Exhibit 2.2
LICENSE AGREEMENT
This License Agreement (the "Agreement") is made by and between Apogee
Enterprises, Inc. ("Licensor"), a Minnesota corporation and CH Holdings, Inc.
("Licensee"), a Missouri corporation as of the Effective Date (as defined
below).
STATEMENT OF PURPOSE
WHEREAS, Licensor and Licensee are in negotiations regarding Licensee's
proposed acquisition ("Acquisition") of all of the outstanding capital stock of
a subsidiary of Licensor, Harmon, Ltd., a Minnesota corporation, engaged in the
architectural and other curtainwall business, including but not limited to the
promotion, sale, design, engineering, project management, provision of materials
and installation, within the United States, of standard and custom curtainwall
systems to the non-residential construction market (the "Business");
WHEREAS, Licensor owns certain registered and unregistered trademarks,
service marks and trade names identified in the attached Exhibit A, and has
acquired public recognition and goodwill through the use of such marks and
names;
WHEREAS, Licensee recognizes the goodwill appurtenant to the use of the
marks and names identified in the attached Exhibit A and, in connection with the
proposed Acquisition of the Business, desires to obtain a perpetual, exclusive,
royalty-free, license to utilize such marks and names as provided herein; and
WHEREAS, Licensor is willing to grant such license under the terms and
conditions of this Agreement.
AGREEMENT
NOW THEREFORE, in consideration of the above premises and the mutual
covenants contained herein, and other good and valuable consideration, the
receipt and adequacy of which is hereby acknowledged, the parties agree as
follows.
ARTICLE I.
DEFINITIONS
1.1 "Effective Date" shall mean the Effective Date as such term is
defined in the Stock Purchase Agreement.
1.2 "Licensed Marks" shall mean those trademarks, service marks and
trade names identified on the attached Exhibit A, together with any application
for registration of a Licensed Mark which may have been filed by Licensor and
any registrations covering a Licensed Mark which may be issued to Licensor,
whether state or federal, and any marks and names added
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pursuant to Section 2.2. For a period of six (6) months from the Effective Date,
Licensed Marks shall also include the stylized "H" logo, provided that Licensee
shall make no new usages of the logo but may only continue existing usages of
the logo, such as on trucks, hard hats, and preexisting promotional materials.
Thereafter, Licensed Marks expressly exclude the stylized "H" logo.
1.3 "Licensed Uses" shall mean the use of the Licensed Marks in the
United States in connection with the Business, but no other uses.
1.4 "Minimum Quality Requirement" shall mean the level of quality
deemed by Licensor to be consistent with the quality standards that consumers
have come to reasonably expect from products or services bearing or associated
with the Licensed Marks (i.e., products and services consistent with Licensor's
specifications, bills of material, quality standards and related documentation
for products and services of the type covered by the Licensed Uses) as of the
Effective Date.
1.5 "Security Agreement" shall mean that certain Subordinated Loan and
Security Agreement by and between the parties dated as of April 9, 1999.
1.6 "Stock Purchase Agreement" shall mean that certain Stock Purchase
Agreement by and between the parties dated as of April 9, 1999.
ARTICLE II.
LICENSE GRANT
2.1 Subject to the terms and conditions of this Agreement, Licensor
grants to Licensee a perpetual, exclusive, royalty-free right and license to
utilize the Licensed Marks as a trademark, service mark, trade name or corporate
name solely in connection with Licensed Uses meeting the Minimum Quality
Requirements.
2.2 If Licensee or any of its Sublicensees (as defined in Section 3.1)
wishes to use new trademarks, service marks, trade names, or corporate names in
connection with Licensed Uses which include or incorporate any of the Licensed
Marks ("Combination Marks"), then each such Combination Mark shall automatically
be deemed to be a "Licensed Mark" as defined here and all rights, licenses and
obligations applicable to Licensed Marks hereunder shall automatically extend
and apply to such Combination Marks. The preceding sentence shall remain in
effect until Licensee pays in full all amounts due to Licensor under the Stock
Purchase Agreement and the Security Interest (as that term is defined in the
Security Agreement) is terminated. Thereafter, Licensor agrees to assign all
right, title and interest in any Combination Marks to Licensee and shall without
further consideration but at the expense of Licensee, execute any additional
documents that may be necessary to effect this transfer, provided that the
portion of any Combination Mark containing an original Licensed Mark shall still
be subject to the terms and conditions of this License Agreement.
Notwithstanding the foregoing language of this Section 2.2, Licensee agrees that
it will not create any Combination Marks that also contain the terms "Glass,"
"Auto Glass," "Full Service," "Solutions", or any derivations thereof.
