to the representing
party or its assets;
(b) This Agreement is the valid, legal and binding obligation
and agreement of the representing party, and is enforceable
against it in accordance with its terms; and
(c) The representing party is duly organized and validly
existing, in good standing in the jurisdiction of its
organization.
14.2 Licensee Acknowledgments. Licensee acknowledges that:
(a) Licensor does not represent or warrant that the use of the
Marks pursuant to this Agreement will achieve any specific
results; and that Licensor is not responsible or liable to
Licensee for any failure of Licensee to exploit the license in
accordance with Licensee's own expectations;
(b) Except as provided for herein, no future licenses or
offers of licenses have been promised to Licensee and any
other license agreement shall only be in a writing executed by
Licensor and Licensee; and
(c) Except as provided for herein, nothing in this Agreement
shall prohibit or restrain Licensor or its affiliates from
selling any goods under the Marks, providing any services
under the Marks, licensing any other party to use the Marks,
or accepting and retaining all compensation therefor.
[SIGNATURES FOLLOW ON NEXT PAGE]
IN WITNESS WHEREOF, the parties hereto have executed, sealed and
delivered this Agreement the date first written above.
LICENSEE:
By: ___________________________
Its:___________________________
LICENSOR:
By: ___________________________
Its:___________________________
EXHIBIT A TO LICENCE AGREEMENT
Branded Products
Homogenized Milk (quart, pint (plastic), half gallon, gallon)
Skim Milk (half gallon, gallon)
Light Taste (half gallon, gallon)
Buttermilk (half gallon)
Chocolate Milk (half gallon)
Half & Half (pint)
Orange Juice (gallon)
Orange Drink (half gallon, gallon)
Fruit Punch (half gallon, gallon)
Lemon Drink (half gallon)
Grape Drink (half gallon)
Ice Tea (half gallon)
Sour Cream
Cottage Cheese
Jumbo Eggs
Egg Nog (half gallon)
Ice Cream - Half Gallon
Vanilla
Chocolate
Cherry Vanilla
Chocolate Almond
Chocolate Chip
Cookie Dough
Cookies 'N Cream
Dark Horse
Heavenly Hash
Neopolitan
Pistachio
Rocky Road
Butter Pecan
Light Vanilla
Light Chocolate
Light Chocolate Chip
Light Butter Pecan
EXHIBIT B TO LICENCE AGREEMENT
Licensed Marks
Farm Stores
Farm Store Foods