LICENSE AGREEMENT
THIS LICENSE AGREEMENT (this "Agreement") is effective as of June 11, 2001
(the "Effective Date") by and between Acirca, Inc., a Delaware corporation
("Licensor") and Spectrum Organic Products, Inc., a California corporation
("Licensee").
WHEREAS, Licensor and Licensee have entered into an Asset Purchase
Agreement, dated as of the date hereof (the "Asset Purchase Agreement"), whereby
Licensee sold to Licensor and Licensor purchased certain assets of Licensee,
including but not limited to the trademarks described in Exhibit A hereto (the
"Trademarks");
WHEREAS, Licensor owns all right, title and interest in and to the
Trademarks, and has the exclusive right to use and to license others to use the
Trademarks;
WHEREAS, Licensee desires to use the Trademarks in connection with the
production and sale of Licensee's food products pursuant to existing
distribution relationships (the "Distribution Agreements"), as they have been
produced and sold by Licensee prior to the date of this Agreement, which
products are more specifically identified on Exhibit B hereto (the "Products");
and
WHEREAS, as an inducement for Licensee to enter into the Asset Purchase
Agreement, Licensor has agreed to grant to a limited nontransferable,
nonexclusive license, with no right to sublicense, to use the Trademarks
according to the terms and conditions provided in this Agreement.
NOW, THEREFORE, in consideration of the foregoing and of the mutual
promises hereinafter set forth in this Agreement and other good and valuable
consideration, the receipt and sufficiency of which are hereby acknowledged, the
Parties, intending to be legally bound, agree as follows:
1. Grant of License.
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1.1. Licensor hereby grants Licensee a nontransferable, nonexclusive
license during the term of this Agreement solely to use the Trademarks on the
Products, and on labels affixed to the Products, other packaging for Products,
and advertising and promotional literature for Products (collectively, the
"Materials") solely for purposes of fulfilling its obligations under the
Distribution Agreements.
1.2. Any use of the Trademarks by Licensee shall be in substantially the
same form as Licensor's use of the Trademarks immediately prior to the date of
this Agreement and in connection with such products as listed in Exhibit Bto
this Agreement.
1.3. Licensee shall not use a Trademark in any way not specifically
permitted pursuant to Sections 1.1 and 1.2. Prohibited uses include, without
limitation, the use of a Trademark (i) in connection with the sale of any
product other than the Products, (ii) for any purpose other than fulfilling its
obligations under the Distribution Agreements, (iii) with respect to the "Bella
Toscana" trademark specified in Exhibit A, in connection with the sale of any
organic product, or (iv) for any purpose other than selling finished Products
which exist as of the date hereof and include the Trademarks.
1.4. Licensee shall not distribute to any third party any Products, or
Materials, with the Trademarks unless Licensee first submits two specimens
thereof to Licensor and Licensor approves the form thereof in writing. Licensor
shall not withhold its approval unreasonably. Licensee shall be solely liable
for the contents of all Products and Materials.
1.5. This Agreement grants Licensee the right to use the Trademarks
specified in Exhibit A. Other than the Trademarks, Licensee shall not use, or
have any rights in, anytrademarks, or any other subject matter in which Licensor
has any rights.
1.6. Nothing in this Agreement shall be deemed to limit or interfere with
Licensor's unrestricted right to use or license the use of the Trademarks.
2. Validity of the Trademarks.
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Licensee acknowledges the validity of the Trademarks and Licensor's
ownership of the Trademarks. Licensee shall not attack such validity or
ownership, and Licensee shall do nothing inconsistent with such validity and
ownership. Licensee shall not apply for registration of the Trademarks or any
trademark which is confusingly similar to the any Trademark in any country, or
oppose registration of the Trademarks by Licensor. Licensee shall not use any
trademark which is confusingly similar to the Trademarks. All use of the
Trademarks shall inure to the benefit of Licensor.
3. Quality Control.
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3.1. Licensee's use of the Trademarks shall be consistent with the high
quality image of Licensor so as to enhance the Trademarks and the goodwill
relating thereto. Licensee shall not make any use of the Trademarks that would
cause embarrassment to Licensor or tend to discredit its image or reputation for
quality and charitable work. All Products in connection with the sale of which
Licensee uses the Trademarks shall be manufactured in accordance with prevailing
industry standards for the production of quality goods and the quality control
standards used by Licensee immediately prior to the date of this Agreement.
Licensee agrees to comply with any and all applicable federal, state and local
laws and regulations.
3.2. Upon Licensor's request, Licensee shall provide to Licensor a
reasonable number of samples of Products in connection with the sale of which
Licensee uses the Trademarks, as well as specimens of Materials bearing the
Trademarks.
3.3. Upon reasonable notice, Licensor shall have the right to inspect
Licensee's operations, including without limitation all facilities,
manufacturing operations, and all books and records pertaining thereto, with
respect to the use of the Trademarks.