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2.3 Licensor reserves and retains the right to use the Licensed Marks
for goods and services that exclude the Licensed Uses, including without
limitation all usages permitted by that certain Noncompetition Agreement dated
April 9, 1999 between the parties.
ARTICLE III.
TRANSFERABILITY
3.1 Except as provided herein, Licensee shall grant no sublicenses
under this Agreement. The license granted to Licensee is personal, and no rights
hereunder may be transferred by Licensee without the express written approval of
Licensor; provided, however, that this Agreement may be assigned by Licensee to
a successor of all of the assets of Licensee. Licensee may sublicense its rights
to a division, subsidiary, partnership or affiliate of the Licensee whereby the
Licensee has a majority interest therein (collectively, "Sublicensees");
provided, however, that Licensee shall police the requirements of Article V of
this Agreement with respect to such Sublicensees and that any breach of this
Agreement by a Sublicensee shall be deemed to be a breach of this Agreement by
Licensee.
3.2 All rights reserved by Licensor in this Agreement shall inure to
the benefit of Licensor, its successors, assigns or purchasers, including,
without limitation, any business entity resulting from a merger with Licensor.
ARTICLE IV.
GOODWILL IN LICENSED MARKS
4.1 Licensee agrees that the essence of this Agreement is founded on
the goodwill associated with the Licensed Marks and the value of that goodwill
in the minds of the consuming public. Licensee agrees that it is critical that
such goodwill be protected and enhanced and, toward this end, Licensee shall not
do any of the following:
a) attach the title or any rights of Licensor on or to the
Licensed Marks;
b) assert trademark infringement against or otherwise attack
the title or any rights of Licensor to use the Licensed Marks in
accordance with the reservation of rights set forth herein;
c) apply to register or maintain any application or
registration of the Licensed Marks or any other mark confusingly
similar thereto in any jurisdiction, domestic or foreign;
d) use any colorable imitation of any of the Licensed Marks,
or any variant form (including variant design forms, logos, colors or
typestyles) of the Licensed Marks not specifically approved in advance
by Licensor;
e) misuse the Licensed Marks;
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f) take any action that would bring the Licensed Marks into
public disrepute;
g) take any action that would tend to destroy or diminish the
goodwill in the Licensed Marks; or
h) operate its business in any manner which would falsely
suggest to the public that any relationship, other than the
licensor-licensee relationship arising from this Agreement, exists
between Licensee and Licensor.
4.2 Licensee agrees that all use by Licensee of the Licensed Marks
pursuant to the terms of this Agreement inures to the benefit of Licensor.
4.3 Licensee agrees to cooperate fully with Licensor in securing and
maintaining the goodwill of Licensor in the Licensed Marks.
ARTICLE V.
QUALITY CONTROL; PACKAGING AND ADVERTISING APPROVAL
5.1 Licensee acknowledges that if the Licensed Uses do not meet the
Minimum Quality Requirements, the substantial goodwill which Licensor possesses
in the Licensed Marks would be materially impaired. Accordingly, Licensee shall
meet the Minimum Quality Requirements for all Licensed Uses. Further to this
end, upon reasonable advance written notice to the Licensee, Licensor shall also
have the right to inspect the business premises and products and services of
Licensee during normal business hours, and Licensee agrees that it shall scrap
and not use, sell or otherwise distribute any product that fails to meet the
Minimum Quality Requirements, as reasonably determined by Licensor.
5.2 Licensor shall have the right, upon request, to review for the
purpose of conformity to the Minimum Quality Standards, samples, photographs
and/or copies of any use of the Licensed Marks in Licensee's product packaging,
advertising, manuals, brochures, stationery, business cards, signage and other
materials. If Licensor rejects the form of any such usage, it shall notify
Licensee of the specific reasons for the rejection, and Licensee shall then make
the required changes.
ARTICLE VI.
REPRESENTATIONS AND WARRANTIES
6.1 Licensor. Licensor hereby warrants and represents that it has not
entered into any assignments, contracts or other understandings with third
parties which would conflict with the rights granted herein.
