DIXIE OUTFITTERS/DIXIE GIRLS TRADEMARK/COPYRIGHT
LICENSE AGREEMENT 2008
This DIXIE OUTFITTERS/DIXIE GIRLS Trademark/Copyright License Agreement (“Agreement”) is a binding contract. By signing this Agreement, you accept all terms and conditions of this Agreement that sets forth the rights and obligations of you and Barber and Company with regard to Barber and Company’s proprietary products. If you do not agree with the terms and conditions of this agreement, do not sign it.
“DIXIE OUTFITTERS” and “DIXIE GIRLS” are registered trademarks (the “Marks”) of Barber and Company (or its licensees) with all of the rights and remedies as prescribed by law. In addition, any images provided to you by Barber and Company (“Images”) (i) may contain additional trademarks of Barber and Company (collectively with the Mark referred to as the “Trademarks”) and (ii) are covered by United States and international copyright protection. Infringement of the Trademarks and/or Images will be prosecuted to the fullest extent of the law.
The use of any Trademarks and Images as herein authorized does not give you any rights of ownership in the Trademarks or Images. Use of the Trademarks and Images in breach of this Agreement will be cause for termination of this Agreement and will give rise to various rights and remedies of Barber and Company.
This Agreement is entered into and effective as of this ____day of __________, 2008 (“Effective Date”), by and between, Barber and Company (hereafter referred to as “Barber & Co.”) and:
Business Name: __________________________________
Owner Name: __________________________________
Business Address: __________________________________
Phone #: (____)____-______
Fax #: (____)____-______
(Hereafter referred to as “Licensee”).
TERMS AND CONDITIONS
In consideration of the mutual promises contained in this Agreement and other good and valuable consideration, the receipt and sufficiency of which are acknowledged and accepted by the parties to this Agreement, Barber & Co. and Licensee agree as follows:
1. OWNERSHIP. Licensee acknowledges and agrees that all goodwill arising from use of the Trademarks by Licensee shall inure to the sole benefit of Barber & Co. (or its licensees), and that all right, title and interest in and to the Trademarks and Images (collectively the “Licensed Property”), and all copyright, patent, trade secret, trademark, moral, termination, authorship, right of publicity, and other proprietary rights (collectively “Intellectual Property Rights”) associated therewith are reserved by Barber & Co. Licensee agrees that it shall have no rights in the Licensed Property but for those rights granted in this Agreement. Licensee agrees that it will not contest the ownership by Barber & Co. of, or validity of any rights of Barber & Co. in, the Licensed Property, any registration thereof by Barber & Co., or any application by Barber & Co to register the Licensed Property or any other trademarks, service marks, logos or slogans.
2. LICENSE. Barber & Co. hereby grants to Licensee a non-exclusive right and license to use the Licensed Property during the Term (as such term is defined below) of this Agreement solely in connection with the marketing, promotion, and sale of the approved merchandise listed in Exhibit A (DIXIE OUTFITTERS/DIXIE GIRLS Approved Merchandise List), which is attached hereto and incorporated herein for all purposes and which may be amended from time to time in Barber & Co.’s sole discretion (“Approved Merchandise”). In consideration for the licenses granted herein, Licensee agrees that it will identify itself as an “Authorized Dealer of DIXIE OUTFITTERS/DIXIE GIRLS Merchandise.”
3. RESTRICTIONS ON LICENSEE&RSQUO;S USE OF THE LICENSED PROPERTY. Licensee shall not:
a. render services, or otherwise conduct any business in an unethical manner, or in any manner which disparages or diminishes the status, image or quality of the Trademarks or the goodwill evidenced thereby;
b. use the Licensed Property in conjunction with any other trademark, service mark, trade name, designation or other indicia of origin or source;
c. use any trademark, service mark, trade name, designation or other indicia of origin or source identical to or confusingly similar with the Trademarks except as expressly provided by this Agreement;
d. use the Licensed Property in connection with anything other than Approved Merchandise;
e. transfer any Images to any shirts or other garments at any location for which the License Fee set forth in Section 12 below has not been paid;
f. transfer any Images to any shirts or other garments at any Licensee location that does not have a DIXIE OUTFITTERS/DIXIE GIRLS license identification card provided by Barber & Co. present;
g. take any action, make any statement or give the appearance that Licensee is the owner of Licensed Property or that Licensee is an exclusive dealer of Licensed Property;
h. display or advertise for sale items within 6 feet of DIXIE OUTFITTERS/DIXIE GIRLS merchandise that are confusingly similar. Examples of such items are shirts or transfers from competitors that feature the Confederate flag and/or are of approximately the same size, color and/or are similarly configured.
i. sell, display or advertise for sale DIXIE OUTFITTERS/DIXIE GIRLS merchandise on the Internet; or.
j. sell to a wholesale customer who resells Dixie Outfitters/Dixie Girls products on the Internet.