4. Enforcement.
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If either Licensee or Licensor becomes aware of any infringement of the
Trademarks by any third party, it promptly shall notify the other. In the event
of such infringement, Licensor shall have the right (but not the obligation) to
bring an action, at its sole expense, against the third party. Licensee shall
cooperate in any action brought by the Licensor pursuant to this Article, and,
to the extent possible, have its employees testify when requested and make
available relevant records, papers, information, samples, and the like. Any
damages finally received through an action commenced pursuant to this Article
shall first be applied to the expenses of the parties in connection with the
action, with the balance being retained by Licensor.
5. DISCLAIMER OF OTHER WARRANTIES.
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THE TRADEMARKS ARE PROVIDED "AS IS". LICENSOR MAKES NO, AND HEREBY
DISCLAIMS ANY, REPRESENTATIONS OR WARRANTIES UNDER THIS AGREEMENT, EXPRESS OR
IMPLIED, INCLUDING WITHOUT ANY LIMITATION ANY IMPLIED WARRANTIES AND ANY
WARRANTY AGAINST INFRINGEMENT.
6. LIMITATION OF LIABILITY.
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TO THE MAXIMUM EXTENT PERMITTED BY LAW, IN NO EVENT SHALL LICENSOR BE
LIABLE UNDER THIS AGREEMENT FOR ANY DAMAGES WHATSOEVER, INCLUDING BUT NOT
LIMITED TO ANY DIRECT, INDIRECT, INCIDENTAL, SPECIAL, OR CONSEQUENTIAL DAMAGES.
7. Indemnities.
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Licensee shall defend, indemnify and hold harmless Licensor and Licensor's
directors, officers, agents and employees from and against all claims,
liabilities, suits, losses, damages and expenses, including costs and reasonable
attorneys' fees, ("Claims"), related to or resulting from (i) Licensee's use of
Trademarks; (ii) the manufacture, distribution or sale of Products or (iii) the
contents of any Materials, whether arising under a theory of fraud, contract,
tort, warranty, product liability, infringement, strict liability, or otherwise,
or arising from the breach by Licensee of any duty contained in this Agreement.
Licensee shall have the right to control any litigation within the scope of the
indemnity. The indemnified party (i) shall cooperate to the extent necessary in
the defense of any Claim, and (ii) may retain counsel at its own expense to
participate in the defense.
8. Term and Termination.
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8.1 This Agreement shall continue in force and effect for six (6) months
from the Effective Date (the "Initial Term"), unless terminated earlier in
accordance with Section 8.2. Every six (6) months after the Effective Date, this
Agreement shall renew automatically and continue in force and effect for an
additional six (6) months (together with the Initial Term, the "Term"), unless
terminated earlier in accordance with Section 8.2.
8.2. Either party may terminate this Agreement at any time with cause by
serving sixty (60) days written notice upon the other party. Licensor may
terminate this Agreement immediately in the event of any material breach of this
Agreement by Licensee which remains uncured after ten (10) days written notice
thereof to Licensee.
8.3. Upon the expiration or termination of this Agreement, Licensee
forthwith shall cease any use of the Trademarks, and shall immediately cease
selling Products and distributing Materials which include the Trademarks.
9. Notices.
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9.1. All notices sent under this Agreement shall be in writing and (i) hand
delivered; (ii) transmitted by telegram or by certified or registered mail,
return receipt requested; or (iii) delivered by prepaid overnight courier.
9.2. Notices shall be sent to the parties at the following addresses or
such other addresses as the parties subsequently may provide by notice in
accordance with this Article:
If to Licensor:
Acirca, Inc.
4350 North Fairfax Drive
Suite 350
Arlington, VA 22203
Attention: Olivier Sonnois, VP-Strategy & Business Development
Fax No.: (703) 312-4801
If to Licensee:
Spectrum Organic Products, Inc.
1304 South Point Boulevard
Suite 280
Petaluma, CA 94954
Attention: Robert Fowles
Fax No.: (707)765-8736
10. Miscellaneous.
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10.1. Licensee understands and agrees that it may not claim or otherwise
suggest that that Licensor has manufactured, sold or otherwise is the origin of
the Products being sold by Licensee.
10.2. THIS AGREEMENT SHALL BE GOVERNED BY AND CONSTRUED IN ACCORDANCE WITH
THE INTERNAL LAWS OF THE STATE OF NEW YORK, WITHOUT GIVING EFFECT TO THE
CONFLICTS RULES THEREOF TO THE EXTENT SUCH CONFLICTS RULES WOULD REQUIRE THE
APPLICATION OF THE LAW OF ANOTHER JURISDICTION.