6.2 Licensee. Licensee hereby warrants and represents that (a) all
Licensed Uses shall be in compliance with all applicable laws, (b) all claims or
representations made by or for Licensee about the Licensed Uses shall be true
and correct and in compliance with all applicable laws,
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including, without limitation, any rules and regulations regarding false and
deceptive advertising practices, and (c) Licensee shall not use Licensed Marks
except as provided herein. Licensee agrees to indemnify and hold harmless
Licensor, including its affiliates, officers, agents, directors, and employees,
against any and all claims, actions, proceedings, expenses, damages and
liabilities (including but not limited to any governmental investigations,
complaints and actions) and reasonable attorneys' fees, arising out of or in
connection with (i) any breach of this Agreement by Licensee, including its
representations, warranties and covenants, (ii) the Licensed Uses and any
advertising or marketing in connection therewith, (iii) any claim or action for
personal injury, death or other cause of action involving product liability
claims arising from or relating to the Licensed Uses, (iv) any negligent acts or
omissions on Licensee's part, (v) any infringement of any rights of any other
person as a result of or arising from the Licensed Uses (exclusive of any
infringement actions based solely on Licensee's use of the Licensed Marks), and
(vi) failure of Licensee to comply with applicable laws.
6.3 Licensee shall promptly notify Licensor of any infringement of, and
of any threatened or pending legal action in connection with the Licensed Marks
of which Licensee becomes aware. Licensor shall have the first option to assert
a cause of action against any party for trademark infringement of the Licensed
Marks, and the first option to defend any threatened or pending legal action
against Licensee involving Licensee's use of the Licensed Marks. Licensee shall
have the right to assert a cause of action on its own behalf for trademark
infringement of the Licensed Marks against any third party or to defend any
threatened or pending legal action against the Licensee involving Licensee's use
of the Licensed Marks if Licensor chooses not to assert or defend such causes of
action.
6.4 In any case of trademark infringement asserted against a third
party by the Licensor, the Licensor shall pay all legal fees and keep all
monetary awards. If the Licensor fails to assert a cause of action for trademark
infringement of the Licensed Marks against a third party and the Licensee does
assert such cause of action, the Licensee shall pay all legal fees and keep all
monetary awards.
ARTICLE VII.
DEFAULT TERMINATION
7.1 In the event that Licensee becomes insolvent, makes any assignment
for the benefit of creditors, or is subject to any bankruptcy or receivership
proceedings, or in the event that Licensee otherwise fails to comply with any of
its obligations under this Agreement, Licensor may serve on Licensee a notice of
default specifying the nature of the default. If the default is not cured within
thirty (30) days from service of the notice of default, Licensor may then serve
its Notice of Termination, and this Agreement shall be automatically terminated
upon service of such Notice of Termination.
7.2 In the event that Licensee makes use of any of the Licensed Marks
in any form or fashion outside the scope of the Licensed Uses, or in any form or
fashion that does not meet the Minimum Quality Requirements, Licensor may serve
on Licensee a notice of default specifying the nature of the default. If the
default is not cured within thirty (30) days from service of the
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notice of default, Licensor may then serve its Notice of Termination, and this
Agreement shall be automatically terminated upon service of such Notice of
Termination.
7.3 Upon the occurrence of any Event of Default (as defined in the
Security Agreement), Licensor may serve on Licensee a notice of default
specifying the nature of the default. If the default is not cured within thirty
(30) days from service of the notice of default, Licensor may then serve its
Notice of Termination, and this Agreement shall be automatically terminated upon
service of such Notice of Termination.
ARTICLE VIII.
EFFECT OF TERMINATION
8.1 Upon termination of this Agreement, all licenses and rights granted
to Licensee hereunder shall cease and revert back to Licensor, and Licensee
shall refrain from further use of the Licensed Marks, as well as any mark or
name reasonably deemed by Licensor to be similar to the Licensed Marks or the
"Harmon" mark. Licensee acknowledges that failure to comply with this provision
will result in immediate and irreparable harm affording injunctive and any and
all other appropriate relief to Licensor.
8.2 Upon termination of this Agreement, Licensee shall not operate its
business in any manner which would falsely suggest to the public that this
Agreement is still in force or that any relationship exists between Licensee and
Licensor.
ARTICLE IX.
MISCELLANEOUS
9.1 Notices. All notices, requests and other communications hereunder
must be in writing and will be deemed to have been duly given only if delivered
personally or by facsimile transmission or mailed (first class postage prepaid)
to the parties at the following addresses or facsimile numbers:
If to Licensee, to:
CH Holdings, Inc.
c/o Cupples Products, Inc.
10733 Sunset Office Drive
St. Louis, Missouri 63127
Attn: Gregg C. Sage, CEO
with a copy to:
Lewis, Rice & Fingerssh, L.C.
500 North Broadway, Suite 2000
St. Louis, Missouri 63102
Attn: John K. Pruellage, Esq.
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If to Licensor, to:
Apogee Enterprises, Inc.
7900 Xerxes Avenue South, Suite 1800
Minneapolis, Minnesota 55431-1159
Attention: Robert G. Barbieri, Chief Financial Officer
and
Apogee Enterprises, Inc.