LICENSEE REPRESENTS AND WARRANTS THAT IT WILL NOT, UNDER ANY CIRCUMSTANCES, SELL, ASSIGN, RENT, LEASE OR OTHERWISE CONVEY TO A THIRD PARTY ANY TRANSFERS OR OTHER MATERIALS CONTAINING OR DEPICTING ANY LICENSED PROPERTY, OR ANY IMAGES OR MARKS CONFUSINGLY SIMILAR THERETO, WITHOUT THE EXPRESS WRITTEN PERMISSION OF BARBER & CO.
4. GEOGRAPHIC LIMIT OF LICENSE. Licensee may market, promote and sell the Licensed Property only within the borders of the United States, including any state, territory, protectorate, or possession. Licensee may not market, promote or sell the Licensed Property in the exclusive territory of a duly authorized “Dixie Outfitters Southern Heritage Store.”
5. TERM. The term of this Agreement shall begin on the Effective Date and shall continue until December 31, 2008 unless earlier terminated as provided herein (“Term”). The Term of this agreement may be renewed for successive one-year periods only upon written agreement of both parties.
6. TERMINATION. Upon termination of this Agreement, Licensee shall within thirty (30) days cease and desist all use of the Licensed Property, permanently cease all DIXIE OUTFITTERS/DIXIE GIRLS advertisements and shall not thereafter adopt any trademark, service mark or other designation for Licensee or its goods or services which consists of or includes the phrase “DIXIE OUTFITTERS/DIXIE GIRLS” or which is identical to or confusingly similar to any of the Trademarks. Licensee shall within thirty (30) days after termination certify in a signed writing delivered to Barber & Co. that it has ceased all use of the Licensed Property. Upon termination of this Agreement for any reason, all Dixie Outfitters, Dixie Girls, Dixie Baby, Dixie Boys and Legends of the Confederacy transfers and any other transfers provided to Licensee by Barber & Co. must be returned to Barber & Co. within fifteen (15) days of termination. Barber & Co. will reimburse Licensee for the cost of unharmed and unused transfers less a fifty percent (50%) restocking fee.
Upon termination of this contract Licensee must abide by all the terms stipulated in this agreement. If Licensor is forced to remedy breaches of the contract via the courts, it is mutually agreed that the Licensee will bear the expense of lawyers and court costs for both parties and any further compensation as prescribed by the courts.
Upon termination of this contract, Licensee will have 30 days to sell or otherwise dispose of all Authorized Merchandise in its possession.
At no time during the Term of this Agreement or after its termination shall Licensee promote or sell or attempt to promote or sell Authorized Merchandise or any products bearing the Trademarks or Images or any marks or images confusingly similar thereto that Licensee purchased from third parties not authorized by Barber & Co. to sell such products.
7. DEFAULTS. Each of the following events (each an “Event of Default”) shall constitute a breach of this Agreement:
a. Licensee shall fail to timely pay when due any sum of money due and owing to Barber & Co. pursuant to this Agreement, and such failure continues unremedied for more than ten (10) days after written notice of such failure is sent by Barber & Co. to Licensee;
b. Licensee breaches any other provision of this Agreement, or fails to timely perform any other obligation of Licensee pursuant to this Agreement, and such default continues unremedied for more than ten (10) days after notice of such default from Barber & Co. to Licensee;
c. Licensee (i) makes a general assignment for the benefit of creditors; (ii) commences a proceeding under any bankruptcy, reorganization or insolvency law; or (iii) seeks or consents to the appointment of a trustee, receiver or liquidator to take charge of its assets; or
d. Any proceeding under any bankruptcy, reorganization or insolvency law is commenced against Licensee and an order is entered appointing a trustee, receiver or liquidator of all or any substantial part of Licensee’s assets or granting relief in such proceeding or approving the petition in any such proceeding, and such order remains in effect for more than ninety (90) days.