10.3. ANY LEGAL ACTION OR PROCEEDING WITH RESPECT TO THIS AGREEMENT MAY BE
BROUGHT IN THE COURTS OF NEW YORK, NEW YORK OR ANY UNITED STATES FEDERAL COURT
SITTING IN NEW YORK, NEW YORK, AND, BY THE EXECUTION AND DELIVERY OF THIS
AGREEMENT, EACH PARTY HERETO HEREBY IRREVOCABLY ACCEPTS FOR ITSELF AND IN
RESPECT OF ANY OF ITS PROPERTY, GENERALLY AND UNCONDITIONALLY, THE JURISDICTION
OF THE AFORESAID COURTS. EACH PARTY HERETO FURTHER IRREVOCABLY CONSENTS TO THE
SERVICE OF PROCESS FROM ANY OF THE AFOREMENTIONED COURTS IN ANY SUCH ACTION OR
PROCEEDING BY HAND DELIVERY OR BY REGISTERED OR CERTIFIED MAIL, POSTAGE PREPAID,
TO SUCH PARTY, AS THE CASE MAY BE, AT THE ADDRESSES DESCRIBED IN SECTION 10 OF
THIS AGREEMENT, SUCH SERVICE TO BECOME EFFECTIVE UPON HAND DELIVERY OR TEN (10)
DAYS AFTER SUCH MAILING. EACH PARTY HERETO HEREBY IRREVOCABLY WAIVES TO THE
FULLEST EXTENT IT MAY EFFECTIVELY DO SO, ANY OBJECTION IT MAY HAVE TO VENUE AND
THE DEFENSE OF AN INCONVENIENT FORUM TO THE MAINTENANCE OF SUCH ACTIONS OR
PROCEEDINGS.
10.4. The rights and obligations granted to Licensee under this Agreement
are personal to the Licensee and may not be assigned, delegated, sublicensed,
encumbered, or otherwise transferred by Licensee without the prior written
consent of the Licensor, which shall not be withheld unreasonably. Any purported
assignment, delegation, sublicense, encumbrance, or other transfer by Licensee
in violation of this Section shall be of no force or effect. Licensor shall have
the right to assign, delegate or otherwise transfer its rights and obligations
under this Agreement.
10.5. This Agreement shall be binding upon and inure to the benefit of the
parties, their successors, permitted assigns and legal representatives.
10.6. The provisions of this Agreement concerning disclaimers of
warranties, limitations of liability, indemnities, use of the Trademarks after
expiration or termination of this Agreement, and interpretation of this
Agreement shall remain in effect after the termination or recision of this
Agreement.
10.7. Except as specifically provided in this Agreement, the rights and
remedies provided in this Agreement and all other rights and remedies available
to either party at law or in equity are, to the extent permitted by law,
cumulative and not exclusive of any other right or remedy now or hereafter
available at law or in equity. Neither asserting a right nor employing a remedy
shall preclude the concurrent assertion of any other right or employment of any
other remedy, nor shall the failure to assert any right or remedy constitute a
waiver of that right or remedy.
10.8. This Agreement may be modified or amended only by written agreement
of the parties.
10.9. All headings in this Agreement are included solely for convenient
reference, are not intended to be full and accurate descriptions of the contents
of this Agreement, shall not be deemed a part of this Agreement, and shall not
affect the meaning or interpretation of this Agreement.
10.10. Nothing in this Agreement shall be construed as creating a
partnership, joint venture or agency relationship between the parties, or as
authorizing either party to act as agent for the other.
10.11. This Agreement, including its exhibits, constitutes the entire
agreement between the parties concerning the subject matter of this Agreement
and supersedes all prior and contemporaneous agreements between the parties
concerning the subject matter of this Agreement.
10.12. This Agreement may be executed in one or more counterparts, each of
which shall be deemed an original but all of which together will constitute one
and the same instrument.
[SIGNATURE PAGE FOLLOWS]
IN WITNESS WHEREOF, the Parties hereto have executed this Agreement as of
the date first above written.
ACIRCA, INC.
By: /s/ William Urich
--------------------------------
William Urich
Chief Financial Officer
and Secretary
SPECTRUM ORGANIC PRODUCTS, INC.
By: /s/ Jethren Phillips
--------------------------------
Jethren Phillips
CEO and Chairman of the
Board
Exhibit A
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U.S. FEDERAL APPLICATIONS/REGISTRATIONS
- ------------------- --------------------- -----------------------------------
Trademark Serial/Reg. No. Filing Date/Reg. Date & Applicant/
Current Owner Name
- ------------------- --------------------- ------------------------------------
MILLINA'S FINEST Reg. No. 2,147,800 Filed: May 6, 1997
Ser. No. 75/287,472 Registered: March 31, 1998
- ------------------- --------------------- ------------------------------------
BELLA TOSCANA Ser. No. 76/138,302 Filed: October 2, 2000
- ------------------- --------------------- ------------------------------------
STATE APPLICATIONS/REGISTRATIONS
- --------------------- --------------------- ----------------------------------
Trademark State/Reg. No. Registration Date, Listed Owner
- --------------------- --------------------- ----------------------------------
MILLINA'S FINEST California Registered: January 26, 1993
Reg. No. 97023 Owner: Organic Food Products, Inc.
- --------------------- --------------------- ----------------------------------
COMMON LAW INTEREST
MILLINA'S FINEST
BELLA TOSCANA
GARDEN VALLEY