7900 Xerxes Avenue South, Suite 1800
Minneapolis, Minnesota 55431-1159
Attention: Martha L. Richards, General Counsel
with a copy to:
Kaplan, Strangis and Kaplan, P.A.
5500 Norwest Center
90 South Seventh Street
Minneapolis, Minnesota 55402
Facsimile No. (612) 375-1143
Attention: David Karan
All such notices, requests and other communications will (i) if delivered
personally to the address as provided in this section, be deemed given upon
delivery, (ii) if delivered by facsimile transmission to the facsimile number as
provided in this section, be deemed given when sent, verification received, and
(iii) if delivered by United States mail, first class postage prepaid, in the
manner described above to the address as provided in this section, be deemed
given three days after deposited in the United States mail, and (iv) if
delivered by overnight courier service, be deemed given one business day after
delivery to the overnight courier service with payment provided (in each case
regardless of whether such notice is received by any other person to whom a copy
of such notice, request or other communication is to be delivered pursuant to
this section). Any party from time to time may change its address, facsimile
number or other information for the purpose of notices to that party by giving
notice specifying such change to the other party hereto.
9.2 Status of Parties. This Agreement is not intended to create, and
shall not be interpreted or construed as creating, a partnership, joint venture,
agency, employment, master and servant, or similar relationship between Licensor
and Licensee, and no representation to the contrary shall be binding upon
Licensor or Licensee.
9.3 Binding Effect. This Agreement shall be binding upon an and inure
to the benefit of Licensor and Licensee and, subject to Section 3 above, to
their respective successors, assigns, executors, heirs and personal
representatives.
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9.4 Governing Law. This Agreement shall be governed by and construed in
accordance with the Laws of the State of Minnesota applicable to a contract
executed and performed in such State without giving effect to the conflicts of
laws principles thereof.
9.5 Consent to Jurisdiction. Each party hereby (a) irrevocably and
unconditionally submits to the exclusive jurisdiction of the courts of the State
of Minnesota and of the United States of America located in the State of
Minnesota with respect to all actions and proceedings arising out of or relating
to this Agreement and the transactions contemplated hereby, (b) agrees that all
claims with respect to any such action or proceeding shall be heard and
determined in such Minnesota State or Federal court and agrees not to commence
any action or proceeding relating to this Agreement or the transactions
contemplated hereby except in such courts, (c) irrevocably and unconditionally
waives any objection to the laying of venue of any action or proceeding arising
out of this Agreement or the transactions contemplated hereby and irrevocably
and unconditionally waives the defense of an inconvenient forum, (d) consents to
service of process upon him, her or it by mailing or delivering such service to
the address set forth in Section 9.1 hereof, and (e) agrees that a final
judgement in any such action or proceeding shall be conclusive and may be
enforced in other jurisdictions by suit on the judgment or in any other manner
provided by law.
9.6 Invalid Provisions. If any provision of this Agreement is held to
be illegal, invalid or unenforceable under any present or future law, and if the
rights or obligations of any party hereto under this Agreement will not be
materially and adversely affected thereby, (a) such provision will be fully
severable, (b) this Agreement will be construed and enforced as if such illegal,
invalid or unenforceable provision had never comprised a part hereof, (c) the
remaining provisions of this Agreement will remain in full force and effect and
will not be affected by the illegal, invalid or unenforceable provision or by
its severance herefrom and (d) in lieu of such illegal, invalid or unenforceable
provision, there will be added automatically as a part of this Agreement a
legal, valid and enforceable provision as similar in terms to such illegal,
invalid or unenforceable provision as may be possible.
9.7 Entire Agreement. This Agreement contains the entire agreement
between the parties with respect to the subject matter hereof and supersedes any
prior agreements between the parties, written or oral, with respect to such
subject matter.
9.8 Amendments. This Agreement may not be amended, modified or
rescinded except by a subsequent written agreement specifically making reference
to this Agreement and executed by authorized officers of Licensor and Licensee.
9.9 Headings. Section headings are used only for convenience and shall
not be used in construing or interpreting this Agreement.
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IN WITNESS WHEREOF, the parties have signed this Agreement as of the
day and year set forth below.
APOGEE ENTERPRISES, INC.
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Date: April 9, 1999
By: Robert G. Barbieri
Title: Vice President, Finance and
Chief Financial Officer
CH HOLDINGS, INC.
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Date: April 9, 1999
By:
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Title:
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EXHIBIT A
LICENSED MARKS
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Harmon, Ltd.
HARMON
Harmon Contract
Harmon, Ltd. Corporation
Harmon, Ltd., Incorporated
Harmon, Ltd. of Minnesota
Harmon Contract, Ltd.
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