Upon the occurrence of any Event of Default, Barber & Co. may exercise any or all rights and remedies provided under this Agreement and applicable law, including without limitation the right to terminate the licenses granted hereunder by giving notice of such termination to the Licensee. Upon termination, the licenses herein granted to Licensee, and all other rights of Licensee pursuant to this Agreement, shall terminate, except as may be expressly otherwise provided in this Agreement, and Licensee shall cease to have any further right to use the Licensed Property.
a. Claim By a Party. Licensee shall immediately notify Barber & Co. of any infringement of the Licensed Property of which Licensee becomes aware. Barber & Co. shall have the exclusive right (but not the obligation), acting in its sole discretion, to defend or prosecute or otherwise maintain such actions as Barber & Co. determines to be appropriate to protect the right, title and interest of Barber & Co. in and to the Licensed Property. Licensee shall cooperate with and assist Barber & Co., as reasonably requested, in prosecuting any such action.
b. Claim Against a Party. Licensee shall immediately notify Barber & Co. if Licensee is made a party to a legal or similar proceeding, or is otherwise made aware of any claim or demand, which is based in whole or in part on a claim that the use of the Licensed Property by Licensee hereunder infringes upon or dilutes any Intellectual Property right of a third party, or otherwise constitutes unfair competition. If either party is made a party to any such proceeding, Barber & Co. shall have the right to defend such proceeding, but shall not be obligated to do so. If such proceeding results from a breach by Licensee hereunder, then Licensee, on demand, shall reimburse Barber & Co. for all costs and expenses incurred by Barber & Co. in relation to such proceeding.
9. INDEMNIFICATION. Licensee shall indemnify and protect Barber & Co. from any debt, obligation, liability, lawsuit, judgment, attempt to enforce judgment, fee, cost or expense, including attorney’s fees, which arise as a result of Licensee’s use of the Licensed Property, whether or not said use is pursuant to this Agreement. Notwithstanding the foregoing, Licensee shall have no obligation to indemnify Barber & Co. against any claim that the Licensed Property infringes Intellectual Property Rights of any third party.
10. QUALITY/PRICING CONTROL
a. Licensee will establish and maintain effective quality control procedures for ensuring the quality of Licensee’s merchandise that bear any of the Licensed Property (“Licensee Merchandise”). Additionally, Licensee shall comply with the quality control standards set forth in Exhibit B (DIXIE OUTFITTERS/DIXIE GIRLS Quality Control Standards), attached hereto and incorporated herein for all purposes and which may be amended by Barber & Co. from time to time in its sole discretion. Barber & Co. may from time to time inspect the Licensee Merchandise and the Licensee’s use of Licensed Property to determine compliance with the quality control standards and Licensee shall cooperate with all such inspections. In the event Barber & Co. gives any instruction to the Licensee as a result of any such inspection for the purpose of ensuring compliance with the quality control standards, Licensee shall comply with all such instructions.
b. Licensee will use its best efforts to ensure that all literature and other media (as such term is defined below) are of the highest quality and reflect favorably upon the Authorized Merchandise. Barber & Co. reserves the right to approve literature and other media in writing in advance of publication. For the purposes of this Agreement, “Literature and Other Media” shall include all point of sale, advertising, direct marketing, promotional and other literature and printed and electronic media, signs, and any other materials which are published, used, displayed, broadcast, telecast, mailed, electronically mailed, conveyed via the Internet, or sent which relate to the use of or include any of the Dixie Outfitters IP.
c. Licensee acknowledges and agrees that Barber & Co.’s reliance upon Licensee’s established quality control practices, reputation and expertise and Licensee’s agreement to maintain that level of quality in producing the Licensee Merchandise under this Agreement are a reasonable means of ensuring the quality of Licensee’s goods bearing the Trademarks and are necessary for Barber & Co. to maintain adequate control over the nature and quality of the Licensee Merchandise.
a. Neither the license nor any other right granted to Licensee within this Agreement may be assigned or transferred, whether voluntarily or by operation of law, by Licensee without the prior written consent of Barber & Co., and any such assignment or transfer made without Barber & Co.’s prior written consent shall be null and void.
b. Neither the rights granted under the license nor any other right granted within this Agreement may be sub-licensed by Licensee without the prior written consent of Barber & Co., and any such sub-license made without Barber & Co.’s prior written consent shall be null and void.
12. LICENSE FEE. Within five (5) days of the Effective Date, Licensee shall provide Barber & Co. with a two hundred dollar ($200.00), non-refundable, in whole or in part, licensee fee (“License Fee”). Licensee must pay Barber & Co. a separate License Fee of $100.00 for each additional Licensee location at which Licensee intends to transfer any Images to any shirts or other garments for more than ten days.
a. Relationship of the Parties. Nothing herein shall be construed as creating a fiduciary or agency relationship between the parties or as authorizing the Licensee to incur any financial or other obligations in Barber & Co.’s name due to the existence of this Agreement. It is understood and agreed that no power granted, or which may be deemed to be granted, to Licensee, shall be deemed to be coupled with an interest.
b. Notices. All notices, demands and other communications required or permitted to be given or made pursuant to this Agreement shall be given in writing, and shall be personally delivered, or sent by certified mail, return receipt requested. Such notice shall be effective upon delivery or, if sent by certified mail, return receipt requested, three (3) days after deposit of such notice in the United States mail, postage prepaid and properly addressed. Each such notice shall be sent to such party at the address set at the beginning of this Agreement (or to such change of address as such party shall specify in a written notice sent to the other party hereto pursuant to this Agreement):
c. Choice of Law and Venue. This Agreement shall be governed by and construed in accordance with the laws of the State of Georgia, except as federal law may govern or shall otherwise apply. The parties agree that all actions or proceedings arising in connection with this Agreement shall be tried and litigated exclusively in the state and federal district court located in Chatham County, Georgia and in the appellate courts from which appeals are normally taken from those courts. Barber & Co. and Licensee each waive any right it may have to assert the doctrine of forum nonconveniens as to, or to otherwise object to, such venue.
d. Consents and Approvals. Any consent or approval by Barber & Co. contemplated, required or permitted by this Agreement may be withheld or conditioned by Barber & Co. in its sole and absolute discretion, except as expressly otherwise provided in this Agreement.
e. Successors and Assigns. This Agreement shall be binding upon and inure to the benefit of the parties hereto and, subject as otherwise provided in this Agreement, their respective permitted successors and assigns.
f. Headings. Section headings used in this Agreement are for convenience of reference only and shall not affect the construction of this Agreement.
g. Severability. If any term of this Agreement should be declared invalid by a court of competent jurisdiction: (i) the remaining terms and provisions of this Agreement shall be unimpaired; and (ii) the invalid term or provision shall be replaced by such valid term or provision as comes closest to the apparent intention of the parties underlying the invalid term or provision.
h. No Implied Obligations. No provisions of this Agreement (including without limitation the provisions of this Agreement affording rights, remedies and benefits to Barber & Co.) shall be construed to create any implied obligations on the part of Barber & Co., and Licensee agrees that Barber & Co. shall have no implied obligations under this Agreement.
i. Waiver. No delay in exercising, no course of dealing with respect to, and no partial exercise of, any right or remedy hereunder shall constitute a waiver of any other right or remedy, or the future exercise thereof.
j. Entire Agreement. This Agreement, and the Exhibits attached hereto, constitute the entire agreement between the parties hereto with respect to the subject matter hereof and supersedes in all respects all prior proposals, negotiations, conversations, discussions and agreements between the parties concerning the subject matter hereof.
k. Amendments. No amendment, modification, or waiver of any provision of this Agreement, nor consent to any departure there from, shall in any event by effective unless the same shall be in writing and signed by the party against whom enforcement thereof is sought.
l. Injunctive Relief. It is understood and agreed that damages are an inadequate remedy in the event or a breach or intended or threatened breach by any Licensee of Sections 2 or 3 and that any such breach by any Licensee will cause irreparable harm, injury and damage to Barber & Co.; accordingly, the Licensee’s agrees that Barber & Co. shall be entitled, without waiving any additional rights or remedies (including monetary damages) otherwise available to it at law, or in equity, or by statute, to preliminary and permanent injunctive relief in the event of a breach or intended or threatened breach by Licensee of Sections 2 or 3 without the necessity of posting a bond.
j. Survival. The parties’ obligations that expressly or by their nature survive the expiration or termination of this Agreement shall continue in full force and effect subsequent to and notwithstanding its expiration or termination and until they are satisfied in full or by their nature expire, including without limitation, the following provisions of this Agreement: Section 1, “Ownership;” Section 3, “Restrictions on Licensee’s Use of Licensed Property;” Section 6, “Termination;” Section 9, “Indemnification;” and Section 13(c), “Choice of Law and Venue.”
IN WITNESS WHEREOF, the parties hereto, through their duly authorized representatives, have executed this Agreement as of the date first above written.
Barber and Company, Licensor